U.S. Supreme Court Hears Oral Arguments in KSR v. Teleflex


   On Tuesday, November 28, 2006, the United States Supreme Court heard oral argument in KSR International, Co. v. Teleflex, Inc., U.S., No. 04-1350.

The question being reviewed by the court was:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be

held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of

some proven “‘teaching, suggestion, or motivation’ that would have led a person of

ordinary skill in the art to combine the relevant prior art teachings in the manner


            The Petitioner KSR International Co. (“KSR”) was sued by Respondent Teleflex, Inc. (“Teleflex”) for infringement of claim 4 of Teleflex’s patent (U.S Patent No. 6,237,565; “‘565 patent”).  KSR moved for summary judgment of invalidity, on the ground that the ‘565 patent would have been obvious under section 103 (a).  The District Court granted KSR’s motion, and dismissed the complaint based on its determination of invalidity.  The Court of Appeals for the Federal Circuit (“Federal Circuit”), however, reversed the grant of summary judgment and held that the District Court erred in finding the ‘565 patent obvious under section 103 (a), based on its failure to find articulate any teaching, suggestion or motivation that would have led one ordinarily skilled in the art to combine the known prior art.

            Many organizations filed amicus curiae briefs in this case including the U.S. Government which filed a brief in support of the Petitioner, KSR.  In addition to the Petitioner and Respondent, the Solicitor General’s office also argued before the Court.

I.          Motivation?

Several Justices indicated that they were not sure what the “motivation” part of the Federal Circuit’s “teaching, suggestion, or motivation” test (often referred to as the “TSM” test) meant.  In the end, none of the parties arguing appeared to explain the “motivation” aspect of the TSM test to the Justices’ satisfaction.  Justice Breyer stated “I just don’t understand what is meant by the term ‘motivation” and Justice Scalia similarly stated, “I, like Justice Breyer, … don’t understand what the … motivation element is.” 

Later, Chief Justice Roberts asked the Solicitor General, “[w]hat do you understand motivation to refer to in that test?”  The Government provided an example that “doing something a certain way might save money and then there would be a motivation to save money, which might supply the requisite motivation for combining the two prior art references.” 

II.        Teaching, Suggestion, or Motivation?

Thereafter, the Justices asked the Respondent whether, in view of the recent Federal Circuit decisions, the “teaching, suggestion, or motivation” test is so flexible and inclusive that it had no real meaning.  For example, when the Respondent pointed to a recent Federal Circuit decision indicating that the “teaching, suggestion, or motivation” test was inclusive because the test includes “common sense, common knowledge, [and] common understandings,” Justice Scalia flatly observed, “you say its test is inclusive, I would say its test is meaningless.”  Chief Justice Roberts agreed: “it adds a layer of Federal Circuit jargon that lawyers can then bandy back and forth… it seems to me that it’s worse than meaningless because it complicates the inquiry rather than focusing on the statute.”  Justice Scalia again noted, “it is misleading to say that the whole world is embraced within these three nouns, teaching, suggestion, or motivation, and then you define teaching, suggestion, or motivation to mean anything that renders it nonobvious.  This is gobbledygook, it really is, it’s irrational.”

III.       Teaching, Suggestion, or Motivation, and more

Throughout the hearing, the Justices asked questions regarding whether the “teaching, suggestion, or motivation” could be maintained as a part of a broader inquiry.  For example, Justice Kennedy asked the Solicitor General if the motivation test could be kept, but supplemented with other ways of showing obviousness.

However, the Justices appeared unimpressed with the Solicitor General’s “innovation test.”  Justice Ginsburg stated, “what I understand your brief to say is that it has to be supplemented with what you have called, you’ve labeled ‘sufficiently innovative,’ and then I begin to think well, what’s ‘sufficiently innovative? … I think what you’re suggesting as a supplement is rather vague.” 

With regard to the broader inquiry, the Respondent asked the Justices what they would add to the motivation test, asking “if you think instead that the teaching, suggestion, motivation test is incomplete, what is it that you want to add on top of it, and that’s really what I didn’t understand from the first half-hour.”  Justice Breyer answered “but to hope to have a nonexclusive list seems to me a little bit like Holmes trying to hope to have an exclusive list of what counts as negligence.  In the law we have many standards that you can get clues about, but you can't absolutely define them, and why isn't this one of them?

Justice Breyer then asked the Respondent, “supposing we then were to say exactly what this Court already said, that the standard here is [obviousness], we list a few of these additional factors that they've thrown in, and just as the Court said before, all these additional factors are there … would you have any objection to an opinion like that?”  The Respondent answered no.

IV.       Chaos?

The Justices did raise the issue that changing the law at this time might have a detrimental effect on the existing patent law system.  Justice Souter asked the Solicitor General regarding the fact that the “teaching, suggestion, or motivation” test has “been applied in what is now the Fed. Circuit for what, 20 years, more than 20 years I guess, and to tip it over now is going to produce chaos.” He further asked “if the error is common enough and long enough, the error becomes the law, and in effect is that what we are confronted with here?” 

Justice Scalia observed that it was not just the Federal Circuit that had been applying the test but the Patent Office has been following the Federal Circuit -- for 20 years.   He also expressed a concern that “assuming that we sweep that test aside and say it’s been incorrect, what happens to the presumption of validity of patents [for] which the courts have been” applying the traditional test?   Raising the specter of a flood of litigation resulting from changing the test the Federal Circuit has been applying for decades, Justice Souter asked the Solicitor General, “if we see it your way, are there going to be 100,000 cases filed tomorrow morning?”

V.        Conclusion

The Court will now deliberate about the case behind closed doors.  While there is no set timeline as to when the opinion will be rendered, the Court will render its opinion sometime between now and the end of the term in June 2007.