KSR Int'l v. Teleflex, Inc., 550 U.S. ___ (2007).
In a unanimous decision, the Supreme Court rejected any notion that the concept of obviousness in patent law can be rigidly or narrowly defined -- holding that "the obviousness analysis cannot be confined by a formalistic conception." However, the opinion does not radically change the notion of obviousness or immediately invalidate a wide swath of already issued patents.
The question of nonobviousness comes-up in Section 103 of the Patent Act. That section declares that a patent shall not issue if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
But what is "obvious"? Certainly, this amorphous term has continuously stumped engineers and scientists for the past 50+ years. One particular issue involves combination inventions that take various existing elements and combine them in a new way. When is such a combination obvious? In an attempt to provide improved notice and regularity, the Court of Appeals for the Federal Circuit (CAFC) introduced a test that holds a combination invention is nonobvious absent some teaching, suggestion, or motivation (TSM) to combine the various parts together.
In KSR, the Supreme Court began by rejecting the CAFC's test for obviousness:
"We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here."
At this point, I would have expected the Court to obliterate the past twenty-five years of obviousness jurisprudence and begin again with a clean slate. It did not do that — rather, the opinion appears to simply refine the particulars of how prior-art can be combined and when a "combined patent" will be seen as obvious. Without explicitly saying so, the Court's opinion appears to affirm the CAFC's more recent pronouncements of a flexible test of obviousness. Dystar, Alza.
Patent Value: In the short-term, this case reduces the average value of patent holdings. Courts should find it easier to invalidate patents based on expert testimony and the jury's concept of obviousness. The story also becomes more important -- and attorneys who can tell an "invention story" will be in demand. During prosecution, inventors and experts should get their pens ready to sign declarations of patentability.
- PHOSITA is Creative: A person of ordinary skill is also a person of ordinary creativity, not an automaton.
- 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.
- Hindsight Bias: Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.
- No Presumption of Validity: 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.
- Patents Halt Innovation: Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
- Common Sense: Mentioned glowingly five separate times.
- Download KSRvTeleflexOpinion.pdf
- Joe Miller
- David French
- Aaron Barkoff
- Michael Madison
- Patent Hawk
- Michael Barclay
- Solveig Singleton
- Larry Ebert
- Discussion of Response Briefs;
- Discussion of Petitioner and Supporting Amici’s Briefs on the Merits;
- Discussion of Government's Brief in Support of Certiorari;
- Discussion of Microsoft’s Amicus Brief;
- Discussion of the CAFC decision;
- Discussion of Law Professors Brief;
- Discussion of In re Kahn;
- Discussion of Petition for Certiorari;
- Prediction Certiorari;
- Professor Wagner and Strandburg debate obviousness in Penn’s new online law reivew:PENNumbra;
- Prof Miller: KSR Lift-off!
- Prof Miller: Discussion of Gov’t Brief;
- Patent Hawk: Becoming Less Obvious;
- Patent Hawk: Hindsight Problem;
- Buchanan: "[O]nce again, patent reform has left the Capitol and walked across First Street to the Supreme Court." [Link];
- Petherbridge & Wagner Empirical Article [link]
- Cotropia Article: [link].
- Shane Popp Article on Section 103 background [link]
- Mark Smith, a student at Santa Clara Law has these three posts in SCU’s great new Tech Law Forum:
- The Patent at issue: [link]