KSR v. Teleflex - The Supreme Court reveals its frustration with the motivation/suggestion test…and contempt for the Federal Circuit

Posted by J. Matthew Buchanan

November 29, 2006

And now we wait. Yesterday, the much-anticipated oral argument was held in KSR v. Teleflex, the Supreme Court case that questions the propriety of the Federal Circuit’s teaching-suggestion-motivation (TSM) test for obviousness. The Court could issue an opinion that amounts to the single biggest patent policy decision in decades. Or not.

And now we wait.

No matter the disposition of the case at hand, the opinion will likely show the frustration the Justices have with the Federal Circuit’s TSM test. Based on questions posed of both sides, and the resulting discussions, it is clear that the Justices struggle to understand the basic purpose of the test and its workings. At one point, Justice Scalia referred to the test as “gobbledygook” that is “irrational.” Justice Breyer confessed “I just don’t understand what is meant by the term ‘motivation.’”

Justice Scalia even joked about his inability to understand the test:

Respondent’s counsel: “I think you can’t understand what motivation means and what the whole test that the Federal Circuit is employing means –”
Justice Scalia: “You’re right about that.”
Respondent’s counsel: “– without –”
(Laughter.)
Respondent’s counsel: “– without starting from the statute itself.”

But frustration with the TSM test isn’t the end of the story. The Justices even revealed a bit of contempt for the Federal Circuit and it’s recent attempt to explain the TSM test in Dystar Textilfarben v. C.H. Patrick. It’s clear that the Justices view that decision simply as an attempt by the Federal Circuit to dress-up the TSM test prior to the Supreme Court’s review of KSR.

Respondent’s counsel: “There is nothing fundamentally not functional about how the Federal Circuit is approaching this question.”
Justice Breyer: “And it so quickly modified itself.”
Justice Scalia: “And in the last year or so, after we granted cert in this case after these decades of thinking about it, it suddenly decides to polish it up.” (a reference to Dystar)
Respondent’s counsel: “Justice Scalia, if you actually believe that, then you just don’t believe the judges in the Federal Circuit because in each of these opinions they say quite explicitly we are not changing it.”

And now we wait. Perhaps a major shift in patent policy is forthcoming. Perhaps not. No matter the disposition and the holding on the issue, its probably safe to expect a strongly worded opinion that shows both the frustration the Justices have with the TSM test and their contempt for the Federal Circuit and its recent attempts to put a luster on the test.

You can view and/or download the transcript of yesterday’s oral argument at the Supreme Court’s website.

For more on the case, see Crouch’s excellent review and collection of all things KSR at Patently-O.