Intellectual Property Law

In keeping with its recent trend of taking a fresh look at some of the fundamental principles of patent law, the U.S. Supreme Court is considering whether to accept certiorari in a case that would permit it to consider the standards under which courts evaluate the validity of patents. As we have reported, the Court has already modified the traditional test for issuing an injunction after a finding of infringement and has under consideration a case in which it could alter what constitutes patentable subject matter. In a brief filed with the Supreme Court, the Solicitor General encouraged the Court to accept review of the Federal Circuit?s reversal of a summary judgment of invalidity because the case presents an important question of law.

The ?modern? law of validity dates to the Supreme Court?s 1966 decision in Graham vs. John Deere, in which the Court established the principle that nonobviousness must be considered in the context of not just ?that which is known to the public,? but also ?that which could readily be deduced from publicly available material by a person of ordinary skill? in the art. The Federal Circuit gradually developed from the Supreme Court?s instructions the ?teaching-suggestion-motivation? test for obviousness, which looks to whether there is a suggestion in prior art to combine references that might lead a person skilled in the art to the claimed invention and the motivation to combine the references.

In the case being evaluated by the Supreme Court, in the District Court for the Eastern District of Michigan granted the defendant?s motion for summary judgment of invalidity, finding that the plaintiff?s patent claiming adjustable gas pedal systems was obvious. The Federal Circuit reversed on the basis that the district court had not properly applied the teaching-suggestion-motivation test. After the defendant filed a petition for certiorari, the Supreme Court asked the Solicitor General to file a brief. In urging the Supreme Court to take the case, the Solicitor General stated that ?the Federal Circuit?s rigorous and inflexible approach to the nonobviousness inquiry in a way that unnecessarily sustains patents that would otherwise be subject to invalidation as obvious.?

Will the Supreme Court add another patent case to its docket? If so, will it tighten the standards for obviousness? Stay tuned.

Today's Blogger: Bob Sloss