Now that the Supreme Court has issued its opinion in KSR v. Teleflex, the first reaction is what took it so long? During the past six months since oral arguments in late November, I was expecting that the Court was taking its time crafting a historical opinion that delved into the genesis and evolution of the nonobviousness doctrine since the Hotchkiss decision in 1851. The Court does mention the Hotchkiss decision and a few others, but the six month gestation has yielded a compact, thirty page decision that can be summarized with three simple F-words: formalism, functionality, and flexibility.
Formalism: First, the Court rejects what it describes as an overly formalistic application of the TSM test. How the Court formulates the test is telling: "[A] patent claim is only proved obvious if some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art." The emphasis here is on the word "only." The Court concludes that this approach is overly rigid when it requires the finding of a specific understanding or principle within the knowledge of PHOSITA that would have motivated the invention. According to the Court, the Federal Circuit was wrong in requiring a prior art reference that addressed the precise problem that the patentee was trying to solve for a finding of obviousness. The Court concludes that the problem itself, combined with the common sense of PHOSITA, can motivate an invention and make it obvious.
Functionality: If formalism is out now with KSR, then functionalism is in. What this means is that obviousness needs to be determined by looking at the invention as a whole in the context of the field. As the Court puts it: "Often, it will be necessary for a court to look at interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." We are reminded that "a person of ordinary skill is also a person of ordinary creativity, not an automaton." The automaton here is the rigid surveyor of prior art references that lead up to an invention. The person of ordinary creativity, by contrast, works in the contexts of a community of inventors and of the marketplace. The nonobviousness inquiry needs to reflect these realities within which inventions and patents function.
Flexibility: Finally, functionalism mandates flexibility, whose elements the Court captures as follows: "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design decisions." 
All of which means that in order to conclude that an invention is obvious, "it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does."
All of this reference to common sense and reason should sound familiar. What the Court is doing is injecting some common law reasoning into the nonobviousness inquiry, much like the Court revived common law thinking on secondary liability in its 2005 Grokster decision. The appeal to flexibility and context makes sense if one understands the KSR decision as being addressed to courts, as it most certainly is. But the nagging problem is how does this flexibility function in the modern administrative practice of patent law? In excoriating the Federal Circuit, the Court has created great deal of uncertainty in maneuvering through the shoals of the USPTO. The Patent bar, needless to say, loved the rigid TSM test precisely because it was easy to work around. Of course, the test's patent friendliness was appreciated as well. The Court's more flexible approach is justifiably motivated by the need for higher standards in the patent system in order to ensure real innovation, promote progress, and strengthen existing patents. But the opinion is written for judges, not patent examiners and prosecutors, and as a result, the common law-like opinion will invite more litigation and judicial scrutiny to determine what is and isn't obvious.
Note: Shubha Ghosh is a professor of law at Southern Methodist University and has published widely in the area of intellectual property law. He also blogs at the Antitrust & Competition Policy Blog.
