Dystar Textilfarben v. C.H. Patrick Federal Circuit The Federal Circuit has recently come out with an opinion insisting their teach, suggest, motivate (TSM) test is not a per se rule. This is a direct message to the Supreme Court, who has a tendency not to like per se rules (see my previous post suggesting this here). Jake Ward from Anticipate This gives a more thorough background of the facts in his post about the case. The Supreme Court is preparing to consider the appropriate standard for obviousness in KSR v. Teleflex, and it appears the Federal Circuit is using this opinion to influence how the Supreme Court might rule. Some suggest this case may be extremely significant in shaping the law of obviousness in the future. For example, Promote the Progress says ââ?¬Å?While the Court didn’t change the test in any way, its restatement of sorts might just change obviousness law for evermore.ââ?¬Â? This idea is further articulated on the blog The Fire of Genius: ââ?¬Å?The Federal Circuit, if it saves the suggestion test, will do so by destroying it.ââ?¬Â? It seems the Federal Circuit is realizing that it has been not been clear on how it has been applying the TSM test. As suggested by Professor Mark Lemley in Tech LawForum’s video panel discussion found here, the Federal Circuit is really just looking for objective evidence that the combination of prior art would have been obvious to a PHOSITA (Person Having Ordinary Skill In The Art). This is implicit in the opinion which states:

In contrast to the characterization of some commentators, the suggestion test is not a rigid categorical rule. The motivation need not be found in the references sought to be combined, but may be found in any number of sources [read: objective evidence], including common knowledge, the prior art as a whole, or the nature of the problem itself (emphasis added).

2006 U.S. App. LEXIS 24642, 11. Will the Supreme Court take any of this into consideration? Is it conceivable that they will revert back to a ââ?¬Ë?synergyââ?¬â?¢ test? The Supreme Court may even affirm the Federal Circuitââ?¬â?¢s opinion, but the language used in the opinion by the Supreme Court will likely be very important to practitioners.

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