While the Supreme Court considers KSR v. Teleflex, one hand of the Federal Circuit polishes the TSM test and the other tarnishes it

As the Supreme Court considers the propriety of the teaching suggestion motivation test for determining whether a combination of references is proper in an obviousness analysis, the Federal Circuit has issued a pair of decisions that, taken together, highlight the confusion and lack of clarity that many see as the fundamental problem with the test.

An ironic result, indeed, considering that the first decision – penned by Chief Judge Michel – was clearly written as a resounding defense of the TSM test.

One hand polishes the test…..

As described by Justice Scalia during the KSR oral argument, the Federal Circuit tried to “polish up” the TSM test in Dystar Textilfarben v. C.H. Patrick.  The Dystar panel saw an opportunity, in essence, to write an amicus brief for consideration by the Supreme Court in KSR.  Writing for a unanimous panel, Chief Judge Michel penned a detailed defense of the TSM test and explained that, despite being misunderstood by many, the test is quite flexible and does not require an explicit motivation.

…while the other tarnishes it…

Oddly, six weeks after the decision in Dystar and less than two weeks before oral argument in KSR, a completely different panel of the Federal Circuit summarily dismissed a question of whether a motivation to combine existed in Optivus Technology v. Loma Linda University Medical Center.  The panel gave its motivation analysis in a single sentence:

“Here, there is no question that the CDR establishes that a person having a working familiarity with particle beam technology as it relates to cancer treatment, motivated by the need for more effective and efficient proton therapy facilities, would have been led to combine the University of Washington’s neutron therapy facility with the proton beam therapy design outlined in the CDR.”

That’s it.  There is no question.  Now go away.

This substantial omission of an analysis of the motivation issue highlights the arbitrary nature of the test and certainly bolsters the argument for its demise.  The timing of the decision in Optivus Technology in relation to Dystar only magnifies its message.

It’s hard to imagine how these two decisions, taken together, could bode well for maintaining the test in its current form.