Supreme Court Criticizes Rigid Application of Obviousness Test
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.