Supreme Court Updates Obviousness Analysis

Supreme Court Clarifies that the Federal Circuit’s Teaching-Motivation-Suggestion Test Is Not Exclusive

On April 30, 2007 the United States Supreme Court delivered its opinion in KSR International Co. v. Teleflex Inc., 127 S.Ct 1727; 82 USPQ2d 1385 (2007).  The Supreme Court found that the Federal Circuit’s exclusive use of “teaching, motivation, or suggestion” (TSM) test to find obviousness, as applied in the case, was too rigid and inconsistent with 35 U.S.C. §103 precedent.  While not replacing the TSM test, the Supreme Court held that the TSM test provided a useful insight, but that there is no single test to find obviousness.  Instead, the finding of obviousness is more flexible and can be found using factors set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1.  These factors include secondary considerations such as commercial success, unsolved needs, market factors, and other’s failures to shine light to the circumstances surrounding the patented subject matter.  

Background

Teleflex owns U.S. Patent No. 6,237,565 (“the ‘565 patent”), which is drawn to a gas pedal/electronic sensor combination.  Conventionally, pedal assemblies included both an adjustment apparatus and an electronic throttle control; such conventional pedal assemblies can be expensive, time consuming to assemble, and require a significant amount of packaging space.  The ‘565 patent improved over these designs by providing a smaller, less complex, and less expensive electronic pedal assembly.  At issue was claim 4, which is drawn to an adjustable pedal system with a fixed pivot point of a support, where an electric modular sensor is attached to the fixed pivot.

Prior patents include U.S. Patent No. 5,010,782 (the “Asano patent”), which was not cited during prosecution and includes each element of claim 4 except for the use of an electronic controller.  Specifically, the Asano patent presented a support structure where the pedal location can be adjusted and one of the pedal’s pivot points stays fixed.  The Asano patent was also designed such that the necessary force to depress the pedal is the same regardless of the pedal’s positioning.  However, other patents, such as U.S. Patent No. 5,460,061 (“theReddingpatent”) revealed a sliding mechanism where both the pivot point and the pedal are adjusted.  In addition, U.S. Patent No. 5,241,936 (“the ‘936 patent”) specifically disclosed an electronic sensor on a pivot on the pedal mechanism; andU.S.Patent No. 5,063,811 (“the Smith patent”), taught that the wires should be put on a fixed part of the pedal assembly to prevent chafing.  Further, U.S. Patent No. 5,385,068 (“the ’068 patent”) disclosed a sensor that could be taken off the shelf and attached to any mechanical pedal to allow for computer-controlled functionality; and U.S. Patent No. 5,819,593 (“the Rixon patent”) placed the sensor in the pedal footpad; however the Rixon patent was known for causing chafing when the pedal was depressed and released. 

Moreover, there was evidence of a general market demand in the 1990’s to install computers in cars to control engine operation, including electronic-controlled throttles such as using an off-the-shelf CTS 503 electronic control, which was evidence of a strong incentive to convert mechanical pedals to electronic pedals.

KSR began manufacturing an adjustable pedal assembly for use in GMC automobiles,

 

and obtained U.S. Patent No. 6,151,976 (the ‘976 patent) which is also drawn to an adjustable pedal system with cable-actuated throttles and an electric modular sensor.  Upon learning of this assembly, Teleflex sued KSR for infringement of claim 4.  KSR argued that it could not have infringed claim 4 because it was invalid under 35 U.S.C. §103 since the differences in the prior art and claim 4 would have been obvious to a person of ordinary skill in the art at the time of the invention. 

The District Court, on reviewing the evidence of record, granted summary judgment of non-obviousness.  Specifically, the District Court determined the level of ordinary skill in the art at the time of the invention based upon expert testimony, and found that the Asano patent suggested each element of claim 4 with the exception of the sensor, which the District Court found in numerous prior art references.  The District Court also determined that the USPTO would have likely rejected claim 4 had the Asano patent been cited using a combination of Asano and Smith, since the broader version of claim 4 had already been rejected by the combination ofReddingand Smith.  The District Court lastly acknowledged the evidence of commercial success proffered by Teleflex, but found the evidence of secondary factors did not overcome the remaining evidence of obviousness.  Thus, the District Court granted KSR’s motion for summary judgment because the combination of electronic sensors and adjustable pedals was inevitable, the Rixon patent taught the basis for these developments, and the Smith patent provided a solution for the chafing problem. 

In an unpublished opinion, the Federal Circuit reversed the district court’s ruling and held it did not apply the TSM test strictly enough.  Specifically, the Federal Circuit held that the nature of the problem to be solved did not satisfy the requirements because the prior art must reference the precise problem the patentee is trying to solve.  The Federal Circuit also determined that summary judgment was incorrectly granted as there were still issues of material facts to be resolved.

Question Presented to the Supreme Court

KSR appealed the decision to the Supreme Court, and Certiorari was granted on the following question:

“Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”

Holding of the Supreme Court

Under 35 U.S.C. §103 (a) a “patent may not be obtained . . . if 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 Supreme Court reviewed the jurisprudence regarding 35 U.S.C. §103, and rejected the Federal Circuit’s the implication that a rigid approach outlined in the TSM test was required in this case.  The Supreme Court first noted that prior cases, such as Graham, have set forth a more flexible standard.  These cases, including Graham, invited the courts to look at secondary considerations when determining obviousness. 

The Supreme Court acknowledged that the TSM test captured a “helpful insight” in that mere demonstration that all the elements are known is insufficient to show obviousness.  Specifically, the Supreme Court cautioned that “it can be important to identify a reason that would have prompted a person of ordinary skill in the art in the relevant field to combine the elements in the way the claimed new invention does.”  However, the Supreme Court held that this useful insight “need not become rigid and mandatory formulas,” in which case the TSM test becomes inconsistent with established precedent.

In order to determine underlying principles of obviousness, the Supreme Court reviewed some of this precedent, including United States v. Adams, 383 U. S. 39 (1966) involving a “wet battery”, which contained water, instead of acid conventionally used in batteries, and used electrodes from magnesium and cuprous chloride, rather than zinc and silver chloride.  The “wet battery” was found to be non-obvious, even though the claimed structure was already in the prior art because the elements used produced an unexpected and successful result.  The Court also pointed to Anderson’s Black Rock, Inc. v. Pavement Salvage Co., 396 U. S. 57 (1969), where two combined elements, a heat burner and a paving machine, resulted in a useful function, but added nothing new to the nature and quality of the already patented product.  In that case, the Court held the invention was obvious under 35 U.S.C. §103.  Lastly the Court mentioned Sakraida v. AG Pro, Inc., 425U. S. 273 (1976), which held that if the arrangement of old elements produced no more than what was expected, the combination of the elements was obvious.  From this, the Court determined that the principles of these cases reflect that the “[w]hen work is available in one field of endeavor, design incentives and other market forces can prompt variations on it.”  Any implementations of this predictable variation is merely obvious and not a patentable improvement since “a court must ask whether the improvement is more than the predictable use prior art elements according to their established functions.” As such, the Supreme Court noted that obviousness is not governed by a specific and rigid test, such as the TSM test.

Further, the Supreme Court stated that teachings to the specific subject matter of the claim need not be present because the court can take into account the creativity of an ordinary person skilled in the art, and common sense.  Regarding the teachings to the specific subject matter, it is important to point out that some fields do not publish a great deal of literature on obviousness of combinations, which can be used to determine specific teaching required under the TSM test.  As such, the Supreme Court concluded that an obviousness analysis cannot be limited to a rigid formula and that innovation, rather than the result of pure market demand, is what patent law seeks to protect.  Consequently, the Court held that the Federal Circuit erred in applying such a strict test for obviousness.

The Supreme Court also noted that that obviousness needs not to be resolved based upon the problem the patentee was trying to resolve.  Instead, the Supreme Court held any problem in the field at the time of the invention can provide reasons for combining known elements to make the claimed combination.  Thus, the reasons for making a combination are not dependent on the precise problem the patentee was trying to resolve in making the claimed invention.  Thus, the Federal Circuit had erred in limiting the type of problem that needed to be resolved by the District Court on remand.

The Supreme Court also determined that the Federal Circuit erred in assuming a person of ordinary skill in the art, in trying to resolve a specific problem, will only use the prior art designed to solve that specific problem.  Instead, the Supreme Court held that sometimes common sense teaches that “familiar items may have obvious uses beyond their primary purposes” and persons of ordinary skill in the art could then “fit the teachings of the multiple patents together like pieces of a puzzle.”   

Additionally, the Supreme Court held some combinations are “obvious to try”, and when the market drives the solution of a problem that has anticipated success, it is likely that the solution was the product of common sense and not of innovation.  Consequently, combinations shown to be “obvious to try” based upon market forces and common sense may indicate that the claimed invention was obvious under 35 U.S.C. §103. 

While the Supreme Court concluded that common sense and market forces can provide evidence of obviousness, the “factfinder must be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”

In applying the principles set forth to claim 4, the Supreme Court agreed with the District Court’s opinion that the ‘565 patent had little differences from the Asano and Smith patents.  There was evidence that the marketplace provided a strong incentive to make some form of combination of the adjustable pedal and sensor, there was evidence that the sensor needed to be on a non-moving location such as the pivot point, and there were few other places on the adjustable pedals which are non-moving.  The Supreme Court also determined that both the District Court and the Federal Circuit considered the issue of obviousness to a person in the skilled art too narrowly and that the true inquiry asks “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.”  The Supreme Court also pointed to the prior art and the District Court’s finding and concluded that it would have been obvious to an ordinary person skilled in the art to place the sensor in the pivot point; consequently, it found claim 4 to be obvious and invalid under §103. 

On the issue of the propriety of resolving the case on summary judgment, the Supreme Court rejected the Federal Circuit’s finding that issues of material facts remained.  Instead, the Supreme Court found that the District Court properly granted summary judgment since District Courts can resolve facts in conflicting expert opinions for purposes of summary judgments.  However, obviousness is a question of law and nothing presented by Teleflex prevented the District Court from reaching a summary judgment verdict in favor of KSR.  Accordingly, the Court reversed the Federal Circuit’s holding and remanded the case.

Lastly, the Supreme Court noted that there was evidence arguing against the combination due to the complexity of the Asano patent.  However, the Supreme Court did not resolve this issue since it was not properly raised and cannot be raised on appeal.

Ramifications for Patent Owners

While the Supreme Court rejected the Federal Circuit’s approach in the context of the specific facts of KSR, it is important to recognize that the Supreme Court did not remove an important aspect of obviousness jurisprudence: the need for evidence.  In KSR, the Supreme Court outlined a number of existing theories on how obviousness can be shown without a specific teaching in the prior art: obviousness to try, common sense.  However, the Supreme Court, in addition to validating these existing approaches, also reminds that these other theories need evidence to support the conclusion of obvious to try and common sense.   This requirement is consistent with existing United States Patent and Trademark Office procedures, and in that sense does not represent any change in the law.  E.g., MPEP 2144.02  (“when an examiner relies on a scientific theory, evidentiary support for the existence and meaning of that theory must be provided.”); and MPEP 2144.03 (“Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known” and “Ordinarily, there must be some form of evidence in the record to support an assertion of common knowledge.”)  Further, the Federal Circuit has been quick to emphasize that their holding in KSR, which was an unpublished opinion, did not reflect the true breadth of the obviousness test as applied by the Federal Circuit. Therefore, while litigants may expect to see a greater emphasis on expert testimony in order to use, in the alternative, one of these theories other than the TSM test, it remains to be seen just how successful these challenges will be in all but the most marginal of inventions.

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