U.S. patent law is set to undergo a change, the scope of which remains to be seen.  The Supreme Court heard oral arguments on November 28, 2006 in KSR Int’l Co. v. Teleflex, Inc. (04-1350), the much anticipated Supreme Court case that considers whether the Federal Circuit’s “teaching, suggestion or motivation” test should be the sole test for whether an invention is obvious, and therefore precluded from patent protection.

Section 103 of the U.S. Patent Act provides that “[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.”

The statute is designed to award patent protection to truly innovative, “nonobvious” inventions, and not just “obvious” improvements of what inventors have come up with in the past, i.e., the “prior art.”  The Supreme Court held in the seminal case Graham v. John Deere Co., 383 U.S. 1 (1966) that the question of obviousness is a factual inquiry.  Relevant considerations include the scope and content of the prior art, the differences between the prior art and what is claimed as a new invention, and the level of ordinary skill of individuals practicing in the pertinent art.

For over two decades, the Court of Appeals for the Federal Circuit (the special appeals court that hears patent cases) has ruled that obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some evidence of a “teaching, suggestion or motivation to do so.”  ACS Hosp. Systems, Inc. v. Montefiore Hosp., 732 F.2d 1572 (Fed. Cir. 1984); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281 (Fed. Cir. 1985).  The Federal Circuit’s objective behind the test, also known as the TSM test, is to prevent the benefit of hindsight, that is, it is often easy to say, “I could have thought of that” about an invention after the fact.  The Federal Circuit’s test attempts to structure the obviousness inquiry into an objective framework.

Opponents of the TSM test argue that the test makes it too easy for patent owners to obtain patents, because even though an invention might to them seem obvious, documented evidence of a “teaching, suggestion or motivation” proving such obviousness often does not exist.  That in turn, opponents argue, leads to a large number of frivolous law suits by patent holders on patents that should not have been issued in the first place.  Proponents of the TSM test argue, however, that weakening patent protection would lead to loss of innovation and design.

These arguments are at the forefront in KSR Int’l Co. v. Teleflex, Inc.  In this case, the patent at issue involves a gas pedal that is adjustable for the driver’s height and that controls acceleration through electronic signals rather than a mechanical cable.  KSR manufactured gas pedals having those two features, and Teleflex sued KSR asserting patent infringement.  KSR defended on the ground that the combination of the two features of the gas pedal was obvious and that Teleflex’s patent was therefore invalid under Section 103 of the Patent Act.  The District Court rules in favor of KSR, but the Federal Circuit reversed, explaining that the District Court failed to make specific findings as to whether there was a suggestion or motivation to combine the teachings of the prior art.  KSR appealed.

The Supreme Court granted a writ of certiorari in June 2006 to consider whether the Federal Circuit had erred in holding that a claimed invention cannot be held obvious, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven teaching, suggestion or motivation that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.

During oral arguments, the Supreme Court made it clear that it is skeptical of the TSM test.  In fact, a good portion of oral arguments was taken up by the Justices’ attempts to understand the TSM test.  Even after reading the briefs “15 or 20 times,” Justice Breyer puzzled, “I just don’t understand what is meant by the term ‘motivation.’”  Chief Justice Roberts referred to the test as “Federal Circuit jargon” that is “worse than meaningless.”  Justice Scalia called the test “meaningless,” “irrational,” and furthermore, “gobbledygook.”

The Justices pressed counsel supporting Teleflex’s position to explain why the question of obviousness should be filtered through the TSM test, including the requirement that hard evidence be presented.  Counsel countered that, under current Federal Circuit cases, documented evidence is not necessary.  Justice Alito remarked, “Well, once you define the teaching, suggestion and motivation test that way so that it can be implicit, it can be based on common sense, I don’t quite understand the difference between that and simply asking whether it’s obvious. Could you just explain what [the TSM test] adds?"

However, the Justices appeared hesitant to discard the TSM test altogether.  One key concern was validity of the millions of patents issued or upheld in the past twenty years under the TSM standard.  Justice Souter wondered whether there were “going to be 100,000 cases filed tomorrow morning” if the Supreme Court overturns the TSM test.

Justice Bader Ginsberg and Justice Kennedy voiced the possibility of keeping the TSM test as a valid inquiry on obviousness, but not as the exclusive test.

Based on oral arguments, it appears that the TSM test will be modified, or at least further explained, by the Justices, rather than scrapped altogether, and preserved as one possible, but not exclusive, standard for obviousness.  The Supreme Court is expected to issue a decision in February.