Patent law has undergone yet another revision and, once again, the change wrought comes potentially at the patent holder's expense. The latest salvo comes from the Supreme Court's decision in KSR International Co. v. Teleflex Inc. In KSR, the Supreme Court effectively diluted the prevailing test for obviousness in favor of an arguably less stringent, more subjective standard.
In KSR, the patent under consideration involved electronic sensors that communicate between an automobile's computer-controlled throttle and the gas pedal. Prior art dealt with the use and placement of such sensors. The KSR patent claimed an innovative combination of those mechanisms which allowed assembly of simpler, smaller, cheaper adjustable pedals.
The Supreme Court found that the patent did not survive a review for obviousness under 35 USC §103, which limits issuance of a patent on a subject that would have been obvious to a "person having ordinary skill in the art." The Court recognized most inventions utilize some combination of prior advancements. The Court said the key to demonstrating true innovation rests then with the identification of the novel reason motivating a new combination. Scolding the Federal Circuit for its "rigid" application of the prevailing standard-the "teaching, suggestion, or motivation" test-the Supreme Court announced that the obviousness inquiry must be guided by "common sense" rather than any particular formula. Although the "teaching, suggestion or motivation" test remains relevant to the obviousness inquiry, the Court emphasized that the practical realities of what was going on in the marketplace at the time of the claimed invention-as opposed to express references in technical materials-can supply such motivation.
At the same time the Court emphasized such practical-and presumably factual-considerations, it also noted that the issue of obviousness is ultimately a legal one susceptible to summary judgment. The Court did not comment upon the type of record that would create a genuine dispute of material fact regarding the Graham v. John Deere factors, however, and it may well be that the decision will be effectively limited to its unique facts. However, in the near term, it is likely that the decision will offer new hope to infringement defendants seeking to avoid a trial on obviousness. Plaintiff patent holders are therefore well advised to concentrate their efforts on developing a record of factual differences regarding the scope of prior art and necessary skill levels before going into battle.
Patent holders should now be prepared to show how prior art taught away from-and not towards-the solution the patent provides. As KSR allows consideration of other fields of endeavor, patent holders will see infringement defendants stringing together a broader variety of art to establish obviousness and patent holders will need detailed technical analysis to support their position. Conclusory expert affidavits won't work-the KSR court made short shrift of such an affidavit as a basis of material fact sufficient to defeat the underlying summary judgment motion.
KSR also recognized that those of "ordinary skill" frequently have the "ordinary creativity" necessary to create useful (though non-patentable) solutions from prior art. To distinguish themselves from these "routineers", a patent holder will also need to demonstrate the specific inventive creativity that imbues their invention story with the requisite novelty. Past battles over "ordinary skill" will pale in comparison to future litigation, as "soft" information about the development field and market get thrown in the mix.
Secondary evidence of non-obviousness may be a patent holder's best bet, as KSR affirmed the use of such evidence along with the rest of the Graham v. John Deere test. Faced with evidence of commercial success, long-felt need and the failure of others, courts will then have a basis for concluding the necessary novelty exists and arose from market-based motivations.
That's slim comfort to patent holders reeling from the impact of recent patent law decisions. They've begun to wonder whether licensees and potential infringers will seek to limit their exposure by using these decisions as a basis for first-strike litigation.
Our take? Such additional litigation is inevitable and with it will come further changes to the patent landscape - that much, at least, is obvious.
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