By Professor Joshua Sarnoff, Assistant Director of the Glushko-Samuelson Intellectual Property Law Clinic and a Practitioner-in-Residence at the Washington College of Law, American University. Professor Sarnoff filed an amicus brief in support of Petitioner KSR.
In its unanimous decision in KSR Int’l. Co v. Teleflex Inc., No. 04-1350 (April 30, 2007), the Supreme Court expressly overruled the Court of Appeals for the Federal Circuit’s “teaching-suggestion-motivation” (“TSM”) test for finding a claimed invention obvious and reaffirmed the Court’s precedents (in light of the 1952 enactment of Section 103 and its holding in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)) regarding the obviousness of patents “based on the combination of elements found in the prior art” where there the combination “does no more than yield predictable results.” Slip op. at 11-12. The Court’s decision has therefore called into question the validity of hundreds of thousands of claims in issued patents, and will likely lead to a dramatic change to the method by which the Patent Office, the courts, and the bar conduct their obviousness analyses.
Nevertheless, the Supreme Court’s opinion appears self-consciously narrow and provides little additional guidance for how to apply the Graham approach. The Court’s decision leaves unclear whether the party with the burden of proving obviousness must demonstrate that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue,” or only that the claim at issue if patented would reflect an “advance that would occur in the ordinary course without real innovation[, which] retards progress and may, in the case of patents combining previously known elements, deprive inventions of their value or utility.” Slip op. at 14, 15. As the Court noted, “as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.” Slip op. at 24. Although the Court recited the Constitutional language, it did not expressly hold that obviousness is a constitutional requirement. Further, the Court left to later case law any consideration of the extent to which the Court of Appeals’ more recent statements regarding the flexibility of its TSM test is consistent with Graham and the Supreme Court’s earlier precedents. Slip op. at 18.
In discussing the proper legal standard to be applied to determine obviousness, the Supreme Court concluded that the Court of Appeals erred generally by adopting a “rigid rule” in its TSM test, by failing to acknowledge that a “person of ordinary skill in the art is also a person of ordinary creativity, not an automaton,” and by adopting “[r]igid preventative rules that deny factfinders recourse to common sense” in its efforts to avoid “hindsight bias.” Slip op. at 15, 17. The Court noted that “[w]hat matters is the objective reach of the claim,” and whether there was at the time of the invention “an obvious solution” for a “known problem.” Slip op. at 16.
Specifically, in this case the “first error” of the Court of Appeals was to look “only to the problem the patentee was trying to solve.” Rather, “any need or problem known in the field or endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Slip op. at 16 (emphasis added). Thus, any advantage that the combination may provide may also suggest an “‘implicit’” motivation to make the combination, Slip op. at 18 (quoting Alza Corp. v. Mylan Labs, Inc., 464 F.3d 1286, 1291 (2006)), even if the advantage was not one that the inventor contemplated or that the patent itself disclosed.
The “second error” of the Court of Appeals was to assume that a person having ordinary skill in the art “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 having ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Slip op. at 16. The Court thus implicitly rejected a long-standing line of Federal Circuit cases that required some explicit disclosure in the prior art of a motivation to combine to avoid using hindsight when combining multiple disclosures. See, e.g., Ecolochem, Inc. v. Southern California Edison Company, 227 F.3d 1361, 1371 (Fed. Cir. 2000) ((“[One] ‘cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.’”) (quoting In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988)).
Applying the law to the facts, the Supreme Court upheld the District Court’s conclusion that it was obvious “to combine Asano [the fixed pivot pedal assembly] with a pivot-mounted pedal position sensor.” Slip op. at 20. The Court rephrased the question as “whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.” Slip op. at 20. The Court thus focused on evidence regarding the state of the automotive design art. Further, the Court noted that “[f]or a designer starting with Asano, the question was where to attach the sensor. The consequent legal question, then, is whether a pedal designer of ordinary skill starting with Asano would have found it obvious to put the sensor on a fixed pivot point. The prior art discussed above leads us to the conclusion that attaching the sensor where both KSR and Engelgau [the inventor] put it would have been obvious to a person or ordinary skill.” Slip op. at 21. Further, the Court rejected argument that the prior art “taught away” from combining Asano with an electronic sensor, arguing that to judge the possibility of the combination based on its inferior function to a preferred embodiment of the claimed invention “would be to engage in the very hindsight bias Teleflex rightly urges must be avoided.” Slip op. at 22. Finally, the Court rejected the argument that Teleflex had proved any secondary consideration evidence (which the Court refers to as “secondary factors”) that called the initial determination into question. Slip op. at 22. Although the Court remanded the case, it rejected the argument that the existence of Teleflex’s expert affidavit necessarily precluded summary judgment for KSR, noting that the ultimate judgment of obviousness is a legal one. Slip op. at 23, 24. The Court thus apparently affirmed the District Court’s summary judgment of invalidity of Claim 4. Slip op. at 22, 23.
In summary, the Court’s test focuses on predictability and expected functions of combinations, rather than the inventive skill required to achieve them, and the Court’s holding relied on evidence regarding the motivations in the marketplace at the time of invention (but not regarding subsequent commercial success and other secondary factors). The Court’s focus thus will likely lead to greater Patent Office and lower court reliance on evidence regarding the nature of the person having ordinary skill in the art, the general state of the art and problems in it, and (possibly) secondary considerations that would tend to show the (un)predictability of the result or the lack of motivation to solve problems that would lead to the claimed combination. Thus, the Court stated that “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one…. [and] if 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.” Slip op. at 13. However, the Court’s opinion does not provide guidance regarding how to define who the person of ordinary skill in the art is, which will then determine (through evidence) his or her level of knowledge, creativity, and ability to recognize benefits of combinations. We can thus expect that obviousness determinations will be more complex and more subject to dispute regarding the nature of the relevant evidence (and particularly regarding whether and when secondary consideration evidence is relevant), which will make it harder to resolve obviousness issues in the Patent Office or the courts or to determine the outcomes in advance. We can also expect significant short-term litigation (and an increase in patent validity opinion work) as the validity of issued patents has been called dramatically into question, at least until the Congress, the Patent Office, or the courts develop more predictable rules for making obviousness determinations.
For those who are interested, I filed an amicus brief in support of Petitioner KSR Int’l. Co. in the Supreme Court on behalf of a group of economists and legal historians, urging the Supreme Court to repudiate the Court of Appeals for the Federal Circuit’s TSM test, to reaffirm its precedents, and to provide additional guidance on determining when inventions would routinely occur and the nature of technological innovation required for nonobvious subject matter. I may be reached at email@example.com, and the brief is available at /media/docs/2007/04/Sarnoff.pdf.