In KSR Int'l Co. v. Teleflex, Inc., No. 04-1350 (April 30, 2007), the Supreme Court—reentering the area of obviousness after a 31-year hiatus—unanimously reversed a Federal Circuit decision that concluded that further fact finding was necessary to determine whether the patent claim in suit is obvious. But while the outcome on the merits was widely anticipated by the bar, the substance of the Court’s opinion is a remarkable surprise.

In its recent decision in KSR Int'l Co. v. Teleflex, Inc., the Supreme Court embraced a legal standard for obviousness that is in principle identical to the one the federal circuit currently uses. See The Supreme Court and the Modern Obviousness Standard. However, a little discussed aspect of the case may have significant repercussions for patent litigants. In particular, the decision may, for some period of time, have created a litigation topography more favorable to summary judgment.

As commentators jockey for position concerning the prospective impact of the Supreme Court’s decision in KSR Int'l Co. v. Teleflex, Inc., evidence is accumulating that as far as the federal circuit is concerned the song, indeed, remains the same.

Different sources report that two federal circuit judges have gone on record with comments indicating that the opinion of the Supreme Court will not require a significant reworking of federal circuit law.

Four Bayer patents (5,545,565, 5,767,372, 6,017,546, and 5,254,799) directed to the construction and use of vectors capable of expressing fragments of Bacillus Thuringiensis (Bt) proteins toxic to crop destroying insects are unenforceable according to the federal circuit. See Monanto Co. v. Bayer Bioscience N.V., 2007-1109 (January 25, 2008).

The case is a cautionary tale in the use of poster (or other) abstracts to satisfy the duty of candor. It also produces a rule of law establishing the power of a district court under 35 U.S.C. § 285 (attorney fees) to declare patents unenforceable even where a patentee has covenanted not to assert a claim for infringement.

In Sitrick v. Dreamworks, LLC, 2007-1174 (February 1, 2008) (appeal from summary judgment), the federal circuit agreed that a number of claims in two patents should be invalidated for lack of enablement.

The invention described in U.S. Patent Nos. 5,553,864 and 6,425,825 involves integrating a user’s audio signal or visual image into a pre-existing video game or movie. Two sorts of claims involved. The dispute over the first concerns whether the claims encompass the use of the invention in the context of movies, and, if they do, whether claims of such scope would be enabled. The dispute over the second sort concerns whether claims require modeling a voice for reproduction by a voice synthesizer, and if so, whether claims with such scope would be enabled. In both cases, the court answered in the affirmative with respect to claim scope, and in the negative with respect to enablement.

Using a procedural approach to claim construction, and a somewhat dubious assertion concerning its prior interpretation of the claim phrase “an insert,” the federal circuit held that the claim phrase “an insert” imposes a process limitation. More interesting still, perhaps, is a signal provided in a lengthy footnote that there are members of the court who may be prepared to defend Cybor.

Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 2006-1628 (February 6, 2008) (affirming a summary judgment of noninfringement in favor of a declaratory plaintiff) involves the use of tubular inserts to make baseball or softball bats. According to the court, the patent involved (U.S. Patent No. 5,415,398) describes inserting a tubular insert into the interior of the bat in the area where the bat normally impacts a ball. The use of an insert produces a gap between the insert and the exterior wall of the bat. This technology, according to the court’s description, “adds 'snap' to the rebound of the bat after coming into contact with a ball, and thus 'yields an improved transfer of power to the batted ball, and a heightened ‘slugging’ capacity for the bat.' Id. col.3 ll.36–47.” Slip op. at 2-3.

The federal circuit has on its own motion decided to hold an en banc hearing on the scope of patentable subject matter. The en banc order, In re Bilski, 2007-1130, (February 15, 2008), presents a number of important questions that depending on the answers could dramatically reshape the face of modern patent law.

(1) Whether claim 1 of the 08/833,892 patent application claims patent- eligible subject matter under 35 U.S.C. § 101?

(2) What standard should govern in determining whether a process is patent- eligible subject matter under section 101?

(3) Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?

(4) Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?

(5) Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

In Pfizer, Inc. v. Teva Pharms. USA, Inc., 2007-1271 (Mar. 7, 2008) the federal circuit reversed a trial court decision of noninvalidity for obviousness-type double patenting. At issue was the proper interpretation of 35 U.S.C. § 121, specifically, whether it provides a safe harbor from obviousness-type double patenting defenses to patents that issue from continuation-in-part applications that include both restricted subject matter and—as the name suggests—new matter. The court teaches in this opinion that it does not.