The U.S. Supreme Court gave tech businesses what they wanted — more defense against patent suits. The Court made it easier to get a patent declared invalid for failing to show “real innovation” in development. Technology companies, especially software developers, have been beating a never-ending drumbeat that they are the victims of patent suits, therefore the system must be broken.
In KSR Int’l Co. v. Teleflex Inc. (Opinion 04-1350; Decided April 30, 2007), the Court looked at whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”
The District Court had granted KSR summary judgment after holding that KSR satisfied the TSM test, reasoning the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals. Reversing, the Federal Circuit ruled the District Court had not applied the TSM test strictly enough, having failed to make findings as to the specific understanding or principle within a skilled artisan’s knowledge that would have motivated one with no knowledge of the invention to attach an electronic control to the support bracket as was the case at hand.
The Supreme Court has now decided that the Federal Circuit addressed the obviousness question in a narrow, rigid manner that is inconsistent with §103 and the Supreme Court’s precedents.
The Court set out the original factors for determining obviousness over 40 years ago in Graham v. John Deere Co., which set out an objective analysis for applying §103: “[T]he scope and content of the prior art are . . . determined; differences between the prior art and the claims at issue are . . . ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”
The Federal Circuit has employed a “teaching, suggestion, or motivation” (TSM) test, under which a patent claim is only proved obvious if the prior art, the problem’s nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.
In a suit by Teleflex Inc. that accused KSR International Inc. of using a patented invention for adjustable gas pedals, the Court held that:
(a) When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, §103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions.
(b) Inventions usually rely upon building blocks long since uncovered, and claimed discoveries almost necessarily will be combinations of what, in some sense, is already known. Helpful insights, however, need not become rigid and mandatory formulas. If it is so applied, the TSM test is incompatible with this Court’s precedents. The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. In many fields there may be little discussion of obvious techniques or combinations, and market demand, rather than scientific literature, may often drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.
(c) Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed. Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem.
It will now be more difficult (read: more expensive than ever) to prosecute and obtain patents and easier to invalidate them. Whether or not this is good or bad depends on which side of the lawsuit you fall. The ruling is a victory for technology companies but a defeat for pharmaceutical and biotech industries as well as many other companies that highly value patent protection, e.g., Procter & Gamble Co., GE, DuPont Co. and Johnson & Johnson.
It is clear that the Supreme Court bought into the public sentiment of late that the patent system is somehow broken and needs a fixin’ or all these tech companies (read: campaign contributors) would not be so upset.
Unfortunately, any way you slice it, the Supreme Court took one amorphous, hard-to-define test and replaced it with another amorphous, hard-to-define test. It remains to be seen how advances with “real innovation” are to be determined.