On Tuesday, November 28, 2006, the US Supreme Court heard oral argument for KSR International Company Inc. v. Teleflex, Inc.
Facts of the Case
Teleflex sued KSR International (KSR), alleging that KSR had infringed on its patent for an adjustable gas-pedal system composed of an adjustable accelerator pedal and an electronic throttle control. KSR countered that Teleflex's patent was obvious, and therefore unenforceable. Under 25 U.S.C. Section 103(a), obvious inventions cannot be patented. A federal District Court granted summary judgment for KSR, accepting KSR's argument that the invention was obvious because each of the invention's components existed in previous patents. Anyone with knowledge or experience in the industry, the District Court ruled, would have considered it obvious that the two components could be combined. Teleflex appealed to the Court of Appeals for the Federal Circuit, which reversed the District Court. The Circuit Court found the lower court's analysis incomplete, because the District Court had not applied a full "teaching-suggestion-motivation test." Under this test, in order to label the patent obvious the District Court would have needed to identify the specific "teaching, suggestion, or motivation" that would have led a knowledgeable person to combine the two previously-existing components. KSR appealed to the Supreme Court, arguing that the Circuit Court's test conflicted with Supreme Court precedent and that it would allow too many patents of obvious inventions.
Was the Federal Circuit correct in holding that an invention cannot be held "obvious", and thus unpatentable, without a finding of some "teaching, suggestion, or motivation" that would have led a "person of ordinary skill in the art" to the invention by combining previously-existing ideas?
A transcript of those arguments is available at:
HISTORY OF SECTION 103(a) --
Around 1950, Judge Rich wrote 25 U.S.C. Section 103(a) when in 1947 became part of a two-person committee to draft a new U.S. patent statute, all while continuing to practice law full time. His partner on the statute drafting committee was Pasquale J. Federico, the chief patent examiner of the U.S. Patent Office. After four years of work, Rich and Federico's statute draft was introduced in Congress by Joseph Bryson (D-SC) in 1951. After passing both houses without debate, as part of a "consent bill", it was signed into law by President Truman in 1952, to take effect in 1953. It was the first full revision of U.S. patent law since the Patent Act of 1836.
The above paragraph is from:
Judge Rich’s father was Tom Edison’s patent attorney.