In its long awaited decision in KSR International Co. v. Teleflex, Inc., 127 S. Ct. 1727 (April 30, 2007), the United States Supreme Court has completely changed the patent landscape. The Court held that the test used by the Federal Circuit Court of Appeals to determine obviousness under 35 U.S.C. §103 is incorrect. Because of KSR, it will now be harder to get patent claims allowed and easier to invalidate issued patents.
In KSR, Teleflex sued its competitor KSR, in the Eastern District of Michigan for patent infringement of Teleflex’s patent for an automobile pedal assembly. The invention combined an electronic sensor with an automobile pedal so that the pedal position could be communicated to a computer controlling the automobile’s throttle. KSR contended that the relevant claims of Teleflex’s patent were obvious under section 103.
KSR moved for summary judgment of invalidity. The district court applied the analysis of Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) and also the “teaching, suggestion, or motivation” (“TSM”) test and found the patent invalid.
The Federal Circuit Court of Appeals reversed the district court, holding that the patent was not invalid. The appellate court found that the district court had not applied the TSM test strictly enough and had not made specific findings supporting the TSM test. The court also rejected the “obvious to try” test as irrelevant.
The U.S. Supreme Court reversed. The Court reaffirmed Graham v. John Deere and the related cases that require an analysis of the scope and content of the prior art, a determination of the differences between the claimed invention and the prior art, and a determination of the level of ordinary skill in the art, along with an analysis of the secondary considerations. 127 S. Ct. at 1734. On the other hand, the Court held that the federal circuit’s TSM test was contrary to the Court’s interpretation of section 103. The Court emphasized that the federal circuit’s test was too “rigid” and was inconsistent with the Court’s expansive and flexible approach. Id. at1739.
The Court reiterated that its previous decisions had cautioned against “granting a patent based on the combination of elements found in the prior art.” Id. The Court explained that the purpose of the obviousness test is to prevent a patent “for a combination that only unites old elements with no change in their respective functions…” because such a patent “withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men [citation omitted].” Id. The Court further stated that “the combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.” Id.
The Court emphasized that combinations of previously existing elements may well be patentable, as most inventions are combinations of known elements. The TSM test is thus not necessarily inconsistent with a proper analysis of obviousness, but the Federal Circuit’s approach was too “rigid.” According to the Court, such a rigid analysis has resulted in “granting patent protection to advances that would occur in the ordinary course without real innovation [which] retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.” Id. at 1741.
The Court held that in determining obviousness, the “objective reach of the claim” is controlling. Id. at 1742. The Court of Appeals erroneously applied the TSM test for several reasons. First, the court erroneously held that district courts and patent examiners are limited to the problem the patentee was trying to solve. The Supreme Court said that this is not correct; the question is whether the combination is obvious to a person with ordinary skill in the art, not whether it was obvious to the patentee. “Any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining elements in the manner claimed.” Id.
Second, the Court of Appeals erred in assuming that the person having ordinary skill in the art would look only at the prior art directed to the same problem. The Court found this contrary to common sense and concluded that persons of ordinary skill in the art are “creative,” not “automatons.” Id.
Third, the Court of Appeals erred in holding that a patent could be obvious by showing that it would be “obvious to try” the combination of elements. If there is a need or a market pressure to solve a problem, persons with ordinary skill will try predictable solutions. This would not be innovation, but “ordinary skill and common sense.” Id.
Fourth, the Court of Appeals’ TSM test focused too much on preventing the bias of hindsight. While this is important, a rule that ignores “common sense” is not correct. Id.
Based on its interpretation of the test for obviousness, the Supreme Court held that Teleflex’s patent was invalid. Interestingly, the Court noted that two previous decisions of the Federal Circuit in 2006 (DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (2006) and Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286 (2006)) applied a more flexible obviousness test and may be consistent with the Supreme Court’s view set forth in KSR.
KSR clearly demonstrates that the Supreme Court believes that too many patents have been granted for non-innovative inventions and that a common sense approach to obviousness is needed. As a result of KSR, it will now be more difficult for patent applicants to get claims allowed, easier for patent examiners to reject claims, and easier for accused infringers to invalidate patents in court or by reexaminations in the PTO.