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U.S. Supreme Court Revisits Obviousness Test for Patents
On April 30, 2007, Justice Anthony Kennedy delivered the opinion for a unanimous U.S. Supreme Court in KSR International Co. v. Teleflex Inc. et al., in which the highest U.S. court reversed a decision of the Court of Appeals for the Federal Circuit. The case is about an alleged patent infringement by KSR of one of Teleflex’s patents, which discloses a position-adjustable pedal system used in cars. KSR countered that one of the claims of Teleflex’s patent was invalid under the Patent Act.
The central issue of the appeal is the application of the “obviousness” analysis as set out in Graham v. John Deere Co. of Kansas City, an earlier Supreme Court decision that has been followed by the lower courts when interpreting §103 of the Patent Act, which forbids the issuance of a patent when:
...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.In Graham, the Supreme Court set out an objective analysis for applying §103 of the Patent Act:
[T]he scope and content of the prior art are...determined; differences between the prior art and the claims at issue are...ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined.
Since Graham, the Court of Appeals for the Federal Circuit had developed in 1982 a “teaching, suggestion, or motivation” (TSM) test to complement the “obviousness” analysis of §103 of the Patent Act. Under the TSM test, a patent claim would be obvious only if “the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.” In short, an invention is obvious if a person of ordinary skill in a particular field would have thought to combine certain elements of previous inventions to solve a certain need or problem based on his review of existing teachings or suggestions (e.g. scientific literature, issued patents, etc.).
Justice Kennedy held that the Court of Appeals for the Federal Circuit had addressed the obviousness question in a manner inconsistent with §103 of the Patent Act and Graham. The TSM test, in the opinion of the highest court, is a “helpful insight”, but not a “mandatory formula”. While the TSM test per se is not inconsistent with the Graham analysis, it is a general principle and should not be applied as a rule, thus limiting the generality of the Graham analysis.
Justice Kennedy held that the Court of Appeals for the Federal Circuit had erred in its rigid application of the TSM test, because it placed undue emphasis on published articles and explicit content of issued patents in its examination of “teachings” and “suggestions”. In the words of Justice Kennedy:
[t]he diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way...[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.
The Supreme Court reversed the Court of Appeals for the Federal Circuit decision, and the case is remanded to the lower courts for further proceedings.
For a copy of the U.S. Supreme Court’s decision, visit:
http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf