The Supreme Court unanimously rejected the Federal Circuit’s strict application of the teaching-suggestion-motivation (“TSM”) test for obviousness – making it easier to invalidate patents on obviousness grounds.
Teleflex sued KSR for patent infringement. Teleflex held the exclusive license to the patent entitled “Adjustable Pedal Assembly With Electronic Throttle Control.” KSR International Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1734 (2007). The case revolved around Claim 4 of Teleflex’s patent. Claim 4 describes a mechanism for combining an electronic sensor with an adjustable automobile pedal so that the position can be transmitted to a computer that controls the throttle in the automobile. Id. KSR added an electronic sensor to one of its previously designed automobile pedals, and Teleflex sued for patent infringement. KSR claimed that Teleflex’s Claim 4 was invalid under the Patent Act, 35 U.S.C. § 103, because the Claim was obvious. Section 103 provides that a patent cannot be issued when “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.” Id.
The District Court granted summary judgment in favor of KSR, reasoning the KSR had demonstrated that Claim 4 was obvious. Id. at 1737. The District Court also held that KSR satisfied the TSM test. Id. at 1738. The Federal Circuit reversed, reasoning that the District Court did not apply the TSM test strictly enough. Id.
The Supreme Court held that the Federal Circuit addressed the obviousness question in a “rigid” manner, reasoning that helpful insights like the TSM test need not become “rigid and mandatory formulas,” and the TSM test as applied did not follow Supreme Court precedent. The court threw out the TSM test, explaining that the Federal Circuit made four errors. First, the Circuit erred by holding that courts should only look to the problem the patentee is trying to solve. According to the Supreme Court, “any need or problem” can provide the patentee with a reason for combing elements. Id. at 1741-42. Second, the Federal Circuit erred by holding that a person of ordinary skill would only look to solve a problem with prior art elements designed to solve the same problem. The Supreme Court explained that a person of ordinary skill will be able to fit the teachings of multiple patents together. Id. Third, the Federal Circuit erred by reasoning that a patent cannot be obvious where it is shown that the combination was obvious to try. Instead, a person of ordinary skill attempting to solve a problem will use common sense and ordinary skill to identify and pursue known options in the field, and if success results it is not innovation. Id. Fourth, the Federal Circuit erred by making a wrong conclusion about the risk of hindsight bias. The Supreme Court held that rigid rules denying recourse to common sense are inconsistent with the Court’s caselaw. Id.
It is likely that the change in the obviousness standard will likely increase the amount of patent litigation. This litigation will involve attempts to invalidate patents on obviousness grounds, and many patents will likely be invalidated. Furthermore, it is likely that inventors will not easily resist an infringement claim and will litigate rather than settle the case. In fact, the Federal Circuit’s first decision interpreting KSR was issued May 9, 2007, Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc., No. 06-1402 (Fed.Cir. May 9, 2007). The Federal Circuit affirmed a lower court ruling invalidating Leapfrog’s patent on the grounds of obviousness. There is no doubt that KSR will have a substantial impact on the patent litigation landscape.