Across The Pond - The Positions In The US And Europe

Originally published in Patent World, May 2007

Copyright Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

The issue of what exactly constitutes obviousness in relation to an inventive step is currently on the radar of patent lawyers the world over. In both the US and Europe, the courts seem to be constantly engaged in debate concerning the factors to be considered when deciding whether an invention is obvious and therefore unworthy of patent protection. This article contains an overview of recent developments concerning those factors and highlights the difficulties faced by anyone wishing to reach a conclusion on whether a patent will survive a validity challenge based on obviousness.

The Position in the US

KSR International Co. v. Teleflex, Inc.: The demise of the exclusive motivation test for determining obviousness in the US? In the United States, the nation's highest court ("the Supreme Court") is poised to end a raging debate in KSR International Co. v. Teleflex, Inc.,1 over one of the most fundamental requirements of patent law: only inventions that are "non-obvious" are worthy of patent protection. Over 150 years ago, the Supreme Court in Hotchkiss v. Greenwood2 first articulated the requirement that a patent should only be awarded for those inventions that embody a "degree of skill and ingenuity" beyond that of "an ordinary mechanic acquainted with the business."3 This requirement has long been recognized as necessary to accomplish the Constitutional mandate that patents promote the progress of the useful arts. And it has been over 40 years since the Supreme Court in Graham v. John Deere Co.4 instructed the lower courts to resolve the legal question of obviousness by assessing four flexible factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claim as a whole; ( 3 ) the level of ordinary skill in the pertinent art; and (4) the presence of secondary considerations, such as commercial success, long-felt but unresolved needs, the failure of others, and expert testimony.5

1. The Motivation-Teaching-Suggestion Test

   Once an invention is disclosed in a patent specification, it is almost impossible to prevent judges, jurors, and patent examiners from using that information to influence their understanding of whether that invention was "obvious" at the time it was developed. Since Graham, the US Court of Appeals for the Federal Circuit ("the Federal Circuit"), the appellate court with exclusive jurisdiction in patent cases, has developed its own jurisprudence for combating hindsight bias: the motivation-teaching-suggestion ("MTS") test. Under this test, there must be a specific finding of a motivation, teaching, or suggestion in the prior art to combine references in the manner claimed to support an obviousness conclusion.

   Over the years, the MTS test has become the exclusive requirement for obviousness. Most recently, in Teleflex, Inc. v. KRS International Co., the Federal Circuit reversed a district court's decision on summary judgment of obviousness based solely on the absence of a specific finding of motivation, even though the district court had correctly applied the flexible Graham factor approach. Since that decision eviscerated the Graham approach in favor of the MTS test, the US Solicitor General's Office took the unusual step of requesting Supreme Court review. On 28th November 2006, the Supreme Court heard oral arguments in KSR International Co., v. Teleflex, Inc., No. 04-1350, to address the question of: [w]hether a claimed invention can be 'obvious,' and therefore unpatentable under 35 U.S.C. 103(a), without proof of some 'teaching, suggestion, or motivation' to modify or combine the prior art in the manner claimed."6

   During oral argument, the Justices expressed disdain for the MTS test. For instance, Justice Breyer alluded to a growing concern among some organizations that the MTS test was too protective of patients, a tendency with "unfortunate implications for the economy."7 And Justice Scalia characterized the MTS test as "gobbledygook" and "irrational,"8 and suggested that the Federal Circuit's recent attempts to soften its MTS test were a sign of its demise.9 Justices Kennedy and Ginsburg, however, suggested that the MTS test could be retained merely as a...