KSR vs. Teleflex

Today the supreme court handed down a ruling in the KSR vs. Teleflex case. Many of us having been watching that for quite awhile and the ruling is set to break new ground. Some links first : The ruling and Some Commentary and some other commentary, and more commentary, and some other commentary. Reading the ruling (where as I described in my previous post they only talk about the claims, and only claim 4 at that) and the commentary (which also only talks about claim 4) shows you how this obviousness thing is shaking out.

Leaving aside the discussion of pedals, which doesn't really matter, we get to a couple of pretty good quotes for consideration.

As just a starting point

We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.

****The TSM test was the test for teaching, suggestion, or motivation. We worry about this a lot. The court explains is thusly,

Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. See, e.g., Al-Site Corp. v. VSI

and then a lay out of really where they want to set the lines.

For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Three cases decided after Graham illustrate the application of this doctrine.

In United States v. Adams, 383 U. S. 39, 40 (1966), a companion case to Graham, the Court considered the obviousness of a “wet battery” that varied from prior designs in two ways: It contained water, rather than the acids conventionally employed in storage batteries; and its electrodes were magnesium and cuprous chloride, rather than zinc and silver chloride. The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. 383 U. S., at 50–51. It nevertheless rejected the Government’s claim that Adams’s battery was obvious. The Court relied upon the corollary principle that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious. Id., at 51–52. When Adams designed his battery, the prior art warned that risks were involved in using the types of electrodes he employed. The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.

In Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U. S. 57 (1969), the Court elaborated on this approach.

The subject matter of the patent before the Court was a device combining two pre-existing elements: a radiant-heat burner and a paving machine. The device, the Court concluded, did not create some new synergy: The radiant-heat burner functioned just as a burner was expected to function; and the paving machine did the same. The two in combination did no more than they would in separate, sequential operation. Id., at 60–62. In those circumstances, “while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented,” and the patent failed under §103. Id., at 62 (footnote omitted).

Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282.

The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative -- a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

This is interesting as it is setting up where they (supreme court) philosophically fall on the matter.

This is what will really stand a lot of biological patents being pursued/issued today on it's head.

As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.

This means that if a technician would have thought of it, you likely shouldn't get a patent on it. This is huge for getting rid of a lot of the combination patents that are being pursued (admittedly by us as well as others...). They get right to the heart of this combination business as well, stating...

When it first established the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious, the Court of Customs and Patent Appeals captured a helpful insight. See Application of Bergel, 292 F. 2d 955, 956–957 (1961). As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.

....So making known mutations that give expected results may not actually be patentable.

When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative -- a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

and just before it,

Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282.

which really hits at making expected mutations and getting expected results.

This is, in total, a pretty interesting ruling. How will it affect our patent filing strategy? No idea. We will likely wait and see what the patent office does. It will certainly affect our litigation strategy, as it opens up all new ways to attack patents. For those where we are the defendent, we are happy. For those where we are the plantiff, we are sad. There will be a period here where we all try and figure out the new rules. I would expect to see someone (hopefully not us) bet huge on some interpretation and lose big. I would expect most of the rest of us to hedge a bit. I may give in on some issues a bit more quickly. I would expect to push a bit further/harder on other issues. We will see... in the mean time, I expect that a lot of biotech patent people are all reading this as hard as I am. Anyone not reading it...I would love to do a deal with you.