Antacids & Graham Crackers — The Supreme Court Decides KSR and the Future of Obviousness
Well..it’s here. Earlier this morning the Supreme Court released its opinion in the case of KSR International Co. v. Teleflex Inc. et al. (550 U. S. ___, April 30, 2007).
While others will likely do more detailed analysis (17038299976&cof=FORID%3A1%3BAH%3Aleft%3BS%3Ahttp%3A%2F%2Fwww.fedcirc.us%3BCX%3ALeading%2520Patent%2520Commentary%2520-%2520a%2520custom%2520search%2520engine%2520provided%2520by%2520FedCirc%252Eus%3BL%3Ahttp%3A%2F%2Fwww.fedcirc.us%2Fimages%2FM_images%2Ffedcircus_logo.gif%3BLH%3A100%3BLP%3A1%3BVLC%3A%23663399%3BDIV%3A%2342a009%3B&q=KSR+2007&btnG=Search&cx=002608373138585352143%3Ai5jxnd7h2eo”>click here to easily review what others are saying), here are my quick thoughts:
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Supreme Court “set out a framework for applying the statutory language of §103.” In Graham, the relevant factors were (1) the scope and content of prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the pertinent art.
Recognizing that the Graham decision needed a little interpretation as its teachings were applied to later cases, the Court of Appeals for the Federal Circuit interpreted Graham over time, formulating what is known as the “teaching, suggestion, or motivation” test (TSM). It is this TSM test that practitioners and patentees have been relying on for years.
In the case on appeal (KSR), the Supreme Court overruled the Federal Circuit’s non-obviousness finding*, noting that while “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis,” but “..when a court transforms the general principle into a rigid rule that limits the obviousness inquiry…it errs.”
[*note:Â see the Mr. Ebert's comment below for clarification.]
Specifically, the Court didn’t like:
1. How the CAFC held “that courts and patent examiners should look only to the problem the patentee was trying to solve.” The Court pointed out that “[t]he 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.”
2. That the CAFC assumed “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.” The Court pointed out that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”
3. That the CAFC erroneously concluded “that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try.’”
4. How the CAFC “drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight basis.”
Practitioners/patentees who have relied on arguments like these as the heart of their non-obviousness showing are likely to be severely impacted. At least the Court reinforced the fact that obviousness analysis needs to be explicit, reminding us that “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning within some rational underpinnings to support the legal conclusion of obviousness.” (quoting In re Kahn, 441 F. 3d. 977, 988 (CA Fed. 2006)).
Again, this is just my quick summary. More detailed analysis and other thoughts 17038299976&cof=FORID%3A1%3BAH%3Aleft%3BS%3Ahttp%3A%2F%2Fwww.fedcirc.us%3BCX%3ALeading%2520Patent%2520Commentary%2520-%2520a%2520custom%2520search%2520engine%2520provided%2520by%2520FedCirc%252Eus%3BL%3Ahttp%3A%2F%2Fwww.fedcirc.us%2Fimages%2FM_images%2Ffedcircus_logo.gif%3BLH%3A100%3BLP%3A1%3BVLC%3A%23663399%3BDIV%3A%2342a009%3B&q=KSR+2007&btnG=Search&cx=002608373138585352143%3Ai5jxnd7h2eo”>can be found here.
