IP News

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