KSR Int'l Co. v. Teleflex Inc. et al.: Supreme Court Clarifies Obviousness

In KSR, although the Court noted there is 'no necessary inconsistency between the idea underlying the TSM test and the Graham analysis,' it held the rigid application of the TSM test to be incompatible with Supreme Court precedents. Id. Nevertheless, the Court confirmed that the TSM test continues to provide 'helpful insight' regarding the reason(s) prompting a person of ordinary skill in the relevant field to combine the elements in the way a new claimed invention does. However, one should exercise caution so as not to permit the rigid and mandatory application of such test. Id.

The following examines the background to the case, the district court and Federal Circuit decisions, and discusses the Supreme Court's opinion and holdings. Next month's installment will focus on the implications of the KSR decision for inventors, patentees, and the patent system generally, and will discuss cases decided in the post KSR world.

Background: The Engelgau Patent

Plaintiff Teleflex Inc. is the exclusive licensee of the patent at issue, U.S. Pat. No. 6,237,565 (the 'Engelgau patent'), which is directed to an adjustable automobile gas pedal. Claim 4 of the Engelgau patent describes a mechanism that combines an electronic sensor with an adjustable automobile pedal, enabling the pedal's position to be transmitted to a computer that controls the engine's throttle. 127 S.Ct. at 1734. Older automobile engines used a cable or other mechanical link connected to the gas pedal to manipulate the throttle. Newer models use computer-controlled throttles that open and close in response to electrical signals from sensors. The prior art did not disclose a pedal that could be adjusted based on the size of the driver and that included a sensor, as claimed by Engelgau. Teleflex sued KSR for infringing the Engelgau patent, and KSR counterclaimed that the patent claim at issue was invalid under 35 U.S.C. '103 because its subject matter was obvious.

The District Court Decision

The district court identified the scope and content of the relevant prior art, compared the teachings of the prior art to the claims of the Engelgau patent, found 'little difference,' and concluded that such differences were obvious in light of the level of ordinary skill in the art of pedal design. 127 S.Ct. at 1738. It found that one prior art reference, U.S. Pat. No 5,010,782 to Asano, taught everything contained in claim 4 except the use of a sensor to detect the pedals' position and to transmit it to the computer controlling the throttle. It held that this one missing feature was found in other prior art patents and sensors used by other automakers. Id.

Following Federal Circuit precedent, the district court then held that KSR satisfied the TSM test, reasoning that:

• the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals;
• U.S. Patent No. 5,819,593 to Rixon discloses an adjustable pedal assembly with an electronic sensor for detecting the pedal's position; and
• although the Rixon sensor was located in the pedal footpad, and the device was known to suffer from wire chafing when the pedal was depressed and released, U. S. Patent No. 5,063,811 to Smith taught a solution to Rixon's chafing problems by positioning the sensor on the pedal's fixed structure.

The district court concluded that these teachings would lead to the claim 4 combination of a pedal like that disclosed in the Asano patent with a pedal position sensor. Id. at 1735-36, 1738. Attempting to follow the law of obviousness set out by the Supreme Court in Graham, it granted summary judgment of invalidity in KSR's favor. Id. at 1738.

The Federal Circuit Decision

The Federal Circuit reversed, relying primarily on what it deemed the district court's lax application of the TSM test, and criticized the lower court for having failed to make specific findings as to the knowledge of a skilled artisan that would have motivated 'one with no knowledge of [the] invention' to combine the prior art references. Id. Furthermore, the Federal Circuit found that the prior art references did not address the precise problem that the patentee was trying to solve and therefore would not motivate an inventor to look at those references. Lastly, the Federal Circuit affirmed its long-standing belief that 'obvious to try' does not constitute obviousness. Id. at 1738-39.

The Supreme Court's Analysis

The Supreme Court found error with four aspects of the Federal Circuit's decision:

1) Strict application of the TSM test. This prevented both courts and patent examiners from looking outside the problem the patentee was trying to solve. Under the Supreme Court's analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

2) The assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem as the inventor. Common sense, noted the Court, teaches that familiar items may have obvious uses beyond their primary purposes and one skilled in the art often will be able to fit the teachings of multiple patents together like a puzzle.

3) The prohibition of an 'obvious to try' analysis when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions.

4) The conclusion regarding the risk of courts and patent examiners falling prey to hindsight bias when Graham warned against the temptation to 'read into the prior art' the teachings of the invention at issue and cautioned against slipping into the use of hindsight. The Supreme Court found that '[r]igid preventative rules' that deny fact-finders use of common sense are 'neither necessary under [Supreme Court] case law nor consistent with it.' Id. at 1741-43.

The Court ruled that in determining whether the subject matter of a patent claim is obvious, the objective reach of the claim ' not the particular motivation or the avowed purpose of the patentee ' controls. Id. at 1741-42. If the claim extends to the obvious, it will be invalid under '103.

The Court concluded that the appropriate question for the Federal Circuit was whether a pedal designer of ordinary skill, facing the wide range of needs (a.k.a. problems) created by developments in the field of endeavor, would have seen a benefit to upgrade either the Asano or Rixon patents. Though designers may have started from scratch, automotive design, as in many other fields, would have had a reason to make pre-existing pedals work with new engines. Id. at 1744-45.

Where We Go from Here

The question after KSR is where do we go from here? Although the Supreme Court acknowledged that 'inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known,' it also cautioned against granting patent protection to advances that would occur in the ordinary course, without real innovation. Id. at 1741. How courts will resolve this tension remains to be seen. What is clear is that those obtaining, enforcing, or litigating against patents must keep the KSR decision in mind.

Matthew W. Siegal ([email protected]) is a partner and Kevin C. Ecker ([email protected]) is an associate in the Intellectual Property Practice Group of the New York office of Stroock & Stroock & Lavan LLP. The opinions expressed are those of the authors and do not necessarily reflect the views of their firm or any of its clients.

Part One of a Two-Part Series

Before the Supreme Court's April 30, 2007 decision in KSR Int'l Co. v. Teleflex Inc. et al., 127 S.Ct. 1727 (2007) virtually all patent attorneys were on the edge of their seats. The decision was a clear indication that the Supreme Court disfavored the current state of the law that had been developed by the Federal Circuit for determining whether a patent is invalid for obviousness under 35 U.S.C. '103. The Supreme Court pointed to numerous errors in the Federal Circuit decision and characterized as 'rigid,' 'formalistic,' 'narrow,' 'constricted,' and 'flaw[ed]' the Federal Circuit's requirement that there be proof the claimed combination of elements was arrived at due to a teaching, suggestion, or motivation to combine features from prior art references. Id. at 1739, 1741-42. Instead, the Supreme Court imposed a more flexible approach that sought to emphasize its earlier decisions on obviousness over tests the Federal Circuit had developed to apply the law set forth in those decisions.

The KSR decision replaces the Federal Circuit rule that a patent claim is obvious only if 'some motivation or suggestion to combine the prior art teachings' could be found in the prior art with the more flexible 'functional approach' outlined in the 1966 Supreme Court decision in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684 (1966) and its progeny. See 127 S.Ct. at 1734. The Supreme Court ruled that an obviousness analysis cannot be confined by the formalistic conception of the words 'teaching, suggestion, and motivation,' (the 'TSM test') or by overemphasis on the importance of published articles and the explicit content of issued patents. Id. at 1741.

In KSR, although the Court noted there is 'no necessary inconsistency between the idea underlying the TSM test and the Graham analysis,' it held the rigid application of the TSM test to be incompatible with Supreme Court precedents. Id. Nevertheless, the Court confirmed that the TSM test continues to provide 'helpful insight' regarding the reason(s) prompting a person of ordinary skill in the relevant field to combine the elements in the way a new claimed invention does. However, one should exercise caution so as not to permit the rigid and mandatory application of such test. Id.

The following examines the background to the case, the district court and Federal Circuit decisions, and discusses the Supreme Court's opinion and holdings. Next month's installment will focus on the implications of the KSR decision for inventors, patentees, and the patent system generally, and will discuss cases decided in the post KSR world.

Background: The Engelgau Patent

Plaintiff Teleflex Inc. is the exclusive licensee of the patent at issue, U.S. Pat. No. 6,237,565 (the 'Engelgau patent'), which is directed to an adjustable automobile gas pedal. Claim 4 of the Engelgau patent describes a mechanism that combines an electronic sensor with an adjustable automobile pedal, enabling the pedal's position to be transmitted to a computer that controls the engine's throttle. 127 S.Ct. at 1734. Older automobile engines used a cable or other mechanical link connected to the gas pedal to manipulate the throttle. Newer models use computer-controlled throttles that open and close in response to electrical signals from sensors. The prior art did not disclose a pedal that could be adjusted based on the size of the driver and that included a sensor, as claimed by Engelgau. Teleflex sued KSR for infringing the Engelgau patent, and KSR counterclaimed that the patent claim at issue was invalid under 35 U.S.C. '103 because its subject matter was obvious.

The District Court Decision

The district court identified the scope and content of the relevant prior art, compared the teachings of the prior art to the claims of the Engelgau patent, found 'little difference,' and concluded that such differences were obvious in light of the level of ordinary skill in the art of pedal design. 127 S.Ct. at 1738. It found that one prior art reference, U.S. Pat. No 5,010,782 to Asano, taught everything contained in claim 4 except the use of a sensor to detect the pedals' position and to transmit it to the computer controlling the throttle. It held that this one missing feature was found in other prior art patents and sensors used by other automakers. Id.

Following Federal Circuit precedent, the district court then held that KSR satisfied the TSM test, reasoning that:

• the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals;
• U.S. Patent No. 5,819,593 to Rixon discloses an adjustable pedal assembly with an electronic sensor for detecting the pedal's position; and
• although the Rixon sensor was located in the pedal footpad, and the device was known to suffer from wire chafing when the pedal was depressed and released, U. S. Patent No. 5,063,811 to Smith taught a solution to Rixon's chafing problems by positioning the sensor on the pedal's fixed structure.

The district court concluded that these teachings would lead to the claim 4 combination of a pedal like that disclosed in the Asano patent with a pedal position sensor. Id. at 1735-36, 1738. Attempting to follow the law of obviousness set out by the Supreme Court in Graham, it granted summary judgment of invalidity in KSR's favor. Id. at 1738.

The Federal Circuit Decision

The Federal Circuit reversed, relying primarily on what it deemed the district court's lax application of the TSM test, and criticized the lower court for having failed to make specific findings as to the knowledge of a skilled artisan that would have motivated 'one with no knowledge of [the] invention' to combine the prior art references. Id. Furthermore, the Federal Circuit found that the prior art references did not address the precise problem that the patentee was trying to solve and therefore would not motivate an inventor to look at those references. Lastly, the Federal Circuit affirmed its long-standing belief that 'obvious to try' does not constitute obviousness. Id. at 1738-39.

The Supreme Court's Analysis

The Supreme Court found error with four aspects of the Federal Circuit's decision:

1) Strict application of the TSM test. This prevented both courts and patent examiners from looking outside the problem the patentee was trying to solve. Under the Supreme Court's analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

2) The assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem as the inventor. Common sense, noted the Court, teaches that familiar items may have obvious uses beyond their primary purposes and one skilled in the art often will be able to fit the teachings of multiple patents together like a puzzle.

3) The prohibition of an 'obvious to try' analysis when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions.

4) The conclusion regarding the risk of courts and patent examiners falling prey to hindsight bias when Graham warned against the temptation to 'read into the prior art' the teachings of the invention at issue and cautioned against slipping into the use of hindsight. The Supreme Court found that '[r]igid preventative rules' that deny fact-finders use of common sense are 'neither necessary under [Supreme Court] case law nor consistent with it.' Id. at 1741-43.

The Court ruled that in determining whether the subject matter of a patent claim is obvious, the objective reach of the claim ' not the particular motivation or the avowed purpose of the patentee ' controls. Id. at 1741-42. If the claim extends to the obvious, it will be invalid under '103.

The Court concluded that the appropriate question for the Federal Circuit was whether a pedal designer of ordinary skill, facing the wide range of needs (a.k.a. problems) created by developments in the field of endeavor, would have seen a benefit to upgrade either the Asano or Rixon patents. Though designers may have started from scratch, automotive design, as in many other fields, would have had a reason to make pre-existing pedals work with new engines. Id. at 1744-45.

Where We Go from Here

The question after KSR is where do we go from here? Although the Supreme Court acknowledged that 'inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known,' it also cautioned against granting patent protection to advances that would occur in the ordinary course, without real innovation. Id. at 1741. How courts will resolve this tension remains to be seen. What is clear is that those obtaining, enforcing, or litigating against patents must keep the KSR decision in mind.

Matthew W. Siegal ([email protected]) is a partner and Kevin C. Ecker ([email protected]) is an associate in the Intellectual Property Practice Group of the New York office of Stroock & Stroock & Lavan LLP. The opinions expressed are those of the authors and do not necessarily reflect the views of their firm or any of its clients.