U.S. Supreme Court Decision Makes it Easier to Challenge Patent Validity on the Basis of Obviousness

In a recent unanimous decision, the U.S. Supreme Court overruled a patent validity holding made by the U.S. Court of Appeals for the Federal Circuit (CAFC), with the central issue being whether the invention as claimed would have been obvious to one skilled in the art at the time the invention was made. The CAFC is the court that hears all patent appeals from U.S. district courts. In the case of KSR International Co. v. Teleflex, Inc., the Supreme Court has provided another indication that it feels the CAFC has improperly favored the patentee in a number of instances.

The three primary statutory standards of invention in the United States require that the invention satisfy the utility standard: that the invention serves a useful purpose, that the invention is novel, in that no single prior art reference discloses the identical invention, and that the invention must be unobvious to one skilled in the art, based upon any single prior art reference or combinations thereof considered at the time the invention was made. The KSR case focused on the obviousness standard.

The subject matter of the patent at issue in the KSR case related to the newer type computer-controlled automobile throttles, which did not require a mechanical linkage between the gas pedal and the throttle, but rather relied on electronic signals. An electronic sensor translated the mechanical movement of the pedal into digital data. The Supreme Court concluded that mounting a modular center on a fixed pivot point of a prior-art pedal was a design step well within the grasp of a person of ordinary skill in the relevant art.

For about two decades, the CAFC had been employing a standard of obviousness requiring that the prior art provide some teaching, suggestion, or motivation to create the claimed invention before it would conclude that the prior art rendered a claim or claims obvious. The Supreme Court concluded that this standard was too narrow. It stated that while the teaching-suggestion-motivation test might provide helpful insight for evaluating the issue of obviousness, it was improper for it to become a rigid and mandatory formula. The court stated that advances occur by creating new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and even genius. These advances, once part of our shared knowledge, were said to define a new threshold from which innovation starts once more. It went on to say that as progress beginning from higher levels of achievement is expected, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Failure to recognize this would lead to the result that patents might stifle rather than promote the progress of the useful arts.

In amplifying its refusal to be enslaved by the CAFC teaching-suggestion-motivation test, the court noted several errors made by the CAFC. The CAFC focused on prior art that related to the “precise problem” that the patentee was trying to solve. The Supreme Court felt that this was too narrow an approach as the problem would motivate an inventor to look more broadly at all of the appropriate prior art.

The Supreme Court also felt that the CAFC erred in concluding that the claimed invention could not be obvious merely because the prior art would have made it “obvious to try.”

A further difficulty with the CAFC opinion was that it was overly concerned that a patent examiner or fact finder in court could be biased by the temptation to employ hindsight to reconstruct the prior art so as to render an invention obvious, once the claimed invention was disclosed. The court concluded that rigid preventative rules that denied fact finders recourse to common sense were not necessary.

What is the net result of this decision? It will have substantial impact, both in the prosecution of patent applications before the U.S. Patent and Trademark Office and in evaluating validity of issued patents. The CAFC test which required teaching, suggestion, or motivation in the prior art is no longer the deciding test, but rather is a consideration. The Supreme Court clearly envisions a broader test of what is obvious, which will inevitably lead to greater difficulty in obtaining overly broad claims in the U.S. Patent and Trademark Office. The likely result is that future patents will have met a higher standard of patentability and that fewer nuisance patents of questionable validity will impede progress of the science and useful arts.

Arnold B. Silverman is a member of the Intellectual Property Department and a member of Eckert Seamans Cherin & Mellott, LLC in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 44th Floor, Pittsburgh, Pennsylvania 15219 (412) 566-2077; fax (412) 566-6099; e-mail abs@escm.com.