Fresenius Medical Care Holdings v. Baxter International (PDF) Judge Armstrong Judge Armstrong overturned all of the juryââ?¬â?¢s findings of obviousness. This ruling may have come just in time as we are all expecting the Supreme Courtââ?¬â?¢s decision in KSR to come down soon and alter the Federal Circuitââ?¬â?¢s teach, suggest, motivate test. For a Tech LawForum article written by John Hart about KSR go here. Numerous patent claims were invalidated by the jury. Judge Armstrong set aside the juryââ?¬â?¢s decision mostly because of a lack of evidence presented. One claim did have some credible evidence presented in the form of an article. However, the article was said to at most present an ââ?¬Å?obvious to tryââ?¬Â? situation. Judge Armstrong stated:

The Federal Circuit has held that where no combination of prior art references describes the particular functions recited in a claim, a jury’s verdict on obviousness must fall. See Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997).

This reasoning should be contrasted with language I pulled in a previous post on the Federal Circuit�s opinion in Dystar Textilfarben v. C.H. Patrick:

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).

It seems Judge Armstrong may have been applying the usual rigid Federal Circuit test for obviousness. Once the Supreme Court took cert for KSR, the Federal Circuit argued the test is not rigid, but quite flexible. This may be one of the last opinions that used the TSM test because it is fairly unlikely the Supreme Court is going to leave this test alone.

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