Friday, May 11, 2007

The case of the missing footnotes: where did the Supreme Court find the KSR obviousness law?

Back in 2002, LBE noted that the new law presented by the Supreme Court in Festo bore no footnotes, but that one could relate the new law to text within briefs presented to the Supreme Court. In 2007, there are no footnotes to the new law presented by the Supreme Court in KSR v. Teleflex, and, unlike with Festo, the new law does not appear to come from briefs presented to the Supreme Court.

The brief of the SG came out against the CAFC TSM test, and for petitioner, and thus was on the winning side of the case. But the SG, like KSR, argued that there was NO basis for the TSM test in Supreme Court decisions, and thus NO basis to rule that a court or the PTO MUST make the SPECIFIC FINDINGS that the CAFC requires. (see for example footnote 5). Note also footnote 9 which cites "Rethinking the Prospect Theory" by John Duffy. At page 20, the SG brief acknowledges that TSM may be implicit, but states that the CAFC has attempted to ameliorate the difficulty of producing affirmative evidence without citing any case (and thus without acknowledging) that this was the law at the time of the CAFC decision in KSR. Although both KSR and the SG invited the Supreme Court to eliminate TSM as a requirement for finding obviousness, the Supreme Court's response was to make TSM easier to find.

The brief of the SG does mention In re Deuel (and In re O'Farrell) in footnote 15. The SG brief does NOT call for finding "obvious to try" enough. The SG brief does talk about the proper application of "obvious to try." Neither the SG brief nor the later Supreme Court decision mention the actual standard, "obvious to try with a reasonable expectation of success," or that THAT standard could have been applied in KSR.

In part C of the argument, the SG brief states that this court should reaffirm its sound approach to obviousness (which the court did) and apply it to this case (which the court did not do). In part B of the argument, the SG brief states that TSM should not be the exclusive means to establish obviousness. As noted elsewhere on IPBiz, there seem to be differences of opinion on whether TSM must be applied, post-KSR. In this, one notes that TSM is a PART of test for obviousness, which also requires the finding of references which establish "structural similarity" of the past art to the claimed elements. TSM is present to avoid mindless picking and choosing of different prior art references to reach all the elements of the claim in question without establishing that one of ordinary skill would have a reason to combine them in the manner claimed. If all the reasons put forth in the various briefs supporting petitioner had SIMPLY BEEN WRITTEN DOWN at the time of the district court decision, this case never would have gone to the Supreme Court.


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