Supreme Court Revisits the Determination of Obviousness

 

KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.,  No. 04-1350 (U.S. April 30, 2007)

 

Issue: Must a court apply the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art in determining whether a patent claim is obvious?

 

Answer: No

 

Background: Teleflex sued KSR International Company (“KSR”) for infringement of claim 4 of U.S. Pat. 6,237,565B1 (‘565 patent).  Claim 4 is directed to a mechanism for combining an electronic sensor with an adjustable automobile pedal so that the pedal’s position can be transmitted to a computer that controls the throttle in the vehicle’s engine.  Claim 4 recites: 

 

"A vehicle control pedal apparatus comprising: a support adapted to be mounted to a vehicle structure;

an adjustable pedal assembly having a pedal arm moveable in for[e] and aft directions with respect to said support;

a pivot for pivotally supporting said adjustable pedal assembly with respect to said support and defining a pivot axis; and

an electronic control attached to said support for controlling a vehicle system;

said apparatus characterized by said electronic control being responsive to said pivot for providing a signal that corresponds to pedal arm position as said pedal arm pivots about said pivot axis between rest and applied positions wherein the position of said pivot remains constant while said pedal arm moves in fore and aft directions with respect to said pivot.”

 

KSR countered that claim 4 was invalid for being obvious under 35 U. S. C. §103.

 

There were several patents that the Court considered as relevant prior art as follows. U.S. Patent No. 5,010,782 (Asano) taught a support structure for a pedal such that even when the pedal location is adjusted, one of the pedal’s pivot points stays fixed. In addition, with the Asano pedal the force necessary to push the pedal down is the same regardless of adjustments to its location. U.S. Patent No. 5,460,061 (Redding) taught a sliding mechanism where both the pedal and the pivot point are adjusted. U.S. Patent No. 5,241,936 (Byler), taught that it is preferable to detect the pedal’s position in the pedal assembly, not in the engine. Byler also disclosed a pedal with an electronic sensor on a pivot point. U.S. Patent No. 5,063,811 (Smith) taught that the sensor should be put on a fixed part of the pedal assembly rather than in or on the pedal’s footpad, to prevent chafing and wear of the wires connecting the sensor to the computer, and to avoid grime and damage from the driver’s foot.  U.S. Patent No. 5,385,068 (White) disclosed a modular sensor, which is designed independently of the pedal so that it can be simply attached to mechanical pedals, permitting the pedals to be used in automobiles with computer-controlled throttles. U.S. Patent No. 5,819,593 (Rixon) discloses an adjustable pedal assembly with an electronic sensor for detecting the pedal’s position. With Rixon the sensor is located in the pedal footpad. The Rixon pedal was known to have the drawback of wire chafing.

 

KSR developed an adjustable mechanical pedal (the ‘976 pedal). To make the ’976 pedal compatible with the trucks, KSR took the ‘976 design and added a modular sensor.  Teleflex sued KSR for infringement based on the modified ‘976 pedal. 

 

District Court Decision

 

The District Court granted summary judgment to KSR. The District Court reviewed the relevant history of pedal design, the scope of the ‘565 patent, and the relevant prior art. The District Court applied the analysis set for in Graham v. John Deere 148 USPQ 459 (U.S. 1966) and decided that the level of “ordinary skill in pedal design was an undergraduate degree in mechanical engineering (or an equivalent amount of industry experience) and familiarity with pedal control systems for vehicles.”   Under Graham, the District Court compared the teachings of the prior art to the claims of ‘565 patent and found “little difference.” The District Court concluded that Asano taught all of the features of claim 4 except the use of a sensor to detect the pedal’s position and transmit it to the computer controlling the throttle. The court found the missing feature in the White patent and the sensors already on the market.

The District Court also applied the TSM test and held KSR had satisfied the test. The court reasoned “(1) the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals, (2) Rixon provided the basis for these developments, and (3) Smith taught a solution to the wire chafing problems in Rixon, namely locating the sensor on the fixed structure of the pedal.”

 

Court of Appeals for the Federal Circuit Decision

 

Court of Appeals for the Federal Circuit reversed, ruling that the District Court had not been strict enough in applying the TSM test, having failed to make “‘finding[s] as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention’...to attach an electronic control to the support bracket of the Asano assembly.” 119 Fed. Appx., at 288 (brackets in original) (quoting In re Kotzab, 217 F. 3d 1365, 1371 (CA Fed. 2000)).” The CAFC also held that unless the prior art references addressed the precise problem that the patentee was trying to solve, there would be no motivation for an inventor to look at those references in solving the problem of the invention.  The court noted that problem addressed by Asano was “the constant ratio problem”, i.e. ensuring that the force required to depress the pedal is the same no matter how the pedal is adjusted.  The court further found Rixon irrelevant because the Rixon pedal suffered from the problem of wire chafing but was not designed to address the problem. Thus, Rixon did not teach anything useful to the inventors of the ’565 patent. Smith was also viewed as irrelevant because the Smith did not relate to adjustable pedals and did not “necessarily go to the issue of motivation to attach the electronic control on the support bracket of the pedal assembly.” Thus, the CAFC held, the references would not have led a person of ordinary skill to put a sensor on the sort of pedal described in Asano.

 

Finally, the CAFC held that while it might have been obvious to try the combination of Asano and a sensor “[o]bvious to try” has long been held not to constitute obviousness.’” Id., at 289 (quoting In re Deuel, 51 F. 3d 1552, 1559 (CA Fed. 1995))”.

 

Reasoning: The Court rejected the rigid application of the TSM test dictated by the CAFC.  The Court noted that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results” and “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”  “[A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”

 

            The Court instructed that there are many factors that should be considered when determining whether an invention if obvious and that “[o]ften, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”  The Court further noted that the reasoning used by a court should be explicit and a finding of obviousness cannot be based on mere conclusory statements and there must be “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”. However, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. “

 

            The Court discussed several errors made by the CAFC in reaching their holding:

1. “The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve....The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct 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 second error of the Court of Appeals lay in its 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....Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.

3. The Fed. Cir. also concluded in error, that “a patent claim cannot be proved obvious merely by showing that the combination of elements was “obvious to try.” ...When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.”

4. Finally, the Court noted that the CAFC “drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. A fact finder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”  However, “[r]igid preventative rules that deny fact finders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”

 

Holding: “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents....There is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs....In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.”

 

‘The District Court was correct to conclude that...it was obvious to a person of ordinary skill to combine Asano with a pivot-mounted pedal position sensor. There then existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance. The Court of Appeals considered the issue too narrowly by, in effect, asking whether a pedal designer writing on a blank slate would have chosen both Asano and a modular sensor similar to the ones used in the Chevrolet truck line and disclosed in the ’068 patent....The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor....For a designer starting with Asano, the question was where to attach the sensor. The consequent legal question, then, is whether a pedal designer of ordinary skill starting with Asano would have found it obvious to put the sensor on a fixed pivot point. The prior art discussed above leads us to the conclusion that attaching the sensor where both KSR and Engelgau put it would have been obvious to a person of ordinary skill.”