Supreme Court Unanimously Reverses the Federal Circuit Court in Teleflex V. KSR

SOUTHFIELD, Mich., April 30 -- The United States Supreme Court today reversed the Federal Circuit Court's decision on Teleflex, Inc. V. KSR International CO. and sent the case back to the U.S. District Court with instructions to enter judgment in favor of KSR.

Rodger D. Young, lead trial lawyer for Teleflex and Founding Partner of Young & Susser, P.C. stated, "Teleflex is disappointed in the Supreme Court's decision to reverse the lower court. Of course, we respect the decision. We felt strongly that a material issue of fact existed and we believe that the emphasis by the Supreme Court on a more flexible standard under section 103 is misplaced here." "The focus away from what the patentee was trying to achieve and toward what is 'obvious' to a hypothetical 'person having ordinary skill in the art' is an interesting perspective. However, it is fraught with a 'you will know it when you see it' subjectivity standard," he said.

The case, Teleflex Incorporated V. KSR International Co., No. 04-1350 raised a question of broad and general importance: What is the proper standard for patentability under Section 103 of the Patent Act? Section 103 of the Patent Act states that a patent cannot issue on a subject that would have been "obvious" to a hypothetical "person having ordinary skill in the art." Since Congress created the U.S. Court of Appeals for the Federal Circuit in 1982, the Federal Circuit has employed the "teaching, suggestion or motivation" test to help determine whether a claim involving a combination of known elements of the prior art was obvious (claim invalid) or not obvious (claim valid). Thus, to challenge a patent as being obvious, the challenger must prove, by clear and convincing evidence, (1) that two (or more) earlier patents or other prior art references provided the same information as the challenged patent and (2) that one of ordinary skill in the art would have been motivated to combine those references. The petition filed by KSR asked the U.S. Supreme Court to reverse the last 25 years of precedent and do away with the "teaching, suggestion or motivation" test. The petition claimed that the courts have misinterpreted the Patent Act on obviousness, especially when a patent claims a combination of two known elements. The Supreme Court's decision did not embrace KSR's broad position. It was far more case specific.

The lawsuit began in 2002, when Teleflex filed suit for patent infringement against KSR in the U.S. District Court for the Eastern District of Michigan.

A litigation boutique specializing in complex commercial disputes, Southfield, Michigan-based Young & Susser, P.C. has earned a national reputation for superior representation. With a many successful verdicts to the Firm's credit, Young & Susser emphasizes an efficient, lean and aggressive litigation style. The firm represents both local and national clients, and focuses on disputes involving shareholders/partners, contracts, antitrust, patents, trade secrets and manufacturer representatives. Young & Susser has offices in Southfield, Michigan and New York City.