AIPLA ECLC KSR PANEL

1. AIPLA ECLC KSR PANEL A Panel Discussion About Obviousness and The Supreme Court Case – KSR v. Teleflex APILA Midwinter Meeting 2007 New Orleans

2. Panel Members Jim Hallenbeck Lance Reich Brad Forrest

3. The Hot Topic – The Facts • The KSR v. Teleflex Case. • The Supreme Court has not addressed obviousness 35 U.S.C. §103 since its decisions in the Adams battery and Graham v. John Deere trilogy of cases in 1966 and the Sakraida v. Ag Pro case in 1976. • Teleflex is the patent owner. • KSR asserts the patent is invalid.

4. The Facts • Patent concerns an adjustable gas pedal for cars. • District court ruled for defendant KSR on its summary judgment motion of invalidity. • Federal Circuit reversed and remanded stating that there was no motivation to combine the references cited to show invalidity.

5. US Patent 6237565 to Teleflex Inc.

6. From ksrint.com

7. From ksrint.com

8. teleflexmorse.com/documents/APSFlyer_2006.pdf

9. U.S. Patent 2627798 To Graham

10. Question Presented Has the Federal Circuit erred in holding that a claimed invention cannot be held obvious in the absence of some proven teaching, suggestion, or motivation (the TSM test) that would have led a person of ordinary skill to combine the relevant prior art teachings in the manner claimed?

11. Respondent - Teleflex • Congress chose “Obviousness” not “Inventiveness” on purpose • Graham v. Deere • Set forth obviousness standard • Did not provide combining standard • To be developed via case law • Adams v. US • Was combination of known elements obvious? • …facts did not “suggest” the combination • Foreshadowed suggestion analysis

12. Respondent - Teleflex • Assertions of problems with the test not supported by empirical evidence • Suggestion to combine not a factor in as many cases as asserted by press • No evidence of overpatenting • TSM often used by Fed Circuit to find invention obvious

13. Petitioner - KSR • TSM has no basis in the text of § 103 • Teaching suggestion motivation cases conflict with supreme court precedent • TSM effectively strips courts of their traditional authority to determine the validity of patent claims under § 103 and transfers that authority to lay juries

14. AIPLA • "Hindsight is an exact science" where the outcome already is known", which as Billy Wilder famously put it "is always twenty-twenty." • The difficulties caused by hindsight are not new; they have been recognized from time immemorium. • King Solomon wrote in the Bible, at the beginning of Ecclesiastes, 1:9-10, that everything new can actually be traced to what came before it

15. AIPLA • What has been is what will be, and what has been done is what will be done; there is nothing new under the sun. • Is there a thing of which it is said, "See, this is new"; • It has already been, in the ages before us.

16. IBM • KSR’s Approach sets the patentability bar too high, injects uncertainty into the patent system, and will block the patenting of truly meritorious inventions

17. IBM • The Solicitor General’s Approach will drive non-obviousness determinations into infringement litigation and reduce certainty and clarity in the patent system.

18. IBM • Current test same as novelty • KSR approach sets bar too high • New function/synergy • Solicitor Test leads to litigation • TSM plus others methods – case by case

19. IBM • New Test: Rebuttable presumption of motivation to combine analogous art. • Teaching away • Secondary considerations – commercial success, long felt need unfulfilled, failure of others… • Consistent with existing law • Consistent with current Examiners

20. Oral Arguments • Breyer – what is motivation? • Roberts – Federal circuit jargon • Scalia – This is Gobbledygook • Roberts – profitable for the patent bar • Breyer – some support for secondary considerations • Breyer – 4-5 moving pieces, put sensor on one – why not obvious?

21. Oral Arguments • Roberts – expert – find least insightful person you can find? (laughter) • Scalia – Fed Cir – after decades suddenly decides to polish it up. • Respondent gets point in that it was placed on non-moving part and solves problem of wires wearing out.

22. Questions • Should the Federal Circuit’s TSM test for obviousness be discarded? • What alternatives have been proposed? • Do the earlier Supreme Court cases indicate different concepts? • Has the issue presented morphed during its pendency before the Supreme Court?

23. Amicus Positions • 22 “Friends” supporting patentee (rule should remain). • 16 “Friends” supporting defendant (rule should be abandoned). • 2 “Friends” supporting neither side.

24. Panel Discussion • What is the current obviousness rule (TSM test) followed by the PTO? • Does it differ from the obviousness consideration of an issued patent? • How is the current TSM test practically applied to: • Mechanical inventions? • Software inventions? • Electrical inventions? • Pharmaceutical inventions? • Biotech inventions? • Are there differences in these applications?

25. Panel Discussion • What are the arguments offered by “Friends” supporting the patentee - respondent? • What are the arguments offered by “Friends” supporting the defendant – petitioner? • Do the “Friends” offer alternative concepts? • If so what are they?

26. Panel Discussion • Do the Amicus briefs present common arguments? • What other concepts are possible? • Predictions? • Should differing rules be applied to differing technologies? • What will be the commercial consequences if the Supreme Court does or does not adopt the position advocated by the petitioner or by the respondent?

27. What changes should we make now in drafting applications in anticipation of the decision?

28. Changes to draftin g • Build in secondary considerations? • Do so without patent profanity • Might help avoid adding witnesses with declaration practice • Other Suggestions?