When "Obvious" Is Not Obvious: The Supreme Court Reviews a Key Legal Test for Patentability

The notion that patents will not be granted for "obvious" inventions appears at first glance to be, well, obvious. Determining which inventions meet the legal standard for obviousness, however, is far from simple. The analysis is highly fact-intensive and requires consideration of many factors. Moreover, the test for determining obviousness has recently come under attack in the wake of the U.S. Supreme Court's decision to grant certiorari in KSR v. Teleflex, an appeal that challenges the test for obviousness created by the Court of Appeals for the Federal Circuit. Recent decisions coming out of the Federal Circuit have attempted to defend and clarify the test ahead of the Supreme Court's review. This article will examine the current legal definitions and tests for "obviousness," the challenge posed in KSR v. Teleflex, and the possible implications of the Supreme Court's review.

The Supreme Court's Graham Factors

Under 35 U.S.C. § 103, a patent claim is obvious when the differences between the claimed invention and the prior art "are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." When discussing the requirements for obviousness under § 103, the landmark case is Graham v. John Deere Co., 383 U.S. 1 (1966). In the Graham case, the Supreme Court established factors to be considered when making an obviousness determination: (1) the scope and content of the prior art; (2) the level of skill of a person of ordinary skill in the art; (3) the differences between the claimed invention and the teachings of the prior art; and (4) the extent of any objective indicia of non-obviousness. 383 U.S. at 17-18.

The Federal Circuit's "TSM" Test

The Federal Circuit has further fleshed out the requirements for obviousness by establishing the so-called Teaching, Suggestion, Motivation ("TSM") test. When a claim of obviousness is made based on multiple pieces of prior art, the TSM test (as the name indicates) requires some teaching, suggestion, or motivation that would have led a person of ordinary skill in the art to combine the prior art references in the matter claimed in the patent. According to the Federal Circuit, the TSM test is intended to prevent "statutorily proscribed hindsight reasoning when determining the obviousness of an invention." Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). In other words, some inventions — like putting together a puzzle — only appear obvious with the benefit of hindsight. The TSM test is intended to combat this type of retrospective analysis by prohibiting one from picking and choosing, using the advantage of hindsight, elements of the patented invention from various sources of prior art. Instead, the TSM test states that there must be some teaching, suggestion, or motivation to combine the various pieces of prior art. Furthermore, the general understanding for some time has been that the teaching, suggestion, or motivation to combine must be explicitly contained in the prior art.

KSR v. Teleflex — The Supreme Court Reviews the TSM Test

The Federal Circuit's TSM test has now come under the Supreme Court's scrutiny in the KSR v. Teleflex case. This case involves a patent relating to an adjustable pedal assembly for use with automobiles having electronic throttle control. The district court granted summary judgment, holding that both adjustable gas pedals and electronic sensors were well known in the art, and that it would have been obvious to combine them. The Federal Circuit, in an unpublished opinion, vacated and remanded the district court's judgment and held that the district court failed to correctly apply the TSM test. Although the district court did acknowledge the TSM test in its order, the Federal Circuit found the analysis to be incomplete because the district court did not make specific findings as to whether there was a teaching, suggestion, or motivation to combine the prior art in the particular manner claimed by the patent.

The Supreme Court granted certiorari in June 2006 to consider the Federal Circuit's TSM test for the first time ever. The patent community has been extremely interested in the case, and numerous amicus curie briefs have been filed, which both support and attack the TSM test. Notable supporters of the TSM test include the major patent bar associations, General Electric, 3M, and Procter & Gamble. Notable detractors include Intel, Cisco, Microsoft, and many academics. Even more noteworthy, however, is the degree to which the Federal Circuit itself appears to be interested in the Supreme Court's review of its TSM test.

In several recent opinions, the Federal Circuit has defended its TSM test in advance of the Supreme Court's review and refuted the common understanding that an explicit teaching, suggestion, or motivation to combine must be found within the prior art. See In re Kahn, 441 F.3d 977 (Fed. Cir. 2006); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006); Alza Corp. v. Mylan Labs, Inc., 464 F.3d 1286 (Fed. Cir. 2006); Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006). The Federal Circuit has even gone so far as to specifically address its critics, stating that "[i]n contrast to the characterization of some commentators, the suggestion test is not a rigid categorical rule. . . . ‘[T]here is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention.'" Dystar, 464 F.3d at 1361 (quoting Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997)).

In the Dystar case, the jury found that the patent at issue was infringed and not invalid as anticipated or obvious. On appeal, the Federal Circuit reversed, holding the patent to be obvious. The Federal Circuit declared that the patentee (and certain commentators) had misunderstood its TSM test in arguing that it required the cited references themselves to explicitly contain a teaching, suggestion, or motivation to combine. Instead, the Federal Circuit stated that "evidence of a motivation to combine need not be found in the prior art references themselves, but rather may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved. . . When not from the prior art references, the ‘evidence' of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied." Dystar, 464 F.3d at 1366 (quotations omitted). The Federal Circuit further appeared to vent its frustration, stating:

It is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly. Obviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test. Dystar's argument and the above-cited commentary highlight the danger inherent in focusing on isolated dicta rather than gleaning the law of a particular area from careful reading of the full text of a group of related precedents for all they say that is dispositive and for what they hold. When parties like Dystar do not engage in such careful, candid and complete legal analysis, much confusion about the law arises and, through time, can be compounded.

Oral argument before the Supreme Court in the KSR v. Teleflex case was held on November 28, 2006. During the argument, the justices appeared to be critical of the TSM test as the exclusive means for determining obviousness. Several justices appeared to find the Federal Circuit's TSM test to be particularly confusing. Indeed, Justice Breyer complained that "I just don't understand what is meant by the term ‘motivation,'" Justice Scalia referred to the test as "gobbledygook" and Chief Justice Roberts contended that it is "worse than meaningless." Some justices also appeared to be critical of the Federal Circuit's recent attempts to clarify its TSM test. Justice Scalia, for example, contended that "in the last year or so, after we granted cert in this case after these decades of thinking about [the TSM test], [the Federal Circuit] suddenly decides to polish it up."

Patent practitioners everywhere will be watching to see how the Supreme Court treats the Federal Circuit's TSM test. Any change in the well-established test would have a major impact on both patent prosecution and litigation—opening the door to scores of challenges to existing patents. The Supreme Court's opinion is expected sometime before the end of the Court's term in June 2007.