Supreme Court to Review Test for Obviousness

Case: KSR International, Co. v. Teleflex, Inc., No. 04-1350 (Cert. Granted 6/26/06)

The United States Supreme Court has again demonstrated its recent interest in intellectual property law questions by granting review in a case posing the question of how one must prove that a patent is invalid due to obviousness. The question is whether the Federal Circuit erred in requiring that the prior art suggest combination of the prior art. Petitioner, in a position supported by the United States, had argued that there need be no teaching or suggestion of combining prior art.


The specific question for resolution is as follows:
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.”

The Supreme Court had requested the position of the United States government on the question, and in May 2006, the Solicitor General had filed a brief urging reversal of the underlying Federal Circuit opinion.