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Levin College of Law

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Tuesday, November 28, 2006

Nonobviousness Debated

I am trying to expand the focus of this blog to include discussion of broader competition issues as they arise in intellectual property and other regulatory fields.  As a result I am including here the oral arguments in KSR v Teleflex, argued today in the Supreme Court.  The case deals with the viability of the teach, suggest, motivate test as the approach to deal with the nonobviousness standard under Section 103 of the Patent Act.

A transcript of the oral arguments is attached here: Download KSR.pdf
My two favorite parts:

(1) Justice Souter asking petitioner about reliance interests in TSM:

"Well, I realize there'e been comment on it, but I guess I'm--I'm raising the question that comes up in the old motto. I mean, 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?" Transcript at 20.

(2)  Justice Scalia and The Chief Justice grill the respondent on the meaning of TSM:

Justice Scalia:  It is--I agree with the Chief Justice.  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. That is gobbledygook.  It is really is, it's irrational.

Mr. Goldstein:  Justice Scalia, I this is it would be surprising for this experienced Court and all of the patent bar--remember, every single major patent bar association has filed on our side---

Chief Justice Roberts: Weel, which way does that cut?  That just indicates that this is profitable for the patent bar.

(Laughter)

Transcript at 41.

In any case, I thought petitioner's side went more smoothly FWIW.  It is still not clear what the Court is going to do with this, other than say TSM is part of the analysis but cannot create a presumption of nonobviousness.

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