Supreme Court Opens Patents Up to Attack and Makes Getting Patents More Challenging
May 16, 2007
On April 30, 2007, Justice Kennedy delivered the unanimous decision in
KSR International Co. v. Teleflex Inc., No. 04-1350, 2007 WL 1237837, at *12 (U.S. Apr. 30, 2007), where the Supreme Court rejected the Federal Circuit's narrow, rigid test for determining whether an adjustable pedal assembly is obvious in light of the prior art. The Court overruled the Federal Circuit's rigid application of the teaching, suggestion, or motivation test ("TSM test") for obviousness determinations and adopted a new, flexible standard that will make it more difficult to obtain and defend patents, particularly patents for "inventions" that are combinations of existing and known elements: "Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility." However, the Court did not specify any other test to replace the TSM test, leaving the full impact of the decision to be hammered out by future litigation. Notably, the Federal Circuit issued several post-KSR decisions that loosened the rigidity of the TSM test.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006);
DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006);
Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006).
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