Last April, the US Supreme Court faced a patent infringement suit that turned on whether the patent was invalid under an obviousness test. CPA’s IP manager Ken Sheets explains the importance of this decision under US law

After much hype among the patent bar and litigation attorneys that all patents are now suspect, the proverb that says ‘the more things change, the more they stay the same’ may be the perfect comment on the US Supreme Court’s ruling on obviousness in April 2007. One year on, the effects of this case (KSR v Teleflex) are only just beginning to be felt.

Precedent in this field had been set by the bellwether case on obviousness, Graham v John Deere in 1966. In KSR, outlined the teaching suggestion- motivation (T-S-M) test, which was implemented by the Court of Appeals for the Federal Circuit was used to interpret the Graham factors for analysing obviousness. Whether a patent claim is obvious over the prior art depends on who you ask, but in the patent courts at least, it is measured by the response of a ‘person having ordinary skill in the art’ under US statutory law.

The ordinary man
In KSR, the Court stated: ‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’ The court went on to add that such a person would have ‘common sense’ enough to determine if the patent claim was obvious because he could find the invention ‘implicitly in the prior art’ and whether the invention was ‘obvious to try’. This brings the examining standards closer to European examination guidelines (and the British ideal of ‘the reasonable man’), but it also gives courts and examiners ammunition to destroy patents.

Whether a patent claim is obvious over the prior art depends on who you ask, but in the patent courts at least, it is measured by the response of a ‘person having ordinary skill in the art’ under US statutory law.

The T-S-M approach was not invalidated in KSR, but the Supreme Court did say that it should be just one of a number of factors that can be used to determine obviousness. The USPTO has written new guidelines to examiners based on the court’s opinion.
However, according to a memo from the Deputy Commissioner for Patent Operations of May 2007: ‘In formulating a rejection... it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.’

Thus, examiners have to continue their same practice of identifying evidence for obviousness. Indeed, the ruling has barely made a dent in the internal appeals board at the USPTO. The board’s before-and-after KSR statistics for denying patents on obviousness moved only a few percentages towards the denial side.

Interestingly, Judge Rader of the Federal Circuit Court said that his decisions on the appeals court ‘did not require one iota of change’ following the KSR ruling, because he had been deciding obviousness, including the older Graham case factors anyway. Likewise, in the KSR case, Justice Kennedy cited the patent clause in the US Constitution, when writing, ‘application of the bar (on patents claiming obvious subject matter) must not be confined within a test or formulation too constrained to serve its purpose’. Were it otherwise, ‘patents might stifle, rather than promote, the progress of useful arts’.

Nonetheless, change is most definitely afoot. In the US, patent holders, corporations, the government, and the courts all recognise something needs to change in the way patents are administered and litigated. Congress is debating the Patent Reform Act, the USPTO is litigating the continuation rules, and the Supreme Court is taking up many more patent cases than usual. While KSR may not create a sea of change in patent laws on its own, it is a signal that the changes are coming.


This article was first published in IP Review, issue 22

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