Michael Blaine Brooks, PhD(Engr.), PE(EE)
Patent Attorney & Professional Electrical Engineer
Dear Reader,
On April 30, 2007, the US Supreme Court issued its ruling in the patent infringement case of KSR Int'l v. Teleflex, Inc., 550 U.S. ___ (2007). As part of its defense, KSR argued a patent claim being asserted by Teleflex would have been obvious to one of ordinary skill at the time of the filing of the application from which the issued patent was based. Such a defense may be characterized as attempting to invalidate a claim based on its obviousness as evidenced by the content of published literature available, and patents and published pending patents that were filed, prior to the application filing date. (If an allegedly infringed claim is found to be obvious at the time of filing and accordingly an invalid claim of the issued patent, then the complaint of infringement of such a claim could not stand. Issued claims are considered presumptively valid, and so, in order to make a convincing argument of obviousness with multiple references, the defendant must convincingly evidence via a motivation of the skilled artisan at the time of the invention to combine the references.)
Principally, the issue raised in KSR focused on the degree of specificity that must be present in the teachings in the prior art references. That is, must each reference have teachings addressed to the field of endeavor and have been addressed to the particularly claimed solution of the patent in order for the reference to be available for a combination of such teachings in order to determine the obviousness of the claim? The intermediate court of appeal for patent cases, the Court of Appeals for the Federal Circuit (CAFC or Federal Circuit), addressed the matter on appeal from a federal district court and required KSR to make findings that each prior art reference for combination was directed to the problem being solved. The US Supreme Court in KSR disagreed with that level of specificity in teachings in order for the reference to be combined.
Rigid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law.
To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art. To facilitate review, this analysis should be made explicit. But it need not seek out precise teachings directed to the challenged claim’s specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ.
The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. In many fields there may be little discussion of obvious techniques or combinations, and market demand, rather than scientific literature, may often drive design trends.
Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.
It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.
Also in its non-precedential opinion that was taken up by the US Supreme Court, the Federal Circuit restated its position that an “obvious to try” reason for combining references cannot be used in finding obviousness. This portion of the Federal Circuit’s opinion received little notice prior to the US Supreme Court’s recent opinion as it was not precisely the question posed to the US Supreme court in KSR’s petition. Surprisingly (or perhaps not surprising if one is mindful of the US Supreme Court’s holdings in obviousness cases prior to the formation of the CAFC), the US Supreme Court breathed new life into the “obvious to try” reason for combining references and provided an outline to do so.
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 in the art 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.
A careful read of this excerpt from KSR appears to present a two-prong test (with sub-prongs) for a reason to combine references to find obviousness: (1) design need or market pressure; and (2) finite number of identified, predictable solutions.
Understandably, you may be asking, “What does this mean to my business, my patents, and my patent applications?” It would appear that the broadening of the references allowed to be combined during an invalidity-due-to-obviousness-analysis (as part of a trial on an issued patent) is in line with the analogous art that is allowed to be combined by a patent examiner during the obviousness analysis phase of patent application prosecution. This would mean that invalidating a claim may require less specific references when obviousness is the basis in either a federal trial or during a re-examination via the US Patent Office (where a substantial new question of patentability may be raised, and the patentee has a chance to save the challenged claim from being found obvious by argument and/or a narrowing amendment). Perhaps the broadest and deepest effect of KSR will flow from the interpretation by courts and implementation by the US Patent Office of the “obvious to try” reason for combining references in finding obviousness. If such a sea change does indeed take place, patent practitioners should expect, in addition to explicit and clear reasons for combining references from patent examiners in their obviousness rejections, that there may be an increase in the frequency of reasons akin to “obvious to try” (e.g., design choice and perhaps even the application of the two-prong “obvious to try” test presumably made available via KSR.)
DISCLAIMER: While this communication is intended to be informative, due to the yet-to-be-promulgated effects of KSR, this communication is understandably speculative and should not be taken as legal advice for any particular matter. The reader should anticipate that in the next days and months, a string of patent invalidity for obviousness cases and appealed obviousness rejection cases will form the progeny of KSR, and from these cases, the full spectrum of the ramifications of KSR will be made apparent. In addition, one should expect the US Patent Office to revise, in short order, its Manual of Patent Examining Procedure (MPEP) to comport with its understanding of KSR.
