Supreme Court Revisits Test for Deciding Obviousness

The authors are co-counsel to the respondent in KSR International Co. v. Teleflex.

The U.S. Supreme Court has recently shown an interest in intellectual property in general and patents in particular. Most prominent among the recent cases is KSR International Co. v. Teleflex Inc., which presents perhaps the most difficult question in substantive patent law: When is the subject of a patent application a true 'invention' ' that is, something that promotes the progress of a useful art sufficient to warrant giving the applicant exclusive rights to the technology claimed for the next 20 years. Conversely, when is the invention 'obvious' ' merely taking a step that anyone of ordinary skill would take, confronted with the same problem and possessing all the knowledge already known to the field?

Since the Supreme Court assigned the issue of claim construction to the court rather than the jury more than 10 years ago, arguments regarding whether a patent claim is invalid for anticipation under 35 U.S.C. '102 have become simpler, often reduced to filling in charts mapping claim terms to parts and steps. But arguments over 'obviousness' regularly involve sophisticated analyses resting on patents, articles, and expert testimony directed to the fundamental question of whether the subject matter is really an 'invention' promoting progress or instead merely the work of a skilled artisan using knowledge available to all.

The KSR case involves a patent ('Engelgau') on an adjustable gas pedal with an electronic throttle control that substitutes for a traditional mechanical throttle control. In previous gas pedal designs that combined an electronic throttle control and an adjustable pedal, the throttle control moved with the pedal itself within the vehicle's footwell. In the subject patent, by contrast, the throttle control is fixed to the pedal support and does not travel with the pedal. The new design was more compact and less expensive than the prior art.

When Teleflex sued KSR for infringement on the basis of a KSR device with a fixed electronic throttle control, KSR moved for summary judgment, urging that the Engelgau patent was invalid for obviousness over a prior art patent ('Asano'). (The patent-in-suit is in fact currently held by a different company, Dri-vesol Worldwide, but the case has continued under the Teleflex name.) Asano claimed an adjustable gas pedal with a manual throttle control, but KSR argued that the advantages of an electronic throttle control were well known and an inventor would find it obvious to modify Asano by attaching an electronic control to Asano. The district court agreed, but the Federal Circuit reversed and remanded, holding that the ruling misapplied that court's settled 'TSM' test for obviousness: whether there was any 'teaching, suggestion or motivation' to combine elements found in two or more prior art references in the way claimed in the patent. The court of appeals further held that the district court improperly resolved disputes of fact in favor of the moving party by crediting KSR's witnesses and not Teleflex's.

In its petition for certiorari and its briefs on the merits, KSR accused the Federal Circuit of boldly disregarding the Supreme Court's precedents concerning obviousness, including particularly the seminal decisions in Graham v. John Deere Co., 383 U.S. 1 (1966), Anderson's Black Rock v. Pavement Salvage Co., 396 U.S. 57 (1969) and Sakraida v. Ag Pro, 425 U.S. 273 (1976). KSR urged that these cases, decided before the creation of the Federal Circuit, govern 'combination patents' and hold that a patent claim is invalid for obviousness if each element can be found in the prior art and serves the same purpose in the claimed invention as it did in the prior art. In other words, according to KSR, the Supreme Court never required a suggestion or motivation to combine elements from two different references, and the Federal Circuit's test improperly favors patent applicants and makes it too difficult for patent examiners and accused infringers to show that a patent is obvious.

The Solicitor General took KSR's side, but rather than supporting KSR's 'capability' test, argued that the standard is 'innovation' and courts should simply ask if the claimed invention is 'sufficiently innovative' to deserve patent protection.

Teleflex's approach, by contrast, was to argue that the 'teaching suggestion motivation' test is consistent with the Supreme Court's precedents on obviousness, both before the 1952 patent act and after, and moreover that the Federal Circuit's test is flexible, giving patent examiners many ways to reject invalid patents and accused infringers many ways to invalidate wrongly issued patents. According to Teleflex, earlier Supreme Court cases did in fact consider the hypothetical inventor's motivation, as an aspect of the scope and content of the prior art and the knowledge of one of ordinary skill. The Federal Circuit has often found motivation from the nature of the specific problem to be solved, stating that 'this form of motivation to combine is particularly relevant with simpler, me-chanical technologies.' Ruiz v. AB Chance, 357 F.3d 1270, 1277 (Fed. Cir. 2004). But it has also found motivation in publications (Brown & Williamson Tobacco Corp. v. Phillip Morris, 229 F.3d 1120, 1126-28 (Fed. Cir. 2000); McNeil PPC, Inc. v. Lerrigo Co., 337 F.3d 1362, 1369-70 (Fed. Cir. 2003)), from changes in related technology necessitating corresponding solutions, the 'prior art as a whole' (In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)), customer's needs and preferences (National Steel Car, Ltd. v. Canadian Pacific Ry., 357 F.3d 1319, 1339 n.22 (Fed. Cir. 2004); Novo Nordisk v. Becton Dickinson and Co., 304 F.3d 1357, 1364-65 (Fed. Cir. 2002)), or from expert testimony describing the knowledge of one of ordinary skill (Motorola Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997)). The TSM test is not to blame for too many questionable patents which, Teleflex maintained, is a problem that should be addressed by Congress, not by the Court upsetting decades of precedent.

In the November oral argument, before a courtroom packed with patent examiners, patent litigators, law professors, and journalists, the justices had plain-spoken, practical questions for counsel for both parties.

Justice Anthony Kennedy expressed difficulty understanding what test KSR wanted the Court to announce to replace the Federal Circuit's test: 'If they [other claims] are invalid, then I have ' I'm struggling to find out what your test is. I don't know what your test is.' The result of the Petitioner's difficulty in articulating its proposed 'capability' test was that it risked coming across as a 'we know it when we see it' standard that smacks of hindsight, the very danger that the Court has often warned of.

The justices had similar problems with the government's proposed test. For example, Justice Ruth Bader Ginsburg mused to the Deputy Solicitor General, 'I understand your brief to say is that it has to be supplemented with what you have called, you've labeled 'sufficiently innovative?' How is a trier supposed to know if something ' in other words I think what you're suggesting as a supplement is rather vague.' The Deputy Solicitor readily agreed that 'sufficiently innovative' is more of a description than a test and argued that Sakraida v. Ag Pro provided the right framework, holding a claim obvious where each of the elements can be found in the prior art and each of the elements is merely performing the same function it performed in the prior art.

The justices did not seem particularly piqued by the accusation that the Federal Circuit was flaunting precedent, but broadly seemed quite concerned that the TSM test was difficult in application and had not been applied consistently even within the Federal Circuit. For example, Justice Antonin Scalia accepted that the Federal Circuit's test is flexible and encompasses multiple inquiries but considered that the TSM test's flexibility to be a flaw, rather than an asset: 'It is misleading to say that the whole world is embraced within these three nouns, teaching, suggestion, or motivation, and then you define teaching, suggestion or motivation to mean anything that renders it non-obvious.'

Another aspect of the argument that surprised patent specialists in attendance was the Court's lack of interest in the Asano patent, the prior art on which KSR and the district court relied as the basis for obviousness. Several justices seemed puzzled that the lawyers argued what Asano does or does not teach. They seemed much more inclined, at least during the argument, to consider the validity of Teleflex's patent by applying their own experience with automobiles and mechanical principles. The standard of review did not seem foremost in their minds.

Justice Kennedy's question 'Can we keep the motivation test and supplement it with other, other means of, other ways of showing obviousness?' probably portends the decision we can expect this spring. The Court seems likely to hold that the teachings, suggestions, and implicit motivations inherent in the prior art are proper considerations, but that patent examiners and a reviewing court can and should consider other factors bearing on obviousness as well. These may include the factors that the Court previously labeled 'secondary considerations' including commercial success of the invention, long-felt but unsolved needs, and the failure of others trying to solve the same problem to arrive at the invention.

From a lawyer's point of view, if you represent a patentee with a questionable patent, it makes sense to move hastily, in case the Supreme Court's decision really improves the odds for parties arguing obviousness, while if you represent an accused infringer, you likely want to wait to bring a motion or seek a re-examination. Anyone briefing obviousness while awaiting the decision will be wise to argue using the language of Graham and Sakraida as well as that of the Federal Circuit's TSM cases discussed above. No matter what the Supreme Court does, it is unlikely that there will be a flood of declaratory judgment suits challenging patents for obviousness, because the justices seem inclined to adopt a middle-ground approach to the question of obviousness.

Elizabeth Rader is a senior counsel in the intellectual property and appellate groups of Akin Gump Strauss Hauer & Feld LLP. Thomas Goldstein argued KSR v. Teleflex for the respondent and is chair of the firm's Supreme Court litigation practice.

The authors are co-counsel to the respondent in KSR International Co. v. Teleflex.

The U.S. Supreme Court has recently shown an interest in intellectual property in general and patents in particular. Most prominent among the recent cases is KSR International Co. v. Teleflex Inc., which presents perhaps the most difficult question in substantive patent law: When is the subject of a patent application a true 'invention' ' that is, something that promotes the progress of a useful art sufficient to warrant giving the applicant exclusive rights to the technology claimed for the next 20 years. Conversely, when is the invention 'obvious' ' merely taking a step that anyone of ordinary skill would take, confronted with the same problem and possessing all the knowledge already known to the field?

Since the Supreme Court assigned the issue of claim construction to the court rather than the jury more than 10 years ago, arguments regarding whether a patent claim is invalid for anticipation under 35 U.S.C. '102 have become simpler, often reduced to filling in charts mapping claim terms to parts and steps. But arguments over 'obviousness' regularly involve sophisticated analyses resting on patents, articles, and expert testimony directed to the fundamental question of whether the subject matter is really an 'invention' promoting progress or instead merely the work of a skilled artisan using knowledge available to all.

The KSR case involves a patent ('Engelgau') on an adjustable gas pedal with an electronic throttle control that substitutes for a traditional mechanical throttle control. In previous gas pedal designs that combined an electronic throttle control and an adjustable pedal, the throttle control moved with the pedal itself within the vehicle's footwell. In the subject patent, by contrast, the throttle control is fixed to the pedal support and does not travel with the pedal. The new design was more compact and less expensive than the prior art.

When Teleflex sued KSR for infringement on the basis of a KSR device with a fixed electronic throttle control, KSR moved for summary judgment, urging that the Engelgau patent was invalid for obviousness over a prior art patent ('Asano'). (The patent-in-suit is in fact currently held by a different company, Dri-vesol Worldwide, but the case has continued under the Teleflex name.) Asano claimed an adjustable gas pedal with a manual throttle control, but KSR argued that the advantages of an electronic throttle control were well known and an inventor would find it obvious to modify Asano by attaching an electronic control to Asano. The district court agreed, but the Federal Circuit reversed and remanded, holding that the ruling misapplied that court's settled 'TSM' test for obviousness: whether there was any 'teaching, suggestion or motivation' to combine elements found in two or more prior art references in the way claimed in the patent. The court of appeals further held that the district court improperly resolved disputes of fact in favor of the moving party by crediting KSR's witnesses and not Teleflex's.

In its petition for certiorari and its briefs on the merits, KSR accused the Federal Circuit of boldly disregarding the Supreme Court's precedents concerning obviousness, including particularly the seminal decisions in Graham v. John Deere Co ., 383 U.S. 1 (1966), Anderson's Black Rock v. Pavement Salvage Co. , 396 U.S. 57 (1969) and Sakraida v. Ag Pro , 425 U.S. 273 (1976). KSR urged that these cases, decided before the creation of the Federal Circuit, govern 'combination patents' and hold that a patent claim is invalid for obviousness if each element can be found in the prior art and serves the same purpose in the claimed invention as it did in the prior art. In other words, according to KSR, the Supreme Court never required a suggestion or motivation to combine elements from two different references, and the Federal Circuit's test improperly favors patent applicants and makes it too difficult for patent examiners and accused infringers to show that a patent is obvious.

The Solicitor General took KSR's side, but rather than supporting KSR's 'capability' test, argued that the standard is 'innovation' and courts should simply ask if the claimed invention is 'sufficiently innovative' to deserve patent protection.

Teleflex's approach, by contrast, was to argue that the 'teaching suggestion motivation' test is consistent with the Supreme Court's precedents on obviousness, both before the 1952 patent act and after, and moreover that the Federal Circuit's test is flexible, giving patent examiners many ways to reject invalid patents and accused infringers many ways to invalidate wrongly issued patents. According to Teleflex, earlier Supreme Court cases did in fact consider the hypothetical inventor's motivation, as an aspect of the scope and content of the prior art and the knowledge of one of ordinary skill. The Federal Circuit has often found motivation from the nature of the specific problem to be solved, stating that 'this form of motivation to combine is particularly relevant with simpler, me-chanical technologies.' Ruiz v. AB Chance , 357 F.3d 1270, 1277 (Fed. Cir. 2004). But it has also found motivation in publications ( Brown & Williamson Tobacco Corp. v. Phillip Morris , 229 F.3d 1120, 1126-28 (Fed. Cir. 2000); McNeil PPC, Inc. v. Lerrigo Co. , 337 F.3d 1362, 1369-70 (Fed. Cir. 2003)), from changes in related technology necessitating corresponding solutions, the 'prior art as a whole' ( In re Fulton , 391 F.3d 1195, 1201 (Fed Cir. 2004)), customer's needs and preferences ( National Steel Car, Ltd. v. Canadian Pacific Ry. , 357 F.3d 1319, 1339 n.22 (Fed. Cir. 2004); Novo Nordisk v. Becton Dickinson and Co. , 304 F.3d 1357, 1364-65 (Fed. Cir. 2002)), or from expert testimony describing the knowledge of one of ordinary skill ( Motorola Inc. v. Interdigital Tech. Corp ., 121 F.3d 1461, 1472 (Fed. Cir. 1997)). The TSM test is not to blame for too many questionable patents which, Teleflex maintained, is a problem that should be addressed by Congress, not by the Court upsetting decades of precedent.

In the November oral argument, before a courtroom packed with patent examiners, patent litigators, law professors, and journalists, the justices had plain-spoken, practical questions for counsel for both parties.

Justice Anthony Kennedy expressed difficulty understanding what test KSR wanted the Court to announce to replace the Federal Circuit's test: 'If they [other claims] are invalid, then I have ' I'm struggling to find out what your test is. I don't know what your test is.' The result of the Petitioner's difficulty in articulating its proposed 'capability' test was that it risked coming across as a 'we know it when we see it' standard that smacks of hindsight, the very danger that the Court has often warned of.

The justices had similar problems with the government's proposed test. For example, Justice Ruth Bader Ginsburg mused to the Deputy Solicitor General, 'I understand your brief to say is that it has to be supplemented with what you have called, you've labeled 'sufficiently innovative?' How is a trier supposed to know if something ' in other words I think what you're suggesting as a supplement is rather vague.' The Deputy Solicitor readily agreed that 'sufficiently innovative' is more of a description than a test and argued that Sakraida v. Ag Pro provided the right framework, holding a claim obvious where each of the elements can be found in the prior art and each of the elements is merely performing the same function it performed in the prior art.

The justices did not seem particularly piqued by the accusation that the Federal Circuit was flaunting precedent, but broadly seemed quite concerned that the TSM test was difficult in application and had not been applied consistently even within the Federal Circuit. For example, Justice Antonin Scalia accepted that the Federal Circuit's test is flexible and encompasses multiple inquiries but considered that the TSM test's flexibility to be a flaw, rather than an asset: 'It is misleading to say that the whole world is embraced within these three nouns, teaching, suggestion, or motivation, and then you define teaching, suggestion or motivation to mean anything that renders it non-obvious.'

Another aspect of the argument that surprised patent specialists in attendance was the Court's lack of interest in the Asano patent, the prior art on which KSR and the district court relied as the basis for obviousness. Several justices seemed puzzled that the lawyers argued what Asano does or does not teach. They seemed much more inclined, at least during the argument, to consider the validity of Teleflex's patent by applying their own experience with automobiles and mechanical principles. The standard of review did not seem foremost in their minds.

Justice Kennedy's question 'Can we keep the motivation test and supplement it with other, other means of, other ways of showing obviousness?' probably portends the decision we can expect this spring. The Court seems likely to hold that the teachings, suggestions, and implicit motivations inherent in the prior art are proper considerations, but that patent examiners and a reviewing court can and should consider other factors bearing on obviousness as well. These may include the factors that the Court previously labeled 'secondary considerations' including commercial success of the invention, long-felt but unsolved needs, and the failure of others trying to solve the same problem to arrive at the invention.

From a lawyer's point of view, if you represent a patentee with a questionable patent, it makes sense to move hastily, in case the Supreme Court's decision really improves the odds for parties arguing obviousness, while if you represent an accused infringer, you likely want to wait to bring a motion or seek a re-examination. Anyone briefing obviousness while awaiting the decision will be wise to argue using the language of Graham and Sakraida as well as that of the Federal Circuit's TSM cases discussed above. No matter what the Supreme Court does, it is unlikely that there will be a flood of declaratory judgment suits challenging patents for obviousness, because the justices seem inclined to adopt a middle-ground approach to the question of obviousness.

Elizabeth Rader is a senior counsel in the intellectual property and appellate groups of Akin Gump Strauss Hauer & Feld LLP. Thomas Goldstein argued KSR v. Teleflex for the respondent and is chair of the firm's Supreme Court litigation practice.