KSR Shifts Obviousness Debate to "Mere Aggregations" and Presumptions of Non-Obviousness

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
  • In Support of Petitioner
    • Petitioner's Brief on the Merits;
    • Petitioner's Reply Brief on the Merits;
    • Government's Brief in Support of Petitioner;
    • Law and History Professors (Sarnoff) in Support of Petitioner;
    • Law Professor (Strandburg) in Support of Petitioner;
    • Electronic Frontier Foundation in Support of Petitioner;
    • Judge Colianni in Support of Petitioner;
    • Intel and Micron in Support of Petitioner;
    • Progress and Freedom Foundation in Support of Petitioner;
    • Cisco and GM in Support of Reversal (Petitioner);
    • CCIA in Support of Petitioner;
    • Business Software Alliance in Support of Petitioner;
    • Time Warner, IAC, and VIACOM in Support of Petitioner;
    • AARP.
  • In Support of Neither Party
    • IBM in Support of Neither Party;
    • Ford & DaimlerChrysler in Support of Neither Party;
    • DC Bar Assn (Eccelston);
    • Professor Hollaar.
  • In Support of Respondent
    • Respondent’s Brief on the Merits;
    • Intellectual Property Owners in Support of Respondent;
    • AIPLA in Support of Respondent;
    • ABA in Support of Respondent;
    • Automotive Suppliers in Support of Respondent;
    • Big Innovative Companies (3M, et. al) in Support of Respondent;
    • Technology Properties Limited in Support of Respondents;
    • United Inventors Association in Support of Respondent;
    • Intellectual Ventures and other Small Companies with Large Patent Portfolios in Support of Respondent;
    • Law Professors in Support of Respondent;
    • Professor Tom Field (Franklin Pierce) in Support of Respondent;
    • IPLAC in Support of Respondent;
    • Harold Milton (attorney who drafted the claims in the Teleflex patent) in Support of Respondent;
    • Tessera, Qualcomm, and Amberwave in Support of Respondent;
    • Science Professors in Support of Respondent;
    • Lee Thomason in Support of Respondent.
    • [Briefs also available at SCOTUS BLOG]
• Petitions Stage
  • 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.
  • Amici
    • 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:

• 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:
• http://www.techlawforum.net/blogs/a-precursor-to-obviousness/
• http://www.techlawforum.net/blogs/per-se-or-not-per-se/
• http://www.techlawforum.net/blogs/hey-teacher-leave-our-test-alone/
• The Patent at issue: [link]

Cite as Dennis Crouch, “KSR Shifts Obviousness Debate to ‘Mere Aggregations,’ Patently-O, available at http://www.patentlyo.com.

On the Merits

In Support of Petitioner

Petitioner's Brief on the Merits;

Petitioner's Reply Brief on the Merits;

Government's Brief in Support of Petitioner;

Law and History Professors (Sarnoff) in Support of Petitioner;

Law Professor (Strandburg) in Support of Petitioner;

Electronic Frontier Foundation in Support of Petitioner;

Judge Colianni in Support of Petitioner;

Intel and Micron in Support of Petitioner;

Progress and Freedom Foundation in Support of Petitioner;

Cisco and GM in Support of Reversal (Petitioner);

CCIA in Support of Petitioner;

Business Software Alliance in Support of Petitioner;

Time Warner, IAC, and VIACOM in Support of Petitioner;

AARP.

In Support of Neither Party

IBM in Support of Neither Party;

Ford & DaimlerChrysler in Support of Neither Party;

DC Bar Assn (Eccelston);

Professor Hollaar.

In Support of Respondent

Respondent’s Brief on the Merits;

Intellectual Property Owners in Support of Respondent;

AIPLA in Support of Respondent;

ABA in Support of Respondent;

Automotive Suppliers in Support of Respondent;

Big Innovative Companies (3M, et. al) in Support of Respondent;

Technology Properties Limited in Support of Respondents;

United Inventors Association in Support of Respondent;

Intellectual Ventures and other Small Companies with Large Patent Portfolios in Support of Respondent;

Law Professors in Support of Respondent;

Professor Tom Field (Franklin Pierce) in Support of Respondent;

IPLAC in Support of Respondent;

Harold Milton (attorney who drafted the claims in the Teleflex patent) in Support of Respondent;

Tessera, Qualcomm, and Amberwave in Support of Respondent;

Science Professors in Support of Respondent;

Lee Thomason in Support of Respondent.

[Briefs also available at SCOTUS BLOG]

Petitions Stage

Comments

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Was it obvious to those skilled in the art of blogging to shoot for position number 100 in the comments list? And should comment number 101 address statutory subject matter? Should comment number 103 be deemed the most well positioned one?

[stepback]

Here are three new nouns for Justice Scalia: Constitutional Due Process --well actually two are adjectives-- but the point is that we don't have a legal system based on whim and capriciousness where one person gets to arbitrarily say , Hey it's "obvious" to me. Instead we have a systematic way of gathering evidence, weighting the evidence and then determining on the basis of a fair balancing of the pro's and con's whether something is "obvious" or not.