Thoughts on KSR

The patent bar will deconstruct the Supreme Court’s opinion today in KSR v. Teleflex — rejecting as overenthusiastic the Federal Circuit’s embrace of the “teaching, suggestion, motivation” (TSM) standard in applying Section 103 of the Patent Act, which requires that a patent issue only for inventions that are “nonobvious.”  Obviousness, the Supreme Court makes clear, can be established even if prior art references do not explicitly “teach toward” the invention. 

A little flexibility can go a long way, as the Federal Circuit itself recognized after the Supeme Court accepted certiorari in KSR itself.  What remains to be seen is how the district courts and the Federal Circuit will make sense of the Supreme Court’s somewhat opaque and occasionally florid instructions regarding how and when to take advantage of Section 103’s new flexibility.  Those include the following: 

• Was there “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.  To facilitate review, this analysis should be made explicit.” (Slip op. at 14)
• “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” (Id.)
• “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 trends.” (Id. at 15)
• The Federal Circuit erred twice.  Its first mistake was “holding that courts and patent examiners should look only to the problem the patentee was trying to solve”; instead, the question is “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”  Second, the court erred “in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.” (Id. at 16)  “Common sense teaches . . . that familiar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” (Id. at 16-17)
• “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” (Id. at 17.)
• “Where 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.” (Id. at 17)
• “[A]s 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.” (Id. at 24)

I’ve highlighted a few terms merely to illustrate that Justice Kennedy, writing for the Court, may have let his pen run away from him.  In practice — in the Patent Office and in the district courts — what will these things mean?

Link:  Dennis Crouch at Patently O has the text of the opinion