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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 Patents 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.
Copyright © 2007,
Davis Wright Tremaine LLP.
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