Wednesday, November 29, 2006

The Morning After: KSR v. Teleflex

The collective post-mortem has begun over yesterday's oral arguments at the Supreme Court, and it appears that any seismic shifts predicted by anti-TSM advocates will not come to pass (petitioner's counsel earlier predicted a 9-0 reversal of the Federal Circuit). However, the Court has made it clear that at least some changes are-a-coming. Some observations:

(1) TSM will be tweaked. The Justices were clearly not satisfied with the TSM test, and Justice Scalia put an exclamation point on this dissatisfaction by labeling it "gobbledygook." The Court also embarked on a number of etymological exercises, by first trying to figure out what "motivation" actually meant (they were unsuccessful), and then analyzing whether there's a grammatical difference in the meaning of the word "obvious" and the meaning of the word "apparent." While it doesn't look like TSM will be abolished for the reasons given below, it seems apparent that TSM will not be the exclusive determinant of obviousness.

(2) The Court acknowledged that "rocking the boat" at this point could create more problems than solutions. Recognizing that scrapping TSM wholesale would launch the boats of "100,000 cases," the Court seemed to flirt with a Jacobellis-type analysis in an attempt to arrive at a workable obviousness standard: "I know a workable test for obviousness when I see it - but the TSM test isn't it." The Court acknowledged the hindsight benefits of TSM and seemed open to keeping the test in some form, at least to preserve the status quo.

(3) Whatever happens, it looks like it will be unanimous decision. There was little conflict among the Justices during the oral arguments. In fact they seemed pretty loose during the arguments, tossing out quips and off-handed remarks along the way (the arguments were interrupted 9 times by laughter). Remand is probably inevitable, since the case came up on summary judgment, but a few people think that dismissal is still a possibility (a la Metabolite).

(4) Aside from the CAFC and the TSM test, the Court dished out jabs at virtually everyone in the patent community. Joe Miller at the Fire of Genius blog (see below) stated that the opinion contained "some of the harshest language I recall seeing in a Supreme Court oral argument." The WSJ law blog noted that Chief Justice Robert's performance had him "rising quickly up the funniest justice ladder." Some of the targets included:


JUSTICE GINSBURG: May I ask, if that's the position of the PTO, why aren't they proceeding to cancel the patent?

MR. DABNEY: The case is in litigation at this point, Justice Ginsburg, and in patent litigation district courts are vested with authority and this Court is vested with authority to render a judgment of invalidity under Section 282 of the Patent Act.

JUSTICE GINSBURG: But the question is, you say the PTO has recognized that it issued this patent, that it's an invalid issuance. So why aren't they curing their own mistakes, never mind what a court is going to do?


MR. GOLDSTEIN: Justice Scalia, I this it would be surprising for this experienced Court and all of the patent bar -- remember, every single major patent bar association in the country has filed on our side -

CHIEF JUSTICE ROBERTS: Well, which way does that cut? That just indicates that this is profitable for the patent bar.



MR. GOLDSTEIN: All right. Let me, Justice Breyer. The experts say it's not obvious and the reason nobody did it for 12 years and the reason that Asano was never combined with an electronic throttle control is explained in the record in this case and it's twofold. The first is, and I have to take you now to the picture of Asano because that's what the claim that is supposed to make our invention obvious is. They say you would have done this with Asano. What the experts say is this Asano thing, no one would ever use it at all.

CHIEF JUSTICE ROBERTS: Who do you get to be an expert to tell you something's not obvious.

MR. GOLDSTEIN: You get -

CHIEF JUSTICE ROBERTS: I mean, the least insightful person you can find?



JUSTICE KENNEDY: [O]ne of the ways the law progresses is we go from case to case, and in this case you have two standards of operation. One is a pedal that basically operates by pressure. The other -- and by levers. Other is by electronics, and these are two different methods of making the carburetor release the fuel. So why not, so somebody combines them. Why is that such a big deal as, as claim 4 says it is. Certainly this inventor would not be the only one to think that the two could and should be combined.

- The decision is expected to be published before the end of the Court's term (around February).





Fire of Genius

Patent Prospector

Patent Baristas

Legal Times (


Chicago Tribune

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