EB: KSR INTERNATIONAL CO. v. TELEFLEX, INC., 550 U.S. 398 (2007)

Situation

• Teleflex sued KSR International for patent infringement
• Teleflex's "Engelgau" patent was for and an "Adjustable Pedal Assembly With Electronic Throttle Control"
  • Claim 4: combines an electronic sensor with an adjustable automobile pedal so the pedal's position can be read by a computer that controls the throttle

Accusation

• Teleflex claims KSR's addition of an electronic sensor to one of its previously designed pedals is an infringement of the Engelgau patent.

Decision

Supreme Court rules that the Engelgau patent was invalid (obvious), sustaining a district court opinion and reversing that of the Appeals court.

Reasoning

• Court of Appeals imployed a "teaching, suggestion, or motivation" (TSM) test - if some TS or M can be found in the prior art, then the invention is obvious.
  • Supreme Court says Appeals applied TSM too rigidly, making it incompatible with Supreme Court precedent.
• District ruled: the state of the industry would inevitably lead to combinations of sensors and pedals; prior knowledge: Smith taught to fix the sensor to the pedal, Rixon provided basis of the technology, Asano designed similar combination of elements
• Appeals Court rules oppositely - says that District did not apply TSM fully (did not correctly assess the prior art)
  • Appeals re-interprets the prior art patents, saying they "would not have led a person of ordinary skill" to design a pedal like Engelgau's.
• Supreme Court rules:
  • The pedal "yields no more than one would expect from such an arrangement"
    • When a combination of "familiar elements" yields no more that predictable results, it is obvious!

In Class

• Trial court decided in a summary judgement=defense says plaintiff didn't prove their case, so defense doesn't need to do anything
• Claim 4: A vehicle control pedal apparatus "comprising"=has these elements, but may have more
  • adjustable pedal assembly
  • support pivot
  • electronic control
• First patent did not specify the location of the sensor=patent examiner rules that it was too broad -- patent adjusted to specify that the sensor was mounted on the pivot
• TSM test: if a combination of known things is "taught" by the prior art, "suggested" by the prior art, or "motivated" by the prior art, then it is obvious
• Tension between having simple, clear rules that don't achieve perfect results and ambiguous principles that achieve more perfect results.
  • Example: Montana only had "reasonable and prudent" limit on vehicle speed - very ambiguous
  • Lower courts wanted a measurable way to test for obviousness on a regular basis, thus they developed TSM
  • Note: If invention is TSM, then it is obvious...but, it doesn't go the other way. If there is no TSM involved with the invention, that doesn't necessarily mean it is nonobvious