By Jason Rantanen
Obviousness remains one of the primary issues raised in patent cases. A few weeks ago, Dennis noted that "the vast majority of BPAI/PTAB decisions focus on the question of obviousness," and 5 of the 11 opinions involving utility patents issued by the Federal Circuit this past month addressed obviousness. Many of these cases revolve around application of the Supreme Court's decision in KSR v. Teleflex, and reflect disagreements over the interpretation of the Court's opinion.
This article presents the results of an empirical examination of the Federal Circuit's obviousness jurisprudence over a period of fifteen years, asking whether the Federal Circuit really changed its behavior as a result of KSR. In systematically examining the court's opinions, I found the following:
- Following KSR the Federal Circuit has become substantially less favorable to patentees on the issue of obviousness.
- The Federal Circuit’s ubiquitous pre-KSR requirement that patent challengers identify a “teaching, suggestion, or motivation” (“TSM”) to combine or modify the prior art has largely disappeared, at least in formal terms.
- Although the concept underlying TSM has endured, in the form of a “reason to combine” requirement, the post-KSR form of that requirement differs substantially from its pre-KSR incarnation.
- The Federal Circuit now routinely relies on language from KSR that “[a] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions” and the use of “common sense” to find combinations and modifications of the prior art to be obvious.