C.Motivation to Combine Prior Arts
KSR International Co.v.Teleflex Inc.
Supreme Court of the United States
550 U.S.398 (2007)
JUSTICE KENNEDY delivered the opinion of the Court.
Teleflex Incorporated and its subsidiary Technology Holding Company –both referred to here as Teleflex – sued KSR International Company for patent infringement.The patent at issue,United States Patent No.6,237,565,is entitled“Adjustable Pedal Assembly With Electronic Throttle Control.”The patentee is Steven J.Engelgau,and the patent is referred to as“the Engelgau patent.”….
Claim 4 of the Engelgau patent describes a mechanism for combining an electronic sensor with an adjustable automobile pedal so the pedal’s position can be transmitted to a computer that controls the throttle in the vehicle’s engine.When Teleflex accused KSR of infringing the Engelgau patent by adding an electronic sensor to one of KSR’s previously designed pedals,KSR countered that claim 4 was invalid under the Patent Act,35 U.S.C.§103,because its subject matter was obvious.
Section 103 forbids issuance of a patent when“the differences between 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 said subject matter pertains.”
Seeking to resolve the question of obviousness with more uniformity and consistency,the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the“teaching,suggestion,or motivation”test(TSM test),under which a patent claim is only proved obvious if“some motivation or suggestion to combine the prior art teachings”can be found in the prior art,the nature of the problem,or the knowledge of a person having ordinary skill in the art.KSR challenges that test,or at least its application in this case.Because the Court of Appeals addressed the question of obviousness in a manner contrary to §103 and our precedents,we granted certiorari.We now reverse.
Before issuing the Engelgau patent the U.S.Patent and Trademark Office(PTO) rejected one of the patent claims that was similar to,but broader than,the present claim 4.The claim did not include the requirement that the sensor be placed on a fixed pivot point.The PTO concluded the claim was an obvious combination of the prior art disclosed in Redding and Smith [patents]….
Upon learning of KSR’s design for GM,Teleflex sent a warning letter informing KSR that its proposal would violate the Engelgau patent.“‘Teleflex believes that any supplier of a product that combines an adjustable pedal with an electronic throttle control necessarily employs technology covered by one or more’”of Teleflex’s patents.KSR refused to enter a royalty arrangement with Teleflex; so Teleflex sued for infringement [of] claim 4 of the Engelgau patent….
C
The District Court determined,in light of the expert testimony and the parties’ stipulations,that the level of ordinary skill in pedal design was“‘an undergraduate degree in mechanical engineering (or an equivalent amount of industry experience) [and] familiarity with pedal control systems for vehicles.’”The court then set forth the relevant prior art,including the patents and pedal designs described above [… and] found“little difference”…
With principal reliance on the TSM test,the Court of Appeals reversed.It ruled the District Court had not been strict enough in applying the test,having failed to make“‘finding[s] as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention’ … to attach an electronic control to the support bracket of the Asano assembly.”… The Court of Appeals held that the District Court was incorrect that the nature of the problem to be solved satisfied this requirement because unless the“prior art references address[ed] the precise problem that the patentee was trying to solve,”the problem would not motivate an inventor to look at those references.
That it might have been obvious to try the combination of Asano and a sensor was likewise irrelevant,in the court’s view,because“‘[o]bvious to try’ has long been held not to constitute obviousness.”
The Court of Appeals also faulted the District Court’s consideration of the PTO’s rejection of the broader version of claim 4.The District Court’s role,the Court of Appeals explained,was not to speculate regarding what the PTO might have done had the Engelgau patent mentioned Asano.Rather,the court held,the District Court was obliged first to presume that the issued patent was valid and then to render its own independent judgment of obviousness based on a review of the prior art.The fact that the PTO had rejected the broader version of claim 4,the Court of Appeals said,had no place in that analysis.
The Court of Appeals further held that genuine issues of material fact precluded summary judgment.Teleflex had proffered statements from one expert that claim 4“‘was a simple,elegant,and novel combination of features,’”compared to Rixon,and from another expert that claim 4 was nonobvious because,unlike in Rixon,the sensor was mounted on the support bracket rather than the pedal itself.This evidence,the court concluded,sufficed to require a trial.
II
…
C
The flaws in the analysis of the Court of Appeals relate for the most part to the court’s narrow conception of the obviousness inquiry reflected in its application of the TSM test.In determining whether the subject matter of a patent claim is obvious,neither the particular motivation nor the avowed purpose of the patentee controls.What matters is the objective reach of the claim.If the claim extends to what is obvious,it is invalid under §103.One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.
The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve.The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter.The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art.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.
The second error of the Court of Appeals lay in its 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.The primary purpose of Asano was solving the constant ratio problem; so,the court concluded,an inventor considering how to put a sensor on an adjustable pedal would have no reason to consider putting it on the Asano pedal.Common sense teaches,however,that familiar items may have obvious uses beyond their primary purposes,and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.Regardless of Asano’s primary purpose,the design provided an obvious example of an adjustable pedal with a fixed pivot point;and the prior art was replete with patents indicating that a fixed pivot point was an ideal mount for a sensor.The idea that a designer hoping to make an adjustable electronic pedal would ignore Asano because Asano was designed to solve the constant ratio problem makes little sense.A person of ordinary skill is also a person of ordinary creativity,not an automaton.
The same constricted analysis led the Court of Appeals to conclude,in error,that a patent claim cannot be proved obvious merely by showing that the combination of elements 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 his or her technical grasp.If this leads to the anticipated success,it is likely the product not of innovation but of ordinary skill and common sense.In that instance the fact that a combination was obvious to try might show that it was obvious under §103.
The Court of Appeals,finally,drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias.A factfinder should be aware,of course,of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.Rigid preventative rules that deny factfinders recourse to common sense,however,are neither necessary under our case law nor consistent with it.
We note the Court of Appeals has since elaborated a broader conception of the TSM test than was applied in the instant matter.Those decisions,of course,are not now before us and do not correct the errors of law made by the Court of Appeals in this case.The extent to which they may describe an analysis more consistent with our earlier precedents and our decision here is a matter for the Court of Appeals to consider in its future cases.What we hold is that the fundamental misunderstandings identified above led the Court of Appeals in this case to apply a test inconsistent with our patent law decisions.
III
When we apply the standards we have explained to the instant facts,claim 4 must be found obvious.We agree with and adopt the District Court’s recitation of the relevant prior art and its determination of the level of ordinary skill in the field.As did the District Court,we see little difference between the teachings of Asano and Smith and the adjustable electronic pedal disclosed in claim 4 of the Engelgau patent.A person having ordinary skill in the art could have combined Asano with a pedal position sensor in a fashion encompassed by claim 4,and would have seen the benefits of doing so.
B
The District Court was correct to conclude that,as of the time Engelgau designed the subject matter in claim 4,it was obvious to a person of ordinary skill to combine Asano with a pivot-mounted pedal position sensor.There then existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals,and the prior art taught a number of methods for achieving this advance.The Court of Appeals considered the issue too narrowly by,in effect,asking whether a pedal designer writing on a blank slate would have chosen both Asano and a modular sensor similar to the ones used in the Chevrolet truckline and disclosed in the ’068 patent.The District Court employed this narrow inquiry as well,though it reached the correct result nevertheless.The proper question to have asked was whether 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.
Teleflex indirectly argues that the prior art taught away from attaching a sensor to Asano because Asano in its view is bulky,complex,and expensive.The only evidence Teleflex marshals in support of this argument,however,is the Radcliffe declaration,which merely indicates that Asano would not have solved Engelgau’s goal of making a small,simple,and inexpensive pedal.What the declaration does not indicate is that Asano was somehow so flawed that there was no reason to upgrade it,or pedals like it,to be compatible with modern engines.Indeed,Teleflex’s own declarations refute this conclusion.Dr.Radcliffe states that Rixon suffered from the same bulk and complexity as did Asano.Teleflex’s other expert,however,explained that Rixon was itself designed by adding a sensor to a pre-existing mechanical pedal.If Rixon’s base pedal was not too flawed to upgrade,then Dr.Radcliffe’s declaration does not show Asano was either.Teleflex may have made a plausible argument that Asano is inefficient as compared to Engelgau’s preferred embodiment,but to judge Asano against Engelgau would be to engage in the very hindsight bias Teleflex rightly urges must be avoided.Accordingly,Teleflex has not shown anything in the prior art that taught away from the use of Asano.
Like the District Court,finally,we conclude Teleflex has shown no secondary factors to dislodge the determination that claim 4 is obvious.Proper application of Graham and our other precedents to these facts therefore leads to the conclusion that claim 4 encompassed obvious subject matter.As a result,the claim fails to meet the requirement of § 103.
IV
A separate ground the Court of Appeals gave for reversing the order for summary judgment was the existence of a dispute over an issue of material fact.We disagree with the Court of Appeals on this point as well.To the extent the court understood the Graham approach to exclude the possibility of summary judgment when an expert provides a conclusory affidavit addressing the question of obviousness,it misunderstood the role expert testimony plays in the analysis.In considering summary judgment on that question the district court can and should take into account expert testimony,which may resolve or keep open certain questions of fact.That is not the end of the issue,however.The ultimate judgment of obviousness is a legal determination.Graham (1966).Where,as here,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.Nothing in the declarations proffered by Teleflex prevented the District Court from reaching the careful conclusions underlying its order for summary judgment in this case.
KSR provided convincing evidence that mounting a modular sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art.Its arguments,and the record,demonstrate that claim 4 of the Engelgau patent is obvious.In rejecting the District Court’s rulings,the Court of Appeals analyzed the issue in a narrow,rigid manner inconsistent with §103 and our precedents.The judgment of the Court of Appeals is reversed,and the case remanded for further proceedings consistent with this opinion.
It is so ordered.
[1]In ’811,where the shank was above the hinge plate,an upward movement of the chisel forced the shank up against the underside of the rear of the upper plate.The upper plate thus provided the fulcrum about which the hinge was pried open.Because of this,as well as the location of the hinge pin,the shank rubbed against the heel of the upper plate causing wear both to the plate and to the shank.By relocating the hinge pin and by placing the hinge plate between the shank and the upper plate,as in ’798,the rubbing was eliminated and the wear point was changed to the hinge plate,a member more easily removed or replaced for repair.