U.S. Supreme Court Fuels Uncertainty In Patent Law

May 2007

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

Ruling Calls for Flexibility in Application of "Teaching, Suggestion, Motivation" Test

KSR International Co. v. Teleflex Inc. et al.

A recent U.S. Supreme Court decision has paved the way for more uncertainty in obtaining and enforcing patents. On April 30, 2007, in a unanimous opinion, the U.S. Supreme Court in KSR International Co. v. Teleflex Inc. et al., held that application by the Court of Appeals for the Federal Circuit (CAFC) of a well known test for obviousness was “flawed” and “contrary to common sense.”

Teaching, Suggestion, Motivation Test - Down But Not Out

Teleflex sued KSR for infringement of a patent claim directed to an adjustable pedal assembly that was combined with an electronic throttle control. The claimed invention was a novel combination of known elements. At the district court, KSR prevailed on a motion for summary judgment of noninfringement based on obviousness. On appeal, the CAFC vacated the district court’s judgment, holding that the district court applied an “incomplete teaching, suggestion, motivation” test in its determination of obviousness. The U.S. Supreme Court, in reversing the judgment of the CAFC, stated that, although the “teaching, suggestion, motivation” test is not necessarily inconsistent with its precedent in Graham, the CAFC’s application of the rule transformed the “general principle into a rigid rule limiting the obviousness inquiry.”

Explicit Teachings of Prior Art in View of "Common Sense" and "Known Problems"

The CAFC was criticized by the Supreme Court for “overemphasis on the importance of published articles and the explicit content” of prior art references, and for its failure to recognize that the “[r]esults of ordinary innovation are not the subject of exclusive rights under the patent laws.”

Several factors were cited by the Court, beyond explicit teachings of prior art references, that are to be taken into consideration in an obviousness analysis. For example, a court “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” to determine whether a claimed invention is obvious. The Court also suggested that “market demand, rather than scientific literature” may provide evidence of mere “ordinary” innovation, because in “many fields…there may be little [published] discussion of obvious techniques or combinations.”  Accordingly, the Court found that the presence of “market pressure to solve a problem” and “predictable solutions,” may be used to show that an invention is obvious.

Implicit Teachings of the Prior Art and Flexibility in Applying the Teaching, Suggestion and Motivation Test

As noted by the Supreme Court, since its grant for certiorari in KSR v. Teleflex, the CAFC has described the “teaching, suggestion, motivation” test as a flexible, non-rigid test in which motivation in the prior art is not required. Specifically, “implicit” motivation can be found in “common knowledge,” the “prior art as a whole” and the “nature of the problem itself.” (Alza v. Mylan, 464 F.3d 1286 (Fed. Cir. 2006); Dystar v. Patrick, 464 F.3d 1356 (Fed. Cir. 2006); and Pfizer v. Apotex, Fed. Cir., No. 2006-1261, 3/22/07).

Considerations

Expect the Unexpected

Although, the Supreme Court’s much-awaited opinion leaves considerable room for interpretation of how statutory non-obviousness is to be applied, care should be taken in assessing whether differences from a claimed invention arguably represent more than a “simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.” For example, at least one threshold for non-obviousness articulated by the Supreme Court, is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” The U.S. Supreme Court’s decision makes obtaining and enforcing patents more uncertain.  The decision will be relied upon during examination of patent applications at the U.S. Patent and Trademark Office to raise the bar for patentability.

Similarly, litigants in patent enforcement actions will find supporting language and expert testimony to attempt to invalidate existing patents. Therefore, patent applicants, owners and potential inventors should be aware, more than ever, of the broad “diversity of inventive pursuits and of modern technology” underpinning standards of patentable innovation.

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May 2007

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

Ruling Calls for Flexibility in Application of "Teaching, Suggestion, Motivation" Test

KSR International Co. v. Teleflex Inc. et al.

A recent U.S. Supreme Court decision has paved the way for more uncertainty in obtaining and enforcing patents. On April 30, 2007, in a unanimous opinion, the U.S. Supreme Court in KSR International Co. v. Teleflex Inc. et al., held that application by the Court of Appeals for the Federal Circuit (CAFC) of a well known test for obviousness was “flawed” and “contrary to common sense.”

Teaching, Suggestion, Motivation Test - Down But Not Out

Teleflex sued KSR for infringement of a patent claim directed to an adjustable pedal assembly that was combined with an electronic throttle control. The claimed invention was a novel combination of known elements. At the district court, KSR prevailed on a motion for summary judgment of noninfringement based on obviousness. On appeal, the CAFC vacated the district court’s judgment, holding that the district court applied an “incomplete teaching, suggestion, motivation” test in its determination of obviousness. The U.S. Supreme Court, in reversing the judgment of the CAFC, stated that, although the “teaching, suggestion, motivation” test is not necessarily inconsistent with its precedent in Graham, the CAFC’s application of the rule transformed the “general principle into a rigid rule limiting the obviousness inquiry.”

Explicit Teachings of Prior Art in View of "Common Sense" and "Known Problems"

The CAFC was criticized by the Supreme Court for “overemphasis on the importance of published articles and the explicit content” of prior art references, and for its failure to recognize that the “[r]esults of ordinary innovation are not the subject of exclusive rights under the patent laws.”

Several factors were cited by the Court, beyond explicit teachings of prior art references, that are to be taken into consideration in an obviousness analysis. For example, a court “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” to determine whether a claimed invention is obvious. The Court also suggested that “market demand, rather than scientific literature” may provide evidence of mere “ordinary” innovation, because in “many fields…there may be little [published] discussion of obvious techniques or combinations.”  Accordingly, the Court found that the presence of “market pressure to solve a problem” and “predictable solutions,” may be used to show that an invention is obvious.

Implicit Teachings of the Prior Art and Flexibility in Applying the Teaching, Suggestion and Motivation Test

As noted by the Supreme Court, since its grant for certiorari in KSR v. Teleflex, the CAFC has described the “teaching, suggestion, motivation” test as a flexible, non-rigid test in which motivation in the prior art is not required. Specifically, “implicit” motivation can be found in “common knowledge,” the “prior art as a whole” and the “nature of the problem itself.” (Alza v. Mylan, 464 F.3d 1286 (Fed. Cir. 2006); Dystar v. Patrick, 464 F.3d 1356 (Fed. Cir. 2006); and Pfizer v. Apotex, Fed. Cir., No. 2006-1261, 3/22/07).

Considerations

Expect the Unexpected

Although, the Supreme Court’s much-awaited opinion leaves considerable room for interpretation of how statutory non-obviousness is to be applied, care should be taken in assessing whether differences from a claimed invention arguably represent more than a “simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.” For example, at least one threshold for non-obviousness articulated by the Supreme Court, is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” The U.S. Supreme Court’s decision makes obtaining and enforcing patents more uncertain.  The decision will be relied upon during examination of patent applications at the U.S. Patent and Trademark Office to raise the bar for patentability.

Similarly, litigants in patent enforcement actions will find supporting language and expert testimony to attempt to invalidate existing patents. Therefore, patent applicants, owners and potential inventors should be aware, more than ever, of the broad “diversity of inventive pursuits and of modern technology” underpinning standards of patentable innovation.

PDF FileView as PDF

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