KSR Int'l Co. v. Teleflex Inc.
KSR ended the Federal Circuit's reliance on a rigid teaching-suggestion-motivation test as the sole gateway to a finding of obviousness. The Supreme Court reaffirmed the Graham framework, blessed common sense as a permissible analytical tool, and stressed that predictable variations of known elements seldom rise above the level of ordinary skill.
Holding
The Supreme Court held that the Federal Circuit had erred in applying the teaching-suggestion-motivation (TSM) test as a strict and exclusive standard for finding a patent claim obvious under 35 U.S.C. § 103. Obviousness is governed by the framework established in Graham v. John Deere Co., 383 U.S. 1 (1966), and the analysis must be expansive and flexible. Common sense, market demand, design need, and the predictable use of familiar elements are all proper considerations. The Court reversed the Federal Circuit and held the patent claim at issue obvious as a matter of law.
Procedural posture and facts
Teleflex held an exclusive license to U.S. Patent No. 6,237,565, which claimed an adjustable vehicle pedal assembly with an electronic throttle control sensor mounted on a fixed pivot. KSR International built a competing pedal assembly. Teleflex sued KSR for infringement in the Eastern District of Michigan, and KSR defended on the ground that the claim was obvious in light of two prior art references — an adjustable pedal patent (Asano) and a separate prior art reference disclosing electronic throttle control sensors mounted on fixed pivots.
The district court granted summary judgment of invalidity, finding the combination obvious. The Federal Circuit reversed in an unpublished opinion, applying the TSM test and concluding that nothing in the prior art expressly taught, suggested, or motivated combining the references in the claimed way. The Supreme Court granted certiorari to review the Federal Circuit's articulation of the obviousness standard.
The Court's reasoning
Justice Kennedy, writing for a unanimous Court, organized the analysis around three points: the continuing authority of Graham, the proper role of TSM as one tool among several, and the reasons the patent at issue was obvious as a matter of law.
Graham reaffirmed
The Court reaffirmed that obviousness is determined by the Graham factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art; and (4) the secondary considerations, also called objective indicia, such as commercial success, long-felt but unsolved need, and failure of others. Graham was decided in 1966, two decades before the Federal Circuit announced its TSM gloss, and Kennedy underscored that Graham, not TSM, is the controlling framework.
TSM as a tool, not the test
The Court did not abolish TSM. It described the inquiry into a teaching, suggestion, or motivation to combine as "a helpful insight" that may guide the analysis. The error was in treating TSM as the only legitimate route to obviousness. Where the Federal Circuit had required express evidence of a motivation to combine, often documented in the prior art itself, the Supreme Court permitted the factfinder to consider implicit motivations: market forces, design needs, common sense, the background knowledge of a person of ordinary skill in the art, and the inferences and creative steps that such a person would employ.
Predictable variations and combinations of known elements
The Court was particularly emphatic about combinations of known elements that yield predictable results. "When a work is available in one field of endeavor," Kennedy wrote, "design incentives and other market forces can prompt variations of it, either in the same field or a different one." If the variation is the predictable use of prior art elements according to their established functions, the combination is likely obvious. The Court warned against "hindsight bias" but explained that the rigid application of TSM had effectively immunized many predictable combinations from obviousness review.
Application to the patent at issue
Applying the framework, the Court found the claim obvious. The prior art Asano reference disclosed adjustable pedals; another reference disclosed mounting electronic throttle sensors on fixed pivots. A skilled engineer faced with a market need for adjustable pedals compatible with electronic throttle controls would have combined the two references. The combination did no more than yield predictable results and could be performed using familiar techniques. Summary judgment of invalidity was therefore appropriate.
The framework KSR produced
After KSR, the obviousness analysis under § 103 follows a flexible framework anchored in Graham:
- Determine the scope and content of the prior art as a person of ordinary skill in the art would have understood it.
- Identify the differences between the prior art and the claim.
- Define the level of ordinary skill in the art at the relevant time.
- Weigh the secondary considerations, including commercial success, long-felt need, failure of others, copying, unexpected results, industry praise, and licensing.
- Consider all reasons to combine the prior art — express teaching, suggestion, or motivation, but also market forces, design needs, common sense, and the inferences a skilled artisan would draw.
The Court also recognized several specific patterns that frequently support obviousness: combining known elements according to known methods to yield predictable results; substituting one known element for another with predictable results; and using a known technique to improve a similar device in the same way. None of these is dispositive, but each illustrates how the analysis can proceed without an explicit textual motivation in the prior art.
Subsequent application
KSR has driven a sustained increase in obviousness invalidations, both at the U.S. Patent and Trademark Office and in litigation. The U.S. Patent and Trademark Office issued examination guidelines in 2007 and 2010 that walked examiners through the KSR rationales for combining prior art. Inter partes review proceedings before the Patent Trial and Appeal Board are dominated by obviousness challenges that draw heavily on KSR's flexible motivations.
The Federal Circuit has integrated KSR into its case law without abandoning a structured approach. Panels often require the obviousness proponent to articulate, with reasoning supported by some evidence, why a person of ordinary skill would have combined the references — but the source of that reasoning may now include common sense, market pressures, and design considerations. The court has repeatedly emphasized that conclusory statements that "common sense" supplied the motivation are insufficient; KSR did not eliminate the need for a record.
Secondary considerations have taken on greater weight as a counterbalance. Long-felt but unsolved need, unexpected results, copying, and commercial success tied to the claimed invention can rebut a prima facie case of obviousness. After KSR, patentees that prevail on obviousness frequently do so by building a robust secondary-considerations record.
KSR also informs related doctrines. Anticipation remains a single-reference inquiry, but the close cousin of "obvious in light of a single reference" can rest on what a skilled artisan would have understood from the reference plus common knowledge. Written description and enablement analyses turn on the level of ordinary skill, which KSR pushed courts to define with care.
Open questions and pressure points
Three pressure points have emerged. First, the Federal Circuit has had to police the boundary between flexible reasoning and bare conclusion. Decisions vary in how much explicit articulation a fact-finder must provide for "common sense" or "market forces" as a motivation to combine. Some panels demand a record showing why the skilled artisan would have done what the patent claims; others accept a more general explanation tied to predictable variations.
Second, the role of secondary considerations remains uneven. Courts agree that they must be considered, but the weight given to nexus between the asserted indicia and the claimed invention has varied. A strong commercial success showing without a tight nexus to the claimed feature is often discounted; a strong long-felt need showing tied to the claimed solution can carry significant weight.
Third, KSR's application to unpredictable arts — pharmaceuticals, biotechnology, materials science — continues to evolve. Where the prior art does not allow a skilled artisan to predict whether a combination will work, "obvious to try" reasoning is more cautiously applied, and courts have demanded a stronger record before declaring an unpredictable result obvious. The Federal Circuit has tried to articulate when "obvious to try" rises to the level of obviousness, building on KSR's recognition that such reasoning is sometimes appropriate.
Finally, KSR's interaction with inventive concepts under 35 U.S.C. § 101 — particularly after Alice v. CLS Bank — has become a recurring issue. Courts and the PTAB sometimes treat conventional or routine elements as both obvious under § 103 and insufficient to provide an "inventive concept" for § 101 patentability. The doctrines remain distinct, but they share an interest in distinguishing routine engineering from genuine invention.
Citation and record
Formal citation: KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Below: Teleflex, Inc. v. KSR Int'l Co., 119 F. App'x 282 (Fed. Cir. 2005), reversing the district court's grant of summary judgment of invalidity.
Author: Justice Kennedy for a unanimous Court. Argued November 28, 2006; decided April 30, 2007.
Vote alignment: 9-0.
See also
- ObviousnessThe doctrinal home of the Graham/KSR framework.
- AnticipationSingle-reference invalidity, distinct from obviousness.
- Inter partes reviewThe Board proceeding in which KSR-based obviousness challenges dominate.
- Post-grant reviewA nine-month-window proceeding that also includes obviousness grounds.
- Title 35 reference35 U.S.C. § 103 sets the obviousness statute.
- Phillips v. AWH Corp.Claim construction precedes obviousness; the construction defines what is being compared to the prior art.
Last reviewed: 2026