By Christopher P. Singer —

As previously reported on Patent Docs, the John Marshall Law School hosted an IPLAC panel discussion relating to the Supreme Court’s recent decision in KSR Int’l Co. v. Teleflex Inc.  The discussion was moderated by Edward D. Manzo, and panelists included Chief Judge James F. Holderman and Judge Matthew F. Kennelly of the U.S. District Court for the Northern District of Illinois, Professor David L. Schwartz, George P. McAndrews, Meredith Martin Addy, Bradford P. Lyerla, Patrick G. Burns, and Constantine L. Trela, Jr.  While the panelists generally were in agreement that the complete effects of the KSR decision will take months to years to sort out, several interesting points were raised.

For example, Chief Judge Holderman stated that from his reading of the decision it was his belief that the Supreme Court changed the law (and meant to do so), and that the teaching-suggestion-motivation test was now nothing more than "a helpful insight."  He pointed to the single occurrence of the word "doctrine" in the decision where the Court said, "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."  He also mentioned that Justice Stevens had said that the Supreme Court felt that the Federal Circuit was not taking a broad enough view of this aspect of the law.  Consequently, he plans to approach questions of obviousness using this new doctrine.  Many of the panelists, in line with most commentators on the decision, felt that the impact of decision would be felt most significantly in the more predictable arts, such as mechanical and electrical engineering and business methods.

Mr. McAndrews (at right) stated that he believed KSR would require patentees to put "flesh" on the subject matter of the patent for finders of fact during a trial, and demonstrate in real world terms how and why the invention provided a benefit to the public.  He mentioned a list of factors, including the secondary factors mentioned in Graham v. John Deere Co., which could be argued during a trial, effectively demonstrating that a particular invention, incremental though it may be, is worthy of patent protection.  Mr. McAndrews (and the panel at large) also said that from a reading of the KSR decision, the Supreme Court appears to be looking for an obviousness standard to adopt.  He stated his belief that inventors, corporations, practitioners, and academics should advocate strongly and request statutory amendment of 35 U.S.C. § 103 in order to provide some structure to the inquiry.  He also noted that the current Patent Reform Bill does not contain any changes to that section of the patent statute.

For additional information and commentary regarding the KSR decision, please see:

• "Trying to Understand What’s Not Obvious about What’s ‘Obvious to Try,’" May 16, 2007
• "Like a Penny Saved for a Rainy Day (Albeit, Unintentionally): The Renewed Relevance of 35 U.S.C. § 103(b)," May 13, 2007
• "BIO’s Reaction to KSR v. Teleflex," May 8, 2007
• "Implications of the Supreme Court’s KSR v. Teleflex Decision for Biotechnology," May 4, 2007
• "The Patent Office Reacts to KSR: A First Look," May 3, 2007
• "KSR Int’l Co. v. Teleflex Inc. (2007)," April 30, 2007