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 and the Patent and Trademark Office — 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 enourmous importance that will likely be viewed as a pivot point in United States patent law in years to come.
Rigid application of the teaching / suggestion / motivation test as a litmus test for obviousness is error
Since its announcement in 1966, Graham v. John Deere has provided the controlling framework for an obviousness analysis under the patent law. The teaching / suggestion / motivation (TSM) test was never intended to replace Graham as a litmus test for obviousness. Rather, the TSM test served as a framework for determining when a combination of two or more references as part of an obviousness analysis was proper.
Over the years, many people had, in effect, improperly elevated the TSM test to one that absolutely controls the obviousness inquiry. Here, the Supreme Court expressed its belief that the Federal Circuit, in this case, crossed that line by applying the test so rigidly that, in essence, it operated as a litmus test for obviousness.
The Courts succinctly stated the status of the test vis-a-vis Graham and its improper elevation to an obviousness litmus test:
”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." (emphasis added)
Teaching Suggestion Motivation test — get back behind the yellow line
The Supreme Court did not reject the TSM test out of hand. Instead, the Court put the test in its proper place vis-a-vis the Graham factors, noting that "[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation...." (emphasis added)
Make no mistake, though. While the Court stopped short of eliminating the test altogether, it did leave it gutted and wanting for a purpose. The Court noted that the test captures "a helpful insight," but warned that it is incompatible with Supreme Court precedent when applied as "a rigid rule that limits the obviousness inquiry...." The Federal Circuit committed error in this case by applying the test in this rigid manner.
Indeed, the Court even went so far as to note the possibility that the Federal Circuit's recent defenses of the TSM test in Dystar Textilfarben v. C.H. Patrick and Alza v. Mylan Labs "may describe an analysis more consistent with our earlier precedents and our decision here.” (emphasis added). Note, though, that the Court could not address the substance of these opinions and indeed labeled the issue as "a matter for the Court of Appeals to consider in its future cases."
Thus, the TSM test lay on the battlefield without a clear purpose. We must now anxiously await to see if the Federal Circuit is able (or chooses) to successfully maintain the test in the shadow of KSR.
Meet the new boss, same as the old boss
So what does an obviousness analysis look like in light of KSR? This is simple, really. It looks the same as it always has — Graham v. John Deere controls. The Court made this abundantly clear:
”[T]he [Graham] factors continue to define the inquiry that controls. If a court, or a patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under §103."
The TSM test may indeed have a place in a proper Graham analysis. As indicated above, we'll have to wait for the Federal Circuit to resolve this issue. Following KSR, though, it is clear that the use of the test as a litmus test for obviousness in place of a Graham analysis is clearly impermissible:
”The obviousness inquiry 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."
Out with the old litmus test, in with the new?
KSR provides an interesting contrast. While the Court held that the Federal Circuit erred by rigidly applying the TSM test as a litmus test for obviousness, it pronounced several obviousness 'principles' that, arguably, might themselves be viewed as litmus tests:
”The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (emphasis added) (discussing United States v. Adams, 383 U.S. 39, 40 (1966) (the companion case to Graham), Anderson's Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969), and Sakraida v. AG Pro, Inc., 425 U.S. 273 (1976)).
”If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” (emphasis added).
”One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims." (emphasis added).
Hold the hindsight bias, put the common sense on the side
Without offering a detailed explanation, the Court noted that the Federal Circuit "drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias."
A primary purposes of the TSM test has been, of course, to ward of 'impermissible' hindsight bias. The test stood as a bar to the practice of simply finding each and every element of a claim in a prior art reference and subsequently combining all references to mount an obviousness attack on the claim. The Federal Circuit has repeatedly warned against the danger of such a hindsight-guided approach to an obviousness analysis.
In its brief discussion of hindsight bias, the Supreme Court again seemed frustrated with the Federal Circuit's rigid approach to the issue, noting that "[r]igid preventative rules that deny factfinders recourse to common sense...are neither necessary under our case law nor consistent with it."
Thus, in light of KSR, it appears that common sense knowledge, whether guided by hindsight or not, properly plays a role in a Graham analysis.
The 'dangers' of hindsight bias, which the Federal Circuit has repeatedly warned against, are thus on hold, much like the TSM test itself. Importantly, the Court, citing Graham itself, noted that "[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” (emphasis added).
In certain circumstances, obvious to try might show obviousness
The Court specifically noted that the Federal Circuit erred when it concluded that "a patent claim cannot be proved obvious merely by showing that the combination of elements was 'obvious to try'." (citation omitted). The Court again rejected the Federal Circuit's rigid approach to this issue, explaining that, in some circumstances, "the fact that a combination was obvious to try might show that it was obvious under §103."
According to the Supreme Court, the circumstances in which such facts might support the legal conclusion of obviousness appear quite broad:
”When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.” (emphasis added).
Thus, the fact that something was obvious to try might be sufficient to prove obviousness when:
a design need or market pressure to solve a problem existed;
there was a finite number of identified predictable solutions; and
the success anticipated by trying such solutions was realized.
Teaching away and secondary considerations still serve as counterpunches
By noting the absence of both a showing of a proper teaching away and of persuasive secondary considerations, the Court implicitly reinforced the status of these principles as counterpunches in a proper Graham analysis.
Summary judgment appropriate when Graham factors are not in material dispute
The Court also noted that summary judgment can be appropriate under a Graham analysis when "the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors...."
Rationale underlying the presumption of validity diminished here
In dicta that can only be viewed as a signal to Congress, the Court attacked the presumption of validity enjoyed by issued United States patents. While refusing to consider an inequitable conduct issue, the Court wounded the very rationale that underlies the presumption — the perceived expertise of the Patent and Trademark Office:
”We...think it appropriate to note that the rationale underlying the presumption — that the PTO, in its expertise, has approved the claim — seems much diminished here." (emphasis added).
This simple note shows that the Court has reservations about the presumption of validity as it applies to patents, such as the patent-in-suit, that avoid a proper Graham analysis during prosecution. It is particularly interesting to consider this bit of dicta alongside the fact that the Patent and Trademark Office rarely conducts full Graham analyses when rejecting claims as obvious.