KSR International Co. v. Teleflex, Inc. (901422128)

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Read for 2/2/11

Reading Notes

  • Decided by the USSC in 2007
  • Teleflex sued KSR for infringement of "Adjustable Pedal Assembly with Electronic Throttle Control"
    • Combines an electronic sensor with the pedal so its position can be used by a computer to control the throttle
    • KSR added the electronic sensor, but claimed that was "obvious" so that claim of the patent was invalid
  • CoA used a method of evaluation contrary to that in 103 - centiorari
    • USSC reverses the decision
  • Describes cable-actuated throttle control
    • In the 1990s these were replaced by computer-controlled throttles acting in response to electrical signals
      • Electronic sensor is necessary
  • Discussion of prior art
    • Redding and Smith
  • Current patent claims
    • Adjustable electronic pedal
    • Simplified vehicle control pedal assembly
    • Cheaper
    • Uses fewer parts and is easier to package
  • A prior application with less specific claims (sensor placed to a fixed pivot) was thrown out due to obviousness
    • Combined Redding and Smith
  • Teleflex contacted KSR initially to warn of the infringement and seek a royalty arrangement
  • District Court granted in KSR's favor
    • Weren't allowed to stop at basic obviousness evaluation, however, had to also to TSM
      • Determined KSR had satisfied this one as well
  • Has left an important instance of prior art (Asano) off the application
  • Relying mainly on TSM, the CoA reversed
    • Prior art did not reference the precise problem the patentee was trying to solve
      • Not a valid test
  • USSC rejects the rigid approach of the CoA
  • Errors of the CoA
    • Looked only to the problem the patentee was trying to solve
    • Assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem
    • A claim cannot be proved obvious merely by showing that the combination was obvious to try
    • Incorrect conclusion from the risk of courts and examiners falling prey to hindsight bias
  • Correct question is if 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 Asano with a sensor

Non-obviousness

  • Cites Graham and Hotchkiss
    • Quotes primary and secondary considerations for obviousness
  • CoA uses the "teaching, suggestion, or motivation" test (TSM)
    • Only invalid if motivation or suggestion to combine prior art can be found in the prior art, the nature of the problem, or the knowledge of an ordinary person
  • A combination patent which only unites old elements with no change in their respective functions is not valid
    • Must determine if the improvement is more than the predictable use of prior art elements according to their established functions
  • Analysis cannot depend so heavily on published articles and explicit content of patents as TSM suggests
  • The ultimate judgment of obviousness is a legal determination

Class Notes

  • Combination patent of adjustable pedals with electronic pedal sensors
  • District court ruled invalid, CoA ruled valid, USSC ruled invalid again
    • Teleflex sued KSR
  • Only ruling on the specific claim 4 of the patent
  • District Court was a summary judgment
    • Defense states the petitioner did not prove their case so they shouldn’t even have to present their own case, just judge based on failure
  • A previous application for patent had been rejected
    • Didn’t specify that the sensor had to be mounted on the pivot point and therefore the combination was obvious
  • Appealed to CoA who ruled the invention was not obvious
    • Would have gone back to the trial court to pick up where it left off – instead went all the way up
    • Used the TSM test heavily
  • TSM test means that if there is some teaching, suggestion, or motivation in the prior art of a possible combination of prior arts to solve a given problem, then said combination becomes obvious
  • Classified ordinary skill in the art as a “mechanical engineer with a bachelors degree”
  • USSC went back to the long-standing standard of obviousness
    • Toss out the rigid analysis of the CAFC
    • If appropriate, may look at secondary considerations
  • In terms of combinations
    • Mere substitution is no good unless the substitution yielded an unexpected result
  • USSC ruled to throw out claim 4 due to obviousness
    • Does not let KSR off the hook, now the case must return to the trial court for further proceedings
    • Without claim 4, however, there isn’t much of a case for infringement

Claim Interpretation

  • Comprising means including but not limited to

Claim 4 of the patent, at issue here, describes: “A vehicle control pedal apparatus comprising: a support adapted to be mounted to a vehicle structure; an adjustable pedal assembly having a pedal arm moveable in for[e] and aft directions with respect to said support; a pivot for pivotally supporting said adjustable pedal assembly with respect to said support and defining a pivot axis; and an electronic control attached to said support for controlling a vehicle system; said apparatus characterized by said electronic control being responsive to said pivot for providing a signal that corresponds to pedal arm position as said pedal arm pivots about said pivot axis between rest and applied positions wherein the position of said pivot remains constant while said pedal arm moves in fore and aft directions with respect to said pivot.” Id., col. 6, lines 17-36, Supplemental App. 8 (diagram numbers omitted).

  • The more specific the claims of a patent, the less ownership which is granted to the inventor

TSM Test

  • If prior art has teaching, suggestions, or motivating to combine, then it is obvious
    • Also if this is deemed ordinary skill
  • CAFC came up with this to provide a standard to legal arguments
    • CAFC and PTO want simple, clear rules to get things done
  • Have an ultimate, economic purpose by which “obvious” must be interpreted
  • Came up with this test and started applying it
    • TSM implies obvious, but not TSM does not imply non-obvious

Non-obviousness

  • Can’t look just at patents cited in the application
  • Would it be obvious to a person assigned to do a job with all prior art and customer influence to put together then invention
  • Nine clues for non-obviousness
    1. Does the combination change the respective function
    2. Does prior art teach away from the combination
    3. Does the combination create new synergy
    4. Does the combination arrange old elements so that each performs the same function as before
    5. "When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one."
    6. Interrelated teachings of multiple patents