A lot of patent attorneys aren’t happy with the Supreme Court’s recent ruling in KSR Int’l Co. v. Teleflex Inc., in which the justices unanimously rejected the Federal Circuit’s strict test for invalidating a patent based on obviousness. What’s making them unhappy isn’t that the Court made it easier to declare an invention obvious. It’s that it failed to clearly enunciate a new test.

“The Supreme Court has not laid down a bright line test [for obviousness], and that has gotten some people concerned,” says Stephen Akerley, a patent litigator in the Silicon Valley office of McDermott Will & Emery.

In the short term, this legal confusion is expected to lead to increased patent litigation as parties, judges and the PTO attempt to determine which inventions satisfy the murky new standards for non-obviousness. In the long term, however, KSR is expected to provide a big help to companies accused of patent infringement–and big trouble for companies that own patents.

“It will be harder to get a patent issued from the Patent Office and easier to get a patent invalidated in litigation,” says George Best, a patent litigator in the Washington, D.C., office of Foley & Lardner. He adds, “[I]t puts a significant number of existing patents at risk.”

Testing Obviousness

Before the Supreme Court got involved in KSR, the PTO and the courts used a relatively simple test to determine whether certain inventions were obvious. An invention that combined two pre-existing items was obvious only if there was, before the date of the invention, an explicit “teaching, suggestion or motivation” (TSM) to combine the two items.

Under this TSM test, which the Federal Circuit created, a combination was obvious if, for instance, an engineering journal published an article about the various ways of combining the two items. But if the combination was so obvious that no one bothered to mention it in an article, manual or other written document, the combination would pass the TSM test and be patentable.

Many patent experts–as well as numerous companies and the PTO–argued this test was unrealistically strict. The Supreme Court agreed, though it fell short of throwing out the test completely. The Court rejected a “rigid” application of the TSM test, favoring instead an “expansive and flexible approach” to evaluating inventions’ obviousness. Courts and the PTO can use the TSM test as part of this broader approach, but TSM cannot be the sole criterion for determining obviousness.

Moreover, the Supreme Court ruled the lower courts and PTO must use the TSM test in a flexible way, recognizing that some teachings, suggestions or motivations to combine two inventions may not have been put on paper.

Writing for the Court, Justice Anthony Kennedy noted, “In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends.”

High Court Challenge

The Court went on to reject other aspects of the Federal Circuit’s approach to obviousness. For instance, the Federal Circuit has indicated that if a combination is the product of even the smallest amount of creativity, the combination isn’t obvious. The Supreme Court disagreed with that reasoning, stating that “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

The Federal Circuit has held that a combination of two items is not obvious just because the combination was “obvious to try.” The Supreme Court disputed this, stating, “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 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 ?? 1/2 .”

Although the Court criticized much of the Federal Circuit’s jurisprudence on obviousness, its KSR opinion offered little advice on how the lower courts should determine obviousness.

“The Court told you what not to do; it didn’t tell you what to do,” says Rochelle Dreyfuss, professor of law at New York University School of Law.

That didn’t seem to bother the PTO, which eagerly embraced the KSR decision.

“It gives our examiners the ability to use their considerable scientific expertise to reject patents on obvious inventions,” says John Doll, the PTO’s Commissioner for Patents. He adds, “They won’t need to look through prior art references to find something showing that a combination is obvious. That should save examiners a significant amount of time.”

This should speed up the process for obtaining a patent–though it also will mean the PTO will reject many patent applications.

“It will be easier for an examiner to establish obviousness,” Doll says. “To that extent, a significant amount of applications will be rejected.”

Mixed Reviews

On the corporate side, those who have been defendants in patent infringement suits are welcoming the KSR decision because the ruling offers them a quick and inexpensive way to end many infringement suits.

“A lot more cases will be disposed of by summary judgment motions [on patentability],” says James Dabney, a New York litigator at Fried, Frank, Harris, Shriver & Jacobson who successfully argued KSR’s case before the Supreme Court. “That should greatly lower the cost and uncertainty of patent litigation,” he adds.

But the ruling is bad news for patent owners because it puts many of their patents in jeopardy, including some notorious business-method and Internet patents. The decision in KSR will likely embolden competitors to sue to invalidate existing patents on obviousness grounds.

“Where somebody is using something that is already known and putting it to a slightly different use, that’s exactly what the Supreme Court was talking about,” Dreyfuss says.