Supreme Court to Review Obviousness Standard: Is a Higher Bar for Patentability Imminent?

The Court first visited the statutory language of '103 in the landmark decision Graham v. John Deere Co., 383 U.S. 1 (1966), where it set forth the well known four-part analysis for determining obviousness. The Su-preme Court's last decision on the substance of the obviousness standard was in Sakraida v. Ag Pro, Inc., 425 U.S. 274 (1976), where the Court appeared to hold that any invention combining old elements must have a 'synergistic result' in order to be patentable. Since the Court of Ap-peals for the Federal Circuit court was created in 1982, the Supreme Court has not heretofore granted certiorari on this issue, allowing the Federal Circuit to clarify and refine the obviousness analysis as mandated by Graham. To counter against the intrusion of hindsight bias into the obviousness analysis and provide some objective guideline for applying the principles of Graham, the Federal Circuit developed the so-called 'teaching-suggestion-motivation' test, which requires that there be some teaching, suggestion, or motivation to combine or modify prior art references to arrive at the claimed invention. See, eg, W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983); In re Fine, 837 F.2d 1071 (Fed. Cir. 1988); and C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340 (Fed. Cir. 1998). While this Federal Circuit doctrine has been applied in hundreds of cases, it has also been widely criticized as setting the patentability bar too low. With the Supreme Court's recent interest in policing the patent system, the granting of certiorari in KSR signals the likelihood that the Court will impose a heighten standard for patentability. This would dramatically affect all of patent practice ' both patent prosecution and patent infringement litigation.