Intellectual Property Law

One of the highly-anticipated oral arguments of the patent bar season took place this week when the Supreme Court considered the test for obviousness in Teleflex Inc. v. KSR International.  Although the U.S. District Court in Detroit granted summary judgment of invalidity, see Teleflex Inc v. KSR International, 298 F.Supp.2d 581 (E.D. Mich. 2003), the Federal Circuit vacated the judgment.  In an unpublished decision (available at 119 Fed.Appx. 282), the Federal Circuit held that the district court had made ?incomplete? findings on the additional test for obviousness:  that some ?teaching, suggestion or motivation? must be shown, by clear and convincing evidence, ?that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.?

The Supreme Court granted certiorari to decide whether this TSM test, imposed by the Federal Circuit but not found in the statutes, is really the law or not.  KSR insists that TSM, which has been criticized in the literature, is an unauthorized interpolation which lowers the standard of patentability and needlessly complicates determinations of obviousness; the Solicitor General agrees it ?imposes significant burdens.?  Teleflex, joined by such amici as the ABA, AIPLA, the Intellectual Property Owners Association and the Federal Circuit Bar Association, defends the test and the Federal Circuit?s decision below as both authorized by precedent and necessary to avoid hindsight bias ? what seems obvious in retrospect may not have been so at the time.  (AIPLA?s brief begins by quoting Ecclesiastes 1:9-10: ?What has been is what will be, and what has been done is what will be done; there is nothing new under the sun.  Is there a thing of which it is said ?See, this is new?; It has already been, in the ages before us.?)

The case (No. 04-1350) was argued on November 28, 2006.  The justices? questioned the supporters of the test in sharp and sometimes scornful language.  Justice Breyer said he didn?t understand it, Chief Justice Roberts called it ?worse than meaningless,? and Justice Scalia said it was ?gobbledygook.?  Even before the argument many observers expected the Supreme Court to replace TSM with a new test for obviousness ? that result seems even more likely now.  KSR is the first obviousness case the Court has heard since before the Federal Circuit was established, when it reiterated in Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976) that a combination which ?only unites old elements, with no change in their functions,? is unpatentable.  A similar finding now would defeat Teleflex?s patent and could draw into question countless others already upheld under the current standard.  (Justice Souter wondered ?Are there going to be 100,000 cases filed tomorrow morning??)  Whatever the Court decides will be of high importance not only for the IP bar but for business, technology and research in every field.  The Court?s decision will be reported in this space.

Today's Blogger:  Nan Joesten