The medical device industry, much of whose value derives from patents, needs to take note. The San Francisco law firm Morrison & Forester sees the impact this way: "The Court's opinion suggests that patents which are based on new combinations of elements or components already known in a technical field are quite likely to be found obvious under its view of the correct analysisÂ -- a development that will likely lead to many more patents being found obvious in the electronics field but should have less impact in the life sciences field. The Court explicitly rejected the Federal Circuit's longstanding view that a patent cannot be proved obvious merely by showing that the combination of elements was "obvious to try." This holding may have more impact on patents in the electronics field than in the life sciences technologies. The Court instructed lower courts that the existence of conflicting expert testimony on the issue does not necessarily create an issue of material fact preventing summary judgment. This holding, together with the Court's clear lowering of the bar for proving a patent obvious, will make it easier to obtain summary judgment that a patent is obvious.
While it will likely take four to five years to resolve exactly how the lower courts and the patent office will apply the new standard, the Supreme Court's decision in KSR will clearly make it easier for the patent office to reject proposed patent claims, and easier for defendants in patent litigation to prove that issued patents are invalid because they are obvious under the new test. The new test for obviousness, which will apply to challenges to patent validity regardless of whether the patent issued before or after the KSR decision, may also impair the value of previously issued US patents, because it makes it easier to challenge them in litigation, and to ask the patent office to reconsider the decision to issue the patent (a "reexamination" proceeding)."