A lot of patent attorneys aren't happy with the Supreme Court's recent ruling in KSR Int'l Co. v. Teleflex Inc., in which the justices unanimously rejected the Federal Circuit's strict test for invalidating a patent based on obviousness. What's making them unhappy isn't that the Court made it easier to declare an invention obvious. It's that it failed to clearly enunciate a new test.
"The Supreme Court has not laid down a bright line test [for obviousness], and that has gotten some people concerned," says Stephen Akerley, a patent litigator in the Silicon Valley office of McDermott Will & Emery.
The Court went on to reject other aspects of the Federal Circuit's approach to obviousness. For instance, the Federal Circuit has indicated that if a combination is the product of even the smallest amount of creativity, the combination isn't obvious. The Supreme Court disagreed with that reasoning, stating that "a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."
The Federal Circuit has held that a combination of two items is not obvious just because the combination was "obvious to try." The Supreme Court disputed this, stating, "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious ?? 1/2 ."