Justices Express Hostility Towards Federal Circuit Test For "Obviousness" During Oral Argument

Case: KSR International Co. v. Teleflex, Inc., U.S.S.Ct. Case No. 04-1350

The One Sentence Summary: During oral argument in this dispute over whether a patent claim for a gas-pedal mechanism was invalid as obvious, several justices complained that the Federal Circuit's jurisprudence set forth an incomprehensible jargon-filled test for obviousness which benefits nobody but the patent bar.


What They Were Fighting About: As reported earlier in this Blog (see June 26, 2006 post), the Supreme Court granted certiorari in this case concerning a patent for a gas-pedal mechanism in order to resolve the question of 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 oral argument - widely reported in the press due to Justices Scalia and Roberts' withering remarks about the `teaching, suggestion motivation' test, gives an indication that the Supreme Court may be prepared to hold that the Federal Circuit has been misapplying Section 103(a).


Oral Argument Highlights:
Click here for link to transcript.

• In response to the patent-holder lawyer's argument the Federal Circuit has recently clarified its supposedly, "nonrigid motivation, suggestion, teaching test," and made clear that "a suggestion to combine need not be found in the prior art," Justice Alito commented, "I don't quite understand the difference between that and simply asking whether it's obvious."
• Chief Justice Roberts opined that the test "adds a layer of Federal Circuit jargon that lawyers can then bandy back and forth but . . . it seems to me that it's worse than meaningless because it complicates the inquiry rather than focusing on the statute."
• Justice Scalia also appeared not to like the Federal Circuit's recent attempts to clarify the test: "I agree with the Chief Justice. It is misleading to say that the whole world is embraced within these three nouns, teaching, suggestion, or motivation, and then you define teaching, suggestion, or motivation to mean anything that renders it nonobvious. This is gobbledygook. It really is, it's irrational."
• Justice Breyer, complaining about the Federal Circuit's efforts to clarify what it means by a "motivation," said that, "though I've read it about 15 or 20 times now, I just don't understand what is meant by the term "motivation."