Still Chary About Discussing the TSM Incident.

It took awhile, but the CAFC finally spoke the phrase, a “motivation” to combine.  It’s been months since the patent panelists were putting forth daily reads on the subject.  Then, after the Supremes held O/A in KSR v. Teleflex, the TSM channel had gone silent at the CAFC.

In Eli Lilly & Co. v. Zenith Goldline Pharm., (Fed. Cir. 12/26/2006), about all the panel did was to mention the “motivation” prong of obviousness, but the Kahn and Rouffet decisions were cited authoritatively for the following proposition.  “Rather, to establish a prima facie case of obviousness based on a combination of elements in the prior art, the law requires a motivation to select the references and to combine them in the particular claimed manner to reach the claimed invention.”One wonders how so many appeals about obviousness can precede the KSR case, but then so few come thereafter.  There hardly is a case, where infringement can be proven, that does not devote substantial time to obviousness, and to asking: TSM, yea, or nay.  We are left to suppose that a backlog of obviousness appeals is building at the CAFC, which (post-KSR) may lead to a mass remand “to reconsider in light of the Supreme Court’s ruling” on what constitutes obviousness.

One wonders how so many appeals about obviousness can precede the case, but then so few come thereafter.  There hardly is a case, where infringement can be proven, that does not devote substantial time to obviousness, and to asking: TSM, yea, or nay.  We are left to suppose that a backlog of obviousness appeals is building at the CAFC, which (post-) may lead to a mass remand “to reconsider in light of the Supreme Court’s ruling” on what constitutes obviousness.