Supreme Court questions Federal Circuit’s obviousness test: is it “gobbledygook”?November 29, 2006

In oral argument before the Supreme Court in KSR International Co. v. Teleflex, Inc., several Justices appeared uncomfortable with the Federal Circuit's "teaching-suggestion-motivation" (TSM) test for obviousness. Justice Scalia, in his typical direct style, characterized the TSM test at various times as "gobbledygook," "irrational," and "meaningless." Other Justices, including Chief Justice Roberts and Justice Breyer in particular, also seriously questioned the TSM test, particularly as the exclusive way to show an invention is obvious.Other times, however, the Justices expressed reluctance to upset the TSM test, as it has been used to determine the patentability of all patent applications filed for more than twenty years. For example, Justice Souter asked KSR's counsel, "If we see it your way, are there going to be 100,000 cases filed tomorrow morning?"At this point, the most likely outcome appears to be that the TSM test will be retained, but will not be the exclusive means to show an invention to be obvious. The real question then becomes how else obviousness can be proven, and what guidance (if any) the Court will provide on the issue.A decision is not expected until at least 2007.

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