KSR International Co. v. Teleflex, Inc.

The Supreme Court’s decision will greatly impact the property rights of all individuals and corporations involved in the business of intellectual property. In addition, it should set clearer guidelines regarding what, specifically, patent holders and seekers must prove to establish that a certain subject matter is non-obvious and patentable under federal law.

In its attempt to overturn the Federal Circuit’s “teaching, suggestion, or motivation” test for non-obviousness, KSR argues that the test too liberally defines subject matter that is non-obvious and patentable, thereby undermining the legislative purpose behind 35 U.S.C. 103(a). KSR argues that in enacting the Patent Act, Congress intended to entitle inventors to the exclusive use of their unique innovations. However, Congress did not intend for inventors to benefit from trivial inventions which merely expand upon preexisting technology. See Brief for Petitioner at 45. KSR also claims that patent law, unlike copyright law, requires an extremely high threshold for what subject matter may be considered patentable because chilling the innovations of other inventors has a direct economic impact on the market. See id. Thus, an overly liberal construction of non-obviousness invites inventors to seek patents for trivial developments, as opposed to true innovations, which opens a patenting floodgate that curbs, rather than promotes, economic productivity. See id at 46. Moreover, KSR reasons that the “teaching, suggestion, or motivation” test constitutes a dramatic departure from previously established case law and invites international criticism and ridicule of the American patenting system. See id at 50.

In response, Teleflex argues that the Federal Circuit’s “teaching, suggestion, or motivation” test is completely in-line with the Congressional intent establishing the non-obviousness requirement for patents under 35 U.S.C. 103(a). See Brief for Respondent at 21. In particular, the “teaching, suggestion, or motivation” test serves to effectively balance the interests of both patentees and the public in the field and strikes a reasonable standard for non-obviousness. See idat 27. Teleflex also argues that KSR failed to identify any empirical evidence which would suggest that the “teaching, suggestion, or motivation” test encourages over-patenting. See idat 28-29. Additionally, the “teaching, suggestion, or motivation” test is now a well-established standard in U.S. patent law and any deviation from the test would lead to serious confusion and inconsistencies in patent determinations. See idat 38.

Because the Supreme Court’s decision will have serious implications on the standard used to establish patentable subject matter, several corporations, including Microsoft, Cisco Systems, and Hallmark Cards, have filed amici briefs in favor of KSR. Because they are frequently defending against patent infringement claims, these corporations hope to narrow the scope of patentable material and consequently limit their liability. The core of the corporations’ argument is that the Federal Circuit’s lenient test for patentability hurts innovation by clouding “the public’s free use of information in the public domain.” See Motion for Leave to File Amicus Curiae Brief and Brief of Cisco Systems Inc., et. al. at 3-4, KSR Intl. v. Teleflex, No. 04-1350 (November 28, 2006). The corporations also argue that the Federal Circuit’s current standard stifles economic growth by forcing innovators to spend too much time pursuing patents for each type of subject matter, rather than focusing on inventing new products. Cisco Systems, in particular, claims to have been forced to engage in defensive patenting as a result of the Federal Circuit’s test and recently obtained hundreds of patents in order to reduce its liability. See http://docket.medill.northwestern.edu/archives/003813.php. The United States and several top patent law professors have also filed amici briefs in support of narrowing the Federal Circuit’s non-obviousness standard, arguing that the “teaching, suggestion, or motivation” test invites useless over-patenting that narrows the free-exchange of public knowledge and rewards non-innovative subject matter. See Brief Amicus Curiae for the United States at 7.

However, Teleflex has also received strong support in favor of maintaining the Federal Circuit’s “teaching, suggestion, or motivation” test for non-obviousness. The American Bar Association filed an amicus brief in support of Teleflex stressing the need to uphold established case precedent in order to protect reliability and recognition of established patent law. See Brief Amicus Curiae for the American Bar Association at 8. This argument stresses that a departure from the “teaching, suggestion, or motivation” test would “reduce objectivity and predictability” in patenting determinations which would “burden the courts, the Patent and Trademark Office, inventors, litigants, and the public as a whole.” Id. Advocates for inventors and property owners, such as the American Intellectual Property Law Association and the Intellectual Property Owners Association, also support Teleflex, stating that the Federal Circuit’s standard is well-settled as the appropriate test for non-obviousness. See http://www.patentlyo.com/patent/2006/10/ksr_v_teleflex_.html. Additionally, some speculate that pharmaceutical companies have expressed “silent support” in favor of Teleflex so that they will continue to receive royalties from their patented products. See http://docket.medill.northwestern.edu/archives/003813.php.

Relevant Law

The provision in question, 35 U.S.C. § 103(a), denies patentability to “subject matter as a whole that 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.” The Supreme Court first interpreted the statutory non-obviousness provision in Graham v. John Deere, holding that patent obviousness was determined by examining: (1) “the scope and content of the prior art,” (2) the “differences between the prior art and the claims at issue,” and (3) “the level of ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Later, the Supreme Court ruled that where an alleged invention consists of a compilation of previously existing inventions, the court must decide obviousness by determining whether the claimed invention “only unites old elements with no change in their respective functions,” or whether the combined elements interact to produce a “new or different function” or “an effect greater than the sum of the parts.” Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976). Following the Supreme Court’s ruling in Sakraida, the Federal Circuit added that a claimed invention that consists entirely of pre-existing inventions is obvious under 35 U.S.C. § 103(a) only if there is clear and convincing evidence in the prior art of “teaching, suggestion, or motivation” to combine the previously existing inventions in the manner combined by the claimed invention. See Ashland Oil v. Delta Resins & Refractories 776 F.2d 281, 297 (Fed. Cir. 1985).

Statutory Intent and Supreme Court Precedent

KSR’s challenge to the Federal Circuit’s “teaching, suggestion, or motivation” test is grounded in the argument that the test has no basis in the text of 35 U.S.C. § 103(a) and conflicts with the Supreme Court’s interpretations of that section. See Brief for Petitioner at 17. KSR argues that § 103(a) clearly makes obviousness a condition to patentability and gives no mention or implication that patents are presumed non-obvious absent clear and convincing evidence of teaching, suggestion, or motivation in the prior art. See id. In addition, the Supreme Court has applied § 103(a) in six cases since Congress enacted the statute, and in those cases, has never applied the “teaching, suggestion, or motivation” test. See id at 20. Specifically, KSR explains that in Sakraida, the Supreme Court held that the validity of combination patents is guided by the principle that one cannot patent something that a person having ordinary skill in the art could “readily” make or do in pursuing the same result. Sakraida, 425 U.S. at 282. Thus, the Supreme Court’s determination of obviousness concerns what a person skilled in the art “could” readily make or do, not what that person would be “motivated” to make or do. See Brief for Petitioner at 26. In response, Teleflex maintains that § 103(a) and the Supreme Court precedents which apply it do not mention the “teaching, suggestion, or motivation” test because § 103(a) and the related Supreme Court rulings fail to expressly define any test for non-obviousness. See Brief for Respondent at 21. As such, the Federal Circuit’s “teaching, suggestion, or motivation” test defines a test for non-obviousness which incorporates the factors specified by the Supreme Court in Graham to apply § 103(a)’s prohibition of obvious patents. See id at 22-23.

Test in Practice

KSR argues that the “teaching, suggestion, or motivation” test is, in practice, a poor implementation of 35 U.S.C. § 103(a)’s purpose. See Brief for Petitioner at 32. KSR maintains that the “teaching, suggestion, or motivation” test forces the Patent and Trademark Office (“PTO”) to issue and the courts to uphold patents that may differ from prior art in only minor ways. See id at 33. Because the “teaching, suggestion, or motivation” test rejects § 103(a) as a condition to patentability and makes it a condition to challenge patentability, it encourages patent applicants to fill patent applications with large numbers of slightly different claims so that the PTO will be unlikely to find the clear and convincing proof of motivation in the prior art to successfully argue each of those claims. See id at 42. In response, Teleflex maintains that by focusing on motivation in the prior art, the “teaching, suggestion, or motivation” test is the only effective safeguard to hindsight-biased obviousness analysis and properly balances the interests of the patentees and the public. See Brief for Respondent at 27-28. Teleflex also notes that millions of patents have been issued in reliance on the “teaching, suggestion, and motivation” test and that the Federal Circuit has applied the test for over twenty years without finding deficiencies requiring change. See id at 15.

Other Proposals

KSR proposes a “capability” standard for determining patentability of combination patents, whereby courts focus on whether a practitioner had the ability to combine the prior art. See Brief for Petitioner at 26. The United States proposes an “innovation” standard whereby courts focus on whether a claimed invention is sufficiently innovative; i.e., that it shows an advance beyond the grasp of a person having ordinary skill in the art. See Brief Amicus Curiae for the United States at 24. Nevertheless, Teleflex argues that both proposals would block deserving combination patents and improperly declare inventions obvious with overbearing hindsight. See Brief for Respondent 10-11.