KSR Int’l Co. v. Telefl ex Inc. (Oral Argument in U.S. Supreme Court heard on November 28, 2006)
Over a span of many years, the Court of Customs & Patent Appeals and its successor court, the Court of Appeals for the Federal Circuit, clarifi ed the obviousness standard under Section 103 of the Patent Act. Recently, however, the U.S. Supreme Court granted certiorari for an unpublished, non-precedential case coming from the Federal Circuit and now threatens to revise the obviousness standard as it presently stands. Not only could a potential change in the obviousness standard affect how practitioners advise clients in relation to future developments, a potential change could lead previously granted patents, once thought valid, to be found invalid under a new obviousness standard.
Under Section 103 of the Patent Act, “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 Federal Circuit has stated that when obviousness is based on the teachings of multiple prior art references, the movant must also establish some 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. The teaching, suggestion, or motivation to combine prior art references may be found explicitly or implicitly (1) in the prior art references themselves; (2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the fi eld; or (3) from the nature of the problem to be solved, leading inventors to look to references relating to possible solutions to that problem. The Federal Circuit has reasoned that this teaching-suggestion-motivation test (“TSM test”) prevents impermissible hindsight reconstruction, i.e., one cannot just piece together what is known today to show that all of the pieces were there in the past.
The Federal Circuit used the TSM test in deciding the Telefl ex, Inc. v. KSR Int’l Co., 119 Fed. Appx. 282 (Fed. Cir. 2005). In this case, the Federal Circuit vacated and remanded the summary judgment decision of the Eastern District of Michigan that the patent claim in suit was invalid based on obviousness. The Federal Circuit held that the district court erred as a matter of law by applying an incomplete TSM test to its obviousness determination.
U.S. Patent No. 6,237,565, the patent in suit owned by Telefl ex, is directed toward an adjustable pedal assembly for use with automobiles that are controlled electronically with a device known as an electronic throttle control. The district court explained, among other things, that U.S. Patent No. 5,010,782 (“Asano”) disclosed all of the structural limitations of the claim at issue with the exception of the electronic control. Since electronic controls were well known in the art, the district court concluded that a person of ordinary skill in the art would have been motivated to combine Asano and electronic control references and therefore granted KSR’s motion for summary judgment of invalidity by reason of obviousness. The Federal Circuit found that the district court was required, yet failed, to make specifi c fi ndings as to a suggestion or motivation to attach an electronic control to the support bracket of the Asano assembly.
More specifi cally, the Federal Circuit noted that the Asano patent did not address the same problem as the patent in suit. For example, the patent in suit had the objective of creating a smaller, less complex, and less expensive electronic pedal assembly. The Asano patent, on the other hand, was directed to solving the problem of creating an assembly where the force required to depress the pedal remains constant irrespective of the position of the pedal on the assembly. Because the district court did not address how the Asano patent addresses the problem to be solved by the patent in suit, the Federal Circuit held that the district court failed to provide a suffi cient motivation to combine references and that summary judgment was therefore improper. While the Federal Circuit’s decision in the Telefl ex case appears relatively consistent with recent Federal Circuit jurisprudence, this case now sits in the spotlight because the U.S. Supreme Court granted review of the case—Telefl ex is the fi rst obviousness case the Supreme Court has heard since Sakraida v. Ag Pro, Inc. in 1976 (holding a combination that only unites old elements with no change in their respective functions is precluded from patentability under 103(a)), which was six years before the formation of the Federal Circuit.
While the question presented before the Supreme Court is relatively narrow in asking only “whether the Federal Circuit erred in holding that a claimed invention cannot be held ‘obvious’…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,” the Supreme Court will likely take this opportunity to explicitly address what is nonobvious subject matter under Section 103 of the Patent Act.
In KSR’s Petition for a Writ of Certiorari, KSR argued that the Federal Circuit departed from the Supreme Court’s precedents construing Section 103 of the Patent Act and added additional hurdles to fi nd an invention obvious. KSR argues that Supreme Court precedent sets out that the uniting of old elements is obvious unless the combination of the old elements produces a new or different function or demonstrates a “synergistic result.” KSR further argues that the Federal Circuit’s interpretation of Section 103 now forces a challenger to prove with evidence some suggestion, teaching, or motivation that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the particular manner claimed, which, according to KSR, places a higher burden on those challenging patentability and allows obvious inventions, as defined by the Patent Act, to acquire patent protection.
In Teleflex’s Brief, Telefl ex argues, among other things, that the TSM test is necessary to prevent hindsight reconstruction by accused infringers who “try to use the patent-in-suit as a guide through the maze of prior art references, combing the right references in the right way so as to achieve the result of the claims in suit.” Teleflex argues that the TSM test is consistent with Supreme Court precedent and also alludes to the fact that the Supreme Court has continuously denied hearing numerous other cases applying the Federal Circuit’s TSM standard.
Speculation among commentators suggests that the Supreme Court’s decision in this case is likely to change the obviousness standard that has developed in the Federal Circuit over the past 25 years. The Court heard oral arguments on November 28, 2006, and the Supreme Court may have a decision in this case as early as February 2007. Practitioners are certain to keep a close eye on this case because the outcome may not only affect the arguments one must make to obtain a patent; it may also affect future litigation involving patents that have already issued.