In 2007, Teleflex Inc, a diversified global company providing manufacturing for devices in medical, aerospace and commercial spaces sued KSR Intl., a manufacturing company specializing in pedal systems, for infringing upon its patent of connecting a sensor to a pedal to control the throttle in a car. Little did they know that this case would change the landscape of patent eligibility forever.
In response to Teleflex’s litigation, KSR argued that Teleflex’s patent was not patentable because it was obvious. KSR initially won in district courts, but Telefelx was able to win in appeal courts by relying on the TSM test. The TSM test was one of the most widely used tests to determine obviousness prior to KSR. It states that in order for a patent to be obvious, there must be a Teaching, Suggestion or Motivation in the prior art to combine elements in the prior art.
In the end, the supreme court ruled in favor of KSR and stated that the federal courts made the mistake for applying the TSM test in a rigid and formalistic way that lacked common sense. Obviousness should suggest that a person having ordinary skills in the art would have easily thought of the invention given the plurality of prior art. The outcome of the KSR case essentially removed the TSM from the standard for determining obviousness and as a result, the scope of what is obvious is broadened and it becomes much easier to invalidate a patent based on obviousness.
Now that providing obviousness no longer requires establishing TSM, secondary considerations have taken on greater significance in obvious determinations. Secondary considerations, or objective evidence, can often be used to overcome an obviousness objection. Some examples include the invention’s commercial success, long felt but unresolved needs, the failures of others and etc. Essentially, by establishing that the patent fulfills one of the secondary considerations, the inventor could argue that the patent is not obvious. For example, if there is a need for an invention, one can infer that many others have tried to develop the product but failed, and therefore the invention is not obvious.
I think now that secondary considerations also fall into the determination of obviousness, it will be interesting to see the new arguments and challenges that will emerge. But we know one thing for sure, and that is the KSR case revolutionized the meaning of obviousness and the TSM is not a good indicator of obviousness if applied rigidly.
This is a really great post that boils down the key and significant role the KSR case played on the patent world. I want to discuss a little on the fact that the court removed TSM due to the rigid nature of the test and applied common sense instead. So often in this class we get frustrated when cases are ruled on a level of subjectivity rather than clear cut guidelines that are effectively defined. Yet this case heads in the direction that we would determine as counterproductive, it wants the court to rule with more subjectivity! This goes to show that the patent world is a living a and breathing entity that values the ability to rule based on the context of the situation rather than black and white.
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