THE TSM TEST IS DEAD! LONG LIVE THE TSM TEST!
THE AFTERMATH OF KSR, WHAT WAS ALL THE FUSS ABOUT?
Spring 2009By: Emer L. Simic
AIPLA QUARTERLY JOURNAL - Volume 37, Number 2
I. INTRODUCTION
On June 26, 2006, the Supreme Court granted certiorari in KSR lni'l Co. v. Teleflex, Inc. (KSR),1 and a shudder ran through the patent community; many were anxious about the Supreme Court meddling once again in patent law.2 Scholars predicted a radical departure from the Federal Circuit's longstanding "teaching, suggestion, motivation" ("TSM") test for obviousness.3 Prominent professors, practitioners, and corporations submitted amicus briefs to the Court advocating for and against the traditional TSM test.4 At the same time, the Federal Circuit began taking a more flexible approach to the TSM test,5 which resulted in criticism from the Supreme Court.6 Criticism during the KSR oral argument made many in the patent bar brace for an adverse impact on patentees.7
The Supreme Court handed down the KSR decision on April 30, 2007.8 Initially, the national press, along with many patent practitioners and scholars, believed that the Supreme Court had significantly changed the law of obviousness and that this would make patents harder to get and harder to defend.9 But more than two years later, all is quiet. The predicted shockwave of KSR has not happened. The Federal Circuit has not interpreted the KSR decision as having substantially altered the traditional test for obviousness, but instead stresses that it is only the method of applying the TSM test that has changed.10
What happened? Parts I through III of this article discuss the genesis of the TSM test, examine why the Supreme Court granted certiorari in KSR and analyze what it held in that case. The remainder of the article contends that KSR has not--and likely will not--have the impact on the Federal Circuit that the Supreme Court arguably intended. This assertion is borne out by an empirical analysis of the Federal Circuit's obviousness decisions since KSR. There are at least two reasons for the anti-climactic aftermath of KSR: (1) The Supreme Court failed to replace the TSM test with a new, clearly articulated test for obviousness, and (2) as a result, the Federal Circuit has opted to construe the decision narrowly. In any case, the Supreme Court may have been wrong about the impact of the TSM test on the rise of junk patents and may have caused more harm than good by altering the obviousness inquiry without creating a safeguard against hindsight bias.
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