Antonin Scalia, Benchslaps, Federal Circuit, Intellectual Property, John Roberts, Patents, SCOTUS, Stephen Breyer, Supreme Court, Thomas Goldstein

Dispatch from One First Street: KSR v. Teleflex

invention polish dictionary Above the Law.jpgOn Tuesday, the Supreme Court heard oral argument in the case of KSR International v. Teleflex. Here’s our quick-and-dirty summary of the proceedings.
Subject Matter / Question Presented: To qualify for patent protection, an invention must be novel, useful, and not “obvious” to a person of “ordinary skill” in the field. So how do you determine “obviousness” when you have an invention that combines already-existing products? And is the Federal Circuit’s three-part “teaching-suggestion-motivation” test for obviousness a bunch of moronic nonsense?
Money Quote(s):
From the NYT:

When [veteran SCOTUS litigator Tom] Goldstein noted that “every single major patent bar association in the country has filed on our side,” the chief justice interjected: “Well, which way does that cut? That just indicates that this is profitable for the patent bar.” And when Mr. Goldstein referred to experts who had testified that the Teleflex patent was not obvious, the chief justice asked: “Who do you get to be an expert to tell you something’s not obvious? I mean, the least insightful person you can find?”

From the Legal Times:

“Three imponderable nouns,” is how Justice Antonin Scalia dismissed the test, also calling it “gobbledygook” for good measure.

Likely Outcome: The Federal Circuit will probably get benchslapped by the SCOTUS. As Tony Mauro notes:

[W]hen Justice Stephen Breyer said he had read the briefs in the case “15 times” and still could not understand the “motivation” prong of the test, Scalia chimed in, “Like Justice Breyer, I don’t understand.”

The implied message to the Federal Circuit seemed to be: If two of the brainier justices on the Supreme Court don’t have a clue what you are talking about, a new test might be in order.

For those of you looking for a substantive, eyewitness account of the argument, we reprint below the report of Joseph (Jay) R. DelMaster, Jr., a partner at Drinker Biddle & Reath in Washington. His account includes advice about how to proceed in patent prosecutions while we await the Supreme Court’s decision.
Check it out, after the jump.

This is an account of the KSR v. Teleflex oral argument by Joseph DelMaster, Jr., of Drinker Biddle & Reath. It was forwarded to us by one of its many recipients. Here it is:

The most significant Supreme Court case on patent law in recent years was argued this morning and I have just returned from that session. The long and short of it is this:

The “teaching, suggestion, motivation” (“tsm”) test for combining references in the Federal Circuit’s case law on obviousness under Section 103 is DEAD. The Supreme Court will kill that language in its opinion. Start thinking and acting (in patent prosecution) as if the proper test for obviousness is the old Supreme Court four-part test from Graham v. Deere: (1) scope and content of the prior art, (2) differences between the art and the claims, (3) level of ordinary skill in the art, (4) secondary considerations.

It would take me a couple of hours to detail the argument to you. And you may ask why I think it is so certain that the Federal Circuit is going to be hammered on this one. Every single justice, in the act of questioning the counsel, referred to the “tsm” test in derisive tones. Justice Scalia, known to have a way with the language, was reduced to throwing up his hands and referring to the Federal Circuit formula as “gobbledygook.” Eloquent, eh? But you get the point.

So, though the law is not changed YET, start thinking in terms of the Graham test and putting those factors into your prosecution records for future reference (perhaps for upcoming appeals, and to show in future litigation that the application was prosecuted at least within earshot of the Graham test rather than the “t s m” test). If you acquire a patent based only on the “tsm” test argument today, you leave that patent vulnerable to challenge tomorrow.

I would look for the Court’s opinion in January. It looked like 9-0.

Jay DelMaster

Joseph (Jay) R. DelMaster, Jr.
Drinker Biddle & Reath, LLP

Supreme Court Weighs the Meaning of ‘Obvious’ [New York Times]
Justices Slam Nation’s Patent System; Federal Circuit Chief Defends Three-Part Test [Legal Times]
Yesterday’s Spritely Patent Argument: More Fun! [WSJ Law Blog]

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