KSR v. Teleflex (Supreme Court 2006).
Section 103 of the Patent Act focuses on “differences between the subject matter sought to be patented and the prior art.” In the 1976 Sakraida case, the Supreme Court held that simply aggregating old elements together does not pass the patentability test if the elements are each performing the same functions that they were already known to perform.
The “mere aggregation” test of Sakraida, however, has not been followed by the Court of Appeals for the Federal Circuit (CAFC). Instead, the CAFC’s approach has allowed mere aggregations to be patented so long as there is no evidence suggesting that the elements be combined.
The pending case of KSR v. Teleflex squarely addresses this debate. KSR recently filed reply brief closes the written arguments in this landmark case, and oral arguments are scheduled for November 28, 2006.
KSR’s attorneys, including GWU Professor John Duffy, argue strongly that 103(a) has been wrongly interpreted as merely a way to challenge patentability rather than a “condition of patentability” as the section is titled. Under the current suggestion test, claims “cannot be held invalid . . . no matter how trivial might be the differences” from the prior art unless evidence suggesting the difference is found in the art. As noted by Hal Wegner, the Court’s reaction to this argument could shift the strong presumptions of non-obviousness.
KSR has gone beyond its attack on the Federal Circuit suggestion/teaching/motivation test and raised as a further issue the point that it should win under a preponderance of the evidence standard for challenging patent validity.
In the process, KSR takes a shot at the AIPLA’s “balanced” position.
It is by no means clear why patent bar groups would have a systematic interest in a “balanced” standard of patentability, in view of the enormous fees that litigation of invalid patent claims can generate.
Briefs and Documents:
On the Merits
- Discussion of Response Briefs;
- Discussion of Petitioner and Supporting Amici’s Briefs on the Merits;
- 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;
- Professor Wagner and Strandburg debate obviousness in Penn’s new online law reivew:PENNumbra;
- Prof Miller: KSR Lift-off!
- Prof Miller: Discussion of Gov’t Brief;
- Patent Hawk: Becoming Less Obvious;
- Patent Hawk: Hindsight Problem;
- Buchanan: "[O]nce again, patent reform has left the Capitol and walked across First Street to the Supreme Court." [Link];
- Petherbridge & Wagner Empirical Article [link]
- Cotropia Article: [link].
- Shane Popp Article on Section 103 background [link]
- Mark Smith, a student at Santa Clara Law has these three posts in SCU’s great new Tech Law Forum:
- The Patent at issue: [link]
Cite as Dennis Crouch, “KSR Shifts Obviousness Debate to ‘Mere Aggregations,’ Patently-O, available at http://www.patentlyo.com.