Initial thoughts on KSR v. TeleflexApril 30, 2007

After an initial reading of the opinion in KSR Int'l Co. v. Teleflex Inc., several issues jump out.

There are four (4) reasons why the Federal Circuit's TSM test is no longer the exclusive test for obviousness

While the Court noted that the Federal Circuit's "teaching-suggestion-motivation" (TSM) test was not necessarily inconsistent with cases such as Graham, the Court provided four different reasons why the TSM test cannot be the exclusive test for obviousness:

First, when assessing obviousness, courts and patent examiners are not limited to the problem facing the inventor, because

the problem motivating the patentee may be only one of many addressed by the patent's subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

This will likely expand the scope of what is considered "analogous prior art."

Second, the Federal Circuit's analysis was erroneously limited to prior art designed to solve the same problem. Once again, this will likely expand the scope of analogous prior art available for an obviousness finding or rejection.

Third, the Court noted that in some cases, if a combination is "obvious to try," that may be sufficient to show the invention is obvious:

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 his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.

It will be interesting to see how the USPTO treats this potential new ground of rejection.

Finally, the TSM test could not be justified in the interest of avoiding hindsight. While the court acknowledged the dangers of hindsight, it held that "Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it." Interestingly, the Court noted that several Federal Circuit cases decided after the Court granted certiorari in KSR indicated that the TSM test requires examination of common sense factors. With regard to these cases, the Supreme Court stated:

Those decisions, of course, are not now before us and do not correct the errors of law made by the Court of Appeals in this case. The extent to which they 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.

So, it appears that the Federal Circuit may already be on the right track, and the newer lines of cases may just need some modification to place the TSM test in non-mandatory terms.

Instead of a teaching, suggestion, or motivation, it appears the Supreme Court has framed the question as one of whether there would have been an "apparent reason" to combine the elements in the manner claimed. This does not, however, require "precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."

More thoughts on additional issues after the jump.

"Combination" patents not automatically obvious, but may require additional showing

The Court noted that "a patent composed of several elements is not proved obvious merely be demonstrating that each of its elements was, independently, known in the prior art," however "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." These types of inventions should be looked at "with care," but there may be a reason one of ordinary skill would not have combined the elements in the manner claimed. The Court also recounted its obviousness cases since Graham, and finding that in those cases, when the patent claiming a combination of old elements was held valid (such as in United States v. Adams), there was some evidence of nonobviousness, such as teaching away from the combination in the prior art. In Andersons-Black Rock, Inc. v. Pavement Salvage Co. and Sakrida v. AG Pro, Inc., there was no such contrary evidence, and the Court found the inventions obvious in those cases, because the combination did not produce any results other than those that were expected based on the individual components combined. Thus, it appears that for an invention that claims a combination of old elements and those elements perform their known function, there may now be a de facto presumption of obviousness which must be overcome by some additional showing, such as prior art teaching away from the combination or secondary indicia of nonobviousness. As summarized by the Court:

When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson's-Black Rock are illustrative—court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

In order to make the obviousness determination:

Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.

The good news is that the Court noted that this analysis "should be made explicit." This may prevent examiners from being able to simply state that one of ordinary skill in the art would have a reason to make the claimed combination without further explanation.

Special rules for software inventions?

The Court also recognized that in certain fields, what is an obvious variation of preexisting technology may not be recorded in the same way as others. Specifically, the court noted that "[i]n many fields, it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends." This statement describes the typical situation in the software industry, as there is little scientific literature in that industry, but instead products are most typically released in response to consumer demand. As a result, it appears that the Court may allow a finding of obviousness for a software patent based on the theory that there was market demand for a particular product.

Increase in summary judgments of obviousness

Near the end of the opinion, the Court indicated that summary judgment of obviousness may be appropriate in many cases. Specifically, the Court held that:

Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.

As a result, it appears that when there is no dispute regarding any of the Graham factors, obviousness is ripe for summary judgment. So, the lesson appears to be if you don't want summary judgment on the obviousness issue (more likely as a plaintiff), be sure to dispute one of the Graham factors.

As the case is analyzed by the courts and the USPTO, additional details will emerge regarding how this new "apparent reason" test will be applied. However, it appears that today it became easier to challenge or reject patents that are only combinations of elements that are present in the prior art.

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