KSR v TELEFLEX

Citation: KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007)

Teleflex's Patent

• Patent in suit
• Prior art reference Asano

• original CAFC decision (Jan. 2005)
  • Good Summary of Decision

• Cert. granted June/06

• Petitioner's Reply Brief
  • Discussion
• Petitioner's Brief on the Merits
• Government's Brief
• Law and History Professors (Sarnoff) Paper-saver version
• Law Professor (Strandburg)
• Electronic Frontier Foundation
• Colaianni.pdf Judge Colianni
• Intel and Micron
• PFF_1.pdf Progress and Freedom Foundation
• Cisco.pdf Cisco and GM
• CCIA
• Business Software Alliance
• Time Warner, IAC, and VIACOM
• AARP

• IBM
• FordAmici.pdf Ford & DaimlerChrysler
• DCBar.pdf DC Bar Assn (Eccelston)
• Hollaar.pdf Professor Hollaar

• Respondent's Brief on the Merits
• Intellectual Property Owners
• AIPLA.pdf AIPLA
• ABA
• Automotive Suppliers
• 3M_et_al.pdf Big Innovative Companies (3M, et. al)
• Technology Properties Limited
• United Inventors Association
• Intellectual Ventures and other Small Companies with Large Patent Portfolios
• Law Professors
• Professor Tom Field (Franklin Pierce)
• IPLAC.pdf IPLAC
• Harold Milton (attorney who drafted the claims in the Teleflex patent) Paper-saver version
• TesseraEtAl.pdf Tessera, Qualcomm, and Amberwave
• Science Professors
• LeeThomason.pdf Lee Thomason

• Oral Arguments
  • More excerpts.
  • Patent Baristas' take
  • New York Times article

The Supreme Court ruled today that the Teleflex patent is obvious in view of Asano. The court gave approval of the teaching, suggestion, motivation test, but stated that, in the present case, the Fed. Cir. applied the test too strictly, and failed to recognize motivations stemming from market forces. The Court repudiated several bases from which the Fed. Cir. concluded non-obviousness:

1. That the courts and examiners should look only to the problem the patentee was trying to solve;
2. that the a person having ordinary skill would be led only to those elements of prior art designed to solve the same problem;
3. that a patent claim cannot be proved obvious merely by showing that the combination of elements was “obvious to try;” and
4. that rigid rules designed to prevent hindsight reasoning are necessary and consistent with precedent.

The Supreme Court acknowledged the Fed. Cir.'s more flexible approach to TSM analysis in their more recent decisions in Dystar and Alza Corp., but did not comment on whether those decisions are consistent with the present holding.

• Opinion of the Court paper-saver version
  • Reporter version (private)
• Summaries:
  • Brief Summary
  • KSR summary and opinion regarding appearance of "inventive step"
  • Another summary
  • Comments of Professor Gregory Mandel and discussion
• Opinions:
  • "Just a Patent Examiner"'s take on the decision, discussion
  • analysis and opinion
  • Opinion
  • Opinion and commentary by Donald Zuhn
  • Opinion of Professor Shubha Ghosh
  • Everyone's talking about KSR!
  • Commentary on how KSR makes obviousness a question of law~NEW~
  • Comments regarding KSR and Sarbanes-Oxley
• Opinion as to impact on pharma and biotech patents:
  • Comments of Professor Gregory Mandel and discussion
  • KSR's impact on biotech and pharmaceutical companies
  • Opinion and discussion on the impact of KSR on pharmaceutical patents
• Analysis:
  • Comparison of KSR with Dystar

The PTO published guidelines (dated 10/3/07) in the wake of the KSR decision.

• PTO Notice
• summary, excerpt