KSR v. Teleflex (Supreme Court 2006).
The Supreme Court has granted KSR’s writ of certiorari and now will address fundamental questions of patentability that have been raised. The doctrine of nonobviousness ensures that patent rights are not granted on inventions that are simply throw-away modifications of prior technology. Questions of obviousness are at play in virtually every patent case, in both proceedings before the USPTO and during infringement litigation.
Over the past twenty-five years, the Court of Appeals for the Federal Circuit has developed its nonobviousness doctrine using a motivation/suggestion/teaching test. According to the test, when various pieces of prior art each contain elements of an invention, the prior art can be combined together to invalidate a patent on the invention only when there is some motivation, suggestion, or teaching to combine the prior art.
KSR has asked the Supreme Court to rethink that approach and take a fresh look at the obviousness standard for patentability. The petition questions whether obviousness should require any proof of some suggestion or motivation to combine prior art references.
Question Presented: Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven "'teaching, suggestion or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed"?
Interestingly, the Supreme Court has not heard an obviousness since well before the founding of the Federal Circuit. In that case (Sakraida 1976), the High Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a). Under the Sakraida standard, the Teleflex patent is arguably obvious.
Professor John Duffy has done a masterful job of shepherding this case through the system. In an article several years ago, Duffy predicted the current rise of Supreme Court interest in patent case. In fact, at that time he announced that the very issue now being debated in KSR was ripe for adjudication:
One very good candidate for [Supreme Court] review is the law governing whether an invention is not ‘‘obvious’’ at the time of invention. . . . [The Federal Circuit’s suggestion] test, which tends to make even seemingly trivial developments patentable, is entirely the Federal Circuit’s product. It has no basis in the Supreme Court’s case law and may, in fact, be inconsistent with the Court’s most recent pronouncement on the subject (though that precedent is now more than a quarter century old). . . . None of this is to say that the Court will necessarily reject the doctrine developed by the Federal Circuit; it is only to suggest the Court is likely to end its long absence from this doctrinal area soon.
The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 S.Ct. Rev. 273, 340-41 (2003). Robert Brauneis another GWU law professor led a group of 24 law professors in support of the petition. Although he did not file a brief (to my knowledge) Richmond Professor Christopher Cotropia argues that (1) recently, the CAFC has removed some rigidity from the obviousness determination and (2) the requirement for proof of a suggestion to combine should be thought of as a rule of evidence. [link].
According to Professor Duffy, the preliminary amici briefing schedule is as follows:
- Amici supporting petitioner or neither side: August 10, 2006 (45 days after cert granted).
- Amici supporting respondent: September 14, 2006 or 35 days after petitioner brief is filed — whichever is less.
Crouch’s Commentary: For those of you concerned about the potential impact of this case — It is very likely that the CAFC’s motivation test will be changed and briefs simply requesting “no change” are unlikely to to be given much weight. Proposed solutions, including analogies to other areas of law (and foreign law) may be helpful. In this case, I also believe that would be useful to provide the Court with a number of real-world examples of how the system works or how it should work.
- Party Briefs
- Amicus Briefs
- Discussion of Government's Brief in Support of Certiorari;
- Discussion of Microsoft’s Amicus Brief;
- Discussion of the CAFC decision;
- Discussion of Law Professors Brief;
- Discussion of In re Kahn;
- Discussion of Petition for Certiorari;
- Prediction Certiorari;
- Prof Miller: KSR Liftoff!
- Prof Miller: Discussion of Gov’t Brief;
- Patent Hawk: Becoming Less Obvious.
- Buchanan: "[O]nce again, patent reform has left the Capitol and walked across First Street to the Supreme Court." [Link]