The impact of KSR vs. Teleflex

The impact of KSR vs. Teleflex

Supreme Court’s ruling recently on the case has very broad impact on the IP system in the US. Instead of discussing it in detail, i will point you to a good analysis on PatentlyO blog.

Though the Supreme Court’s unanimous reversal in KSR v. Teleflex, No. 04-1350, 550 U.S. ___ (2007), contains some harsh words for the Federal Circuit’s teaching, suggestion, or motivation (TSM) test, the decision itself appears to leave the TSM requirement roughly intact.  Justice Kennedy’s opinion emphatically rejects an ‘explicit’ TSM test—one that would require explicit prior art teachings in order to combine given references in the obviousness analysis.  At the same time, the decision appears to essentially recreate the ‘implicit’ or ‘flexible’ TSM test—one that would allow implicit suggestions, such as the nature of the problem, to provide the requisite motivation to combine.  It is this implicit TSM requirement that represented current Federal Circuit doctrine, pursuant to several decisions published after certiorari was granted in KSR (e.g., In re Kahn, DyStar, & Alza).  In fact, the Supreme Court even indicates that the Federal Circuit may have gotten it right in these post-cert cases.  The KSR opinion is more a critique of the Circuit’s application of the obviousness (and TSM) standard to the specific facts in KSR than a critique of the need to rigorously (and expansively) evaluate what would lead a PHOSITA to combine certain references in the obviousness analysis.

In an another important case, Microsoft got away with the ruling on the case against AT&T which has wide impact for the company and the software/IT industry.