Patent Advisory Bulletin
Supreme Court Criticizes Rigid Application
of Obviousness Test
By Brian
J. Hurh
[May 2007]
On April 30, 2007, the United States Supreme Court, in a unanimous
opinion, expressly rejected a strict adherence to the “teaching,
suggestion, motivation ” test (“TSM Test”) for
obviousness endorsed by the Court of Appeals for the Federal Circuit,
in KSR Int’l Co. v. Teleflex Inc., 550 U.S. ___ (2007),
available
here. Although the Court did not necessarily reject the TSM
Test outright, it was highly critical of the Court of Appeals’
rigid and formulaic approach to determining the obviousness of an
invention, and in doing so, reaffirmed the principles set forth
in Graham v. John Deere Co. of Kansas City, 383 U.S. 1
(1966). The Court has thus expanded the grounds upon which claims
in pending and future patent applications, as well as patents currently
in force, may be found invalid for obviousness.
The test for obviousness is embodied in Section 103 of the Patent
Act (35 U.S.C. § 103), which states that “[a] patent
may not be obtained . . . 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.” In Graham,
the Court found that Section 103 permitted the consideration of
secondary factors in determining obviousness, including “commercial
success, long felt but unresolved needs, [and] failure of others.”
Graham, 383 U.S. at 17-18.
The TSM Test, in contrast, instructed that a patent claim would
be deemed obvious if “some motivation or suggestion to combine
the prior art teachings can be found in the prior art, the nature
of the problem, or the knowledge of a person having ordinary skill
in the art.” These parameters effectively required courts
and patent examiners to look only to the prior art for the requisite
teaching or suggestion that would motivate an inventor to solve
a specific problem at hand. Based on this narrow application of
the TSM Test, the Court of Appeals in KSR reversed the
decision of the District Court for the Eastern District of Michigan
(298 F. Supp. 2d 581) because, in the Court of Appeals’ view,
the District Court had not applied the TSM Test strictly enough.
Although the Court in KSR recognized that there was “no
necessary inconsistency between the idea underlying the TSM test
and the Graham analysis,” and acknowledged the need
for uniformity and consistency, it nonetheless rejected the Court
of Appeals’ strict reliance on the TSM Test, announcing that
“[a]pplication of the bar must not be confined within a test
or formulation too constrained to serve its purpose.” Instead,
the Court reiterated that the principles in Graham “reaffirmed
the ‘functional approach’ of Hotchkiss [v. Greenwood],”
and thus “set forth a broad inquiry and invited courts, where
appropriate, to look at any secondary considerations that would
prove instructive.”
Thus, in prosecuting patent applications or in examining or enforcing
issued patents, KSR establishes that it is now permissible
to look beyond the specific problem that the patentee is trying
to solve when determining the obviousness of the invention, as 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.” In addition, KSR rejects
the assumption that “a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art
designed to solve the same problem.” As the Court described,
“[c]ommon sense teaches, however, that familiar items may
have obvious uses beyond their primary purposes,” and “[a]
person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Further, KSR implies that an “obvious
to try” test can be grounds for finding an invention to be
obvious, in that “[w]here 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.”
It is not immediately clear how KSR will affect current
patents and pending applications, as the Court did not abolish the
TSM Test, and moreover, declined to elaborate on, among other things,
what a “person of ordinary creativity” is or how to
apply an “obvious to try” test. Thus, it remains to
be seen the extent to which the United States Patent and Trademark
Office, the Court of Appeals, and other federal courts, will interpret
Graham and its progeny, in light of KSR. What
is certain, however, is that the test for obviousness has been expanded
such that the threshold for patentability has been raised. Indeed,
as the Court noted in dicta, since the time that KSR
was initiated and decided, the Court of Appeals has already attempted,
perhaps in anticipation of the Court’s decision here, to mollify
the rigidness of the TSM Test in favor of a more flexible approach.
See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1367 (2006) (requiring
consideration of common knowledge and common sense), and Alza
Corp. v. Mylan Labs, Inc., 464 F.3d 1286, 1291 (2006) (allowing
motivation to be found implicitly in prior art). Nevertheless, KSR
affirmatively establishes that patent examiners and courts should
not restrict the question of obviousness within the rigid confines
of the TSM Test, but may return to the principles set forth in Graham.
For further information, please contact:
This advisory is a publication of the Life Sciences Group of Davis
Wright Tremaine LLP. Our purpose in publishing this advisory is
to inform our clients and friends of recent legal developments.
It is not intended, nor should it be used, as a substitute for specific
legal advice as legal counsel may be given only in response to inquiries
regarding particular situations. Attorney Advertising. Prior results
do not guarantee a similar outcome. Thank you.
Copyright © 2007, Davis
Wright Tremaine LLP.
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