KSR v. Teleflex Reshapes Patent Obviousness Analysis
The U.S. Supreme Court's unanimous KSR decision rejecting the rigid TSM test fundamentally changed obviousness analysis under 35 U.S.C. § 103.
In KSR International Co. v. Teleflex Inc. (April 30, 2007), the Supreme Court unanimously reversed the Federal Circuit, holding that the rigid application of the teaching, suggestion, or motivation (TSM) test was inconsistent with the expansive, flexible approach required by Graham v. John Deere and § 103. Writing for the Court, Justice Kennedy emphasized that combining familiar elements according to known methods likely yields obvious results, and that secondary considerations remain part of the inquiry. BigLaw patent litigators and prosecution counsel should expect the Federal Circuit and district courts to apply a more holistic obviousness analysis going forward, making summary judgment more available to accused infringers and increasing challenges to combination-patent claims. Combined with the Court's companion decision on extraterritorial reach issued the same day, the rulings reset key boundaries of U.S. patent enforceability and warrant review of pending claim charts, prosecution strategies, and pending infringement matters.