CAFC finds TSM test still exists, sort of

The CAFC wrote in Ball Aerosol vs. Limited Brands:

The disagreement between the parties—and the sole basis for the district court’s
denial of Limited’s motion for summary judgment of obviousness—is whether a
motivation to combine the prior art existed. We think there clearly was such a
motivation. As explained in KSR, “[w]hen there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.” 127 S.Ct. at 1742. The Court
stated that if a combination of known elements was “obvious to try” to address a
recognized problem, the combination may have been obvious under § 103. Id.

(...)

In addition, the district court erred in finding a requirement in KSR of an explicit
motivation to combine. The court faulted Limited for using what the court deemed
“conclusory statements in lieu of an explanation of a motivation to combine.” KSR
Analysis Order, No. 2:05-CV-3684, slip op. at 2 (quoting the Infringement Opinion).
Although the court quoted KSR at length, it misconstrued the language that the
motivation to combine analysis “should be made explicit.” Id. at 1-2. A broader look at
this portion of KSR sheds light on the proper inquiry:
Often, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community
or present in the marketplace; and the background knowledge possessed
by a person having ordinary skill in the art, all in order to determine
whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988
(C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art
would employ.
127 S.Ct. at 1740-41 (emphases added). Thus, the analysis that “should be made
explicit” refers not to the teachings in the prior art of a motivation to combine, but to the
court’s analysis. Here, all the limitations of claims 1 and 5 of the ’969 patent were in the
prior art, as was the claimed configuration and a known problem of scorching. KSR
thus compels the grant of summary judgment of obviousness. 127 S.Ct. at 1745-46
(“Where, as here, the content of the prior art, the scope of the patent claim, and the
level of ordinary skill in the art are not in material dispute, and the obviousness of the
claim is apparent in light of these factors, summary judgment is appropriate.”).