A summary of some practical; considerations with respect to the Supreme Court decision of KSR International v. Teleflex Inc.

US Court Decision (3) A summary and some practical considerations on the Supreme Court decision of KSR International v. Teleflex Inc.

On April 30, 2007, the Supreme Court of the United States handed down its much anticipated decision on section 103 obviousness, i.e. KSR International v. Teleflex Inc., U.S. Supreme Court No. 04-1350 (April 30, 2007). The decision may be found at
https://www.supremecourt.gov/opinions/06pdf/04-1350.pdf

Graham factors continue to control the obviousness inquiry.

The SCt said that in an obviousness analysis the Graham “factors continue to define the inquiry that controls. If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under section103.”

TSM test provides helpful insight but applying it too rigidly is inconsistent with the expansive and flexible Graham test.

The SCt stated that the CAFC’s teaching, suggestion, motivation (TSM) test was applied too rigidly in the Teleflex case, such that it was inconsistent with section 103 and the SCt’s precedence. It is important to note, however, that the TSM test itself was not rejected or declared improper by the SCt: The TSM test provides “helpful insight.” “There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis.”

Look at design incentives, market forces, predictable variations, similarity in techniques, established functions, obvious solutions, etc.

The SCt then turned its attention to the question of obviousness of a claimed combination of elements known in the prior art. The SCt said that three of its earlier cases (Adams, Anderson’s-Black Rock, and Sakraida) provide underlying principles that are instructive in making such an obviousness determination. Those principles are:

１.When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, section103 likely bars its patentability.

２.For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

３.A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

４.One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.

SCt's test: whether there is an "apparent reason" to combine known elements.

The SCt said these principles may be more difficult to apply in other cases, for example, those in which the claimed subject matter may involve more than the simple substitution of one known element for another. The SCt explained that in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue a court will often have to look to:

１.interrelated teachings of multiple patents;
２.the effects of demands known to the design community or present in the marketplace; and
３.the background knowledge possessed by a person having ordinary skill in the art.

Explicit reasons must be provided, although inferences and a skilled artisan's creative steps may be considered.

The SCt said that in order to facilitate review of the “apparent reason to combine” analysis, the analysis “should be made explicit,” citing the CAFC’s In re Kahn (CAFC 2006) decision. But the SCt noted that a lower court “need not seek out precise teachings” directed to the challenged claim’s specific subject matter, “for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ.”

The CAFC's rigid application of the TSM test was flawed in four ways, including failing to give weight to an "obvious to try" analysis, and denying reliance on "common sense".

The SCt identified four flaws in the CAFC’s application of TSM test:

１.The CAFC erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.
２.The CAFC erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem. It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.
３.The CAFC erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try. When 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 in the art 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.
４.The CAFC drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. Rigid preventative rules (i.e. rigid application of the TSM test) that deny recourse to common sense are neither necessary under, nor consistent with, SCt case law.

Conclusion

The SCt reversed the CAFC’s decision, and made a legal determination that the claim at issue (claim 4) was invalid for obviousness.

Practical Considerations

The TSM test is still alive, but perhaps as only a vehicle to facilitate application of the Graham factors. The extent to which the TSM test will be applied or even maintained in the lower courts or at the USPTO will be determined by future case law and the USPTO. Pracititioners should keep abreast of how the CAFC applies the KSR decision.

Because the breadth of the obviousness inquiry, i.e. “apparent reasons” for combining known elements, is broader than a rigid application of the TSM test, application of KSR in the courts may result in more patents being declared invalid.

Similarly, patent applications are likely to see an increase in obviousness rejections in the USPTO because under KSR an examiner has more flexibility in making a 103 obviousness rejection than s/he did under a rigid TSM test. Moreover, before KSR, examiners were required to provide evidence of a motivation to combine prior art references. After KSR, examiners need merely provide “apparent reasons” to combine prior art elements.

Correspondingly, patent prosecutors will have to shift or perhaps expand their strategy from one of establishing a “lack of motivation to combine the prior art” to one of establishing a “lack of apparent reasons to combine the prior art.”

Since the obviousness inquiry will focus more closely on the Graham factors, which, again, are more expansive and flexible in their breadth than a rigid application of the TSM test, practitioners are more likely to rely on Rule 132 declarations in traversing obviousness rejections.