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Restating the Obvious -- Not!

When is an invention so obvious an extension of prior art that it's not entitled to patent protection? The answer to that question isn't obvious at all; indeed, it's the subject that the Supreme Court took up yesterday at oral argument in KSR International v. Teleflex and covered by Tony Mauro in this article, Justices Slam Nation's Patent System (, 11/29/06). The case involves a disputed patent for an adjustable gas pedal for cars issued to Teleflex. KSR challenged the patent, arguing that it was an obvious extension of existing art, not entitled to patent protection. The Federal Circuit rejected KSR's argument and affirmed issuance of the patent under its existing three-part test for obviousness. KSR then sought review at the Supreme Court, challenging the Federal Circuit's test for obviousness as inconsistent with the definition of "invention" used in patent statutes. (For an in-depth discussion of the legal issues before the court, see this post at Patent Baristas.)

KSR contends that under the existing test, virtually any subsequent iteration of an existing design can be deemed "non-obvious" and subject to patent. Teleflex disagreed and argued that if the Supreme Court overrules the Federal Circuit's existing test, then hundreds of existing patents might be subject to challenge. 

A number of Supreme Court justices had harsh words for the Federal Circuit, terming its obviousness test "gobbledygook" (Scalia) and "meaningless" (Roberts). Roberts also suggested that the Federal Circuit test was effectively an employment relief act for patent lawyers, because the test gives patent lawyers more opportunities to seek patents. With comments like these, the outcome of the case seems obvious:  The Supreme Court will either overturn the Federal Circuit's current standard or, at least, refine and clarify it.

For more coverage of yesterday's argument, see this post by Dennis Crouch of Patently O  (who previously posted all of the briefs here) and this post  by Lyle Denniston for SCOTUS Blog.

Posted by Carolyn Elefant on November 29, 2006 at 01:29 PM | Permalink | Comments (1)


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