IPBiz proposes possible form of KSR v. Teleflex opinion

Further to an earlier IPBiz post on the possible form of the Supreme Court opinion in KSR v. Teleflex, IPBiz suggests that the teaching-motivation-suggestion test may be treated like the "general acceptance" test was treated in Daubert v. Merrell Dow, 509 U.S. 579 (1993).

Pertinent text of Daubert:

Nothing in the text of this Rule establishes "general acceptance" as an absolute prerequisite to admissibility. Frye made `general acceptance' the exclusive test for admitting expert scientific testimony. That austere standard, absent from and incompatible with the Federal Rules of Evidence, should not be applied in federal trials. "general acceptance" can yet have a bearing on the inquiry. Widespread acceptance can be an important factor in ruling particular evidence admissible

Possible text in KSR:

Nothing in the text of 35 USC 103 establishes motivation as an absolute prerequisite to establish obviousness. [CAFC/CCPA caselaw] made a showing of motivation a requirement for proving obviousness. That austere standard, absent from the statute and incompatible with case law of the Supreme Court (including Graham v. Deere), should not be applied in federal patent trials. However, motivation can yet have a bearing on the inquiry. The absence of motivation can be an important factor in ruling that a particular combination invention is not obvious.

The IPBiz suggestion is distinct from other suggestions that "motivation" would no longer be the exclusive test. IPBiz thinks it more likely that the Supreme Court will mention factors bearing on obviousness, which factors include motivation (or some word or words meaning the same thing). The past form of the obviousness inquiry of the CAFC won't survive.

In a situation wherein the patent opponent linked disparate prior art to reach the elements of the challenged invention, motivation might be a very important factor. In inventions perceived to be low-level, as the court may perceive the invention involved in KSR v. Teleflex, motivation might not be such an important factor.

IPBiz does not think the suggested outcome is a good thing, but many justices did seemed troubled by the motivation test, possibly influenced by the significant lobbying in the general area of "patent reform." Furthermore, the CAFC did not have an attorney arguing "its" position before the Supreme Court, and its recent rulings (probably designed as a proxy for representation before the court) were ignored.