The United States Supreme Court has recently made a decision that gives a clearer definition of the guidelines that are used to determine whether a patent is invalid for obviousness under 35 U.S.C. sec 103.

In the case of KSR Int’l vs. Teleflex the Supreme Court found a number of errors with the Circuit Courts decision in this case. They felt that the Circuit Court relied too heavily upon the TSM (Teaching, Suggestion, Motivation) test when making their decision.

Teleflex is the exclusive licensee of an “adjustable automobile pedal assembly with automatic electronic throttle control”. When KSR Int’l decided to add an electronic sensor to one of it previously designed gas pedals, Teleflex sued them for patent infringement. The case was originally decided in the favor of KSR Int’l but the Circuit court reversed that decision.

The Circuit court felt that the TSM test was not applied strictly enough when the original judgment was made. The Supreme Court however overturned their decision and remanded this case back to them for further review.

The Supreme Court reasoned that in addition to the TSM test, courts should also be taking into consideration judgments made in similar cases. The Supreme Court cautions against allowing the TSM test to become a “mandatory formula” Stating that it should only be one of the factors in deciding a patent infringement case.

Even though the Supreme Court acknowledges that inventions do sometimes rely on ideas that already exist, they warn against giving patent protection to changes in a product that would have happened over time.