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KSR International Co. v. Teleflex, Inc., et al. – The Brief in Opposition.

Posted in General Commentary, Opinion Commentary by Jake Ward on August 11, 2006

The brief in opposition can be view here: Teleflex – Brief in Opposition

The reasons stated by Teleflex as to why the present case is not an appropriate one for the Supreme Court to re-examine the “well-settled” law of obviousness, and why the petition for review should be denied, are summarized as follows:

1.  The Federal Circuit Has Not Abandoned The Supreme Court’s Precedents or Section 103.

Teleflex states that KSR is wrong in asserting that the decision of the Federal Circuit was in direct conflict with Supreme Court precedent and Section 103.   First, Teleflex focused on the fact-intensive Graham test, having multiple prongs for analysis.  Teleflex points out that under the specific fact situations of the Sakraida and Anderson’s-Black Rock cases cited by KSR, the courts used synergism to determine obviousness.  It was further noted that the courts applied the synergism test while relying on Graham as laying out the framework for determining obviousness.  However, the court never stated that synergism, notably a single-pronged test, superseded Graham.

Teleflex further asserts that Graham instructed that the injection of hindsight into the obviousness analysis must be avoided.  The “teaching-suggestion-motivation” test is consistent with Graham and prevents such hindsight reconstruction by requiring a suggestion to combine prior art.

Furthermore, Teleflex cites another Supreme Court decision, United States v. Adams, 383 U.S. 39 (1966), decided in the same year as Graham.   This case, and subsequent cases citing Adams, provide precedents on obviousness that are consistent with the Federal Circuit’s “suggestion-teaching-motivation” decisions.  Teleflex argues that these cases effectively state that a patent will not be deemed invalid merely because it is made up of a combination of old elements, and to do so is contrary to Section 103.

Finally, Teleflex notes that KSR referenced motivation, suggestion and desirability to combine prior art as the proper test in lower court briefs.

JW Note:  The arguments here really don’t seem that persuasive to me.  The emphasis seems to be inappropriately placed on the single-prong vs. multi-prong nature of the conflicting tests.  Also, Teleflex actually appears to argue that the synergism test is consistent with Graham . . . isn’t that more in line with KSR’s position?  Instead, shouldn’t the focus be placed on the consistency of the “suggestion-teaching-motivation” test with Graham?

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Build It and They Will Come.

Posted in General Commentary by Jake Ward on August 11, 2006

 1000hits

Well, it seems this patent blog has recently reached a minor milestone . . . 1000 visits to the website.  Ok, I understand that this is considerably less than a drop in the whole internet bucket, but I still take pride in knowing that someone else besides yours truly is reading this blog (thanks Mom?).

So . . . congratulations to myself!  I will continue to post IP law items that I feel are interesting, and I hope you continue to visit!