2007 KSR Presentation

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Information about 2007 KSR Presentation

Published on December 24, 2007

Author: Dennison

Source: authorstream.com

AIPLA ECLC KSR PANEL:  A Panel Discussion About Obviousness and The Supreme Court Case – KSR v. Teleflex              APILA Midwinter Meeting 2007 New Orleans AIPLA ECLC KSR PANEL Panel Members:  Panel Members Jim Hallenbeck Lance Reich Brad Forrest The Hot Topic – The Facts:  The Hot Topic – The Facts The KSR v. Teleflex Case. The Supreme Court has not addressed obviousness 35 U.S.C. §103 since its decisions in the Adams battery and Graham v. John Deere trilogy of cases in 1966 and the Sakraida v. Ag Pro case in 1976. Teleflex is the patent owner. KSR asserts the patent is invalid. The Facts:  The Facts Patent concerns an adjustable gas pedal for cars. District court ruled for defendant KSR on its summary judgment motion of invalidity. Federal Circuit reversed and remanded stating that there was no motivation to combine the references cited to show invalidity. US Patent 6237565 to Teleflex Inc. :  US Patent 6237565 to Teleflex Inc. From ksrint.com :  From ksrint.com From ksrint.com:  From ksrint.com teleflexmorse.com/documents/APSFlyer_2006.pdf :  teleflexmorse.com/documents/APSFlyer_2006.pdf U.S. Patent 2627798 To Graham :  U.S. Patent 2627798 To Graham Question Presented:  Question Presented Has the Federal Circuit erred in holding that a claimed invention cannot be held obvious in the absence of some proven teaching, suggestion, or motivation (the TSM test) that would have led a person of ordinary skill to combine the relevant prior art teachings in the manner claimed? Respondent - Teleflex:  Respondent - Teleflex Congress chose “Obviousness” not “Inventiveness” on purpose Graham v. Deere Set forth obviousness standard Did not provide combining standard To be developed via case law Adams v. US Was combination of known elements obvious? …facts did not “suggest” the combination Foreshadowed suggestion analysis Respondent - Teleflex:  Respondent - Teleflex Assertions of problems with the test not supported by empirical evidence Suggestion to combine not a factor in as many cases as asserted by press No evidence of overpatenting TSM often used by Fed Circuit to find invention obvious Petitioner - KSR:  Petitioner - KSR TSM has no basis in the text of § 103 Teaching suggestion motivation cases conflict with supreme court precedent TSM effectively strips courts of their traditional authority to determine the validity of patent claims under § 103 and transfers that authority to lay juries AIPLA:  AIPLA "Hindsight is an exact science" where the outcome already is known", which as Billy Wilder famously put it "is always twenty-twenty." The difficulties caused by hindsight are not new; they have been recognized from time immemorium. King Solomon wrote in the Bible, at the beginning of Ecclesiastes, 1:9-10, that everything new can actually be traced to what came before it AIPLA:  AIPLA What has been is what will be, and what has been done is what will be done; there is nothing new under the sun. Is there a thing of which it is said, "See, this is new"; It has already been, in the ages before us. IBM:  IBM KSR’s Approach sets the patentability bar too high, injects uncertainty into the patent system, and will block the patenting of truly meritorious inventions IBM:  IBM The Solicitor General’s Approach will drive non-obviousness determinations into infringement litigation and reduce certainty and clarity in the patent system. IBM:  IBM Current test same as novelty KSR approach sets bar too high New function/synergy Solicitor Test leads to litigation TSM plus others methods – case by case IBM:  IBM New Test: Rebuttable presumption of motivation to combine analogous art. Teaching away Secondary considerations – commercial success, long felt need unfulfilled, failure of others… Consistent with existing law Consistent with current Examiners Oral Arguments:  Oral Arguments Breyer – what is motivation? Roberts – Federal circuit jargon Scalia – This is Gobbledygook Roberts – profitable for the patent bar Breyer – some support for secondary considerations Breyer – 4-5 moving pieces, put sensor on one – why not obvious? Oral Arguments:  Oral Arguments Roberts – expert – find least insightful person you can find? (laughter) Scalia – Fed Cir – after decades suddenly decides to polish it up. Respondent gets point in that it was placed on non-moving part and solves problem of wires wearing out. Questions:  Questions Should the Federal Circuit’s TSM test for obviousness be discarded? What alternatives have been proposed? Do the earlier Supreme Court cases indicate different concepts? Has the issue presented morphed during its pendency before the Supreme Court? Amicus Positions:  Amicus Positions 22 “Friends” supporting patentee (rule should remain). 16 “Friends” supporting defendant (rule should be abandoned). 2 “Friends” supporting neither side. Panel Discussion :  Panel Discussion What is the current obviousness rule (TSM test) followed by the PTO? Does it differ from the obviousness consideration of an issued patent? How is the current TSM test practically applied to: Mechanical inventions? Software inventions? Electrical inventions? Pharmaceutical inventions? Biotech inventions? Are there differences in these applications? Panel Discussion:    What are the arguments offered by “Friends” supporting the patentee - respondent? What are the arguments offered by “Friends” supporting the defendant – petitioner? Do the “Friends” offer alternative concepts? If so what are they? Panel Discussion Panel Discussion:  Panel Discussion Do the Amicus briefs present common arguments? What other concepts are possible? Predictions? Should differing rules be applied to differing technologies? What will be the commercial consequences if the Supreme Court does or does not adopt the position advocated by the petitioner or by the respondent? What changes should we make now in drafting applications in anticipation of the decision?:  What changes should we make now in drafting applications in anticipation of the decision? Changes to draftin g:  Changes to draftin g Build in secondary considerations? Do so without patent profanity Might help avoid adding witnesses with declaration practice Other Suggestions?

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