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November 28, 2006

Supreme Court Obviousness Motivation

Excerpts from the oral arguments before the Supreme Court in KSR v. Teleflex, KSR seeking to upend the § 103(a) obviousness standard; the following excerpts giving a flavor of the proceedings.

James Dabney is petitioning the court on behalf of KSR.

Justice Ginsberg immediately asks: "[Y]ou say the PTO has recognized that it issued this patent, that it's an invalid issuance. So why aren't they curing their own mistakes, never mind what a court is going to do?"

Dabney: "This issue arises in the context of a defense pleaded to a claim for patent infringement and I'm not sure that the Patent Office really could swoop in and cut off the plaintiff's claim in the manner Your Honor is suggesting."

Justice Ginsberg: "We're talking about what the law should be. Would you make, be making the same argument if we were looking at the most recent decisions of the Federal Circuit, the ones that they issued within the year, and each as I remember they held that the patent was obvious and therefore invalid? Suppose we were dealing in what was, the cases were, what were they, Kahn, Alpha, and Dystar?"

Dabney: "[W]hat the Federal Circuit has done in recent times has been after a certiorari was granted in this case to erect a series of escape devices from what is otherwise a categorical test that must be imposed in all cases."

Chief Justice Roberts: "Of course, the reason that the Federal Circuit has devised this additional test or gloss on Graham is that they say obviousness is, it's deceptive in hindsight. In hindsight everybody says, I could have thought of that; and that you need -- if you don't have the sort of constraint that their test imposes, it's going to be too easy to say that everything was obvious."

Justice Breyer: "I just don't understand what is meant by the term 'motivation.'... I mean, everybody has a motivation to look to the prior art."

Justice Ginsberg: "You disagree with the motivation test."

Dabney: "Yes."

Justice Ginsberg: "So perhaps you're not the..."

Justice Breyer: "Right person to ask."

(Laughter.)

Dabney: "[T]his Court has rejected time and time again the notion that someone who was the first simply to take advantage of the known capability of technology was entitled to a patent."

Justice Kennedy: "Well, would it be, would it be inadvisable for us to say the motive test teaches us something important; it has a valuable place; it's just not the exclusive test for what's obvious."

Thomas Hunger on behalf of KSR follows.

Justice Kennedy: "[C]an we keep the motivation test and then supplement it with other, with other means of, other ways of showing obviousness?"

Hungar: "We agree that teaching suggestion and motivation are valid means of proving obviousness, valid considerations for the Court. And this Court's precedents are entirely consistent with that. A number of cases cited by respondent show that the Court has looked to suggestion as a means to determining whether a patent is obvious."

Justice Souter: "What do you make of the, sort of the revolution argument that whether it's contrary or intention with, in fact the, it's been applied in what is now the Fed Circuit for what, 20 years, more than 20 years I guess. And to tip it over now is going to produce chaos. What's the answer to that?"

Hungar: "[I]t was an open secret in the patent bar that the approach being taken by the Federal Circuit was inconsistent with cases such as this Court's Sakraida decision."

Justice Ginsberg: "What about the experts? You said this was obvious and this should have, not have gotten very far. But there were two experts, were there not, who made declarations, that had all kinds of credentials, and they called it elegant, novel and nonobvious."

Hungar: "[T]he problem with the Court of Appeals analysis, one problem, and with the experts' analysis, is that they're focusing on the narrow definition of the quote unquote problem by looking only at what this particular inventor was trying to solve, but the scope of the claim is far broader."

Thomas Goldstein, on behalf of Teleflex.

Goldstein: "[W]hat the Federal Circuit has said is what we mean by teaching a suggestion or a motivation, and it can be explicit or implicit, is anything that would have made this invention apparent to a practitioner at the time. That's what it's after. It wants to know, look, was it apparent to someone else, a practitioner at the time of the invention..."

Justice Breyer: "For who? For me?"

Goldstein: "For a practitioner, yes."

Justice Breyer: "For me the inventor?"

Goldstein: "Yes."

Justice Breyer: "I know that, because otherwise..."

Goldstein: "No. Justice Breyer, you don't understand."

Justice Breyer: "That's true."

(Laughter.)

Justice Breyer: "[W]hen I saw this and I began to think it looks pretty obvious. What's supposed to go on, I don't understand it."

Goldstein: "Common sense, common knowledge, common understandings are all included within teaching, suggestions or motivations."

Goldstein: "[Y]ou have to distinguish two things rightly. The first is the state of the law as it exists now, and that's what we ask you to affirm. And that is, the Federal Circuit has made quite clear that its test is inclusive, and we think that that establishes that it's not necessary to add some new sort of undetermined test of...

Justice Scalia: "You say its test is inclusive. I would say its test is meaningless. They have essentially said, our test simply reduces to what, what your opponents in this litigation say. If you think that's being inclusive, you know - it doesn't add anything whatever to the question, would a person of the ordinary skill in this field have conceived of this idea."

Goldstein: "[T]he petitioner's standard is, was somebody capable of doing this? We have a different question. Would it have been apparent to, and that's what we think the text requires, would it have been apparent to one skilled in the art? And so the Federal Circuit is saying whatever evidence you want to bring to bear."

Justice Stevens: "Don't you think there's a grammatical difference in the meaning of the word obvious and the meaning of the word apparent?"

Goldstein: "No, I don't."

Justice Kennedy: "the Federal Circuit is saying that, the gist of it is if and only if the previous patents taught this. But you, you can look at these two devices, and you're a good mechanic, you've never seen a patent, you've never read these patents, you've never read these claims, you've never been to the Supreme Court, and you put them together... And the Federal Circuit said oh, it's not in the patent, it's not obvious."

Goldstein: "[T]hat is not a fair description of the Federal Circuit's test... Under our nonrigid motivation, suggestion, teaching test, a suggestion to combine need not be found in the prior art."

Justice Alito: "Well, once you define the teaching, suggestion and motivation test that way so that it can be implicit, it can be based on common sense, I don't quite understand the difference between that and simply asking whether it's obvious. Could you just explain what that adds?"

Goldstein: "Well, all that it adds is an analytical framework. It's an elaboration. The word "obvious"..."

Chief Justice Roberts: "It adds a layer of Federal Circuit jargon that lawyers can then bandy back and forth, but if it's -- particularly if it's nonexclusive, you can say you can meet our teaching, suggestion, or motivation test or you can show that it's nonobvious, it seems to me that it's worse than meaningless because it complicates the inquiry rather than focusing on the statute."

Goldstein: "Mr. Chief Justice, the reason that the Federal Circuit disagrees and over 30 years this special court has elaborated this problem - is that we need a guidance, we need guidance for the lower courts. We need to focus them on the right question, and for patent examiners and patent practitioners, and the right question is not is -- was someone merely capable of putting the two together. The right question is is there any reason to believe that it would have been apparent at the time of the invention to create this invention whether it's through a teaching, a suggestion, a motivation."

Justice Scalia: "I agree with the Chief Justice. It is misleading to say that the whole world is embraced within these three nouns, teaching, suggestion, or motivation, and then you define teaching, suggestion, or motivation to mean anything that renders it nonobvious. This is gobbledygook. It really is, it's irrational."

Goldstein: "Justice Scalia, I this it would be surprising for this experienced Court and all of the patent bar -- remember, every single major patent bar association in the country has filed on our side..."

Chief Justice Roberts: "Well, which way does that cut? That just indicates that this is profitable for the patent bar."

(Laughter.)

Goldstein: "[Y]ou're right, we have to be concerned about overpatenting, it says on the other hand we have to be very concerned about hindsight determinations of obviousness. But I do want to just step back and make a point about judicial administration... [I]f you purport to change the rules unnecessarily, if you say we're going off in a different direction, this test has -- underlies 160,000 patents issued every year. There is no rhyme or reason to applying a presumption of validity if you're saying the patent examiner applied the wrong test. And it will create genuine dramatic instability."

Justice Breyer: "It's just to say what you've been saying, that what you're supposed to look to ultimately is whether a person, as the statute says, who is familiar with the subject, of ordinary skill in the art, whether to such a person this would have been obvious... But to hope to have a nonexclusive list seems to me a little bit like Holmes trying to hope to have an exclusive list of what counts as negligence. In the law we have many standards that you can get clues about, but you can't absolutely define them, and why isn't this one of them?"

Goldstein: "Justice Breyer, I think that's the dilemma that the Federal Circuit has been facing and is in answer to the criticism of Justice Scalia and that is the Federal Circuit isn't trying to articulate every single possible thing that can show you that it is obvious. What it's trying to do is focus you on the right question. It's trying to say, here's the process of invention: We have to figure out there's a problem. We have to figure out what prior art you're going to use. You have to figure out how you're going to combine it, and then you actually combine it. The act of invention, the thing that is the discovery that we want to encourage, is there in the middle. It's picking out the prior art and deciding how to put it together."

Justice Breyer: "Supposing we then were to say exactly what this Court already said, that the standard here is obvious, we list a few of these additional factors that they've thrown in, and just as the Court said before, all these additional factors are there. They can be considered in an appropriate case, but it is important to remember that the ultimate matter which is for the judge is to apply the word "obvious" or not in light of the evidence and what the experts say and the facts as found by a jury or whoever is the factfinder. Would you have any objection to an opinion like that."

Goldstein: "No."

Chief Justice Roberts: "Who do you get to be an expert to tell you something's not obvious?"

Goldstein: "You get..."

Chief Justice Roberts: "I mean, the least insightful person you can find?"

(Laughter.)

Chief Justice Roberts: "[T]he Federal Circuit's approach focuses narrowly prior to our grant of certiorari, allegedly more flexibly after, on prior art, as opposed. To I would say common sense. And so they say we have to find something in prior art to show that this was non... that this was obvious."

Goldstein: "Mr. Chief Justice, that's not correct. Even under a capability standard, even under an extraordinary innovation standard, you are going to compare something to prior art. You're going to take what exists now and compare it to what existed before, no matter what standard you're employing. What I want to make clear is two things. The first is, though the Federal Circuit has in recent opinions been quite emphatic about how inclusive its test is, it has consistently cited earlier Federal Circuit precedent and said that the other side and the people who claimed that their standard is too narrow and misguided are mischaracterizing it. And the second is, the judgment in this case quite explicitly acknowledges and implies the implicit teaching, suggestion, motivation standard."

Justice Breyer: "And it [the Federal Circuit Court] so quickly modified itself [in recent cases]."

Justice Scalia: "And in the last year or so, after we granted cert in this case after these decades of thinking about it, it suddenly decides to polish it up."

Goldstein: "Justice Scalia, if you actually believe that, then you just don't believe the judges in the Federal Circuit because in each of these opinions they say quite explicitly we are not changing it."

Justice Alioto: "Would you dispute that in some of the earlier cases, like Dembiczak with the garbage bag that looks like a pumpkin, that this TSM test was applied in a way that seemed to ask for something quite explicit in the prior art?"

Goldstein: "I do think that you can find outliers. I think that's fair... The Federal Circuit explains in Dembiczak what it was actually looking for is an explanation."

In rebuttal, Dabney outright lies about the obviousness standard.

Dabney: "The law has always required that the patentability be determined by the smallest amount of difference."

Here is a transcript of the oral hearings.

Posted by Patent Hawk at November 28, 2006 4:31 PM | Prior Art