Per Se or not Per Se, that is the questionââ?¬Â¦ KSR v. Teleflex As the collective patent world waits in anticipation of how the Supreme Court will handle the KSR v Teleflex case, we can use it to contrast general ideological patterns of the Federal Circuit and the Supreme Court. For example, the eBay case illustrated that the Supreme Court does not respond well to per se tests. The Federal Circuit, on the other hand, seeks to introduce certainty into the law, and seems to prefer per se rules, like requiring a teaching, suggestion or motivation before a finding of obviousness. KSR has proposed a standard which essentially changes the test from ââ?¬Ë?whether a person having ordinary skill in the art would be motivatedââ?¬â?¢ to combine to ââ?¬Ë?whether a person having ordinary skill in the art would be capableââ?¬â?¢ to combine. This ââ?¬Ë?capable standardââ?¬â?¢ would [presumably] be a factual inquiry, and may be attractive to the Supreme Court. The standard may be adopted because of the conceptual difficulty with determining when combined prior art is obvious. If the Supreme Court adopts KSRââ?¬â?¢s proposed standard, the district courts and juries would have significant discretion as to the question of obviousness. Cynically, this would also mean the Supreme Court will likely never hear an obviousness case again (which may be a good thing). One interesting question that may arise if the standard is changed is: how will examiners respond to the new rule? May examiners confidently reject a combination patent on the ground that a person having ordinary skill in the art would have been capable of combining the prior art? “It is unlikely that the Supreme Court took an unpublished and nonprecedential case that has no real split in the Federal Circuit just to affirm their decision.” Erica Wilson from Morrison and Foerster.

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