KSR International Co. v. Teleflex, Inc.

Brief Fact Summary.

Teleflex, Inc. (Plaintiff) brought suit against KSR International Co. (KSR) (Defendant) for patent infringement based on KSR’s (Defendant) addition of an electronic sensor to an existing pedal design. Defendant argued the addition was obvious, so Plaintiff’s patent claim was invalid.

Synopsis of Rule of Law.

When determining a patent claim’s obviousness, the courts must consider the prior art, the differences between the prior art and the subject matter of the claim, and the level of ordinary skill a person must have in the subject matter of the claim before secondary factors and the test for teaching, suggestion, or motivation of the patentee are considered.

Facts.

Teleflex, Inc. (Plaintiff) held the exclusive license to the patent entitled “Adjustable Pedal Assembly with Electronic Throttle Control.†One claim of the patent involved the addition of an electronic sensor to the pedal that then transmitted information to the computer that controls the engine’s throttle. KSR International Co. (KSR) (Defendant) added an electronic sensor to its existing pedal design. Teleflex (Plaintiff) sued KSR (Defendant) for patent infringement. Defendant argued the Plaintiff’s claim was invalid under 35 U.S.C. § 103 because the addition of the electronic sensor was obvious. The district court granted judgment to Defendant and Plaintiff appealed. The court of appeals applied the “teaching, suggestion, or motivation†(TSM) test and reversed. KSR (Defendant) filed for a writ of certiorari, which the United States Supreme Court granted to address the obviousness analysis.

Issue.

When determining a patent claim’s obviousness, must the courts consider the prior art, the differences between the prior art and the subject matter of the claim, and the level of ordinary skill a person must have in the subject matter of the claim before secondary factors and the test for teaching, suggestion, or motivation of the patentee are considered?

Held.

(Kennedy, J.) Yes. When determining a patent claim’s obviousness, the courts must consider the prior art, the differences between the prior art and the subject matter of the claim, and the level of ordinary skill a person must have in the subject matter of the claim before secondary factors and the test for teaching, suggestion, or motivation of the patentee are considered. 35 U.S.C. § 103 prohibits issuance of a patent when the subject matter as a whole is obvious to a person with ordinary skill in the art to which the subject matter pertains. [The Court reviewed the prior art of pedal and sensor technology.] The U.S. Patent and Trademark Office (PTO) rejected a prior patent application for a pedal technology that, unlike the Teleflex (Plaintiff) licensed patent at issue, did not involve a fixed pivot point because the technology was “obvious.†The Teleflex (Plaintiff) licensed patent at issue here, did not involve a fixed pivot point as the technology was “obvious.†The Plaintiff’s licensed patent was granted because of the limitation of the fixed pivot point. The district court considered the prior art, examined the differences between the patent claim and the prior art, and then found the skill level to be that of a mechanical engineer familiar with pedal designs. The district court found little difference between the prior art and the patent claim and no secondary factors sufficient to overcome the obviousness. The district court then applied the TSM test and found Defendant satisfied it because the industry inevitably led to the combination of electronic sensors and adjustable pedals plus the prior art suggested the combination. The court of appeals reversed on the ground that the district court was not strictly applying the TSM test. The appellate court looked at the purpose of the two pedal designs and found them to be different. The appellate court also held that “obvious to try†the pedal and sensor combination did not rise to the level of obviousness. The precedents of this Court reflect a broader, more general inquiry into obviousness. The TSM test encourages the PTO to consider the reason a person of ordinary skill in the field combined two known elements in such a way to result in a potentially new patent subject matter. The general principle of the TSM test cannot be applied rigidly. The appellate court cannot consider only the motivation for the joining of two known elements because the joining may have been obvious to the patentee but that does not make the claim obvious under § 103. The appellate court also wrongly asserted that a person of ordinary skill might not put known elements together in a new fashion even when those elements were designed to individually accomplish a specific, alternate purpose. Finally, the appellate court erred in stating “obvious to try†was not “obvious†because sometimes it might rise to that level if a known problem has a finite number of solutions. In consideration of the facts here, the patent does rise to the level of obviousness [The Court considered the prior art and differences between the claims.] The district court appropriately and carefully applied this Court’s precedent and the statutory elements of § 103 when determining the patent claim was obvious and therefore invalid. The court of appeals erred in applying too rigid a TSM test. Reversed and remanded.

Discussion.

The Supreme Court ignored the federal circuit’s well-established precedent applying the TSM test although it retained the Graham v. John Deere Co., 383 U.S. 1 (1966), elements for applying § 103 to a patent application. The impact of the decision, however, may be felt more by electrical and mechanical patent applicants than other applicants. The examiners can review the individual electrical/mechanical parts of the prior art to determine if the new claim would have been an obvious result even if it had not been accomplished previously.