On April 30, 2007, the United States Supreme Court issued a watershed decision, KSR v. Teleflex, significantly altering the standard for denying or overturning patent grants based on the “obviousness” of the claimed invention. The decision swept aside the rigid prior standard that required a patent examiner to find a “teaching, suggestion, motivation” in the subject area in order to reject or invalidate a patent claim, at least in the case of inventions consisting of a “combination” of prior technologies or elements (the “TSM test”). In its place, the Supreme Court suggested a broader and more flexible analysis that takes into consideration inferences and creative steps that a person of ordinary skill in the art would employ.
The patent at issue related to a mechanism that combined an electronic sensor with an adjustable automobile pedal in such a way that the position of the pedal is transmitted to a computer-controlled throttle in the vehicle’s engine. The District Court invalidated the patent on the grounds that it was obvious to combine the prior art electronic sensor with the prior art adjustable automobile pedal. The Court of Appeals for the Federal Circuit reversed the lower court because the court failed to specifically find that a person of ordinary skill in the art would have some knowledge or understanding that would motivate such person to employ that specific combination of elements. In doing so, the Federal Circuit was requiring a rigid application of its strict TSM test.
Reversing the Federal Circuit, the Supreme Court reiterated the need for caution in granting patents based upon a combination of elements found in the prior art, and unambiguously rejected the application of any rigid rule, including the TSM test, in determining whether an invention is obvious.
A generation of combination patents now exist that were issued under the TSM test. Thus, the sweeping rejection of the “rigid” application of the TSM test and its potential impact should be considered by patent holders, licensees and anyone potentially subject to a claim of infringement of a combination patent. With no rigid rule in place, the test for obviousness under the Supreme Court’s opinion is found by considering the variety of factors discussed in the opinion. For example, the Court confirmed its long-held position that a combination that merely unites old elements with no change in their functions is likely to be obvious when it does no more than yield predictable results. It also confirmed that an invention may be found to be obvious based on specific prior knowledge within the purview of persons of ordinary skill in the art and on inferences to be drawn, and creative steps taken, by such a person.
The Court invited consideration of whether “a technique has been used to improve one device,” because if it has, then “a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.” In other words, the improvement must be more than a predictable use of prior art elements, according to their established function to survive an obviousness challenge.
The Court repeatedly stressed the need to use common sense and common knowledge in evaluating whether a combination is obvious. The Court used the phrase “common sense” on four occasions and invited the Federal Circuit, in evaluating future cases, to be mindful of its application.
The Court’s opinion includes other suggestions for factors to consider. What exists now as a “test” for obviousness is merely a broad outline for evaluating obviousness. Over the next few years, the Federal Circuit no doubt will fine-tune the factors to be considered, and a more understandable and consistent test will develop. But for now, future obviousness evaluations must take into consideration the wide array of factors counseled by the Supreme Court and must avoid the “rigid” application of the TSM test.
The KSR ruling has immediate and sweeping implications for all industries. It has broad and immediate impact on pending patents, future patent applications, future licensing policies and strategies, and cases pending before district courts and the Federal Circuit. It likely will invite possible re-examination of existing patents and even renegotiation of existing patent licenses.