KSR v. Teleflex -- Certiorari Appears Likely

At the end of May, the Solicitor General filed an invited amicus brief supporting KSR's petition that asks the Supreme Court to take a fresh look at the obviousness standard for patentability.  The petition questions whether obviousness should require proof of some suggestion or motivation to combine prior art references.

Tom Goldstein, attorney for respondents (and SCOTUS Blog proprietor) has filed a response to the SG.  In the response, Teleflex argues that CAFC precedent continues to evolve and extensively discusses the recent Kahn decision that detailed the full scope of CAFC obviousness treatment.

In Kahn, the court affirmed the PTO’s finding of obviousness, explaining at great length that a "teaching, suggestion, or motivation" can be found "implicitly" based on precisely the factors that the Solicitor General says are relevant: "what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art." 441 F.3d 987. In Cross Medical, the court of appeals applied the "implicit" obviousness standard to reverse a district court ruling that a patent was not obvious, explaining that obviousness could be found on the basis of a "problem [that] was within the general knowledge of those of ordinary skill in the art," 424 F.3d 1322, even if the patent is not directed at "the identical problem addressed in [the] prior art," id. No fair distinction can be drawn between the rule proposed by the Solicitor General and the flexible standard articulated by the Federal Circuit in these more recent decisions and adhered to in this case.

Teleflex's arguments regarding "implicit" motivation is an attempt to show that the CAFC has softened its approach to nonobviousness.  The "implicit" argument is also an attempt to subtly shift the conversation -- The question before the court is whether any "proof" of a motivation should be required. Of course, the proof could take the form of explicit or implicit evidence.

SG Support = Certiorari: A recent (unreleased) study by a patent law professor looked at all invited amici petition briefs filed by the solicitor general for the past five terms. The SG gave an unqualified recommendation for certiorari (as in KSR) in 15 cases. In all 15 cases, the Supreme Court then granted certiorari. 

Documents:

• Party Briefs
  • KSR’s Petition for Cert (Including the CAFC and District Court decisions in Appx. A & B);
  • Teleflex’s Brief in Opposition
  • KSR Reply Brief (314 KB)
  • Teleflex Supplement
• Amicus Briefs
  • Government in support of petition;
  • 24 Law Professors in support of petition;
  • Progress Freedom Foundation in support of petition;
  • Microsoft, Cisco, Hallmark, et al. in support of petition.

Links:

• Patently-O Discussion of Government's Brief in Support of Certiorari;
• Patently-O Discussion of Microsoft’s Amicus Brief;
• Patently-O Discussion of the CAFC decision;
• Patently-O Discussion of Law Professors Brief;
• Patently-O Discussion of In re Kahn.

Comments

[Christopher Cotropia]

The brief is right on. If anyone has any interest, I have an article I just finished (to be published in the BYU Law Review at the end of this year) that essentially confirms that the Federal Circuit allows "undocumented" suggestions from the ordinary skill in the art or the nature of the problem being solved. The cases over the last four years prove this out. My article goes on to explain why, in some instances, the court, rightfully so, might place a higher evidentiary standard on such undocumented suggestions. One can find the current draft here:

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=893965

[clerk]

Care to divulge any more information on this "recent (unreleased) study by a patent law professor"?

[Dennis Crouch]

During the past five terms, the SG has issued an unqualified recommendation to
grant certiorari in 15 cases (2000-2005 Terms), and the Court has _always_ followed the recommendation. During the same period, the SG has issued five "qualified" recommendations, urging the Court to grant certiorari as to only some of the questions presented in the petition for certiorari, and
to deny certiorari as to the other questions in the petition. The Court has followed the SG's recommendation in three of these cases and denied certiorari in two.

Thus, the relevant statistics from the last five years of Supreme Court practice are:

In cases (like KSR) where the SG has issued an unqualified grant recommendation, the Court's grant rate is 100% (15 of 15).

In cases where the SG makes some sort of a grant recommendation (qualified or unqualified), the Court's grant rate is 90% (18 of 20).

[ABD]

The requirement of proof must be maintained. Otherwise, we are back to Hotchkiss. The only real question is what are the sources of proof. Must the sources of proof be confined to the prior art record or can the sources include proof of secondary considerations? Can the sources of proof include a scientific principle, which when applied to the circumstance at hand, necessarily provides a suggestion to make a combination?

Gotta have proof or the obviousness inquiry is not objective.

ABD

[Prakash Kuve]

Hi all,

I came across the term "exemplary embodiment" in many patents and I have searched in many Patent Glossaries to find out the exact meaning of this term but havent been able to find it. Could anybody enlighten me about the exact meaning of the term "exemplary embodiment" ?

Thanks,
Prakash

[Michael Crapenhoft]

An "exemplary embodiment" of the invention, in a patent application, is an explanation of a device, construction, method, etc., in which the invention is used. "Exemplary" can mean simply an example, but it can also be read as indicating a way of practicing the invention or a construction that is superior or preferred.

[Shashank Upadhye]

commenting on the KSR v. Teleflex case, i find it remarkable that the supreme court could be interested in this case given that it is not the "best" case for review and for clarifying the law. let's recall that the district court ruled on summary judgment that the patent was invalid for obviousness. the fed circuit reversed the summary judgment finding and remanded. it's not the best case because of the underlying summary judgment proceeding.

to me, this case is not ripe for clarifying the obviousness law. if there were no futher appeals, then the case is remanded back to the judge, who could conduct the whole trial and then as a trial matter find the patent invalid. on the other hand, after a full trial, he could rule the patent is valid. so is this the best case for the court to take on cert to clarify obviousness?

the best case for clarifying the motivation suggestion teaching to combine is one where after the full trial, the patent is invalidated. then the cafc affirms the verdict, which is then taken on appeal to the supreme court.

nobody seems to argue this, especially, teleflex who is sitting on the valid patent now and now has the desire to not have the supreme court interfere.

[Kodi]

what is the relationship between motivation and obviousness? aren't they mutually exclusive? for example, it would be "obvious", i hope, to combine peanut butter and jelly, but i dont believe there needs to be any motivation in existence for the "obviousness" of the combination to materialize -- i can just be bored and felt like squishing two unrelated condiments together. in other words, can't an obvious combination of existing inventions come into being without any motivation?

btw, if you say the desire to squish two unrelated condiments together is the motivation, then can't we say the general curious or bored nature of human existence provides the universal motivation for all obvious combinations?

[Mark Perdue]

I heartily disagree that PB&J is an obvious combination. Today, it is anticipated by numerous public uses.

When it originated, I would suppose it would be patentable unless someone perhaps wrote about the delicious combination of peanuts and grape jelly. Or grapes and peanut butter. Or perhaps grapes and peanuts. And perhaps another party had written of the savoriness of combinations of mashed up nuts and fruits.

I agree with the above comment that without requirement of evidence of motivation to combine, obviousness is a totally subjective inquiry and a rudderless standard for patentability and invalidity.

[Christopher Raimund]

In order to establish obviousness, there must be motivation to combine the teachings of two or more references or to modify the teachings of a single reference to arrive at a claimed invention. Motivtion is therefore required to show that a claimed invention is obvious (i.e., to establish prima facie obviousness). The Patent Office, in fact, requires that motivational statements appear in Office Actions in which obviousness rejections are made. Assuming no one had ever combined peanut butter and jelly before, in order to establish obviousness the patent office would have to show that one of ordinary skill in the relevant art (presumably food sciences) would have been motivated to combine peanut butter and jelly at the time the invention was made. Simply referring to a reference disclosing peanut butter and to a reference disclosing jelly wothout providing some motivation to combine the reference teachings would not be sufficient. Motivation could certainly be satisfied by a reference suggesting that the combination of the two ingredients would taste good.

[ocnsss]

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