KSR v. Teleflex and its Impact on the Analysis of Patent Claim Obviousness

The U.S. Supreme Court recently delivered its long-awaited opinion in KSR International Co. v. Teleflex Inc. In the unanimous opinion, the U.S. Supreme Court articulated a new method for analyzing the issue of patent claim "obviousness" under 35 U.S.C. § 103(a).

By way of background, under 35 U.S.C. § 103(a), "A patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

Over the years, the Federal appellate courts (primarily the U.S. Court of Appeals for the Federal Circuit) and the U.S. Patent and Trademark Office have developed methods for analyzing the obviousness of patent claims. Under these methods, as a prerequisite for finding a patent claim to be obvious, there needed to be an explicit finding of a "teaching, suggestion, or motivation" that would have inspired one of ordinary skill in the art to combine prior art teachings in a manner that, when combined, disclosed the claimed invention. The "teaching, suggestion, or motivation" could be found either explicitly or implicitly in the prior art references themselves, or in the knowledge generally available to one of ordinary skill in the art.

In KSR v. Teleflex, the Supreme Court rejected this "rigid approach" to the analysis of patent claim obviousness in favor of a more flexible approach. While there still must some "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness," it is no longer the case that the analysis must "seek out precise teachings directed to the specific subject matter of the challenged claim." Instead, "[o]ften, it will be necessary … to look to interrelated teachings of multiple parties; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." Precise teachings of the prior art will have less emphasis in obviousness analysis, as the analysis can also take into account the inferences and creative steps that a person of ordinary skill in the art would employ in an attempt to discern whether there was a reason that one of ordinary skill would have combined elements from the prior art.

The Supreme Court in KSR v. Teleflex also commented favorably on the so-called "obvious to try" rationale. In the Supreme Court's view, the combination of elements in a patent claim can be found to be obvious if it can be shown it was obvious for one of ordinary skill in the art to try the combination.

The practical impact of the Supreme Court’s decision in KSR v. Teleflex remains to be seen. The need for there to be an explicit finding of a "teaching, suggestion, or motivation" to combine prior art teachings as a prerequisite for finding a patent claim to be obvious has been reduced in importance or eliminated. It now appears that only an "apparent reason" to combine the teachings of the prior art must be found in order to support a finding that a patent claim is obvious. This will likely have the effect of broadening the field of prior art that may be considered when analyzing patent claim obviousness, which is likely to make it more difficult to overcome a challenge to patent claims on the basis of obviousness. The battlefront over patent claim obviousness is now likely to focus to other aspects of obviousness analysis, such as the level of ordinary skill in the art, or whether the combination of prior art teachings upon which an obviousness challenge is based discloses all the limitations of the claimed invention.

If you have any questions regarding this article or your personal or corporate intellectual property interests, please contact Tom Walsh at thomas.walsh@icemiller.com, or Mark Reichel at mark.reichel@icemiller.com of Ice Miller's Intellectual Property Group.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice.  The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.