To recap the recent Kahn case (CAFC 04-1616): A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as

the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references. . . . The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art.

The SG had harped on the unreasonable burden of evidence for supporting a “teaching, suggestion, or motivation” for obviousness combination as the crux of the crucible for certiorari. Goldstein reminds the Supreme Court of two cases that SG didn't know of or forgot - Kahn and Cross Medical, cases that make SG's arguments moot:

Two recent Federal Circuit decisions illustrate that the Solicitor General’s characterization of that court’s precedent does not reflect the evolving state of the case law. See In re Kahn, 441 F.3d 977 (2006); Cross Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (2005). These decisions recognize that the nominally required “suggestion, teaching, or motivation” to combine prior art may be found “implicitly.” In Kahn, the court affirmed the PTO’s finding of obviousness, explaining at great length that a “teaching, suggestion, or motivation” can be found “implicitly” based on precisely the factors that the Solicitor General says are relevant: “what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art.” 441 F.3d at 987-88. In Cross Medical, the court of appeals applied the “implicit” obviousness standard to reverse a district court ruling that a patent was not obvious, explaining that obviousness could be found on the basis of a “problem [that] was within the general knowledge of those of ordinary skill in the art,” 424 F.3d at 1322, even if the patent is not directed at “the identical problem addressed in [the] prior art,” id. at 1323. No fair distinction can be drawn between the rule proposed by the Solicitor General and the flexible standard articulated by the Federal Circuit in these more recent decisions and adhered to in this case.

Goldstein points out that the SG misconstrued the status of this case, thinking it ripe for Supreme Court review.

That is inaccurate: the court of appeals merely held that the conflicts in the summary judgment record precluded a finding of obviousness and remanded for further proceedings.

On this point, as put previously in the Patent Prospector:

Keep in mind the flimsy nature of KSR's position, and hence the inappropriateness of the Supreme Court taking this case. The district court granted summary judgment of invalidity based on obviousness. Teleflex appealed, arguing summary judgment was inappropriate because facts were at the heart of the dispute. The CAFC agreed, citing the basis for establishing fact, namely (surprise!) evidence, and remanded. KSR appealed up to the Supreme Court, before the district court had another shot.

Goldstein calls out the SG for his unsubstantiated accusation that the current standard is detrimental to innovation, which is contrary to available evidence (which Goldstein goes on to cite on pages 4-6):

The Solicitor General also asserts that the Federal Circuit’s jurisprudence is erroneous because it supposedly unduly disfavors obviousness determinations with the consequence that “it grants patent applicants unjustified rewards for disclosing non-innovative subject matter, and it forecloses competitors from using the public storehouse of knowledge that should be freely available to all.” S.G. Br. 16. The Solicitor General cites no Federal Circuit decision in support of those assertions and the objective evidence is to the contrary.

Tom Goldstein is a contributor to the SCOTUSblog, sponsored by Akin Gump Strauss Hauer & Feld, the firm Tom works for.

Dennis Crouch of Patently-O thinks certiorari likely, based upon an unpublished study that showed the Supreme Court took a case 15 out of 15 times when the SG gave it an unqualified recommendation.