KSR International Co. v. Teleflex, Inc., et al. (04/30/2007)

Question presented: Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven "'teaching, suggestion or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed"?

BY CHERYL RICCI, MEDILL NEWS SERVICE

Microsoft. Cisco. Hallmark. These corporations have seemingly little in common. Yet they've joined together, along with others to support KSR International in a patent suit involving gas pedals.

The corporations aren't alone in filing amicus briefs on behalf of KSR. A group of 24 patent law professors and the Progress and Freedom Foundation have also filed on the company's behalf.

While technology, greeting cards and gas pedals on the surface make strange bedfellows, the matters at stake — the "obviousness" clause of U.S. patent law — reach further than two producers of automobile parts. A vested interest in patent law and the ease of obtaining patents are at the center of the case.

Judicial proceedings between KSR International and Teleflex Inc. commenced in November of 2002, at which time Teleflex, the owners of U.S. Patent No. 6,237,565, brought action against KSR for patent infringement on its electronic adjustable floor pedals.

KSR said Teleflex had no right to patent their technology because it "comprises nothing more than (i) a pre-existing ‘adjustable pedal assembly' combined with (ii) a pre-existing ‘electronic control'" according to its petition for writ of certiorari.

KSR argued that the combination of two existing parts isn't novel; the part doesn't perform in "new or different" ways. Under U.S. Statute 103, the obviousness of the combination would invalidate the patent claim especially under Supreme Court tests and precedents set by Anderson's-Black Rock, Inc. v. Pavement Salvage Co. in 1969 and Sakraida v. Ag Pro, Inc. in 1976.

The District Court of Eastern Michigan found that joining adjustable pedals with electronic devices was "inevitable" and that any hypothetical person trained within the industry would have found it obvious to combine the two, thus finding for KSR.

The district court used the test established in Graham v. John Deere from 1966. The test comprises four elements: "scope and content" of prior art, the "level of ordinary skill in the pertinent art," "differences between teachings found in the prior art" and the "invention from the vantage point of a hypothetical person" with the found "ordinary skills" set, and any "objective" indication of "non-obviousness. "

The district court also looked to prior art that it deemed "analogous" to that in the Teleflex patent, even citing the inventor's admission that he was "generally aware" of designs within his field similar to his. The court also pointed to other patents of analogous prior art.

The skill set determined necessary was an undergraduate degree in mechanical engineering or an equivalent amount of experience. Adhering to this, the court found "little difference between the teachings of the prior art and claims of the patent-in-suit."

Finally, the court stated secondary considerations don't control obviousness. While Teleflex offered commercial success as proof of the patent's merits, the court found the evidence to be insufficient.

All findings led to the district court to invalidate the Teleflex gas pedal assembly patent on grounds of obviousness.

Teleflex appealed to the Court of Appeals for the Federal Circuit which found, under its own precedent, the district court didn't apply what the Federal Circuit saw as the "correct" teaching-motivation-suggestion test. The court held that KSR did not provide convincing evidence that there was suggestion or motivation to combine the parts for a person of ordinary skill in the art of gas pedal assembly.

The Federal Circuit calls into question whether an individual with ordinary skill in the art would have been motivated to create the patented product. If not, the obviousness would be dismissed. As such, the Federal Court ruled that the case be remanded back to the District Court for further examination and the correct test in order to establish obviousness.

In its appeal to the Supreme Court, KSR and its lawyers suggest that the Federal Circuit Court's test departs from the law created in the statute and interpreted by the Supreme Court, calling it both a "downward departure" and an "insuperable barrier."

The heart of patent law is novelty. Richard Hoskins, professor of patent law at Northwestern University's law school sums it up, "If it's not novel, it doesn't deserve a patent." If combining parts is obvious and the pieces being combined are obvious, a patent should not be granted, according to Hoskins and many others. The novelty is not present.

KSR's petition for certiorari points to the patent itself which "admittedly and literally comprises nothing more than the combination" of pre-existing parts. They also cite the patent which calls for "any of various" adjustable pedal assemblies and electronic throttle controls.

By questioning the Federal Circuit's test for motivation-suggestion-teaching, KSR calls to question obviousness and prior art. Simply combining parts, KSR contends, does not warrant a patent.

They're essentially asking the Court to examine the obviousness clause in patent law, and the Federal Circuit's use of the teaching-motivation-suggestion test, which they claim violates the Supreme Court's own definition of patent law.

By examining questions of obviousness, motivation and novelty, KSR and Teleflex have garnered the attention of large corporations in vastly different fields, creating alliances one might not expect.

Hoskins says the interest of companies like Microsoft and Hallmark is not on behalf of their own patents, but those of their competitors. The vested interest of these companies and patent law professors is to "make it easier to challenge on the grounds of obviousness," says Hoskins.

Even the U.S. Solicitor General, who is not a party to the case, has filed a brief, asking for the petition to be granted, calling the case a "sound vehicle" for examining the Federal Circuit's test.

This case reaches beyond a car part by asking for revaluation of innovation and a clarification as to how it is defined and a patent granted. The gas pedals used by millions of Americans suddenly could affect everything else we use, and anything we may use in the future.

On April 30, 2007, a unanimous Supreme Court ruled in favor of more rigid standards for obtaining a new patent, where the innovation is "obvious."

"Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility," Justice Anthony Kennedy wrote for the Court.

The ruling elicited a mixed response from those following the case. At SCOTUSblog, Michael Barclay of Wilson Sonsini called it the "most important patent case of the last 20 years, and perhaps since the passage of the 1952 Patent Act."

But George Best, a patent expert and partner at Foley & Lardner, downplayed the decision's impact, contending that the Court merely set out to clarify the test set forth in Graham.

"Unlike what some have said, this is not the end of the world," Best said. "This case did not set a new standard. The justices were simply emphasizing a back-to-basics movement."

Attorneys in this case:Attorneys for Petitioner:James W. DabneyFried, Frank, Harris, Shriver & Jacobson, LLP(212) 859-80001 New York PlazaNew York, NY 10004Party name: KSR International Co.

Attorneys for Respondents:Roger D. YoungYoung & Susser(248) 353-862026200 American DriveSuite 305Southfield, MI 48034Party name: Teleflex, Inc.and Technology Holding Co.

Other:Robert BrauneisAssociate Professor of Law(202) 994-6138George Washington University Law School2000 H Street, NWWashington, DC 20052Party name: Twenty-Four Intellectual Property Law ProfessorsPaul D. ClementSolicitor GeneralPETER D. KEISLERAssistant Attorney GeneralTHOMAS G. HUNGARDeputy Solicitor GeneralJEFFREY P. MINEARAssistant to the Solicitor GeneralANTHONY J. STEINMEYERANTHONY A. YANG