Supreme Court Today on Patent Obviousness

It’s great that the Supreme Court is now pushing out same-day transcripts or oral arguments. As a result, we already have up a transcript for today’s tete-a-tete (KSR INTERNATIONAL CO. v. TELEFLEX, INC., ET AL., No. 04-1350) concerning the so-called “obviousness” test in patenting.

This is important stuff, and changes — which look inevitable, based on justice comments this morning — could have a wide-ranging impact across a range of companies in all sectors, from consumer products, to life sciences, to information technology. We had justices calling the curent Federal Circuit standard vague, gobbledy-gook, and generally un-useful to everyone except the lawyers being paid to lawyer the thing. Here is Justice Scalia pointing out how absurd the current non-obviousness standard remains, despite its supposed universality:

It is misleading to say that the whole world is embraced within these three nouns, teaching, suggestion, or motivation, and then you define teaching, suggestion, or motivation to mean anything that renders it nonobvious. This is gobbledygook. It really is, it’s irrational.

Which bring about the following entertaining exchange:

MR. GOLDSTEIN: Justice Scalia, I this it would be surprising for this experienced Court and all of the patent bar — remember, every single major patent bar association in the country has filed on our side –

CHIEF JUSTICE ROBERTS: Well, which way does that cut? That just indicates that this is profitable for the patent bar.



  1. Thanks for blogging about this case. It can really have some serious implications on IP and patents. 12 pages down, 49 more to go. (smile)
    P.S. No wonder Ford is having some serious trouble and needing $18 billion in financing. Even the US Supreme Court decided to rebrand Ford to “Fort Motor Company”. May be “Fort” is fortified against customers from buy anything from it. (Laughter.)

  2. and from the law blog…
    McDonald’s Wants to Patent How It Makes a Sandwich
    Posted by Peter Lattman
    On a day when the scope of patent law is being hotly debated before the Supreme Court, there’s news that McDonald’s has filed a 55-page patent application in Europe and the United States claiming “intellectual property rights” on how to make a hot deli sandwich. Here are stories from the U.K.’s Metro and the New York Post.
    The application discusses the “simultaneous toasting of a bread component” and inserting condiments into the sandwich with a “sandwich delivery tool.” The filling is placed in the ‘bread component’. The application explains: “Often the sandwich filling is the source of the name of the sandwich; for example, ham sandwich.”
    A spokesman for Britain’s Patent Office, told the U.K.’s Metro: ‘McDonald’s or anyone else cannot get retrospective exclusive rights to making a sandwich . . . ‘They might have a novel device, but it could be quite easy for someone to make a sandwich in a similar way without infringing their claims.’
    McDonald’s told Metro: ‘These applications are not intended to prevent anyone from using previous methods for making sandwiches.” Phew.
    maybe I should patent the action of cutting and pasting…