Today the Supreme Court decided KSR Int'l Co. v. Teleflex Inc., unanimously reversing the Federal Circuit and addressing the proper standard to be applied when considering a claim of patent invalidity based on obviousness. The Court, via Justice Kennedy, held that the Federal Circuit's approach was too rigid, and injected a pantload of uncertainty into an area of law that was already extremely difficult to navigate.
At issue was the "teaching, suggestion or motivation" (TSM) test, which essentially holds that a patent which combines elements that already existed in the prior art will be invalid for obviousness only if a person having ordinary skill in the art would find some "teaching, suggestion or motivation" to combine those elements based on his or her knowledge.
The TSM test was developed at the appellate level, rather than by the Supreme Court. Today the Court held that the TSM test "captured a helpful insight," and that "the idea underlying the TSM test" is not inconsistent with Supreme Court precedent. However, the Court further held that the Federal Circuit has improperly transformed "the general principle into a rigid rule that limits the obviousness inquiry." In other words, courts should be guided by the idea of the TSM inquiry, but shouldn't make any actual rules out of it. Crystal clear, right?
Kennedy also uses the term "common sense" four times (five if you count a quote in a parenthetical), further indicating that his conception of the obviousness inquiry is based on amorphous, undefinable concepts rather than rigid rules. "Rigid preventative rules that deny factfinders recourse to common sense," Kennedy writes, "are neither necessary under [the Court's] case law nor consistent with it." And in climbing inside the minds of fictional "persons having ordinary skill in the art," courts must keep in mind that "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton."
Finally, the Opinion ends with some classic Kennedy philosophizing about the sweet mysteries of life:
"We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. [Howard Roark, anyone?] These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts."
This was a case about computerized gas pedals, by the way.
