On April 30, 2007 the Supreme Court rendered its decision in KSR International Co. v. Teleflex, Inc. KSR is expected to make obviousness to assert and more difficult to overcome. Prior to KSR, the Federal Circuit had applied a “teaching, suggestion or motivation (TSM) test” under which an invention could not be held obvious unless the prior art references addressed the precise problem that the patentee was trying to solve.2 In KSR, the Supreme Court rejected the rigidity of the Federal Circuit’s test in favor of an “expansive and flexible approach,” consistent with the Court’s precedent, wherein the analysis is not limited to the particular problem the patentee is trying to solve.3 Rather, when analyzing a patent claim for obviousness courts (and patent examiners) may look not only to the “interrelated teaching of multiple patents” but also to the external effects of the design community and the marketplace, and the background knowledge possessed by a person of ordinary skill in the art, as well as “inferences and creative steps that a person of ordinary skill in the art would employ.”4 The Court stated that hindsight reasoning is still impermissible, but did not elaborate on the difference between hindsight reasoning and “inferences and creative steps that a person of ordinary skill in the art would employ.”5

On May 9, 2007 the Federal Circuit issued a decision in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc.6 , its first ruling on obviousness since KSR. Leapfrog dates to 2003, when Leapfrog sued Fisher-Price alleging that Fisher-Price’s PowerTouch®, an interactive children’s book teaching children to learn phonetically, infringed claim 25 of Leapfrog’s U.S. Pat. No. 5,813,861. The district court held claim 25 to be invalid for obviousness in view of a combination of two prior art references and the knowledge of one of ordinary skill in the art. Guided by the KSR ruling, the Federal Circuit affirmed relying on the “common sense of those skilled in the art” to combine the two references, and then adding a missing electronic component shown to be well known in the art at the time of the invention.7

Leapfrog’s claimed interactive children’s book contained a reader that recognized letters on a card placed in the device and communicated the word to a processor and associate memory. Upon selection of a letter depicted in a word on the card, the device communicated to the processor, which caused the letter to be recited phonetically. The device could recite the word spelled phonetically by the letters or recite the word.8

The first reference cited by the Court, Bevan (US Pat. No. 3,748,748), was directed to an electro-mechanical learning device where depressing a uniquely shaped puzzle piece caused an electric motor to actuate and move a phonographic needle to a specific place on a record to play the sound corresponding to a letter. The second reference (a non-patent reference) cited was Texas Instruments’ Super Speak & Read® (SSR) learning device with a memory and processor that produced the sound of a word’s first letter and the complete word instead of each individual letter in a word, as required by the claim. The SSR device determined the identity of the book and page from the position of triangles and stars on a book’s page depressed by the user. Neither of the prior art devices contained a reader, which identified the card placed in the Leapfrog device as set forth in the claimed invention.9

The Court found that Bevan taught the same method of operation and achieved the same goal as Leapfrog’s claim 25 of allowing a child to learn to read phonetically by associating a letter with its sound in a word, while SSR provided a “roadmap” for one of ordinary skill in the art to produce an electronics-based device for phonetic learning methods.10 Thus, the Federal Circuit determined that one of ordinary skill in the art would have found it obvious to combine the mechanical device of Bevan with SSR, a similar device with a processor and memory, to update a children’s learning toy with modern electronic components in order to gain “commonly understood benefits such as decreased size, increased reliability, simplified operation, and reduced cost.” 11 This combination still lacked the reader of claim 25, but the Court found, based on the testimony of Fisher-Price’s technical expert, that readers were well known in the art at the time of Leapfrog’s invention. It further noted that applying modern electronics to older mechanical devices had been common place in recent years. 12 The Court stated that the reasons for adding a reader to the combined references were the same as those for using readers in other children’s toys, namely, it added the benefit of simplified use and increased marketability.13

In reaching its obviousness determination, the Court noted that Leapfrog did not present any evidence that incorporating the reader into a child’s learning device was “uniquely challenging or difficult” for one of ordinary skill in the art, or that such an incorporation represented an unobvious step over the prior art in either the field of readers or the narrower field of electronic children’s toys.14 Further, the Court addressed secondary considerations (e.g., commercial success, praise and long-felt need) and stated that although Leapfrog had presented substantial secondary consideration evidence, it was inadequate to overcome the strength of the prima facie showing of obviousness.

Other recent court decisions give further insight into how KSR is changing the obviousness inquiry and indicate that a patentee should adopt an assertive approach by explaining why prior art references teach away from the proposed combination and that the patented invention yields unexpected results or secondary consideration evidence, such as long-felt need, copying or the failure of others to arrive at the solution discovered by the inventor. Examples include Tech. Licensing Corp. v. Gennum Corp.15 (KSR has generally lowered the bar for attempting to establish obviousness); Sundance, Inc. v. DE Monte Fabricating, Ltd.16 (reconsideration in view of KSR denied because there was nothing in the record to conclude that one skilled in the art would combine the prior art references to arrive at the claimed invention, plus there was a long-felt need for the invention and defendants copied the invention; jury’s opinion that the invention was obvious was not conclusive); Eaton Corp. v. ZF Meritor LLC17 (claims obvious in view of detailed expert opinion that comported with well-established obviousness principles under Graham v. John Deere Co.18 and KSR, and explained why there was motivation to combine); Bradford Co. v. Afco Mfg.19 (court agreed with patentee’s expert that the references taught away from the proposed combination because it would defeat the purpose of each of the references (citing MPEP §2143); burden on challenger to show prima facie obviousness and the burden then shifts to the patentee to show secondary consideration evidence); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.20 (a reason to combine may come from the knowledge of one skilled in the art, the nature of the problem to be solved or common knowledge and common sense); Omegaflex, Inc. v. Parker-Hannifin Corp.21 (The court improperly gave no probative weight to expert opinion that a skilled artisan would have recognized the importance of proper alignment and thus would have thought of adding a locating sleeve, which was well known in the field generally); Technology Licensing Corp. v. Gennum Corp.22 (KSR may have generally lowered the bar for establishing obviousness, but reaffirmed that the Graham factors control the inquiry).

How will KSR and its progeny affect application drafting and prosecution strategy? As stated above, it may no longer be enough to argue that references contain no express teaching to combine or that the proposed combination does not include each and every limitation of the proposed invention. Until now, these have been staple arguments to overcome allegations of obviousness. KSR and Leapfrog confirm that the skill of a person in the art could be used to supply a motivation or limitation not expressly taught by the prior art references. A more assertive approach may be warranted wherein it is shown that one or more references “teach away” from the proposed combination. The “teaching away” could be express or merely implied if the proposed combination would defeat a purpose of one of the references to be combined. Unexpected results also weigh in favor of nonobviousness since they tend to show the improvement was not a “predictable” use of prior elements. Finally, secondary considerations of non-obviousness, such as commercial success, long-felt need, the failure of others to arrive at the claimed invention, industry praise or copying, may be used.23

Also important would be an explanation of why inclusion of a new element was “uniquely challenging or difficult” for one of ordinary skill in the art. Drafting lawyers and inventors should, therefore, carefully consider the inventive elements that were “uniquely challenging or difficult” in reaching their invention and emphasize these in the application. Any result that is unexpected or unusually good will now have added importance when drafting a patent specification or responding to an obviousness rejection.