Was CAFC Sounding in on KSR?

What better chance to straighten out the shifting plates under the universe of obviousness than a case about orthodontics.  The KSR v. Teleflex case pending in the Supreme Court has been a lightning rod for critcism of the Federal Circuit’s test for obviousness, as well as, criticism of the presumption of validity and of the entire patent system.  Add to the dialogue the CAFC’s decision in Ormco Corp. v. Align Tech., Inc., (05-1426).  KSR and its amici complain that the CAFC’s motivation, suggestion or teaching standard is a litmus test, which leads to factual and credibility disputes that preempt summary judgment.  Counteracting those criticisms is the CAFC panel’s Ormco decision, which reverses a summary judgment of infringement to “hold that all six patents would have been obvious.”

The claims against Ormco had a set of progressive appliances, each with “different …geometries,” which served to incrementally reposition the teeth.

The further elements had some novelty – it was claimed that the progressive orthodonics came in a three-pack, with instructions. Quare: if what’s in the pack is not novel, then does adding the elements of an set of “instructions” and a three-pack make it novel and non-obvious? Seems that if what’s in the package is “obvious to” persons of skill, then why would something so obvious need a set of “instructions.”

In one among many Federal Circuit rulings, the decision rests on where they start and finish reviewing an issue. In essence, the CAFC determined that this invention was obvious – based on their claim interpretation, not the four-part test. The district judge interpreted the claim phrase “different …geometries” to mean structured to “progressively reposition” the teeth, and he took that through the Graham v. Deere test, to sustain the validity of the claims. The CAFC reversed and held that “geometry” is so broad that any differing shaped device would be prior art, and took that interpretation through to “hold” the patents invalid. That seemed an exceptionally broad definition. I recall geometry to be about “lines” and “shapes” with at least one angle or arc. (That was one dictionary definition noted by the panel). Of course, what I recall most in Geometry class is that everytime the young lady next to me moved her lower leg and foot to a “different” angle, that “incrementally” “repositioned” where the hem of her skirt rested on her thigh. Meanwhile, the teacher was setting out a learned lesson on what “geometry” means.

Here, the CAFC defined geometry to encompass “different thicknesses” as well as different shapes or spatial layout. Due to the breadth of that claim interpretation, a lot of what the dental professionals had testified about, then was invalidating prior art.

But even so, did their work also fulfill the ‘litmus test’ of a proven motivation, suggestion or teaching to combine. Not explicitly. Again, maybe there’s an “implicit” suggestion to all persons of skill (within the sound of the CAFC’s voice) to combine a set of instructions, with some obvious dental appliance, in a three-pack.

In my humble view, the truest oddity of this case must have been the oral argument. The panel turns things around with a claim construction that prevents infringement and results in invalidity, and with not even a remand for further proceedings. Did anyone at the oral argument know what the other person was thinking might happen? At least the panelists realized that the “facts are undisputed.” Somethings are a mystery, but – I’ll lays odds that a cite to the Ormco case comes up in one of the briefs yet to be filed in KSR v. Teleflex