On April 30, 2007, the United States Supreme Court issued its unanimous opinion in the case KSR International Co. v. Teleflex Inc. While the Supreme Court recognized that the Federal Circuit's "teaching, suggestion, motivation" test ("TSM Test") for evaluating obviousness under 35 U.S.C. § 103 may be useful in some circumstances, the Supreme Court rejected the rigid manner in which the Federal Circuit had applied the TSM test in favor of what it called a broader, more flexible common sense approach to obviousness. Applying this broader, more flexible approach, the Supreme Court reinstated the district court decision granting summary judgment that a patent claim directed to the location of a sensor on an adjustable vehicle pedal assembly was obvious. The decision will lead to uncertainty for parties seeking to obtain or defend patents because it opens the door for courts to consider a variety of different types of evidence outside of traditional publications and patents.
The Supreme Court explained that the Court's decision in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), required a broad and flexible inquiry (including, where appropriate an examination of "secondary considerations"). Citing its three decisions following Graham1, the Court explained that a combination of elements known in the art that operates in a predictable manner is not patentable.
Although the Supreme Court acknowledged that, particularly with complex technologies, it may be useful to identify a reason that a person of ordinary skill in the art would be prompted to make a particular combination, the Federal Circuit's application of the TSM Test was too rigid because it overemphasized published articles and the contents of patents. Such a rigid application of the TSM Test improperly limits the analysis a court should employ to determine whether an invention is obvious. Rather, a court must be free to consider inferences and creative steps a person of ordinary skill in the art might employ regardless of whether a motivation is specifically provided in published form. Thus, while a court may use the TSM Test to assist or guide the analysis under Graham, a court must not apply the test so rigidly that it prevents consideration of a reason for making a combination that is not found in a published reference.
The Court also held that Federal Circuit's exclusive focus on the problem the inventor was trying to solve was improper. Rather, the focus of the inquiry must be whether there was any problem known at the time of the invention for which there was an obvious solution that also falls within the scope of the claim, regardless of whether this was the problem the inventor was trying to solve. The Court further explained that the Federal Circuit erred when it limited the use of a disclosure in a reference to the problem the author of the reference was trying to solve. In other words, if a reference disclosed an element to solve a particular problem, but the disclosed information also solved a separate, but unmentioned problem, it would be improper not to consider whether those of ordinary skill in the art would recognize and use the disclosure to address the separate problem.
The Supreme Court also addressed the Federal Circuit's rule that a showing that an invention was "obvious to try" does not show the invention was obvious. Specifically, the Court observed that if "there are a finite number of identified, predictable solutions," common sense dictates that persons of ordinary skill in the art would pursue those solutions. Thus, according to the Supreme Court, the fact that something is obvious to try might, in some instances, show that the invention was obvious.