Welcome to the FICPI ABC Conference 2007. © Birch, Stewart, Kolasch & Birch, LLP KSR v. Teleflex: U.S. Supreme Court Decision Raises Patentability Standard

Welcome to the FICPI ABC Conference 2007

© Birch, Stewart, Kolasch & Birch, LLP

KSR v. Teleflex: U.S. Supreme Court Decision Raises Patentability Standard

FICPI ABC ConferenceLoch Lomond May 2007

by Andrew D. MeikleBirch, Stewart, Kolasch & Birch, LLP


U.S. Supreme Court Addresses “Obviousness” Patentability Standard KSR International, Co. v Teleflex, Inc., 82

USPQ2d 1385 (U.S. 2007) Court of Appeals for the Federal Circuit (CAFC)

reversed District Court decision holding patent claim invalid based on obviousness

surprisingly, U.S. Supreme Court accepted appeal

Oral Argument took place Nov. 28, 2006 Supreme Court reversed CAFC decision on April

30, 2007


Question Presented by U.S. Supreme Court

Whether the Court of Appeals for Federal Circuit (CAFC) erred in holding that a claimed invention cannot be held “obvious,” and thus unpatentable under 35. U.S.C. 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” [emphasis added]


The U.S. Supreme Court Justices


The U.S. Supreme Court Justices that are Patent Attorneys


District Court Decision inKSR v. Teleflex District Court held claim 4 of USP 6,237,565

(Engelgau ‘565) invalid based on “obviousness” over various combinations of prior art references

CAFC overturned holding stating that District Court failed to identify an adequate, specific basis for a teaching, suggestion or motivation (TSM) to combine prior art references together


The Claimed Invention: Engelgau ‘565 claims a vehicle pedal device


Engelgau ‘565 Figure 2 showing: support 18, adjustable pedal assembly 22, pivot 24, and electronic pedal sensor control 28



Advantages of Engelgau ‘565 Adjustable Pedal Device

electronic control 28 (a pedal position sensor) remained in fixed position while driver adjusted pedal

pedal assembly less complex, more compact (i.e. smaller, simpler, cheaper)


Summary of Prior Art Patents

“Asano” disclosed all mechanical elements of patented adjustable pedal device including a “fixed pivot”, but with mechanical sensor

“Rixon” disclosed an adjustable pedal device with movable pivot and an electronic sensor located on the movable pedal (with a “hanging” wire susceptible to chafing)

“Smith” disclosed non-adjustable pedal device with an electronic sensor on a fixed support


Review of “Obviousness” Standard Under the statute 35 U.S.C. § 103(a), prior art

invalidates a patent for obviousness when the "subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains”

District Court interpreted the statute by using the “obviousness” analysis endorsed by the earlier Supreme Court decision Graham v. John Deere Co., 148 USPQ 459 (1966)


Review of “Obviousness” Standard

Graham factual inquiries: Scope and content of the prior art? Level of ordinary skill in the art? Differences between the prior art and the

claimed invention? Any evidence of secondary considerations

(e.g. commercial success, long felt but unsolved needs, failure of others, etc.)?


Review of “Obviousness” Standard District Court also attempted to comply with

CAFC “TSM” requirement: CAFC decisions additionally required that even if

all the claimed elements are disclosed by various prior art references, the claimed combination is not rendered obvious, unless there is evidence of “some [teaching,] motivation or suggestion [TSM] to combine the prior art teachings” to arrive at the claimed combination

No U.S. Supreme Court decisions expressly endorsed the TSM requirement


District Court DecisionKSR v. Teleflex District Court held that one basis for TSM to combine

Asano with other references rested on the fact that the automobile industry had increasingly used electronic sensors with other mechanical parts before the patent was filed (i.e. market pressure made this “inevitable”)

Another basis for TSM to combine Asano with other references was tied to nature of the problem to be solved (how to reduce complexity and size) combined with the fact that knowledge of person skilled in this area included fact that electronic sensors could be used as a solution


District Court DecisionKSR v. Teleflex

District Court held:

Hypothetical person skilled in the art with an undergraduate degree in mechanical engineering (or equivalent industry experience) who was familiar with pedal control systems for vehicles would have found it “obvious” to attach an electronic pedal position sensor to the support member in the mechanical device of Asano


CAFC DecisionKSR v. Teleflex

CAFC reasoned: Asano disclosed adjustable pedal device with fixed

support, but did not address goal of making device smaller, simpler, cheaper with an electronic sensor

Rixon disclosed electronic sensor on adjustable pedal, but did not suggest how to solve problem of wire chafing

Smith disclosed electronic sensor on fixed support, but did not suggest to use this feature in the context of an adjustable pedal device


CAFC DecisionKSR v. Teleflex

CAFC complained that District Court applied an “incomplete” TSM analysis by focusing on the nature of the problem and the ability of one skilled in the art to solve such a problem, rather than identifying a specific basis for a TSM to obtain the claimed combination


CAFC DecisionKSR v. Teleflex CAFC found no specific basis in alternative prior

art references for a TSM to attach the electronic sensor in a fixed position to the support of an adjustable pedal assembly of Asano

“Combining prior art references without evidence of [a TSM] simply takes the inventor’s disclosure as a blueprint for piecing together the prior art to defeat patentability—the essence of hindsight,” stated the CAFC


U.S. Supreme Court Oral Argument(Nov. 28th, 2006)KSR argued against requiring CAFC TSM test: TSM should not necessarily be required if patent

claim is very broad and/or differences from prior art very small

TSM is not only protection against prohibited “hindsight” analysis “secondary considerations” (e.g. “commercial success”

and “long felt but unsolved needs” from Graham case) also provide safeguard

one Justice asked if TSM could be used as one factor to determine obviousness rather than as an exclusive test


U.S. Supreme Court Oral Argument(continued)Teleflex argued in support of exclusive TSM test: TSM test requires evidence of what was

apparent to person skilled in the art, not merely evidence of whether the person was “capable” of making claimed invention

Problem was not to merely combine an electronic sensor with a pedal assembly, but to specifically combine these elements such that the electronic sensor is attached to the fixed support


Supreme Court: CAFC Impermissibly Limited TSM Inquiry1. CAFC incorrectly required disclosure in prior

art of specific problem patentee was trying to solve “…any need or problem known in the field of

endeavor at the time of invention…can provide a reason for combining the elements in the manner claimed.”


Supreme Court: CAFC Impermissibly Limited TSM Inquiry (continued)

2. CAFC incorrectly assumed that person of ordinary skill in the art (POSA) would be led only to those elements of prior art designed to solve same problem addressed by patentee “…familiar items may have obvious uses

beyond their primary purposes, and in many cases a [POSA] will be able to fit the teachings of multiple [references] together like pieces of a puzzle.”


Supreme Court: CAFC Impermissibly Limited TSM Inquiry (continued)3. CAFC incorrectly concluded that patent

claim cannot be held “obvious” (unpatentable) merely by showing that the combination of elements would have been “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 [POSA] has good reason to pursue the known options within his or her technical grasp.”


Supreme Court Favorably Cites Dystar and Alza

Dystar Textilfarben GmbH v. C.H. Patrick Co., 80 USPQ2d 1641 (Fed. Cir. 2006)

prior art not required to explicitly state TSM basis, since TSM evidence may be found: in knowledge of person skilled in the art (e.g.

well known principle) nature of problem to be solved (e.g. well

known problem-solving strategy) implicitly based on common knowledge or

common sense


Supreme Court Favorably Cites Dystar and Alza (continued)

Alza Corp. v. Mylan Laboratories Inc. 80 USPQ2d 1001 (Fed. Cir. 2006)

evidence of TSM may be found implicitly in prior art

evidence of TSM may be based on knowledge generally available to POSA


KSR Decision Lessons: Combination Patents Beware! Patent Examiners and Patent Attackers (PEs

& PAs) are less restricted in showing a TSM basis to combine references

PEs & PAs can pay much less attention to the problems solved by the invention and focus on the knowledge and problem solving strategies of the hypothetical POSA possible sources: engineering manuals and

science textbooks


KSR Decision Lessons: Combination Patents Beware! PEs & PAs can rely on “common knowledge”

or “common sense” as evidence of a TSM basis

PEs & PAs can find TSM basis “implicitly” in prior art but must provide explicit reasons without

conclusory statements


KSR Decision Lessons: Combination Patents Beware! Applicant’s (or Patentee’s) argument that

“obvious to try” falls short of establishing obviousness is gone! expands prior art to include: references in the

same general technology area that may not mention any feature or technical issue addressed by the claimed invention

“design need” and “market pressure” become legitimate TSM bases to combine references possible source: publications about industry

design trends


KSR Decision Lessons: Combination Patents Beware!

The POSA of the past CAFC decisions seemed to work with either a “clean slate” or a disorganized desk jammed with 1,000 possible, confusing reference combinations

The “new and improved” POSA after KSR v. Teleflex seems to be more creative, be more organized, has much better problem solving skills, and is aware of industry design trends and market pressures


KSR Decision Lessons: Combination Patents Beware! At least the requirement for a TSM basis to

combine references together lives on Supreme Court appreciated this “helpful

insight” and did not reject this requirement USPTO issued official memo acknowledging

that this requirement still exists


Contact Information:

Andrew D. [email protected]

Birch, Stewart, Kolasch & Birch, LLPwww.bskb.com

[email protected]

Documents

Welcome to the FICPI ABC Conference 2007. © Birch, Stewart, Kolasch & Birch, LLP KSR v. Teleflex: U.S. Supreme Court Decision Raises Patentability Standard