KSR v. Teleflex

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KSR v. Teleflex
Supreme Court of the United States
Argued November 28, 2006 Decided April 30, 2007
Full case name: KSR International Co. v. Teleflex Inc., et al. Docket #: 04-1350 Citations: 550 U.S. ___ Prior history: Judgment for appellee, 414 F. 3d 1366. On Writ of certiorari to the United States Court of Appeals for the Federal Circuit
Holding
The United States Court of Appeals for the Federal Circuit (CAFC) erred in rigidly applying the narrow teaching/suggestion/motivation standard for obviousness under 35 USC 103, for precluding application of "obvious to try" considerations, and for too rigidly constricting the use of hindsight, in conflict with the broader obviousness evaluation established in Graham. Reversed and remanded to the CAFC. (Slip Op. p.24).
Court membership
Chief Justice: John Glover Roberts, Jr. Associate Justices: John Paul Stevens, Antonin Scalia, Anthony Kennedy, David Souter, Clarence Thomas, Ruth Bader Ginsburg, Stephen Breyer, Samuel Alito
Case opinions
Majority by: Kennedy Joined by: unanimous
Laws applied
35 U.S.C. § 103

KSR v. Teleflex, 550 U.S. ___, 127 S. Ct. 1727, 82 U.S.P.Q.2d 1385 (2007) is a decision by the Supreme Court of the United States concerning the issue of obviousness as applied to patent claims.

Contents 1 Case history 2 Decision 2.1 PHOSITA 2.2 Obviousness 3 Implications 4 References 5 See also

[edit] Case history

The plaintiff, Teleflex, Inc. sued the defendant, KSR International, claiming that one of KSR's products infringed its patent ^[1] on connecting an adjustable vehicle control pedal to an electronic throttle control. KSR argued that merely combining these two elements was obvious, and therefore not patentable. KSR won at the district court level, only to have the opinion overturned by the Court of Appeals for the Federal Circuit in January 2005.

Oral arguments were heard by the Supreme Court on November 28, 2006. The petitioner, KSR, was represented by James W. Dabney. Deputy solicitor general Thomas G. Hungar represented the government, which sided with the petitioner. Thomas C. Goldstein argued on behalf of the respondent, Teleflex. ^[2]

[edit] Decision

On April 30, 2007, the Supreme Court unanimously reversed the judgment of the Federal Circuit, holding that the disputed claim 4 of the patent was obvious and that in "rejecting the District Court’s rulings, the Court of Appeals analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the "teaching-suggestion-motivation" (TSM) test.^[3]

[edit] PHOSITA

Justice Kennedy's opinion stated, "A person of ordinary skill is also a person of ordinary creativity, not an automaton." He acknowledged that his description of a person having ordinary skill in the art (PHOSITA) does not necessarially conflict with other Federal Circuit cases that described a PHOSITA as having "common sense" and who could find motivation "implicitly in the prior art." Kennedy emphasized that his opinion was directed at correcting the "errors of law made by the Court of Appeals in this case" and does not necessarily overturn all other Federal Circuit precedent.

[edit] Obviousness

When generally describing the Obviousness test, the Court was largely uncontroversial:

In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.^[3]

However, when the standard was applied to the facts before the Court, the Court stated:

The proper question to have asked was 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 [a prior art patent] with a sensor.^[3]

Recognition of a benefit is arguably different than being motivated to make a change. For example, the benefit to having an eraser on the end of a pencil can be recognized by all, but does that make a pencil-eraser combination obvious?

[edit] Implications

A great deal of debate has sprung up in the wake of the decision, particularly over the implications on the TSM test and concepts including "obvious to try", "person having ordinary skill in the art" and summary judgment. While not explicitly denouncing the TSM test, there is some harsh language in regard to it and the Federal Circuit's application of the test. The opinion stated that the application of the bar on patents claiming obvious subject matter "must not be confined within a test or formulation too constrained to serve its purpose." The opinion does denounce procedures that bar the use of "common sense" in multiple instances, including where "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it."^[3] Chief Judge Paul Michel of the Federal Circuit was quoted saying that by his interpretation, the TSM test remains part of the calculation of obviousness, "but it gives us forceful instruction on the manner in which the test is to be applied."^[4]

In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., No. 05-1631 (Fed. Cir. May 9, 2007)., the Federal Circuit began applying the KSR case, holding U.S. Patent 5,813,861 invalid as obvious.

The USPTO Board of Patent Appeals and Interferences (BPAI) is citing KSR in about 60% of its decisions related to obviousness irrespective of whether it affirms a patent examiner's rejection or reverses the rejection^[5]. Overall reversal rates have stayed about the same, indicating that KSR has not suddenly made all inventions obvious. The BPAI is emphasizing that examiners must still give strong reasons for their rejections. The USPTO management has backed this up with a memorandum to all technology directors instructing them that when making an obviousness rejection "it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed." ^[6]

[edit] References

[edit] See also

• Graham v. John Deere Co. (1966)