To some extent you are correct. TSM used to mean that if there was no teaching, suggestion or motivation then the invention could not be obvious. After KSR if there is teaching, suggestion or motivation the invention is obvious, but may still be obvious even if there is a complete lack of objective evidence suggestion there is any teaching, suggestion or motivation found within the prior art. Now without TSM an invention can be determined to be obvious based on the invention being common sense. What the Supreme Court failed to do is provide any guidance with respect to what is common sense, so it now is largely a subjective test without any king of objective grounding.

-Gene

AC,

You and I are of like mind. And up until 2006, SCOTUS pretty much let the Federal Circuit establish what patent law jurisprudcence. With KSR International et al., that has all gone by the boards. SCOTUS has no concept that what it says on patentability will need to be applied by ~6000 non-legally trained patent examiners, and KSR International (like Graham before it) provides nothing but a nebulous standard to apply under 35 USC 103. Put differently, patent examiners are not equipped to do the “fact finding” that both KSR International and Graham.

The currently nonsensical Bilski “machine or transformation” test is one unfortunate consequence of SCOTUS ruffing up the Federal Circuit too often lately. I’m not saying the Federal Circuit always get it right (recently they’ve shown too much abitlity to get it wrong or create confusion as to what’s right). But SCOTUS would do well to heed the mandate by Congress when it created the Federal Circuit, and be more “sensitive” in when to take patent cases from the Federal Circuit, and in especially understanding that the Federal Circuit, not SCOTUS, was intended to be the primary source of patent law jurisprudence.

Nice post. I like it.

As a PHOSITA, I have a question about TSM. It seems to me like they (The SCOTUS) didn’t “throw it out”, but instead said that it use to be both a necessary and sufficient test, but it now is only necessary but not sufficient. Is that correct?

Congress established the FedCir to reduce uncertainty in patent law decisions to enhance the likelihood of predictable results in patent cases. That would reduce the need to ligigate and reduce its costs when needed. If the outcome of a suit or a motion is pretty clear, the parties have reason to settle; if it is unclear, they can cast their lot with the judge’s discretion.

When FedCir established the relatively bright line rule of TSM, it was trying to provide enough certainty in the law to yield Congress’s intended result. In another issue, FedCir used to hold that patentees who prove infringement almost automatically get awarded injunctions, but SCt made injunctions discretionary.

When the SCt reviews these precedents of FedCir, should they not give some deference to the Congressional intent to foster predictability. Instead by saying that TSM is gobbledegook and such, they make patent litigation a crapshoot, raising the cost and need of litigation. The patent litigators love it, but that does not make it good public policy.

This post was mentioned on Twitter by ipwatchdog: Obviously Non-obvious and Patentable Inventions Part I – certainly a college football playoff is nonobvious. http://bit.ly/8FsCb...