User:Charles R Talley/0204

KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)

• Debate over obviousness of adjustable pedal apparatus with electronic throttle control
• District Court ruled the patent invalid in a summary judgement due to obviousness
• TSM Rule: Seeking to resolve the question of obviousness with more uniformity and consistency, 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.
  • CAFC & PTO want simple clear rules
    • Unlike the Supreme Court, they deal with these rules on a daily basis
    • Tension between imperfect, simple rules and perfect, ambiguous rules
    • Montana speed limit: Reasonable & Prudent
• We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here. To be sure, Graham recognized the need for “uniformity and definiteness.” 383 U.S., at 18, 86 S.Ct. 684. Yet the principles laid down in Graham reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683. See 383 U.S., at 12, 86 S.Ct. 684. To this end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive. Id., at 17, 86 S.Ct. 684.
  • US v. Adams: If the combination itself is obvious, but a positive result is unpredictable, it's not obvious
  • Anderson's Black Rock, Inc. v. Pavement Co.: Mere combinations are obvious and unpatentable
• Can't just look at the patents referenced on the application to determine obviousness. The market and customer demand also comes into play in determining obviousness.
• 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. 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. The judgment of the Court of Appeals is reversed, and the case remanded for further proceedings consistent with this opinion.
  • Case goes back to District Court for a retrial without claim 4. Summary Judgement is invalid. KSR now has to present their case.