Friday, March 16, 2007

KSR v. Teleflex Recap: Judge Rader Lists Potential Outcomes

At a recent IP seminar, Judge Rader gave a speech covering the history and application of nonobviousness and the TSM test, and continued to challenge the perception that TSM is responsible for "gutting" obviousness (he prefaced his speech by stating that "much of what you may hear may be gobbledygook”). In the speech, Rader gave his thoughts on potential outcomes for the KSR v. Teleflex decision:

Scenario #1: Revive “synergism” test, where a combination of elements must result in an effect that is greater than the sum of the separate parts (Anderson’s-Black Rock, Inc., v. Pavement Salvage Co., 396 U.S. 57, 61 (1969) (holding patent invalid because ‘‘[n]o such synergistic result is argued here’’); Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (holding patent invalid because it was a mere combination of old elements and had no ‘‘synergistic effect’’).

Scenario #2: Create new test, such as the “extraordinary” contribution to the arts contained in the Solicitor General brief ("This Court should restore the proper content of the nonobviousness analysis by refocusing the inquiry on the key question that the Graham framework addresses: whether the claimed invention manifests the extraordinary level of innovation, beyond the capabilities of a person having ordinary skill in the art, that warrants the award of a patent.")

Scenario #3: Reject TSM, but leave proper substitute to Federal Circuit

Scenario #4: Make TSM a “non-exclusive test,” allowing courts to use “synergism” or other tests skeptical of “combination patents”

Scenario #5: Make TSM test a “question of law” (now “factual” requiring specific citations to prior art or doctrines in knowledge of PHOSITA)

Seja o primeiro a comentar

DISCLAIMER

This Blog/Web Site ("Blog") is for educational purposes only and is not legal advice. Use of the Blog does not create any attorney-client relationship between you and Peter Zura or his firm. Persons requiring legal advice should contact a licensed attorney in your state. Any comment posted on the Blog can be read by any Blog visitor; do not post confidential or sensitive information. Any links from another site to the Blog are beyond the control of Peter Zura and does not convey his, or his past or present employer(s) approval, support, endorsement or any relationship to any site or organization.

The 271 Patent Blog © 2008. Template by Dicas Blogger.

TOPO