Supreme Court Requests Brief From Solicitor General in Patent Obviousness Case
October 3, 2005. The Supreme Court invited the Office of the Solicitor General to file a brief in the case KSR International v. Teleflex, a patent case involving the issue of obviousness. The Court has not yet granted certiorari, but this request suggests that it might.
Introduction. This is an obscure case regarding adjustable floor pedals. The Court of Appeals issued a non-precedential opinion. However, this case has attracted the attention of technology companies such as Cisco and Microsoft, which have urged the Supreme Court to take the case.
These and other amicus parties hope that this case will become the vehicle for overturning a string of Federal Circuit opinions that they believe make it too easy to obtain and defend questionable patents -- patents that are obvious in light of the prior art. These amici argue that the current state of the law makes it more risky and expensive for innovative companies like Cisco and Microsoft to bring new products to market. And this, they argue, inhibits technological innovation.
The Supreme Court last visited the subject of obviousness in its 1966 opinion in Graham v. John Deere Co., 383 U.S. 1. KSR and the amici now want the Supreme Court to take this case, and use it to abandon the Federal Circuit's motivation test.
The Supreme Court's October 3, 2005 Order List [84 pages in PDF], at page 12, states only this: "The Solicitor General is invited to file a brief in this case expressing the views of the United States. The Chief Justice took no part in the consideration or decision of this case."
That is, the Federal Circuit has issued its opinion, and KSR has petitioned the Supreme Court for writ of certiorari. The Supreme Court has not decided whether or not to grant certiorari. The Supreme Court asks the Department of Justice's OSG for its views on whether or not to take the case. That the Supreme Court asks for an OSG brief indicates some interest in the case.
The plaintiffs below are Teleflex International and Technology Holding Company. Teleflex is the assignee of U.S. Patent No. 6,237,565 B1, titled "adjustable pedal assembly with electronic throttle control". It pertains to those things on the floor of a car that are used to control gas, breaking, and the clutch.
Proceedings Below. These plaintiffs filed a complaint in U.S. District Court (EDMich) against KSR International alleging infringement of this patent. The District Court granted summary judgment to KSR. It held that the sole claim of the patent at issue in the case is invalid for obviousness. That opinion is reported at 298 F. Supp. 2d 581.
Teleflex appealed. The U.S. Court of Appeals (FedCir) issued its non-precedential opinion [15 pages in PDF] on January 6, 2005, vacating the judgment and remanding.
35 U.S.C. § 103 addresses "Conditions for patentability; non-obvious subject matter". Subsection (a) references obviousness. It provides that "A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."
The Federal Circuit wrote that "When obviousness is based on the teachings of multiple prior art references, the movant must also establish some ``suggestion, teaching, 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 reason, suggestion, or motivation to combine [prior art references] may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved, ‘leading inventors to look to references relating to possible solutions to that problem.´ ´´" (Citations to earlier Federal Circuit opinions omitted. Brackets in original.)
The Federal Circuit continued that "Our case law makes clear that the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references."
It concluded that "we have consistently held that a person of ordinary skill in the art must not only have had some motivation to combine the prior art teachings, but some motivation to combine the prior art teachings in the particular manner claimed."
Petition for Writ of Certiorari. KSR filed it petition for writ of certiorari [90 pages in PDF] on April 6, 2005. It states that "The Federal Circuit applies this ``teaching-suggestion-motivation test´´ even where, as in this case, a patent claims nothing more than a combination of preexisting, off-the-shelf components in which each component performs exactly the same function that it had been known and was designed to perform." See also, KSR's reply brief [17 pages in PDF].
KSR's counsel of record is James Dabney of the law firm of Fried Frank. In addition, John Duffy, professor at the George Washington University Law School (GWULS), is listed as of counsel.
Amicus Brief of Cisco and Microsoft. This case has already attracted amicus participation. Cisco Systems and Microsoft, along with Hallmark Cards, V.F. Corporation, and Fortune Brands, filed an amicus curiae brief [23 pages in PDF] urging the Supreme Court to grant certiorari.
They wrote that the "Federal Circuit's current interpretation of 35 U.S.C. § 103(a) hurts innovation by providing too lenient a standard for obtaining a patent, and by invading the province of courts to decide ultimate questions of patent validity. The motivation test allows patents to be issued for insignificant extensions of existing technology. The motivation test not only sets bad patent policy, but it also contravenes firmly established Supreme Court precedent for the appropriate test for obviousness under Section 103(a). The time is right for this Court to reestablish the primacy of its precedent in this area. This case provides an excellent vehicle for doing so."
The counsel of record for these amici is Peter Sullivan of the law firm of Hughes Hubbard & Reed.
Amicus Brief of IP Law Professors. Also, a group of twenty-four people who teach intellectual property law, filed an amicus curiae brief [31 pages in PDF].
They too want the Supreme Court to grant certiorari, and reverse the Federal Circuit. They argue that "the Federal Circuit's incorrect interpretation of the obviousness standard, as applied in this case, provides incentives for seeking patent rights on obvious extensions of existing technologies. The patenting of obvious extensions of existing technologies has high social costs and is contrary to the Constitutional purpose of the patent system."
"Over the past two decades, the Federal Circuit has gradually developed an obviousness test that departs from the statutory mandate to examine obviousness from the perspective of the ``person having ordinary skill in the art.´´"
They argue that "the availability of patents on obvious combinations overwhelms the Patent and Trademark Office with applications for patents on obvious combinations of previously existing technologies; promotes socially wasteful races to patent these obvious advances; and raises patent search costs for those seeking to combine existing technologies. Moreover, in attempting to find documentation of what is commonly known in the art, patent examiners and later litigants must waste time and resources searching for specific articulations of common, but largely tacit, knowledge."
And, they argue that the problem is particularly acute for fast moving new technologies. For example, they state that "technological advances have given rise to numerous opportunities to computerize existing processes, many of which would likely have been obvious to those skilled in the art once the computer technology became available."
They conclude that "This case provides the Court with an opportunity to overturn the Federal Circuit’s much-criticized current approach to non-obviousness, which is at odds with the statutory language, inconsistent with this Court’s precedent, and contrary to the goals of the patent system."
The law professors' counsel of record is Robert Brauneis, who teaches at GWULS. Among the others are Katherine Strandburg (DePaul), Cynthia Ho (Loyola University Chicago), Mark Lemley (Stanford), Ronald Mann (UTexas), Robert Merges (UC Berkeley), and Arti Rai (Duke).
Amicus Brief of PFF. The Progress and Freedom Foundation (PFF) also filed an amicus curiae brief [25 pages in PDF]. It too wants the Supreme Court to grant certiorari, and overturn the Federal Circuit's motivation test.
It states that it wants the Supreme Court "to restore vigor to the nonobviousness standard, thereby preventing the degradation of patent quality and a corresponding loss of credibility of the patent system itself."
See also, the Supreme Court's docket page for this case.
The Supreme Court proceeding is KSR International Co.
v. Teleflex, Inc., et al, No. 04-1350. The Court of Appeals number is
04-1152. The District Court number is 02-74586.