Most commentators agree that the Supreme Court’s recent KSR decision effectively broadened the federal courts’ inquiry in determining obviousness. But how will this new paradigm affect pending litigation? Chief Judge Sue L. Robinson answered that question in part in a succinct memorandum order on Thursday. At trial, defendants asserted an invalidity defense based on obviousness. The jury disagreed and returned a verdict of infringement. Defendants then moved for judgment as a matter of law, but failed to attack the jury’s nonobviousness finding. Herein lies the rub.
When KSR issued several months later, defendants moved for reconsideration of the verdict in light of the Supreme Court’s repudiation of the so-called “teaching, suggestion, or motivation” test. The Delaware court declined to reopen the issue, stating that the “question of obviousness in this case was not open for review by this court when KSR issued.” Only if the obviousness issue were “still open on direct review” would the Court re-examine the jury’s finding in light of the new precedent.
In other words, to preserve the ability to move to reconsider, a party must have put the contested issue before the court in the first place. Relying on the jury’s adverse finding alone is insufficient to trigger the retroactive application of new precedent.