Center for Advanced Study & Research on Intellectual Property

 

CASRIP Newsletter - Autumn/Winter 2007, Volume 14, Issue 1

Gobbledygook or the Future of Obviousness in U.S.  Patent Law?  Teleflex v.  KSR 

By Benjamin A.  Keim

I.          Summary

A decision is expected this February for a case that could determine the future of obviousness in patent law.  The Supreme Court heard oral arguments on November 28, 2006 in the case Teleflex v. KSR.  Teleflex has accused KSR of infringing its patent for an adjustable vehicle pedal assembly.  KSR responded by challenging the nonobviousness of a claim in the patent.  The Supreme Court last addressed obviousness determinations in patents in 1966 in Graham v. John Deere.[1]  

Since John Deere, the Court of Appeals for the Federal Circuit (“Federal Circuit”) has crafted a teaching-suggestion-motivation (“TSM”) test to determine obviousness.  The Federal Circuit remanded Teleflex to the district court for further obviousness analysis under the TSM test.  KSR’s petition for certiorari challenged the application and very existence of the TSM test.  In oral arguments some of the justices expressed concern about the current TSM test, leading to speculation that they may modify or eliminate it.  Many members of the patent community have weighed in, supporting Teleflex and the TSM test.

II.        Introduction to Obviousness

A patent claim is obvious, and thus not properly eligible for protection, when the differences between the prior art and the claimed invention “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.”[2]  The prohibition against patenting obvious inventions is intended to prevent attaching exclusive rights to technological advancements that provide only de minimis improvements over the existing level of technology.  The current nonobviousness provision replaced the previous vague “flash of genius” standard with that of “obviousness” to a person having ordinary skill in the art.   

In 1966 the Supreme Court articulated four factors to determine whether an invention is obvious.[3] These so-called “Graham Factors” include: (1) the scope and content of the prior art; (2) the level of skill of a person of ordinary skill in the art; (3) the differences between the claimed invention and the teachings of the prior art; and (4) the extent of any objective indicia of nonobviousness.[4]  In evaluating nonobviousness, both patent examiners and courts are confronted with hindsight bias.  After learning of an invention it is essentially impossible to erase that knowledge from one’s mind and to objectively analyze obviousness without using the invention as a roadmap. 

To counter hindsight bias, the Federal Circuit established a test for identifying nonobviousness when all the elements of the disputed invention are present in multiple prior art references.  Elements from the prior art combined in a new way are nonobvious absent some “suggestion, teaching, or motivation”[5] that would have led a person of ordinary skill in the art to combine those elements in the same way.  Opponents of the TSM test argue that a bright-line test makes patents containing only trivial improvements too easy to obtain.

III.       Teleflex and KSR’s Patent Dispute

Teleflex sued KSR for the alleged infringement of Teleflex's patented adjustable vehicle pedal assembly, U.S. Patent No. 6,237,565 (“the ‘565 patent”).  Teleflex and KSR are direct competitors in the market for supplying adjustable pedal systems to the automotive industry.  At issue is claim four of the ‘565 patent.  At the most basic level, claim four covers a pedal apparatus with an adjustable pedal assembly and an electronic control.  The adjustment allows drivers to move the pedals into a comfortable position and the electronic control then communicates the position of the pedals to a computer-controlled engine.  As with many patents, claim 4 was broader than the preferred embodiment or the actual products manufactured by Teleflex.

On December 12, 2003, the District Court for the Eastern District of Michigan dismissed the case on summary judgment, after the judge determined that the invention was obvious in light of the prior art.  The district court found that all elements of the ‘565 patent were present in the prior art and that there was a suggestion to combine.  The district court suggested the preferred embodiment of Teleflex’s adjustable pedal system might be nonobvious, but properly refused to import limitations from the specifications into claim four.  Teleflex appealed the decision. 

The Federal Circuit agreed with Teleflex’s argument that the district court applied an incomplete TSM test.  On January 6, 2005, the Federal Circuit vacated the grant of summary judgment and remanded the case to the district court.  The Federal Circuit determined that, “[T]he district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim four of the ‘565 patent.”[6] The Federal Circuit also concluded that the district court erred as a matter of law in granting summary judgment by applying an incomplete TSM test.[7]   Specifically, KSR’s single declarant and Teleflex’s two declarants provided conflicting opinions as to the obviousness of claim four of the ‘565 patent.  According to the appellate court it was improper to make a credibility determination at the summary judgment stage and, thus, there was an unresolved genuine issue of material fact precluding summary judgment.

KSR’s petition for certiorari to the Supreme Court was granted on June 26, 2006.  In its petition KSR presented the 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.”[8] This question challenges whether the TSM test should exist as the sole determinant of obviousness.

IV.       The Future of Obviousness

By hearing this case the Supreme Court will be evaluating the obviousness jurisprudence of the Federal Circuit.  The Court may leave TSM as the test, it may replace it with a different test, or it may decide that TSM is not the only appropriate test for determining obviousness.  Recently, the Federal Circuit has retreated from the TSM test as a bright-line rule.  It has found motivations to combine elements in prior art references from evidence that is implicit,[9] based on common knowledge, found generally in the prior art as a whole, based simply on the nature of the problem or simple logic.[10]  This additional analysis appears to be the kind of treatment KSR was seeking in its case. 

Justice Scalia commented on the transition of the Federal Circuit during oral arguments—noting that the recent cases leave the TSM test “meaningless.”  “[T]his is gobbledygook.  It really is, it’s irrational,” Scalia said.  Chief Justice Roberts and Justice Breyer also spoke critically of the TSM test during oral arguments.  Critical language such as “gobbledygook” suggests that the Court will not simply tell the Federal Circuit to apply the TSM test consistently, rather that the Court may craft a new test for obviousness and hindsight-bias prevention. 

Major patent bar associations such as the American Intellectual Property Law Association, the American Bar Association, the Intellectual Property Owners Association, the United Inventors Association, and the Intellectual Property Law Association of Chicago filed briefs supporting the current TSM test.  KSR countered in is briefs that the bar may be biased because of the enormous fees generated by patent litigation.  Although not everyone shares KSR’s cynicism, many hope that the Court’s upcoming decision will do as much to clarify the law of obviousness as Graham v. John Deere did 40 years ago. 


Benjamin Keim is a former employee of the United States Patent & Trademark Office and a third-year J.D. student at the University of Washington School of Law following the Intellectual Property Law Concentration Track. 

[1] 383 U.S.  1 (1966).

[2] 35 U.S.C.  § 103(a).

[3] See generally, John Deere, 383 U.S.  1.

[4] Id. at 17-18.

[5] Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1359-60 (Fed.  Cir. 1999).

[6] Teleflex, Inc. v. KSR Int’l Co., 119 Fed. Appx. 282, 288 (Fed. Cir. 2005).

[7] Id. at 286.

[8] Petition to the United States Supreme Court by KSR Int’l Co. (April 6, 2005) pg. i.

[9] See In re Kahn, 441 F.3d 977 (Fed. Cir. 2006).

[10] Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006); Dystar Textilfarben GMBH & Co. v.  Detuschland KG, 464 F.3d 1356, (Fed. Cir. 2006); Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, (Fed. Cir. 2006).

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