Supreme Court Makes Getting Certain Patents More Difficult

The Supreme Court has made it more difficult to combine existing inventions into new patentable ones in KSR v. Teleflex. The New York Times calls the decision the "most important patent ruling in years."

KSR had developed an adjustable gas pedal system. Teleflex, which owned a patent that included a claim for "a position-adjustable pedal assembly with an electronic pedal position sensor attached a fixed pivot point," sued for infringement. KSR argued that the claim wasn't valid because it combined known inventions in an "obvious" way and won summary judgment in District Court. Teleflex appealed and the Court of Appeals for the Federal Circuit (CAFC - the court that handles appeals in patent cases) reversed the decision, stating that the District Court has misapplied a general analysis set in the Graham v. John Deere Co. of Kansas City case:

• determine what the previous inventions cover
  
• ascertain the differences between the new invention and the previous ones
  
• note how much skill is necessary to get from the previous inventions to the new one
  
• determine how obvious the new invention is

However, the Federal Circuit added a "teaching, suggestion, or motivation" (TSM) test to help determine the question of how obvious the new invention was. Under this, "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."

The District Court found that Teleflex's claim was obvious, but the Federal Circuit effectively said, "Sorry, but you have to show that a 'skilled artisan' would have been motivated enough to come up with the new invention." Part of that approach required finding published articles or other evidence that someone could have thought of the particular combination before getting summary judgment. If they didn't exist, then the result would be a full jury trial.

The Supreme Court disagreed, saying that the Federal Circuit had "addressed the obviousness question in a narrow, rigid manner that is inconsistent with §103 and this Court’s precedents." All that KSR - and, now, any other company - need do in objecting to a patent on these grounds is show that there's an obvious solution to a problem.

Ironically, while the Court is making it tougher to get the patent, it hasn't made it any easier to necessarily know if a given combination rises to the level of something patentable. As the Internet Patent News Service harshly puts it:

The KSR decision is semantic nonsense, introducing yet more undefined terms (e.g., "real innovation", "extraordinary", etc.) to a statute that is constitutionally meaningless given the lack of definition for its key term, "obvious". What's a "real innovation" - one that occurs in a flash to a genius?

And there's the nub of the problem. The difference between inventing something and not can be one of those slap-yourself-in-the-head moments, when someone realizes that all along there has been a solution to a problem. So if anyone who knew as much as the inventor could have come up with the solution, does that mean that it no longer deserves a patent? A judge becomes a Monday morning quarterback, deciding in hindsight that something was obvious ... or not.