'grellas writes: > 2. The Federal Circuit's holding [in Soverain] by a 3-judge panel had been remarkable and had shocked patent lawyers generally in that the

'grellas writes: > 2. The Federal Circuit's holding [in Soverain] by a 3-judge panel had been remarkable and had shocked patent lawyers generally in that the parties before the court had not even raised the issue on appeal as a ground for invalidating the jury's verdict below. The court raised the issue on its own, concluded that the patent was obvious and invalid, and gave judgment for Newegg in spite of the fact that the jury at the trial court level had found that Newegg infringed. (Emphasis in original.) George, it's not at all apparent that in Soverain the Federal Circuit raised and decided the obviousness issue sua sponte, that is, on its own. The court's opinion [1] expressly says, at page 5: "Newegg argues that it was wrongfully deprived of a jury determination of the question of obviousness, pointing to the extensive testimony on this issue at trial." (Patent lawyers really would have been shocked if Newegg had not raised the obviousness issue on appeal.) In its Soverain opinion, the Federal Circuit had previously explained, at page 4, that the trial judge, in the Eastern District of Texas, had (in essence) directed the jury not to consider the obviousness issue, because the trial judge had decided on his own that Newegg's evidence wasn't enough to allow a reasonable jury to invalidate the patent. The Federal Circuit thought otherwise. The appeals court didn't send the case back down to the trial judge for reconsideration; instead, it decided the obviousness issue on its own. That's because under existing precedent, the ultimate decision on obviousness is reserved initially for the trial judge as a so-called question of law, and the trial judge's decision is subject to complete plenary scrutiny, known as "de novo" review, by the appeals court (and, theoretically, by the Supreme Court of the United States). (See pages 5-6.) So, under existing precedent, it's actually quite unremarkable for the Federal Circuit to reverse a trial court on the issue of obviousness. (Usually, though, the outcome goes the other way: It seems more typical for a trial judge initially to conclude that a patent claim is invalid for obviousness, after which the Federal Circuit will reverse and render judgment that the patent claim was not proved invalid.) As to your assertion that the Federal Circuit decision "had shocked patent lawyers generally": I didn't remember that to be the case, so I did a quick Google search. One well-known patent-law blogger -- who if I remember correctly is very pro-patent -- wrote a couple of extensive analyses of the Federal Circuit decision and its subsequent decision on rehearing [2][3]. This blogger has strong views that the Federal Circuit shouldn't engage in de novo review of obviousness [2]. He accused the Federal Circuit of having, in Soverain, "made findings of fact as if they were the trial court and decided the case on issues not argued by either party" [2]. That accusation, though, seems to me to be unsupported hyperbole, quite contrary to what the Federal Circuit actually wrote. [1] http://www.cafc.uscourts.gov/images/stories/opinions-orders/2011-1009.Opinion.1-17-2013.1.PDF http://www.cafc.uscourts.gov/images/stories/opinions-orders/... [2] http://www.ipwatchdog.com/2014/01/13/supreme-court-refuses-soverain-bank-v-newegg/id=47392/ http://www.ipwatchdog.com/2014/01/13/supreme-court-refuses-s... [3] http://www.ipwatchdog.com/2013/09/04/is-soverain-software-v-newegg-supreme-court-bound/id=44936/ http://www.ipwatchdog.com/2013/09/04/is-soverain-software-v-...