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

Media for KSR International Co. v. Teleflex Inc.

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

del

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.

John G. Roberts, Jr.:

In hindsight everybody says, I could have thought of that; and that you need… 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.

James W. Dabney:

Well, the Court, Mr. Chief Justice, the Court needs to be very clear what is meant by the term “hindsight”.

If by hindsight is meant looking at what’s claimed now, the subject matter sought to be patented, and comparing that to the prior art, to call that analytical process improper hindsight is to make a frontal assault on the statute itself.

If by hindsight means to posit a desired result, a clay doorknob, and to ask whether more skill and ingenuity than were required by ordinary skill in the art was needed to do that, to say that that constitutes improper hindsight is to make a frontal assault on the entire body of this Court’s precedents construing section 103 and its common law predecessors.

With regard to the kind of bias Your Honor is talking about, this Court’s precedents provide a wealth of mechanisms for protecting against that, including the statement towards the end of the Graham opinion, which is the only source of the word “hindsight” that I’ve seen cited in the amici brief, which was a discussion of the secondary consideration.

So that in a case like Goodyear against Rayovac there’s an excellent case where the claimed subject matter seems so simple in hindsight.

This was a case decided by this Court in 1944.

A leakproof battery that had been a problem that had defied solution for years and there was all kinds of motivation to solve it, and the fact that it was not solved was considered important by this Court in sustaining the validity of the patent in that case, which claimed nothing more than a sheet metal sheath wrapped around the electrodes and materials generated in the battery.

Stephen G. Breyer:

I can understand, I think, what a teaching is.

I take it a teaching is you put all the prior art… that’s what I guess that’s what Judge Rich explained, which I thought was very enlightening to me in I can’t remember the name of the case, Wigmore, Winsmore–

James W. Dabney:

Winslow.

Stephen G. Breyer:

–Winslow.

You put it all around the room.

All right, we’ve got it all around the room, and I begin to look at it and if I see over that it somehow teaches me to combine these two things, if it says, Breyer, combine this and that, that’s a teaching and then it’s obvious.

Now, maybe it doesn’t have the teaching, it just has the suggestion.

Maybe it says, we suggest you combine this or that; okay, then it’s obvious.

But I don’t understand, though I’ve read it about 15 or 20 times now, I just don’t understand what is meant by the term “motivation”.

James W. Dabney:

Well, the best I think anybody could do would be to look at the opinion in this case and try to figure that out.

Stephen G. Breyer:

I tried.

You’ve read a lot of cases.

You’re a patent lawyer, and so what is the understanding as best you have it of what is just 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.

If I want to invent something I’ll look anywhere.

I’ll look to the prior art.

I’ll look to the Library of Congress.

I’ll look to my cousin.

I mean, I’ll look wherever I can find it.

So they can’t mean that, and if they don’t mean that what do they mean?

James W. Dabney:

Well, in this case what the respondents is Mr. Engelgau would have had no motivation to look to the Asano-designed pedal because he was trying to meet the requirements of Fort Motor Company and Asano would not have met those requirements and therefore Mr. Engelgau would have had no motivation to start with Asano.

Stephen G. Breyer:

Say that again?

Stephen G. Breyer:

You wouldn’t have a motivation to look to the prior art to find your problem.

What’s an example where you have a motivation distinguishing you from everybody else?

I mean, everybody has a motivation to look to the prior art.

Ruth Bader Ginsburg:

You disagree with the motivation test.

James W. Dabney:

Yes.

Ruth Bader Ginsburg:

So perhaps you’re not the–

Stephen G. Breyer:

Right person to ask.

[Laughter]

James W. Dabney:

I respectfully suggest–

John G. Roberts, Jr.:

You don’t have a motive to answer that question right away.

Stephen G. Breyer:

Fine, that’s fine.

James W. Dabney:

–I believe if you study carefully this Court’s precedence, including Graham itself and just about every other case this Court has ever decided, what this Court has said is the measure, what our society agreed to pay off on is subject matter that reflects a certain degree of skill.

And this Court has rejected time and time again the notion that someone who was the first simply to take advantage of the known capability of technology was entitled to a patent.

Anthony M. Kennedy:

Well, would it be, would it be inadvisable for us to say the motive test teaches us something important; it has a valuable place; it’s just not the exclusive test for what’s obvious.

James W. Dabney:

Certainly.

Anthony M. Kennedy:

Or do we have to reject it all out of… out of hand?

James W. Dabney:

The… the presence or absence of motivation to devise something.

Anthony M. Kennedy:

Motivation in this special sense.

James W. Dabney:

Well, I’m not sure it is in a special sense.

What the Federal Circuit has done is has, it has attributed controlling significance to what is in most cases at best a factor, and in fact is nothing more than a legal argument about the preemptive effect of prior art.

The motivation debate in this case is all about what is the preemptive legal effect of the Asano reference.

It either invalidates the claim–

Anthony M. Kennedy:

But, but, but my question is does it not serve to show us at least one way in which there can be obviousness?

James W. Dabney:

–I would agree that if there is–

Anthony M. Kennedy:

It may not be the exclusive test.

We’re… I’m asking what the test ought to be.

James W. Dabney:

–Well, the test, I mean in this case, the specific claim at issue in this case is very analogous to the claim that this Court considered in the Anderson’s-Black Rock case.

What we have in this case is no dispute as to any of the factual inquiries that have traditionally defined patent validity analysis.

The prior art that we rely on, it’s undisputed that it’s prior art and it’s in the record.

The level of skill is undisputed.

James W. Dabney:

The quantum of difference between the claimed subject matter and the prior art is undisputed.

The only issue in this case is what legal consequences follow from that.

What question do you ask to decide whether or not that difference adds up to a patentable invention?

It’s very analogous to what was going on in the Anderson’s-Black Rock case.

Anderson’s-Black Rock was a case like this in which someone had invented a radiant heat burner and the patentee in that case had seen that there was a market for using that by attaching it to an asphalt spreader.

So the patent claim in that case was taking someone else’s invention, the radiant heat burner and hanging it on a standard painting apparatus and using it for its, one of its marketable purposes.

This Court held in this, in the Anderson’s-Black Rock case that the patentee had not done anything patentable in that case.

All he had done was take a burner that functioned as a burner, and a spreader that functioned as a spreader, and the two components did not affect one another’s operation at all.

It was in the parlance of this Court’s precedents, an aggregation.

Antonin Scalia:

How does… how does motivation enter into that analysis in that case?

How would you, how would you have applied the motivation?

I… like Justice Breyer, I don’t understand what the motivation… motivation element is.

How would you have applied the–

James W. Dabney:

Well, if the patentee in that case–

Antonin Scalia:

–He had no particular motivation to use that earlier patent, did he?

James W. Dabney:

–Well, actually in that case there actually was quite a story.

In that case there was a story that for years and years you’d had this cold joint problem of laying successive courses of asphalt blacktop, and… and this guy actually saw something that was interesting, that you could use this radiant heat burner to solve the asphalt blacktop problem.

That was not what he claimed, though.

What he claimed was an apparatus that just had these two things together, and they didn’t interact with one another any more than if they had been both put in the same shopping bag.

And that’s what we have in this case.

We have an adjustable pedal assembly that does whatever–

Anthony M. Kennedy:

No.

It took from 10 years to go from… I think 10 years from Asano to Engelgau, so it must have been not all that obvious.

James W. Dabney:

–Well, the, on this record, and even if you take at face value what’s said in the respondent’s brief in this case, which is very largely not based on the record, the story is, from Mr. Engelgau is, Ford Motor Company had a particular requirement and Mr. Engelgau sat down to design to it.

He to design a pedal that had would meet Ford’s requirements and one way that he did that was to come up with the kind of pedal assembly that’s shown in the figures of the patent.

But we are not here talking about the patentability of the figures of the patent.

We are not talking about the patentability of claims 1, 2 or 3 of the patent; we are talking about claim 4 in which these respondents got a little greedy.

Claim 4 describes almost nothing–

Anthony M. Kennedy:

Do you, do you concede… do you concede that claims 1 through 3 are valid?

James W. Dabney:

–We take no position on that.

James W. Dabney:

They’re not an issue in the case.

Anthony M. Kennedy:

If I had asked your opinion as an expert would you…–

[Laughter]

James W. Dabney:

Well, Your Honor, with respect, I would have no opinion on that question.

[Laughter]

I could stand here and make arguments.

Anthony M. Kennedy:

Well, I mean it seems to me that the whole argument that you’re making as to Ford is that anybody knows you could, you use an electronic… you have an electronic throttle, it serves a purpose; the pedal serves a purpose; put the two together.

James W. Dabney:

Here’s the–

Anthony M. Kennedy:

Why doesn’t… don’t 1, 2 and 3 do the same thing?

James W. Dabney:

–Well, because… because–

Anthony M. Kennedy:

If they’re invalid then I have… then I’m struggling to find what your test is.

James W. Dabney:

–Here’s the reason.

Anthony M. Kennedy:

I don’t know what your test is.

James W. Dabney:

Here’s the reason.

What’s shown in the figures of the Engelgau patent is an adjustable pedal assembly that has a large bore tube from which you suspended a pedal arm on a yoke, and it slides back and forth along the tube.

And that’s the way that it provides for adjustment.

And in claims 1, 2 and 3 some of that structure is recited.

So those claims would not necessarily be invalid by the Asano reference because the Asana adjustment mechanism doesn’t use a tube, and doesn’t use a yoke; it uses pins and slots and it provides adjustment by a different mechanism.

The respondents have not asserted claims 1, 2 and 3 in this case because those claims don’t describe anything remotely like the petitioner’s pedals.

They limited their claim to claim 4 because only by claiming this enormous verbal abstraction that is claim 4 can they make a colorable claim of patent infringement against the petitioner in this case.

So I would respectfully submit that the Court does not need to decide whether 1, 2 or 3 would be valid but the point would be, the question would be what we did in the Hotchkiss case or in the Anderson’s-Black Rock case or any of these cases.

Would it have required more than ordinary skill to devise that claim structure with those additional structural limitations to solve some objectively defined problem, and that hasn’t been litigated or briefed.

John Paul Stevens:

Going back to the asphalt case, were you suggesting that if they had made a claim for a process patent, that it might have been valid?

James W. Dabney:

Conceivably.

If there are no further questions I’d like to reserve the rest of my time.

John G. Roberts, Jr.:

Thank you, Mr. Dabney.

Mr. Hungar.

Thomas G. Hungar:

Thank you, Mr. Chief Justice, and may it please the Court.

Construed as the sole means of proving obviousness the teaching suggestion motivation test is contrary to the Patent Act, irreconcilable with this Court’s precedents and bad policy.

It asks the wrong question and in cases like this one, it produces the wrong answer.

Thomas G. Hungar:

It should be rejected and the judgment of the Court of Appeals should be reversed.

John G. Roberts, Jr.:

What do you understand motivation to refer to in that test?

Thomas G. Hungar:

Well, it’s not entirely clear, Your Honor.

I think that it’s sometimes difficult to distinguish, certainly between motivation and suggestion.

One way in which it is used for example, is if there were some indication in the prior art that doing something a certain way might save money and then there would be a motivation to save money, which might supply the requisite motivation for combining the two prior art references.

Anthony M. Kennedy:

Do you agree that in that context it would serve a valid purpose, i.e., can we… that is to say, can we keep the motivation test and then supplement it with other, with other means of, other ways of showing obviousness?

Thomas G. Hungar:

Yes, Your Honor.

We agree that teaching suggestion and motivation are valid means of proving obviousness, valid considerations for the Court.

And this Court’s precedents are entirely consistent with that.

A number of cases cited by respondent show that the Court has looked to suggestion as a means to determining whether a patent is obvious.

The problem with the Federal Circuit’s test is it makes that the exclusive test and precludes obviousness determinations in the absence of satisfaction of that test which this Court’s precedents are clearly not consistent with.

In fact in Graham itself, in the Sakraida case, in Dann against Johnston, lower courts had held patents valid because of a lack of suggestion.

This Court reversed without requiring or even addressing the question whether there was some explicit principle that had been proven by the party challenging the patent, by clear evidence that there was such a teaching suggestion motivation.

It’s just foreign to this Court’s precedents as a mandatory prerequisite for obviousness.

David H. Souter:

What do you make of the, sort of the revolution argument that whether it’s contrary or intention with, in fact the, it’s been applied in what is now the Fed Circuit for what, 20 years, more than 20 years I guess.

And to tip it over now is going to produce chaos.

What’s the answer to that?

Thomas G. Hungar:

Well, several things, Your Honor.

First of all, of course, there can be no legitimate reliance in lower court precedent that’s contrary to Supreme Court precedent, and it was an open secret in the patent bar that the approach being taken by the Federal Circuit was inconsistent with cases such as this Court’s Sakraida decision.

David H. Souter:

Well, I realize there’s been comment on it, but 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?

Thomas G. Hungar:

No, Your Honor.

I just think it would be dangerous proposition for this Court to endorse that line of argumentation but even leaving that aside, it’s not justified here on the facts.

And this patent is a good example.

No one is suggesting that claims 1 through 3 are invalid; the problem here is that claim 4 sweeps so broadly, so much broader than what the applicant in fact invented, that it sweeps in obvious manifestations.

David H. Souter:

No, but… if we see it your way, are there going to be 100,000 cases filed tomorrow morning?

Thomas G. Hungar:

I don’t think so, Your Honor.

What we are talking about here are claims at the outer boundaries of patentability, even under the Federal Circuit’s test.

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.

Thomas G. Hungar:

Whereas under the Federal Circuit’s test it has to go to a jury and the somewhat unpredictable, at the least–

Ruth Bader Ginsburg:

Mr. Hungar, this is the problem that I have with your test.

I think I understand you right, now, just to say teaching suggestion motivation has its place; it’s okay; but it–

shouldn’t be the exclusive test.

Thomas G. Hungar:

–Correct.

Ruth Bader Ginsburg:

And what I understand your brief to say is that it has to be supplemented with what you have called, you’ve labelled “sufficiently innovative”.

And then I begin to think well, what’s “sufficiently innovative”?

How is a trier supposed to know if something… in other words I think what you’re suggesting as a supplement is rather vague.

Thomas G. Hungar:

Your Honor, I think the “sufficiently innovative” is more of a description rather than a test; it’s a description of what this Court said in Graham.

In Graham itself the Court laid out the proper analysis which is you need to consider in detail, not in the more cursory fashion that the Federal Circuit’s test encourages, but in detail the capabilities of a person of ordinary skill and the content of the prior art and the differences between the prior art and the invention, and ascertain… it’s ultimately a legal judgment informed by those detailed factual inquiries, whether it is obvious or nonobvious and entitled to patent protection.

And in addition I would point out that this Court in Sakraida provided a framework for assessing patents like this one, where each of the elements is set forth in the prior art and each of the elements in the claimed invention is merely performing its already known, previously known function as set forth in the prior art.

Antonin Scalia:

Mr. Hungar, I have a question that’s sort of along the lines of Justice Ginsburg’s.

It isn’t just the Federal Circuit that has been applying this test.

It’s also the Patent Office and it’s been following the Federal Circuit’s test for 20 years or so.

What, what is… assuming that we sweep that test aside and say it’s been incorrect, what happens to the presumption of validity of, of patents which the courts have been, have been traditionally applying?

Does it make any sense to presume that patents are valid which have been issued under an erroneous test for the last 20 years?

Thomas G. Hungar:

Your Honor, I think that it would make sense because the statute requires it, and as a practical matter it shouldn’t make any difference, because the only category of cases in which the result would change under our test is the category in which as a matter of law, in light of the factual issues that are required under Graham, as a matter of law the Court concludes that the difference between the claimed invention and the prior art is so trivial that it cannot be given the protection of a patent.

And in those circumstances the presumption doesn’t come into play.

It’s a legal determination; the presumption has been understood to effect the burden of proof, and in the Federal Circuit’s view the measure of the burden of proof requiring clear and convincing evidence on the underlying factual considerations, not the ultimate legal determination.

But one of the problems with the Federal Circuit’s test is that it transforms what this Court made clear in Graham is supposed to be a legal determination.

Ultimately it transforms it into a jury question.

Because in a case like this one where you have as conclusory affidavits from respondent’s experts saying

“oh, this would not have been obvious. “

And that in the Court of Appeals view is enough to create a jury question and then you then have to roll the dice in front of a jury in each one of these cases, except of course the many cases in which the challenger can’t meet the teaching suggestion motivation test at all and simply is unable to challenge the validity of the patent, notwithstanding this Court’s holding in Graham that it’s ultimately a legal determination… admittedly one informed by detailed factual inquiries.

Another problem with the Federal Circuit’s test is that it devalues and de-emphasizes the statutory focus and this Court’s focus in Graham on the capabilities of the person of ordinary skill.

John G. Roberts, Jr.:

Well when you talk about the statutory focus, your innovation test… I mean, do you regard that, is that a legal conclusion of nonobviousness?

Or is it an additional test beyond what the statute requires?

Thomas G. Hungar:

We haven’t suggested an innovation test, Your Honor.

We were simply attempting to describe in perhaps imprecise terms the holding of this Court in Graham, and the holding of this Court in Graham is that the ultimate inquiry for the court, obviously suggestion, teaching, motivation, teaching a way in the prior art, all of these are factual, subsidiary factual issues that will shed light and a great deal of light on the ultimate question in each particular case, but ultimately the question for the court is whether in light of all those underlying factual showings the differences between the claimed invention and the prior art are sufficient to, that they would have been obvious to a person of ordinary skill in the art.

And that ultimately is a legal determination, you can refer to that as sufficiently innovative to justify a patent, but the ultimate question, the ultimate test is the one set forth in the statute and in the Graham decision.

Anthony M. Kennedy:

In this case, would there have been anything for a jury under your test?

Thomas G. Hungar:

No, Your Honor, because in this case it is perfectly clear that it would have been obvious for a person of ordinary skill to take the Asano patent, add the sensor, the electronic sensor in a manner that that off-the-shelf sensor is designed to be added, and voila, you have a winning combination.

Anthony M. Kennedy:

What about claims 1, 2 and 3?

Thomas G. Hungar:

I don’t know, Your Honor.

Those have not been litigated.

Those have additional limitations that are not present in claim 4 that, depending on what the prior art might reveal about those, we have no way of knowing whether they would or would not be obvious because obviously, that question has not been litigated.

Certainly there is nothing in the record in this case that would suggest they are obvious.

Ruth Bader Ginsburg:

What about the experts?

You said this was obvious and this should have, not have gotten very far.

But there were two experts, were there not, who made declarations, that had all kinds of credentials, and they called it elegant, novel and nonobvious.

Thomas G. Hungar:

Yes, Your Honor.

There are two problems with that.

Number one, the conclusory assertion that an invention is nonobvious, just like the assertion that it’s obvious from an expert, should have no weight because of course–

Ruth Bader Ginsburg:

Well these, these were declarants who gave a whole declaration.

They didn’t just say that bottom line.

Thomas G. Hungar:

–But again, it’s a legal question.

And moreover and more importantly, the problem with the Court of Appeals analysis, one problem, and with the experts’ analysis, is that they’re focusing on the narrow definition of the quote unquote problem by looking only at what this particular inventor was trying to solve, but the scope of the claim is far broader.

Thank you.

John G. Roberts, Jr.:

Thank you, Mr. Hungar.

Mr. Goldstein.

Thomas C. Goldstein:

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

I think the Court will want to have available to it the red brief and also this big, which is the supplemental joint appendix which has some of the patents in it, and I’m going to quote from both of them.

I think you can’t understand what motivation means and what the whole test that the Federal Circuit is employing means–

Antonin Scalia:

You’re right about that.

Thomas C. Goldstein:

–without–

[Laughter]

–without starting from the statute itself.

And so I want to start with the statutory text and use that as the jumping off point like the Court of Appeals has for the inquiry that it’s asking.

It’s reproduced at page 21 of the red brief.

And Congress said it’s the first blocked quote, that a patent may not be obtained though the invention is not identically disclosed or described, as set forth in Section 102 of this title.

Thomas C. Goldstein:

Those are the other requirements for giving a patent.

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.

So the term of art here is obvious, and the plain meaning of obvious, if you understand that the outcome of this case is obvious or if you think that the, what the Federal Circuit means by its test is not obvious, is something that’s either apparent or not apparent, and that’s what the Federal Circuit is asking.

It says look, take the invention and see whether or not it was apparent or not apparent, and what the Federal… to a person of ordinary skill at the time of the invention.

And what the Federal Circuit says is, we want to be inclusive.

The other side takes these words, teaching, suggestion, motivation, as if they were words of limitation rather than these words of inclusion.

And what the Federal Circuit has said is what we mean by teaching a suggestion or a motivation, and it can be explicit or implicit, is anything that would have made this invention apparent to a practitioner at the time.

That’s what it’s after.

It wants to know, look, was it apparent to someone else, a practitioner at the time of the invention of Engelgau to take Asano and put the electronic throttle control on pin–

Stephen G. Breyer:

Well, if that’s all it means, why don’t they say it?

Thomas C. Goldstein:

–They do say that.

Stephen G. Breyer:

Well, then what is this word that confused me a lot, motivation?

I found a lot of enlightenment in Judge Rich’s idea of taking all the relevant art and putting it up around the room in pictures.

And then I thought, well, okay, if that art teaches me to do what your client did, okay, it doesn’t.

Does it suggest it?

Not really.

Well then, you say motivated.

Where does that get you?

Thomas C. Goldstein:

I understand.

Can I take you to their, the Federal Circuit’s answer?

It’s two pages before the quote that I just gave you, page 19, there’s another blocked quote.

The Federal Circuit has explained what it’s talking about when it means a motivation.

They say that they have repeatedly held that there is an implicit motivation to combine.

It exists not only when a suggestion may be gleaned from the prior art as a whole, that’s a teaching, but when the improvement is technology independent and the combination of references results in a product or process.

And these are common motivations.

You would do it because it’s more desirable because it’s stronger, cheaper, faster, lighter, smaller, more durable, more efficient.

Stephen G. Breyer:

For who?

For me?

Thomas C. Goldstein:

For a practitioner, yes.

Stephen G. Breyer:

For me the inventor?

Thomas C. Goldstein:

Yes.

Stephen G. Breyer:

I know that, because otherwise–

Thomas C. Goldstein:

No.

Justice Breyer, you don’t understand.

Stephen G. Breyer:

–That’s true.

[Laughter]

Thomas C. Goldstein:

The question is not… I can illustrate it with this case.

The question is not do you want more efficient pedals.

If that’s the test, then everything is obvious because we always want more efficient pedals, Justice, and I’ll come back to this.

It’s always going to be the case that if your test is capability, every patent including the first three claims of this one is going to be obvious, because you’re always capable of assembling a pedal.

What it says, what the Federal Circuit says, is there a motivation to make this invention?

Was there motivation, and this was the heart of the Federal Circuit’s ruling in this case, their theory is that Asano renders our patent obvious.

And the Federal Circuit said all right, what’s the motivation to take Asano and take the electronic throttle control and make it responsive–

Antonin Scalia:

Well, the claim goes beyond that.

Your claim goes beyond the Asano combination and in your brief you, you, you discuss the case as though your, your limited claim 4 just relates to this invention that you, you… nobody would have thought of using the Asano pedal in the Ford car given the limited space available and so forth, and therefore, this was really an invention.

But that’s not the claim.

The claim is simply combining the, any pedal, the Asano pedal or any other one with the, with the automatic electronic sensor.

Thomas C. Goldstein:

–In a particular place, yes, that’s correct.

Justice Scalia, the reason these Federal Circuit judges were right notwithstanding your correct point which is, just to be clear, our invention is not limited to Asano.

Our invention takes any fixed pivot adjustable pedal and any electronic throttle control and says combine it in a particular way.

The Federal Circuit’s point is their motion rests on Asano.

The other side’s theory is, we’ve got this invention, Engelgau.

As has been pointed out, nobody did anything like this for 10 years.

The other side comes back and says yes, that it would have been obvious to somebody who had an Asano to do the same thing basically.

And so the Federal Circuit said okay, show us.

If this isn’t going to be hindsight, where we just give you the invention and you just say oh, I could have done that, they say give us any evidence that someone would have done what you say, which is take Asano, it’s their argument, Asano–

Antonin Scalia:

But why Asano?

Thomas C. Goldstein:

–You’ll have to ask them, Justice Scalia.

They filed a motion that it was obvious.

Antonin Scalia:

You’re the one that’s standing up here making that argument.

Antonin Scalia:

They’re not doing it.

Thomas C. Goldstein:

Justice Scalia, the patent examiner gave us a patent, initially rejected this patent as obvious, decided that it wasn’t after considering all of these things, a statutory presumption of validity attached under Section 282.

So we have what we say is clear and convincing evidence, the question isn’t presented here, but whatever.

The other side comes in and tries to knock our patent out.

They file a motion, and the motion rests on a piece of prior art.

And so what the Federal Circuit said is, if we’re not going to knock all of these patents out by hindsight, all we want to know is one thing and you know, on remand, they may well be able to prove it.

We don’t think they can.

But all it’s asking for is for the district court to make a finding that says the other side is right, that it would have been obvious to take Asano, which is their only example, and combine it with electronic throttle control in this way.

That is what’s so–

Stephen G. Breyer:

You look at that thing, you think what this genius did, and I don’t doubt that he’s a genius, is there are wheels that turn around.

And the wheels turn around to a fixed proportion to when you make the accelerator go up and down.

Now I think since high school a person has known that if you have three parts in a machine and they each move in a fixed ratio one to the other, you can measure the speed of any part by attaching a device to any other as long as you know these elementary mathematics.

I suppose it wasn’t Mr. Engelgau, it was probably Archimedes that figured that one out.

So he simply looks to something that moves, and he sticks a sticker on it.

Now to me, I grant you I’m not an expert, but it looks at about the same level as I have a sensor on my garage door at the lower hinge for when the car is coming in and out, and the raccoons are eating it.

So I think of the brainstorm of putting it on the upper hinge, okay?

Now I just think that how could I get a patent for that, and that… now that’s very naive, that’s very naive.

But the point is, I don’t see what we’re talking about, and what is supposed to happen with all these affidavits.

And the… the… Mr. Asano himself, I would think at some point when the Ford company decides to switch to electronic throttles, of course will have every motivation in the world to do precisely what your client did, because he can’t use that thing that pulls back and forth anymore.

Rather, he has to get a little electronic cap and attach it to something that moves in fixed proportion to the accelerator going up and down.

Now those are my whole reactions when I saw this and I began to think it looks pretty obvious.

What’s supposed to go on, I don’t understand it.

Thomas C. Goldstein:

–Okay.

Let me answer it in a few different ways because I want to again specify and make clear what it is that the Federal Circuit says is included within teaching, suggestions, motivations.

Then I want to turn to our invention and the affidavits in the case.

The Federal Circuit has said, and I’ll just… you can come back to it for future reference.

It’s recorded at the bottom of page 19 of our brief.

Common sense, common knowledge, common understandings are all included within teaching, suggestions or motivations.

Anthony M. Kennedy:

It looks like Dystar was decided by the Federal Circuit after it decided this case, didn’t it?

Thomas C. Goldstein:

Yes, it did.

Anthony M. Kennedy:

I mean, you have to be defending what the Federal Circuit did in this case.

And the fact that they say well now, what this means is really in some other case, that seems to me that’s really irrelevant.

Thomas C. Goldstein:

If I could just clarify, Dystar–

Anthony M. Kennedy:

And I think you should tell us when the case has been decided after, I think it has much less, much less weight.

Thomas C. Goldstein:

–Justice Kennedy, I agree that you have to distinguish two things rightly.

The first is the state of the law as it exists now, and that’s what we ask you to affirm.

And that is, the Federal Circuit has made quite clear that its test is inclusive, and we think that that establishes that it’s not necessary to add some new sort of undetermined test of–

Antonin Scalia:

You say its test is inclusive.

I would say its test is meaningless.

They have essentially said, our test simply reduces to what, what your opponents in this litigation say.

If you think that’s being inclusive, you know… it doesn’t add anything whatever to… to the… to the question, would a person of the ordinary skill in this field have conceived of this idea.

Thomas C. Goldstein:

–Justice Scalia, I disagree for the following reasons, and that is: What the Federal Circuit is saying is that any amount of evidence, any form of evidence is relevant to answer a particular question.

We have a question that we want answered.

They have a question they want answered.

Their question, the petitioner at least, I’m not sure about the Solicitor General, the petitioner’s standard is, was somebody capable of doing this?

We have a different question.

Would it have been apparent to, and that’s what we think the text requires, would it have been apparent to a practitioner of the art?

And so the Federal Circuit is saying whatever evidence you want to bring to bear–

John Paul Stevens:

Don’t you think there’s a grammatical difference in the meaning of the word obvious and the meaning of the word apparent?

Thomas C. Goldstein:

–No, I don’t.

John Paul Stevens:

So you’re saying that the question is whether it’s obvious?

Thomas C. Goldstein:

Yes, that’s right.

And what the Federal Circuit is saying, you have… what it’s saying is, if you just look to capability, and that is, could you put Asano together on pin 54, you will miss the most important part of invention.

And that is, invention isn’t at the end when you put the two things together.

Invention is finding the problem, deciding what pieces of the prior art to use, and deciding how to put them together.

Everybody is always capable of, it will always be the case, I think, that a practitioner of the art can put them together.

Remember the very point of a patent, when you look at our patent at the end of the case, we were required to explain it in great detail.

Anthony M. Kennedy:

Yes, but your… the Federal Circuit is saying that it is obvious if and only if the previous patents taught this.

But you, you can look at these two devices, and you’re a good mechanic, you’ve never seen a patent, you’ve never read these patents, you’ve never read these claims, you’ve never been to the Supreme Court, and you put them together.

Thomas C. Goldstein:

Justice Kennedy, that’s not–

Anthony M. Kennedy:

And the Federal Circuit said oh, it’s not in the patent, it’s not obvious.

Thomas C. Goldstein:

–Justice Kennedy, with respect, that is not a fair description of the Federal Circuit’s test, and I will take you to the language that addressed this claim.

It’s at the bottom of page 18 of our brief and also at the top of 19, and we quote the Solicitor General’s brief.

The Solicitor General asserts to the contrary, that Federal Circuit precedent focuses attention exclusively on a search for teaching, suggestions and motivations in the prior art.

That is not accurate.

That was a quote from their brief.

Here is a quote from the Solicitor General.

It is from a new opinion of the Federal Circuit, but it is quoting, it is citing a series of old opinions from the Federal Circuit.

Under our nonrigid motivation, suggestion, teaching test, a suggestion to combine need not be found in the prior art.

And then there is the blocked quote that I read to Justice Breyer about making things cheaper, faster, lighter, common knowledge and common sense.

Samuel A. Alito, Jr.:

Well, once you define the teaching, suggestion and motivation test that way so that it can be implicit, it can be based on common sense, I don’t quite understand the difference between that and simply asking whether it’s obvious.

Could you just explain what that adds?

Thomas C. Goldstein:

Well, all that it adds is an analytical framework.

It’s an elaboration.

The word “obvious”–

John G. Roberts, Jr.:

It adds a layer of Federal Circuit jargon that lawyers can then bandy back and forth, but if it’s… particularly if it’s nonexclusive, you can say you can meet our teaching, suggestion, or motivation test or you can show that it’s nonobvious, it seems to me that it’s worse than meaningless because it complicates the inquiry rather than focusing on the statute.

Thomas C. Goldstein:

–Mr. Chief Justice, the reason that the Federal Circuit disagrees and over 30 years this special court has elaborated this problem… these judges alone, for example, have heard 300 cases on nonobviousness… is that we need a guidance, we need guidance for the lower courts.

We need to focus them on the right question, and for patent examiners and patent practitioners, and the right question is not is… was someone merely capable of putting the two together.

The right question is is there any reason to believe that it would have been apparent at the time of the invention to create this invention whether it’s through a teaching, a suggestion, a motivation.

Antonin Scalia:

Or anything else.

Thomas C. Goldstein:

Or anything else.

Antonin Scalia:

So why don’t you say that?

Thomas C. Goldstein:

They have.

Antonin 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.

This is gobbledygook.

It really is, it’s irrational.

Thomas C. Goldstein:

Justice Scalia, I this it would be surprising for this experienced Court and all of the patent bar… remember, every single major patent bar association in the country has filed on our side–

John G. Roberts, Jr.:

Well, which way does that cut?

That just indicates that this is profitable for the patent bar.

John G. Roberts, Jr.:

[Laughter]

Thomas C. Goldstein:

–Mr. Chief Justice, it turns out that actually is not accurate.

Antonin Scalia:

It produces more patents, which is what the patent bar gets paid for, to acquire patents, not to get patent applications denied but to get them granted.

And the more you narrow the obviousness standard to these three imponderable nouns, the more likely it is that the patent will be granted.

Thomas C. Goldstein:

Justice Scalia, that is not the point of these bar associations’ either.

These bar associations, including the American Bar Association, the American Intellectual Property Law Association, have lawyers on both sides of all these cases.

They’re looking for a test that has balance and that is what the Federal Circuit has done.

Now, let me just say–

Stephen G. Breyer:

As you know, we’ve had a series of cases and in these series of cases we have received many, many briefs from all kinds of organizations and there are many from various parts of the patent bar that defend very much what the Federal circuit does and there are many from parts of the patent bar and others who are saying basically that they’ve leaned too far in the direction of never seeing a patent they didn’t like and that has unfortunate implications for the economy.

So if you’re going to these very basic deep issues, is there a reason for me to think, which I do now think, that there is a huge argument going on in those who are interested in patent as to whether there is too much protectionism and not enough attention paid to competition or whether it’s about right, or whether it goes some other way.

In other words, your argument now suggests all this is well settled, but I tend to think maybe it isn’t well settled and maybe it is a proper thing for us to be involved in.

So what are your views since you brought it up?

Thomas C. Goldstein:

–Justice Breyer, there is a big debate over whether or not there is too much patenting in this country and Congress is involved in the debate.

What I don’t think that there is that much debate about is whether a properly applied test that the Federal Circuit has articulated strikes the right balance, because that is why all of the patent bar associations have filed on our side, I think, and that is it takes account of the interests of both sides and that is it says, you’re right, we have to be concerned about overpatenting, it says on the other hand we have to be very concerned about hindsight determinations of obviousness.

But I do want to just step back and make a point about judicial administration.

If the ultimate conclusion of this Court is that teaching, suggestion, motivation just boils down into an inquiry into obviousness, I still think that an opinion that says that and says that it, that this Court believes that it is embracing the bottom line of what the Federal Circuit has been doing, is the one that will be much better for the patent system and for the courts, because we have a real concern and that was articulated… asked about at least by Justice Ginsburg and Justice Scalia, and that is if you purport to change the rules unnecessarily, if you say we’re going off in a different direction, this test has… underlies 160,000 patents issued every year.

There is no rhyme or reason to applying a presumption of validity if you’re saying the patent examiner applied the wrong test.

And it will create genuine dramatic instability.

The question I think is if you think instead that the teaching, suggestion, motivation test is incomplete, what is it that you want to add on top of it, and that’s really what I didn’t understand from the first half-hour.

If it’s going to be–

Stephen G. Breyer:

It doesn’t have to go on top.

It’s just to say what you’ve been saying, that what you’re supposed to look to ultimately is whether a person, as the statute says, who is familiar with the subject, of ordinary skill in the art, whether to such a person this would have been obvious.

Now, there are many, and this Court has listed several, factors that might count in favor of it not being obvious, such as people have been trying to do it for a long time and they haven’t been able to figure out how.

That’s a good one, and there are some other ones here.

If there’s a teaching right there, it seems to cut the other way.

But to hope to have a nonexclusive list seems to me a little bit like Holmes trying to hope to have an exclusive list of what counts as negligence.

In the law we have many standards that you can get clues about, but you can’t absolutely define them, and why isn’t this one of them?

Thomas C. Goldstein:

–Justice Breyer, I think that’s the dilemma that the Federal Circuit has been facing and is in answer to the criticism of Justice Scalia and that is the Federal Circuit isn’t trying to articulate every single possible thing that can show you that it is obvious.

What it’s trying to do is focus you on the right question.

It’s trying to say, here’s the process of invention: We have to figure out there’s a problem.

Thomas C. Goldstein:

We have to figure out what prior art you’re going to use.

You have to figure out how you’re going to combine it, and then you actually combine it.

The act of invention, the thing that is the discovery that we want to encourage, is there in the middle.

It’s picking out the prior art and deciding how to put it together.

Stephen G. Breyer:

Supposing we then were to say exactly what this Court already said, that the standard here is obvious, we list a few of these additional factors that they’ve thrown in, and just as the Court said before, all these additional factors are there.

They can be considered in an appropriate case, but it is important to remember that the ultimate matter which is for the judge is to apply the word “obvious” or not in light of the evidence and what the experts say and the facts as found by a jury or whoever is the factfinder.

Would you have any objection to an opinion like that.

Thomas C. Goldstein:

No.

Anthony M. Kennedy:

Well then, in this case let’s assume that we all strike out on coming out with the magic formulation.

One of the ways the law progresses is we go from case to case, and in this case you have two standards of operation.

One is a pedal that basically operates by pressure.

The other… and by levers.

Other is by electronics, and these are two different methods of making the carburetor release the fuel.

So why not, so somebody combines them.

Why is that such a big deal as, as claim 4 says it is.

Certainly this inventor would not be the only one to think that the two could and should be combined.

Thomas C. Goldstein:

Justice Kennedy, that’s absolutely right, and I just want to focus you on why it is you now think I lose.

We don’t lose because that’s not our invention.

The Federal Circuit’s point was that that this invention, claim 4, does not put an electronic throttle control together with an adjustable pedal.

It’s do it in a particular way.

And let me take you in summary judgment in this case to the declarations and explain why it is that the experts here said you would not have done this.

And I just have to urge the Court to cross the t’s and dot the i’s here and pay particular attention to exactly what it is that we claimed and exactly what it is that they said rendered our patent obvious.

John G. Roberts, Jr.:

Where in claim 4 do you say it’s putting it together in a particular way?

Thomas C. Goldstein:

Mr. Chief Justice, if I can take you to the big book that I asked you to–

John G. Roberts, Jr.:

Right, page 8.

Thomas C. Goldstein:

–Page 8, exactly.

And that is, there are six different pieces to claim 4 and I’m going to take you to the relevant one.

And they are the last two paragraphs here.

We claim an electronic control attached to the support, so we specify where the electronic control is going to be.

And then we say where, what that electronic control is going to be responsive to, and that’s the next paragraph: Said apparatus characterized by said electronic control being responsive to said pivot, and that said pivot is defined above to be a fixed pivot.

Thomas C. Goldstein:

So here is the design.

Let me take you to a picture if I could, and that’s going to be at the back of the red brief.

Engelgau is the third foldout page.

It looks like this.

What we say is there is going to be a fixed pivot.

It’s the red pivot in our picture, and there’s going to be an electronic throttle control.

That’s actually on the… you can’t see it because you’re looking straight at the device.

That’s on the next page.

It’s in green.

There’s going to be an electronic throttle control and it’s going to respond to that pivot.

So we specify where we’re going to put the electronic throttle, on the support.

That’s what the Federal Circuit recognized was our invention.

Now–

Stephen G. Breyer:

Is it basically an invention where in fact there are only four or five moving parts on the thing that we have seen, every one of the moving parts is moving with a fixed ratio to the accelerator going up and down, as it must be because they’re also moving in fixed ratio with the throttle thing coming out.

And so, whichever of those four that you figured out you were going to attach it to, it’s obvious, isn’t it, that you have to attach it either to the pedal or to the throttle thing that comes out, or to a part of the machine that moves in fixed ratio to the movements of one of those two?

Now, that’s what I would find fairly obvious.

Why isn’t that obvious?

Thomas C. Goldstein:

–All right.

Let me, Justice Breyer.

The experts say it’s not obvious and the reason nobody did it for 12 years and the reason that Asano was never combined with an electronic throttle control is explained in the record in this case and it’s twofold.

The first is, and I have to take you now to the picture of Asano because that’s what the claim that is supposed to make our invention obvious is.

They say you would have done this with Asano.

What the experts say is this Asano thing, no one would ever use it at all.

John G. Roberts, Jr.:

Who do you get to be an expert to tell you something’s not obvious.

Thomas C. Goldstein:

You get–

John G. Roberts, Jr.:

I mean, the least insightful person you can find?

[Laughter]

Thomas C. Goldstein:

–Mr. Chief Justice, we got a Ph.D. and somebody who had worked in pedal design for 25 years.

John G. Roberts, Jr.:

Exactly.

Thomas C. Goldstein:

And people who actually know this industry.

Thomas C. Goldstein:

And they, there are two things that come from the record in this case.

The first is all of the experts and Engelgau himself testified not simply, no, this is not obvious, but you would have never used Asano to solve this or any other problem with an electronic throttle control.

Antonin Scalia:

Excuse me.

You keep coming back to Asano.

Why do you keep coming back?

Your claim here does not say anything about Asano.

Thomas C. Goldstein:

Justice Scalia, the way these cases are litigated, and properly so, is the other side says this would be obvious in light of a particular piece or collection of prior art.

You may have a nonprior art motivation to combine them, but you’re going to say something else already exists.

They say it’s Asano, and you’re going to combine it with something else.

This is their motion.

Their argument, the argument that was presented to the Federal Circuit, was that you would take Asano.

That’s why–

Antonin Scalia:

I think they happened to use Asano simply because that’s what you stuck it on.

But I think their basis, their basic point, is anybody would have thought to stick it on, whether it’s stick it on Asano or stick it onto some other mechanical accelerator mechanism.

Thomas C. Goldstein:

–Well, that is not… we did not stick it on Asano.

Nobody stuck it on Asano.

They picked Asano because it was the prior art of adjustable pedal designs.

Justice Scalia, you–

John G. Roberts, Jr.:

Well, that’s because the Federal Circuit’s approach focuses narrowly prior to our grant of certiorari, allegedly more flexibly after, on prior art, as opposed.

To I would say common sense.

And so they say we have to find something in prior art to show that this was non… that this was obvious.

Thomas C. Goldstein:

–Mr. Chief Justice, that’s not correct.

Even under a capability standard, even under an extraordinary innovation standard, you are going to compare something to prior art.

You’re going to take what exists now and compare it to what existed before, no matter what standard you’re employing.

And what they did is they compared it to the prior art, which is Asano, and the Federal Circuit said, all right, you want to say it will come from Asano.

It would not come from Asano for either of two reasons.

The first is you would never use Asano.

That’s the expert testimony.

The second is the reason given by the PTO in its brief in this case and that is you wouldn’t put it on the pin that would render Engelgau obvious.

You would put it somewhere else.

Thomas C. Goldstein:

They say that you would put it attached to a lever up high.

What I want to make clear is two things.

The first is, though the Federal Circuit has in recent opinions been quite emphatic about how inclusive its test is, it has consistently cited earlier Federal Circuit precedent and said that the other side and the people who claimed that their standard is too narrow and misguided are mischaracterizing it.

And the second is, the judgment in this case quite explicitly acknowledges and implies the implicit teaching, suggestion, motivation standard.

So I don’t want you to have the mistaken impression that there has been some radical change in Federal Circuit law.

But no matter what one thinks about the differential between Federal Circuit law today and Federal Circuit law a year ago or two years ago, there is a quite considerable cost by articulating a desire to head off in a new direction, because there will be dramatic instability in the patent system, the incalculable investments that underlie current patents.

There is nothing fundamentally not functional about how the Federal Circuit is approaching this question.

It has had decades to look at this to try and elaborate a standard.

This court in cases like Sakraida and–

Stephen G. Breyer:

And it so quickly modified itself.

Antonin Scalia:

And in the last year or so, after we granted cert in this case after these decades of thinking about it, it suddenly decides to polish it up.

Thomas C. Goldstein:

–Justice Scalia, if you actually believe that, then you just don’t believe the judges in the Federal Circuit because in each of these opinions they say quite explicitly we are not changing it.

Samuel A. Alito, Jr.:

Would you dispute that in some of the earlier cases, like Dembiczak with the garbage bag that looks like a pumpkin, that this TSM test was applied in a way that seemed to ask for something quite explicit in the prior art?

Thomas C. Goldstein:

I do think that you can find outliers.

I think that’s fair.

These judges as I said have heard 300 of these cases.

There are mistakes in the Patent Office; there are mistakes by judges.

The Federal Circuit explains in Dembiczak what it was actually looking for is an explanation.

It wasn’t saying that you had to use the prior art, and it has tried to make quite clear that the law is not that you have to have prior art.

Or that those decisions here today.

You can’t take, in a system that produces so many patents, and say ah, look at this side swing patent, or the garbage bags, and draw from that the conclusion that the system is fundamentally broken.

Justice Breyer, I meant to come back to that.

We can look through the studies, we cite a series of empirical studies in our brief that have looked at this problem, the rhetorical claim that the obviousness rule is leading to gross over-patenting.

John Paul Stevens:

Tell me again, just to be sure I have it my… tell me very briefly, what it is that makes this invention nonobvious?

Thomas C. Goldstein:

Two things.

The first is… and they do arise from the other side’s motion under Asano.

First you wouldn’t have chosen Asano.

The second is the Federal Circuit explained… excuse me, the Solicitor General explains that you would have put the electronic throttle control somewhere else, technically on what’s called pivot 60, which would not, would have rendered, would have not have rendered Engelgau obvious.

John Paul Stevens:

The invention, to use an old-fashioned term, is the decision of where to put the control.

Thomas C. Goldstein:

That is the extent of the entire invention.

John G. Roberts, Jr.:

And just… what makes it nonobvious is that it’s attached to a nonmoving piece?

Thomas C. Goldstein:

An adjustable pedal that has a nonmoving pivot, yes.

Antonin Scalia:

But the claim doesn’t require that.

Thomas C. Goldstein:

Yes it does.

It does.

I promise.

[Laughter]

John G. Roberts, Jr.:

But just to follow up from Justice Stevens’ question, what makes this nonobvious is the decision to place the electronic control on a part of the car that doesn’t move?

Thomas C. Goldstein:

On the support–

John G. Roberts, Jr.:

Right.

Thomas C. Goldstein:

–And then a particular kind of adjustable pedal.

That’s the state of the record so far.

Stephen G. Breyer:

I’m sorry.

Doesn’t the axis turn?

Thomas C. Goldstein:

Does the pivot turn?

Stephen G. Breyer:

Isn’t there an axis, and the axis turns?

Thomas C. Goldstein:

Yes.

Stephen G. Breyer:

The pivot rotates?

Thomas C. Goldstein:

The pivot rotates, but it doesn’t… the difference is that the pivot doesn’t move with the adjustment of the pedal.

It spins around, of course, you have to have something that you can… but the prior art, almost all that involved a pivot that when the pedal moved out, the electronic throttle control would go with it.

John G. Roberts, Jr.:

And the wires would get worn, worn down, right?

And the invention here is well, let’s not put it somewhere where it doesn’t move, and so the wires won’t move and it won’t get worn down.

Thomas C. Goldstein:

That would be a motivation.

That’s absolutely right, why you would want to improve on the part.

The Federal Circuit said that you would never do it in the way that was described here.

You may be able to prove it some other way on a remand.

This was a very specific motion, and the Federal Circuit faithfully addressed the claim of obviousness that was presented to it.

John G. Roberts, Jr.:

Thank you.

Mr. Dabney, you have three minutes remaining but you may take four.

James W. Dabney:

Thank you, Mr. Chief Justice.

James W. Dabney:

As someone who tries patent cases, there is no legal regime that is a greater generator of patent litigation than the teaching suggestion motivation test that is urged by the respondent.

Where in this unbelievable situation where, in the District Court, this Court’s precedents were cited, were not followed.

In the Court of Appeals, this Court’s precedents in Anderson’s-Black Rock and others were cited, not distinguished, followed at all.

If the law of this Court had been applied in the District Court I wouldn’t be standing here right now.

The reason that we have this, this proceeding going on is because of this extraordinary situation, where notwithstanding that this Court has issued precedents in a variety of circumstances dealing with multiple technologies, lots of different kinds of differences, lots of different kinds of alleged innovation, they are simply not paid attention to in the corpus of the Federal Circuit’s case law up until about a month ago.

So the, this Court could do no greater service to the actual process of determining whether claimed subject matter does and does not comply with the statute than to decide with case.

The worst possible thing that can happen in this case is for the case not to end here, and for the Court not to provide a precedent as it has done in so many particular past cases, and give the public an example of a particular claim and a particular difference that does not meet the standard.

What’s made clear throughout the history of patent decisionmaking is that no verbal formula is ever going to get you there.

What we have as a functional approach; it’s not as opposing counsel suggests… is “it” apparent, is “it” obvious, would it have been obvious to do “it”?

What this Court has held over and over again starting with the doorknob case in 1851 is to pose a problem.

Would it have–

Anthony M. Kennedy:

What about in this case where the wires were getting frayed until this disclosure?

James W. Dabney:

–That’s not, if you read the affidavits carefully that is not an accurate characterization of… of any evidence put in by the petitioner.

That was an argument–

Anthony M. Kennedy:

So suppose I read the record the other way.

Suppose I read the record as saying this invention stopped the wires from being frayed and therefore it was an advance.

James W. Dabney:

–That would be, to the extent that that… if that is established that could be taken into consideration along with other facts.

Stephen G. Breyer:

Why would that be?

I mean, I’ve worked out that the raccoons are gnawing the machine, at the bottom of the garage door and that’s a problem.

So I move it to the top of the garage door.

Does that suddenly… nobody before thought of moving it to the top of the garage door; nobody before had thought of moving it to a different part that moves in a constant ratio with the accelerator.

James W. Dabney:

What the statute calls for, Justice Kennedy, is not to focus on a particular subjective problem like fitting into a Ford F 350, or particular difference between a prior art pedal that provides wire chafing and a claimed invention.

The law has always required that the patentability be determined by the smallest amount of difference.

So if it were true that there was wire chafing, that that was a problem that would have had to have been overcome, if you started with a prior art pedal that, that provided for wires to move… well then, maybe that combination would not make the claimed subject matter obvious.

But that would not foreclose the defendant from saying well, this other technology over here that doesn’t suffer from that problem, it’s a simple matter to modify that, so the premise of the question, that because there is some other potential combination that might have been, might have been more difference or less reason to modify it than the one that’s relied on by the petitioner, is legally not material to the decision in this case.

So I respectfully submit that the… I really have to emphasize this.

I mean, this is a litigation between, you know, two real businesses.

The justified expectations, Justice Souter that I think this Court has recognized over and over again, are the expectations of real innovators, who make real products and have real inventions.

And… and I think it would come as a great surprise to the owner of the Asano patent to find as Justice Breyer suggested, that in order to supply it to a modern vehicle maker it would have to pay tribute to the Engelgau patent.

Thank you.

John G. Roberts, Jr.:

Thank you, Counsel.

The case is submitted.