By Donald Zuhn --
In an eagerly awaited decision regarding the Federal Circuit's "teaching, suggestion, or motivation" (TSM) test for analyzing obviousness, the Supreme Court on Monday issued its ruling in KSR Int'l Co. v. Teleflex Inc. In a 24-page opinion, the Court reversed the Federal Circuit's determination of validity with respect to claim 4 of U.S. Patent No. 6,237,565 and found the claim to be invalid as obvious under 35 U.S.C. § 103.
Teleflex initiated the present litigation when it accused KSR of infringing claim 4 of the '565 patent. KSR, in turn, countered that this claim was invalid as obvious. The District Court granted summary judgment in KSR's favor, finding "little difference" between the combined teachings of the prior art and the asserted claim. In addition to analyzing the issue pursuant to Graham v. John Deere Co. of Kansas City, the District Court also found claim 4 to be obvious under the Federal Circuit's TSM test.
The Federal Circuit reversed, determining that the District Court had not been "strict enough" in applying the TSM test. In particular, the Federal Circuit found that the District Court had failed to make "finding[s] as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention" to make the claimed combination.
The Supreme Court began its analysis by rejecting the Federal Circuit's "rigid" application of the TSM test in the present case, stating that "[t]hroughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here." After discussing three of its post-Graham decisions (United States v. Adams; Anderson's-Black Rock, Inc. v. Pavement Salvage Co.; and Sakraida v. AG Pro, Inc.), the Court concluded that its precedents make clear that a proper analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."
It is important to note that while the Court rejected the Federal Circuit's "rigid" application of the TSM test in the present case, the Court did not discount that the test might serve as a useful analytical device in the context of a proper obviousness analysis. In fact, the Supreme Court observed that when the Federal Circuit's predecessor first established the TSM test, it had "captured a helpful insight," and further, that "[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis." The Court concluded, however that "[h]elpful insights . . . need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents."
Note: Patent Docs plans to provide additional commentary regarding this important Supreme Court decision and its impact on biotech/pharma patent prosecution and litigation in the coming days and weeks.
KSR Int'l Co. v. Teleflex Inc. (2007)
Opinion by Justice Kennedy