Greenhouse also noted: Thomas G. Hungar, a deputy solicitor general, told the justices that “as the sole means of proving obviousness, the teaching-suggestion-motivation test is contrary to the Patent Act, irreconcilable with this court’s precedents, and bad policy.” IPBiz notes that the motivation inquiry is but part of the obviousness inquiry. See In re Dillon.
Reuters quoted Justice Scalia: "This is gobbledygook. It's irrational." and Reuters asserted this echoed doubts expressed by a number of the justices. During Tuesday's arguments, at least six of the nine justices expressed reservations about the federal circuit's obviousness test.
However, it's one thing to criticize the CAFC standard, and quite another to come up with a better obviousness test. Reuters noted: However, the justices struggled to come up with an alternative test for what inventions are obvious. And they expressed concerns that wholesale changes to the patent standards could disrupt businesses and inventors.
If the high court strikes down the obviousness test, Justice David Souter asked, "Are there going to be 100,000 cases filed tomorrow morning?"
BusinessWeek discussed some remarks critical of the CAFC standard and quoted Justice Kennedy:
Justice Anthony Kennedy seemed to agree.
"Why is (it) such a big deal" to combine the adjustable and electronic pedals? Kennedy asked. "Certainly this inventor would not be the only one to think that the two could and should be combined."
BusinessWeek also quoted Justice Breyer:
Justice Stephen Breyer added a down-to-earth note, wondering if he would be entitled to a patent for moving his electric garage-door opener from the bottom of the door, where it had been chewed on by squirrels, to the top.
IPBiz notes that these quotes tend to miss what was going on in the KSR case. The CAFC remanded simply because the district court didn't articulate its reasons for finding motivation.
One of the more interesting statements appeared on a board:
I attended the oral argument. The Justices appear to hate the Motivation test, especially Breyer and Scalia. A patent examiner was sitting down the row from me and had a look on his face like Christmas had come early. I can see Examiners swinging from chandeliers at the PTO, chugging beer bongs, and blasting their 8 track players.
For all of us (attys & examiners), the problem was that none of the attorneys could fully fight for the Motivation test. Respondent's attorney couldn't fight too hard because he'd have to as much admit that when the test is properly applied, this patent will probably be invalidated. He did a great job by the way, and did acknowledge that the patent may not survive at the very end of his argument.
I think the Justices would not have been so hostile to the test if the issued had been framed thusly: the trial court lazily reached the conclusion of obviousness and failed to articulate why the invention is obvious. The Motivation test may have warts, but it doesn't do too bad a job.