WASHINGTON — A highly engaged United States Supreme Court heard oral arguments today in a case that could have wide implications for the future of the country’s patent system.
At issue is the standard currently used to determine if a patent should be issued if the invention is obvious to those with knowledge of the skills involved, particularly patents that combine two known elements.
Under that standard, a company seeking to invalidate a patent based on its obviousness must show some prior proof of “teaching, suggestion or motivation” existed to prove the invention is obvious.
In the case before the court, KSR International v. Teleflex, two makers of automobile gas pedals are battling over the patents involved in an adjustable gas-pedal system. The Canadian-based KSR combined what it claims is the “obvious” previous technology to produce a hybrid gas pedal for General Motors’ vehicles.
The Limerick, Pa.-based Teleflex contends the KSR invention infringes on its patents.
The district court threw out Teleflex’s infringement suit, but the Federal Circuit backed Teleflex.
The technology industry, which is plagued with patent-infringement lawsuits, is closely following the case in hopes the justices will make it easier to dismiss patent-infringement claims.
It can sometimes be difficult to determine which way the Supreme Court is leaning during testimony, but there was little question today.
“It is meaningless to imply the whole world is defined by ‘teaching, suggestion or motivation,'” Associate Justice Antonin Scalia stated. “It is goobly-gook. The more you narrow it, the more patents get granted.”
Associate Justice Stephen Breyer added, “I just don’t understand what is meant by the term motivation. To be more specific, if they mean motivated to go look to the prior art, well, anybody would want to look in the prior art.”
Chief Justice John Roberts jumped into the debate, pointing out the U.S. Court of Appeals for the Federal Circuit, the sole patent appeals venue in the United States, had it reasons for devising the standard.
“Of course, the reason that the Federal Circuit has devised this additional test is that they say obviousness is deceptive in hindsight,” he said. “In hindsight everybody says, I could have thought of that. If you don’t have the sort of constraint that their test imposes, it’s going to be too easy to say that everything was obvious.”
Associate Justice David Souter questioned what would happen if the Supreme Court reversed the Federal Circuit’s standard.
“Are there going to be 100,000 cases filed tomorrow morning?” he asked.
Thomas G. Hungar, deputy solicitor general at the Department of Justice, told Souter that scenario was unlikely.
“What we are talking about here are claims at the outer boundaries of patentability, even under the Federal Circuit’s test,” Hungar said. “And in those cases there will no doubt be some claims, such as the claim in this case that can be resolved at summary judgment by a court, that the court can simply determine as a matter of law, it’s obvious.”
Sharon Barner, a patent attorney with Foley and Lardner, said after the oral arguments, “All indications are that they’ll [Supreme Court] will reverse [the Federal Circuit]. There’s a notion out there that there are too many patents. They do not enhance the patent system.”
Steve Maebius, also a patent attorney with Foley and Lardner who attended this morning’s session, said afterwards the justices “raised concerns which showed a high level of interest.”
