The U.S. Supreme Court, in KSR Int’l Co. v. Teleflex Inc., recently addressed application of the Teaching-Suggestion-Motivation (TSM) test to determine obviousness; specifically when granting “combination patents”, i.e., patents based upon a combination of old elements found in the prior art. This case has generated extensive media attention, and although the holding was limited so as not to disturb decades of Federal Circuit precedent applying the TSM test, there is now added flexibility to the tests used for determining obviousness.
Brief History of Non-obviousness
The concept that a patent requires its subject matter to be non-obvious had its early underpinnings in the seminal case of Hotchkiss v. Green, which dates back to 1950. In Hotchkiss, the Supreme Court held that a method of manufacturing door knobs made of porcelain or clay utilized the same steps as the existing manufacturing method used for making knobs of wood and metal. The Court found that the “ingenuity and skill in applying the old method...were possessed by an ordinary mechanic” and did not rise to the required level of invention.
By 1950, the Supreme Court, in A & P v. Supermarket, found a patent invalid as obvious, holding that a combination of elements of a cash register at issue only united known elements with no change in the respective functions. The Court reasoned that “a patent for a combination which only unites old elements with no change in their respective functions” was not patentable. This ruling, which took a very anti-validity, pro-infringement view toward obviousness, was disparaged by the drafters of what became known as the Patent Act of 1952. Judge P. J. Federico, a principle drafter of the Act, aimed to codify non-obviousness as a third requirement of patentability in order to provide a more favorable attitude toward patents and hoped to overrule the strictness of the A & P decision and others like it. The non-obviousness requirement was codified in 35 U.S.C. § 103 and later confirmed by the Supreme Court in Graham v. John Deere in 1966. The Court in Graham held that a determination of non-obviousness under § 103 should include consideration of the scope and content of the prior art; the level of ordinary skill in the prior art; the differences between the claimed invention and the prior art; and objective evidence of nonobviousness. In addition, the Court outlined several examples of “objective evidence of nonobviousness” which included commercial success; long-felt but unsolved needs; and failure of others, also known in subsequent jurisprudence as the “Graham factors” or “secondary considerations.”
Over the last few decades and since the establishment of the Federal Circuit, the current formulation of the obviousness standard has included the disputed TSM test. According to the TSM test, a patent claim is prima facie obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.
What does the current ruling mean?
In KSR, the Supreme Court reversed the Federal Circuit’s recent application of the TSM test, holding a claim of the patent-in-suit invalid as obvious. In so ruling, the Court limited its holding so as not to generally disturb decades of Federal Circuit precedent applying the so-called TSM test. The Court expressly acknowledged that its decision:
. . . may describe an analysis more consistent with our earlier precedents and our decision here is a matter for the Court of Appeals to consider in its future cases. What we hold is that the fundamental misunderstandings identified above led the Court of Appeals in this case to apply a test inconsistent with our patent law decisions.
The Supreme Court went on to endorse explicitly a recent decision of the Federal Circuit, In re Kahn, in which it framed and applied the TSM test. Indeed, in KSR, the Court rejected the Federal Circuit’s “rigid approach” of applying the test solely to the four corners of the prior art reference. The Supreme Court did not, however, intend for KSR to alter the core analysis, including the application of the TSM test that underlies a determination of obviousness. For this reason, some feel the actual effect of KSR has been somewhat over-hyped.
Nonetheless, KSR will still likely have a noticeable effect in certain areas of legal practice. As a first example, the validity of a patent claiming a mere aggregation of prior art elements resulting in no change in the function of the elements that was originally allowed on the sole basis of the TSM test not being met may be questioned. This will likely be the case in the more predictable (e.g., mechanical) arts. On the other hand, in the less predictable arts such as pharmaceutical and biotech, it would be hard to imagine that KSR could have any effect whatsoever.
Similarly, there will likely be an effect in patent prosecution, particularly when arguing for allowance or appealing to the Board of Patent Appeals and interferences. In times past, the Board has demonstrated a willingness, particularly in the mechanical arts area, to apply the TSM test quite strictly, permitting very broad patents to issue. Accordingly, it seems that the KSR decision could help prevent broad combination patents from issuing at the Board level. In contrast, based on anecdotal evidence of practitioners who have attempted to present the TSM argument to Examiners in patent prosecution, it appears that the Patent Office has been giving little weight to KSR case.