So, something is obvious if obvious solution to known problem. Seems rather circular to me. Certainly no help to the patent practitioner.

In KSR, the Court criticized the Federal Circuit’s rigid application of the TSM test (intended to prevent hindsight bias) and the Federal Circuit’s view that “obvious to try” cannot be equivalent to § 103 obviousness, 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 under § 103.

The Court noted that the TSM test had been used to protect factfinders and Examiners from improper hindsight bias. And, the Court agreed that factfinders and Examiners should be wary of hindsight biases. Nonetheless, the Court held that “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”

It appears to the authors that attempts to determine “design needs” or “market pressures” at the time of invention (using common sense) will necessarily open the door to some level of hindsight, as a practical matter. In this way, hindsight will likely creep into these analyses.

I have a few observations I’d like to add regarding KSR. As you indicated, the Supreme Court reinforced the fact that “Graham v. John Deere still controls.” Regarding the motivation for taking the case, it seems to me that the Court’s primary underlying motivation was rather simple – upholding precedent. Obviously, two of the most common motivating factors underpinning the Supreme Court’s decision to hear cases are a split among the Circuit Courts (which is clearly inapplicable here) and upholding precedent. Where the latter is the motivation, the Supreme Court rarely affirms the lower court’s decision. Such was certainly the case here, and will nearly always be for patent cases. It is unlikely that the Court will take a Federal Circuit case where they agree with the outcome as this would be redundant (unless they want to send an occasional reminder of their role as the supreme arbiter of patent law, but this is hardly in dispute).

The Court strives to keep lock-step with existing precedent wherever possible. Clearly, the Court recognized that the TSM test was a different, stricter standard than originally articulated in Graham, and they wanted to reassert their previous test. In reading the statements actually made by the justices during the KSR oral arguments, it was clear that they were apprehensive about the basis of TSM. In fact, Breyer candidly admitted that he did not understand “motivation” as required buy this standard. I believe that the Supreme Court has set itself up to take a more active role with respect to patent law and, for better or for worse, will assert itself to reject Federal Circuit decisions with much more regularity. While there is some risk that they will return to “spark of genius” and other bad law prior to Graham, I do not feel that they will go so far.

Despite the likelihood of more Supreme Court “activism”, I believe all the commotion about KSR and other decisions that may arise in the future is largely unfounded. The Supreme Court certainly did not intend to have a profound impact on patent law, and I submit that such an effect will not arise from this decision. What will result, rather, is a slight increase in patent litigation as defendants find a little more wiggle room under 35 U.S.C. 103(a) and a slight decrease in patent prosecution with respect to minor “improvement patents.” From personal experience, most 35 U.S.C. 103(a) rejections can be overcome because a feature of the claim is not disclosed and making a TSM argument was something I only went to as a last resort. As such, I believe that KSR only has a meaningful impact upon a limited number of patents.