The Supreme Court has accepted certiorari for a case that addresses an issue it has not looked at in over 25 years: patent obviousness. Since the last time the Court looked at obviousness, the patent appeals process has changed significantly. No longer are patent trials appealed to the regional circuit courts. Congress has decided that those appeals should now go to the Court of Appeals for the Federal Circuit.1  This move and the lack of Supreme Court review of obviousness have given the Federal Circuit complete control to interpret the law of obviousness.

In Nov. 2002, Teleflex filed suit against KSR in the U.S. District Court for the Eastern District of Michigan accusing KSR of infringing patent number 6,237,5652 . Applying the four part test for obviousness set forth by the Supreme Court in Graham v. John Deere Co.3  , the District Court judge Lawrence P. Zatkoff concluded, “[T]he Court finds that a hypothetical person with an undergraduate degree in mechanical engineering… would have found [the invention] obvious. Therefore, claim 4 of the ‘565 is invalid for obviousness.”4  And he issued a summary judgement in favor of KSR declaring the patent invalid.5 

The Federal Circuit, in its review of the District Court’s summary judgement, observed: “When obviousness is based on the teachings of multiple prior art references, the movant 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.”6 

The Federal Circuit concluded, “the district court did not apply the correct teaching-suggestion-motivation test”7  and that “under that test, genuine issues of material fact exist, so as to render summary judgment of obviousness improper.”8  The Federal Circuit thus vacated the decision and sent the case back to the District Court.9 

In its appellate brief, KSR argues that the Federal Circuit’s motivation test is inconsistent with Supreme Court precedent:

This Court has applied the standard of patentability set forth in Ã?§ 103 in six cases; in five cases of those cases, the Court held that the claimed subject matter was unpatentable under Ã?§ 103. In none of those cases did this Court hold that the statute was inapplicable to a claimed invention in the absence of some proven “teaching, suggestion, or motivation” to combine or modify prior art references.10 

It also argues:

If [the Federal Circuit’s ruling is correct], then the ultimate question of patent validity under Section 103 effectively ceases to be a question of law, but is made to depend, instead, on the outcome of a hugely costly and unpredictable litigation over whether a hypothetical “person having ordinary skill in the art” would have had hypothetical “motivation to combine” pre-existing components for a particular application at a point in time.

The Federal Circuit construes Section 103(a) as purportedly precluding a legal conclusion of invalidity in the absence of specific factual findings that satisfy that court’s “teaching-suggestion-motivation test”. In practical effect, the Federal Circuit has recast Section 103 as providing, not “conditions for patentability” (as its title states), but rather “conditions for challenges to patentability.”11 

The brief also appeals to the Court’s vanity:

The Court in this case is presented with an unusual and stark choice between adhering to its own patent law precedents… or abandoning those precedents wholesale in favor of a radical experiment by a lower court, an experiment that was undertaken in open defiance of this Court’s authority.12 

Teleflex argues that the Federal Circuit’s ruling is “wholly consistent” with the Supreme Court’s obviousness standards13  because, “under Graham, the obviousness inquiry is highly fact specific.”14 

The arguments of petitioner and its amici rest on a false caricature of the Federal Circuit’s settled suggestion, teaching, and motivation inquiry. The court of appeals has repeatedly held that the suggestion… looks to any available indication that a practitioner in the art would have had some reason to select the elements of the invention… The essence of the suggestion inquiry in this respect is that it looks to “implicit” sources of motivation. Petitioner’s assertions that the standard looks only to the prior art; ignores the problem to be solved; and precludes resort to common sense are all demonstrably incorrect under settled precedent.15 

In all, over 35 groups submitted briefs on this case, a dozen for KSR, two dozen for Teleflex, and a few for neither party. Large technology companies weighed in on all sides: Intel, Cisco and Time Warner for KSR; GE, Qualcomm and Michelin for Teleflex; and IBM and Ford for neither. Public interest groups weighed in on both sides, with patent owner groups unsurprisingly for Teleflex and freedom groups equally unsurprisingly for KSR. Many bar associations weighed in for Teleflex, including the ABA. Only the DC bar sided with KSR.

The amicus brief generally considered most important is the US Solicitor General’s brief. The Solicitor General’s support for certiorari is rare in patent cases and is often the most cherished of a petitioner’s amici. The brief states:

The Federal Circuit’s teaching-suggestion-motivation test subjects persons challenging the validity of a patent, as well as PTO’s patent examiners, to substantial obstacles in establishing obviousness beyond those that Section 103(a) and this Court’s decisions prescribe. As this case aptly demonstrates, the Federal Circuit’s rigorous and inflexible [test] sustains patents that would otherwise be subject to invalidation as obvious.The Federal Circuit’s test departs from this Court’s precedents because it treats a particular method of demonstrating obviousness… as the exclusive means of showing obviousness.16 

PTO’s obviousness inquiry should not require an unnecessary search for evidence showing a particular suggestion, teaching, or motivation to make insubstantially innovative combinations of elements that are known in the prior art. PTO should instead be allowed to bring to bear its full expertise – including its reckoning of the basic knowledge and common sense – when making the predictive judgment.17 

Many law professors and lawyers have also weighed in with amici briefs. Professor Strandburg of DePaul, writes:

[I]n its seminal interpretation of Section 103 of the Patent Act, in Graham, this Court not only discussed the factors relevant to the determination of obviousness without once mentioning a ââ?¬Ë?suggestion test,’ it also reversed an appellate court’s finding of non-obviousness, despite the appellate court’s conclusion that there was ââ?¬Ë?nothing in the prior art suggesting [the] unique combination of these old features’ in the claimed invention. Thus, it would appear that… the Federal Circuit’s “suggestion test” would have led to the opposite result in Graham itself.18

Common knowledge is not often the subject of detailed written exposition, making it difficult and costly for the patent examiner to find evidence of common knowledge to meet the Federal Circuit’s suggestion test. As the National Academy of Sciences recently explained: “[S]cientists, artisans, and creative people strive to publish non-obvious information. So if it is obvious to those of skill in the art to combine references, it is unlikely that they will publish such information.”19 

The Progress and Freedom Foundation urges the Court to restore vigor to the non-obviousness standard:

Extensions of the [patent] system to cover creations that are not true advances cause misallocation of resources and provide ammunition to those whose goal is to undermine the basic idea of patents.20  Entrepreneurs will devote their efforts not to solving problems but to putting together new combinations of old elements in the hopes that some one of them will turn out to be a future barrier to someone who is trying to solve a problem, and thus a turnstile into which cash payments must be inserted.21  Concern for marinating the legitimacy of the system is particularly acute in the context of international affairs. Some in the less-developed world see the patent system… as a mechanism by which the developed world exacts tribute from them.22 

At one end of the spectrum, any invention with a synergistic effect is presumptively nonobvious. At the other end, one that is clearly spelled out in the literature is presumptively obvious. The question lies on where to draw the line amongst the vast majority of the patent applications that fall between. The Federal Circuit itself has slightly moved the second line with its rulings on implicit motivation.

One of the main worries that patent practitioners have about this case is what will replace the current obviousness standard if the Supreme Court decides that a motivation requirement is non-functional. Many worry that a patent examiner will be able to decide that a patent is obvious “because I say so.” One definite advantage of the current system is that it is concrete. Almost any other proposed system adds uncertainty to the processes of both patent prosecution and patent litigation.

Dennis Crouch of the influential patent law blog Patently-O opines:

Congress has the power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” and that is all.”Obviousness” should be interpreted in a manner consistent with the limited Constitutional mandate for the patent system. If a definition of obviousness is used which systematically permits patenting of inventions which needed no encouragement because they would have happened inevitably within a short time then the statute is, IMHO, outside of its authorized scope. A patent statute which systematically errs in favor of patent validity is unconstitutional.23 

As any change would affect what makes a patent valid, any change to the Federal Circuit’s “motivation” test will have a far-ranging effect on the validity of current patents. Indeed, the main motivation behind the amici briefs for the plaintiff is to curtail what they believe is a far to lenient patent-approval process. They desire to invalidate existing patents that they feel are obvious ranks as much as to see better future patents.

Professor Lemley of Stanford may prove the bellwether for this case. He joined a brief supporting certiorari, but then switched and signed a brief supporting Teleflex more recently. Papers he has read by other professors have convinced him that the current Federal Circuit standard, with its acknowledgement that motivation does not have to be explicit, “is the best standard we’ve got right now.”24  Similarly, the Supreme Court, after having taken the case based on a questionable decision by the Federal Circuit, may decide that the current trend in the Federal Circuit is in the right direction. Thus, they may reverse this particular case, but affirm the motivation test conceptually.


1   28 U.S.C. Ã?§ 1295 (1982) 2   Teleflex Inc. v. KSR Intern. Co., 298 F.Supp.2d 581 (E.D.Mich. 2003) 3   Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) 4   Id. at 595. 5   Id. 6   Id. at 285. 7   Id. at 286. 8   Id. 9   Id. 10   Brief for Petitioner at 20. (2006 WL 2515631) 11   Petition for Certiorari at 11. 12   Brief for Petitioner at 16. 13   Respondent brief opposing certiorari at i. (2005 WL 1492885) 14   Id. at 12. 15   Brief for Respondents at 9. (2006 WL 2989549) 16   Petition for the United States at 12-13. 17   Id. at 18. 18   Brief of Intellectual Property Law Professors as Amici Curiae in Support of Petitioner at 10. (2006 WL 2452369) 19   Id. at 22, quoting Stephen A. Merrill et al., National Research Council, National Academy of Sciences, A Patent System for the 21st Century (2004) at 90 20   Progress and Freedom Foundation Brief in Support of Certiorari at 2. (2005 WL 1198839) 21   Id. at 13. 22   Id. 22   Dennis Crouch, KSR v. Teleflex: In Support of the Status Quo 24   Xenia P. Kobylarz, Vaunted Legal Scholar Switches Sides in Supreme Court Patent Case,