Skip to content

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


2 thoughts on “Thoughts on KSR”

  1. I’ve only read the decision once but it has the feel of a brokered piece of work with bits and pieces in to satisfy multiple points of view. Rather than have the confusion of three separate opinions (like eBay) we have all of these different points of view war-ing in a single opinion.

  2. I must agree that it is clear that no one on the Supreme Court has actually had any real life business experience. (You didn’t say that directly, but I will). The quote, “any need or problem known in the field of endeavor …” renders a combination of known elements obvious is preposterous. Think about it, when was the last “invention” you filed that wasn’t a combination of other things put together is a far more clever fashion.

    The Court itself stated, ” … inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”

    Let’s summarize what the SC has said: (1) Almost all inventions are combinations of previously known elements, and (2) any known problem or known need provides a motivation to combine previously known elements rendering the invention (new combination obvious.

    Thus, almost all “inventions” are obvious. The only out seems to be for “unexpected results” or “teaching away”.

    This is nonsense. As a farcical example consider that Peanut Butter and Chocolate existed as desert options long before the Reese’s Peanut Butter cup, but I doubt anyone would have considered the combination obvious at the time of its introduction. Indeed, their whole marketing campaign showed the “cleverness” of combining the two.

    As a non-farcical example consider that there has always been a “need” to make electronics smaller, and transistors have been known forever, so the PNP gate was just an obvious reaction to market driven forces with known elements.

Comments are closed.