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Supreme Court rules on KSR
May 1, 2007

The long-awaited KSR decision from the U.S. Supreme Court, issued on April 30, 2007, not only significantly lowers the test to prove "obviousness" thus empowering accused infringers to more readily invalidate non-innovative patents, it also signals a possible tendency toward more sweeping change by the High Court. The decision signals the Court's new-found willingness to critically examine long-standing precedent from the Federal Circuit Court of Appeals—the middle appellate court charged with all patent-related appeals throughout the country.

The KSR case involved what many believed was a rather modest, but patented, improvement to the operation of the gas pedal in a car--upheld as valid by the Federal Circuit. While the case involved a rather obscure and, many said, simple invention (if even an invention at all) the impact of the Supreme Court's KSR decision will be far-reaching.

Too often in recent years, businesses who believed they were using existing technology or long-known technology with modest and "obvious" (in lay terms) improvements found themselves as unwary defendants in patent litigation accused of infringing a patent they believed should never have been patentable. This decision marks the end of the Federal Circuit's long-held but, perhaps, overly-technical definition of legal "obviousness" and the beginning of what appears to be something akin to a common sense approach to "obviousness" from the perspective of one of ordinary skill in the relevant art. The Supreme Court did not provide detailed definition to the new standard, leaving such definition to the lower courts through the normal development of case law in the coming years. This decision will, however, have immediate impact on both pending cases and on patent-holders who may be considering litigation. It also will embolden accused infringers who believe they are now defending against, or have been accused of infringing, a patent they view as obvious in light of pre-existing art in the field.

Businesses, patent-holders and would-be-inventors who view themselves as true innovators will hail the decision as overdue and as necessary to allow healthy competition in areas in which innovation is modest at best and, therefore, where the monopoly protection afforded a patent holder should not be granted. At the same time, true innovation will be protected so long as the innovation is not "obvious" to one of ordinary skill in the art. KSR simply abandons the old approach requiring "teaching, suggestion or motivation" to combine elements previously known noting that, in some instances, combinations are so innate or readily obvious that no person ever thought to write or publish an article about such elementary notions. Justice Kennedy writing for the 8-1 majority stated that to grant "patent protection to advances that would occur in the ordinary course without real innovation retards progress…" To do so would, in the Court's words, "withdraw[] what is already known into the field of monopoly and diminish[] the resources available to skilled men."