Patent Owners Beware! Enforcement is More Difficult
Since the United States Supreme Court’s ruling in KSR v. Teleflex, 550 U.S. ___, 127 S. Ct. 1727, 82 U.S.P.Q.2d 1385 (2007), enforcing existing patents against infringers has become much more difficult. When cornered into litigation, potential infringers will commonly attack an infringement assertion through patent invalidity. The defendant will attack the validity of the issued patent by claiming the invention is not novel nor non-obvious.
In order for an invention to be patentable it must be new. This novelty requirement is inflexible and is defined in the patent laws. However, the other requirement for patentability, non-obviousness, is not so clear. The history in defining non-obvious has taken many turns in scope and content.
For an invention to be patentable, the invention should not be an obvious improvement over prior art. In the least, the invention should be more than a mere improvement that a "person having ordinary skill in the art" would anticipate. Graham v. John Deere Co., 383 U.S. 1 (1966) provided the specific factors that the courts should use in determining if a claimed invention is non-obvious, requiring a determination of the scope and content of the prior art, the differences between the claimed invention and the prior art, and the level of ordinary skill in the prior art. Further, the court held that secondary considerations could serve as indicia of non-obviousness, but only on a case-by-case basis. These secondary considerations include: commercial success, long-felt but unsolved needs, and failure of others.
The Federal Circuit further held in Winner Int'l Royalty Corp. v. Wang, 202 F.3d. 1340, 1348 (Fed. Cir., 2000), there must be some suggestion, motivation or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. This more rigid, narrow requisite became known as the “TSM” test, requiring a potential infringer evidence that there is something in the prior art to suggest the desirability of a combination of known elements. Specifically, the infringer would have the obligation to draw a link between the prior art and some teachings or suggestion to combine elements.
The holding in KSR v. Teleflex rejected the “TSM” test, stating that the “obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” The Court felt that the “TSM” test should only be used as "helpful insight" into the ultimate determination of whether the claimed invention is non-obvious, however, no court should solely rely on the test.
The new analysis prompts the following question: whether an improvement is more than the predictable use of prior art elements, without seeking out precise teachings directed to the specific subject matter of the challenged claim. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” The Court found that “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” This is a drastic deviation from the prior interpretations of "a person having ordinary skill in the art" (35 U.S.C. § 103 (a) ), which now is interpreted to mean someone knowing all prior art, and who is quite creative. This hypothetical person may have suggestion or motivation that transcends the claimed inventions art, possibly motivated to combine elements from very different prior art.
The Court says the analysis can further rely on the “secondary considerations” long held in Graham, which include: commercial success, long-felt but unsolved needs, and failure of others. However, a case by case analysis is needed, usually requiring costly expert testimony and marketing analyses, recognizing that this should be accomplished by the United States Patent and Trademark Office (USPTO).
In a recent memo in lieu of KSR, the USPTO emphasized "it remains necessary (for an Examiner) to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed." The USPTO understood the KSR holding required a much broader and less rigid analysis than the “TSM” approach. They expect more extensive scrutiny by patent examiners beyond the prior art specifically relating to the applicant's invention. Most importantly, the memo points out that the patent examiners must still give strong reasons for their rejections based on obviousness.
Unlike prosecution, a litigated patent enjoys the presumption of validity. However, patents issued pre-KSR assume validity based on a standard of obviousness which is now redefined. Under KSR, the potential infringer must prove by clear and convincing evidence that the claimed invention is obvious. However, it seems that the burden may further fall on the patentee if the issued patent was validated prior to the KSR holding. Such a requirement is burdensome and expensive, considering the extensive scrutiny. The patentee essentially having to re-prosecute the patent before a governmental body unqualified to do so.
Fundamentally, the Supreme Court's decision in KSR has potential claimants concerned about the infringement defense of invalidity under §103. The § 103(a) analysis held in KSR seems to be less plaintiff friendly, where the potential infringer can more easily attack the validity of an issued patent, notably where the patent being enforced was issued prior to the KSR holding. In particular, the courts may be unwilling to order dispositive motions or preliminary injunctions in lieu of KSR because the court may need further trial court proceedings to determine validity.
