May 2, 2007
KSR International Co. v. Teleflex Inc. - The Supreme Court Rejects
the Federal Circuit’s Test for Obviousness
In a major new patent law decision, on April 30, 2007, the Supreme Court unanimously rejected the
Federal Circuit’s rigid application of its “teaching-suggestion-motivation” test (TSM test) for obviousness
challenges to patent validity, holding that it is contrary to the patent statute and Supreme Court
precedent. KSR International Co. v. Teleflex Inc., No. 04-1350, slip op. (April 30, 2007). The Supreme
Court reversed the Federal Circuit’s decision in Teleflex, Inc. v. KSR Int’l. Co., No. 04-1152, 2005 WL
23377 (Fed. Cir. Jan. 6, 2005), a case about an adjustable gas pedal system for automobiles. The
Supreme Court’s holding could have far reaching effects, both for litigation and patent prosecution
before the United States Patent and Trademark Office (PTO), in that it may prove to be easier to show
that an invention is not patentable.
Under Section 103 of the Patent Act, a patent will not be issued if “the differences between the subject
matter sought to be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” More than 40 years ago, in Graham v. John Deere Co., 383 U.S. 1
(1966), the Supreme Court set out the framework for determining whether a claimed invention is
obvious under the statute, directing courts to examine: (1) the scope and content of the prior art; (2) the
differences between the prior art and the patent claims; (3) the level of ordinary skill in the pertinent art;
and (4) any objective indications of nonobviousness, such as the commercial success of the claimed
invention.
In the early 1980s, the Federal Circuit developed the TSM test to clarify the obviousness doctrine.
Under the TSM test, even if all the elements of a claimed invention existed in the prior art, the
challenger to a patent’s validity needed to show an explicit or implicit “teaching, suggestion, or
motivation” that would lead a person of ordinary skill in the art to combine the prior art in the manner
claimed by the patent. The Federal Circuit developed the test to combat the “hindsight bias.” That is,
many inventions seem obvious after the fact, especially when many patents are challenged years after
the patents were issued. Critics of the TSM test contended that it had become increasingly difficult to
demonstrate the invalidity of issued patents, even for those inventions considered to be simple
combinations of known technology.
In its decision, the Supreme Court reaffirmed that the Graham factors define the inquiry that controls a
determination of obviousness under Section 103. The Court noted that in its cases dealing with the
question of obviousness, it has “set forth an expansive and flexible approach.” The Court explained
that “the obviousness analysis cannot be confined by a formalistic conception.”
In the decision, the Supreme Court urged a “common sense” approach to the analysis and directed
lower courts to look to the predictability of the art, recognition of a benefit by one skilled in the art, and
the skill involved in implementing the claimed invention. “If a person of ordinary skill in the art can
implement a predictable variation, and would see the benefit of doing so, §103 likely bars its
patentability.”
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The Supreme Court noted that “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.” For this
reason, “if 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.” Pointing to its previous decisions in Anderson’sBlack Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969) and Sakraida v. AG Pro, Inc., 425 U.S.
273 (1976), the Court held that “a court must ask whether the improvement is more than the predictable
use of prior art elements according to their established functions.” The Court further explained that “[i]t
is common sense that familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a
puzzle.”
However, the Supreme Court recognized that following these principles may be more difficult to apply
with other fact patterns “because the claimed subject matter may involve more than the simple
substitution of one known element for another or the mere application of a known technique to a piece
of prior art ready for the improvement.” In apparent recognition of the problem that the Federal Circuit
had attempted to address with its TSM test, the Supreme Court explained that “[o]ften, 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.” To facilitate review
however, lower courts should make this analysis explicit, although they “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for a court may take account
of the inferences and creative steps that a person of ordinary skill in the art would employ.”
The Supreme Court’s KSR decision is likely to have a significant impact on patent holders and patent
challengers. It should make it much easier for the PTO to reject proposed patent claims during
prosecution. It could fuel an increase in reexamination proceedings filed by competitors. The decision
should also make it much easier for competitors in a patent infringement litigation to challenge a
patent’s validity, at least where the patented technology is a combination of elements that were known
in the prior art.
After the Supreme Court’s decision, alleged infringers should also have an easier time obtaining
summary judgment that a patented invention is obvious, addressing one of the criticisms of the TSM
test. The Supreme Court explained that the ultimate judgment of obviousness is a legal determination:
In considering summary judgment [of obviousness] the district court can and should take
into account expert testimony, which may resolve or keep open certain questions of fact.
That is not the end of the issue, however. The ultimate question of obviousness is a
legal determination. 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.
While the Supreme Court’s rejection of the Federal Circuit’s test for obviousness appears to have made
the test for obvious less stringent, the decision does not put every issued patent in jeopardy of being
invalidated under Section 103 and the basic notion of obviousness has not significantly changed.
However, as most patents are combinations of known technology, the focus of an obviousness analysis
is likely to be on whether the patented invention is “more than the predictable use of prior art elements
according to their established functions” and whether “a person of ordinary skill in the art can implement
a predictable variation, and would see the benefit of doing so.”
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If you have any questions concerning the above, please contact Alan L. Barry (312-807-4438) or Michael J. Abernathy (312807-4257) in Bell, Boyd & Lloyd LLP’s Intellectual Property Department.
This publication has been prepared by the Intellectual Property Department of Bell, Boyd & Lloyd for clients and friends of the
firm and is for information only. It is not a substitute for legal advice or individual analysis of a particular legal matter. Readers
should not act without seeking professional legal counsel. Transmission and receipt of this publication does not create an
attorney-client relationship.
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