My review of the KSR v. Teleflex opinion is now available on FedCirc.us. I’ve reproduced the summary below.
In KSR v. Teleflex, a unanimous Supreme Court reminded the Court of Appeals for the Federal Circuit that Graham v. John Deere controls the obviousness inquiry and warned that a rigid application of the teaching / suggestion / motivation test as a litmus test for obviousness is inconsistent with the Graham framework. Stopping short of rejecting the TSM test outright, the Supreme Court slapped the test into submission, leaving it gutless and wanting for a purpose. Simply put, the TSM shortcut for an obviousness analysis is no longer available. The Court’s decision immediately focuses the obviousness spotlight back onto the framework that has controlled the issue for more than forty years, forcing everyone who has grown comfortable with the TSM litmus test shortcut – including the Federal Circuit, the Patent and Trademark Office, and the patent bar – to return to full and proper Graham analyses when assessing the obviousness of patent claims. Importantly, the Court’s opinion touches on several other issues, including the roles of ‘hindsight bias’ and common sense in an obviousness inquiry, a question about the rationale for affording a presumption of validity to the patent-in-suit – which avoided a Graham analysis during prosecution, and a rejection of the rigid rule that ‘obvious to try’ is per se insufficient to show obviousness. KSR v. Teleflex is, without doubt, a case of enormous importance that will likely be viewed as a pivot point in United States patent law in years to come.
Related posts:
- KSR v. Teleflex – The Supreme Court reveals its frustration with the motivation/suggestion test…and contempt for the Federal Circuit
- While the Supreme Court considers KSR v. Teleflex, one hand of the Federal Circuit polishes the TSM test and the other tarnishes it
- San Jose Mercury News – The Federal Circuit has contributed mightily to the madness
- CAFC: Hey reformers…obviousness law is just fine, thank you
- Here we go again – US Supreme Court to consider reforming standard for obviousness
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