Intellectual Property Law

As we reported to you after oral argument in KSR Int?l Co. v. Teleflex Inc. et al., last November, the Supreme Court seemed skeptical that the Federal Circuit?s use of the ?teaching, suggestion, or motivation? (?TSM?) test for obviousness was appropriate, calling it at various times ?gobbledygook? and ?worse than meaningless.?  Monday's unanimous decision, authored by Justice Kennedy, outlines the errors of the Federal Circuit in taking the potentially ?helpful insight? of TSM and creating a ?rigid and mandatory formula? that is ?incompatible with [ ] precedents.?  KSR had insisted that TSM, which has been criticized in the literature, is an unauthorized interpolation which lowers the standard of patentability and needlessly complicates determinations of obviousness.  Teleflex, joined by such amici as the ABA, AIPLA, the Intellectual Property Owners Association and the Federal Circuit Bar Association, defended the test and the Federal Circuit?s decision below as both authorized by precedent and necessary to avoid hindsight bias ? what seems obvious in retrospect may not have been so at the time.   

The 9-0 decision decries the ?rigid approach? of the Federal Circuit?s application of the TSM test as being ?inconsistent? with the ?expansive and flexible approach? to assessing obviousness under Section 103(a) of the Patent Act.  The Supreme Court acknowledged that the Federal Circuit as of late has been applying the TSM case more flexibly, citing DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006) which was, perhaps not coincidentally, decided after the Supreme Court granted cert in the KSR case.  The Court did not comment on whether the Federal Circuit?s newly broadened application of TSM passed muster, and said only that the Federal Circuit?s ?fundamental misunderstandings? of the obviousness test required reversal and remand in KSR.  In enumerating those errors, the Court noted that ?[t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.?  Slip Op. at 16.  The second error was an ?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.  This leads to the erroneous conclusion ?that a patent claim cannot be proved obvious merely by showing that the combination of elements was ?obvious to try.??  Id. at 17.  And finally, the opinion acknowledged the potential for ?hindsight bias? that Teleflex and the amici were so concerned about, but found the application of ?[r]igid preventative rules that deny the factfinders recourse to common sense? unnecessary to prevent such bias.  Id.

Will this result in a kinder, gentler application of TSM to determining obviousness under Section 103?  Stay tuned.