Delaware Judge Interprets KSR in Obviousness Decision

In a recent opinion, Judge Joseph J. Farnan Jr. had the opportunity to reflect on the reach of the Supreme Court’s KSR decision. In its post-trial opinion on the issue of invalidity, the Court examined a claim of obviousness in light of the high court’s mandate:

The Supreme Court [ ] explained that there is no necessary inconsistency between the underlying idea of the teaching, suggestion, or motivation test and the Graham analysis so long as the teaching, suggestion, or motivation test is not applied as a rigid and mandatory formula. In other words, the Supreme Court has acknowledged that the teaching, suggestion, or motivation test can provide helpful insight to an obviousness inquiry. (internal quotation marks omitted)

Accordingly, the Court held that, at least in chemical-compounds cases, it “remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” The result? Judgment of no invalidity for the patentee.

The Proctor & Gamble Co. v. Teva Pharmaceuticals USA, Inc., C.A. No. 04-490-JJF (D. Del. Feb. 28, 2008) (Farnan, J.).

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