KSR\u27s Effect on Patent Law

The Supreme Court in KSR International Co. v. Teleflex Inc. clarified its 1966 decision in Graham v. John Deere, avoiding the sea change to a synergy- based standard that many had expected—and perhaps feared. KSR has raised the bar set in Graham for seeking patent protection—by providing a flexible test for obviousness—while simultaneously making it easier for accused infringers to defend themselves. Moreover, KSR will change the strategies of both patent prosecutors and litigators. Before KSR, the Supreme Court’s last major decision on nonobviousness under 35 U.S.C. § 103 was Graham, in which the Court established three factual inquiries for use in determining prima facie obviousness: the scope and content of the prior art, the differences between the prior art and the claims, and the level of skill in the art. This prima facie case could be rebutted by objective evidence of non-obviousness, such as commercial success, long-felt but unsolved needs, and failure of others. In applying the three Graham factors, the Federal Circuit has used the “teaching, suggestion or motivation” (“TSM”) test. A court using this Federal Circuit standard to determine obviousness would require a showing of some teaching, suggestion or motivation to combine the teachings found in the prior art references. This standard was designed to avoid finding claims obvious based on impermissible hindsight. Many decisions suggested that the motivation must come from the prior art itself rather than from the knowledge of a person having ordinary skill in the art (“PHOSITA”). Other cases, notably several decided after the Supreme Court granted certiorari in KSR, applied a more flexible approach and held that motivation to combine the information contained in the prior art can be found implicitly