# Amicus Curiae Brief — KSR Intern. Co. v. Teleflex Inc.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0086%3A47

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2007
- **Citation:** 550 U.S. 398

## Text

76 ap

re ctl ae Supreme Court, U.S.
f 4 x FILED
2 5 2006
No. 04-1350 SEP
OFFICE OF THE Liew:
In the
Supreme Court of the Anited States
.
KSR INTERNATIONAL Co.,
Petitioner,
VS.

TELEFLEX INC. and
TECHNOLOGY HOLDING Co.,
Respondents.
+
On Writ of Certiorari to the
United States Court of Appeals
for the Federal Circuit.

+

BRIEF OF LEE THOMASON
AS AMICUS CURIAE IN SUPPORT
OF RESPONDENTS.

LEE THOMASON
SPALDING & THOMASON
106 North 4"" St.
Bardstown, KY 40004
(S02) 349-7227

Sept. 25, 2006 Amicus Curiae
and Counsel

|

i
QUESTION PRESENTED

Whether the Federal Circuit 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 ordi-
nary skill in the art to combine the relevant prior art
teachings in the manner claimed.”

ii

TABLE OF CONTENTS

Page

rr St ewedeeene 1
I = ss ee ee ee eres il
TABLE OF CITED AUTHORITIES ........... iV
iT SD co re os l
STATEMENT OF THE CASE E_.......eauee: 3
SUMMARY OF THE ARGUMENT __............. 4
0 5 a Re ere Peres e & 5
l. AMPLE GROUNDS TO AFFIRM ......... 5
Zz NOVEL COMBINATIONS, EVEN THOSE

NON-PIONEERING COMBINATIONS,

ARE ENTITLED TO PATENT

PROTECTIONS, INCLUDING THE .

PRESUMPTION OF VALIDITY. _......... 6

3. AFFIRMANCE IS WARRANTED UNDER
THE STANDARD OF REVIEW
APPROPRIATE TO RULE 56 RULINGS,
As WELL As, UNDER THE REVIEW
STANDARD APPLIED TO
EQUITABLE DECREES. _.............. 7

ill

4. INVALIDATING A PATENT UPON
A SHOWING OF OBVIOUSNESS
IS AN EQUITABLE REMEDY. ........... 9

5. PETITIONER AND AM/C/ PROPOSE
CHANGES TO PRECEDENT THAT
REQUiRE LEGISLATIVE ACTION. ....... 12

CONCLUSION

iV

TABLE OF CITED AUTHORITIES

SUPREME Court CASES.

Campbell v. City of Haverhill,

ISS US. GIO (iGPa). ho ostiese

Dann v. Johnston,

S25 US. 259 (I97@) i nek eens

Diamond Rubber Co. v.
Consolidated Rubber Tire Co.,

220 U.S. 428,435 (1911) ~—.........

eBay v. MercExchange,
_ £' ae

126 S.Ct. 1837 (2006) _—.............

Graham v. Deere, 383 U.S. 1 (1966) ....

Washburn & Moen Mfg. Co. v.
Beat Em All Barbed Wire Co,

143 US. 273 (PS) ee eeven

FEDERAL CIRCUIT CASES.

Alza Corp. v. Mylan Labs,
2006 WL 2556356

(Fed. Cir. Sept.9,2006) .......

Page

v

Cross Med. Prods., Inc., v.
Medtronic Sofamor Danek, Inc..,
424 F.3d 1293 (Fed. Cir. 2005) ......... 9

In re Napier,
55 F.3d 610 (Fed. Cir. 1995) ........... 9

In re Technology Licensing,
423 F.3d 1286 (Fed. Cir. 2005) ......... 9

Tegal Corp. v.
Tokyo Electron America, Inc.,

237 F.3d 1331 (Fed. Cir. 2001) ......... 9
STATUTES.
aes teeta cet"
ee 7, 10, 13, 14, 15, 17
EE SE ee eee 14
Act of April 17, 1800 (2 Stat.37) = ....... 1]
Act of February 19, 1819 (3 Stat. 481) ..... 1]
OTHER AUTHORITIES.

Blackstone's Commentaries on the Laws of England,

Ne ) Se re 10
POMEROY, A Treatise on Equity Jurisprudence,
I =O he 1]

No. 04-1350

In the
Supreme Court of the Gnited States

KSR INTERNATIONAL Co..,
Petitioner,

VS.

TELEFLEX INC : and
TECHNOLOGY HOLDING Co..,
Respondents.

On Writ of Certiorari to the
United States Court of Appeals
for the Federal Circuit.

BRIEF OF LEE THOMASON
AS AMICUS CURIAE IN SUPPORT
OF RESPONDENTS AND AFFIRMANCE.

Interest of Amicus Curiae

Lee Thomason respectfully submits this brief
as amicus curiae, in support of Respondents, pur-
suant to Supreme Court Rule 37.2(a).! Both the

! Pursuant to Supreme Court Rule 37.6, amicus curiae
states that counsel for the parties have not authored any
portion of this brief, in whole or in part. No person or

2

Petitioner and the Respondents have filed written
consent to the filing of amicus briefs with this
Honorable Court.

The interest of the undersigned as amicus
curiae is as a registered patent attorney, who litigates
patent cases, including in courts within the 6%
Circuit, from which the KSR case comes, and
including cases involving the obviousness defense.
Also, amicus has presented appeals to the Court of
Appeals for the Federal Circuit since admission there
in 1986. The undersigned has petitioned for
certiorari from rulings of the Federal Circuit, since
having been admitted to practice before the Supreme
Court in 1990.

Further, amicus has participated actively in
patent legislation reform efforts, by submitting com-
ments at hearings, and to legislative committees.
Previously, amicus chaired the subcommittee of a
major, IP law organization, advocating legislative
reforms for the inequitable conduct defense to
infringement. Also, amicus chaired a regional bar
association IP section, and presents legal education
programs on patent-related topics.

entity, other than the amicus made any financial
contribution to the preparation or submission of this
amicus brief.

3
STATEMENT OF THE CASE

SIGNIFICANT ASPECTS OF THE DECISIONS BELOW.

In the District Court, obviousness was decided
on a motion for summary judgment.

The Federal Circuit reversed for a lack of
adequate findings, specifically, findings inadequate
to support the lower court’s conclusion about a
teaching, motivation, or suggestion in the prior art to
combine references.

Thus, this case can be viewed simply as a
decision based on an “incomplete analysis” or on
inadequate record, which the Circuit Court ruled
should be developed fully.

4

SUMMARY OF ARGUMENT

The Federal Circuit ruling that the lower court
did not make adequate findings to support a
summary judgment of obviousness should be
affirmed, and the case remanded for further findings.

The Petitioner contends that evidence of a
teaching, motivation, or suggestion to combine the
prior art is irrelevant to a determination of
obviousness. Proof about any extant teaching,
motivation, or suggestion to combine the prior art is
relevant evidence, about which well-developed
findings should be made, before a duly-issued patent
is declared obvious.

Suggestions from Petitioner and amici to
abandon reliance on evidence of a teaching, motiva-
tion, Or suggestion to combine are misplaced, or
require legislative action. Instead, this Court should
favorhaving obviousness rulings reviewed for
an abuse of discretion, as are all equitable
determinations.

5

ARGUMENT
1. AMPLE GROUNDS TO AFFIRM.

This Court could affirm the Circuit Court on
several grounds, primarily, that a summary judgment
of obviousness cannot rest on inadequate findings, or
issues Open to dispute.

The Petitioner contends that evidence of a
teaching, motivation, or suggestion to combine the
prior art is irrelevant to a determination of obvious-
ness. On that premise, the Petitioner argues that the
District Court need not make further findings.

The District Court narrowed the inquiry to the
“nature of the problem to be solved.” The Federal
Circuit noted that, and reversed because the lower
court “applied an incomplete” test of whether the
prior art contains a teaching, motivation, or sugges-
tion, either explicitly or implicitly, to make the
patented combination.

This Court should affirm because assessing
whether, or not, the prior art provided any teaching,
motivation, or suggestion to combine known ele-
ments, is relevant evidence, about which complete
findings should be made in every obviousness case.

6

That evidence is relevant to the “content of” the prior
art, and it fleshes out whether the “differences” were
obvious, or not. If that evidence can be presented, or
if none can be shown, then that shows obviousness,
Or non-obviousness. Probative evidence should
never be ignored, especially when the grant of a duly
examined and issued patent is being challenged.

Here, the District Court findings may be
deemed inadequate to review whether a teaching,
motivation, or suggestion existed in the prior art,
explicitly, or implicitly, or whether that evidence was
not genuinely in dispute.

2. | NOVEL COMBINATIONS, EVEN THOSE
NON-PIONEERING COMBINATIONS, ARE
ENTITLED TO PATENT PROTECTIONS,
INCLUDING THE PRESUMPTION OF VALIDITY.

The question here, is presented when the
invention comprises known elements, in a non-
obvious combination. Being known, the elements
come within the “scope and content” of the prior art.
The unknown is whether combining those known
elements involved novel or innovative “differences”
that were not obvious to a person of skill at the time
of invention. Dann v. Johnston, 425 U.S. 219
(1976).

7

Petitioner would merge the “differences”
aspect with the “skill” aspect, into one inquiry about
whether the skill existed for persons to perceive
making the combination, before the time that the
combination actually was made.

The better approach is to require evidence that
shows a teaching, motivation or suggestion in the prior
art, explicit or implicit, because that evidence tends to
prove whether the inventive differences were obvious,
or not.

Eliminating a need for evidence about a
teaching, motivation or suggestion to make the
combination will reduce the obviousness inquiry to
a swearing match over how skilled, or how
innovative persons were, at the time of invention.2

3. AFFIRMANCE IS WARRANTED UNDER THE
STANDARD OF REVIEW APPROPRIATE TO RULE 56
RuLINGS, AS WELL AS, UNDER THE REVIEW
STANDARD APPLIED TO EQUITABLE DECREES.

Whenever a District Court makes inadequate

2 The comparative example is §102)(b) invalidity, where

corroboration is needed in addition to testimony about the
existence of the subject matter in the prior art. The Barbed Wire
Case, 143 U.S. 275 (1892). A proven teaching, motivation or
suggestion convincingly shows that the “differences,” between
the claimed combination and the uncombined elements in the
prior art, would have been “obvious at the time” of the invention.

8

findings, or if its §103(a) assessment is “incomplete,”
then a summary judgment of invalidity should not
stand. In every case, a summary judgment of
obviousness based on testimony, or a conclusion,
that proclaims ‘it looks obvious to me’ is neither a
clear, nor a convincing ground to invalidate a duly-
examined and issued patent. Here, the Circuit Court
should be affirmed based on the threshold review
standard of whether adequate findings or an adequate
record exists to grant a Rule 56 motion.

Many frustrations were expressed about the
Federal] Circuit’s jurisprudential role, by the
Petitioner and its amici. In the undersigned’s
opinion, many of these concerns are borne from the
multivariate standards used to review patent validity
decisions of district courts. The multi-tier appellate
review standards enable the Circuit Court to nullify,
or ignore, all of the work done in the district court to
determine obviousness.

Before undertaking any validity conclusion,
the initial issue of claim interpretation will undergo
de novo review. Then, the four Graham v. Deere
inquiries are reviewed for clear error. Next, the
conclusion about obviousness is reviewed de novo.
Add to that, in the present case, that a grant of sum-
mary judgment is reviewed de novo, and a denial of
summary judgment is reviewed for abuse of

discretion. Cross Med. Prods., Inc., v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005).

There too are the necessarily included
appellate review standards for whether a reference
qualifies as prior art; for what bounds “the art to
which” the inventive subject matter pertains,” and for
“analogous” arts; and, the review standard applied to
what education and experience qualify a “person
having ordinary skill” in the art.

This multivariate approach to appellate review
should be supplanted, in recognition of obviousness
being an equitable inquiry, with the singular standard
of “reviewable on appeal for an abuse of discretion.”
eBay v. MercExchange, 547 U.S. ____, 126 S.Ct. 1837
(2006).

4. INVALIDATING A PATENT UPON A SHOWING OF
OBVIOUSNESS IS AN EQUITABLE REMEDY.

The Petitioner and several amici operate from
a premise that the obviousness inquiry traditionally
was decided in the law courts. This amicus questions
that. An invalidity challenge to a patent “is
equitable” in its origins. Tegal Corp. v. Tokyo
Electron America, Inc., 237 F.3d 1331 (Fed. Cir.
2001), and Jn re Technology Licensing, 423 F.3d
1286 (Fed. Cir. 2005). A challenge to the validity of

10

a duly issued patent seeks equitable relief in the form
of a declaratory judgment.

The statute, 35 U.S.C. §103(a), recites
equitable factors, not tangible evidence, which “as a
whole” suggest that an invention may have been obvi-
ous, and if so, that warrants a duly-issued patent being
declared invalid. These statutory factors require a
post-hoc assessment of “the prior art” viewed, as of
the “time the invention was made,” by a hypothetical
“person having ordinary skill in the art.” To posit
these evaluative factors against a “presumption of
validity,” to reach a clear and convincing conclusion
about whether to declare a patent invalid, is a pure
exercise in equitable jurisprudence.

Based on a historical test, or on the measure of
relief sought, an action to declare a patent invalid for
obviousness seeks an equitable remedy. The English
ancestor of a §103(a) claim is the writ of scire facias.
As summarized by Blackstone, “WHERE the crown
hath unadvifedly granted any thing by letters patent,
which ought not to be granted, ...the remedy to
repeal the patent is by writ of fcire facias in
chancery” Blackstone's Commentaries on the Laws
of England, Book III - Chapter 17. The writ of scire
facias enabled a citizen, who challenged an issued
patent based on prior art, to have it declared invalid

1}

by the Court of Chancery. Moreover, the modern
action for a declaration that a patented invention is
obvious seeks no monetary or legal relief.3 “The
distinguishing characteristics of legal remedies are
their uniformity, their unchangeableness or
fixedness, their lack of adaptation to circumstances,
and the technical rules which govern their use.” JOHN

N. PomMEROY, A Treatise on Equity Jurisprudence,
§109 (4th ed. 1918).

If the governing rules were to be changed,
based on the issues as presented here, then this
amicus respectfully suggests that change be that
obviousness determinations would be reviewed

according to the standard applied to equitable
rulings.

As applied to the present case, the Federal
Circuit ruling of inadequate findings or of an incom-
plete analysis in the lower court, would be affirmed,
based on standards that apply to review of summary
judgments under Rule 56. However, following
remand and full development of the record in the

3 Prior to 1819, the enabling statute vested federal
courts with power in patent suits heard at law. Act of
April 17, 1800 (2 Stat. 37). Then, that jurisdiction was
extended to equity actions. Act of February 19, 1819 (3
Stat. 481). Campbell v. City of Haverhill, 155 U.S. 610
(1895).

12

District Court, that lower court’s ruling on whether
the patent claims a non-obvious invention, if later
appealed, would be reviewed under the abuse of
discretion standard. Under either standard, a
conclusion based on inadequate findings would be
error, because Rule 56 requires more, or because in
equity that is an abuse of discretion.

The standard of review for equitable
determinations promotes a full development of the
record in the District Court, and provides more
predictability on appeal. The statute creating the
Federal Circuit Court of Appeals sought to assure
that all district courts would uniformly rule on patent
law issues. Those who counsel patentees, and
counsel their competitors, prefer that predictability
be the touchstone. Predictability in patent matters
derives from deliberative adjudication, based on
uniform principles, including a singular standard of
review. Otherwise predictability may be diffused by
widely-applied standards of appellate review.

5. PETITIONER AND AMICI PROPOSE CHANGES TO
PRECEDENT THAT REQUIRE LEGISLATIVE ACTION.

The merits brief of Petitioner, and its support-
ing amici, propose to eliminate provisions of the
Patent Act, and wholly to overrule precedent.

13

The Petitioner’s challenge to the factors set out
by the Federal Circuit can be assessed on several
levels. Petitioner argues that the suggestion,
motivation, or teaching to combine distinct
references should not be factored into the
obviousness analysis. Its arguments against any
single, ‘litmus test’ asks too much, or goes too far.
However, Petitioner perhaps argues that obviousness
may be proven, based on §103(a) as interpreted in
Graham vy. Deere, even when no explicit teaching,
motivation or suggestion to combine distinct
references can be shown. Now though, the Federal
Circuit caselaw permits alternative ways to show
motivation to combine. Cross Med. Prods., Inc.,
supra, or which collapses the inquiry into a measure
of the prior art “as a whole.” Jn re Napier, 55 F.3d
610 (Fed. Cir. 1995).

This essential point is variously stated by the
amici supporting the Petitioner. The brief of amici
AARP, etc., contends that the Federal Circuit
demands the patented combination to “be explicitly
suggested previously” in the prior art. The Solicitor
General refers to the “rigid test” (pg. 15) of the
Federal Circuit, which most recently referred to its
“non-rigid” test. Alza Corp. v. Mylan Labs, 2006 WL
2556356 (Fed. Cir. Sept. 9, 2006). Circuit precedent,
which admits proof of the inventive combination

14

having been taught or been suggested, explicitly or
implicitly, or having been motivated by the nature of
the problem, enables the lower courts to develop and
assess a full record that takes account of all the best
evidence of obviousness.

To eliminate consideration of all such evidence
is ill-advised, or is a change to the law that should
come from Congress.

_ & The amici law and history Professors
propose a ‘window’ of inventiveness open for a
“reasonable time” following the date of the claimed
invention, and to “shift the burden” to the patentee,
and to eliminate the “clear and convincing” standard
as to uncited prior art.

g Amici IBM proposes a “rebuttable presumption”
which may erode the legislative intent of §282.

These proposals may go beyond the
procedural status of the case at bar. Others propose
changes to the text or to the application of the Patent
Act that more properly are directed to Congress.

@ Petitioner would remove from consideration
evidence that distinguishes the §103 obviousness
standard from that for §102 anticipation. The “mere
existence of differences between the prior art and an
invention does not establish the invention’s
nonobviousness.” Dann, supra at 230. See, fn. 2, supra.

15

ug The suggestion of amici Intel and Micron is
a standard that allows patents for pioneering or “truly
novel” inventions, and denies patents for
“comparatively straightforward combinations.”
Those too are better cast as proposals for legislative

action, rather than for application of the existing
Statute.

Other amici in support of Petitioner are not in
agreement about the contours and application of
teaching, suggestion or motivation test.

g Amici Colianni expressed concern that
aspects of the test get an “incorrect emphasis”.

g The brief of amici Business Software
Alliance suggests that a more “flexible and
content-specific” inquiry should overlay the
teaching, suggestion or motivation test.

g Amici Professors Strandburg, et al, and
General Motors advocate that the focus move from
the §103(a) factor of “prior art” to consider the
provable “skill in the art” at the time of invention.
All this may do is have competing tral experts
testify that skilled person would deem a combination
obvious, where now the focus is on more empirical
evidence of what combinations actually were known,
shown, or suggested in the relevant prior art. These
amici proposals suggest that district judges, or the
litigants presenting the evidence, fail to give enough

16

regard to a showing of what a person of ordinary skill
would have known at the time of invention.

g Petitioner and various amici are troubled
that an accused infringer might encounter difficulty
in obtaining a summary judgment of obviousness.
That, perhaps, results from the clear and convincing
standard of proof, rather than the precise issue at bar.

These proposals expand on the question
presented here, or suggest legislative action on the
Patent Act to remedy various concerns.

In conclusion, the undersigned amicus
respectfully submits that evidence, explicit or
implicit, that proves the existence or absence of a
teaching, suggestion or motivation to combine the
prior art should remain a factor essential to the
obviousness inquiry. The test is workable, and has
served the patenting regime well, for years. If a
change is needed, then thought should be given to
having obviousness determinations, based on a
complete record, be reviewed under the equitable
standard of an abuse of discretion.

“Knowledge after the event is always
easy, and problems once solved present no
difficulties, indeed, may be represented as
never having had any, and expert witnesses
may be brought forward to show that the

17

new thing which seemed to have eluded the
search of the world was always ready at
hand and easy to be seen by a merely
skillful attention. “But the law has other
tests of the invention that subtle conjectures
of what might have been seen and yet was
not.” Diamond Rubber Co. v. Consolidated
Rubber Tire Co., 220 U.S. 428, 435 (1911).

Obviousness should include evidence of any
teaching, motivation or suggestion to combine

elements, because that proves what might have been
combined, and “yet was not.”

CONCLUSION.

Adequate consideration of evidence, or a lack
of evidence, as to whether a teaching, motivation or
suggestion to combine previously known elements
existed as of the time of invention is fully in accord
with the text of §103(a), and with the equitable deter-
mination required to invalidate a patent as obvious.

For these reasons, the ruling of the Federal
Circuit Cout of Appeals should be affirmed.

18

Dated: Sept. 25, 2006

Respectully submitted,

Let THOMASON

SPALDING & THOMASON

106 North 4th St.
Bardstown, KY 40004
(502) 349-7227

Amicus Curiae and Counsel

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0086%3A47. Public record. Not legal advice.