Citation: KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007)


Federal Circuit

Supreme Court


Amicea briefs:

In support of Petitioner:

In Support of Neither Party

In Support of Respondent

Oral Arguments before the Supreme Court

S.Ct. Ruling (04/30/07)

The Supreme Court ruled today that the Teleflex patent is obvious in view of Asano. The court gave approval of the teaching, suggestion, motivation test, but stated that, in the present case, the Fed. Cir. applied the test too strictly, and failed to recognize motivations stemming from market forces. The Court repudiated several bases from which the Fed. Cir. concluded non-obviousness:

  1. That the courts and examiners should look only to the problem the patentee was trying to solve;
  2. that the a person having ordinary skill would be led only to those elements of prior art designed to solve the same problem;
  3. that a patent claim cannot be proved obvious merely by showing that the combination of elements was “obvious to try;” and
  4. that rigid rules designed to prevent hindsight reasoning are necessary and consistent with precedent.

The Supreme Court acknowledged the Fed. Cir.'s more flexible approach to TSM analysis in their more recent decisions in Dystar and Alza Corp., but did not comment on whether those decisions are consistent with the present holding.

PTO Response (11/10/07 )

PTO guidelines published

The PTO published guidelines (dated 10/3/07) in the wake of the KSR decision.

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