In the unanimous decision of KSR v. Teleflex, the Supreme Court appears to have made it harder to defend a patentââ?¬â?¢s validity. Almost every patent infringement suit is met with the affirmative defense of obviousness, among other defenses. In KSR v. Teleflex, the Supreme Court ruled that the “obviousness” standard that is applied to determine whether or not a patent is valid should be applied less stringently by the courts than dictated by Federal Circuit precedent.

KSR involved a patent claiming an adjustable automotive gas pedal with an attached electronic sensor. KSR, the defendant, argued that this patent was obvious, citing multiple patents, two of which described adjustable pedals and the other two describing sensor technology in conjunction with pedals. The district court found that the patent-at-issue was obvious, determining that it would have been obvious to combine the elements of the patents to form the invention claimed by the patent-at-issue.

The Federal Circuit reversed the district court, finding that the district court misapplied its “teaching-suggestion-motivation” (“TSM”) test for obviousness, because the asserted prior art did not expressly teach, suggest, or provide motivation for a combination. Federal Circuit precedent required an express and unambiguous statement linking two different pieces of prior art, an often-insurmountable burden for a patent defendant. The Federal Circuit also found that the patent was non-obvious because the asserted prior art patents were directed toward solving different problems than the claimed invention.

The Supreme Court reversed the Federal Circuit, finding that the application of the TSM test was too rigid, and that the court should take an “expansive and flexible approach” to obviousness. Applying instead what it characterized as a “common sense” approach, the Court stated 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.” The Court elaborated that patents should not be permitted to claim “predictable variations” of existing technology.

While the Supreme Court has not repudiated the TSM test, it has significantly increased the uncertainty in determining whether a given combination of prior art renders a patent obvious.There still remains little guidance on how a decision-maker is supposed to judge the level of ingenuity necessary to avoid an obviousness determination. While “common sense” was easily applied by the Court to the relatively simple problem of an adjustable gas pedal with an electronic sensor, “common sense” is likely to be much more difficult to gauge in the more complex technologies. This uncertainty may be particularly pronounced in rapidly developing, inherently unpredictable, technological fields.

Further, the risk of the so-called “hindsight bias” – the effect that knowledge of the invention itself has on the fact-finderââ?¬â?¢s ability to judge whether it was obvious at the time – appears to have been misunderstood or not taken seriously by the Supreme Court. This concern is particularly acute in industries with long product development horizons, such as the biotechnology and pharmaceutical fields, where products hit the market years after the relevant patents are filed.

Ultimately, the full effect of the KSR decision will not be known until a broad range of fact patterns weave their way through the courts. Interestingly, the Court noted the presumption of validity that every patent enjoys, but declined to answer the question of whether that presumption remains intact when a reference was not before the patent examiner. The Court stated, “We nevertheless think it appropriate to note that the rationale underlying the presumptionââ?¬â??that the PTO, in its expertise, has approved the claimââ?¬â??seems much diminished here.” This seems like an invitation for the Federal Circuit to revisit the issue when the facts suggest it.