KSR Int'l Co. v. Teleflex Inc. et al.: Supreme Court Clarifies Obviousness

Before the Supreme Court's April 30, 2007 decision in KSR Int'l Co. v. Teleflex Inc. et al., 127 S.Ct. 1727 (2007) virtually all patent attorneys were on the edge of their seats. The decision was a clear indication that the Supreme Court disfavored the current state of the law that had been developed by the Federal Circuit for determining whether a patent is invalid for obviousness under 35 U.S.C. '103. The Supreme Court pointed to numerous errors in the Federal Circuit decision and characterized as 'rigid,' 'formalistic,' 'narrow,' 'constricted,' and 'flaw[ed]' the Federal Circuit's requirement that there be proof the claimed combination of elements was arrived at due to a teaching, suggestion, or motivation to combine features from prior art references. Id. at 1739, 1741-42. Instead, the Supreme Court imposed a more flexible approach that sought to emphasize its earlier decisions on obviousness over tests the Federal Circuit had developed to apply the law set forth in those decisions.

The KSR decision replaces the Federal Circuit rule that a patent claim is obvious only if 'some motivation or suggestion to combine the prior art teachings' could be found in the prior art with the more flexible 'functional approach' outlined in the 1966 Supreme Court decision in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684 (1966) and its progeny. See 127 S.Ct. at 1734. The Supreme Court ruled that an obviousness analysis cannot be confined by the formalistic conception of the words 'teaching, suggestion, and motivation,' (the 'TSM test') or by overemphasis on the importance of published articles and the explicit content of issued patents. Id. at 1741.