KSR: An ovemphasis of the importance of published articles?

This analysis of the Court’s decision is from Lawrence Ebert, a New Jersey patent lawyer whose blog IPBiz covers intellectual property news.

At page 11 of the Supreme Court’s opinion in KSR v. Teleflex, Justice Kennedy writes: “We begin by rejecting the rigid approach of the Court of Appeals.” In this, Justice Kennedy is treating the matter as a combination of known elements case, and notes that the combination of old elements is likely to be obvious when it (the combination) does no more than yield predictable results. Kennedy brings up previous cases, first the Adams battery case from 1966, then the asphalt case from 1969, and finally the Sakraida case from 1976. At page 13, one has discussion of “the predictable use of prior art elements according to their established functions.”

Kennedy notes that “To facilitate review, this analysis should be made explicit,” citing to the CAFC, 441 F.3d 977, BUT Kennedy also notes “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” At page 15, Kennedy writes: “Helpful insights, however, need not become rigid and mandatory formulas; and when it so applied, the teaching-suggestion-motivation (TSM) test is incompatible with our precedents.” Kennedy speaks of an “overemphasis on the importance of published articles and the explicit content of issued patents.” Kennedy directly addresses concerns put forth by the IT community: “In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.” [Think about that sentence for a moment. Think about how it might be applied in the Thomson / WARF stem cell matter.] Kennedy concludes this section of the opinion with the statement: “But when a court transforms a general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.”

The opinion gets interesting at page 16, at the point wherein the Court identifies specific errors of the Court of Appeals for the Federal Circuit. Keep in mind, the CAFC KSR opinion was NOT precedential, and only found that the district court had not written down a reason to combine the references.

Speaking of a known problem for which there was an obvious solution encompassed by the patents claims, Kennedy noted that the first error of the CAFC was holding that courts/patent examiners should only look to the problem that the patentee was trying to solve. Huh? The punchline is that “any need or problem in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining.” This thinking shows up again at page 20 of the opinion: “The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.” This analysis, however broad, is directed to the TSM test, and shows that the TSM inquiry may be more easily answered than indicated by the CAFC.

HOWEVER, the second error of the CAFC identified by the Supreme Court has implications transcending the TSM inquiry. At pages 16-18 one gets into the revolutionary aspects of the opinion. In the sentence beginning “Common sense teaches …” and going through to the sentence “A person of ordinary skill is also a person of ordinary creativity, not an automaton,” one sees an “upgrade” in the “person of ordinary skill” category. At page 17, it looks like it’s curtains for the “obvious to try with a reasonable expectation of success” standard. Something can be obvious under 35 USC 103 JUST BECAUSE it’s obvious to try. The Supreme Court noted the issue of hindsight bias, but concluded that “rigid preventative rules” are not the answer. In this sense, the Supreme Court decision looks like that predicted here by IPBiz along Daubert lines.

At page 18, the Supreme Court offers the CAFC “a way out” via the use of post-KSR decisions of the CAFC.