Motivation Standard Tested in KSR and Teleflex Case

On June 26, 2006, the US Supreme Court agreed to hear a patent dispute between auto parts suppliers KSR International Co (KSR), of Ridgetown, Ontario, and Teleflex Inc (Teleflex), of Limerick, Pennsylvania. The outcome may re-define the standard for obviousness in US patent law. In 2002, Teleflex sued KSR for infringing Teleflex's patent for an adjustable pedal system combined with an electronic control. KSR countered that the Teleflex patents were invalid because the Teleflex technology is merely a combination of existing inventions. The US District Court for the Eastern District of Michigan ruled in favour of KSR, holding that the claim at issue was so broadly written that the "invention" was rendered an obvious combination of an adjustable pedal assembly and position sensor already well known in the prior art. Teleflex appealed and in 2005 the US Court of Appeals for the Federal Circuit reversed the finding below holding that in order to find obviousness, the prior art must set out a "teaching, suggestion, or motivation" to combine prior art teachings in the manner claimed in the patent. In the pending US Supreme Court appeal, KSR argues that the use of this so-called "motivation test" is untenable because it creates a standard for "conditions for challenges to patentability" rather than "conditions for patentability". The US Solicitor General has submitted a brief asserting that the motivation test was in conflict with Supreme Court precedent and placed inappropriate restrictions on invalidating obvious patent. Similarly, two dozen law professors have filed an amicus brief in support of KSR, arguing that the Federal Circuit's test is inconsistent with precedent. An amicus brief was also filed by Cisco, Microsoft Corp, Hallmark Cards Inc, and others, maintaining that the Federal Circuit's test hurts innovation as the public's free use of information in the public domain is clouded by a new monopoly and the public receives no value in the disclosure of minor variations of inventions already known and disclosed in the prior art. As demonstrated by the briefs filed, determining when an invention is "obvious" is one of the most critical and contentious issues in patent law. The outcome of the KSR case will be watched with great anticipation. Prof Hal Wegner of the George Washington Law School has placed the case at the top of his list of "Ten Top Pending Patent Cases". For news reports related to the case, visit: http://www.mema.org/publications/articledetail.php?articleId=3920; and http://news.com.com/2061-10796_3-6087946.html For a summary of the progress of the case through the US court system (including a link to the text of the decision under appeal), see: http://www.techlawjournal.com/topstories/2005/20051003.asp Summary by: Oren Weichenberg