After Pedaling Through KSR v. Teleflex, The Path May Widen.

After perusing the briefs supporting KSR and Teleflex, the expanse of the argumentation makes one beg for a Sister Wendy who can it “Explain It All.”   Maybe a Sister Pat can emerge, who can explain the art of patents.

Even if past performance may not predict future results, there is reason to think that the Supreme Court will rule that the test for obviousness is neither A or B, exclusively.  In the IP cases they have decided recently, the holding was generally against singular or strict approaches.  The absolute bar, based on the prosecution history, was made flexible.  No strict requirement exists to permanently enjoin a proven infringer.  The doctrine of equivalents may be based on “triple identity” or “insubstantial differences.”

The issue in KSR v. Teleflex may be framed as a choice between a TSM, or no TSM, test.  It is reasonable for the Court to choose neither to the exclusion of the other.

The rubric laid over the arguments exclusively for any TSM, or any non-TSM, test may be that the “particular linguistic framework used is less important than whether the test is probative of the essential inquiry.”  Warner Jenkinson Co. v. Hilton Davis Chemical Co.  On that basis, due regard would be given to an explicit or implied TSM, but other indicia “probative of” obviousness could suffice, if proven clearly and convincingly.

So much argument in the briefs dealt with the need for, or the evils of, the TSM test.  Again, is not one appropriate judicial response to these policy arguments that, “courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community.”  Festo.  That extends too when attacks are made on how the CAFC or the USPTO dispatch their statutory duties.  The “various policy arguments now made by both sides are thus best addressed to Congress, not this Court.”  Hilton Davis.

It appears that the end result may be a broadening of the §103 test for what “would have been obvious at the time of invention …to a person having ordinary skill in the art.”   Once the ruling issues, we all can engage in “hindsight” reconstuction.