KSR v. Teleflex: Notable Quotes from the Oral Arguments
Well, November 28th was certainly an interesting day at the Supreme Court (to those in the Patent Bar, at least). Although it is generally a futile effort to predict how the Supreme Court will rule on any given issue, my reading of the KSR v. Teleflex arguments leaves me pessimistic that the “TSM test” will escape this challenge unscathed.
Below are some quotes that I found of particular interest:
Transcript at page 6.
JUSTICE ALITO: But what is the difference between asking whether something is implicit in the, in the prior art and simply asking whether it would have been obvious to a person of ordinary skill in the art?
Transcript at page 9.
JUSTICE BREYER: But I don’t understand, though I’ve read [In re Winslow] about 15 or 20 times now, it though I’ve read it about 15 or 20 times now, I just don’t understand what is meant by the term “motivation.”
Transcript at page 15.
JUSTICE KENNEDY: No. No. No. It took from 10 years to go from — I think 10 years from Asano to Engelgau, so it must have been not all that obvious.
Transcript at page 19.
JUSTICE KENNEDY: Do you agree that in that context it would serve a valid purpose, i.e., can we -that is to say, can we keep the motivation test and then supplement it with other, with other means of, other ways of showing obviousness?
MR. HUNGAR (ON BEHALF OF THE UNITED STATES, AS AMICUS CURIAE): Yes, Your Honor. 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.
The problem with the Federal Circuit’s test is it makes that the exclusive test and precludes obviousness determinations in the absence of satisfaction of that test which this Court’s precedents are clearly not consistent with.
Transcript at page 22.
JUSTICE GINSBURG: And what I understand [the U.S. amicus curiae] brief to say is that [the TSM test] has to be supplemented with what you have called, you’ve labelled “sufficiently innovative.” And then I begin to think well, what’s “sufficiently innovative?” How is a trier supposed to know if something — in other words I think what you’re suggesting as a supplement is rather vague.
MR. HUNGAR: Your Honor, I think the “sufficiently innovative” is more of a description rather than a test; it’s a description of what this Court said in Graham.
Transcript at page 28.
MR. GOLDSTEIN (FOR RESPONDENT): Thank you, Mr. Chief Justice, and may it please the Court: I think the Court will want to have available to it the red brief and also this big, which is the supplemental joint appendix which has some of the patents in it, and I’m going to quote from both of them. I think you can’t understand what motivation means and what the whole test that the Federal Circuit is employing means –
JUSTICE SCALIA: You’re right about that.
Transcript at page 36.
JUSTICE KENNEDY: It looks like Dystar was decided by the Federal Circuit after it decided this case, didn’t it?
MR. GOLDSTEIN: Yes, it did.
JUSTICE KENNEDY: I mean, you have to be defending what the Federal Circuit did in this case. And the fact that they say well now, what this means is really in some other case, that seems to me that’s really irrelevant.
MR. GOLDSTEIN: If I could just clarify, Dystar –
JUSTICE KENNEDY: And I think you should tell us when the case has been decided after, I think it has much less, much less weight.
Transcript at page 37.
JUSTICE SCALIA: You say [the CAFC’s] test is inclusive. I would say its test is meaningless. [The CAFC] essentially said, our test simply reduces to what, what your opponents in this litigation say.
Transcript at page 40.
CHIEF JUSTICE ROBERTS: [The term ‘obvious’] 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.
Transcript at page 41.
JUSTICE SCALIA: It is — 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.
Transcript at page 46.
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.
MR. GOLDSTEIN: No.