Client Alert

Supreme Court Rules on the Obviousness of Inventions Under the “Teaching-Suggestion-Motivation” Test

May 01, 2007

S. Christian Platt, Aslan Baghdadi and Jeremy Livianu

On April 30, 2007, the Supreme Court issued a unanimous opinion in the appeal of KSR International Co. v. Teleflex Inc.  concerning the legal standard in determining when inventions are obvious. The Court reversed the United States Court of Appeals for the Federal Circuit’s strict application of the “teaching, suggestion, or motivation” test (the “TSM test”), criticizing the Federal Circuit for having “analyzed the [obviousness] issue in a narrow, rigid manner inconsistent with [35 U.S.C.] § 103 and our precedents.” The Court acknowledged that the reasoning behind the TSM test was consistent with the Court’s prior obviousness decisions and the Patent Act, but made it clear that courts must not insist on a rigid application of a formulaic rule in determining whether a claimed invention was or was not obvious. In a bow to the rationale behind the Federal Circuit’s TSM test, the Court emphasized that courts must continue to make their obviousness analyses “explicit,” so that they may be properly reviewed by the appellate court.

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