just_n_examiner (just_n_examiner) wrote,
just_n_examiner
just_n_examiner

A Supreme Court Smackdown

KSR Int'l Co. v. Teleflex Inc.

Well, the decision finally came down.

I'm not really a student of Supreme Court decisions [yet]. However, work as an examiner and you can't help but become one eventually.

Nevertheless, from my (uneducated) standpoint, this opinion seems to be more, well, 'severe', than I expected.

Some of the interesting language:

"[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed invention does.
...
Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents."


OUCH! [Did they say 'common sense'? Hmm. Haven't seen those words used in any Office actions in a while.]

"The first error of the Court of Appeals in this case was to [hold] that courts and patent examiners should look only to the problem the patentee was trying to solve.
...
Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed."


"The second error of the Court of Appeals lay in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.
...
Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."


There's that mention of common sense again...

"The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was "obvious to try".
...the fact that a combination was obvious to try might show that it was obvious under § 103."


It might show that it was obvious? Gee, thanks...

"The Court of Appeals, finally, drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias.
...
Rigid preventative rules that deny factfinders recourse to common sense...are neither necessary under our case law nor consistent with with it."


There's that reference to common sense again.


So what will this do to the obviousness analysis as applied by examiners? I don't think anyone really knows that at this point, but I'm sure there are lots of practitioners out there who are convinced that the sky is falling.

It seems as if the Court has said a whole lot about what analysis should not be applied when considering obviousness, but not so much about what (specific) analysis should be applied (other than the fact that every instance of potential obviousness needs to be analyzed based on the circumstances and merits specific to the individual case). Once again, thanks a lot.

It would be nice if there were a concise, predictable bright-line test that could be applied to all obviousness analyses. The CAFC took their best shot with the TSM test, but it didn't work. The Supreme Court said so:

"There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs."

Back to the drawing board.
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