By Daniel Hampton and Thomas W. Brooke and Seth Milman of Holland & Knight LLP
2007 proved to be a major year for both patent and trademark practitioners. Recent judicial decisions have worked a significant reshaping of the legal landscape.
Patent Cases 2007
Three major cases impacted patent law: KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007); MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007); and In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007).
KSR and Obviousness
In KSR, a unanimous Supreme Court rejected a rigid application of the Federal Circuit's ("CAFC") teaching-suggestion-motivation ("TSM") test in favor of the more flexible framework laid out in Graham v. John Deere Co., 383 U.S. 1 (1966). The Court found KSR's patent for an adjustable pedal assembly obvious where the patentee had combined elements in the prior art to create a new pedal assembly. Although the pedal assembly's design had never before been implemented, the Court, applying the Graham analysis, determined it was not novel or inventive.
The TSM test considers whether the prior art explicitly or implicitly teaches, suggests, or motivates one skilled in the art to create the invention. If so, the invention is obvious. The Court found the TSM test too restrictive, noting that an incremental improvement, if not mentioned...