Comments on KSR Supreme Court Ruling by Rachel Krevans, Morrison & Foerster LLP

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Manufacturing News, Source : The Manufacturer US
Published : 02 May 2007 20:31

On April 30, the Supreme Court issued a decision which may call into question the value – and validity – of many issued US patents and will make it harder in the future to persuade the U.S. Patent Office to approve a patent application.

The Court’s ruling in KSR v. Teleflex creates new uncertainty about whether existing patents covering a broad range of technologies might be invalidated in the future as being too similar to previous inventions.

A key principle of US patent law is that an invention cannot be patented unless it is different enough from prior work in that field of technology to be worthy of a patent. The statutory test for this concept is called "obviousness": A patent may not be issued and upheld in court unless its claims are “not obvious" in light of prior work in the field.

Since 1983, the Federal Circuit—the special US appeals court that hears all patent appeals—has had a specific test – the “teaching, suggestion, motivation test” - that courts and the US patent office must apply in deciding whether a proposed new invention is obvious or not.

In KSR, the Supreme Court, in the latest of a string of recent decisions overturning Federal Circuit patent decisions, rejected the Federal Circuit's longstanding obviousness test in favor of a clearly broader standard based on the statue itself as well as a 1966 Supreme Court decision called Graham v. John Deere. In essence, the Supreme Court has lowered the bar for those who are trying to prove that a patent is invalid.

Some key points of the KSR opinion were as follows:

* 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.

* The Court instructed lower courts that the existence of conflicting expert testimony on the issue does not necessarily create an issue of material fact preventing summary judgment. This holding, together with the Court’s clear lowering of the bar for proving a patent obvious, will make it easier to obtain summary judgment that a patent is obvious.

While it will likely take four to five years to resolve exactly how the lower courts and the patent office will apply the new standard, the Supreme Court's decision in KSR will clearly make it easier for the patent office to reject proposed patent claims, and easier for defendants in patent litigation to prove that issued patents are invalid because they are obvious under the new test.

The new test for obviousness, which will apply to challenges to patent validity regardless of whether the patent issued before or after the KSR decision, may also impair the value of previously issued US patents, because it makes it easier to challenge them in litigation, and to ask the patent office to reconsider the decision to issue the patent (a “reexamination” proceeding).

By Rachel Krevans, a senior intellectual property litigation partner with Morrison & Foerster LLP

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