Thursday, May 31, 2007

More Wegner on KSR v. Teleflex

As noted earlier on IPBiz, Professor Wegner presented an article on In re Deuel, appearing, for example, here.

In a more recent article, entitled KSR-induced PTO Obviousness Practice Changes, Deuel shows up in footnote 53, and Professor Wegner analyzes the citation to Bergel which appears in KSR v. Teleflex, 127 S. Ct. 1727 (2007), describing it as a "weird quirk."

Wegner writes "Now, under KSR the teaching, suggestion, or motivation is but one of the indicia used to determine obviousness under a more flexible review." In January 2007, in a post entitled IPBiz proposes possible form of KSR v. Teleflex opinion , IPBiz had written:

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.

Wegner states that obviousness practice at the CAFC is "markedly changed" from the time of the KSR cert petition in 2005, although IPBiz suspects that the CAFC, in Kahn, thought it was merely articulating PAST practice, NOT "markedly changing" past practice. Wegner speaks of CAFC overreaction, including DyStar, and describes the decision in Pfizer v. Apotex (over Norvasc) as "bizarre."

IPBiz notes an interesting issue is whether or not the Supreme Court thought it was limiting its decision in KSR to the predictable arts, such as the mechanical arts at stake in KSR. The Supreme Court cited BOTH Deuel AND Bergel, which do not involve predictable arts. Separately, can an "unpredictable" art (chemistry) have "predictable" components, such as the selection of a non-biologically active counter-anion from a relatively short list?

Footnote 54 of Wegner's article contains an interesting citation, to the "citing references" tab (for Deuel) on Westlaw. This is an interesting concept. Instead of citing cases, one can cite Shepards for the case, or, in science, instead of referring to citing papers, one can reference the Science Citation Index for the paper. One will never "miss" a reference!

Professor Miller is keeping track of cases citing KSR v. Teleflex.

Miller notes: The following passage from KSR appears to be a Board favorite: “As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

Mere course correction? No … sea change.


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