In KSR Int’l Co. v. Teleflex Inc., No. 04-1350 (Apr. 30, 2007), the U.S. Supreme Court recently mandated an “expansive and flexible approach” to determining whether a patent is obvious under Section 103 of the Patent Act. Ruling unanimously, the Court rejected the Federal Circuit’s rigid application of the so-called “teaching, suggestion, or motivation” (“TSM”) test for determining obviousness. As applied, the TSM test is not flexible enough to comport with the statute or with Supreme Court precedent, which are aimed to prevent the patenting of “ordinary innovation.” The Supreme Court faulted the Federal Circuit’s decisions on several issues underlying the TSM test, and for each one indicated that a more flexible approach is appropriate.
The technology at issue in KSR was a computer-controlled adjustable automobile accelerator system with an electronic sensor on the accelerator pedal support. KSR alleged that the asserted claim was invalid because the subject matter was obvious under Section 103. The district court found that the claim was obvious in light of prior art references and granted summary judgment in KSR’s favor. The Federal Circuit reversed, ruling that the district court had, among other errors, applied an incomplete TSM test because it failed to make findings as to the specific motivation for one of skill in the art to combine the prior art references in the manner claimed. The Supreme Court reversed the Federal Circuit’s holding, agreeing with the district court that the asserted claim was obvious in light of the prior art. The Supreme Court found several errors in the Federal Circuit’s analysis of obviousness, and in each instance deemed that a more flexible approach is required.
First, the Supreme Court found fault with the Federal Circuit’s rule that the motivation to combine prior art references can arise only from the particular problem the patentee was trying to solve. Rather than focusing on the motivation of the patentee, the Court explained, the focus should be on the motivation of a person of ordinary skill generally. “[A]ny need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 16. Similarly, the Supreme Court rejected the Federal Circuit’s assumption that, in trying to solve a given problem, a person of ordinary skill in the art would look only to references aimed at solving the same problem. This “makes little sense” because “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 17. It may be obvious to a person of ordinary skill that an element in the prior art has uses beyond its primary purpose, and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 16.
Second, the Supreme Court criticized the Federal Circuit’s rule that proof that a given combination of prior art elements was “obvious to try” is not relevant to obviousness for invalidity purposes. The Supreme Court stated that the fact that a combination is “obvious to try” may itself show obviousness. “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 her or her technical grasp.” Id. at 17. In such instances, combining the elements of the prior art “is likely the product not of innovation but of ordinary skill and common sense.” Id.
Third, the Supreme Court faulted the Federal Circuit’s approach to preventing hindsight bias as being overly strict and impractical. While the Court agreed that a fact finder should be cautious not to let hindsight influence an obviousness determination, it observed that the Federal Circuit’s application of this rule has become so stringent as to prevent the use of common sense.
Fourth, the Supreme Court clarified the perspective of the inquiry made in an obviousness determination. The Court characterized the Federal Circuit’s inquiry as whether a person of ordinary skill in the art, starting from a blank slate, would have found it obvious to combine the prior art elements. It stated that the correct inquiry is whether a person of ordinary skill in the art, starting from the pre-existing technology and “facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit” to upgrading by using an element in the prior art. See id. at 20.
Finally, the Supreme Court stated that the district court could grant summary judgment on obviousness despite competing expert testimony on the issue. At the district court level, KSR submitted one expert declaration supporting its allegation of obviousness, and Teleflex submitted two expert declarations in rebuttal. The Federal Circuit reasoned that, because a court cannot judge credibility at the summary judgment stage, the district court erred in crediting KSR’s expert opinion over the opinions of Teleflex’s experts. Also, because the court could not choose between the expert opinions, a dispute over an issue of material fact existed that made summary judgment on the issue inappropriate. The Supreme Court disagreed, explaining that summary judgment may be appropriate despite an expert opinion of nonobviousness when there is no material dispute regarding the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art.
Obviousness must now be analyzed in light of the Supreme Court’s guidance on the various issues, along with the overall policy that the purpose of the nonobviousness requirement is to exclude from patentability those inventions that are merely “the results of ordinary innovation.” Id. at 24. The implementation and ultimate impact of KSR remain to be seen.