Until the Supremes work their magic in the KSR v. Teleflex case, the district courts continue to apply the teaching, motivation or suggestion standard as a necessary element of challenging a patent as obvious. Just last week, the summary judgment ruling in Semiconductor Eng. v. Chi Mei Opto. (N.D. Cal. 4/19/2007) cited In re Rouffet, Ecolochem and Dystar as requiring some TSM if more than one prior art reference is employed. The TSM standard is even built-in to the Local Patent Rules in the N.D. Cal., “A plain reading of Patent Local Rule 3-3(b) indicates that OSTI is required to specifically indentify each combination and the motivation for the combination.” Sick A.G. v. Omron Sci. Tech. (N.D. Cal. 4/24/2007). This all may change with Teleflex but for now, it’s the law.
Indeed, the requirement of an initial disclosure that identifies the “motivation” element of an obviousness challenge, is set forth in many case scheduling orders, even where there are no local rules for patent cases. One wonders how quickly the IP litigation bar can adapt to the new rules of proving, or defending, an assertion of obviousness. It was somewhat of a surprise that the TSM issue was left out of the current proposal for patent reform.