Supreme Court Comments Reflect Frustration With the Nation’s Patent System
 
December 4, 2006
 
James Harold "Jim" Laughlin- Washington

KSR International, Co. v. Teleflex, Inc., U.S., No. 04-1350, Oral Argument 11/28/06

While awaiting the decision of the Supreme Court in the KSR case, business professionals and lawyers alike were surprised at the tone and tenor of the oral argument held Tuesday, November 28, 2006. The Legal Times summarized the proceeding before the high court stating “in surprisingly blunt terms, Supreme Court justices Tuesday made it crystal clear that they are upset with the nation’s patent system, the lawyers who litigate under it, and the appeals court that referees it.”

Those observers who attended the oral argument and those who have read the transcript noted that the Justices knew well the record and seemingly were of one mind on the deficiencies of the “teaching-suggestion-motivation” or “TSM” test used by the Federal Circuit for determining obviousness, an issue that arises in virtually every patent application, litigation and appeal.

Background

The specific question before the Court was as follows:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious,” and thus unpatentable under 35 U.S.C. §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.”

The claimed invention in this case relates to an automobile accelerator pedal, claiming a combination of (i) a pre-existing type of “adjustable pedal,” and (ii) a pre-existing type of “electronic control,” with the latter being attached to the support of the former. The district court issued a summary judgment that the claim is invalid for obviousness, and in a non-precedential ruling the Federal Circuit vacated and remanded on the fact issues related to the teaching-suggestion-motivation test of obviousness.

The Argument

Since the decision of the Supreme Court in Graham v. John Deere Co., 386 U.S. 1 (1966), where Justice Clark discussed how obviousness under 35 U.S.C. 103(a) was to be determined, there has been continuing debate over the factors which should be considered. The current test employed by the Federal Circuit is “teaching-suggestion-motivation,” where the inquiry is whether the prior art contains any of these factors.

KSR argued to the Court that the Federal Circuit’s teaching-suggestion-motivation test is a categorical approach to evaluating proofs of obviousness, applied no matter how broad the patent or how narrow the differences from the prior art.

Teleflex contended that the Federal Circuit used teaching-suggestion-motivation as words of inclusion in the obviousness inquiry, not as words of limitation. Thus, Teleflex believes their meaning is grounded in the statutory requirement to distinguish that which was apparent from the prior art from that which is not.

While there did not appear to be a consensus from the Bench as to what should be done, there was agreed acknowledgement in the guidance of Justice Clark’s opinion in Graham and several of the Justices seemed to have kind words for Judge Rich’s opinion in In re Winslow, 365 F.2d 1017 (CCPA 1966) holding that the patentee is presumed to have knowledge of all material prior art – without giving the situation further thought.

Looking at the Federal Circuit’s three-part “teaching-suggestion-motivation” test for determining obviousness, an issue that arises in virtually every patent application and appeal, there were no “kind” words for the Federal Circuit (“in the last year or so after we granted cert in this case ... [the Federal Circuit] decide[d] to polish [TSM] up”) nor the Patent Bar (“more patents which is what the patent bar gets paid for”).

“Three imponderable nouns,” is how Justice Antonin Scalia dismissed the test, also calling it “gobbledygook” for good measure. The Chief Justice called it “Federal Circuit jargon” that is inflexible and “worse than meaningless.” Justice Stephen Breyer said he had read the briefs in the case 15 to 20 times and still could not understand the “motivation” prong of the test.

The full transcript of the oral argument can be found at:

http://www.supremecourtus.gov/oral_arguments/argument_transcripts/04-1350.pdf.

Awaiting Decision

Some observers believe the Supreme Court will remand the case while others suggest the Court will find a new methodology for determining obviousness. In general, most believe the Court will try to find a reasonable middle ground which affirms the standards and methodology of Graham while recognizing the usefulness of additional secondary methods of evaluating patentability. This might well include the current teaching-suggestion-motivation concept of the Federal Circuit as a part of the test.

Of course a change in the law will create additional problems for applicants and patentees. Over the next few months it will be difficult to know how to approach the obviousness issue. It would appear likely that if the Supreme Court can reach a consensus in how to clarify the existing ambiguities in the present obviousness jurisprudence, the support we are standing on will shift. In arguments before district courts, the Graham test for obviousness is a likely safe harbor. And in submissions to the Patent Office, the affidavits so often used to buttress patentability should probably follow the Graham formula with statements confirming the expert is aware and following the Graham standard.
 

For more information, e-mail James H. Laughlin, Jr., at jim.laughlin@hklaw.com or call toll free, 1-888-688-8500.