Supreme Court to hear key obviousness case todayNovember 28, 2006

This morning the Supreme Court will hear oral arguments in KSR International Co. v. Teleflex, Inc., a potentially landmark case on the issue of obviousness in patent law. The case deals with adjustable automotive pedals in vehicles with electronic throttle controls. Teleflex sued KSR for infringement of patent no. 6,237,565. KSR asserted that the ‘565 patent was obvious, and the district court agreed, granting summary judgment in favor of KSR. Specifically, the district court held that a prior patent combined with electronic controls (which were well-known in the art) would result in the claimed invention, and that a person of ordinary skill in the art would be motivated to make such a combination based on the nature of the problem to be solved, namely to make a less expensive, less complex, and more compact design. The Federal Circuit reversed, holding that the district court did not make specific findings regarding the suggestion or motivation to combine the prior art references in the particular manner in the claim. Here, the Federal Circuit found that motivation lacking in the findings provided by the district court. The Supreme Court granted review in June to decide 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.” Over thirty amicus (friend of the court) briefs have been filed in the case, as it has the potential to drastically alter the law on how a patent is determined to be obvious, and thus invalid, or nonobvious, and thus valid. The last time the Supreme Court spoke on the issue was 1976, and made no mention of the Federal Circuit’s (then the Court of Custom and Patent Appeals) teaching-suggestion-motivation test. Later today, the oral argument transcript will be available on the Supreme Court’s website here. The Court will likely not issue a decision until at least February.

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