On Tuesday, November 28, 2006, the U.S. Supreme Court heard oral arguments in KSR International v. Teleflex, reviewing the Federal Circuit’s “teaching suggestion or motivation” (TSM) test for obviousness. Several justices voiced concern over the Federal Circuit obviousness test; Justice Scalia calling it “legal gobbledygook,” Justice Roberts terming it “jargon” and Justice Breyer wondering what “motivation” meant in terms of the applicable statute.
The patent at issue relates to an adjustable gas (throttle) pedal assembly in combination with an electronic control. Instead of mounting certain electronic sensors for engine control on the gas pedal, the invention in issue locates the sensors adjacent to the pedal but mounted on the vehicle body. The issue was whether a claim to such an invention would have been obvious under 35 U.S.C. § 103; the obviousness statute.
The Supreme Court granted cert to decide whether the Federal Circuit erred in holding that a claimed invention cannot be held “obvious” (under § 103(a)), absent a particular “‘teaching suggestion or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”
KSR argued that the Federal Circuit’s TSM test has no support in the language of § 103 and is contrary to Supreme Court precedent, such as the 1976 Sakraida case. In Sakraida, the Supreme Court held that combining (also known as aggregating) known elements that only perform the same functions they performed before they were combined, does not give rise to a patentable invention.
The U.S. Solicitor General submitted a brief in support of KSR, arguing that the TSM test “inappropriately broadens the category of non-obvious and therefore patentable inventions,” and should not be the sole test for guarding against hindsight; the latter being a requirement when adjudicating obviousness in view of the Supreme Court’s admonition in Graham v. John Deere.
Teleflex, the patent-holder, argued that KSR (as well as the numerous amicus briefs) mischaracterized the Federal Circuit’s TSM test. They argued that the test properly and flexibly balances the competing interests of the patent owner and others in the field wishing to compete with similar technology. Moreover, to do away with the TSM test after being the Federal Circuit standard for 20 years would “introduce considerable uncertainty and inconsistency into patent determinations.”
By all eyewitness reports, the justices appeared fully engaged and at least three (Scalia, Roberts, Breyer) seemed to think that there was need for a change. Judge Roberts characterized the TSM test as “less than meaningless;” Justice Scalia termed the “teaching, suggestion, motivation test” as “the three imponderable nouns” and echoed Justice Roberts in calling the test “meaningless;” and Justice Breyer also voiced concern about the meaning of “motivation” as a test, noted his approval of the late Judge Rich’s imagery in his Winslow decision of a person of skill in the art having all of the prior art on the walls of a room and determining what would or would not have been obvious considering their teachings, and wondered out loud about a need to return to what “the statute says” about whether an invention “would have been obvious” to one “who is familiar with the subject, [one] of ordinary skill in the art.”