Citation. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed. 2d 705, 82 U.S.P.Q.2D (BNA) 1385, 75 U.S.L.W. 4289, 20 Fla. L. Weekly Fed. S 248 (U.S. Apr. 30, 2007)
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Brief Fact Summary.
Teleflex (Plaintiff) sued KSR (Defendant) for patent infringement based on an electronic sensor that was added to an existing pedal design by Defendant. Defendant argued the Plaintiff’s patent claim was invalid because the addition was obvious.
Synopsis of Rule of Law.
In order to determine the obviousness of a patent claim, the courts must consider the prior art, the differences between the prior art and the subject matter of the claim, and the ordinary skill level required of a person in the subject matter of the claim before considering secondary factors and the test for teaching, suggestion, or the patentee’s motivation.
Facts.
Plaintiff held the exclusive license to the patent entitled “Adjustable Pedal Assembly with Electronic Throttle Control.” One claim of the patent involved adding an electronic sensor to the pedal which then transmitted information to the computer controlling the engine’s throttle. Defendant added an electronic sensor to its existing pedal design. Plaintiff sued Defendant for patent infringement. Defendant argued the claim by Plaintiff was invalid under 35 U.S.C. § 103 because the addition of the electronic sensor was obvious. The district court granted summary judgment to Defendant and Plaintiff appealed. The court of appeals applied the “teaching, suggestion, or motivation” [TMS] test and reversed. The Supreme Court granted the Defendant’s writ of certiorari in order to address the obviousness analysis.
Issue.
In order to determine the obviousness of a patent claim, must the courts consider the prior art, the differences between the prior art and the subject matter of the claim, and the ordinary skill level required of a person in the subject matter of the claim before considering secondary factors and the test for teaching, suggestion, or the patentee’s motivation?
Held.
(Kennedy, J.) Yes. In order to determine the obviousness of a patent claim, the courts must consider the prior art, the differences between the prior art and the subject matter of the claim, and the ordinary skill level required of a person in the subject matter of the claim before considering secondary factors and the test for teaching, suggestion, or the patentee’s motivation. When the subject matter of a patent application as a whole is obvious to a person ordinarily skilled in the art to which the subject matter pertains, 35 U.S.C. § 103 prohibits issuance of a patent. [The Court reviewed the prior art of federal and sensor technology.] The U.S. Patent and Trademark Office (PTO) rejected a prior patent application that did not involve a fixed pivot point because the technology was “obvious,” unlike the Plaintiff’s licensed patent at issue. The patent license was granted to Plaintiff because of the limitation of the fixed pivot point. The district court considered the prior art and after examining the differences between the patent claim and the prior art found the skill level to be that of a mechanical engineer familiar with pedal designs. The district court did not find much difference between the prior art and the patent claim, and also found no secondary factors that were enough to overcome the obviousness. The district court then had to apply the TSM test and found Defendant satisfied it because the industry inevitably led to combining electronic sensors and adjustable pedals in addition to prior art suggesting the combination. The court of appeals reversed on the ground that the district court was not strictly applying the TSM test. The appellate court examined the purpose of the two pedal designs and determined they were different. The appellate court also held that “obvious to try” the pedal and sensor combination did not meet the level of obviousness. This Court’s precedents reflect a broader and more general examination of obviousness. The PTO is encouraged by the TSM test to consider the reason a person ordinarily skilled in a field combined two known elements in a way that resulted in a potentially new patent subject matter. However, the general principle of the TSM test cannot be applied rigidly. The appellate court cannot consider only the motivation for joining two known elements because the joining may have been obvious to the patentee, but not necessarily an obvious claim under § 103. It was also wrongly stated by the appellate court that an ordinarily skilled person might not put known elements together in a new way even when each element was designed on its own to accomplish a specific and alternative purpose. Finally, the appellate court was wrong in stating “obvious to try” was not “obvious” because it might sometimes rise to that level if a known problem has a limited number of solutions. Considering the facts in this case, the patent claim does meet the level of obviousness. [The Court considered the prior art and differences between the claims.] When determining that the patent claim was obvious and therefore invalid, the district court carefully and appropriately applied this Court’s precedent and the statutory elements of § 103. The court of appeals made a mistake in applying a TSM test too rigidly. Reversed and remanded.
Discussion.
The Supreme Court ignored the Federal Circuit Court’s well-established precedence applying the TSM test although it preserved the Graham v. John Deere Co., 383 U.S. 1 (1966), elements for applying § 103 to an application for patent. However, electrical and mechanical patent applicants may feel the impact of the decision more than other applicants. The examiners can review the individual electrical/mechanical parts of the prior art to determine if the new claim, although not accomplished previously, would have been an obvious result.
