Will A US Patent Be More Difficult To Obtain After Ksr v Teleflex Inc?

In what was hailed as a landmark case, the US Supreme Court released the decision in KSR International Co v Teleflex Inc (KSR) in April 2007. This decision was thought to be one that could have a significant impact on patent prosecution and infringement in the U.S., particularly in relation to the number of factors to be considered with regards to obviousness¹.

In this decision, the US Supreme Court reinstated a District Court decision that dismissed a patent infringement action from Teleflex Inc relating to KSR's adjustable pedal system with a modular sensor. The patent for which Teleflex was an exclusive license holder was considered to be obvious by the District Court². The Court of Appeals, however, was found by the Supreme Court to have "addressed the obviousness question in a narrow, rigid manner" that was inconsistent with the legislation and the precedents of the Court³.

The long-held test for obviousness in the US was provided a framework by the Graham v John Deere Co of Kansas City case in 1966. The four factual inquiries into obviousness under this precedent are⁴:

1. determination of the scope and content of the prior art
2. ascertaining the differences between the prior art and the claims at issue
3. resolution of the level of ordinary skill in the pertinent art
4. evaluating evidence of secondary consideration

The "TSM" (teaching, suggestion motivation) test was then developed by the Court of Federal Appeals to deal with obviousness in combination patents, in which a patent claim could only be obvious if there was "some motivation or suggestion to combine the prior art teaching"⁵.

A combination of prior art elements is considered to be obvious if the improvement is no more than a predictable use of prior art elements according to their established function. The Supreme Court held that the diversity of inventive pursuits and modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion or motivation, or by overemphasising the importance of published articles and the explicit content of issued patents⁶.

In the KSR case, the Court of Appeals decided that the "TSM" test was too rigid. A proper obviousness inquiry, the Court found, is flexible and includes the evaluation of common sense and general knowledge. The Supreme Court also gave consideration to a person of ordinary skill in the art:

"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 purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle⁷."

It was determined that teachings beyond the particular field of the invention in question are relevant to the obviousness inquiry and should include teachings beyond

1. the scope of the particular problem confronting the inventors and
2. only those elements of prior art designed to solve the same problem.

The Supreme Court also held that: "The Court of Appeals had erred in concluding that a patent claim cannot be proved obvious merely by showing that a combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there is a finite number of identified, predictable solutions, a person of ordinary skill in the art 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 is not of innovation but of ordinary skill and common sense."⁸

At least where the claimed invention is a combination of known elements, this decision has thus widened the scope of prior art to be considered when assessing the obviousness of an invention, thereby potentially raising the level of inventiveness required for patent applicants in the US⁹. Many factors referred to in the Supreme Court decision might be used to argue obviousness while the Court did not explain how to combine, weigh, or use those factors. The outcome of the decision is that, in the US, tests for obviousness can be applied with greater freedom. It has been suggested, therefore, that while the assessment of obviousness might become more subjective as a result of the KSR decision, patents that passed the assessment might become more valuable.

The question, therefore, is how the KSR "landmark" decision has been applied in the courts and whether it has had a significant effect on outcomes. The first decision to cite KSR was Leapfrog v Fisher Price in an appeal to the Court of Appeals for the Federal Circuit (CAFC) which, in handing down its decision, concluded that "Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not."¹⁰

Recent decisions by the USPTO's Board of Patent Appeals and Interferences (the Board) have shown that the Board cite the KSR decision just as often when it reverses an examiner as when it affirms an examiner¹¹. The more flexible approach of the KSR decision appears to cut both ways. The Board have cited the KSR decision in close to 60% of its obviousness decisions but the overall reversal rate, however, has dropped only slightly¹².

On the one hand, the KSR decision is cited by the Board in its reversals to emphasize that a proper case for prima facie obviousness must include motivations to combine that are "articulated reasoning with some rational underpinning". On the other hand, the Board is also citing the decision to rebut prima facie cases of obviousness where "common sense" dictates that the claimed invention was not obvious¹³.

It is beginning to appear, therefore, that the net effect of this "landmark" decision may not be as significant as originally anticipated. Notwithstanding, it would certainly be prudent to review any potentially vulnerable US applications/patents in light of the KSR decision and the subsequent precedent law.

1. KSR International Co v Teleflex Inc Supreme Court of the United States. 30 April 2007. ^{http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf}
2. Locke, George. KSR International Co v Teleflex Inc: the United States Supreme Court speaks on patent invalidity for obviousness. May 2007. Patents.
3. http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf
4. USPTO. Memorandum. 3 May 2007. Graham v John Deere Co of Kansas City, 383 U.S. 1, 17-18.
5. Locke, George. KSR International Co v Teleflex Inc: the United States Supreme Court speaks on patent invalidity for obviousness. May 2007. Patents.
6. http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf
7. http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf.
8. Ibid.
9. Locke, George. KSR International Co v Teleflex Inc: the United States Supreme Court speaks on patent invalidity for obviousness. May 2007. Patents.
10. Leapfrog Enterprises, Inc v. Fisher-Price Inc, 06-1402 (Fed. Cir. 2007). http://www.fedcir.gov/opinions/06-1402.pdf
11. http://www.iptoday.com/articles/2007-09-nowotarski.asp
12. Ibid.
13. http://www.iptoday.com/articles/2007-09-nowotarski.asp

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