KSR International Co. v. Teleflex, Inc. (901422128)
From Bill Goodwine's Wiki
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
- In the 1990s these were replaced by computer-controlled throttles acting in response to electrical signals
- 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
- Weren't allowed to stop at basic obviousness evaluation, however, had to also to TSM
- 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
- Prior art did not reference the precise problem the patentee was trying to solve
- 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
