The Flight To Obviousness.

My plan is for some leftover turkey and dressing, but no gels such as mayo, to be packed when traveling to D.C. for next Tuesday’s oral argument in KSR v. Teleflex.  Predicting what bit of patent lore or precedent that Roberts’ Robed Reviewers may seize upon is mysterious and nonobvious.  The game though comes down to some fundamentals.

Is all progeny of Graham v. Deere wrong, since it fails to follow Sakraida?

What is favored, the predictability of the TSM standard, or the ability to reach invalidity at the summary judgment stage?

Should §103(a) be interpreted with a view to whether a patent is obvious based on the skill level in the art, or obvious because the prior art presages the invention?

Even if the Engelgau patent has an invalid claim, does this case provide an appropriate vehicle to reconfigure 40 years of obviousness precedent?

The reply brief of KSR stridently challenges anything inapposite to its reading of Sakraida and Black Rock.  The Petitioner too argues against the clear and convincing burden on the party asserting obviousness, and argues against some Graham v. Deere inquiries being considered “factual” matters, in the context of summary judgment practice.  I find it had to believe that this Court will toss those foundational aspects of the law, even if it were to rule that the TSM test is not essential to an obviousness declaration.

Another argument in Petitioner’s Reply, which is novel but dubious, is that “skill” should be the ultimate test of obviousness.  KSR urges that the “degree of skill needed to solve an objectively defined problem, not the absence of motivation [to combine]” should be dispositive. If so, then every case turns on who can win on the “level of skill” issue.  The infringer wants a high level, since such a person would have skill enough to combine known elements.  Can “invention” be equated simply to “skill”?  If so, then persons, who lack the education or experience, indeed, persons with little skill in the art, would make inventions that smarter, wiser, more educated persons would declare “obvious.”  Adopting Petitioner’s ‘objective skill’ test would mean that only persons of high skill could invent non-obvious subject matter; even then, persons of higher skill could argue it was obvious.

The TSM test is workable, predictable, and grounded on at least 40 years of precedent.  Everything else that has been proposed in the briefs would be unworkable, and would tend to promote unpredictability in patent prosecution and in validity litigation.

Now, I need to pack – is gravy a liquid or a gel?