November 30, 2006

By Jay G. Taylor

Oral argument in the KSR International Co. v. Teleflex, Inc. case was held on November 28, 2006 before the Supreme Court. At issue is the Federal Circuit's requirement that the prior art provide the teaching, suggestion or motivation (TSM) for the combination of prior art references to find the combination obvious. The questions by the court suggest that the court is troubled by the Federal Circuit’s holding that the TSM test must be satisfied for the combination of prior art to be deemed obvious. Most vocal in his criticism of the test was Justice Scalia who stated the test is "meaningless," "irrational" and "gobbledygook." Justice Kennedy thought the TSM test served a purpose, but suggested that it could be supplemented with other ways of showing obviousness. Justice Ginsberg also suggested that the TSM test should not be the exclusive test of obviousness. Justice Souter was troubled that the TSM test has been around so long that, even if error, it may now be accepted law that should not be easily overturned. Justice Breyer was especially concerned because he viewed the claimed combination (a prior art auto accelerator pedal with a prior art electronic control) as "pretty obvious" and "fairly obvious" to him. Chief Justice Roberts asked what makes the decision to place the electronic control on a non-moving part non-obvious and didn't appear satisfied by the answer. Justice Alito was concerned because the TSM test had been used in the Dembiczak case to uphold the validity of a patent on a garbage bag that looked like a pumpkin which case patentee's counsel admitted was an outlier. Thus, while the Court's questions are often a poor basis to predict the outcome of a case, it is safe to say that a majority of the court is very troubled by the TSM test and will likely reduce its prominence in obviousness determinations.

Jay Taylor is a Partner with Ice Miller focusing his efforts on patent, trademark, copyright, and trade secret litigation.

Oral Argument Transcript: LINK


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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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