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Patent Law Summary
KSR Int’l Co. v. Teleflex Inc.
04-1350, 2007 WL 1237837, U.S., 04/30/2007
Holding
The Federal Circuit applied its "teaching, suggestion, motivation" ("TSM") test for obviousness too rigidly, resulting in erroneously reversing the District Court's finding of obviousness and granting summary judgment. The patent is invalid for obviousness.
Detailed Summary
Teleflex and KSR are rival designers and manufacturers of adjustable automobile pedals. Teleflex is the exclusive licensee of the patent at issue here, for a position adjustable pedal assembly with an electronic pedal position sensor attached to the support member of the pedal assembly, which allows the sensor to remain in a fixed position while the driver adjusts the pedal. Teleflex sued KSR for infringement when it learned of KSR’s plan to add an electronic sensor to one of its own previously designed pedals. KSR countered that the claim was invalid because it was obvious. The district court agreed, noting that there was “little difference” between the claim at issue and the teachings of the prior art. In particular, the court found that one prior art was an adjustable pedal, another mounted a sensor on the pedal’s support structure, and another had an adjustable pedal with a fixed pivot point and taught everything contained in the claim except the use of a sensor to detect the pedals’ position and transmit it to the computer controlling the throttle. Other sources revealed that additional aspect. The district court then applied the TSM test, as required by Federal Circuit precedent, concluding that the state of the industry would inevitably lead to combination of sensors and adjustable pedals and prior art both provided the basis for that development and taught a solution to an inherent problem.
The Federal Circuit reversed the district court, ruling that it had not been strict enough in applying the TSM test. It them applied a much narrower test and held that the patent was not obvious.
The Supreme Court rejected this narrower application. The Court held that “neither the particular motivation nor the avowed purpose of the patentee controls,” as the Federal Circuit had held. The “objective reach of the claim” is all that matters. The Court held the appellate court made four specific errors: (1) limiting review to only the problem the patentee was trying to resolve rather than to whether one of ordinary skill in the art would find the combination of existing technology obvious; (2) assuming a person of ordinary skill in the art attempting to solve the problem would be led only to those elements of prior art designed to solve the same problem; (3) holding that a patent claim cannot be proved obvious by showing that the combination was obvious to try; and (4) being so concerned with the risk of hindsight bias as to deny factfinders recourse to common sense. Had the Federal Circuit properly applied those factors, it would have found—as KSR argued and the district court held—that a person of ordinary skill would have realized that mounting a modular sensor on a fixed pivot point of the existing pedal was a logical design step and that, therefore, the patent is obvious.
Law Commentary
Read the related Law commentary: In KSR v. Teleflex, Supreme Court Emphasizes Flexibility in Determining Obviousness Via TSM Test, by Thomas F. Zuber, Esq.
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