I spent many years practicing law in many venues. Trial. Administrative. Legislative. Much of this required, of course, taking sides. I argued one side for my client. My adversary argued the other side for my client's opponent. This need to take sides—to distinguish situations—crystallized for me recently when I saw a quote from Hart Pomerantz, a Canadian attorney: "Law school taught me one thing: how to take two situations that are exactly the same and show how they are different."

A case recently argued before the U.S. Supreme Court, KSR International Co. v. Teleflex Inc., (Docket No. 04-1350), requires adjusting Pomerantz's quote to something like this: "Law school is the place that taught me how to take one thing that is exactly the same and show how it is two different things."

Why This Case Is Notable
KSR is not an important case just because of its potential impact on Supreme Court precedent. Regardless of how it is decided, it will affect how people protect their interests in intellectual property for years to come. It also has the potential to affect the relationship between United States patents and those issued anywhere else in the world. At its most basic, it has the potential to change what we perceive to be an invention.

The patent application process is one of inherent complexity and numerous hurdles. The patent field is crowded and grows more crowded daily. The mere fact that the Supreme Court has taken on this issue will only lead to an increased need for greater understanding of the details of the invention sought to be patented and an increased understanding of the field of art around it. This case will be so carefully parsed that any decision will likely increase the demands on people who read or write claims, who perform patentability searches, or who take an idea and put it down on paper with the hope of patenting it.

KSR International Co. v. Teleflex Inc. involves a disagreement between two companies about how the U.S. Patent and Trademark Office should conduct business. More specifically, it will decide the standard the USPTO must use in determining whether an invention is novel or obvious. Teleflex patented an adjustable brake pedal based on combining "any of [the] various adjustable pedal assemblies" known in the market with pedal sensor comprising any sensor "known in the art" (U.S. Patent No. 6,237,565, sometimes referred to in briefs as the Engelgau patent.) In other words, two separate things, otherwise known and commonly used, were combined, and that combination was given patent protection. KSR International asserts that the combination should have been considered "obvious" under the Patent Act, and therefore ineligible for patent protection.

Court Standard Is Being Challenged
Teleflex asserts that the Federal Circuit’s "teaching, suggestion or motivation" standard (TSM), which provides that a combination of known things into a new thing is not necessarily obvious unless there is some expressed "teaching, suggestion or motivation" to combine them. Let's use the pencil, a common item, as an example. Assume the pencil as most of us know it, without attached erasers, has not been invented yet. Then say someone took a common clay and graphite writing instrument and combined it physically with a rubber-based tube typically useful for erasing clay and graphite mixtures. Each of them may have been patented separately. Each may have been known of for years, but as separate items. Under the TSM standard, if nothing had been put forth publicly to teach, suggest or provide a motive for combining those two parts, the USPTO would allow a patent. The patentable element, presumably, is the inventive notion to combine two pieces into a better whole. On the other hand, if in the patents for the clay and graphite writing instrument or for the rubber-based tube there was an indication of the utility of the combination, no patent would be issued to the person who decided to combine them.

The question now is whether the Federal Circuit’s use of its "teaching, suggestion or motivation" test of obviousness is inconsistent with the law and Supreme Court precedent. Those who favor using the test appreciate it as a way to give credit to and protect the creative efforts of people who at least realize the utility of combining good ideas into a better idea. Those siding against the test have difficulty understanding that there should be a patentable, protected interest in putting two things invented, perhaps by others, together as a distinct invention if combining them was obvious to someone familiar with the field. One side says the test is a natural and necessary implication of patent law, while the other side says the law’s language leaves no room for the test or that the test is at least inconsistent with the law as written.

The Supreme Court Decision’s Impact
As is often the way of things in the law, one thing has been looked at carefully and clearly made to seem as two things.

The parties have made strong and cogent arguments to the Supreme Court, as they did in the Federal Circuit. Both sides describe ramifications which, depending on local circumstances, could benefit people on either side of the argument. However the Supreme Court decides the case, it has the potential to make patents and the protection they provide even more valuable and even more worth protecting. It is not the outcome that matters in a case like this. It is more important that the Supreme Court has taken on the case and, in the best of outcomes, provides clarity to a situation where adversaries can take one thing and turn it into two things. Reducing the uncertainty of this duality into one line of thinking allows anyone concerned with IP protection to move beyond this level of obviousness/novelty and exploit whatever it is the Supreme Court leaves them.

Let's say the Supreme Court upholds the "teaching, suggestion or motivation" test of obviousness. The U.S. Solicitor General, in an amicus brief filed in the case, cited evidence to suggest that combination patents are not the cause of the upsurge in patenting over the last decade. If so, Supreme Court sanctification could embolden such an increase. Better coverage of patent landscapes will make business maneuvering a more difficult activity and make control of the field or the establishment of patent fences more valuable. Thus, combination invention patents may take a dramatic uptick, crowding the field more, making the possibility of infringement greater, and leaving less open space in the patent landscape.

Or, if the Supreme Court overturns the Federal Circuit and kills off the test, combination patents will still be around. Creative people will still put things together in new ways. They will simply be required to add some "inventive element" that makes the combination patentable. This inventive element, in a now potentially much more restrictive environment, may still be all the more valuable simply because patents will be more difficult to obtain.