A recent U.S. Supreme Court decision relating to patents has received considerable attention in the news. This case ( KSR International Co. v. Teleflex) makes it more likely that some inventions will be found unpatentable for obviousness, both in patent infringement litigation and in Patent Office proceedings. Some news accounts have stated that this decision will have a serious adverse effect on all U.S. patents and applications in general. We think this is highly misleading. Rather, the effect will depend on the quality of the invention, the manner in which the invention is decribed and explained, and how the patent application is prosecuted in the U.S. Patent and Trademark Office.
The Court's new decision states that the formulaic use of popular test used by lower courts in favor of patentability, which relies on the absence of any previous teaching, suggestion or motivation pointing toward the invention, is not compatible with prior Supreme Court decisions regarding obviousness, and can therefore no longer be considered determinative of patentability. Although this now-discredited test had become widely used over the last thirty years, and had been repeatedly approved by the Court of Appeals for the Federal Circuit, our firm had always been reluctant to rely on it,and had normally instead argued for unobviousness of an invention on the grounds that prior wisdom in the field taught away from the invention, or that the invention produced some unexpeceted result, or that the invention produced some new function. Our patent applications and their prosecution histories over the years have reflected this focus, and will continue to do so in view of the the Court's decision. This is particularly true in the light of the fact that the Court, in its decison, explicitly stated that the correct test in favor of patentability should rely on the unpredictabiltiy of some aspect of the claimed invention, to a person of ordinary skill in the field at the time the invention was made.
Susan Pitchford was elected Chair of the Federal Bar Association Young Lawyer's Committee.
Partner Nancy Moriarty has become the Founding President of the Pioneer Courthouse Historical Society. The Society is creating a long-term exhibit illuminating the story of the historic Pioneer Courthouse.
Chernoff, Vilhauer, McClung & Stenzel successfully defended Tillamook Country Smoker's right to use its name after it was challenged by Tillamook County Creamery Association in federal court.
In January 2004, Chernoff, Vilhauer, McClung & Stenzel sponsored Cascade Resources Advocacy Group's Program "On Everest" with Tom Hornbein and Barbara Brower.
CVMS was a principal sponsor of http://www.crag.org/involved.php.
In January of 2007 we named three new partners: Tim Long, Brenna Legaard and Kurt Rohlfs.