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

The Case

• Teleflex sues KSR over patent infringement on “Adjustable Pedal Assembly with Electronic Throttle Control”
  • Claim 4 of patent describes combining electric sensor with adjustable automobile pedal (to control throttle)
    • The computer's rapid processing of factors beyond the pedal's position improves fuel efficiency and engine performance
• some patents already existed for a sensor
  • taught it was preferable to detect the pedal’s position in the pedal assembly, not the engine
  • sensor should be put on a fixed part of the pedal assembly rather than in or on the pedal’s footpad
  • modular sensors could be taken off the shelf and added to any pedal
• In 2000, KSR was chosen by General Motors Corporation (GMC or GM) to supply adjustable pedal systems for Chevrolet and GMC light trucks that used engines with computer-controlled throttles. To make the '986 pedal compatible with the trucks, KSR merely took that design and added a modular sensor.
• Teleflex is a rival to KSR in the design and manufacture of adjustable pedals. As noted, it is the exclusive licensee of the Engelgau patent.
  • Originally, PTO denied patent application because claim 4 was too broad and therefore obvious
  • claim 4 was later allowed because it included the limitation of a fixed pivot point, which distinguished the design from Redding's
• KSR International (petitioner) claimed that claim 4 was invalid under 35 U.S.C. 103 because it was obvious
• the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art
  • District Court: the level of ordinary skill in pedal design was “ ‘an undergraduate degree in mechanical engineering (or an equivalent amount of industry experience) [and] familiarity with pedal control systems for *413 vehicles.
  • District Court found Teleflex’s patent to be an obvious combination of Asano and Smith
• Court of Appeals reversed: held that unless the “prior art references address[ed] the precise problem that the patentee was trying to solve,” the problem would not motivate an inventor to look at those references
• Supreme Court reverses:
  • the Court has held that a “patent for a combination *416 which only unites old elements with no change in their respective functions ... obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.”
  • In US v. Adams, the wet battery had unpredicted fruitful results, while in Anderson's-Black Rock, Inc. v. Pavement Salvage Co., the radiator and paver combined behaved exactly as expected
  • The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent's subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.
  • If there is a common problem in a field and limited possible solutions, succeeding in one of said solutions is likely the product not of innovation but of ordinary skill and common sense.
  • “KSR provided convincing evidence that mounting a modular sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art. Its arguments, and the record, demonstrate that claim 4 of the Engelgau patent is obvious.”