United States Supreme Court Reverses Federal Circuit Rule on Obviousness
On April 30, in a unanimous decision, the United States Supreme Court reversed longstanding Federal Circuit precedent and provided accused infringers a new weapon in their efforts to invalidate patents. In KSR International Co. v. Teleflex Inc., (April 30, 2007)(Kennedy, J.), the Supreme Court ruled that the "teaching, suggestion, or motivation" ("TSM") test as applied by the Federal Circuit is a rigid preventative rule that denies recourse to common sense and is inconsistent with Supreme Court case law dating back to Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
The court reiterated the Graham rule for obviousness analysis under § 103 — the obviousness or nonobviousness of an invention is measured by determining the scope and content of the prior art, ascertaining the differences between the prior art and the claims at issue, and resolving the level of skill in the pertinent art. The court noted that although the factors underlying the TSM test may provide helpful insights to an obviousness determination, such "helpful insights, however, need not become rigid and mandatory formulas." In this vein, the court stated that "the obviousness analysis cannot be confined to a formalistic conception of the words teaching, suggestion and motivation or by overemphasis on the importance of published articles and the explicit content of issued patents."
The court noted that "in determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." Rather, "what matters is the objective reach of the claim. If the claim extends to the obvious, it is invalid under § 103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims."
The court identified four errors of the Federal Circuit TSM approach:
- The Federal Circuit looked only to the problem the patentee was trying to solve and failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent.
- The Federal Circuit assumed that a person of ordinary skill attempting to solve a problem would only be led to those elements of the prior art that solved the same problem, whereas common sense teaches that familiar items may have obvious uses beyond their primary purposes and that in many cases, a person of ordinary skill will be able to fit the teachings of multiple patents together like puzzle pieces.
- The Federal Circuit concluded that patent claims cannot be proved obvious merely by showing that the combination of elements was "obvious to try." In fact, "when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."
- The Federal Circuit drew the wrong conclusion from the risk that courts and patent examiners may improperly resort to hindsight bias. In fact, the rigid preventative rules adopted by the Federal Circuit deny factfinders recourse to common sense.
The court thereupon reconsidered the decision of the Federal Circuit and determined that the patent claims under review were in fact obvious, which the court noted is a legal determination and an appropriate subject for summary judgment.
In view of the KSR decision, it appears that it will be easier for the Patent Office to sustain obviousness determinations and for accused infringers to mount a validity challenge to a patent claim defining a combination of known elements based on obviousness.
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