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KSR vs. Teleflex was a small case that ultimately ended with a landmark decision. When the Supreme Court recently sided with KSR, it forced the IP world to take a new look at the obviousness standard for patentability. How will this affect future applications and cases?
The non-obviousness doctrine was put in place to ensure that patent rights are not granted to inventions that are mere modifications or variations of prior technology. This was put to the test in the landmark KSR vs. Teleflex. In his article, Eric Bangeman fleshes out the case. KSR manufactured a gas pedal that automatically adjusts its height to that of the driver. When Teleflex claimed that KSR was infringing one of its patents, KSR responded that the patent - one that put together components that functioned as they were previously known to do – was obvious and should not have been granted.
KSR had precedent on its side - legislation that said an invention could not be patented if a person having ordinary skill in the art (PHOSITA) would consider it obvious – and won the first round in the District Court. But the Court of Appeals of the Federal Circuit (CAFC) reversed the decision, ruling that patent challengers had to prove that there was a “teaching, suggestion or motivation” (TSM) tying the earlier inventions together.
When the case went to the Supreme Court, the justices unanimously sided with KSR and reversed the judgment of the Federal Circuit, holding that the disputed claim 4 of the patent was obvious and that in "rejecting the District Court’s rulings, the Court of Appeals analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the "teaching-suggestion-motivation" test.
Some see the Supreme Court decision as good news for a patent system that really needs to be fixed. They see it as the Supreme Court telling the lower courts and the patent office to examine a patent’s obviousness more closely, to be more flexible in determining whether a patent is obvious. The days when a patent application was filed and granted for every new product are gone. Post-KSR, an invention must be a truly brilliant, clever, never-before-tried and non-obvious solution to a problem.
Others contend that obviousness rejections will be a formidable hurdle for patent applicants going forward. For the most part, most solutions to a problem, when combined, operated in a predictable way. The good news is that patent applicants will now be operating under new USPTO guidelines that will better insulate them from obviousness challenges during later litigation, improving the enforceability of the patent claims that ultimately come out of it.
The USPTO’s new examination guidelines for determining obviousness in light of the Supreme Court’s KSR vs. Teleflex decision:
· Stress that the familiar factual inquiries announced by the Supreme Court in its much earlier decision, Graham vs. John Deere Co., remain the basis for every decision regarding obviousness. That is, patent examiners will continue to consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness.
· Note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. While this may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art TSM to make it, there is no requirement that patent examiners use the TSM approach to make a proper obviousness rejection.
· Identify a number of rationales suggested by the Supreme Court in the KSR decision and the underlying factual findings to help patent examiners make and support obviousness rejections.
Patentees now face some new challenges in fending off an obviousness attack. According to an examination of the case in the Michigan Law Review, post-KSR decisions seem to show that an invention that combines known elements by known methods and that yields predictable results can expect to be successfully patented, but such a formulaic patent is vulnerable to attack. But truly inventive patents with no reasonable expectation of success and have unexpected results will survive under KSR. This is perhaps the most important lesson learned from KSR.
The post-KSR patent landscape is just one of the many critical patent issues being tackled in the 5th Patent Strategies conference. Held on March 26-28 in San Francisco, the gathering features top patent experts who will examine US and global IP trends and address key licensing due diligence issues.
* BPCouncil is a media partner of the 5th Patent Strategies conference.
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