The barely one-week old landmark US Supreme Court decision in KSR v. Teleflex has been applied for the first time by the Federal Circuit in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc., No. 06-1402 (Fed. Cir. May 9, 2007) in invalidating for obviousness a patent relating to an electronic learning device to help young children read phonetically. The Federal Court writes:
"An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 2007 WL 1237837, at *12 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)....
Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. See KSR, 2007 WL 1237837, at *15. Nor does Leapfrog present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art. Our conclusion is further reinforced by testimony from the sole inventor at trial that he did not have a technical background, could not have actually built the prototype himself, and relied on the assistance of an electrical engineer and Sandia National Laboratory to build a prototype of his invention."
See in this regard also Blawgletter.
There is no question that KSR will become one of the most-cited decisions in law generally and that it will have a tremendous impact on patent law and litigation.
In the context of the above quotation we are reminded of the Microsoft-Eolas browser embedding patent case in which the actual implementation of the alleged invention by Eolas is nowhere to be found, i.e. the alleged inventor had himself apparently been unable to build a working browser prototype for a combination of elements quite obvious to this observer.
We wrote at Law Pundit in January of 2004 as follows under the title, A Call to Legal Vigilance against Overly Broad Patents being issued by the USPTO for Mechanical Juggling of Prior Art:
"Lawyers, legislators and judges around the world had better start paying closer attention to the crazy things that are going on at the United States Patent Office and in the courts in applying the patent laws to new technologies - and unless the current state of things is changed soon by rational legislation or by sensible judicial interpretation of patent laws relating to the internet as also for genetic research - the legal world will have increasingly to do with companies specialized not in making any inventions per se, but specialized in filing patents which mechanically juggle prior art in the hope of patenting broad methodology for which it is already obviously foreseeable that it will ultimately be adopted by commercial enterprises in the future.
This is a whole new game and a whole new way of making money: using the inadequacies of the patent laws and/or erroneous patent law interpretation by judges in dealing with the technological and internet age to fill "patent-application company" pockets."
We are thus particularly gratified that the KSR decision now finally begins to put patent law on the right road from which it had sorely detoured under the ineffectual and often "do nothing" Rehnquist Court. The KSR decision is a sign that the Roberts Court is starting to do its job properly by addressing pressing legal issues rather than ignoring them.
The KSR Case in Blogs and in the News
Some thoughts about KSR v. Teleflex: The "Marketplace" Test for Obviousness
by Michael Barclay of Wilson Sonsini Goodrich & Rosati (posted by Gretchen Sund).
"This decision makes it far easier to invalidate patents based on obviousness. Thus, this is the most important patent case of the last 20 years, and perhaps since the passage of the 1952 Patent Act. Virtually every litigated patent case includes an assertion of obviousness – and ones that might not have included that defense up until now are more likely to do so. The PTO examines every patent application for obviousness. KSR v. Teleflex will thus have an enormous impact on both the prosecution and litigation aspects of patent practice....
Having abolished the TSM test, the Court had to figure out what to replace TSM with. The replacement test can be summarized as a “marketplace” test – Justice Kennedy’s well-written opinion uses phrases such as “marketplace,” “market forces,” “market demand” and “market pressure” no less than five times in describing replacement formulations...."
SCOTUSblog, KSR v. Teleflex: Workmanlike, Yet Frustrating by Solveig Singleton
"The Court reached the right result, and the case is on the right track in paving the road for a more informed and somewhat higher standard of non-obviousness. But what exactly that will be, will again be left to the lower courts in a long drawn-out process that many observers think is broken."
Sarnoff Discusses KSR v. Teleflex (slip opinion) - at Patently-O
As the Court noted, “as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.” ...
[T]the Supreme Court concluded that the Court of Appeals erred generally by adopting a “rigid rule” in its TSM test, by failing to acknowledge that a “person of ordinary skill in the art is also a person of ordinary creativity, not an automaton,” and by adopting “[r]igid preventative rules that deny factfinders recourse to common sense” in its efforts to avoid “hindsight bias.” The Court noted that “[w]hat matters is the objective reach of the claim,” and whether there was at the time of the invention “an obvious solution” for a “known problem.”
Peter Zura's 271 Patent Blog
KSR v. Teleflex - Has "Inventive Step" Made its Appearance in U.S. Patent Law?
Chicago IP Litigation Blog - R. David Donoghue
Obviousness Redux: Arm-chair Quarterbacking KSR v. Teleflex
"A unanimous Supreme Court rolled back the Federal Circuit's teaching, suggestion or motivation obviousness test in favor of the Court's prior, and substantially broader, test as set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Justice Kennedy delivered the Court's opinion and called the Supreme Court's approach to obviousness "broad and flexible."
Patent Docs, BIO's Reaction to KSR v. Teleflex by Christopher P. Singer
Golem.de IT-News für Profis
Urteil: Triviales soll nicht patentiert werden
Oberstes Gericht der USA setzt Patentinflation weitere Grenzen
"Der US-Supreme-Court hat am Montag in zwei grundlegenden Entscheidungen der Patentinflation in den USA Grenzen gesetzt. Im Fall KSR gegen Teleflex wurde entschieden, dass die simple Kombination vorhandener Technologien in der Regel nicht ausreichend innovativ ist, um auf das Resultat ein Patent erhalten zu können. Im zweiten Fall, Microsoft gegen AT&T, schwächte das Gericht die Möglichkeit zur Klage gegen im Ausland begangene Patentverletzungen ab."
Luis Villa's Blog
"Specifically, the Supreme Court found that when you have invention A, and invention B, and combine them to make invention C, the court should be very careful to ensure that the combination of A and B isn’t obvious."
Patently-O, KSR v. Teleflex: Supreme Court on Obviousness
Wall Street Journal Law Blog
KSR v. Teleflex: The Supreme Court’s Big Patent Ruling by Peter Lattman
"Yesterday, in a decision many are calling its furthest-reaching patent ruling in decades, the Supreme Court sided with critics who argued that the Federal Circuit — the federal appeals court specializing in patent law — was potentially stifling innovation by giving patent holders more power than Congress intended. The ruling in KSR v. Teleflex will make it harder to get new patents and to defend existing ones. The decision involves an arcane but vital area of patent law dealing with how to determine whether an invention is “obvious” and hence not patentable"
Quoting Peter Sullivan:
"Now, all knowledge in the relevant field — technical knowledge, changes in implementing technologies, consumer demand — will be available to show whether the invention was truly innovating or just the product of connecting the dots in the prior art."
Christopher G. Wolfe, K&L Gates, The USPTO’s Initial Response
The descriptions below indicate that the USPTO still does not get it, even after KSR.
"In a May 3, 2007 Memorandum to its examiners, the USPTO gave a first indication of how it will apply the KSR decision On its face, this initial response does not appear to call for a major departure from current examining procedure. The USPTO indicated, however, that it is continuing to analyze the KSR decision and will issue additional guidelines in the near future.
Substantively, the Memorandum makes it clear that examiners must continue to support obviousness rejections under section 103 with explicit analysis establishing a reason why a person of ordinary skill in the art would have combined prior art references to arrive at the claimed subject matter. No precise guidelines for performing this analysis are provided. However, the USPTO does note the continuing viability of the Graham factors as well as several additional factors recited in the KSR decision, including marketplace demands. In addition, the USPTO notes that the TSM test is still available, though not in its previous rigid form. In what could be a telling comment, the USPTO characterizes the KSR decision as relating to situations, “when the claim recites a combination of elements of the prior art.” It is still unclear what effect, if any, the case will have on patent claims that recite at least one element that is not in the prior art.""
Lawrence P. Ebert, IPBiz
"Here's what the USPTO said after the Supreme Court decision in KSR:
Therefore, in formulating a rejection under 35 U.S.C. 5 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed."
What is wrong with the USPTO? Is the problem their lack of accountability to anyone? Why is President Bush not on top of this dusty organization to get its act together? The fact that the USPTO still does not get it, even after KSR, is all the more surprising, since the head of the USPTO, John Dudas, apparently recognizes that the law of obviousness is a key component in the decision process to grant patents. Someone should start shaking the management execs at the USPTO and start shouting "WAKE UP!"
What we expected, however, and did not get - but what is required - is a directive from Bush viz. from Dudas to his patent examiners that the standards set forth in KSR be fully implemented by them immediately. We also expect the immediate implementation of continuing education seminars for patent examiners to instruct them as to how to apply the KSR guidelines properly in their examinations.
There should also be a retroactive examination of all technology patents granted in the last 20 years and a special authority, independent of the US Patent Office, made up of attorneys, should be created, with the power to invalidate any patent granted by the USPTO within the last 20 years, to thus keep the courts from being swamped with patent litigation about invalid patents.
The Fire of Genius - Joseph Scott Miller
Fried Frank - KSR Litigation Papers
Fedcirc.us, KSR International v. Teleflex Inc. by J. Matthew Buchanan
More Blog Discussion of KSR at Law.com links
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