Saturday, May 05, 2007

The TSM test after KSR v. Teleflex

The first citation for blog discussion of KSR listed at fireofgenius is to Michael Barclay (of Wilson Sonsini) at scotusblog, who reports

At the outset, the Court’s unanimous opinion abolished the CAFC’s imposition of a “teaching, suggestion, motivation” (TSM) test for obviousness. Slip Opn. at 11.


Having abolished the TSM test, the Court had to figure out what to replace TSM with. The replacement test can be summarized as a “marketplace” test – Justice Kennedy’s well-written opinion uses phrases such as “marketplace,” “market forces,” “market demand” and “market pressure” no less than five times in describing replacement formulations and in holding claim 4 of the Teleflex patent obvious as a matter of law.


Abolishing the TSM test, then, will make it easier to invalidate patents, which is why KSR v. Teleflex is of such importance.

IPBiz notes that the Supreme Court had said: But a court errs where, as here, it transforms general principle into a rigid rule limiting the obviousness inquiry.
If it were the case, as Barclay suggests, that the Supreme Court "abolished" the TSM test, then why did the Supreme Court write: The flaws in the Federal Circuit's analysis relate mostly to its narrow conception of the obviousness inquiry consequent in its application of the TSM test. The Circuit first erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed. IPBiz queries: if the Supreme Court "abolished" the test, why is the Supreme Court giving another factor that can be considered to establish TSM. IPBiz also queries: if the Supreme Court "abolished" the test, why is the USPTO giving post-KSR instructions to examiners on applying the test? Barclay's dog won't hunt.

See also Mondaq: Interestingly, the Supreme Court’s overarching theme was a criticism of the Federal Court’s application of the TSM test in light of previous jurisprudence, not a criticism of the test itself: "The flaws in the analysis of the Court of Appeals relate for the most part to the court’s narrow conception of the obviousness inquiry reflected in its application of the TSM test." Specifically, the Supreme Court concluded that the Federal Circuit’s analysis in this case had improperly focused on the motivation and avowed purpose of the patentee. Instead, it held, "[w]hat matters is the objective reach of the claim."

FireofGenius also mentioned the scotus post of Dan Bromberg, who wrote:

In light of the Supreme Court’s rejection of the conclusory expert testimony in KSR, many obviousness challenges will be resolved on summary judgment.

In KSR, the Supreme Court wrote:

To the extent the court understood the Graham approach to exclude the possibility of summary judgment when an expert provides a conclusory affidavit addressing the
question of obviousness, it misunderstood the role expert testimony plays in the
analysis. In considering summary judgment on that question the district
court can and should take into account expert testimony, which may resolve or
keep open certain questions of fact. That is not the end of the issue,
however. The ultimate judgment of obviousness is a legal determination. Graham, 383
U.S., at 17, 86 S. Ct. 684, 15 L. Ed. 2d 545. 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. Nothing in
the declarations proffered by Teleflex prevented the District Court from
reaching the careful conclusions underlying its order for summary judgment in
this case.

Of specifics, the Supreme Court noted that "another [Teleflex] expert [asserted]
that claim 4 was nonobvious because, unlike in Rixon, the sensor was mounted
on the support bracket rather than the pedal itself. This evidence, the court
concluded, sufficed to require a trial." Previously, the CAFC had found the testimony of KSR's expert inadequate because he had NOT shown motivation to go to a sensor mounted on the support bracket. At the end of the day, it is, of course, the Supreme Court's analysis of the testimony which controls. In a telling sentence, one finds the Supreme Court interjecting its thoughts: "As did the District Court, we see little difference between the teachings of Asano and Smith and the adjustable electronic pedal disclosed in claim 4 of the Engelgau patent." Further to the support bracket argument, which was the focus of the CAFC determination, the Supreme Court wrote: Therefore, Teleflex reasons, even if adding a sensor to Asano was obvious, that does not establish that claim 4 encompasses obvious subject matter. (...) It is also unclear whether the current argument was raised before the Court of Appeals, where Teleflex advanced the nonspecific, conclusory contention that combining Asano with a sensor would not satisfy the limitations of claim 4.

Here is where the "first error" of the CAFC shows up in the Supreme Court analysis:
Read in the context of the declaration as a whole this is best
interpreted to mean that Asano could not be used to solve "the problem addressed by Engelgau '565[:] to provide a less expensive, more quickly assembled, and
smaller package adjustable pedal assembly with electronic control."
And the "any problem within the scope of the claim" shows up in the next sentence: The District Court found that combining Asano with a pivot-mounted pedal position sensor fell within the scope of claim 4. 298 F. Supp. 2d, at 592-593. And the devastating punchline: In light of Teleflex's failure to raise the argument in a clear fashion, and the silence of the Court of Appeals on the issue, we take the District Court's conclusion on the point to be correct.

IPBiz notes that it is the challenger of the patent who has the burden of showing "structual similarity" and "motivation to combine." The CAFC had found "no motivation" to combine the references to reach the invention "as claimed." That was the FIRST basis of the CAFC opinion, so that the CAFC was not exactly "silent" on the issue. [The SECOND basis was that summary judgment was not proper.]

The important specific text to contemplate: The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor. As to MOTIVATION, the Supreme Court effectively said "don't bother with the specifics of the mounting on the support bracket." (the point of concern to the CAFC.

HOWEVER, for good measure, the Supreme Court ALSO said: For a designer starting with Asano, the question was where to attach the sensor. The consequent legal question, then, is whether a pedal designer of ordinary skill starting with Asano would have found it obvious to put the sensor on a fixed pivot point. The prior art discussed above leads us to the conclusion that attaching the sensor where both KSR and Engelgau put it would have been obvious to a person of ordinary skill.
(...) Smith, in turn, explained to put the sensor not on the pedal's footpad but instead on its support structure.

***FireofGenius also has

KSR - The New Mood Music which mentions the demise of Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (CAFC 1985), but not the demise of In re Deuel (or O'Farrell).


Blogger Michael Barclay said...

Regarding the above criticism of my blog posting: The CAFC had applied TSM as an "exclusive" test, that is, as a requirement to prove non-obviousness. That exclusive, required test no longer exists, which is what I meant by the word "abolished" -- the test is gone as an absolute rule. The fact that patent defendants and PTO examiners can continue to use the **existence** of a TSM to prove obviousness doesn't undermine my conclusion, since patent owners and applicants will no longer be able to rely, as before, on the **absence** of a TSM to **disprove** obviousness.

7:49 AM  
Blogger Lawrence B. Ebert said...

IPBiz disagrees with the commenter. If, hypothetically, the TSM test were gone, why would the USPTO and infringement defendants bother to provide evidence of TSM? As noted on IPBiz, the USPTO is already on record as saying a showing of TSM is necessary to a rejection under 35 USC 103(a).

Here's what the USPTO said after the Supreme Court decision in KSR:

Therefore, in formulating a rejection under 35 U.S.C. 5 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.

Separately, if the Supreme Court were eliminating the TSM test, why would the Court provide another way of showing TSM, and then apply it in the KSR case? Sorry, Michael's dog still won't hunt.

4:22 PM  

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