Antacids & Graham Crackers — The Supreme Court Decides KSR and the Future of Obviousness

Well..it’s here. Earlier this morning the Supreme Court released its opinion in the case of KSR International Co. v. Teleflex Inc. et al. (550 U. S. ___, April 30, 2007).

While others will likely do more detailed analysis (click here to easily review what others are saying), here are my quick thoughts:

In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Supreme Court “set out a framework for applying the statutory language of §103.” In Graham, the relevant factors were (1) the scope and content of prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the pertinent art.

Recognizing that the Graham decision needed a little interpretation as its teachings were applied to later cases, the Court of Appeals for the Federal Circuit interpreted Graham over time, formulating what is known as the “teaching, suggestion, or motivation” test (TSM). It is this TSM test that practitioners and patentees have been relying on for years.

In the case on appeal (KSR), the Supreme Court overruled the Federal Circuit’s non-obviousness finding*, noting that while “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis,” but “..when a court transforms the general principle into a rigid rule that limits the obviousness inquiry…it errs.”

[*note:  see the Mr. Ebert’s comment below for clarification.]

Specifically, the Court didn’t like:

1. How the CAFC held “that courts and patent examiners should look only to the problem the patentee was trying to solve.” The Court pointed out that “[t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.”

2. That the CAFC assumed “that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.” The Court pointed out that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”

3. That the CAFC erroneously concluded “that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try.’”

4. How the CAFC “drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight basis.”

Practitioners/patentees who have relied on arguments like these as the heart of their non-obviousness showing are likely to be severely impacted. At least the Court reinforced the fact that obviousness analysis needs to be explicit, reminding us that “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning within some rational underpinnings to support the legal conclusion of obviousness.” (quoting In re Kahn, 441 F. 3d. 977, 988 (CA Fed. 2006)).

Again, this is just my quick summary. More detailed analysis and other thoughts can be found here.

Related Posts:

• Gen-Probe Inc., v. Vysis, Inc. (Federal Circuit)
• Koito Manufacturing Co., LTD., et al. v. Turn-Key-Tech, LLC., et al. (Fed. Cir.)
• Ruiz, et al. v. A.B. Chance Company (Fed. Cir.)

Tip: Schedule that Backup

It’s easy to remember to back up local (hard drive, server) data.  It is data you regularly use after all.

However, what about data you don’t personally host/maintain?  What about your Firm’s website?  Your blog?  When was the last time you made a backup copy of THAT data?  How much time/headache could you save by having a copy on your local computer should the unthinkable happen to your web server?

Tomorrow is the first of the month…why not calendar a reminder to yourself to back up remote data (that’s what I do)?

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• Tech Tip: Back up your data on-line, for free
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• You need a Brain Dump

“I’ve got the best lawyer soft tacos can buy…”

Strongbad with a little lawyer and IP humor.

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Small Businesses and Blog Wisdom

This blog was recently honored (I promise not to dance) by inclusion in a post on the Wall Street Journal’s StartupJournal blog. The post: What Small-Biz Owners an Learn From Blogs by Sarah E. Needleman. Other blogs mentioned include:

• WorkHappy.net -www.workhappy.net
• Franchise Pundit - www.franchisepundit.com
• Young Go Getter - www.younggogetter.com
• Escape from Cubicle Nation - www.escapefromcubiclenation.com
• BizzBangBuzz - www.bizzbangbuzz.blogspot.com
• Venture Capital Caf� - goisrael.blogspot.com
• Marketing Blog - www.marketingforsuccess.com/blog
• Small Business Trends - www.smallbiztrends.com
• How to Change the World - blog.guykawasaki.com

Rumor has it the piece will run in the April 30 print edition of the WSJ as well…

[note: sorry for the gap in posting…took a little vacation to Walt Disney World with my family. HIGHLY RECOMMENDED!]

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A Once in a Lifetime Domain Name Opportunity

Carl Oppedahl is putting his (and his former law partner’s) patents.com and patents.net domain names up for auction. What a great opportunity for a law firm or patent services/products provider to obtain an unbelievable domain name pair. You have until June 15, 2007 to bid. Bidding is already up to $10,000. Click here to see the latest price or you can subscribe to the RSS feed he set up for sending out updates on the auction.

Maybe this will tease other IP domain names out onto the market (for instance, the patents.biz, trademark.biz, invent.biz, and patentlaw.biz domain names my Firm is sitting on).

Good luck Carl!

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Patent Filing Receipts and Drawings

From a colleague:

I received a filing receipt that did not list any drawings on it, so I called the PTO. The lady I spoke with knew immediately what I was going to ask about because they are getting many phone calls about it. As of April 3, 2007, the drawings will no longer be listed on the filing receipts. She wasn’t sure how long this was going to last, because of all the phone calls they were getting, but as of right now, you won’t have drawings listed on your filing receipts.

FYI…

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1000 down…

I just realized that the last post I made was #1001 here on The Invent Blog. Wow. Thanks for listening/encouraging me for the last three plus years. Here’s to the next thousand posts!

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Ready for Microsoft Office 2007 Files From Your Clients?

Microsoft, in Microsoft Office 2007, decided to reinvent their file format…making it XML based. If you want to know why…read this.

“New”means that unless you have Office 2007…you’re not going to likely be able to view the file without a converter. What a headache! If you, like most of us, will be waiting a few months/years before upgrading to Office 2007, you will need to plan ahead as to how you are going to open those XML based Office 2007 files when clients and others start sending them to you. My tips:

Microsoft has released a converter (add-in) for older versions of Office that will allow you to open (for example) a Word 2007 file in Word 2003. Install it now.

Before you install the converter, I’d run Office Update (to patch all of the bugs and security holes in your current versions of Word/Excel/Outlook/etc.).

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• You need a Brain Dump
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Hiring? Our Legal Jobs Board Is Having a Sale

Spring is here…which means 3L law students everywhere are gearing up for joining the law job market.  Anyone want to trade shoes with them and become a first year associate attorney again???

After much deliberation and an epic game of Paper-Rock-Scissors we decided to have a “Spring Cleaning” sale over at our law jobs board at LegalMojo.com.  By “sale” I mean that we are dropping the price or our standard listing to FREE.  Premium listings are still $199.

The only catch is that the “free” deal isn’t available to recruiters or anyone else collecting a fee for lawyer job placement.

So…if you are hiring this spring/summer, drop by LegalMojo and place a free standard listing ad.

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Planning for Your Joint Venture’s Failure (and hoping it doesn’t)

Inventors involved in joint ventures often ignore this bit of advice…while the going is good, figure out what you are going to do if the going gets bad. Here’s a great article directly on point: StartupJournal: Forming an Alliance? Plan for Your Break Up

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