Here we go again - US Supreme Court to consider reforming standard for obviousness
Yesterday, the Supreme Court delivered its long-awaited decision on the writ of certiorari in the KSR v. Teleflex case. There was little drama in the answer, as the Solicitor General had recently recommended that the Court hear the case and, usually, those recommendations are followed. There’s plenty of drama ahead, though. Expect oral arguments in the fall with a decision in Spring of next year.
With the granting of certiorari, the Supreme Court, for the second time, has agreed to hear a case that touches directly on patent reform. The case deals with the motivation/suggestion/teaching test developed by the Federal Circuit for dealing with questions of obviousness. While a change to the obviousness standard has yet to be included in any legislative proposal for patent reform, one of the two catalytic reports underlying the reform movement recommended a tightening of the standard and many groups have called for such a reform.
So, once again, patent reform has left the Capitol and walked across First Street to the Supreme Court.
Dennis Crouch already has a fantastic collection of documents from the case thus far.
Visit the KSR v. Teleflex archives for more.
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Comments
I’m not sure I understand your comment, Mike. The question of whether a claimed invention would have been obvious at the time of the invention is evaluated objectively, under Graham v. John Deere Co. (383 U.S. 1 (1966)).
On the issue of the proper combination of references to establish obviousness, which is the focus of the KSR v. Teleflex case, the motivation to combine test is also an objective one. Indeed, the suggestion, teaching, or motivation to combine can be found in the knowledge of the PHOSITA.
Am I mischaracterizing or not understanding your question?
A substantial improvement would be for the courts to consult some actual PHOSITAs.
This would easily eliminate most of the worst junk-patent cases in software and elsewhere, because there would be no trouble getting programmers to testify to the obviousness of obvious things (or indeed to the non-obviousness of non-obvious things).
Oddly, consulting actual persons of ordinary skill seems to be the last thing considered…..
Seems to me that the PHOSITA standard, if implemented as the sole requirement for obviousness, will be implemented in a capricious and arbitrary manner.
The solution would be to make PHOSITA an objective standard.
I can’t find any proposals as to how to impose an objective standard onto PHOSITA, have you seen any such proposal?