KSR v. Teleflex: Supreme Court on Obviousness

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.

Preliminary Gems:

• 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. 

Notes:

• Download KSRvTeleflexOpinion.pdf
• Joe Miller
• David French
• Aaron Barkoff
• Michael Madison
• Patent Hawk
• Michael Barclay
• Solveig Singleton
• Larry Ebert
• Quizlaw
• 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:
  • http://www.techlawforum.net/blogs/a-precursor-to-obviousness/
  • http://www.techlawforum.net/blogs/per-se-or-not-per-se/
  • http://www.techlawforum.net/blogs/hey-teacher-leave-our-test-alone/
• The Patent at issue: [link]

Comments

[Declarations shemelecrations]

MaxDrei - You wrote that declarations are not needed in the EPO, where the civil law system deems the Examining Division (3 people) a PHOSITA. Why would declarations be needed in the US, where every examiner is a PHOSITA for the matter before them?

[CaveMan]

I think what Max is trying to say is that many believe in the wake of KSR, declarations will be necessary to establish what is the level of creativity for example in the art. Or, that the combination of elements yielded unexpexted results. However, in Europe, the Examiners are considered to be persons of ordinary skill.

Max, I think the U.S. is essentially the same. The Examiners are considerd to be skilled in the art they are examining. If an Examiner wanted to, they could file a delcaration/affadavit to support reliance on something they consider to be commonly known - however I've never seen one. Usually, if challenged on something like Official Notice most Examiners will relent before filing an affadavit as they must according to the rules.

[Zeke]

"Zeke: Bizzare? ... Sorry if you don't think that the absence of a vigorous arena for disputes over valuable rights is evidence of a lack of value to those rights. What is suggests to me is that absent such an arena manufacuring rights are simply allocated by a big socialist goverment - sheesh, I guess that's what you find in Europe."

You weren't asking about an arena or lack thereof, you were asking about an "industry shaping patent court case or judgement." In my world a court and a court case are two different things. Perhaps in bizarro world they're the same.

Get your story straight.

[Babel-Boy]

Shemeclarations -- is there a regulation that requires an examiner to be competent in the field he/she is examining? This is a critical point. I once had an examiner in a case involving educational s/w who told me she was on temporary assignment in the examining group, knew nothing about educational theory, and nothing about programming. From whence comes the presumption that these examiners are skilled in the relevant art? Seems to me there should be a mandatory disclosure of the examiner's education/training for the record, particularly if they pull an "official notice" out of their hat.

[Malcolm Mooney]

"Mooney hates everyone here"

LOL, Cavey! My emotion-manipulating tactics have been thoroughly exposed and debunked. I guess I need to report to Commander Soros and devise even more diabolical ways to fool people here into believing that I'm actually thinking ...

[Alun Palmer]

The Examiner in the US is not automatically a PHOSITA, and not legally assumed to be one. Taking Official Notice can be based on anything they happen to know without any such presumption, but they have to provide evidence or swear an affidavit on request. They may often know more about the art than the applicant's counsel does (unless temporarily assigned!), but that doesn't make them a PHOSITA.

[CaveMan]

At the risk of sounding repetitive, you can intellectualize about TSM all day and try to weigh its relative merits, but if you understand the original/practical motivation for TSM, you begin to understand the consequences of NOT having it in a more rigid form.

1) Around the time of the formation of the CAFC, the PTO was spending a TON of money computerizing the office since, as many people know, searching was conducted manually by Examiners in dusty shoes in even dustier back corners of the PTO in Crystal City;

2) when all was said and done the Examiner now had the ability to search the art by computer;

3) the standard technique of the average-minded Examiner was to plug key terms from the claims into the keyword boxes of the search screen;

4) the ensuing search results theoretically should contain references that at least contain some or all of the claim terms. Containing the terms and "teaching" the invention are entirely different, however some examiner stopped at that point and called it a day.

Anyone with half a brain understands the kind of results you often get from a computerized search. You get simlar terms that are used in completely different contexts from those associated with the invention, and even when all the terms are found in one reference they are often scattered around the reference and certainly do not anticipate "in the manner claimed."

To address the problem of Examiner cobbing together bizzare unrelated references from such computer searches in an attempt to establish a prima facie case of obviousness, the CAFC required that there must be some teaching or suggestion *contained in the references themselves" or in the common knowledge to motivate the combination. This requirement forced Examiners to actually read the references that were produced by the search to determine if the combination was plausible and the references actually contained a relevant "teaching".

The proviso that the motivation could come from the "knowledge generally available in the art" should have satisfied the Supreme Court in providing some flexibility to account for common sense. The common knowledge proviso of the TSM test was to allow those references to be combined that, while not expressly containing an explicity teaching to combine, e.g. "present methods do not accomodate a restrictive opening in the throttle body" still clearly teach the claimed features. Thus a reference to a throttle body and another reference with a restrictive opening in an air flow system could easily be combined without the explicit teaching such as that noted above to explicity suggest their combination.

However, in claims having more complex features, which may have possibly had some disembodied mentions throughout the arts could not as easily be combined without such an explicit teaching. For example, a digital processing system with a GHz baseband section and a ultrafast sampling system, under a TSM requirement, could not be obviated simply by combining reference A teaching a digital baseband for GHZ processing and reference B teaching a samping system for, say, voice frequencies (e.g. found by entering "baseband" "GHZ" and "sampling" into a computer search), without an explicit suggestion. For exampe, reference B could say "while the instant configuration is applicable to voice frequency sampling, it could conceivably be combined with high frequency baseband sections, such as in the GHz range, provided that sufficiently fast conversion modules are available to support the sampling feature." Under TSM only a reference B from voice frequency arts that contained the noted suggestion could be used to teach the claimed sampler. Anything short would rightfully NOT pass muster under TSM. And it would not be unusual to find in such a hypothetical reference B a teaching away, e.g. "while the instant configuration is applicable to voice frequency sampling, it could not easily be applied to high frequency baseband sections since sufficiently fast conversion modules are not available in the art to support high speed sampling."

Now, virtually anything can be cobbed together... without a reason.

And sorry Zeke, my story is straight, you're the one splitting insignificant hairs and in doing so highlighing the weakness of whatever your argument might be. The fact is, we have never seen a Blackberry infringement case in Europe - and there is a good reason for that - the capital markets in Europe are controlled by big government not private interests. The biggest technology oriented court case that we've seen out of Europe in my recollection is the Microsoft antitrust case.

[Michael L. Slonecker]

"...as many people know, searching was conducted manually by Examiners in dusty shoes in even dustier back corners of the PTO in Crystal City..."

As tedious as that practice was, it did have one benefit; namely, examiners actually used the PTO's classification system as a way to try and find relevant "art".

[Malcolm Mooney]

"And it would not be unusual to find in such a hypothetical reference B a teaching away, e.g. "while the instant configuration is applicable to voice frequency sampling, it could not easily be applied to high frequency baseband sections since sufficiently fast conversion modules are not available in the art to support high speed sampling. Now, virtually anything can be cobbed together... without a reason."

Well, the last sentence is plainly false, CaveMan, in light of KSR. That begs the question: what are you trying to accomplish here?

[Zeke]

"And sorry Zeke, my story is straight, you're the one splitting insignificant hairs and in doing so highlighing the weakness of whatever your argument might be."

Splitting hairs, maybe. I suppose years of writing claims has dulled by appreciation of fast and loose use of language. My mistake! Whatever you intended those words to mean is obviously correct.

Anyway, please drive on and continue your rant against socialism, obviousness, baseband or whatever concepts these mere words represent to you. Count this as but a brief pit stop on your journey to prove that you're smarter than everyone, in both Europe and the US.

[small inventor (aka "patent troll")]

Caveman is right as usual

Even before KSR examiners were combining references from completely unrelated arts to make an obviousness rejection.
In my case examiner combined 2 references: one from speech signal processing and another one dealing with recording and analysing ... a certain chemical reaction (???)
Mind you, that was before KSR !
A personal examiner interview with my attorney present instilled some common sense into that examiner (a senior examiner BTW, with a proper education, background and a lot of experience examining various patents in the field)

And now what ? This whole patent examination thing becomes a mockery or what ?

I myself don't care anymore: they won't see any more patent applications coming from me. Go find another sucker to pay for worthless papers

But what happens to the already issued patents ? Will the courts start doing the same: combining references which are not to be combined ?

I guess at the end of the day the guy with a bigger bank account always wins...

God bless America !

[johng]

Right you are, Mr. Slonecker. Such a classification based search would result in analogous art addressing similar problems with higher probability than simple claim term searching (outside of chemical related searching). The new PTO breed doesn't get this fundamental truth, and almost all the true experts are now gone.

[Malcolm Mooney]

"Even before KSR examiners were combining references from completely unrelated arts to make an obviousness rejection."

This is what I find so amusing about many of the comments here. On one hand, they flip out over allegedly "vague" language used by the Supremes and then they throw out gobblygook like "completely unrelated arts."

Here's a simple uncontestable fact: people with a minimum amount of creativity are capable of looking outside of their narrowly defined "field" for inspiration. Not only are people capable of behaving this way, they do so every day. Do they all deserve patents?

Does looking outside of one's "field" of expertise immediately entitle one to a patent? If not, then what the heck is your point? Why should Examiner's be forced to limit their searching to references which were identified as belonging to some "field"? Such a rule would seem to benefit a certain group of wannabe "innovators" who make a living off filing patent applications, but I fail to see how this rule benefits a community which is sick of seeing crap patents being issued.

[MaxDrei]

I'm asked to cite cases in Europe. Well, there's Blackberry, litigated in UK and Germany, and quickly disposed of. I'm not a litigator or in the pharmaceuticals field, so struggle to bring to mind relevant cases, but LIPITOR comes to mind, and Erythropoietin (is that how you spell it?). But such a topic is a bit boring. Fact is, there are 31 member States in the European patent system and all have their own system of patent enforcement and revocation, so none of them, individually, approaches the US in terms of market value. So what? What is interesting is the competition between specifically DE, GB, NL and EPO, to lay down the best line of legal logic, on matters such as novelty, obviousness and claim interpretation. Specifically, academic debate between common law England and civil law the rest (except Ireland) can be challenging because it calls into question legal fundamentals that one thinks are indispensible. If they really are (eg non-obviousness, novelty, sufficiency, over the full width of the claim), they are easily defended. If they are not (best mode) they don't survive.

[small inventor (aka "patent troll")]

Oh, just shut up, Mooney

When you are asked to solve some e.g. voice transmission problem, for example, would you start looking into some obscure chemical references (non-patent references, BTW, cited by patent applicant in good faith, well, so much for being honest...) ?
I hope not, if you want to keep your job as an engineer..

There are completely unrelated activities, believe it or not, e.g. like trolling patent-related internet blogs and cooking your dinner, unless, of course you hope to find how to make the best dinner for yourself in one of those blogs.. Good luck with that

[Malcolm Mooney]

"There are completely unrelated activities, believe it or not"

And there are obvious inventions, believe it or not.

Frankly, I think the term "obvious" is more definite than the term "completely unrelated." Perhaps if I mention Kevin Bacon you will begin to understand the problem.

With respect to "voice transmission" and "obscure chemistry," I expect the topics to intersect in certain circumstances. Possibly the intersection could be highly relevant, depending on what is claimed. The relevance, of course, would need to be reasonable and convincingly explained by the Examiner or defendant -- per the Supreme's instructions in KSR.

[CaveMan]

Mr. Slonecker adds a great dimension regarding the classification system, which, as he also noted, is what the Examiners used to use to kick off a search. In the classification driven search, the search was (at least theoretcially) conducted in a completely "top down" manner, which a conniseur of subtleties will appreciate, reduced the amount of hindsight to close to zero.

Now as that same conniseur of subtlety should appreciate, the new method of search, e.g. where claim terms are plugged into a computer search engine, is de-facto hindsight reconstruction of the art based on the applicants disclosure. Using this method you would find references that you would most likely never have found looking through shoes.

The result is a piecemeal application of the art against the reference, which is a generally bad thing. Consider an honest invention having, say, 10 diverse, obscure, and novel elements (remember this is a hypothetical normally I would not claim more than 2 or 3 elements). A piecemeal application of the art faciliated by a computer search would produce a 103 rejection having 10 references. Although the MPEP currently states that there is nothing fundamentally wrong with this, we all know that such a large number of references tortures the imagination as to whether the prior art really teaches this invention.

That's good and bad. Computer searching is great - don't get me wrong. But it must be properly applied to avoid the hindsight problem and the piecemeal application problem.

The CAFC addressed this by requiring a TSM to support a combination of reference. This way, you can find as many references as you want, any way you want, provided you can support why they should be combined. Its kind of a don't ask, don't tell policy for Examiners in how they conduct their searches.

Mooney knows all about don't ask don't tell don't you Mooney?

[CaveMan]

Correction:

"...piecemeal application of the art against the [applicant's claims] which is generally a bad thing."

[Malcolm Mooney]

"Mooney knows all about don't ask don't tell don't you Mooney?"

Ah yes, that's our CaveMan! You never fail to disappoint. It's what you get when you cross Bill O'Reilly and Rush Limbaugh, minus the cleverness.

You have also succeeded once again in kicking up a bunch of dust which ignores the issue addressed by the court in KSR.

"The CAFC addressed this by requiring a TSM to support a combination of reference."

And the Supreme's decision also requires the Examiner to explain what "teaching, suggestion or motivation" existed in the art to support the combination of elements found in disparate references. You realize that, don't you?

All that the Supreme's have eliminated is the CAFC's sporadically applied and ridiculously rigid "test" that an express teaching directed to the specific combined elements be located in the prior art by the Examiner. The CAFC's "test" was no less vague than the Supreme's decision and it accomplished nothing except to allow more crap patents through the gate.

The CAFC's obviousness jurisprudence did not make the validity of a patent more "predictable". It just made the validity of a patent more likely than the present test does.

Now, we should note who is complaining the most about this case. It's people who believe that it's not going to be as easy to get a patent as it was before. That's understandable.

But the idea that KSR has turned obviousness determinations from some beautifully elucidated test into an arbirary dice toss (or worse) is just bogus. It's not supportable.

[Dennis Crouch]

The court listed the text of the asserted claim. Then stated:

"We agree with the District Court that the claim discloses "a position-adjustable pedal assembly with an electronic pedal position sensor attached to the support member of the pedal assembly. Attaching the sensor to the support member allows the sensor to remain in a fixed position while the driver adjusts the pedal."

This statement may implicitly re-confirm the current law of claim construction including de novo review.

[CliveFenster]

In my law-firm life, I worked with a large number of inventors at companies of large, medium, small, and start-up sizes. Now in-house, I work more closely with inventors and gain greater insight into how they work.

In my experience, inventors tend to be reasonably to exceptionally familiar with their own technology. But they generally are unlikely to "prairie dog" and view technologies outside their areas of expertise. The only times I have ever seen an intersection of electromechanical and chemical/biological knowledge in one inventor were for medical device and diagnostics inventions. Notably, it was also where the invention itself also overlapped both technologies.

[Zeke]

"In my experience, inventors tend to be reasonably to exceptionally familiar with their own technology. But they generally are unlikely to "prairie dog" and view technologies outside their areas of expertise."

This is near the designer end of the spectrum. The most creative inventors I've met know what's going on in other fields and draw from it. They may not have multiple PhDs, but they're not afraid of borrowing from other arts. I have no problem with a system that rewards these people more at the expense of those who have a narrower mindset.

[CliveFenster]

"The most creative inventors I've met know what's going on in other fields and draw from it. They may not have multiple PhDs, but they're not afraid of borrowing from other arts. I have no problem with a system that rewards these people more at the expense of those who have a narrower mindset."

But we're not talking about a "reward more, reward less" change to the system, but rather a "reward, don't reward" change.

Based on experience, it's my belief that the person having *ordinary* skill in the art does not have much knowledge of arts not immediately adjacent his own.