Obviousness in Pharmaceutical and Medical Patent Cases: Making Sense of Motivation to Combine

In 2007, the Supreme Court rejected the Federal Circuit’s rigid application of the so-called “TSM test”—that there must be an explicit teaching, suggestion, or motivation in the prior art—in order to find a claimed invention is obvious. While the Supreme Court adopted a more flexible approach to obviousness, it nevertheless acknowledged that the finder of fact must identify “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR International Co. v. Teleflex Inc. et al., 550 U.S. 398 (2007). Recent Federal ...