KSR International Co. v. Teleflex, Inc., et al. – The Petition for Certiorari
The full petition may be viewed here: KSR – Petition for Certiorari
The reasons stated by KSR as to why the Supreme Court should grant certiorari for this case are summarized as follows:
1. The Federal Circuit has Departed from the Supreme Court’s Precedents Construing Section 103.
KSR asserted that in the six cases in which the Supreme Court has applied 103, in none of the cases did the court hold that a “teaching, suggestion, or motivation” to combine or modify references was necessary. KSR proceeded to cite these cases, including Graham v. John Deere, pointing out that the Supreme Court never required any “specific factual findings” of a teaching, suggestion, or motivation to combine. In fact, as recited in Anderson’s-Black Rock, Inc. and Sakraida, the court stated that “where a patent merely covers a combination of old elements, the patent will not be valid unless the combination produces “a new or different function” or demonstrates a “synergistic result” or “a result greater than the sum of the several effects taken separately.”
KSR also noted that prior to the creation of the Federal Circuit, at least seven regional Courts of Appeals followed Sakraida and Anderson’s-Black Rock, et seq. Further, this precedent was rejected by the Federal Circuit in Stratoflex, Inc. v. Aeroquip Corp., which provided that there was no legal basis for the judicial classification of “combination patents”, and subsequently fashioned the present “teaching, suggestion, motivation” test.
Numerous commentators and authors have since noted the divergence between the Federal Circuit’s precedents and prior Supreme Court decisions. In particular, it has been noted that the patent in Graham v. John Deere, arguably the premier Supreme Court case relating to obviousness, was held invalid without the detailed evidentiary showing that the Federal Circuit currently requires before deeming subject matter unpatentable under 103.
2. There is an Acknowledged Circuit Split in the Test for Determining Obviousness.
KSR asserted that the Federal Circuit has already acknowledged that the “teaching, suggestion, motivation” test conflicts with at least one other circuit, the Fifth Circuit, which has required a “synergistic result” as drawn from Supreme Court precedent. “Rather, the Federal Circuit makes patentabilty depend on the outcome of costly and unpredictable litigation over the existence or non-existence of some “teaching, suggestion, or motivation” to combine pre-existing elements, regardless of whether the combination yields any new or different function or effect.” KSR is undoubtedly correct in asserting that “the issue here is relevant to all patents.”
3. National Studies Have Identified the Federal Circuit’s Obviousness Precedents as needing Reform.
The Federal Trade Commission (FTC) release in 2003 a comprehensive study of the patent system, entitled: To Promote Innovation: The Proper Balance of Competetion and Patent Law and Policy. KSR asserted that the FTC recognized the Federal Circuit’s obviousness test as a core issue in assessing nonobviousness and a focal point of current patent debate.
Additionally, in 2004 the Nationa lReeseach Council of the Natioanl Academies of Science and Engineering release a report calling for various reforms of the current patent system. See A Patent System for the 21st Century (2004). KSR asserted that the second recommendation of this report was to “reinvigorate the non-obviousness standard.” The report cited the work of a number of legal scholars whom consider the present state of the evolution of patent law as requiring a reduced hurdle for non-obviousness, particularly with respect to business method patents.
4. KSR v. Teleflex is a Good Case for the Supreme Court to Review the Federal Circuit’s Obviousness Test.
Why? Well first, the Federal Circuit’s obviousness test is at least two decades old . . . and the issue is considered so settled that the Federal Circuit did not even publish the decision vacating judgment in this case. Secondly, the challenge to the validity of the patent claim at issue is substantial. Thirdly, the technology at issue is readily understood (gas pedals for automobiles). Fourthly, the facts of the case well illustrate how the present test severely weakens 103 and ignores the effect of exogenous changes, i.e. changes no attributable to the work of an inventor that can be commercially successful yet technologically trivial. Finally, throughout the case KSR has relied upon Supreme Court precedent with regard to “combination patents” and the case therefore provides the court with a clear opportunity to address the issue.