KSR v. Teleflex at "Spring Seminar 2007"

Obviously, there was a lot of discussion of KSR v. Teleflex at "Spring Seminar 2007" at Laguna Niguel (sponsored by LAIPLA, SDIPLA, OCPLA). Many things were of interest ("real" innovation, extemely cool story, etc.) Two points were noted by IPBiz.

#1. The assertion that the CAFC "held" that motivation had to arise from the nature of the problem to be solved.

#2. The assertion that after the CAFC decision a patentee may use TSM to prove nonobviousness, but TSM is not used to prove obviousness.

Of the first point (#1), one notes

A. The patent challenger was free to choose from among MANY ways to establish TSM

The non-precedential case reported at 119 Fed.Appx. 282 states:

"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.' " Ruiz v. A.B. Chance Co., 234 F.3d 654, 665
(Fed.Cir.2000) (quoting Pro-Mold, 75 F.3d at 1572)

B. It's the challenger's burden to establish TSM

"The grant of summary judgment of invalidity for obviousness must be
done on a claim by claim basis." Knoll Pharm., 367 F.3d at 1383. Because
patents are presumed valid, "[t]he accused infringer must prove by clear and
convincing evidence that each claim that is challenged cannot reasonably be held
to be non-obvious." Id.; see also Monarch Knitting Mach. Corp. v. Sulzer
Morat GmbH, 139 F.3d 877, 881 (Fed.Cir.1998). Clear and convincing evidence
exists when the movant "place[s] in the mind of the ultimate fact finder an
abiding conviction that the truth of its factual contentions are 'highly
probable.' "

C. At the CAFC level, the CAFC analyzed a record in which there was an attempt to establish TSM via "nature of the problem to be solved" AND the CAFC found THAT argument insufficient. The CAFC never ruled that a patent challenger could only prove TSM via "nature of the problem to be solved." The CAFC noted:

The district court based its finding of a suggestion or motivation to
combine largely on the nature of the problem to be solved by claim 4 of the
'565 patent. Id. at 593-94.

The CAFC analysis, and a foreshadowing of how the Supreme Court would handle the case, come from the following paragraph in the CAFC decision:

The district court correctly noted that the nature of the problem to
be solved may, under appropriate circumstances, provide a suggestion or
motivation to combine prior art references. However, the test requires
that the nature of the problem to be solved be such that it would have led a
person of ordinary skill in the art to combine the prior art teachings in the
particular manner claimed. See Rouffet, 149 F.3d at 1357. We have
recognized this situation when two prior art references address the precise
problem that the patentee was trying to solve. See Ruiz, 357 F.3d at 1276 ("This
record shows that the district court did not use hindsight in its obviousness
analysis, but properly found a motivation to combine because the two
references address precisely the same problem of underpinning existing
structural foundations."). In this case, the Asano patent does not
address the same problem as the '565 patent. The objective of the '565 patent was to design a smaller, less complex, and less expensive electronic pedal
assembly. The Asano patent, on the other hand, was directed at solving the
"constant ratio problem." [FN3] The district court's reliance on the problems
associated with the Rixon '593 patent similarly fails to provide a
sufficient motivation to combine. This is because the Rixon '593 patent does not
address the problem to be solved by the '595 patent; rather, it suffers from
the problem. The court did not explain how suffering from the problem
addressed by the '595 patent would have specifically motivated one skilled in the
art to attach an electronic control to the support bracket of the Asano
assembly.

IPBiz notes that the CAFC didn't even rule out a "different problem" (which in any event would likely fall within one of the OTHER allowed categories for showing TSM: 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; );
what was missing in the district court decision was an EXPLANATION.

Of the second point (#2):

The nonmovant may rebut a prima facie showing of obviousness with
evidence refuting the movant's case or with other objective evidence of
nonobviousness. See WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1359
(Fed.Cir.1999).

IPBiz notes that the patent challenger has to make a prima facie case of obviousness. Either TSM is a requirement of the prima facie case or it isn't. If it is a requirement, then the patentee could rebut a prima facie case of obviousness (ie, establish nonobviousness) by showing "no TSM." IF TSM is NOT a requirement of a prima facie case of obviousness, then a showing of "no TSM" does NOT rebut a prima facie case of obviousness.

The Supreme Court did not say one way or another whether TSM is an element of the prima facie case. One might infer that, because the Supreme Court established ANOTHER way to show TSM ("different problem") and then applied the new way of showing TSM, the Supreme Court is saying TSM is a required element.

The problem is that the Supreme Court did NOT overrule previous Supreme Court cases (in which TSM was NOT an element) but the Supreme Court did NOT overrule previous CAFC cases (in which TSM was an element). Go figure.

See also

Is TSM still required to establish obviousness?

and

http://ipbiz.blogspot.com/2007/05/whos-proving-what-in-obviousness-after.html