Yesterday afternoons oral arguments to the Supreme Court in the KSR obviousness case, and last nights Jimi Hendrix birthday tribute concert at B.B. Kings Blues Bar had some similarities. Both stages featured celebrated personalities, in costume, who recited and even re-invented written passages which were well-known and long-honored by their audiences. The main difference, other than the cover charge, was that the groups on the stage at B.B. Kings have intimate knowledge about all elements that each audience came to hear.
What was the smartest, deepest, most-informed line of questioning from anyone on the bench yesterday? It’s a tie for last. The colloquy at oral arguments in Hilton-Davis (the non-exclusive test for equivalence), Festo (the flexible bar of prosecution estoppel), and now, in KSR, are reminiscent of one arguing a complex case to a district judge who never has had a similar case. Sure, hes beefed up on the topic, but its like the Judge has all the parts of the applicable law laid on shelves around him, and still, its not obvious to him how to combine their teachings.
The noted points were the Justices repeated inquiry about the motivation prong, and random comments about how the Federal Circuit has dressed up the TSM standards since KSR was granted cert. Are those at the heart of the matter? The questions about what motivation means, and to whom, struck discordant notes. May I quote a pre-KSR decision, Ruiz v. A.B. Chance. While this court indeed warns against employing hindsight, its counsel is just that – a warning. That warning does not provide a rule of law that an express, written motivation to combine must appear in prior art references before a finding of obviousness. The motivation is to combine different elements or teachings in the relevant art, and that standard is addressed to a person having ordinary skill in the art. J Breyer, you knew that.
Last, style points. The Asst. Solicitor didnt add much. J Kennedy got him to concede that teaching suggestion and motivation are valid means of proving obviousness, and the CJ brought forth that the U.S. has not suggested an innovation test. J Souter asked why to change a rule, and by doing so, launch 100,000 cases against issued patents tomorrow morning. The Solicitor said, in effect, because its just the right thing to do. Mr. Dabney was willing to let ambiguously worded questions by some Justices do most of his work. The rest of his argument was against the status quo, rather than offering a clear path forward, other than, well what Sakraida and Deere say, ya`know. Mr. Goldstein was superlative. As fast a stones were shoveled into his fox-hole, he dug straight out and re-secured his perimeter. His responsiveness, and expressions of intellect and clear purpose, outdid all at the bench and bar.
In the end, though, the outcome in KSR is predictably like the broadening done in Hilton-Davis and Festo. The strict test will be supplanted by a more flexible standard for proving obviousness. Did J Thomas ever comment?