[Justice Kennedy delivered the unanimous opinion of the Court.]
In KSR International Co. v. Teleflex Inc., No. 04-1350 (U.S. Apr. 30, 2007), the Supreme Court reversed the Federal Circuit and ruled that when determining obviousness, the “teaching-suggestion-motivation” (“TSM”) test may be appropriately considered, but mandated the use of a more flexible version of the test that includes the application of common sense and consideration of marketplace demands. The Court also elaborated extensively on how the PTO and the courts should determine obviousness.
The patent at issue, U.S. Patent No. 6,237,565 (“the ’565 patent”), claimed the combination of an adjustable vehicle accelerator pedal assembly and an electronic sensor, attached to a fixed pivot point, that provides a signal corresponding to the position of the pedal. A prior art patent, U.S. Patent No. 5,010,782 (“the Asano patent”), which the PTO did not consider, disclosed an adjustable pedal with a fixed pivot point. Other prior art patents disclosed sensors for signaling the position of accelerator pedals. U.S. Patent No. 5,241,936 (“the ’936 patent”) disclosed a pedal with an electronic sensor on a pivot point in the pedal assembly, and U.S. Patent No. 5,063,811 (“the Smith patent”) disclosed mounting the sensor on a fixed part of the pedal assembly to prevent the wires connecting the sensor to a computer from chafing and wearing out. U.S. Patent No. 5,819,593 (“the Rixon patent”) disclosed attaching an electronic sensor to the pedal foot pad of an adjustable pedal assembly, but was known for wire chafing.
Teleflex Inc. (“Teleflex”), which owned the patent in question, sued KSR International Company (“KSR”) for infringement in the U.S. District Court for the Eastern District of Michigan. The trial court had granted KSR’s motion for SJ of invalidity for obviousness in view of the prior art, but the Federal Circuit reversed. The Supreme Court reversed the judgment of the Federal Circuit, reinstating the SJ of the trial court.
In doing so, the Supreme Court mandated a more flexible test than the TSM test, including the application of common sense and consideration of marketplace demands, such as the demand for accelerator pedals that can operate with computers. Moreover, the Court emphasized the need for caution in granting a patent for a combination of prior art elements with no change in their functions, stating 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.” Slip op. at 12.
On the other hand, the Court observed that “when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious,” and that the Court had previously held a patent valid when “the elements worked together in an unexpected and fruitful manner . . . .” Id.
The Court further explained that even if different fields of endeavor are involved, a person of ordinary skill can implement a “predictable variation,” and “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 13.
Still, however, the Court stated that one challenging a patent may not demonstrate merely that it claims a combination of known elements. The Court required that lower courts determine, preferably explicitly, “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 14. But that determination “need not seek out precise teachings” directed to the specifically claimed subject matter, “for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. Thus, the Court stated that the TSM test “captured a helpful insight,” id., but that “[t]he obviousness analysis cannot be confined by a formalistic conception . . . or by overemphasis on the importance of published articles and the explicit content of issued patents,” id. at 15. Rather, “it often may be the case that market demand, rather than scientific literature, will drive design trends.” Id. Acknowledging that the Federal Circuit has applied the TSM test in many cases, however, the Court commented that the TSM test is not necessarily inconsistent with the proper application of 35 U.S.C. § 103.
The Court further elaborated that one can prove obviousness by establishing a known problem with an obvious solution encompassed by the patent claims, regardless of whether the patentee was trying to solve that problem. Furthermore, even if the prior art is directed to solving a different problem, “[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, . . . .” Id. at 16. Thus, the Federal Circuit had erred in discounting the Asano patent for expressing a different primary purpose—ensuring a constant force for depressing the pedal regardless of its position—from Teleflex’s—providing a simplified, less expensive pedal assembly—because the Asano patent nevertheless disclosed an adjustable pedal with a fixed pivot point, while other prior art taught that a fixed pivot point was an ideal mount for a sensor. The Federal Circuit had also reasoned that it was irrelevant that it might have been obvious to try the claimed combination, because “obvious to try” does not constitute obviousness. The Supreme Court rejected that reasoning, ruling that “[w]hen 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, . . . the fact that a combination was obvious to try might show that it was obvious under § 103.” Id. at 17.
The Court concluded that it would have been obvious to a person of ordinary skill to combine the Asano patent’s pedal assembly with a pivot-mounted pedal position sensor, in view of the marketplace demand for converting mechanical pedals to electronic pedals and the prior art teachings for how to achieve that. Because the Court found the invention obvious regardless of the presumption of validity, it expressly did not reach the question of whether the presumption was voided because the PTO had not considered the Asano patent. Nevertheless, the Court noted “that the rationale underlying the presumption—that the PTO, in its expertise, has approved the claim—seems much diminished here.” Id. at 23.
As to the Federal Circuit’s ruling that a genuine issue of material fact existed that precluded SJ, the Court disagreed. The Federal Circuit had relied on expert statements Teleflex had offered that the combination was novel and unobvious because the sensor was mounted on the pedal assembly differently from the way it was attached in the Rixon patent. The trial judge had determined the level of ordinary skill based on expert testimony and the parties’ stipulations. Dismissing the expert affidavits as conclusory, the Supreme Court reasoned that “[w]here . . . the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.” Id.
In conclusion, the Court remarked, “[T]he results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise, patents might stifle, rather than promote, the progress of useful arts.” Id. at 24.