United States: The Supreme Court Decision in KSR v. Teleflex

Article by Michael Brody, Allan Fanucci, Scott Samay, David Bloch

On April 30, the Supreme Court handed down its highly anticipated decision in KSR International Co. v. Teleflex, Inc. The Court ruled that the Federal Circuit’s "teaching, suggestion, or motive" test cannot rigidly be applied as a mandatory threshold showing in the assertion of an "obviousness" defense to patent infringement. Continuing the theme set forth in its recent eBay v. MercExchange decision, the Court criticized the mechanical application of patent doctrine to issues that call for flexibility and the appreciation of nuance. The Court specifically criticized the Federal Circuit’s application of its obviousness standard in a manner that failed to take into account "common sense" and failed to appreciate the "inferences and creative steps" routinely achieved by persons engaged in a given field of endeavor. Drawing on its own jurisprudence in Graham v. John Deere and other obviousness cases, the Court advocated "an expansive and flexible approach" to the obviousness issue. Early indications are that the opinion may have limited effect on PTO practice, but the Federal Circuit may view the scales as having tipped in favor of obviousness defenses.

The patent claims asserted by Teleflex covered the combination of an adjustable gas pedal assembly and an electronic throttle control ("ETC"). An adjustable pedal assembly is one that can be adjusted to accommodate drivers of different heights. An ETC is simply an electronic sensor.

The district court found that adjustable pedal assemblies combined with mechanical (rather than electronic) throttle controls were known in the art prior to the patented invention; that ETCs were available for use with non-adjustable gas pedals; and that ETC’s were becoming more prevalent as the automobile industry embraced the use of computer-controlled engines (which require an ETC) in order to improve performance and reduce emissions. The district court therefore concluded that, "clearly it was inevitable that adjustable pedal assemblies would be joined with an electronic device to work in conjunction with modern electronically controlled engines." On this basis, the district court granted defendant’s motion for summary judgment, invalidating the claims at issue as obvious.

The Court of Appeals for the Federal Circuit reversed, relying on its "teaching, suggestion, or motivation" test. The test had generally been applied by the Federal Circuit to ameliorate the risk that hindsight might taint obviousness evaluations. The rule requires that, where a patent claims an invention consisting of a combination of technologies or components disclosed in the prior art, the putatively inventive combination would be deemed "obvious" only in the face of evidence showing some contemporaneous motivation or suggestion to combine the otherwise known elements. The Federal Circuit had typically (though not universally) looked for such a suggestion to be explicit. According to the Federal Circuit, no such showing had been made in the KSR record.

The Supreme Court reversed the Federal Circuit, stating that the teaching, suggestion, or motivation test cannot be applied rigidly to require an explicit suggestion to combine in all instances: "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents." Rather, the Court observed, "Our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its . . . test here." Echoing the language of its recent opinion in eBay v. MercExchange, the Court concluded that, "Rigid preventative rules that deny fact finders recourse to common sense . . . are neither necessary under our case law nor consistent with it."

Does this decision eliminate the Federal Circuit’s teaching, motivation, or suggestion test? Probably not. The Supreme Court specifically acknowledged the danger that "hindsight" might color obviousness determinations, and stated that "[t]here is no necessary inconsistency between the idea underlying the . . . test and the Graham analysis." What the Court rejected is any rigid application of the rule: "The analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim . . . ." Instead, the inquiry is to be pragmatic in nature: "In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature will drive design trends." Thus, "When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, [the nonobviousness requirement of] §103 likely bars its patentability."

It remains to be seen whether or not the KSR decision will result in more patents being invalidated as obvious.

At a minimum, it is clear that a defendant seeking to invalidate a patent may be able to make an "obviousness" showing even in the absence of a reference explicitly suggesting a claimed combination. It is uncertain whether this amounts to a substantive change in the law since some patent claims are found obvious without such an express teaching.

What does seem likely is that courts will be more willing to take account of the inferences and even the creative steps that a person of ordinary skill in the art would routinely employ to solve a known or emergent problem in an industry, and that such considerations will be of significance even in the absence of explicit "teachings" directed to the subject matter claimed. As the Court put it, "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

One aspect of the decision that bears noting is the contrast between the seemingly open textured and highly factual inquiry endorsed by the Court’s opinion, and the procedural upshot of the decision: affirmance of an order granting summary judgment. The teaching, suggestion or motivation test often has been used as a basis for summary adjudications of nonobviousness, but it is far from clear that the demise of the test’s threshold status will provide a basis for summary resolution in the other direction; particularly in light of the need to factually balance the many Graham obviousness factors. Nonetheless, sweeping aside as conclusory an expert opinion to the contrary, the KSR Court had no hesitation in reaching such a result in the case before it.

In its first decision applying KSR, the Federal Circuit on May 9 upheld a trial verdict invalidating a patent claim on obviousness grounds. Leapfrog Enterprises v. Fisher-Price, Inc., et al., No. 06-1402, Slip Op. at 10 (Fed. Cir. May 9, 2007) The language of the decision plainly reflects the influence of KSR: "Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art." In the Leapfrog case, the verdict being affirmed had been entered in the face of a showing of "secondary considerations" which included, "substantial evidence of commercial success, praise, and long felt need." This record was not deemed to preclude the trial judge’s finding of invalidity, "given the strength of the prima facie obviousness showing." Id.

What does the KSR decision mean to patent applicants? On May 3, 2007, the United States Patent and Trademark Office issued an internal interim memorandum discussing the KSR ruling. The memorandum suggests that the decision may have a less-than-revolutionary impact on the examination process. The memo concluded that, even in the wake of KSR, "it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed" before rejecting an applicant’s claim (emphasis added). The strongest reason in support of obviousness remains that a written prior art document specifically teaches or suggests that the elements be combined.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.