Supreme Court Changes the Rules For Finding An Invention "Obvious"

In a highly anticipated decision, a unanimous Supreme Court reversed the Federal Circuit Court of Appeals in KSR International Co. v. Teleflex Inc. The Federal Circuit had reversed the district court's grant of summary judgment of obviousness, finding that the district court failed to properly apply the "Teaching, Suggestion, Motivation" (TSM) test. The Supreme Court, in reversing the Federal Circuit, held that the Federal Circuit had applied the TSM test in a narrow, rigid manner inconsistent with 35 U.S.C. §103 and Supreme Court precedent, which sets forth an "expansive and flexible" approach for determining obviousness. The Supreme Court noted that although the obviousness analysis must be "explicit," it does not require precise teachings directed to the specific subject matter of the claim at issue. Instead, common sense and common knowledge must be considered. The Supreme Court did not completely abolish the TSM test, however, noting that it can provide "helpful insight" on the obviousness issue, as long as it is not applied as a rigid rule.

Justice Kennedy's opinion makes clear that the most vulnerable patent claims are those grounded in known methods and predictable results. According to the Court, the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results" and 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." Thus, 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."