Patent Obviousness

KSR Int'l Co. v. Teleflex Inc.

Teleflex sued KSR for patent infringement on a patent it held for an assembly whereby the position of a pedal would be measured electronically and transmitted to the portion of a vehicle that controls the throttle. As a defense KSR argued the patent was invalid under the Patent Act which forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The Court of Appeals applies a test whereby if there had been some academic suggestion (“teaching, suggestion, or motivation”) (TSM test) to combine the prior art and teachings the subject matter is held obvious.

The previous state-of-the-art for car pedals (a very complicated and technical mechanical-relay-and-feedback system -- a wire and a spring) did not allow for adjustment to fit the stature of the driver. In 1989 Asano filed a patent for an adjustable pedal, which required that at least one pivot point remain the same so that the pressure required to make speed adjustments was always the same. Patents testing electronic control methods showed that it was best to put the sensor near the pedal, but not on the footpad. Redding filed a patent application for an electronic pedal which was rejected, then Engelgau filed another one which was accepted. The latter was more specific in that it required that the sensor be contained in a fixed pivot point.

An issued patent is presumed to be valid. The District court found that the patent simply combined two existing patents and teachings, but was required by precedent to applyteh TSM test which the District court held was satisfied. Suffice it to say, the more technical you get, the more innovations you can see in Engelgau patent, which the Court of Appeals held was valid.

The Court of Appeals was wrong in applying such a strict approach. Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive. “A patent for a combination which only united old elements with no change in their respective functions … obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Under Adams, when a patent uses a structure that is already known but substitutes that structure’s elements (changing chemicals in a battery) that combination must do more than yield a predictable result, but when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be non-obvious. In Anderson’s-Black Rock the Court held that where the combination of two pre-existing mechanisms (a radiant heat burner and a paving machine) did no more together than the mechanisms would do separately, though the combination performed a useful function in tandem, it was obvious. Finally, in Sakraida the Court concluded that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious.

For such combinations to be held obvious, however, there must have been some teaching on the subject, or some reason to believe that a person of ordinary skill in the relevant field would have combined the elements in the way the claimed new invention does. The error here was a narrow reading of the teaching requirement, and overemphasis on published materials. The court of appeals restricted its inquiry to the precise problem that the patentee was trying to solve, rather than the obviousness to a person of ordinary skill in the field trying to solve any given problem. The court of appeals also assumed that such an ordinary person would have been restricted to the previous knowledge, despite common sense or abstraction of the previous knowledge. Finally, while courts should be cognizant of hindsight bias, factfinders should not be prevented from employing common sense by rules prohibiting ex post evaluations per se.
Teleflex has defaulted on the issue of whether the patent actually covered the device in question because their argument was not specific, and given the importance of the argument, it would have been if they had tried to seriously challenge it.

The patent was obvious because it merely combined prior knowledge and teachings in a way that a person of ordinary skill in the profession would.

Finally, the court of appeals erred in finding a genuine issue of material fact where that fact did not draw into question any of the issues presented to the court.