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Patently ‘obvious’: attorneys unravel KSR v. Teleflex

published in The Journal Record | May 10, 2007

Patent attorney Cliff Dougherty, practice leader of McAfee & Taft’s Intellectual Property Group, was interviewed by the Journal Record to discuss the Supreme Court’s recent decision in KSR v. Teleflex.

Experts agree the high court’s unanimous ruling, which addressed the fundamental question of whether an invention is “obvious” and therefore not patentable, will make successful patent challenges easier to accomplish and may make it more difficult for inventors to obtain new patents.

According to Dougherty, the Supreme Court determined that the federal circuit’s application of the teaching/suggestion/motivation test for determining obviousness, which has been the law for 45 years, was too rigid.  Under KSR, it will be easier for challengers to show obviousness.

“Certainly there are probably some questions that the Supreme Court has left unanswered that the federal circuit is going to have to come back in and fill in the gaps,” said Dougherty.  “That’s always the case when you have a sweeping opinion like this, that makes a radical change.”

Still, he believes the KSR ruling may lead to more contested patent litigation, with fewer cases where litigants are willing to settle quickly.