Thursday, November 23, 2006

Oral arguments in KSR v. Teleflex coming up

The Supreme Court is to hear oral arguments in KSR v. Teleflex next week.

InformationWeek wrote: A victory for the company could result in lower courts applying a more liberal standard in defining what is obvious

A victory for KSR might mean a legal rule making it EASIER to find obviousness and thus HARDER to get a patent. Specifically, the motivation test of the Federal Circuit is under attack. The motivation test was designed to avoid hindsight reconstruction of an invention. If one looks at enough references, one can generally find each element of a claimed invention. The trouble is, if one had to look at N references to find each aspect of the claim, how does one know that one of ordinary skill at the time of filing would have looked at N references? One has to avoid using the patent application itself as a guide to the invention and thereby reconstructing the invention after the fact.

A previous IPBiz post had included the text:

We turn first to a comparison between the prior art and the claimed
invention. In this inquiry, we are mindful of the repeated warnings of the Supreme Court and this court as to the danger of hindsight bias. See, e.g., Graham, 383 U.S. at 36 (consideration of secondary factors "serves to guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue" (internal quotations and citations omitted)); In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) ("The very ease with which the invention can be understood may prompt one to fall victim to the insidious effect of a hindsight syndrome wherein that which only the invention taught is used against its teacher." (internal quotations omitted)). We note in this respect that the district court's use of an "overall picture" and "common sense" test of obviousness falls squarely into the hindsight trap. See In re Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002).

The claim of US 6,237,565 that is at issue states:

4. A vehicle control pedal apparatus (12) comprising:

a support (18) adapted to be mounted to a vehicle structure (20);

an adjustable pedal assembly (22) having a pedal arm (14) moveable in force and aft directions with respect to said support (18);

a pivot (24) for pivotally supporting said adjustable pedal assembly (22) with respect to said support (18) and defining a pivot axis (26); and

an electronic control (28) attached to said support (18) for controlling a vehicle system;

said apparatus (12) characterized by said electronic control (28) being responsive to said pivot (24) for providing a signal (32) that corresponds to pedal arm position as said pedal arm (14) pivots about said pivot axis (26) between rest and applied positions wherein the position of said pivot (24) remains constant while said pedal arm (14) moves in fore and aft directions with respect to said pivot (24).

The 2005 decision of the Federal Circuit is not citable as precedent (nonprecedential). In ED Michigan, defendant KSR prevailed on a summary judgment motion for invalidity. Teleflex appealed for several reasons. One asserted an error of law based on an incorrect teaching-suggestion-motivation test. For prior art, the district court had relied on the Asano patent (5,010,782) and asserted that electronic controls (not taught by Asano) were well known in the art. In finding the district court's analysis wrong, the CAFC cited Kotzab, 217 F.3d at 1371, observing the district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ’565 patent.


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