Today, the Supreme Court issued its much-anticipated decision in KSR, holding that the Federal Circuit’s teaching-suggestion-motivation (“TSM”) test was applied too restrictively, resulting in an approach to evaluating obviousness that did not embrace the expansive and flexible approaches established by the Supreme Court in Graham or Adams. The decision will be praised by academics and many in the computer and software industries who have criticized the obviousness standard for patentability as too low.
The Supreme Court made clear that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” citing its decisions in Adams, Anderson’s Black Rock, and Sakraida. In reaching its decision, the court cited four particular errors of the Federal Circuit in applying the TSM test to Teleflex’s ‘976 patent.
First, the Federal Circuit erred in narrowly focusing on the particular motivation of the patent inventors looking to solve a particular problem, rather than more broadly on the recognition of a known problem for which there was an obvious solution encompassed by the patent’s claims. The Court made clear that any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.
Second, it was error to assume that a person of ordinary skill attempting to solve a problem would be led only to those elements of prior art designed to solve the same problem. According to the Court, “[c]ommon sense teaches, [ ] that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”
Third, it was error to conclude that a patent claim cannot be proven 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 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 of ordinary skill and common sense. In that instance, the fact that a combination was obvious to try might show that it was legally obvious under §103.
Finally, the need to protect against hindsight bias and ex post reasoning can not operate to deprive a factfinder of recourse to common sense. Although more recent Federal Circuit decisions have acknowledged the availability of common knowledge and common sense in the TSM calculus, the approach used by the Federal Circuit in this case was too restrictive and thus inconsistent with Supreme Court precedent.
In its decision today, the Court said nothing of a “synergy” requirement as replacement for the TSM test, a concern of many amici who argued that the TSM test was both workable and consistent with Graham. Would-be patentees confronted with a possible synergy hurdle have dodged a bullet. Others worried about whether a test substantively different from TSM would be adopted can breathe a sigh of relief, for the Court announced no new tests for determining whether a patent claim would have been obvious in view of prior art teachings. Rather, the Court set forth a standard that asks “whether the improvement is more than the predictable use of prior art elements according to their established functions.” The Court emphasized its own precedent whose flexibility permits the use of common sense and general knowledge, the consideration of teachings beyond the particular field of the inventor’s endeavor in developing the claimed invention, and the uses of familiar items beyond their primary purposes.
Going forward, the obviousness requirement under Section 103 will pose a greater obstacle to patentability than before today’s KSR v. Teleflex decision. But that trend has already begun by the Federal Circuit in its 2006 decisions in Dystar, Khan and Alza. The standards of patentability have been raised, and the days of overcoming a claim of obviousness based on a strict application of the TSM test are long gone.