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To qualify for the statutory monopoly of a patent grant, an invention must be, as patent practitioners say, “nonobvious”-it has to be sufficiently different from the technology already known in the field. As the U.S. Supreme Court put it more than 150 years ago, a claimed device must show a “degree of skill and ingenuity” beyond that of “an ordinary mechanic acquainted with the business.” Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 267 (1851).When the Patent Act was enacted in 1952, the obviousness requirement was explicitly mentioned in the statute for the first time. But in addressing the concept, the statute does more to describe a method of analysis than to establish a clear standard. Section 103 provides that an invention cannot be patented if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” In its landmark opinion in Graham v. John Deere Co., 383 U.S. 1, 17 (1966), the Supreme Court said that the obviousness analysis “lends itself to several basic factual inquiries. Under � 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.” Those remarks have since become the touchstone for every obviousness issue considered at the U.S. Patent and Trademark Office and in infringement litigation.On June 26, urged on by a group of amici including the United States, a group of intellectual property law professors and several major corporations, the Supreme Court took certiorari in KSR International Inc. v. Teleflex Co., No. 04-1350, a case that gives the court its first opportunity in decades to address the basic principles of obviousness.’Motivation-suggestion-teaching’ rule is usedKSR presents an important and recurring issue: When is an invention that combines two or more previously known features obvious? As the U.S. Court of Appeals for the Federal Circuit has noted, “[m]ost inventions arise from a combination of old elements and each element may often be found in the prior art.” In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006). To address this issue, the court has established the “motivation-suggestion-teaching” doctrine. This rule requires that, to establish obviousness, a defendant in an infringement case, or the patent office in considering an application, must clearly explain the motivation, suggestion or teaching that would have led the “skilled artisan at the time of the invention” to combine known features and create the claimed invention. The Federal Circuit’s vigor in enforcing the rule is illustrated by In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999), abrogated on other grounds in In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000), a case that has drawn the attention of critics of the test. The claimed invention in Dembiczak was “a large trash bag made of orange plastic and decorated with lines and facial features, allowing the bag, when filled with trash or leaves, to resemble a Halloween-style pumpkin, or jack-o’-lantern”-in other words, a trash bag with a pumpkin face. The applicants claimed that their invention “solves the long-standing problem of unsightly trash bags placed on the curbs of America,” while allowing “users to express their whimsical or festive nature.” The patent office rejected the application, deeming the invention an obvious combination of prior art including conventional trash bags and paper bags decorated with pumpkin-face designs. Reversing, the Federal Circuit held that the patent office had failed to make a “clear and particular” showing of evidence of a motivation, suggestion or teaching to combine these elements. The court did not order the patent office to issue a patent, but it did direct reconsideration of the application. In applying the test, the Federal Circuit has made clear that the necessary evidence may be drawn from a variety of sources, such as “the prior art references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.” Dembiczak, 175 F.3d at 999. Moreover, the motivation, suggestion or teaching may be “implicit from the prior art as a whole, rather than expressly stated in the references.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). But in all cases, the court has required a specific identification and analysis of the evidence supporting a combination. The rationale is that, without such a requirement, the patent office and the federal courts will be tempted to use “the inventor’s disclosure as a blueprint for piecing together the prior art to defeat patentability-the essence of hindsight.” Dembiczak, 175 F.3d at 999. In hindsight, this view holds, even the most brilliant ideas may seem simple and obvious. As the Dembiczak court put it, “the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references.” Id. That danger, the court found, is acute “in the case of less technologically complex inventions, where the very ease with which the invention can be understood” may encourage a hindsight analysis. Id. Test proponents also argue that it promotes certainty: Without the requirement of a specific analysis, the finding of a motivation to combine would be an unpredictable, subjective exercise. The KSR case appears well suited for Supreme Court review of the motivation-suggestion-teaching rule. The patent at issue is relatively simple, covering position-adjustable assemblies for brake, gas and clutch pedals in cars. Adjustable assemblies allow movement of the pedals within the foot well so that drivers of different height can comfortably reach the controls. These assemblies were developed in the 1970s for cars that used a mechanical cable system to measure movement and link the pedals to the engine and brakes. In the 1990s, car makers began to replace cables with electronic sensors to control the vehicle. The patent therefore combines two elements that were well known in the prior art. The patent owner saw the invention as a “simple, elegant, and novel” combination of features. The defendant argued that anyone skilled in the art would have found a way to marry an adjustable pedal with increasingly popular electronic sensors. The district court granted summary judgment, finding the patent obvious. In an unpublished opinion, the Federal Circuit reversed, holding that the trial court had not correctly applied the motivation-suggestion-teaching test, because it had failed to make findings of a specific understanding or principle that would have led a person skilled in the art to make the combination in the particular manner claimed by the patent. Teleflex Inc. v. KSR Int’l Co., 119 Fed. Appx. 282 (Fed. Cir. 2005). It remanded for further proceedings on the issue. Prominent critics of the rule pushed for certiorariWhen the defendant filed for certiorari, the case caught the attention of prominent critics of the motivation-suggestion-teaching rule. Among them is the Federal Trade Commission, which issued a report in October 2003 that is critical of many basic aspects of the patent system. See “To Promote Innovation: the Proper Balance of Competition and Patent Law and Policy,” at www.ftc.gov/os/2003/10/ innovationrpt.pdf. In the FTC’s view, the rule “seemingly understates levels of ordinary skill, awards patents for inventions that inevitably would be forthcoming, and potentially confers market power when competition need not be sacrificed.” Id. Ch. 4 at 14. Similar views found voice in amicus briefs filed by the United States, various academics, and a group of corporations including Cisco Systems Inc. and Microsoft Corp. Several of these amici argue that the motivation-suggestion-teaching rule transgresses the flexible approach of Graham by effectively taking the “person having ordinary skill in the art” mentioned in the statute out of the picture. Under this view, the rule improperly prevents fact-finders from ascribing any significant independent activity to the skilled artisan, instead limiting the inquiry to a search for clearly enunciated directions in the prior art to combine existing elements in the way claimed by the patent. Neither Graham nor any other Supreme Court precedent, these parties argue, mandates, or refers to, such an approach. These amici also argue that the rule places the patent office at a particular disadvantage, because examiners, unlike private litigants, may lack the time and resources to find specific suggestions to combine in the published prior art. In its recent decision in eBay Inc. v. MercExchange LLC, 126 S. Ct. 1837 (2006), concerning the standards for the grant of injunctions in patent cases, the Supreme Court found that Federal Circuit decisions had placed undue limits on the flexible rules governing district court discretion to issue injunctions. In KSR, the court might similarly find that the motivation-suggestion-teaching test is an unwarranted intrusion on the flexible approach of Graham. Or it may conclude the test is necessary to prevent hindsight attacks on valid patents.Whatever the outcome of KSR, critics of the patent system are likely to look for opportunities to press challenges to other controversial aspects of obviousness jurisprudence, such as the case law governing the use of an invention’s commercial success to show nonobviousness. We will certainly know more when the KSR opinion issues sometime next term.

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