Key Takeaways

  • The Supreme Court’s KSR v. Teleflex decision (2007) reshaped U.S. patent law by replacing the rigid “teaching, suggestion, or motivation” (TSM) test with a flexible, common-sense approach.
  • The ruling emphasized that a “person of ordinary skill” in the art has ordinary creativity and that combinations of known elements may be unpatentable if they yield predictable results.
  • The U.S. Patent and Trademark Office (USPTO) adopted broader obviousness rationales, now requiring examiners to consider market forces, design incentives, and common sense beyond strict precedents.
  • The KSR standard now applies to both utility and design patents, expanding examiner discretion and increasing the difficulty of proving non-obviousness.
  • Critics argue that KSR made obviousness more subjective, leading to uncertainty in patent prosecution and litigation.

What Is KSR vs. Teleflex?

KSR International Co. vs. Teleflex, Inc. is a federal court case decision made on April 30, 2007, in which the Supreme Court rejected the Federal Circuit's test for obviousness as it relates to patent validity. The Supreme Court ruled 9-0 that the Court of Appeals had wrongly addressed the obviousness question in a too-rigid, too-narrow manner that went against Section 103 of the Patent Act and Supreme Court precedent.

KSR is a Canadian-based auto parts manufacturer that produces products for General Motors and Ford Motor Company. Teleflex is KSR's competitor and designs adjustable pedals. Teleflex sued KSR for patent infringement regarding Patent No. 6,237,565, also known as the "Engelgau patent," to which Teleflex held exclusive licenses.

The patent in question is a mechanism for combining an adjustable automotive pedal with an electronic sensor, allowing the pedal's position to transmit through a computer controlling the vehicle's throttle. The claim included details that the sensor needed to be placed on a fixed pivot point.

Since the 1970s, inventors have designed adjustable pedals that can change location in the footwell. U.S. Patent No. 5,010,782 (the "Asano" patent) supports this. In considering these precedents and similar patents, the Supreme Court noted that sensors on adjustable pedals were already disclosed in prior art, including sensors on a fixed pivot point.

The trial granted judgment in KSR's favor noting that the Engelgau's patent claim was obvious and therefore not subject to patent protections. Following the decision, the trial court compared the prior art to claims in the Engelgau patent and found little difference between the two.

On appeal, however, the Federal Circuit ruled that the lower court hasn't been strict enough in applying the TSM test ("teaching, suggestion, and motivation"). The Supreme Court discussed the legal standard for rejecting the Federal Circuit's more rigid approach and noted inconsistencies with the ways in which the TSM test are applied.

Previous cases the Supreme Court referred to were Hotchkiss vs. Greenwood (1850), Graham vs. John Deere (1966), United States vs. Adams (1966), Anderson's-Black Rock, Inc. vs. Pavement Salvage Company (1969), and Sakraida vs. AG Pro, Inc. (1976).

The Supreme Court noted that when a work is available, market forces and design incentives can prompt variations of it either in the same field or in a different one. If an individual with ordinary skill can implement the predictable variation, then the subject no longer qualifies for patentability.

In the end, the Supreme Court decided to establish the "Graham" standard, not the TSM standard, for testing obviousness. The Graham test considers:

  • The combination of prior art in hindsight
  • Any prior art teaching away from the patent combination
  • Whether the invention solves long-felt but unresolved needs
  • Whether the invention is a commercial success

The result is harder-to-obtain patents.

Following the decision, courts must look into interrelated teachings regarding multiple patents and the effects their demands make on the design community. If anyone with no skilled background can produce an item, it is no longer non-obvious.

Why Is KSR vs. Teleflex Important?

The decision had wide-ranging effects on the U.S. patent system. It reviewed the history of the TSM test noting its inconsistencies and how the test limits the obviousness question. The TSM test was introduced in 1984 to reject a patent for obviousness only when teachings, suggestions, or motivation from prior art proved the patent combination's acceptance as non-obvious.

The Supreme Court also discovered flaws in the Federal Circuit's analysis, noting that it was wrong to tell patent examiners to look only at the problem the inventor was trying to sole. The correct approach is the ask whether the patent combination was obvious or not to a person with ordinary skill.

Essentially, the Supreme Court's decision in KSR vs. Teleflex makes obviousness easier to prove by replacing the TSM test with more flexible standards. As a business owner or inventor, it's important to understand how the decision may affect your patent portfolio.

The Decision's Effect on Patents

Existing patent owners affected by the Supreme Court's decision may find themselves susceptible to validity challenges. Every patent issued is presumed to be valid, and proving it invalid is a heavy burden. Following the decision, patent challengers can argue against the presumption of validity because the United States Patent and Trademark Office (USPTO) failed to compare the Engelgau patent to the Asano patent.

As such, the KSR vs. Teleflex decision opens the door to broader challenges for patent holders. Existing patent owners facing validity questions may want to ask if the TSM test was applied and, if not, was the correct Graham analysis (from the Graham vs. John Deere case) applied?

Future patents will also be affected. In general, obtaining a patent after KSR vs. Teleflex will be more difficult because there now exists a broader range of prior art to which we must compare future patents. This isn't necessarily a bad thing, however, since patents obtained now are more valid than ever.

Broader Impact on Patent Examination and USPTO Practice

The KSR v. Teleflex decision prompted major revisions to how the USPTO determines whether an invention is obvious. The Manual of Patent Examining Procedure (MPEP §2141) now incorporates several key lessons from the ruling, emphasizing “caution in granting a patent based on combinations of known elements”.

Key outcomes include:

  • End of rigid testing: Examiners are no longer bound by the strict TSM test, which required a specific teaching, suggestion, or motivation to combine prior art.
  • Recognition of creativity: The Court affirmed that a person of ordinary skill in the art is not a “mechanical automaton,” but capable of ordinary creativity and reasoning.
  • Common sense in examination: Patent examiners may now rely on common sense, market demand, and design incentives when deciding if an invention would have been obvious.
  • Flexible rationales: USPTO guidance now allows examiners to use a range of reasoning paths—such as combining familiar elements according to known methods or applying a known technique to a related problem.

This flexibility has made obtaining patents more challenging, particularly for incremental innovations and “combination” patents that merely merge existing technologies without producing unexpected results.

What's the Difference Between the TSM Test and the Graham Standard?

The TSM test was developed in the early 1980s to clarify patent obviousness. The test required a challenger to show any "teaching, suggestion, or motivation" that would result in a person of ordinary skill to combine prior art as detailed in the patent. The test was meant to combat "hindsight bias" where inventions seem obvious after the fact, but not so much when they're issued.

Under the TSM test, validity presumption might have been weakened. Important patents needed to be evaluated under the stricter Graham standard, which demands additional evidence to overcome obviousness. Any patent issued under the TSM test is now open to new challenges because it was the wrong test to use.

With the common-sense Graham standard, it may be easier to prove an invention is not patentable, which can make it more difficult to successfully file a patent application.

Expansion of the KSR Standard to Design Patents

The KSR framework has recently expanded beyond utility patents to affect design patent obviousness. In LKQ Corp. v. GM Global Tech. Operations LLC (2024), the Federal Circuit overturned the long-standing Rosen-Durling test for design patents, finding it inconsistent with KSR’s flexible standard. The Rosen-Durling test had limited prior art references to those “so related” to the claimed design that they could be combined.

Now, under the KSR-inspired standard, examiners may:

  • Consider a broader range of prior art, not just visually similar designs.
  • Apply common sense and market insight to assess whether a designer would combine elements.
  • Begin analysis with a “primary reference” that is visually similar but not necessarily closely related, ensuring consistency with the flexible, creativity-based approach set by KSR.

The USPTO has issued new design-patent guidance, confirming that KSR’s flexible approach applies to visual designs as well as functional inventions.

KSR Criticisms

The Supreme Court's decision in the KSR case has been criticized for taking away objectivity and replacing it with a subjective test. Since the decision, both the Federal Circuit and the Patent Office have struggled to regain objectivity. Most patent examiners are not lawyers, meaning that they continue to provide obviousness rejections without being aware of the fallacies in their decisions.

Another criticism is that the Graham test does not prevent hindsight as effectively as the TSM test. Critics argue that the question of obviousness should come at the time of the invention, not after the fact. Others say the Supreme Court ignored legislative history in the KSR decision, essentially taking a step back.

Practical Effects and Continuing Debate

The KSR decision had sweeping consequences for patent owners, applicants, and litigants. By emphasizing flexibility and “common sense,” it expanded the range of arguments that can invalidate a patent. Many patents—particularly those built from predictable combinations of prior art—have since been challenged and, in some cases, invalidated on obviousness grounds.

However, this flexibility has also drawn criticism:

  • Subjectivity concerns: Critics claim that the decision reintroduced uncertainty into patent law, making it harder to predict how obviousness will be judged in court.
  • Litigation risks: Because KSR allows a variety of rationales for invalidation, patent holders face more frequent challenges and more summary judgments on obviousness.
  • Innovation chilling: Some inventors argue that easier invalidation discourages incremental improvements, which are vital in fields like software and electronics.

Despite these concerns, KSR remains a cornerstone of modern patent analysis. Courts continue to balance flexibility with fairness, aiming to reward only truly innovative contributions while filtering out predictable variations.

Frequently Asked Questions

  1. What is KSR in patent law?
    KSR refers to KSR International Co. v. Teleflex Inc., a 2007 Supreme Court case that reshaped patent law by redefining how “obviousness” is evaluated.
  2. How did KSR change the TSM test?
    It rejected the Federal Circuit’s rigid TSM test, favoring a more flexible analysis that allows consideration of common sense, creativity, and market motivation.
  3. How does KSR affect the USPTO?
    Examiners now apply broader obviousness rationales, combining prior art when it would have been “obvious to try” or predictably effective.
  4. Does KSR apply to design patents?
    Yes. The Federal Circuit recently confirmed that KSR’s flexible approach also governs design patent obviousness determinations
  5. Why is KSR controversial?
    Because it increased subjectivity in obviousness decisions, leading to uncertainty in both patent prosecution and litigation outcomes.

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