A Panel Discussion on Obviousness in Patent Litigation: KSR International v. Teleflex, 6 J. Marshall Rev. Intell. Prop. L. 595 (2007)
McGrath, William T., Manzo, Edward D., Holderman, James F., Kennelly, Matthew F., Addy, Meredith Martin, Burns, Patrick G., Lyerla, Bradford P., McAndrews, George P., Schwartz, David L. & Trela Jr., Constantine L.
Abstract
In KSR International Co. v. Teleflex Inc., the Supreme Court considered what test applies to determine whether an invention is “obvious.” The Court ruled that the teaching-suggestion- motivation (“TSM”) test, developed over the years by the Federal Circuit to defend against hindsight reconstruction, is only one method a court or patent examiner may use when addressing obviousness. The Court’s holding overturned Federal Circuit precedent, which required a finding of non-obviousness unless a teaching, suggestion, or motivation to combine was established. The panel discussion brings together leadings jurists; former law clerks of the Supreme Court, the Federal Circuit, and other courts; leading patent litigators; patent office practitioners; and professors of patent law to examine the potential effects of KSR.