KSR International Co. v. Teleflex, Inc., et al. – The Brief in Opposition.
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 However, the court never stated that synergism, notably a single-pronged test, superseded Graham.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?
2. The Federal Circuit Did Not Err By Determining That Genuine Issues Of Material Fact Existed.
Teleflex correctly avers that KSR bears the burden of proof on invalidity of the Teleflex patent. The burden of proving invalidity is one of clear and convincing evidence, and this standard was used by the Federal Circuit de novo to review the district court’s summary judgment with respect to obviousness. “None of these standards are controversial or call into question a compelling legal issue that this Court needs to review.” The Supreme Court does not need to review the fundamental decision by the Federal Circuit to vacate the District Court’s order granting summary judgment. In a footnote, Teleflex also reminds the court that on remand, the lower courts could dispose of the instant case on several independent grounds, e.g. noninfringment.
3. The Supreme Court Has Consistently Declined to Review the Federal Circuit’s Decisions On Obviousness.
Since 1985, many parties have sought to review the same issues that KSR has sought review for. In that time, the Supreme Court has not accepted one petition calling into question the Federal Circuit’s interpretation of Graham or Section 103! On this note, Teleflex briefly describes the a few cases where the “suggestion-teaching-motivation” test was called into question . . . one as recent as 5 years ago (2001).
4. KSR’s So-Called “Circuit Split” Is Overblown and Manufactured.
Teleflex notes that KSR did not provide any post-1982 decision from a circuit court other than the Federal Circuit that is in conflict with the application of the “suggestion-teaching-motivation” test in the present case. Thus, Telefex avers that the so-called split does not exist.