IP News

Supreme Court Hears Oral Arguments in KSR International Co. v. Teleflex Inc.

On Nov. 28, 2006, the Supreme Court heard oral arguments in KSR International Co. v. Teleflex Inc. (04-1350), a case that could dramatically alter the non-obviousness standard of patentability. On Nov. 18, 2002, Teleflex Inc. sued KSR International Co. ('KSR') for infringement of Claim 4 of U.S. Patent 6,237,565, which relates to an adjustable pedal assembly for use with automobiles having engines that are controlled electronically with a device known as an electronic throttle control. The district court granted summary judgment in favor of KSR after determining that Claim 4 was invalid for obviousness. On appeal, the Federal Circuit vacated the grant of summary judgment and remanded the case because 'the district court did not apply the correct teaching-suggestion-motivation test.' The Supreme Court granted certiorari to review the question:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held 'obvious,' and thus unpatentable under 35 U.S.C. '103(a), in the absence of some proven ”teaching, suggestion, 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.'

During oral argument, several justices expressed their distaste for the Federal Circuit's teaching-suggestion-motivation test. Specifically, Justices Stephen Breyer and Antonin Scalia questioned what was meant by the term 'motivation.' Justice Scalia called the test 'meaningless' and 'gobbledygook' while Chief Justice John G. Roberts called it 'worse than meaningless.' Both the petitioner, KSR, and the United States, as amicus curaie, argued that the teaching-suggestion-motivation test may have a place in the obviousness determination, but that it cannot be the exclusive analysis. Respondent Teleflex argued that the Federal Circuit test simply provided an analytical framework to the obviousness standard. Teleflex also emphasized that the teaching-suggestion-motivation test underlies 160,000 patents every year and a change would create dramatic instability. While the Court did seem concerned about this instability argument, it seems safe to expect that a strongly worded opinion is forthcoming denouncing the teaching-suggestion-motivation test as the exclusive rubric in the obviousness analysis.

Federal Circuit Expresses Willingness to Reconsider De Novo Claim Construction Review

In Amgen v. Hoechst Marion Roussel, Inc., 05-1157, 2006 U.S. App. LEXIS 29284 (Fed. Cir. Nov. 22, 2006), the Federal Circuit denied a petition for panel rehearing and rehearing en banc, but seemed willing, in the proper case, to reconsider the rule of Cybor Corp v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) that claim construction rulings in patent cases are reviewed de novo. The petition for rehearing came after a divided Federal Circuit panel had vacated the district court's ruling that Claim 1 of the patent at issue was not invalid, because the district court had erred in its construction of the claim term 'therapeutically effective amount.' Amgen v. Hoechst Marion Roussel, Inc., 457 F.3d 1293 (Fed. Cir. 2006). In its petition for rehearing, plaintiff-appellee Amgen argued that the Federal Circuit panel had 'swept aside a meticulous and well-reasoned district court claim construction in favor of its own de novo construction.' Amgen further argued that the district court's ruling was based on an exhaustive analysis of 'the customary and ordinary meaning of 'therapeutically effective' in light of the entire specification, the other claims, the prosecution history, and the state of the relevant art as of the date of the invention.'

Although the Federal Circuit denied Amgen's petition, Chief Judge Paul Redmond Michel and Judges Randall Ray Rader, Pauline Newman, and Kimberly Ann Moore dissented. Chief Judge Michel, joined by Judge Rader, questioned Cybor's rule of de novo claim construction review, emphasizing that trial judges are arguably better equipped than appellate judges to make the inevitable factual determinations underlying claim construction such as 'what the average artisan knew and how she thought about the particular technology when the patent claims were written.'

Additionally, Judges Arthur J. Gajarsa, Richard Linn, and Timothy B. Dyk concurred in the denial of the petition for rehearing en banc, but not 'as an unqualified endorsement of the en banc decision in Cybor Corp ' ' Rather, the judges wrote that, 'In an appropriate case we would be willing to reconsider limited aspects of the Cybor decision. In our view an appropriate case would be the atypical case in which ' the district court found it necessary to resolve conflicting expert evidence to interpret particular claim terms in the field of the art. This is not such a case.'

Based upon these opinions, it seems likely that a Federal Circuit en banc reconsideration of the Cybor decision is on the horizon.

Matt Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP. He can be reached at 212-908-6462.

Supreme Court Hears Oral Arguments in KSR International Co. v. Teleflex Inc.

On Nov. 28, 2006, the Supreme Court heard oral arguments in KSR International Co. v. Teleflex Inc. (04-1350), a case that could dramatically alter the non-obviousness standard of patentability. On Nov. 18, 2002, Teleflex Inc. sued KSR International Co. ('KSR') for infringement of Claim 4 of U.S. Patent 6,237,565, which relates to an adjustable pedal assembly for use with automobiles having engines that are controlled electronically with a device known as an electronic throttle control. The district court granted summary judgment in favor of KSR after determining that Claim 4 was invalid for obviousness. On appeal, the Federal Circuit vacated the grant of summary judgment and remanded the case because 'the district court did not apply the correct teaching-suggestion-motivation test.' The Supreme Court granted certiorari to review the question:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held 'obvious,' and thus unpatentable under 35 U.S.C. '103(a), in the absence of some proven ”teaching, suggestion, 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.'

During oral argument, several justices expressed their distaste for the Federal Circuit's teaching-suggestion-motivation test. Specifically, Justices Stephen Breyer and Antonin Scalia questioned what was meant by the term 'motivation.' Justice Scalia called the test 'meaningless' and 'gobbledygook' while Chief Justice John G. Roberts called it 'worse than meaningless.' Both the petitioner, KSR, and the United States, as amicus curaie, argued that the teaching-suggestion-motivation test may have a place in the obviousness determination, but that it cannot be the exclusive analysis. Respondent Teleflex argued that the Federal Circuit test simply provided an analytical framework to the obviousness standard. Teleflex also emphasized that the teaching-suggestion-motivation test underlies 160,000 patents every year and a change would create dramatic instability. While the Court did seem concerned about this instability argument, it seems safe to expect that a strongly worded opinion is forthcoming denouncing the teaching-suggestion-motivation test as the exclusive rubric in the obviousness analysis.

Federal Circuit Expresses Willingness to Reconsider De Novo Claim Construction Review

In Amgen v. Hoechst Marion Roussel, Inc., 05-1157, 2006 U.S. App. LEXIS 29284 (Fed. Cir. Nov. 22, 2006), the Federal Circuit denied a petition for panel rehearing and rehearing en banc, but seemed willing, in the proper case, to reconsider the rule of Cybor Corp v. FAS Techs., Inc. , 138 F.3d 1448 (Fed. Cir. 1998) (en banc) that claim construction rulings in patent cases are reviewed de novo. The petition for rehearing came after a divided Federal Circuit panel had vacated the district court's ruling that Claim 1 of the patent at issue was not invalid, because the district court had erred in its construction of the claim term 'therapeutically effective amount.' Amgen v. Hoechst Marion Roussel, Inc., 457 F.3d 1293 (Fed. Cir. 2006). In its petition for rehearing, plaintiff-appellee Amgen argued that the Federal Circuit panel had 'swept aside a meticulous and well-reasoned district court claim construction in favor of its own de novo construction.' Amgen further argued that the district court's ruling was based on an exhaustive analysis of 'the customary and ordinary meaning of 'therapeutically effective' in light of the entire specification, the other claims, the prosecution history, and the state of the relevant art as of the date of the invention.'

Although the Federal Circuit denied Amgen's petition, Chief Judge Paul Redmond Michel and Judges Randall Ray Rader, Pauline Newman, and Kimberly Ann Moore dissented. Chief Judge Michel, joined by Judge Rader, questioned Cybor's rule of de novo claim construction review, emphasizing that trial judges are arguably better equipped than appellate judges to make the inevitable factual determinations underlying claim construction such as 'what the average artisan knew and how she thought about the particular technology when the patent claims were written.'

Additionally, Judges Arthur J. Gajarsa, Richard Linn, and Timothy B. Dyk concurred in the denial of the petition for rehearing en banc, but not 'as an unqualified endorsement of the en banc decision in Cybor Corp ' ' Rather, the judges wrote that, 'In an appropriate case we would be willing to reconsider limited aspects of the Cybor decision. In our view an appropriate case would be the atypical case in which ' the district court found it necessary to resolve conflicting expert evidence to interpret particular claim terms in the field of the art. This is not such a case.'

Based upon these opinions, it seems likely that a Federal Circuit en banc reconsideration of the Cybor decision is on the horizon.

Matt Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP. He can be reached at 212-908-6462.