CAFC: Hey reformers…obviousness law is just fine, thank you

In Dystar Textilfarben v. C.H. Patrick, the Court of Appeals for the Federal Circuit recently issued a sternly worded defense of its motivation/suggestion to combine test for determining when references can properly be combined to render a claimed invention obvious. The Court, clearly speaking to the Supremes as they prepare to consider the propriety of the motivation/suggestion test in KSR v. Teleflex, highlighted the flexibility of the test and explained the relationship between the test and the Graham factors.

In defending the test, the Court clearly expressed its frustration with the prevailing belief that the prior art must include an express motivation to combine in order for obviousness to be found. The Court specifically referenced the Federal Trade Commission and National Academies of Sciences reports as examples of inaccurate interpretations of the Court’s decisions that have created “much confusion about the law.” These reports, you’ll remember, are considered to be two of the primary catalysts underlying the patent reform movement.

The Court repeatedly stressed the flexibility of the test, noting that an express suggestion to combine is not required and that the motivation/suggestion to combine can come from several sources, including the prior art references, general knowledge, and the nature of the problem to be solved.

While the Court didn’t change the test in any way, its restatement of sorts might just change obviousness law for evermore.

View the PatentFizz display of United States Patent No. 5,586,992.

For more detail on the decision, read Crouch’s review of the case.