Obviousness in the District of Delaware in Light of the KSR Decision
The Supreme Court handed down its much anticipated decision in KSR Int'l Co. v. Teleflex Inc. yesterday, striking a blow to the Federal Circuit's so-called "teaching, suggestion, or motivation" (TSM) test for obviousness. The Court rejected a rigid formulation of obviousness, holding that "neither the particular motivation nor the avowed purpose of the patentee controls[;] [w]hat matters is the objective reach of the claim." With the subjective TSM test set aside, at least in name, how will KSR affect the District of Delaware?
A look at this district's recent obviousness jurisprudence indicates that, even when applying TSM, objective standards have always controlled.
Within the past several weeks, Chief Judge Robinson issued an opinion denying a jmol motion that sought, on obviousness grounds, to overturn a jury's finding. The Court rejected that assertion, citing testimony that the relevant scientific "community" did not believe the patentee's innovation was feasible. Advanced Cardiovascular Sys. v. Medtronic Vascular, Inc., 98-80-SLR (D. Del. March 29, 2007); see also Boston Sci. Scimed, Inc. v. Cordis Corp., 03-283-SLR (D. Del. June 16, 2006) (Robinson, C.J.) ("The objective evidence of nonobviousness . . . should when present always be considered as an integral part of the analysis.").
Judge Farnan has similarly relied heavily on objective standards when assessing TSM. In a recent decision, the Court rejected a claim of obviousness: "[The expert] failed to demonstrate any motivation for one skilled in the art to combine the references to which he referred, and the Court is persuaded that the ability of one skilled in the art to combine those references would have required undue experimentation." Forest Labs. Inc. v. Ivax Pharms. Inc., 03-891-JJF (D. Del. July 13, 2006) (Farnan, J.)
Perhaps Judge Sleet anticipated best the Supreme Court's emphasis that primary considerations of obviousness extend beyond the elements of TSM:
"Section 103 precludes [ ] hindsight discounting of the value of new combinations by requiring assessment of the invention as a whole. This court has provided further assurance of an "as a whole" assessment of the invention under § 103 by requiring a showing that an artisan of ordinary skill in the art at the time of invention, confronted by the same problems as the inventor and with no knowledge of the claimed invention, would select the various elements from the prior art and combine them in the claimed manner. In other words, the examiner or court must show some suggestion or motivation, before the invention itself, to make the new combination."
Leapfrog Enters. v. Fisher-Price, Inc., 03-927-GMS (D. Del. March 30, 2006) (Sleet, J. (finding obviousness based on the "hypothetical" inventor standard).
Although in each instance the Court applied TSM, its language indicates that the test has always been only one means to the broader end of the invalidity analysis.