Sakraida v. Ag Pro, Inc. in light of KSR v. Teleflex The Supreme Court is set to hear the KSR case and rule on the fundamental question of obviousness of a claimed invention that is a combination of prior art. The Federal Circuit has been applying a “teach, suggest, motivate” test to analyze these combination patents. This test has been around for over 20 years and has become a staple of Federal Circuit jurisprudence. However, it is likely the Supreme Court will alter this test. See a prediction from Patently-O. The KSR case may turn upon a little discussed case from 1976, Sakraida v. Ag Pro, Inc. In that decision, Justice Brennan declared a combination patent for removing cow manure from the floor of a dairy bar obvious. The language used is a stark contrast to the Federal Circuitââ?¬â?¢s “teach, suggest, motivate” test. In fact, the Court seems to require the patentee to satisfy a MUCH higher standard. For example, the opinion states that “a patent for a combination which only unites old elements with no change in their respective functions” is obvious. Furthermore, the Court requires the combination to be “synergistic” (resulting in an effect greater than the sum of the several effects taken separately). However, the very next sentence in the opinion says “[T]his patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations.” This MUCH higher standard is evident in requiring something greater than a “more striking result.” By contrast, the Federal Circuit test only requires the patentee to show there was no “teaching, suggestion, or motivation” to combine the prior art elements. Certainly a lot has happened since 1976 in the way of technology growth. Will this have an effect on the Courtââ?¬â?¢s decisions in KSR? Should it? These are interesting questions which will hopefully be answered this term.

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