KSR International Co. v. Teleflex Inc. - Oral Argument - November 28, 2006

KSR International Co. v. Teleflex Inc.

Media for KSR International Co. v. Teleflex Inc.

Audio Transcription for Opinion Announcement - April 30, 2007 in KSR International Co. v. Teleflex Inc.

Audio Transcription for Oral Argument - November 28, 2006 in KSR International Co. v. Teleflex Inc.

John G. Roberts, Jr.:

We'll hear argument next in No. 04-1350, KSR International versus Teleflex, Incorporated.

Mr. Dabney.

James W. Dabney:

Mr. Chief Justice, and may it please the Court:

This case concerns a very broadly worded patent claim, claim 4 of the Engelgau patent, that the Solicitor General and the United States Patent and Trademark Office have both told this Court is invalid under Section 103 of the Patent Act and was issued in error.

The Federal Circuit's vacatur of summary judgment in this case is grounded in a judicially devised test that is fundamentally inconsistent with--

Ruth Bader Ginsburg:

May I ask, if that's the position of the PTO, why aren't they proceeding to cancel the patent?

James W. Dabney:

--The case is in litigation at this point, Justice Ginsburg, and in patent litigation district courts are vested with authority and this Court is vested with authority to render a judgment of invalidity under Section 282 of the Patent Act.

Ruth Bader Ginsburg:

But the question is, you say the PTO has recognized that it issued this patent, that it's an invalid issuance.

So why aren't they curing their own mistakes, never mind what a court is going to do?

James W. Dabney:

Well, there is the possibility of director-initiated re-examination of patents as certainly an administrative remedy that does exist.

But where a case is in pending litigation such as this, the traditional way that these disputes are resolved is for a court to apply the law to the facts and render a judgment on a defense of invalidity which has been pleaded to the plaintiff's claim of patent infringement in this case.

This issue arises in the context of a defense pleaded to a claim for patent infringement and I'm not sure that the Patent Office really could swoop in and cut off the plaintiff's claim in the manner Your Honor is suggesting.

The Federal Circuit in this case applied the approach it's applied in previous cases, which is a categorical approach.

The Federal Circuit says that no matter what might be the nature of an alleged invention or improvement, no matter how broad might be a claim made in an issued patent, no matter how small might be the difference between a patent claim and prior art, and no matter how modest might have been the degree of skill needed to devise subject matter described by a patent claim, the Federal Circuit says regardless of any or all of that a court of the United States can never, ever sustain a defense of invalidity under Section 103 of the Patent Act except in a very limited and narrowly defined circumstance.

That circumstance is a record that includes clear and convincing evidence, that yields a jury verdict or specific finding showing what the Federal Circuit calls a teaching, suggestion, or motivation to combine prior art teachings in the particular manner claimed by the patent at issue.

The decision in this case treats Section 103 not, as this Court has said, as a codification of a condition for patentability whose benchmark is skill and ingenuity.

The decision in this case treats section 1 as implementing a supposed entitlement to patent protection that a court--

Ruth Bader Ginsburg:

You're talking about in this case.

James W. Dabney:

--Yes.

Ruth Bader Ginsburg:

We're talking about what the law should be.

Would you make, be making the same argument if we were looking at the most recent decisions of the Federal Circuit, the ones that they issued within the year, and each as I remember they held that the patent was obvious and therefore invalid?

Suppose we were dealing in what was, the cases were, what were they, Kahn, Alpha, and Diestar?

James W. Dabney:

Your Honor, what the Federal Circuit has done in recent times has been after a certiorari was granted in this case to erect a series of escape devices from what is otherwise a categorical test that must be imposed in all cases.

As a practical matter the Federal Circuit still characterizes as an issue of fact for determination by a jury the presence or absence of teaching, suggestion, or motivation, and so these seemingly remedial steps that have been taken by the Federal Circuit do not materially affect the problem that's praised by this case, which is the well nigh impossibility nowadays of being able to have an efficient, inexpensive, quick and predictable determination of whether claimed subject matter meets the statutory standard.

Samuel A. Alito, Jr.:

But what is the difference between asking whether something is implicit in the, in the prior art and simply asking whether it would have been obvious to a person of ordinary skill in the art?

James W. Dabney:

The statute and this Court's precedents make the benchmark of patentability skill, what degree of skill is needed to devise subject matter in respect to an objectively defined problem, objective looking at the claim and looking at the prior art?

What the Federal Circuit is talking about now is an inquiry into motivation, not skill.

Those two are very different concepts.

There is not a word in this Court's precedents that says that whether a patent should be granted or not depends on whether a hypothetical person had hypothetical motivation to do what everybody knows he could do.

John G. Roberts, Jr.:

Of course, the reason that the Federal Circuit has devised this additional test or gloss on Graham is that they say obviousness is, it's deceptive in hindsight.