By Audrey Millemann

The United States Supreme Court may be heading towards dramatically changing the rules in one of the most significant areas of patent law: nonobviousness.

Nonobviousness is the second substantive requirement that must be met for a patent to be granted. The first requirement of patentability (assuming that utility and patentable subject matter exists and that the other requirements of a written specification are met) is novelty. 35 U.S.C. ��102. An invention is novel if it is new and not described in any single prior art reference (for example, a publicly available item or a published document). If the invention satisfies the novelty requirement, then it must also satisfy the requirement of nonobviousness. The invention is nonobvious if a person having ordinary skill in the art of the invention would not find it obvious to make the invention based on any number of prior art references. 35 U.S.C. section 103. Section 103 sets forth three issues that must be analyzed to determine nonobviousness: (1) the scope and content of the prior art; (2) the differences between the prior art and the invention as claimed; and (3) the level of ordinary skill in the relevant art.

The United States Supreme Court has identified a fourth issue: a set of factors called “secondary considerations” or objective indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1 (1966). These are factors that a patent applicant can assert in order to prove nonobviousness. The factors are: a long felt but unsatisfied need for the invention, appreciation that a problem existed that was unknown before, substantial attempts by those skilled in the art to fill an unsatisfied need or to solve a problem because of failure to understand the problem, commercial success of the invention, the replacement in the industry of the prior art devices by the patented invention, prompt copying of the invention by competitors, licensing activity, teaching away from the direction of the patented invention, unexpected results, and disbelief or incredulity by those skilled in the art that the invention worked. If a patent applicant provides evidence of these factors, the patent examiner may conclude that the invention is not obvious and grant the patent.

The Federal Circuit Court of Appeals has further refined the analysis that must be conducted to determine nonobviousness. Under Federal Circuit case law, there must be a “suggestion, teaching, or motivation” to cause a person of ordinary skill to combine the prior art references to produce the invention as claimed.

The issue of nonobviousness is also significant in patent infringement litigation. The key defense in a patent infringement suit, other than noninfringement, is invalidity. Invalidity may be based on any one of several different grounds, including that the patent is obvious. In ruling on the defense, a district court performs essentially the same analysis of nonobviousness as does a patent examiner.

The Supreme Court, however, may be about to change things. Teleflex, Inc. v. KCR International Co., 119 Fed. Appx. 282 (January 6, 2005) (2005 WL 23377) is before the Court on a petition for writ of certiorari. Teleflex owns a United States patent directed to an adjustable pedal assembly for automobiles with engines having an electronic throttle control. Teleflex sued KCR for patent infringement based on one claim of the patent. KCR filed a motion for summary judgment on its defense of invalidity based on obviousness. The district court for the Eastern District of Michigan granted KCR’s motion.

Teleflex appealed. On January 6, 2005, the Federal Circuit vacated the summary Judgment and remanded the case. The appellate court held that the district court incorrectly applied the “teaching-suggestion-motivation” test, such that genuine issues of material fact existed. The district court had erroneously failed to make specific findings of the motivation to combine the prior art references to produce Teleflex’s claimed invention. The court held that “the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references” (quoting an earlier Federal Circuit decision).

In April 2005, KCR filed a petition for writ of certiorari to the United States Supreme Court. In October 2005, the Court invited a brief from the United States Solicitor General on the position of the United States. KCR International Co. v. Teleflex, Inc., 126 S. Ct. 327 (October 3, 2005). The Solicitor General filed its brief on May 25, 2006 (2006 WL 1455388).

The Solicitor General argued that KCR’s petition should be granted. The Solicitor General contended that the district court had properly applied the four-part inquiry. Specifically, the Solicitor General claimed that the district court had found that a person with ordinary skill in the art would have been motivated to combine the existing art in the manner of the invention.

In harsh criticism of the Federal Circuit’s approach to determining obviousness, the Solicitor General stated:
“The Federal Circuit has transformed one means of establishing obviousness under that framework – proof that the prior art provided a teaching, suggestion, or motivation for combining separate prior art references – into an inflexible requirement for determining obviousness. As this case demonstrates, the Federal Circuit’s teaching-suggestion-motivation test extends patent protection to non-innovative combinations of familiar elements.”

Moreover, the Solicitor General pointed out that the Supreme Court has indicated that the purpose of section 103 is to define “the general level of innovation necessary to sustain patentability.” The Solicitor General emphasized that the Supreme Court’s cases since Graham have rejected “rigid or categorical rules” for determining obviousness. The Court has not adopted the Federal Circuit’s rule that specific findings of a “teaching-suggestion-motivation” to combine the prior art references are required. The Federal Circuit’s test, according to the brief, is a “substantial obstacle” to patent challengers and PTO examiners in proving obviousness.

The Solicitor General asserted that the Federal Circuit’s test contradicts the Supreme Court’s flexible rule set forth in Graham because it requires specific findings of a motivation to combine. The Solicitor General concluded that the case should be reviewed because it has significant practical importance: both litigation and patent examination are more costly because of the rule; competition is stifled because invalid patents are granted; and the PTO is over-burdened with more than 400,000 new applications filed in 2005. Eliminating the Federal Circuit’s test will apparently solve all these problems. If only it were that simple.

Audrey Millemann is a shareholder in Weintraub Genshlea Chediak Tobin & Tobin’s Intellectual Property and Disputes, Trials and Appeals sections. A business litigator and registered patent attorney, her practice focuses on intellectual property, unfair competition and antitrust matters. For more articles on IP law, please visit