The professor wrote something about "implicit" TSM with which IPBiz agrees: But these early comments make one wonder if KSR changes anything, particularly those like myself who witnessed the Federal Circuit's acceptance of, and reliance on, implicit TSM well before In re Kahn, DyStar, and Alza.
If one actually reads the nonprecedential CAFC opinion in KSR, one finds that implicit TSM was acknowledged by the CAFC in KSR. From my post on scotusblog:
The opinion [by the CAFC in KSR] cited Ruiz v. Chance, 234 F.3d 654, 665 (CAFC 2000) for the text: "The reason, suggestion, or motivation to combine [prior art references] may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved, 'leading inventors to look to references relating to possible solutions to that problem.'"
There is NO QUESTION WHATSOEVER that the CAFC accepted implicit TSM long before the CAFC decided the KSR case.
The professor also stated: The Court appears to have shifted the line between factual and legal parts of the nonobviousness analysis, moving what was (is?) the TSM test from being a question of fact to a question of law. In support, the professor states: This move is most clearly witnessed in Part IV of the opinion, where Court rejects the existence of a dispute over an issue of material fact. IPBiz notes the Supreme Court needed to reach this issue, as it was the second ground on which the CAFC reversed the district court.
IPBiz notes that an important sentence from part IV of the Supreme Court KSR opinion is:
To the extent the court [the CAFC] understood the Graham approach to exclude the possibility of summary judgment when an expert provides a conclusory affidavit addressing the question of obviousness, it misunderstood the role expert testimony plays in the analysis. In considering summary judgment on that question the district
court can and should take into account expert testimony, which may resolve or
keep open certain questions of fact. That is not the end of the issue,
however. The ultimate judgment of obviousness is a legal determination. (...)
Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate. Nothing in the declarations proffered by Teleflex prevented the District Court from reaching the careful conclusions underlying its order for summary judgment in this case.
IPBiz notes that the above text is subject to more than one interpretation. HOWEVER,
the Supreme Court does state that expert testimony may keep open certain questions of fact, with the problem in the KSR case that the Teleflex declaration was deemed "conclusory." The role of TSM hinges a great deal on the meaning of the text "the obviousness of the claim is apparent in light of these factors."
As a subtle point, the CAFC found that the KSR declaration did not establish TSM. The Supreme Court got around this by creating a different test for TSM (the first error of the CAFC: "The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent examiners should look only
to the problem the patentee was trying to solve. (...) Under the correct
analysis, any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.") and that the Teleflex declarations did not negate TSM under this test [Teleflex had proffered statements from one expert that claim 4 "'was a simple, elegant, and novel combination of features,'" 119 Fed. Appx., at 290, compared to Rixon, and from another expert that claim 4 was nonobvious because, unlike in Rixon, the sensor was mounted on the support bracket rather than the pedal itself. This evidence, the court concluded, sufficed to require a trial.]
Is TSM still required to establish obviousness?