Sarnoff Discusses KSR v. Teleflex

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 jsarnoff@wcl.american.edu, and the brief is available at http://www.patentlyo.com/patent/Sarnoff.pdf.

Comments

[SF]

"The Court’s decision has therefore called into question the validity of hundreds of thousands of claims in issued patents[.]"

While some claims in some art units would not have issued without the TSM test, the vast majority of issued claims will be just fine. Virtually all patent examiners shunned rigid application of the TSM test. In fact, although giving lip service to the TSM test, many never applied the TSM test at all. Since these examiners were already following the KSR decision in practice, the KSR decision will not have such a broad impact.

[Joe Patent]

You write:

"the Supreme Court expressly overruled the Court of Appeals for the Federal Circuit’s “teaching-suggestion-motivation” (“TSM”) test"

Show me where in the opinion the SCt does that. You can't because it's not true. The Court didn't overrule the test; it only overruled the rigid application of the test.

[JustAnotherPatentAttorney]

So where is the "guidance on determining when inventions would routinely occur and the nature of technological innovation required for nonobvious subject matter"? I'm afraid that "use common sense" is not useful guidance, unless you can explain how "common sense" can be refuted.

[Derrick and the Dominoes]

Here, I can sum up the case in two sentences.

If you have an e-commerce patent or e-commerce technology your IP rights in the patent area are useless-at least if you have an e-commerce patent you have a great wall decoration.

If you have a patent, or technology, wherein the ordinary skill in the art is a Phd in Chemistry, a Masters in Electrical Engineering or a Phd in biotechnology plus two years post doctoral experience, you are pretty much good to go and can use the old analysis.

[Alun Palmer]

Prof Sarnoff's analysis above seems to imply that KSR overturned the improper hindsight argument, but I don't think that is so, as the court noted that Graham warns against hindsight.

[anon coward]

It appears that 1,000,000 people will read this decision and there will be 1,000,000 interpretations of it. The only ones that matter are, firstly, the USPTO, and secondly, the CAFC. I reserve judgment until such time as we have seen their responses. Wait, no I won't: I am very sorry Professor, but you and I clearly read different decisions. The sky is not falling. TSM is still with us. Everything is as it should be. Ahhhh, I feel better already! :D

[Josh Sarnoff]

In response to the comments made above that KSR did not vacate the TSM standard, did not affect a dramatic shift to obviousness law, and will not signficantly change examination practices (particularly in mechanical arts), please read the following quotes from the KSR decision. First at 2-3 and 11 "the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the 'teaching, suggestion, or motivation' test (TSM) test, under which a patent claim is only proved obvious if 'some motivation or suggestion to combine the prior art teachings' can be found int he prior art, the nature of hte problem, or the knowledge of a person having ordinary skill in the art.... Because the Court of Appeals addressed the question of obviousness in a manner contrary to [section] 103 and our precedent, we granted certiori... We now reverse.... We begin by rejecting the rigid approach of the Court of Appeals." So much for the TSM test (at least pre-Khan and Dystar) which was applied by the PTO for many years (particularly after In re Lee). Second, at 13: "Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent simply arranges old elements with each performing the same function it had been known to perform. and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282. The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious.... Sakraida and Anderson’s-Black Rock are illustrative – a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." Note that the Court says "a court must ask" this question, and in describing Sakraida states "is obvious" without further analysis, whereas in other places the Court says "is likely to be obvious." Although the Court later states (at 14-15) "common sense directs one to look with care at ... the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill ... to combine the elementsin the way the claimed new invention does," nothing in the opinion suggests that the identification of such a reason for combination is required in such cases (creating an unresolved tension that my original post noted).

Sakraida itself is much clearer, specifically requiring the invention to have a new function and not just an improved function to avoid obviousness, wholly without regard to motivations to combine: "Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations. Such combinations are not patentable under standards appropriate for a combination patent. Great A. & P. Tea Co. v. Supermarket Corp., supra; Anderson's-Black Rock v. Pavement Co., supra." To the extent that the Court in KSR has expressly reaffirmed Sakraida, I continue to believe that hundreds of thousands of claims have been called into question.

This view is not just mine, take AIPLA's summary of the decision (taken from their website): “Writing for the Court, Justice Anthony Kennedy observed that a patent is invalid for obviousness when the invention combines familiar elements according to known methods to produce no more than predictable results.”

[jane admin]

If you've ever heard the Professor talk, you'd know he is rather anti-patent.

Now he writes "So much for the TSM test (at least pre-Khan and Dystar)". So is the TSM test expressly overruled, as earlier claimed, or is it just the misapplication of the test??? Which is it, Professor?

[Suneet Sabale]

One thing that is clear after KSR V Teleflex the US patent law is coming closer to that of EPO. But still there are many unanswered question in the mind, regarding the precautions required to be taken while drafting a US patent applications.
Can any one help me with that.

Suneet