Supreme Court Redefines Obviousness in Patent Law : KSR is a Landmark Case

KSR International Co. vs. Teleflex, Inc. (No. 04-1350, slip opinion) is a landmark case in patent law involving a modernly revised definition of the concept of obviousness in patent law, as handed down by the United States Supreme Court on April 30, 2007 in the case of a patent claim for “a position-adjustable pedal assembly with an electronic pedal position sensor attached to the support member of the pedal assembly.” The patent claim involved a COMBINATION of pedal elements found in prior art, but not that precise particular combination.

In an opinion written by Justice Kennedy for a unanimous Supreme Court, the U.S. Supreme Court Justices rejected the previously existing “strict” TSM (“teaching, suggestion, or motivation”) test for obviousness and replaced it with a modern “expansive and flexible approach”.

What is obviousness under patent law?

Section 103 of the Patent Act, 35 U. S. C. §103, as Kennedy writes:

“[F]orbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’ “

Under the previously existing standard of the TSM test, the Federal Circuit had reversed a District Court decision which, on the basis of that same test, had granted KSR summary judgment because of the obviousness of the USPTO patented Teleflex invention.

Kennedy relates the history of the case as follows:

“With principal reliance on the TSM test, the Court of Appeals reversed. It ruled the District Court had not been strict enough in applying the test…. Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if ‘some motivation or suggestion to combine the prior art teachings’ can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.”

In KSR, the Supreme Court relied on the precedent in the Sakraida case regarding the issue of obviousness in cases of combinations or arrangements of prior art. Kennedy writes:

“[I]n Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282.

The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”

Moreover, Kennedy includes a panoply of factors which are to be brought to bear on the finding of obviousness, specifically rejecting the previous standard that “precise teachings directed to the specific subject matter of the challenged claim” are required. Kennedy expounds further:

“Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit…. As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

Kennedy hammers the new standard home with a clear rejection of the formalistic conceptions attaching to the previous “helpful insights” of the TSM test:

“Helpful insights … need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by 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 diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.”

What that new standard means is that many “combinatorial” patents which have been issued in the past 20 years are simply invalid. A good example here, in our opinion, is the Eolas embedding patent in the Microsoft-Eolas case, which in our opinion falls fully into the realm of obviousness as now redefined by the United States Supreme Court. To put it more specifically, Kennedy explains:

“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is 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.”

You could not describe the Eolas embedding patent better than that.

Kennedy writes also concerning the role in the finding of obviousness of a significant “need or problem known in the field of endeavor at the time of invention“:

“The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, 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 the elements in the manner claimed.”

Furthermore, writes Kennedy, what is “obvious to try” may also be obvious under patent law:

“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 technical 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.”

Lastly, the Supreme Court waters down the presumption that a patent issued by the USPTO is valid by suggesting that failures of disclosure may void that presumption:

“We need not reach the question whether the failure to disclose Asano during the prosecution of Engelgau voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption—that the PTO, in its expertise, has approved the claim—seems much diminished here.”

This is a great decision and much needed in patent law.
It gives attorneys much needed firepower to counter the patent trolls and we predict it will be a strong and major force in future patent litigation, for the benefit of the public good.

Hat tip to Philip Brooks’ Patent Infringement Updates
by way of Pepper Hamilton’s Intellectual Property Alert