Longstanding Federal Circuit “Teaching-Suggestion-Motivation” Test No Longer the Exclusive Way to Show Obviousness

The Supreme Court issued a major new decision on patent law today, creating uncertainty about whether existing patents might be invalidated as too similar to previous

inventions. Under the patent statute, an inventor cannot obtain a patent if the invention is “obvious” in light of prior work in the field. The Supreme Court decision rejected a longstanding Federal Circuit test for demonstrating that a patent is obvious under that statute. In a decision issued on April 30, 2007, the Supreme Court held that the Federal Circuit’s “teaching-suggestion-motivation” test conflicted with the patent statute and the Supreme Court’s precedents. As a result, businesses

facing a patent infringement suit will have an easier time demonstrating that the Patent and Trademark Office (“PTO”) mistakenly issued a patent for an obvious invention. In addition, examiners in the PTO will likely reject more applications as mere obvious variations on prior

technology. KSR International v. Teleflex Inc., U.S. Supreme Court No. 04-1350 (April 30, 2007).