KSR v. Teleflex - Has "Inventive Step" Made its Appearance in U.S. Patent Law?

As predicted, the SCOTUS has whittled back the Federal Circuit's teaching, suggestion or motivation (TSM) test. While noting the TSM test is "helpful," the unanimous opinion concluded that the "purpose" or "motivation" behind a patent claim was not controlling - "[w]hat matters is the objective reach of the claim."

Relying on Sakraida and Anderson's-Black Rock (which brought us the "synergism" test), the Court provided a modified "inventive step" test for determining obviousness:

[I]f 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. Sakraida and Anderson’s-Black Rock are illustrative - a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

(Compare this to Article 56 of the EPC: "An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.")

The SCOTUS ruled that the CAFC was being too "rigid" in applying the TSM test, and noted numerous errors in the application of the test:

Specific "problem to be solved" is not the controlling factor

"The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve . . . The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter. 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. Under the correct analysis, 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."

Obviousness may exists for different problems:

"The second error of the Court of Appeals lay in its 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 . . . Common sense teaches, however, 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 . . . The idea that a designer hoping to make an adjustable electronic pedal would ignore Asano because Asano was designed to solve the constant ratio problem makes little sense. A person of ordinary skill is also a person of ordinary creativity, not an automaton."

"Obvious to try" may still be OK:

"The same constricted analysis led the Court of Appeals to conclude, in error, 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 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."

"Common sense" trumps the possibility of hindsight:

"The Court of Appeals, finally, drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning . . . Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it . . . The extent to which [CAFC hindsight provisions are] more consistent with our earlier precedents and our decision here is a matter for the Court of Appeals to consider in its future cases."

By paring back the TSM test, the Court did not provide much in terms of a bright-line test, but instead gave a number of obviousness considerations that revolve around (1) predictability and (2) recognition of a benefit by one skilled in the art:

• "[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."

• "If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, §103 likely bars its patentability."

• "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."

Unfortunately, the decision gave even less guidance for applying the rules at the USPTO (the words "USPTO" or "patent office" are not even mentioned in the opinion, and "examiners" are mentioned only twice in passing). Nevertheless future arguments on obviousness will likely be focused on the "predictability" of alleged combinations, along with the lack of a recognized benefit (see 1.132 declarations).

TSM is not dead as such - The SCOTUS finding of obviousness reviewed the standard Graham factors, and analyzed the scope and content of the prior art, as well as the problems to be solved. The Court rejected the CAFC's rule that the prior art had to "address the precise problem that the patentee was trying to solve" (emphasis added), and allowed the knowledge of the art to come into play. Since the prior art taught every element except for the location of the sensor, Teleflex's best chance appeared to be the lack of motivation to combine. Unfortunately for Teleflex, it wasn't a very strong argument, given the prior art that was cited to the district court.

NOTE: The Court also threw out a rather ominous note regarding the presumption of validity, which some have interpreted as a possible basis for a future challenge:

We need not reach the question whether the failure to disclose Asano during the prosecution of Engelgau voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption - that the PTO, in its expertise, has approved the claim - seems much diminished here.