Supreme Court: Current Test of Obviousness is "Gobbledygook"

KSR v. Teleflex (Supreme Court 2006, Oral Arguments).

The doctrine of nonobviousness is the cornerstone of American patent law.  I was reminded today by Phil Swain that our nonobviousness statute, section 103(a) of the Patent Act, was drafted by Judge Giles Rich.  Judge Rich is the most celebrated patent judge of this century.  His statutory masterpiece eliminated the amorphous concept of a “flash of genius” and replaced it with our now ubiquitous objective standard of a person having ordinary skill in the art.  In Graham v. John Deere, the Supreme Court reinforced 103(a) with its concept of case-by-case consideration of secondary indicia of nonobviousness as a way to avoid potential hindsight bias. 

Later, as the Federal Circuit developed its own patent jurisprudence, the court hit upon the teaching-suggestion-motivation test as another anti-hindsight rule.  That test requires evidence of some reason to combine various references that each teach part of an invention.  Thus, if there is no evidenced reason to combine the references, then the invention will be deemed nonobvious. The test, known by acronymists as “TSM,” has been labeled as a poster-child for bad patent behavior.  According to opponents of the test, the bright-line test makes patents too easy to obtain — resulting in a glut of patents covering trivial improvements. Those patents, in turn, hold-up industry research and greatly increase transaction costs and legal fees. 

In KSR v. Teleflex, the Supreme Court is questioning whether the TSM test should exist as the sole determinant of obviousness.  Question presented:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held ‘obvious’, and thus unpatentable under 35 U.S.C. § 103(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.”

Until a few months ago, the common myth of the TSM test was that it required at least some hard evidence that provided at least a minimal reason to combine various prior art references.  It is that myth that provided the impetus for Supreme Court review. In recent months, however, we have learned that the CAFC’s version of the test allows for evidence that is implicit, based on common knowledge, found generally in the prior art as a whole, based simply on the nature of the problem or simple logic, or concluded by experts. See Kahn, Dystar, Ormco, Alza.  This jitterbug by the CAFC actually gives KSR much of what it wanted and smears the edges of the mythical bright-line rule.  Justice Scalia picked up on transition during oral arguments — noting that the recent cases leave the test “meaningless. [The CAFC] essentially said ‘our test simply reduces to what [KSR seeks] in this litigation.’ . . . this is gobbledygook. It really is, it’s irrational.” Justice Alito had a similar concern with the “new” TSM test:

J. Alito: “But what is the difference between asking whether something is implicit in the, in the prior art and simply asking whether it would have been obvious to a person of ordinary skill in the art?:

As discussed earlier on Patently-O, all the major patent bar associations filed briefs that support the current TSM test.  In a brilliant move, KSR neutralized those briefs by implying bias based on “the enormous fees that litigation of invalid patent claims can generate.” KSR Reply Brf. CJ Roberts appeared to buy-in to that analysis, joking that the filings “just indicate[] that this is profitable for the patent bar.” KSR Oral Arg.

One concern of the Court is whether modification of the obviousness doctrine would spoil long-settled rights.  The Justices, however, mentioned on several occasions that over the past year, the CAFC may have already upset any settled rights.

Mr Goldstein [for Teleflex]: “[The CAFC has had decades to look at this to try and elaborate a standard.”
J Breyer: “And it so quickly modified itself.”

Decision in February: Reports from the hearing noted that Justice who used the term “TSM” spoke with disdain and were highly critical of the test.  Although oral arguments are always full of counterfactuals and wild theory testing, the level of criticism supports the conventional wisdom that the TSM test is likely to be eliminated as “the exclusive” test.  Cases will rather be decided on a case-by-case basis using the standards of Graham v. John Deere. Already issued patents will still be given a presumption of validity, although it will be difficult for some courts to do this with a straight face.  The new key to avoiding invalidity will be secondary indicia of nonobviousness. Look for a 9–0 decision in early February.

TSM is not Dead: Much of the oral argument was filled with an attempt to simply understand the TSM test, and to figure out what is meant by a “motivation.”  If they cannot figure-out the test, they would likely completely trash-it as unworkable. Of course, by the time the opinion is penned, they will understand the current test and the test will not be scrapped as a whole. Rather, they will follow the Government’s suggestion that TSM continue to be used as a “valid means of proving obviousness.” In addition, however, flexibility will be added to allow for other ways of determining nonobviousness.

Here are some quotes from oral arguments:

CJ Roberts: “[T]the Federal Circuit’s approach focuses . . . on prior art — as opposed to, I would say, common sense.” 

J Scalia: “And in the last year or so, after we granted cert in this case after these decades of thinking about [the obviousness doctrine, the CAFC] suddenly decides to polish it up.”

J. Breyer: “I’ve read it about 15 or 20 times now, I just don’t understand what is meant by the term ‘motivation.’”

Mr. Hungar [for US Gov’t]: “Construed as the sole means of proving obviousness the teaching suggestion motivation test is contrary to the Patent Act, irreconcilable with this Court's precedents and bad policy. It asks the wrong question and in cases like this one, it produces the wrong answer. It should be rejected and the judgment of the Court of Appeals should be reversed. . . . It’s just foreign to this Court’s precedents as a mandatory prerequisite for obviousness.”

Mr. Dabney [for KSR]: “[T]here is no legal regime that is a greater generator of patent litigation than the teaching suggestion motivation test that is urged by the respondent.” [DDC: Is this true?].

Documents and Links:

• Oral Argument Transcript;
• Commentary from the Gallery on the Oral Arguments:
• Zura;
• Armstrong;
• Miller;
• Kerr;
• ScotusBlog (Run by Teleflex’s Counsel)
• Gordon Smith;
• Patent Baristas;
• LawFont;
• Hawk;
• Brooks;
• Leo Stoller;
• Ebert;
• Law School Innovation;
• DragonFly
• KSR Shifts Obviousness Debate to "Mere Aggregations" and Presumptions of Non-Obviousness;
• 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] [link]

Cite as Dennis Crouch, “KSR Gobbledygook,” Patently-O, available at http://www.patentlyo.com.

Comments

[Joe Smith]

"I do not think Dennis will tolerate turning his site into a mere chat room, and if restraint is not shown, then we can all expect postings to become more difficult."

It is, of course, for Dennis to say who and what he wants on his blog.

My view is that personal comments are a waste of everyone's time. Chatty comments are a waste of time (Malcolm, I'm afraid this means you).

My observation is that Dennis and the patent bar generally like the status quo pretty well. There is a serious element of bathwater drinking in a lot of what the patent attorneys are posting on this blog. The CAFC fell into bath water drinking and has already gotten a rude wake up call from SCOTUS.

Do not underestimate the wide and deep concern about the patent system that recent cases have caused.

[anon]

"Firstly, if you wish to reply to any of the contributions that I have posted you will find my real name and a real e-mail address... If you do not have the courage to say who you are, then your opinion is more likely than not to be worthless."

I've found most of your postings enjoyable and intelligent, with this one being the exception. Who do you think you are to tell people to give up their private information? IF this were an ultra secured site where I would be assured my name and email would not be phished for spam and such, then I would have no problem declaring my identity. Even then, I would still respect those that contributes their genuine thoughts on issues by using anonymous or stage names for the simple reason that they would not like to alienate colleagues who may have different viewpoints. WE are all very appreciative to Dennis for this site, but I don't remember anyone appointing you to be the rulemaker.

[Malcolm Mooney]

"Chatty comments are a waste of time (Malcolm, I'm afraid this means you)."

Folks: it's Friday. I recommend pouring a small glass of single-malt scotch and lightening up just a tad.

[Ray]

Getting back to more basic questions:

Can Teleflex still use a “Graham” defense, even if it loses TSM?

Others have noted that early in a patent defense it is often not possible to claim “commercial success” or “copying by others”, simply because the product is still under development. But now we can all clearly see that KSR wants to copy the commercial success of the Teleflex design. So why not just shift the emphasis from Teaching-suggestion-motivation (which is based on history) to Graham, which is based on here and now?

[Tom Barniak jr.]

Final word. I've been busy writing a PPA on a new tool accesory idea of mine and have not been online for days and have just noticed that Geoff Cooper has called me cybor-scum. I don't allow anyone to call me a name like this without a response. You, Mr. Geoff Cooper, are a total idiot and not the intellectual you think you are-so there. Sorry everyone else has to read this.

[Tom Barniak jr.]

Final word. I've been busy writing a PPA on a new tool accesory idea of mine and have not been online for days and have just noticed that Geoff Cooper has called me cybor-scum. I don't allow anyone to call me a name like this without a response. You, Mr. Geoff Cooper, are a total idiot and not the intellectual you think you are-so there. Sorry everyone else has to read this.

[Fredric Goldstein]

Tom, I have to agree with you, so you need not apologize for your response, at least not in my eyes.

Geoff (Jeff- spelling mistake?) was way out of line with that hysterical over the top attack, and though your post which elicited his attack was colloquially expressed, I think most everyone had the same thought.

But watch out, you made a spelling mistake "accesory" [sic], as did Paul Cole-"procduces" [sic]when agreeing with him. That means detention after school (that is, for those "educated people").

[bluesky]

From a post above...

Fyi, I read a great history of Section 103 and its relation to big pharma written by Bill Kingston at Trinity College in Dublin. It appeared in Greg Aharonian's PATNEWS this morning. I highly recommend.

Does anyone have a link to this Kingston article?

[Malcolm Mooney]

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PTXT&s1=7,090,268&OS=7,090,268&RS=7,090,268

Note: no non-patent art cited for this "dog poop catching bag on a stick."

[Enlightenment]

If you want a test of obviousness, consider the following:

One thing that struck me as odd in the days after 9/11 was Bush saying "We will not tolerate conspiracy theories [regarding 9/11]". Sure enough there have been some wacky conspiracy theories surrounding the events of that day. The most far-fetched and patently ridiculous one that I've ever heard goes like this: Nineteen hijackers who claimed to be devout Muslims but yet were so un-Muslim as to be getting drunk all the time, doing cocaine and frequenting strip clubs decided to hijack four airliners and fly them into buildings in the northeastern U.S., the area of the country that is the most thick with fighter bases. After leaving a Koran on a barstool at a strip bar after getting shitfaced drunk on the night before, then writing a suicide note/inspirational letter that sounded like it was written by someone with next to no knowledge of Islam, they went to bed and got up the next morning hung over and carried out their devious plan. Nevermind the fact that of the four "pilots" among them there was not a one that could handle a Cessna or a Piper Cub let alone fly a jumbo jet, and the one assigned the most difficult task of all, Hani Hanjour, was so laughably incompetent that he was the worst fake "pilot" of the bunch, with someone who was there when he was attempting to fly a small airplane saying that Hanjour was so clumsy that he was unsure if he had driven a car before. Nevermind the fact that they received very rudimentary flight training at Pensacola Naval Air Station, making them more likely to have been C.I.A. assets than Islamic fundamentalist terrorists. So on to the airports after Mohammed Atta supposedly leaves two rental cars at two impossibly far-removed locations. So they hijack all four airliners and at this time passengers on United 93 start making a bunch of cell phone calls from 35,000 feet in the air to tell people what was going on. Nevermind the fact that cell phones wouldn't work very well above 4,000 feet, and wouldn't work at ALL above 8,000 feet. But the conspiracy theorists won't let that fact get in the way of a good fantasy. That is one of the little things you "aren't supposed to think about". Nevermind that one of the callers called his mom and said his first and last name ("Hi mom, this is Mark Bingham"), more like he was reading from a list than calling his own mom. Anyway, when these airliners each deviated from their flight plan and didn't respond to ground control, NORAD would any other time have followed standard operating procedure (and did NOT have to be told by F.A.A. that there were hijackings because they were watching the same events unfold on their own radar) which means fighter jets would be scrambled from the nearest base where they were available on standby within a few minutes, just like every other time when airliners stray off course. But of course on 9/11 this didn't happen, not even close. Somehow these "hijackers" must have used magical powers to cause NORAD to stand down, as ridiculous as this sounds because total inaction from the most high-tech and professional Air Force in the world would be necessary to carry out their tasks. So on the most important day in its history the Air Force was totally worthless. Then they had to make one of the airliners look like a smaller plane, because unknown to them the Naudet brothers had a videocamera to capture the only known footage of the North Tower crash, and this footage shows something that is not at all like a jumbo jet, but didn't have to bother with the South Tower jet disguising itself because that was the one we were "supposed to see". Anyway, as for the Pentagon they had to have Hani Hanjour fly his airliner like it was a fighter plane, making a high G-force corkscrew turn that no real airliner can do, in making its descent to strike the Pentagon. But these "hijackers" wanted to make sure Rumsfeld survived so they went out of their way to hit the farthest point in the building from where Rumsfeld and the top brass are located. And this worked out rather well for the military personnel in the Pentagon, since the side that was hit was the part that was under renovation at the time with few military personnel present compared to construction workers. Still more fortuitous for the Pentagon, the side that was hit had just before 9/11 been structurally reinforced to prevent a large fire there from spreading elsewhere in the building. Awful nice of them to pick that part to hit, huh? Then the airliner vaporized itself into nothing but tiny unidentifiable pieces most no bigger than a fist, unlike the crash of a real airliner when you will be able to see at least some identifiable parts, like crumpled wings, broken tail section etc. Why, Hani Hanjour the terrible pilot flew that airliner so good that even though he hit the Pentagon on the ground floor the engines didn't even drag the ground!! Imagine that!! Though the airliner vaporized itself on impact it only made a tiny 16 foot hole in the building. Amazing. Meanwhile, though the planes hitting the Twin Towers caused fires small enough for the firefighters to be heard on their radios saying "We just need 2 hoses and we can knock this fire down" attesting to the small size of it, somehow they must have used magical powers from beyond the grave to make this morph into a raging inferno capable of making the steel on all forty-seven main support columns (not to mention the over 100 smaller support columns) soften and buckle, then all fail at once. Hmmm. Then still more magic was used to make the building totally defy physics as well as common sense in having the uppermost floors pass through the remainder of the building as quickly, meaning as effortlessly, as falling through air, a feat that without magic could only be done with explosives. Then exactly 30 minutes later the North Tower collapses in precisely the same freefall physics-defying manner. Incredible. Not to mention the fact that both collapsed at a uniform rate too, not slowing down, which also defies physics because as the uppermost floors crash into and through each successive floor beneath them they would shed more and more energy each time, thus slowing itself down. Common sense tells you this is not possible without either the hijackers' magical powers or explosives. To emphasize their telekinetic prowess, later in the day they made a third building, WTC # 7, collapse also at freefall rate though no plane or any major debris hit it. Amazing guys these magical hijackers. But we know it had to be "Muslim hijackers" the conspiracy theorist will tell you because (now don't laugh) one of their passports was "found" a couple days later near Ground Zero, miraculously "surviving" the fire that we were told incinerated planes, passengers and black boxes, and also "survived" the collapse of the building it was in. When common sense tells you if that were true then they should start making buildings and airliners out of heavy paper and plastic so as to be "indestructable" like that magic passport. The hijackers even used their magical powers to bring at least seven of their number back to life, to appear at american embassies outraged at being blamed for 9/11!! BBC reported on that and it is still online. Nevertheless, they also used magical powers to make the american government look like it was covering something up in the aftermath of this, what with the hasty removal of the steel debris and having it driven to ports in trucks with GPS locators on them, to be shipped overseas to China and India to be melted down. When common sense again tells you that this is paradoxical in that if the steel was so unimportant that they didn't bother saving some for analysis but so important as to require GPS locators on the trucks with one driver losing his job because he stopped to get lunch. Hmmmm. Further making themselves look guilty, the Bush administration steadfastly refused for over a year to allow a commission to investigate 9/11 to even be formed, only agreeing to it on the conditions that they get to dictate its scope, meaning it was based on the false pretense of the "official story" being true with no other alternatives allowed to be considered, handpicked all its members making sure the ones picked had vested interests in the truth remaining buried, and with Bush and Cheney only "testifying" together, only for an hour, behind closed doors, with their attorneys present and with their "testimonies" not being recorded by tape or even written down in notes. Yes, this whole story smacks of the utmost idiocy and fantastic far-fetched lying, but it is amazingly enough what some people believe. Even now, five years later, the provably false fairy tale of the "nineteen hijackers" is heard repeated again and again, and is accepted without question by so many Americans. Which is itself a testament to the innate psychological cowardice of the American sheeple, i mean people, and their abject willingness to believe something, ANYTHING, no matter how ridiculous in order to avoid facing a scary uncomfortable truth. Time to wake up America.

[stepback]

Sheeple?
You calling us sheeple?
Bah humbug and gobble gobbledygook.

There is nothing but 99% pure neo cortex upstairs. It is constantly analyzing everything from a rational, scientific and logical point of view. That's how we can easily tell what is obvious and what is not obvious. We use "common sense". The same sense that for hundreds of years convinced us the sun goes around the Earth. The same sense that told us a heavy rock obviously drops faster than a light rock. The same sense that told us government officials are always right; well at least 110% of the time and that trolls lurk under bridges. Common sense tells us to stay with the herd and not cut and run with renegades like you. Bah humbug. Gobble gobble. Gook dee book. Look look. Who's got a bird brain now? Not me. Can't be. No siree. ;-)

(Warning young Robinson. Do not let these mixed messages penetrate into the limbic and reptilian parts of your brain. Warning young Robin's son. Warning.)

[Malcolm Mooney]

Enlightenment: no doubt!!!! And there's a lot more information where that came from. The Feds keep it locked up, though, in a giant underground city beneath Area 51. It's the same place where they have been working to clone Sasquatch and manufacture the perfect soldier for the inevitable civil war that will occur when the truth leaks out. It's too bad for the Feds that the truth about Pat Tillman leaked out. Did they really think that nobody would notice that Tillman's scrotum was surgically removed from his body? That nobody would check the convoy records and notice that a cryo unit was sent to Tillman's camp just 11 hours before his execution? Only a fool could fail to put two and two together and realize that the reason the Cornell Laboratory of Ornithology has failed to document another ivory-billed woodpecker is because they were never ever supposed to see the first one. It, too, was cloned by the Feds but the logs described in the 2005 Hanschel Report show a descrepancy in specimen number between January and February 2004. For 19 months it was a mystery: where did James Kim, the keeper of the logbook disappear to and what happened to the specimen? We will never know all the answers. James Kim's body was discovered frozen to death in a ravine in Oregon two days ago.

[stepback]

Tragic as it is, there is your perfect thought experiment regarding "obviousness".

Pretend you are James Kim II. Your "motivation" is to save your family and yourself. There you are stuck in the middle of nowhere in a snow-covered forest. No food. There is about an hour's worth of gasoline still left in the gas tank of your station wagon. You know people are looking for you because you were expected at the Gold Beach resort and you did not show. The search area is hundreds of square miles wide and you are just a needle in the hay stack. What do you do?

Do you leave the car and make a run for help? 20/20 hindsight tells us that was sadly not the best plan. But given that unfortunate outcome as "prior art", you are James II. What do you do? Other than simply staying with the car and praying, what is the "obvious" answer?

(Note: According to some reports, the only reason the helicopter crew found Kim's wife and children is because they first spotted his footprints and backtracked to the car. Otherwise they may have never spotted the snow-coverd car.)

[Malcolm Mooney]

What do you do? Other than simply staying with the car and praying, what is the "obvious" answer?

When it stops snowing, you try to do some signalling like they did in Gilligan's Island -- make some sort of pattern that is visible from a distance.

Then, if I'm this dude, I don't leave my family there to starve. I feed them.

Remember the dude who sawed off his hand with a rock to save himself a few years back? That's what James Kim should have done. What good is 180 pounds of fresh meat if it's frozen in a ravine 10 miles away?

[David Rueckert]

My understanding is that a re-examination filing with the PTO can only include evidence that is either a prior patent or a printed publication.

Is there a method to introduce an affidavit (in this case from the plaintiff in an infringement case) that significantly narrows the claims of the patent at issue?