Supreme Court Developments In The Patent Obviousness Test
The following article explains the “test of obviousness” in patent infringement and the directions given by the Supreme Court to the Federal Circuit to make amendments.
To understand the changes required, it is important to go back to the original case of Graham Vs John Deere Co U.S.1 383 (1966). In The Graham case, the patentees sued for the infringement of a device made of a combination of existing elements to produce a new result. The patent in question was a device that absorbed the shock from plow shanks in rocky soil to protect the plow from damage.
The Federal Court ruled in favor of the patentee, stating, “old result in a cheaper and otherwise more advantageous way.”
In a similar case for petitioners # 37 and 43 for the patent of a plastic finger sprayer for pesticides with a hold-down cap, the Eight Circuit gave a different ruling. They ruled that an existing invention improved to provide better results by a person holding ordinary skills is not valid for a patent. The same ruling was given to Hotchkiss v. Greenwood, 52 U.S. 248 (1850) for the improved use of clay door knobs and other forms of knobs used in porcelain and pottery.
Thus, showing two different results attained from the same test of obviousness, the first one being held valid because it displayed ingenuity and more than ordinary skill to produce an improved device from already existing components.
Justice Kennedy wrote a unanimous decision from the Supreme court that directed the Federal Court to revert the “test of obviousness” to the same framework as given in the Graham Case. The Federal Circuit had restricted the test after the Graham case to allow for more consistent and uniform decisions when evaluating patent infringement test of obviousness. They had made a TSM test (teaching, suggestion, motivation) mandatory, stating, “a patent claim is only proved obvious if ’some motivation or suggestion to combine the prior art teachings’ can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.”
The Supreme Court approved the TSM test but not the inflexible reasoning behind it. The test is applicable in patent court cases if applied properly. The Supreme Court reaffirmed the patent functionality approach in the Graham Case, which had been further explained by Hotchkiss in his patent claim case.
The Supreme Court cited from the Great Atlantic and Pacific T Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950), “patent for a combination which only unites old elements with no change in their respective functions. . .obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skilful men.”
Errors Pointed By The Supreme Court To The Federal Circuit
- According to the Supreme Court, “Under the correct analysis, any need or problem known in the field of endeavour at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” The Supreme Court stated that the reason or motivation behind the problem the patentee was trying to solve should be taken under consideration rather than the use of combining existing elements.
- The second point given by the Supreme Court stated,” common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases, a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Meaning that the entire scope of the patent and the solutions it gives should be looked at, not just the proper art similar to it and the solutions given by it in the past.
- The third error given by the Supreme Court noted, “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 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 [is] not of innovation but ordinary skill and common sense.” The statement explains that the simple explanation showing that different combinations of old elements are obvious is not enough to prove the patent claims.
Lastly, the Supreme Court said that the Federal Court made the wrong deduction, attempting to reduce the risks of courts on patent claims by letting the patent examiners letting the factor of predictability pr hindsight affect the ruling, stating, “rigid preventive rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”
The Supreme Court reinstated the original “test of obviousness” evaluation as applied in the Graham case to examine patent claims based on:
- Both the elements and scope of the proper art
- Differentiating between the prior art and the claim in question
- Determining the ordinary skill level in the relevant art
- Analysing the obviousness and non-obviousness against the history or background of the patent at issue
The Supreme Court also added that additional factors should also be taken into account to fully understand the circumstances surrounding the patent claim and the factors leading up to it. For example, in the KSR International Co. v. Teleflex, Inc., et al., 550 U.S. (2007), the summary judgement was given in favor of KSR for adding a sensor to the original patented product help by Teleflex because the addition of sensors on pedal requires more than ordinary skill and common sense to invent.
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