Obviousness Redux: Arm-chair Quarterbacking KSR v. Teleflex
KSR v. Teleflex, 550 U.S. __ (2007).
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." The Court also noted that because the parties did not dispute the prior art, the claim's scope or the level of ordinary skill in the art and because obviousness is a legal question, the district court was correct to grant summary judgment in this case.
In addition to bringing the Fed. Cir. down to size, the Supreme Court also took a swipe at the PTO:
We need not reach the question whether the failure to disclose [the prior art reference] during the prosecution . . . voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption - that the PTO, in its expertise, has approved the claim - seems much diminished here.
The KSR decision opens up obviousness and will make obviousness a much larger issue in patent cases. And whatever else the "new" old law may do, it will keep patent litigators very busy for years to come. You can download a PDF of the Court's opinion from the Blog's archives.
Here is a list of links to other KSR commentary across the internet, as you can see you could read about KSR all week:
Prof. Sarnoff via Patently-O
WSJ Law Blog (with interesting comments from several key players and practicioners)
Fire of Genius and here
Orange Book Blog (for the decisions effect on pharma patents)
Michael Barclay of Wilson Sonsini via the SCOTUS Blog
Dan Bromberg of Quinn Emanuel via the SCOTUS Blog
