4/30. The Supreme Court of the US (SCUS)
issued its unanimous
opinion [31 pages in PDF] in KSR International v. Teleflex, a case
regarding patent obviousness. The SCUS reversed the January 6, 2005,
opinion [15 pages in PDF] of the
U.S. Court of Appeals (FedCir) and remanded.
Section 103 provides that one cannot obtain a patent on an invention that is
"obvious at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains". This opinion rejects the Federal Circuit's
application of its TSM test for obviousness. This opinion will make it easier for patent
examiners and federal judges to reject applications and patents on grounds of obviousness.
This is a patent dispute involving adjustable floor
pedals. The Court of Appeals merely issued a non-precedential opinion.
However, the subject of obviousness is pertinent to technology related patents.
This case attracted consideration outside attention. The Supreme Court
received over three dozen amicus curiae briefs on the merits. Many were
submitted by technology companies (including Cisco, Intel, IBM, Qualcomm, and
Time Warner, IAC/Interactive, and Viacom) and groups that are active on
technology related issues (including the Business Software Alliance, Progress
and Freedom Foundation, Computer and Communications Industry Association,
American Intellectual Property Law Association, and Intellectual Property Owners
35 U.S.C. § 103 addresses "Conditions for patentability; non-obvious subject
matter". Subsection (a) references obviousness. It provides that "A patent may
not be obtained though the invention is not identically disclosed or described
as set forth in section 102 of this title, if 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. Patentability shall
not be negatived by the manner in which the invention was made."
Proceedings Below. The plaintiffs below are Teleflex International and
Technology Holding Company. Teleflex is the assignee of
U.S. Patent No. 6,237,565 B1, titled "adjustable pedal assembly with
electronic throttle control". It pertains to things on the floor of a car that
are used to control gas, breaking, and the clutch.
The plaintiffs filed a complaint in
U.S. District Court (EDMich) against KSR International alleging infringement
of this patent. The District Court granted summary judgment to KSR. It held that
the sole claim of the patent at issue in the case is invalid for obviousness.
That opinion is reported at 298 F. Supp. 2d 581.
Teleflex appealed. The U.S. Court of Appeals
(FedCir) issued its non-precedential
opinion [PDF] vacating the
judgment and remanding.
The Federal Circuit wrote that "When obviousness is based on the teachings of
multiple prior art references, the movant must also establish some ``suggestion,
teaching, 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. ... ``The
reason, suggestion, or motivation to combine [prior art references] may be found
explicitly or implicitly: 1) in the prior art references themselves; 2) in the
knowledge of those of ordinary skill in the art that certain references, or
disclosures in those references, are of special interest or importance in the
field; or 3) from the nature of the problem to be solved, ‘leading inventors to
look to references relating to possible solutions to that problem.´ ´´"
(Citations to earlier Federal Circuit opinions omitted. Brackets in original.)
The Federal Circuit continued that "Our case law makes clear that the best
defense against the subtle but powerful attraction of a hindsight-based
obviousness analysis is rigorous application of the requirement for a showing of
the teaching or motivation to combine prior art references."
It concluded that "we have consistently held that a person of ordinary skill
in the art must not only have had some motivation to combine the prior art
teachings, but some motivation to combine the prior art teachings in the
particular manner claimed."
The Federal Circuit's approach or test is also know by an acronym, TSM.
Supreme Court. Justice Kennedy wrote the unanimous opinion of the SCUS.
The Supreme Court last examined Section 103 in its 1966
opinion in Graham v. John Deere Co., 383 U.S. 1.
The Supreme Court began by "rejecting the rigid approach of the Court of
Appeals. Throughout this Court's engagement with the question of obviousness,
our cases have set forth an expansive and flexible approach inconsistent with
the way the Court of Appeals applied its TSM test here."
"To this end, Graham set forth a broad inquiry and invited courts, where
appropriate, to look at any secondary considerations that would prove
instructive." The Court continued, "Neither the enactment of §103 nor the
analysis in Graham disturbed this Court’s earlier instructions concerning the
need for caution in granting a patent based on the combination of elements found
in the prior art. For over a half century, the Court has held that a ``patent
for a combination which only unites old elements with no change in their
respective functions ... obviously withdraws what is already known into the
field of its monopoly and diminishes the resources available to skillful men.´´
... This is a principal reason for declining to allow patents for what is
obvious. The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
The Supreme Court reviewed, and offered this summation of, its last half
Century of precedent: "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, §103 likely bars its patentability. For the
same reason, if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar devices
in the same way, using the technique is obvious unless its actual application is
beyond his or her skill."
Although, the Court conceded that "Following these principles
may be more difficult in other cases than it is here because the claimed subject
matter may involve more than the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement. Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of demands known to the
design community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue."
The Supreme Court wrote that the Federal Circuit's TSM test "captured a
helpful insight", but as it is applied by the Federal Circuit is incompatible
with Supreme Court precedent.
It elaborated that "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. The diversity of inventive pursuits and of modern technology
counsels against limiting the analysis in this way. 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. 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."
It added that "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."
The Supreme Court then applied these principles to the claimed invention in this case,
and found it obvious. Hence, it reversed the judgment of the Court of Appeals.
Reaction. The Computer and
Communications Industry Association (CCIA) filed an
curiae brief [PDF] on the merits urging reversal. After the ruling, Ed
Black, head of the CCIA, stated in a
release that "We are encouraged by the Court’s efforts to clamp down on
obvious patents ... This is the Court's second unanimous decision in
recent months that tries to rein in runaway patents. It reaffirms what we have
always said: the patent system's purpose is to promote innovation, not patents.
Real patent reform is still needed to reduce the vast number of junk patents."
Robert Holleyman, head of the Business Software
Alliance (BSA), stated in a
release that "The ruling in the KSR case will improve patent quality by enabling
examiners and the courts to deny patents to questionable applications. "
He added that the the decision in this case and in Microsoft v. AT&T
do not diminish "the need for Congress to act quickly to modernize our existing
law. We strongly urge Congress to adopt The Patent Reform Act of 2007, introduced a
few weeks ago in the US House of Representatives and the US Senate."
Solveig Singleton, of the Progress and Freedom
Foundation (PFF), wrote in a release that "A more narrow opinion that still
addresses the substantive issue of obviousness is hard to imagine. There was
little guidance from the Court on the systemic issues raised by amici and the
parties, such as evidentiary standards, presumptions of validity, how or why to
improve the examiner’s and the courts' access to the opinions of ``persons of
ordinary skill in the art,´´ and so on." See also,
amicus curiae brief [25 pages in PDF] of the PFF urging reversal.
amicus curiae brief of the Office of the
Solicitor General, on the merits, urging reversal.
This case is KSR International Co. v. Teleflex, Inc., et al., Supreme
Court of the U.S., Sup. Ct. No. 04-1350, a petition for writ of certiorari to
the U.S. Court of Appeals for the Federal Circuit, App. Ct. No. 04-1152. The
Court of Appeals heard an appeal from the U.S. District Court for the Eastern
District of Michigan, D.C. No. 02-74586.
See also, Supreme Court
transcript [75 pages in PDF] of November 28, 2007, oral argument.
See also, story titled "Supreme Court Grants Cert in Patent Obviousness Case"
in TLJ Daily E-Mail
Alert No. 1,399, July 26, 2006, and story
title "Supreme Court Requests Brief From Solicitor General in Patent Obviousness
Case" in TLJ Daily
E-Mail Alert No. 1,227, October 5, 2005.