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KSR International Co. v. Teleflex Inc. et al., April 30, 2007 Supreme Court of the United States (Kennedy J. delivering the opinion of the Court) Appeal/Obviousness/Teaching-Suggesting-Motivation test for Obviousness/Summary Judgment

Appeal from Court of Appeals for the Federal Circuit finding that U.S. Patent No. 6,237,565 ('565) was not invalid under §103 for being obvious subject matter.

The '565 patent describes an adjustable electronic pedal for vehicles having an electronic throttle control. A driver can adjust the location of the pedal in the footwell depending on the weight of the driver. Claim 4 disclosed a position-adjustable pedal assembly with an electronic pedal position sensor attached to the support member of the pedal assembly, allowing the sensor to remain in a fixed position to prevent fraying of the sensor wires.

Teleflex, the exclusive licensee of '565, accused KSR of infringing claim 4 of '565. KSR countered that the subject matter of claim 4 was obvious. The District court granted summary judgment in KSR's favour finding that claim 4 was obvious under the Graham framework for determining obviousness and the Federal Court's "teaching, suggestion, motivation" (TSM) test. The Court of Appeals reversed, holding that the District Court had not applied the TSM test strictly enough and that the genuine issues of material fact in this case precluded summary judgment.

On appeal, KSR argued that the TSM test is inconsistent with §103 and the US Supreme Court's jurisprudence on the issue. Teleflex argued that the Federal Circuit's formulation is correct, is consistent with §103 and the case law when flexibly applied, and that it provides an objective standard that prevents hindsight bias.

Held: Appeal allowed.

The rigid approach of the Court of Appeals is rejected in favour of an expansive and flexible approach to the question of obviousness. The Graham framework sets out a broad inquiry and invites Courts to look at any secondary considerations that may be relevant.

This Court has urged caution when considering patents based on a combination of elements found in the prior art. When considering whether these patents are obvious, a court must ask whether the improvement is more than the predictable use of prior art elements according to the established functions. When a work is available in one field, design incentives and market forces can prompt obvious variations of it in the same field or in another one. If a technique has been used to improve one device, and a person of ordinary skill would recognize that it would improve similar devices in the same way, then using the technique is obvious unless it's actual application is beyond their skill. Often, a court will have to look at the interrelated teachings of multiple patents, market demands, and the background knowledge of the person skilled in the art to determine whether there was a reason to combine the prior art elements. The analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim. A court can take account of inferences and creative steps that a person of ordinary skill in the art would employ.

The TSM test provides a helpful insight when determining whether a combination is obvious since it is important to identify a reason that would have prompted a person skilled in the art to combine the prior art elements in the way the claimed invention has. However, helpful insights need not become rigid and mandatory formulas. The obviousness analysis cannot be confined by formalistic conceptions of the TSM test or by overemphasis on the importance of published articles and explicit content of issued patents. There is no necessary inconsistency between the TSM test and the Graham analysis, but a court errs when it transforms the general principle into a rigid rule that limits the obviousness inquiry. The Court of Appeals erred in narrowly conceiving the obviousness inquiry.

A claimed invention is obvious if its objective reach extends to what is obvious. One way to determine obviousness is to ask if at the time of invention, there existed a known problem for which there was an obvious solution encompassed by the patent's claims. Neither the particular motivation, nor the purpose of the patentee controls the inquiry. Courts and examiners should not only look to the problem the patentee was trying to solve. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

A person of ordinary skill in the art attempting to solve a problem would not be led only to those elements of the prior art designed to solve the same problem. A person of ordinary skill is a person or ordinary creativity, not an automaton. Common sense teaches that familiar items may have obvious uses beyond their primary purpose.

A patent claim may be proved obvious by showing that the combination was obvious to try. When there is a design need or market pressure to solve a problem, and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within their technical grasp. If this leads to anticipated success, then it is likely the product of ordinary skill and common sense. In this instance, the fact that a combination was obvious to try might show it was obvious under §103.

While a fact finder should be aware of hindsight bias and arguments based on ex post reasoning, rigid preventative rules that deny fact finders recourse to common sense are neither necessary under our case law nor consistent with it.

The ultimate judgment of obviousness is a legal determination. Where the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.

Based on these standards, claim 4 must be found obvious. There is little difference between the teachings of the prior art, in particular the Asano patent, U.S. Patent No. 5,010,782, and the adjustable electronic pedal disclosed in claim 4. The Asano patent teaches an adjustable pedal with a support structure that houses the pedal so that when the pedal location is adjusted relative to the driver, one of the pedal's pivot points stays fixed. The prior art, in particular U.S. Patent No. 5,063,811 to Smith, teaches that the sensor should be put on a fixed part of a pedal assembly to prevent wires from fraying. It would be obvious to a person of ordinary skill to combine Asano with a pivot-mounted pedal position sensor since there was a strong incentive in the marketplace to convert mechanical pedals, such as the pedal in the Asano patent, to electronic pedals, such as the pedal in '565.

Teleflex has not shown anything in the prior art that taught away from the use of the Asano pedal. Teleflex has not shown any secondary factors to dislodge the finding of obviousness. And nothing in Teleflex's declarations prevented the District Court from reaching the conclusions underlying its order for summary judgment.

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