gregh 2006-11-28 13:10 ayc KSR_v._Teleflex Law_School patent_law Supreme_Court
People have been hot and heavy talking about the KSR oral arguments today. It's a big case, because the Supreme Court may determine whether the Federal Circuit has been too generous in its determination of the obviousness requirement.
However, I was perusing the transcript, when I came across this bit that reminded me, again, of my complaints from the AYC competition this year. So, here, from pages 15-17 of the transcript of today's oral arguments, we have counsel not answering a question because it's not at issue, explaining why it's not relevant to the discussion.
MR. DABNEY: ... But we are not here talking about the patentability of the figures of the patent. We are not talking about the patentability of claims 1, 2 or 3 of the patent; we are talking about claim 4 in which these respondents got a little greedy. Claim 4 describes almost nothing -
JUSTICE KENNEDY: Do you, do you concede -do you concede that claims 1 through 3 are valid?
MR. DABNEY: We take no position on that. They're not an issue in the case.
JUSTICE KENNEDY: If I had asked your opinion as an expert would you -
(Laughter.)
MR. DABNEY: Well, Your Honor, with respect, I would have no opinion on that question.
(Laughter.)
MR. DABNEY: I could stand here and make arguments.
JUSTICE KENNEDY: Well, I mean it seems to me that the whole argument that you're making as to Ford is that anybody knows you could, you use an electronic -- you have an electronic throttle, it serves a purpose; the pedal serves a purpose; put the two together.
MR. DABNEY: Here's the -
JUSTICE KENNEDY: Why doesn't -- don't 1, 2 and 3 do the same thing?
MR. DABNEY: Well, because -- because -
JUSTICE KENNEDY: If they're invalid then I have -- then I'm struggling to find what your test is.
MR. DABNEY: Here's the reason.
JUSTICE KENNEDY: I don't know what your test is.
MR. DABNEY: Here's the reason. What's shown in the figures of the Engelgau patent is an adjustable pedal assembly that has a large bore tube from which you suspended a pedal arm on a yoke, and it slides back and forth along the tube. And that's the
way that it provides for adjustment. And in claims 1, 2 and 3 some of that structure is recited. So those claims would not necessarily be invalid by the Asano reference because the Asana adjustment mechanism doesn't use a tube, and doesn't use a yoke; it uses pins and slots and it provides adjustment by a different mechanism. The respondents have not asserted claims 1, 2 and 3 in this case because those claims don't describe anything remotely like the petitioner's pedals. They limited their claim to claim 4 because only by claiming this enormous verbal abstraction that is claim 4 can they make a colorable claim of patent infringement against the petitioner in this case.
So I would respectfully submit that the Court does not need to decide whether 1, 2 or 3 would be valid but the point would be, the question would be what we did in the Hotchkiss case or in the Anderson's-Black Rock case or any of these cases. Would it have required more than ordinary skill to devise that claim structure with those additional structural limitations to solve some objectively defined problem, and that hasn't been litigated or briefed.
