Obviousness in the US and what patents do for innovation

“We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius.” A citation from the opinion of the US Supreme Court in KSR vs. Teleflex of April 30, 2007. The court gave its opinion in a closely watched case on “obviousness”. It is the fifth patent case in the past two years in which the Supreme Court has reversed the Federal Circuit, all of them unanimous or near unanimous decisions. The Supreme Court not only rejected the Federal Circuit’s test for obviousness, it proceeded to apply the correct test that it had just enunciated to the facts of the case before it and rule for the defendant below rather than remanding to the Federal Circuit and allowing it to apply the Supreme Court’s test to the case. The Court’s opinion suggests that patents which are based on new combinations of elements or components already known in a technical field are quite likely to be found obvious under its view of the correct analysis – a development that will likely lead to many more patents being found obvious in the electronics field but should have less impact in the life sciences field. The Court explicitly rejected the Federal Circuit’s longstanding view that a patent cannot be proved obvious merely by showing that the combination of elements was “obvious to try.” Again, this holding may have more impact on patents in the electronics field than in the life sciences technologies.

Many comments have already been published on patent blogs. See for Hal Wegner’s comments on the case his column on the right side of this blog.

For European practice the decision may not be very important other than that it gives additional ammunition in the current debate in Europe whether patents are granted too easily leading to low quality and stifling of innovation. The Supreme Court uses the word “innovation” eight times in its opinion:

“These advances, once part of our shared knowledge, define a new threshold from
which innovation starts once more. And as progress beginning from higher levels
of achievement is expected in the nor-mal course, the results of ordinary
innovation are not the subject of exclusive rights under the patent laws. Were
it otherwise patents might stifle, rather than promote, the progress of useful
arts.”

(…)

“Granting patent protection to advances that would occur in the ordinary course
without real innovation retards progress and may, for patents combining
previously known elements, deprive prior inventions of their value or utility.
Since the TSM test was devised, the Federal Circuit doubtless has applied it in
accord with these principles in many cases. There is no necessary inconsistency
between the test and the Graham analysis. But a court errs where, as here, it
transforms general principle into a rigid rule limiting the obviousness
inquiry.”

(…)

“When there is a design need or market pressure to solve a problem and there are
a finite number of identified, predictable solutions, a person of ordinary skill
in the art has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense.”

(…)

“Although common sense directs one to look with care at a patent application
that claims as innovation the combination of two known devices according to
their established functions, it can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. This is so because
inventions in most, if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be combinations of
what, in some sense, is already known.”

(…)

“If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was obvious under
§103.”

(…)

“These advances, once part of our shared knowledge, define a new threshold from
which innovation starts once more. And as progress beginning from higher levels
of achievement is expected in the normal course, the results of ordinary
innovation are not the subject of exclusive rights under the patent laws.”

and by far the best:

"A person of ordinary skill is also a person of ordinary creativity, not an automaton. [page 17]