KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007) Notes
Supreme Court of the United States
- District Court says KSR wins, claim 4 was obvious when invented
- Court of Appeals reversed, says its nonobvious
- Supreme Court reverses back, says OBVIOUS
Teleflex sues KSR for patent infringement
Device: Adjustable pedal assy with electronic throttle control
- sensor sends pedal posn to computer to control engine throttle
KSR adds elec sensor to pedals, teleflex says infringement, KSR says no, your claim to it was invalid because its obvious.
Strategy set by John Deere (based on Hutchkiss)
- determine prior art
- find differences btwn it and current claims
- resolve level of ordinary skill
- determine nonobviousness based on these
Teaching, Suggestion, Motivation (TSM) test:
- only obvious if motivated by:
- prior art,
- nature of problem, or
- knowledge of person with ordinary skill
- Court of Appeals wants checklist to easily decide whats patentable for obviousness cases.
- goes against logic: if TSM, then obvious. doesn't necessarily follow that lack of TSM makes it nonobvious. could be nonobvious for other reasons.
- may not work for all cases but close enough most of the time, like speed limit.
- w/o elec sensor, pedal uses mech link to engine throttle (cable opens, closes valves)
- start using elec in 1990's
- talk about pedal design patents (adjustments for short ppl)
- b4 Teleflex gets patent, there were patents involving elec pedal sensors
- posn of sensors - on pedal assy, not on footpad but something fixed
- also were patents for modular sensors in general that could be used on pedals for same thing
so what happened was:
- KSR made adjustable pedals for Ford, using cable system
- then made them for GM, but GM used elec throttles, so KSR had to get modular sensors and used those.
now, these two are rivals in adjustable pedals...
teleflex gets patent on FIXED PIVOT POINT of adjustable pedal with sensor mounted
- w/o fixed pivot pt this is just combo of two existing patents
- had to restate claim 4 to make patentable - make a more specific claim, was too vague 1st time.
so teleflex says KSR infringing, KSR says anyone using elec throttle control must violate "patent" of teleflex. Teleflex says:
- only worried about claim 4
- not that other 3 claims are infringed
- not that KSR mech. adjustable pedal infringes on anything
- says claim 4 of teleflex patent was obvious, thus KSR wins, not infringing
- forced by Ct of Appeals (?) to apply TSM approach too
- industry would inevitably go there - to combine elec sensors and adj pedals
- basis provided by ppl in past
- secondary factor of commercial success doesn't matter
Court of Appeals
- reverses, says non-obvious
- says references didnt really give any useful info, invention wasnt based on them
- obvious to try something not the same as obviousness
teleflex really trying to make something cheap, simpler, smaller
- in general - cant give patents for mere combos of things, diminishes intellect and resources from field; its obvious if it only gives predictable results.
- cites 3 cases:
- US v adams - despite warnings of failure, adams acheived unexpected successful results, thus, nonobvious
- anderson v black rock - nothing new about burner or paver individually, no unexpected result when combined, thus, obvious
- sakraida v ag pro - more of same...
- needs to achieve result that you wouldnt expect from merely combining old things, they have to do something new when combined.
- dont need to follow TSM steps because court can analyze what an ordinary person would do and judge based on that if its obvious. have to analyze, not just follow rules to assess situation.
- TSM sucks
- Court of Appeals messed up:
- tried to analyze obviousness in terms of skill at the time, but addressed obviousness in relation to patentee, not an ordinary person
- ordinary person has creativity, cant assume they would only be led by things directly related to problem at hand.
- they said being obvious to try cant prove that something is obvious, but it could hypothetically
- used hindsight in making decision
- Ruling: claim 4 OBVIOUS
- ordinary person could have combined asano and smith
- also relevant to obviousness: is there demand from customers for it
- would it be obvious to someone with old patents, literature, etc and customer demand to make such a thing?