Supreme Court Ruling on “Obviousness” Creates Greater Uncertainty in the Patent World
(A Throwback to 1966?)
On April 30, 2007, the U.S. Supreme Court issued a highly-anticipated ruling on an important legal question – what makes an invention “obvious” and therefore unpatentable? Rather than clarifying the law, the Supreme Court struck down a lower appeals court’s test and reverted to a state of the law that existed in 1966, which expressed an “expansive and flexible approach” to considering obviousness. KSR International Co. v. Teleflex Inc. et al., 550 U.S. ____ (2007).
According to the Supreme Court, the Court of Appeals for the Federal Circuit (CAFC), which hears appeals in all patent cases, should not have been so rigid in considering the obviousness of an invention for an automobile accelerator pedal. The CAFC had ruled that a District Court was not strict enough in applying the “teaching, suggestion or motivation” (TSM) test when it granted summary judgment that the pedal invention was obvious. Under this test, a patent claim is only proved obvious if some motivation or suggestion to combine prior art teachings can be found in the prior art.
The April 30, 2007, unanimous Supreme Court ruling called the Federal Circuit’s teaching-suggestion-motivation (TSM) test a helpful insight for determining obviousness, but said that it should not be used as a mandatory formula that limits the expansive and flexible obviousness inquiry under the case of Graham v. John Deere Co., 383 U.S. 1 (1966).
The decision has widespread long-term implications for patents and the patent system, including:
• Will patents become less or more valuable because of this decision?
• Will the number of patents filed drop off drastically?
• Will judges and juries strike down more patents as obvious?
Many patent lawyers presently think the decision is likely to mean two things in the short term: (1) it will be harder to obtain a valid patent from the U.S. Patent and Trademark Office – examiners are likely to rule more inventions obvious and unpatentable during patent examination, and (2) more patents will be challenged in the courts as obvious and invalid, likely resulting in more litigation and greater difficulty in enforcing patents.
Other patent lawyers think that the decision will bring an improvement to the patent system for these reasons: (1) there may be a decline in the large numbers of low quality, “commodity” patents filed by larger companies, (2) this decline will bring a welcome relief to the U.S. Patent and Trademark Office, which has been inundated by such commodity filings; this should improve patent examination quality, (3) high quality patents directed to significant advances, beyond that of ordinary innovation, will become much more valuable, and (4) any patent that survives the expansive obviousness test may become unassailable.