Patently Obvious

Since it was created by Congress in 1982, the Federal Circuit has had exclusive jurisdiction over patent appeals. The Federal Circuit was created to bring more uniformity and consistency to the patent system. The perception at the time, attorneys say, was that patents had become too hard to enforce. One problem was that federal courts appeared to use different standards to declare patents invalid due to obviousness.

Until recently, attorneys say, the Supreme Court refused to review the Federal Circuit’s decisions. For years, the high court “seemed almost asleep at the wheel on patent questions, dodging some issues that needed to be decided,” says Gabriel Holloway, a patent litigator at Leonard Street and Deinard, a  Minneapolis-based law firm.

“But now the Supreme Court has woken up again,” Holloway says. In the past few years, it has corrected the Federal Circuit on a handful of issues. The KSR case is the most significant, with the widest implications.

Attorneys agree that the key problem in determining whether an invention would have been obvious to a “person having ordinary skill in the art” has always been the issue of “20-20 hindsight.” In hindsight, most inventions tend to appear obvious.

In an effort to avoid that problem and to bring uniformity to the patent system, the Federal Circuit began to rely heavily on the teaching, suggestion, or motivation test, or TSM. In deciding whether a new product deserves patent protection, district courts and patent examiners were to look at the “prior art”—existing patents, journal articles, and so on—for specific references (teachings, suggestions, or motivations) that would direct someone to combine existing ideas in the manner of the new product.

The question was, “Does the prior art provide an explicit reason to combine existing elements A and B? If not, then the invention was not obvious,” says Dan McDonald, an attorney at Minneapolis law firm Merchant & Gould. For instance, if the invention involves mixing an alkaline chemical with another chemical to get a certain result, “does the prior art explicitly suggest that you could mix any alkaline chemical in such a way and get the same result?”

In its KSR ruling, the Supreme Court did not reject the TSM criteria, but it did say that the Federal Circuit—and therefore the entire patent system—had come to apply the TSM test too rigidly, at the expense of common sense. The consensus interpretation is that the justices believe that too many questionable patents have been issued since the 1980s.

The effect is to shift the burden of proof—or at least nudge it—away from the examiner or judge who says an invention is obvious, toward the applicant or patent holder who claims it is not. “To declare [an invention] obvious under the old test, you needed to show a TSM and prove it to a fare-thee-well,” says patent litigator David Allgeyer, at the Minneapolis-based Lindquist & Vennum law firm. “Now, the test is very much different.”

Different, but more in line with the congressional statute, Niederluecke says. Paraphrasing the court’s decision, he says the new test boils down to this: “If you combine two existing pieces of art, and you’re skilled in the art, would you expect the result you get? If all you get is the anticipated result, then it’s not innovation, it’s ordinary skill and common sense. So we won’t give people patents on that.”

As Holloway puts it, the court essentially said, “Let’s put more trust in judges and patent examiners to use common sense to get it right.”