In KSR Int’l v. Teleflex, the Supreme Court unanimously held that rigid application of a “teaching, suggestion, or motivation” (TSM) test violates the flexible approach to obviousness set forth by the Court in Graham v. John Deere and subsequent cases. The Court emphasized that the objective analysis for determining obviousness set forth in Graham (including, where appropriate, consideration of the secondary factors enumerated therein) remains the defining inquiry for applying the statutory language of 35 U.S.C. § 103. The key focus must be on determining the scope and content of the prior art and differences between the prior art and the claims at issue, in light of the level of ordinary skill in the art. In confirming its holding that the patent claim at issue was obvious, the Court noted that there was no showing of any of the secondary factors identified in Graham.
In KSR, the Supreme Court addressed the obviousness of a patent claim directed to a mechanism for combining an electronic sensor with an adjustable automobile pedal so that the pedal’s position can be transmitted to a computer that controls the throttle in the vehicle’s engine. The claim specifically described attaching the electronic sensor to the pedal such that the sensor remains in a fixed position while the driver adjusts the pedal. One prior art reference directed to non-computer controlled throttles disclosed all the elements of the claimed invention except the use of a sensor to detect the pedal’s position and transmit it to the computer controlling the throttle. This additional aspect was taught by other, more recent, prior art references directed to computer controlled throttles.
The Supreme Court held that the trial court correctly concluded that the combined teachings of the prior art rendered the patent claim at issue obvious. The Court rejected the Federal Circuit’s conclusions, in reversing the trial court’s finding of obviousness, that 1) the TSM test is not met where the prior art did not address the precise problem that the patentee was trying to solve and 2) the fact that it might have been obvious to try the combination disclosed by the prior art is irrelevant because obvious to try does not constitute obviousness. In addressing the errors committed by the Federal Circuit in rigidly applying the TSM test, the Court stated that while the TSM test is a useful tool, it cannot be applied in a manner inconsistent with Graham and subsequent case law applying the teachings of Graham.