MEMORANDUM
TO: Law Firm
FROM: Sam Kasley
DATE: September 21, 2007
RE: Court decision - KSR Intl. Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007).
Summary
For a patent to be valid and enforceable, the invention must be non-obvious based on the prior art. 35 USC § 103. The test used by the Federal Appeals Court for the Federal Circuit (first established by the Court of Customs and Patent Appeals) prior to this case was the TSM test that required a rather rigid finding of some reference to the obviousness of the combination. 127 S.CT. at 1741. The KSR decision relaxes that standard to make it easier to show that a patent is obvious to one skilled in the art. Id. at 1745.
Procedural History
Teleflex was the exclusive licensee for a patent on an adjustable vehicle pedal assembly with an electronic pedal position sensor attached. KSR developed and patented an adjustable pedal system for cars and later added an electronic sensor to it which it supplied for use on GM trucks. Teleflex sued in the Federal District Court for the Eastern District of Michigan claiming that KSR infringed their patent. KSR claimed that the Teleflex patent was obvious based on the prior art.
The district court granted KSR summary judgment after determining the applicable claim in the Teleflex patent was invalid because of obviousness.
Teleflex appealed to the Federal Appeals Court for the Federal District.
That court reversed, ruling that the TSM test, which the Federal Circuit Court had previously developed, was not applied strictly enough in district court. Teleflex Inc. v. KSR Intl. Co., 119 Fed. Appx. 282 (2005).
KSR petitioned for certiorari to the United States Supreme Court. That court reversed, unanimously holding that the Teleflex patent was invalid because it was obvious. 127 S.Ct. 1727.
Not only was the opinion unanimous, but the Supreme Court was pointedly critical of the Federal Circuit Court opinion. Some examples include the Supreme Court saying “Because the Court of Appeals addressed the question of obviousness in a manner contrary to § 103 and our precedents, we granted certiorari.†Id. at 1735. And “We begin by rejecting the rigid approach of the Court of Appeals.†Id. at 1739. And “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.†Id. At 1742.
Analysis
The question in this case was to determine if the Teleflex patent that combined an electronic sensor (prior art) with an adjustable pedal system (KSR art) was obvious.
The United States Supreme Court initially gave guidance regarding obviousness in 1966. Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Graham set out the factors to be used. They are: (1) The scope and content of the prior art are to be determined. (2) The differences between the prior art and the claims at issue are to be ascertained. (3) The level of ordinary skill in the pertinent art is resolved, and (4) Secondary considerations that may have relevancy are considered. Id. at 17. The secondary considerations are: (1) Commercial success (2) Long felt but unresolved needs, (3) Failure of others. Id.
The Federal Circuit developed the TSM (teaching, suggestion, motivation) test to provide uniformity and consistency to resolving patent questions of obviousness. 127 S.Ct. at 1734. In deciding this case, the Federal Circuit addressed application of the TSM test holding that “The correct standard requires the court to make specific findings showing a teaching, suggestion or motivation to combine prior art teachings in a particular manner claimed by the patent at issueâ€. 119 Fed.Appx. at 290. That court concluded that there were genuine issues of material fact on the question of obviousness that should be resolved by a jury. Id. In other words, that court would not find obviousness unless a teaching, suggestion or motivation of combining two prior arts was SHOWN (emphasis added). That result encourages infringement actions where obviousness is a question because it makes it much more difficult for the defending party to show that the patent claimed to be infringed is obvious and therefore void.
The United States Supreme Court rejected the analysis saying that the Federal Circuit considered the issue too narrowly. 127 S.Ct. at 1744. The test the Supreme Court required was articulated as “The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs create by developments in the field of endeavor, would have seen a benefit to upgrading . . . with a sensor. . . . The prior art discussed above leads us to the conclusion that attaching the sensor . . . would have been obvious to a person of ordinary skill.†Id.
The Supreme Court further commented that obviousness can be found using two other analyses, those of common sense and of “obvious to tryâ€. The Supreme Court said “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.†Id. At 1742. And “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. . . . In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.†Id.
The court reviewed three previous cases to further explain aspects of obviousness. In United States v. Adams, 383 U.S. 39 (1966), the Court found non-obviousness concluding that “ . . . when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.†127 S.Ct. at 1740. In Anderson’s-Black Rock v. Pavement Salvage Co., 396 US 57 (1969), the Court found obviousness when “The two in combination did no more than they would in separate, sequential operations.†127 S.Ct. at 1740. And in Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976), the Court said “ . . . that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.†127 S.Ct. at 1740. The Court further advised that “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; . . . the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.†Id. at 1741.
The result of this case is a relaxation of the requirements to show that an invention combining two known arts is obvious, and therefore invalid. In a case where the question of obviousness arises in the context of combining two known arts, that question will no longer be decided using the inflexible application of the TSM test which requires a showing of some prior teaching, suggestion or motivation regarding the combination, but will be a simple determination by the court (or by the patent examiner) of whether a person skilled in the art would see the benefit of the combination. A common sense or an obvious to try analysis will be adequate to support obviousness.
This decision will benefit users of patents who combine prior arts who can defend infringement suits on the basis of obviousness of the patent of the party claiming infringement. Patents combining prior arts are less likely to be approved by the patent office, and practitioners of the art will be permitted to use new devices combining prior arts with less fear of a patent by another party later penalizing that use.
The Federal Circuit has already reacted to this decision in considering secondary considerations that the Supreme Court had previously indicated in Graham may tip the scales toward nonobviousness. 383 US 1 at 36. As commenters recently pointed out, “The impact of the KSR decision is already being felt in the evaluation of secondary considerations of nonobviousness. In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007), the Federal Circuit considered evidence of secondary considerations post-KSR. The Federal Circuit noted that. given the prima facie showing of obviousness of a patent for the combination of previously-existing elements, even a substantial showing of secondary considerations would not overcome a finding that the patented subject matter was obvious. Thus, the patented subject matter was found to be invalid despite the patentee’s evidence of commercial success, praise, and long-felt need for the patented subject matter.†Ed Schlatter & John Heal, After the Big One:Helping Your Client Find Opportunities After the Shake-up to the Patent World, 49 Orange County Law 24 (Aug. 2007).
Other patents likely to be affected include biotechnology of genetic sequencing, prescription/generic drugs, software patents and business method patents. Clara R. Cottrell, The Supreme Court Brings a Sea Change with KSR International Co. v. Teleflex, Inc., 42 Wake Forest L. Rev. 595, 606-608 (2007). For pharmaceuticals, a possible result will be that combination patents that previously could extend the patent protection of drugs and prevent generic manufacturers from making the drug will now be found obvious, thus limiting the patent protection period. Id. Cottrell believes that patents on genetic sequencing are of concern, but outlines some assumptions under which those patents will continue to be granted. Id. For software and business method patents, since the prior art is not in many cases available to the patent examiner, the examiner had no basis to reject based on the TSM test, but analyzing the application based on what is obvious to one skilled in the art may lead to rejection of more of those patents. Id. at 610. In general, it is believed that “several significant changes are possible, if not likely, for patent owners and applicants. Issued patents, especially those for which obviousness analyses were made during prosecution before the Patent Office, are likely to be subject to attack. Also, as the Patent Office implements the KSR decision into its examination of patent applications, it is likely to become increasingly difficult to obtain patent protection on combinations of previously-existing elements.†49 Orange County Law. at 32.
TO: Law Firm
FROM: Sam Kasley
DATE: September 21, 2007
RE: Court decision - KSR Intl. Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007).
Summary
For a patent to be valid and enforceable, the invention must be non-obvious based on the prior art. 35 USC § 103. The test used by the Federal Appeals Court for the Federal Circuit (first established by the Court of Customs and Patent Appeals) prior to this case was the TSM test that required a rather rigid finding of some reference to the obviousness of the combination. 127 S.CT. at 1741. The KSR decision relaxes that standard to make it easier to show that a patent is obvious to one skilled in the art. Id. at 1745.
Procedural History
Teleflex was the exclusive licensee for a patent on an adjustable vehicle pedal assembly with an electronic pedal position sensor attached. KSR developed and patented an adjustable pedal system for cars and later added an electronic sensor to it which it supplied for use on GM trucks. Teleflex sued in the Federal District Court for the Eastern District of Michigan claiming that KSR infringed their patent. KSR claimed that the Teleflex patent was obvious based on the prior art.
The district court granted KSR summary judgment after determining the applicable claim in the Teleflex patent was invalid because of obviousness.
Teleflex appealed to the Federal Appeals Court for the Federal District.
That court reversed, ruling that the TSM test, which the Federal Circuit Court had previously developed, was not applied strictly enough in district court. Teleflex Inc. v. KSR Intl. Co., 119 Fed. Appx. 282 (2005).
KSR petitioned for certiorari to the United States Supreme Court. That court reversed, unanimously holding that the Teleflex patent was invalid because it was obvious. 127 S.Ct. 1727.
Not only was the opinion unanimous, but the Supreme Court was pointedly critical of the Federal Circuit Court opinion. Some examples include the Supreme Court saying “Because the Court of Appeals addressed the question of obviousness in a manner contrary to § 103 and our precedents, we granted certiorari.†Id. at 1735. And “We begin by rejecting the rigid approach of the Court of Appeals.†Id. at 1739. And “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.†Id. At 1742.
Analysis
The question in this case was to determine if the Teleflex patent that combined an electronic sensor (prior art) with an adjustable pedal system (KSR art) was obvious.
The United States Supreme Court initially gave guidance regarding obviousness in 1966. Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Graham set out the factors to be used. They are: (1) The scope and content of the prior art are to be determined. (2) The differences between the prior art and the claims at issue are to be ascertained. (3) The level of ordinary skill in the pertinent art is resolved, and (4) Secondary considerations that may have relevancy are considered. Id. at 17. The secondary considerations are: (1) Commercial success (2) Long felt but unresolved needs, (3) Failure of others. Id.
The Federal Circuit developed the TSM (teaching, suggestion, motivation) test to provide uniformity and consistency to resolving patent questions of obviousness. 127 S.Ct. at 1734. In deciding this case, the Federal Circuit addressed application of the TSM test holding that “The correct standard requires the court to make specific findings showing a teaching, suggestion or motivation to combine prior art teachings in a particular manner claimed by the patent at issueâ€. 119 Fed.Appx. at 290. That court concluded that there were genuine issues of material fact on the question of obviousness that should be resolved by a jury. Id. In other words, that court would not find obviousness unless a teaching, suggestion or motivation of combining two prior arts was SHOWN (emphasis added). That result encourages infringement actions where obviousness is a question because it makes it much more difficult for the defending party to show that the patent claimed to be infringed is obvious and therefore void.
The United States Supreme Court rejected the analysis saying that the Federal Circuit considered the issue too narrowly. 127 S.Ct. at 1744. The test the Supreme Court required was articulated as “The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs create by developments in the field of endeavor, would have seen a benefit to upgrading . . . with a sensor. . . . The prior art discussed above leads us to the conclusion that attaching the sensor . . . would have been obvious to a person of ordinary skill.†Id.
The Supreme Court further commented that obviousness can be found using two other analyses, those of common sense and of “obvious to tryâ€. The Supreme Court said “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.†Id. At 1742. And “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. . . . In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.†Id.
The court reviewed three previous cases to further explain aspects of obviousness. In United States v. Adams, 383 U.S. 39 (1966), the Court found non-obviousness concluding that “ . . . when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.†127 S.Ct. at 1740. In Anderson’s-Black Rock v. Pavement Salvage Co., 396 US 57 (1969), the Court found obviousness when “The two in combination did no more than they would in separate, sequential operations.†127 S.Ct. at 1740. And in Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976), the Court said “ . . . that when a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.†127 S.Ct. at 1740. The Court further advised that “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; . . . the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.†Id. at 1741.
The result of this case is a relaxation of the requirements to show that an invention combining two known arts is obvious, and therefore invalid. In a case where the question of obviousness arises in the context of combining two known arts, that question will no longer be decided using the inflexible application of the TSM test which requires a showing of some prior teaching, suggestion or motivation regarding the combination, but will be a simple determination by the court (or by the patent examiner) of whether a person skilled in the art would see the benefit of the combination. A common sense or an obvious to try analysis will be adequate to support obviousness.
This decision will benefit users of patents who combine prior arts who can defend infringement suits on the basis of obviousness of the patent of the party claiming infringement. Patents combining prior arts are less likely to be approved by the patent office, and practitioners of the art will be permitted to use new devices combining prior arts with less fear of a patent by another party later penalizing that use.
The Federal Circuit has already reacted to this decision in considering secondary considerations that the Supreme Court had previously indicated in Graham may tip the scales toward nonobviousness. 383 US 1 at 36. As commenters recently pointed out, “The impact of the KSR decision is already being felt in the evaluation of secondary considerations of nonobviousness. In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007), the Federal Circuit considered evidence of secondary considerations post-KSR. The Federal Circuit noted that. given the prima facie showing of obviousness of a patent for the combination of previously-existing elements, even a substantial showing of secondary considerations would not overcome a finding that the patented subject matter was obvious. Thus, the patented subject matter was found to be invalid despite the patentee’s evidence of commercial success, praise, and long-felt need for the patented subject matter.†Ed Schlatter & John Heal, After the Big One:Helping Your Client Find Opportunities After the Shake-up to the Patent World, 49 Orange County Law 24 (Aug. 2007).
Other patents likely to be affected include biotechnology of genetic sequencing, prescription/generic drugs, software patents and business method patents. Clara R. Cottrell, The Supreme Court Brings a Sea Change with KSR International Co. v. Teleflex, Inc., 42 Wake Forest L. Rev. 595, 606-608 (2007). For pharmaceuticals, a possible result will be that combination patents that previously could extend the patent protection of drugs and prevent generic manufacturers from making the drug will now be found obvious, thus limiting the patent protection period. Id. Cottrell believes that patents on genetic sequencing are of concern, but outlines some assumptions under which those patents will continue to be granted. Id. For software and business method patents, since the prior art is not in many cases available to the patent examiner, the examiner had no basis to reject based on the TSM test, but analyzing the application based on what is obvious to one skilled in the art may lead to rejection of more of those patents. Id. at 610. In general, it is believed that “several significant changes are possible, if not likely, for patent owners and applicants. Issued patents, especially those for which obviousness analyses were made during prosecution before the Patent Office, are likely to be subject to attack. Also, as the Patent Office implements the KSR decision into its examination of patent applications, it is likely to become increasingly difficult to obtain patent protection on combinations of previously-existing elements.†49 Orange County Law. at 32.