US Supreme Court Tackles Issue of Obviousness

On November 28th, the United States Supreme Court heard arguments in the case of KSR International Co v Teleflex, Inc (04-1350), potentially one of the most important US patent cases to be decided in the past several decades. The Respondent (Teleflex) originally sued the Applicant (KSR) for infringement of its US Patent No. 6,237,565, a gas pedal design that KSR contends is no more than an obvious combination of two pre-existing inventions – a pedal assembly that is height-adjustable and one that controls acceleration electronically. The District Court of Eastern Michigan held the patent to be invalid on the ground that it was "obvious", but this decision was reversed on appeal. The US Court of Appeals for the Federal Circuit, established in 1982, handles all patent appeals cases in the US. It developed the current three-part "teaching-suggestion-motivation" test for determining obviousness. According to the test, "when obviousness is based on the teachings of multiple prior art references, the [party seeking to invalidate the claim] must also establish some "suggestion, teaching, 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." On a further appeal, the question before the Supreme Court was "whether the Federal Circuit ha[d] erred in holding that a claimed invention cannot be held "obvious", and thus unpatentable under 35 USC § lO3(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 Federal Circuit's test has been widely criticized as being overly patent-friendly, resulting in too many so-called "junk patents". The Solicitor General of the United States filed an amicus brief and suggested that the focus ought to be whether the new combination of elements in an invention displays an "extraordinary level of innovation." Briefs filed in support of KSR's position also came from such diverse sources as Microsoft and Hallmark. Those backing the test, including a number of patent-dependent companies such as 3M, General Electric and Procter & Gamble, argued that it "fosters predictability and fairness" in the patent application process and "provides an evidentiary safeguard against hindsight bias." From the oral arguments and the reaction to them from the Supreme Court bench, many Justices were not satisfied with the current obviousness test. Justice Scalia called the test "gobbledygook" and Chief Justice Roberts called it "Federal Circuit jargon" that is "worse than meaningless". Justice Breyer said that, after having read the briefs in the case "15 times", he still could not understand the "motivation" prong of the test. A decision is expected in March, 2007. In a recent Federal Court of Canada decision [Janssen-Ortho Inc v Novopharm Ltd (2006 FC 1234)], Justice Roger Hughes re-examined the Canadian test of obviousness (see the news item in E-TIPS®, "Federal Court of Canada Re-examines Test of Obviousness in Patent Law", Vol 5, No 11, November 22, 2006). For related news stories, visit these sites: http://masl.to/?O43112F4E; http://masl.to/?G54162F4E; http://news.com./2102-1014_3-6138026.html; and http://www.law.com/jsp/article.jsp?id=1164725056024 For a transcript of the oral arguments, see: http://masl.to/?I35112F4E For additional information, including the parties' briefs filed, see: http://www.lawmemo.com/sct/04/KSR/ Summary by: Clare McCurley