08 May High court sends message on patent obviousness
One of the primary burdens facing a patent applicant before the United States Patent and Trademark Office is the requirement that the claimed invention is not obvious under 35 U.S.C. § 103. Similarly, obviousness is a typical defense raised in patent infringement cases. Yet, overcoming obviousness objections, both in the PTO and in patent infringement lawsuits, was relatively routine. This changed last week when the United States Supreme Court issued its decision in KSR International v. Teleflex.
In reversing the Federal Circuit’s underlying decision, the Supreme Court rejected the Federal Circuit’s “teaching, suggestion, or motivation” (TSM) test. Under this test, obviousness was shown only where there was some motivation or suggestion to combine disclosures or teachings made within the prior art, or based upon the nature of the problem or the knowledge of one of the ordinary skills in the art.
The Supreme Court clarified that the TSM test was a “rigid approach” which conflicted with the “expansive and flexible approach” established by Supreme Court precedent. KSR signals a shift in patent law, the impact of which inevitably will weaken patents, and eases the burden of challenging a patent in litigation.
Background to disputed patent
The patent at issue in the KSR case related to adjustable gas pedals used in automobiles. The particular disputed claim – claim four of the patent – described a mechanism for combining an electronic sensor with an adjustable gas pedal. The patent was licensed to KSR, which sued Teleflex for adjustable gas pedals designed for GM trucks.
The disputed claim was initially rejected by the PTO because the prior art disclosed adjustable pedals as well as how to mount an electronic sensor onto the pedal’s support structure. Claim 4 was allowed because it included a limitation of a fixed pivot point. Notably, one prior art reference was not before the PTO, which disclosed an adjustable pedal with a fixed pivot point.
The district court found the patent obvious based upon the disclosures in the prior art. Relying upon its TSM test, the Federal Circuit reversed, finding that the lower court failed to strictly apply the TSM test. Specifically, the district court failed to make findings that one of ordinary skills in the art would have been motivated to attach an electronic sensor to an adjustable gas pedal’s support bracket.
Simply put, even though the elements set forth in claim 4 of the patent were disclosed in the prior art, the Federal Circuit held that was not enough to establish obviousness. There had to be a teaching, suggestion, or motivation that would compel one to combine the known elements and arrive at the claimed invention. Importantly, the Federal Circuit reasoned the district court erred because “unless the prior art references address[ed] the precise problem that the patentee was trying to solve, the problem would not motivate an inventor to look at those references.”
Supreme Court’s decision
The Supreme Court unanimously rejected the Federal Circuit’s TSM test, reasoning that the test conflicted with the “functional approach” and “broad inquiry” established in prior Supreme Court cases. The KSR Court emphasized that merely combining elements known in the art “is likely to be obvious when it does no more than yield predictable results.”
Neither the PTO nor a defendant facing a charge of patent infringement need find “specific teachings directed to the specific subject matter” of the disputed claim in order to find obviousness – rather, obviousness analysis must account for “inferences and creative steps that a person of ordinary skill in the art would employ.”
The Supreme Court’s problem with the TSM test was that it was too rigid as it emphasized finding a specific teaching, suggestion, or motivation within published articles and references. The TSM test failed to account for the “diversity of inventive pursuits,” and the fact that published discussions of the state of the art may not be available as market demand, rather than scientific literature, may drive design trends.
By merely combining known elements, a patent applicant was not truly innovating, and should not be entitled to the monopoly provided by a patent.
Finally, the Supreme Court also noted that the Federal Circuit erred in concluding that a patent claim could not be proved obvious simply by showing that the combination of elements was “obvious to try.” Thus, if combining known elements is obvious to try, it may lead to a conclusion of obviousness, depending on the needs and pressures of the market.
Impact of KSR decision
The Supreme Court’s rejection of the TSM test and “flexible approach” to obviousness certainly will weaken issued patents and make it more difficult for patent applicants to overcome obviousness rejections in the PTO. Notably, the Federal Circuit arguably saw the writing on the wall prior to the KSR decision, as two recent Federal Circuit decisions backed away from rigid application of the TSM test.
Nevertheless, the Supreme Court’s outright rejection of the TSM test and emphasis on a broader inquiry into obviousness certainly changes the landscape of patent law. Unfortunately, the Supreme Court did not provide specifics as to what its flexible approach actually requires. However, it is clear that proving obviousness has become easier under KSR.
For patent holders, KSR may require a re-evaluation of the strength and value of their patents. Patentees who are considering filing a lawsuit will want to conduct a thorough pre-filing obviousness analysis before asserting any patents.
For individuals or entities either facing a charge of patent infringement or trying to determine their freedom to operate in view of a competitor’s patents, KSR may warrant a reconsideration of the potential weaknesses of those patents. Certainly, KSR will embolden companies to raise obviousness challenges and vigorously defend against charges of patent infringement.
Additionally, companies may be more aggressive in considering the scope of their freedom to operate as they consider whether a competitor’s patent is invalid based upon the Supreme Court’s “flexible approach” to obviousness.
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