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IP News
Supreme Court Hears Oral Arguments in KSR International Co. v. Teleflex Inc.
On Nov. 28, 2006, the Supreme Court heard oral arguments in KSR International Co. v. Teleflex Inc. (04-1350), a case that could dramatically alter the non-obviousness standard of patentability. On Nov. 18, 2002, Teleflex Inc. sued KSR International Co. ('KSR') for infringement of Claim 4 of U.S. Patent 6,237,565, which relates to an adjustable pedal assembly for use with automobiles having engines that are controlled electronically with a device known as an electronic throttle control. The district court granted summary judgment in favor of KSR after determining that Claim 4 was invalid for obviousness. On appeal, the Federal Circuit vacated the grant of summary judgment and remanded the case because 'the district court did not apply the correct teaching-suggestion-motivation test.' The Supreme Court granted certiorari to review the question:
Whether the Federal Circuit has erred in holding that a claimed invention cannot be held 'obvious,' and thus unpatentable under 35 U.S.C. '103(a), in the absence of some proven ”teaching, suggestion, or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.'
During oral argument, several justices expressed their distaste for the Federal Circuit's teaching-suggestion-motivation test. Specifically, Justices Stephen Breyer and Antonin Scalia questioned what was meant by the term 'motivation.' Justice Scalia called the test 'meaningless' and 'gobbledygook' while Chief Justice John G. Roberts called it 'worse than meaningless.' Both the petitioner, KSR, and the United States, as amicus curaie, argued that the teaching-suggestion-motivation test may have a place in the obviousness determination, but that it cannot be the exclusive analysis. Respondent Teleflex argued that the Federal Circuit test simply provided an analytical framework to the obviousness standard. Teleflex also emphasized that the teaching-suggestion-motivation test underlies 160,000 patents every year and a change would create dramatic instability. While the Court did seem concerned about this instability argument, it seems safe to expect that a strongly worded opinion is forthcoming denouncing the teaching-suggestion-motivation test as the exclusive rubric in the obviousness analysis.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.