KSR v. Teleflex Recap: Judge Rader Lists Potential Outcomes

At a recent IP seminar, Judge Rader gave a speech covering the history and application of nonobviousness and the TSM test, and continued to challenge the perception that TSM is responsible for "gutting" obviousness (he prefaced his speech by stating that "much of what you may hear may be gobbledygook”). In the speech, Rader gave his thoughts on potential outcomes for the KSR v. Teleflex decision:

Scenario #1: Revive “synergism” test, where a combination of elements must result in an effect that is greater than the sum of the separate parts (Anderson’s-Black Rock, Inc., v. Pavement Salvage Co., 396 U.S. 57, 61 (1969) (holding patent invalid because ‘‘[n]o such synergistic result is argued here’’); Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (holding patent invalid because it was a mere combination of old elements and had no ‘‘synergistic effect’’).

Scenario #2: Create new test, such as the “extraordinary” contribution to the arts contained in the Solicitor General brief ("This Court should restore the proper content of the nonobviousness analysis by refocusing the inquiry on the key question that the Graham framework addresses: whether the claimed invention manifests the extraordinary level of innovation, beyond the capabilities of a person having ordinary skill in the art, that warrants the award of a patent.")

Scenario #3: Reject TSM, but leave proper substitute to Federal Circuit

Scenario #4: Make TSM a “non-exclusive test,” allowing courts to use “synergism” or other tests skeptical of “combination patents”

Scenario #5: Make TSM test a “question of law” (now “factual” requiring specific citations to prior art or doctrines in knowledge of PHOSITA)