RESPONDENT:Teleflex Inc. et al.
LOCATION:United States District Court for the District of Colorado
DOCKET NO.: 04-1350
DECIDED BY: Roberts Court (2006-2009)
LOWER COURT: United States Court of Appeals for the Federal Circuit
CITATION: 550 US 398 (2007)
GRANTED: Jun 26, 2006
ARGUED: Nov 28, 2006
DECIDED: Apr 30, 2007
James W. Dabney – argued the cause for Petitioner
Thomas C. Goldstein – argued the cause for Respondents
Thomas G. Hungar – argued the cause for Petitioner
Facts of the case
Teleflex sued KSR International (KSR), alleging that KSR had infringed on its patent for an adjustable gas-pedal system composed of an adjustable accelerator pedal and an electronic throttle control. KSR countered that Teleflex’s patent was obvious, and therefore unenforceable. Under 25 U.S.C. Section 103(a), obvious inventions cannot be patented. A federal District Court granted summary judgment for KSR, accepting KSR’s argument that the invention was obvious because each of the invention’s components existed in previous patents. Anyone with knowledge or experience in the industry, the District Court ruled, would have considered it obvious that the two components could be combined. Teleflex appealed to the Court of Appeals for the Federal Circuit, which reversed the District Court. The Circuit Court found the lower court’s analysis incomplete, because the District Court had not applied a full “teaching-suggestion-motivation test.” Under this test, in order to label the patent obvious the District Court would have needed to identify the specific “teaching, suggestion, or motivation” that would have led a knowledgeable person to combine the two previously-existing components. KSR appealed to the Supreme Court, arguing that the Circuit Court’s test conflicted with Supreme Court precedent and that it would allow too many patents of obvious inventions.
Was the Federal Circuit correct in holding that an invention cannot be held “obvious”, and thus unpatentable, without a finding of some “teaching, suggestion, or motivation” that would have led a “person of ordinary skill in the art” to the invention by combining previously-existing ideas?
Media for KSR International Co. v. Teleflex Inc.
Audio Transcription for Opinion Announcement – April 30, 2007 in KSR International Co. v. Teleflex Inc.
John G. Roberts, Jr.:
Justice Kennedy has the opinion for the court in 04-1350 KSR International Co. v. Teleflex.
Anthony M. Kennedy:
This too is a patent case.
The legal question involves one of the test or legal formulations used by the Court of Appeals for the Federal Circuit to determine a patent that is obvious and that’s invalid and before addressing that we have to understand the patent and the alleged invention at issue if they has to do with accelerator pedals and accelerator systems for trucks and automobiles.
In some vehicles the manufacturer can decide to design it so that the whole pedal system can be adjusted in order to move it closer or further away from the driver, if for example the driver of short stature is in the truck with a deep footwell and the seat doesn’t quite adjust the right way the whole pedal system can be moved forward for greater ease of operation, and there were known an patent and systems for adjustable pedal assemblies.
Then a new development came along, computer controlled engines.
For more than a decade now, many automobiles and truck engines have used computers to control the engine, and to control engine throttle particularly.
This meant that the accelerator pedal had to be redesigned, before computers the pedal would connect to the throttle via a mechanical link usually a cable pushing down the accelerator, pull the cable and open valves in the throttle to increase the flow of fuel and air in order to increase combustion and accelerate the vehicle and as you release the pedal the opposite occur.
The benefit of having a computer control of a throttle is so the engine can respond to various other factors besides the pedals positions and that’s increased fuel efficiency and engine performance.
The problem was how is the computer to know the position of the pedal.
The answer was to use a censor hat could detect the pedals position and transmit that position to the computer but then the question became where and how should the censor be located, where do you put it and in adjustable pedal assembly the censor placement had to take account of the movable mechanism.
The challenges pedal designer face and overcame in attempting to attach censors to the pedal are described in the opinion.
Now that brings us to the parties in the case.
KSR is the petitioner here it is in the business of manufacturing pedals including adjustable pedals.
To satisfy a customers demand of an adjustable pedal with a censor KSR solved the problem by taking one of it’s previously designed adjustable pedal systems and sticking them off the shelve or on the market censor to as fixed pivot point that is the point around which the arm of the pedal rotates.
As soon as it revealed his plan to provide this pedal to its customers the KSR received a notice from Teleflex, and Teleflex is the respondent here.
Teleflex said that putting a censor on a fixed pivot point of an adjustable pedal, infringed claim for of a patent that was licensed to Teleflex and that patent is called the Engelgau patent.
KSR refused to negotiate a subset of sublicense.
Teleflex sued for infringement, KSR defended.
KSR argued the claim for Engelgau, though approved by the patent and trademark office was nonetheless invalid because it was obvious.
Section 103 of the Patent Act provides that no patent shall issue for an obvious claim.
Adjustable pedal with fixed pivot points KSR said were known before Engelgau patent was invented, so it was obvious to put a censor on them.
The district courts agreed with KSR and granted some re-judgment against Teleflex.
Teleflex appealed and the Court of Appeals for the federal circuit reversed.
It held that claim for of the Engelgau patent was not obvious on it’s faced and that there should be trial on the issue.
We now reverse the Court of Appeals, in agreement with the district court we find that claim for describe what was an obvious solution to a known problem and so the claim is invalid.
When the issue is whether a patent claim is obvious the enquiry is not about the subjective intent for the stated purpose of the inventor.
The question is the test is an objective one.
It is whether the patents claims subject would have been obvious to a person of ordinary skill and the relevant art.
At the time of the invention our precedence teach that the combination of familiar elements according to known methods is likely to be obvious, when it does no more than yield predictable results and this court is held in a leading case called Graham v. John Deere and actually in cases decided before and after graham.
But this enquiry is a broad one and these cases represent the proper way to interpret and apply 103 and the main question we must resolve is whether the Court of Appeals followed these principals when it rejected the argument that the patent claim was obvious and when it relied on its own so called TSM test, TSM stands for Teaching, Suggestion, or Motivation.
Anthony M. Kennedy:
The TSM test captures a helpful insight that patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was independently known in the prior art, and in the years since the court of customs and patent appeals set forth the essence of the TSM test the Court of Appeals no doubt has applied the test in accord with our precedence and in accord with section 103 in many cases, but in the case before us the Court of Appeals followed the test in a rigid mandatory way, with a rigid mandatory formula and that constrained the obviousness enquiry.
Person of ordinary skill and pedal design would see the obvious benefits in adding censors to adjustable pedals.
At the time of the invention in this case there was an adjustable pedal with a fixed pivot point and censors that could be mounted on it.
So the combination of the two was oblivious claim for the Engelgau patent is thus invalid.
Teleflex cannot claim an exclusive right to what would have been obvious to any pedal designer of ordinary skill.
Where as here the content of the prior art, the scope of the patent claim and the level of the ordinary skill in the art are not a material dispute and the obviousness of the claim is apparent is light of these factors, summary judgment is appropriate.
KSR was correct that the Engelgau patent sought to claim an obvious combination of known elements of prior art.
If patent was to promote rather than staple progress of the useful arts than patents like the one in question but not to be issued and or invalid despite the presumption in their favor for these reasons to explain in more detail in the opinion we reverse the judgment of the Court of Appeals and the opinion is unanimous.