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Supreme Court Decision Update - KSR International Co. v. Teleflex Inc.
The first of today’s two patent cases is KSR International Co. v. Teleflex Inc. (PDF of the opinion), and it’s about the obviousness requirement. As Dennis Crouch succinctly explains, the unanimous opinion authored by Justice Kennedy “appears to simply refine the particulars of how prior-art can be combined and when a ‘combination patent’ will be seen as obvious.” This, Crouch says, means that “patents will be more difficult to enforce and easier to invalidate.”
The facts behind this case are quite involved, delving into several patents relating to adjustable car pedals. The important thing to know to understand this case is that Teleflex got a patent for one such adjustable accelerator pedal which arguably did little more than combine technologies and aspects covered by earlier patents (so-called “prior art”). Teleflex then sued KSR for infringement of this patent, which is how this got in front of the courts.
Now the patent laws say that you can’t get a patent when the covered technology would be obvious to one skilled in the art, and KSR argued that Teleflex’s patent was obvious, meaning it should be invalidated. Both the District Court and the Court of Appeals for the Federal Circuit disagreed, ruling that Teleflex’s patent wasn’t obvious and was therefore valid.
When the Federal Circuit looks at the question of a patent’s obviousness, it applies “the teaching, suggestion or motivation’ test (TSM test), under which a patent claim is only proved obvious if ‘some motivation or suggestion to combine the prior art teachings’ can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.” KSR says this test is no good, and the Supremes basically agree.
In a unanimous opinion, Kennedy says that the Federal Circuit’s test is too narrow. He points out several flaws in the way the Federal Circuit analyses patent obviousness, and wraps things up with this little bit about how we need to basically balance the need for restrictive patents with the need for allowing room for growth and invention of new things:
We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as 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. See U.S. Const., Art. I, § 8, cl. 8. These premises led to the bar on patents claiming obvious subject matter established in Hotchkiss and codified in § 103 [of the Patent Act]. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose.
