Patented pedals hit the brakes

Supreme Court lowers the "obviousness" bar

When is an invention obvious and thus disqualified from receiving a patent? In a decision welcomed by many in the technology arena, the U.S. Supreme Court, in a unanimous decision, recently loosened the standard for obviousness. The ruling in KSR Int'l Co. v. Teleflex Inc. might well make it more difficult to obtain and retain patent protection.

Patently obvious

Teleflex, an automobile parts manufacturer, sued KSR, alleging that KSR's gas pedals infringed Teleflex's patent for an adjustable gas pedal that controls the auto engine through an electronic sensor. KSR filed a motion for summary judgment, arguing that several companies had made and sold adjustable gas pedals and pedals with electronic sensors. KSR claimed the Teleflex invention represented an obvious combination of these two types of designs and, thus, was not patentable.

Under Section 103 of the Patent Act, the Patent and Trademark Office can't grant a patent for an invention if at the time the invention was made "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 to a person having ordinary skill"in the subject matter.

Federal Circuit: Obviously, not

The trial court found that every element of Teleflex's invention existed in prior art, and the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals. It therefore granted summary judgment for KSR.

But the Federal Circuit Court of Appeals reversed, ruling that the trial court hadn't applied the proper test strictly enough. To resolve the obviousness question, the Federal Circuit has used the "teaching, suggestion, or motivation" (TSM) test. Under the test, a patent claim is proved obvious only if the prior art, the problem's nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.

Obviousness redefined

The Supreme Court criticized the Federal Circuit for addressing the obviousness question in a narrow and rigid manner that is inconsistent with Sec. 103 and Supreme Court precedent.

The Supreme Court specifically cited Graham v. John Deere Co. (1), which outlined the framework for applying Sec. 103:

The scope and content of the prior art are ... determined; differences between the prior art and the claims at issue are ... ascertained; and the level of ordinary skill in the pertinent art resolved. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.

The Court recognized the need for caution when dealing with a patent based on the combination of elements found in prior art. When a work is available in one field, design incentives and other market forces can prompt variations of it. This can happen either in the same field or a different one.

In the Court's view, if a person of ordinary skill can implement a predictable variation, that variation is likely obvious. Courts must decide whether the variation is more than just the predictable use of prior art elements keeping with their established functions. But, contrary to the Federal Circuit's position, the proper analysis doesn't require precise teachings on the specific subject matter of the challenged claim. Rather, courts can consider the inferences and creative steps that a person of ordinary skill in the relevant art would use.

Further, the Supreme Court found that a patent comprising several elements isn't obvious just because each of its elements was known in prior art. Courts should identify a reason that would prompt a person of ordinary skill in the field to combine the elements in the way accomplished by the claimed new invention.

The Court found that this analysis isn't confined by the formulistic use of the words teaching, suggestion and motivation, or by an overemphasis on the importance of published articles and the content of issued patents. Many fields lack broad discussion of obvious techniques or combinations. In those fields, often it's market demand, rather than scientific literature, that drives design trends and provides a reason to combine. To grant protection to advances that occur in ordinary course - in the absence of real innovation - will slow progress and may deprive prior inventions of their value.

Obvious errors

Within these parameters, the Supreme Court found multiple errors in the Federal Circuit's analysis of whether the Teleflex invention was obvious. From the Supreme Court's perspective, most of the flaws related to the appellate court's narrow conception of the obviousness test. The Supreme Court declared that "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."

More specifically, the Court found the Federal Circuit had erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve. This approach ignores the fact that the problem that motivated the patentee may be only one of many addressed by the patent's subject matter. The question isn't whether the combination was obvious to the patentee but to a person with ordinary skill in the art. Any problem known in the field at the time of invention and addressed by the patent could provide a reason for combining the elements in the manner claimed.

The Federal Circuit's second error stemmed from its assumption that a person of ordinary skill attempting to solve a problem will be led only to elements of prior art intended to solve the same problem. The Supreme Court observed that familiar items can have obvious uses beyond their main purposes. A person of ordinary skill could fit "the teachings of multiple patents together like pieces of a puzzle." After all, "a person of ordinary skill is also a person of ordinary creativity, not an automaton."

Finally, the Federal Circuit drew the wrong conclusion from the risk that courts and patent examiners can fall prey to: hindsight. The Supreme Court acknowledged the risk but explained that courts should be aware of the distortion caused by hindsight bias and must be cautious of arguments reliant on ex post reasoning.

Stating the obvious

Ultimately, the Supreme Court deemed the relevant claim in Teleflex's patent obvious and reversed the Federal Circuit's decision. It saw little difference between the teachings of prior art and the adjustable electronic pedal disclosed in the claim. A person having ordinary skill in the art could have combined the elements in a fashion encompassed by the claim and would have grasped the benefits of doing so.

KSR Int'l represents yet another indication that the Supreme Court believes the Federal Circuit has been too kind to patent owners, at the expense of innovation by others. Given the chance, the Court may continue to roll back patent protections currently taken for granted.