KSR v. Teleflex
Encyclopedia
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398
(2007), is a decision by the Supreme Court of the United States
concerning the issue of obviousness as applied to patent claims
.
sued KSR International, claiming that one of KSR's products infringed Teleflex's patent
on connecting an adjustable vehicle control pedal
to an electronic throttle control
. KSR argued that the combination of the two elements was obvious, and the claim was therefore not patentable
. The district court
ruled in favor of KSR, but the Court of Appeals for the Federal Circuit
reversed in January 2005.
Oral arguments were heard by the Supreme Court on November 28, 2006. The petitioner, KSR, was represented by James W. Dabney. Deputy solicitor general Thomas G. Hungar represented the government, which sided with the petitioner. Thomas C. Goldstein
argued on behalf of the respondent, Teleflex.
(PHOSITA) does not necessarily conflict with other Federal Circuit
cases that described a PHOSITA as having "common sense
" and who could find motivation "implicitly in the prior art." Kennedy emphasized that his opinion was directed at correcting the "errors of law made by the Court of Appeals in this case" and does not necessarily overturn all other Federal Circuit precedent
.
However, when the standard was applied to the facts before the Court, the Court stated:
Recognition of a benefit is arguably different than being motivated to make a change . For example, the benefit to having an eraser on the end of a pencil can be recognized by all, but does that make a pencil-eraser combination obvious?
" and summary judgment
. While not explicitly denouncing the TSM test, there is some harsh language in regard to it and the Federal Circuit's application of the test. The opinion stated that the application of the bar on patents claiming obvious subject matter "must not be confined within a test or formulation too constrained to serve its purpose." The opinion does denounce procedures that bar the use of "common sense" in multiple instances, including where "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it." Chief Judge Paul Michel
of the Federal Circuit was quoted saying that by his interpretation, the TSM test remains part of the calculation of obviousness, "but it gives us forceful instruction on the manner in which the test is to be applied."
In , the Federal Circuit began applying the KSR case, holding invalid as obvious. A KSR-style obviousness analysis was applied in Perfect Web Technologies, Inc. v. InfoUSA, Inc.
, 587 F.3d 1324 (Fed. Cir. Dec. 2, 2009).
The USPTO
Board of Patent Appeals and Interferences
(BPAI) is citing KSR in about 60% of its decisions related to obviousness irrespective of whether it affirms a patent examiner's rejection or reverses the rejection. Overall reversal rates have stayed about the same, indicating that KSR has not suddenly made all inventions obvious. The BPAI is emphasizing that examiners must still give strong reasons for their rejections. The USPTO management has backed this emphasis up with a memorandum to all technology directors instructing them that when making an obviousness rejection "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."
Case citation
Case citation is the system used in many countries to identify the decisions in past court cases, either in special series of books called reporters or law reports, or in a 'neutral' form which will identify a decision wherever it was reported...
(2007), is a decision by the Supreme Court of the United States
Supreme Court of the United States
The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...
concerning the issue of obviousness as applied to patent claims
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
.
Case history
Teleflex, Inc.Teleflex, Inc.
Teleflex Incorporated , headquartered in Limerick, Pennsylvania, is an American manufacturing corporation providing medical devices used in critical care and surgery...
sued KSR International, claiming that one of KSR's products infringed Teleflex's patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
on connecting an adjustable vehicle control pedal
Automobile pedal
An automobile may have two to four foot pedals. The arrangement is the same for both right- and left-hand traffic. From left to right:* normally operated by the left foot:**clutch pedal, not in the case of automatic transmission...
to an electronic throttle control
Electronic throttle control
Electronic throttle control is an automobile technology which severs the mechanical link between the accelerator pedal and the throttle. Most automobiles already use a throttle position sensor to provide input to traction control, antilock brakes, fuel injection, and other systems, but use a...
. KSR argued that the combination of the two elements was obvious, and the claim was therefore not patentable
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
. The district court
United States district court
The United States district courts are the general trial courts of the United States federal court system. Both civil and criminal cases are filed in the district court, which is a court of law, equity, and admiralty. There is a United States bankruptcy court associated with each United States...
ruled in favor of KSR, but the Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
reversed in January 2005.
Oral arguments were heard by the Supreme Court on November 28, 2006. The petitioner, KSR, was represented by James W. Dabney. Deputy solicitor general Thomas G. Hungar represented the government, which sided with the petitioner. Thomas C. Goldstein
Tom Goldstein
Thomas C. Goldstein is an American attorney famous as an advocate before and blogger about the Supreme Court of the United States. He was a founding partner of Goldstein and Howe, a Washington, D.C. firm specializing in Supreme Court litigation, and was, until the end of 2010, a partner at Akin...
argued on behalf of the respondent, Teleflex.
Decision
On April 30, 2007, the Supreme Court unanimously reversed the judgment of the Federal Circuit, holding that the disputed claim 4 of the patent was obvious under the requirements of 35 U.S.C. §103 and that 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," referring to the Federal Circuit's application of the "teaching-suggestion-motivation" (TSM) test.The "person having ordinary skill in the art" standard
Justice Kennedy's opinion stated, "A person of ordinary skill is also a person of ordinary creativity, not an automaton." He acknowledged that his description of a person having ordinary skill in the artPerson having ordinary skill in the art
The person having ordinary skill in the art , the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person is a legal fiction found in many patent laws throughout the world...
(PHOSITA) does not necessarily conflict with other Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
cases that described a PHOSITA as having "common sense
Common sense
Common sense is defined by Merriam-Webster as, "sound and prudent judgment based on a simple perception of the situation or facts." Thus, "common sense" equates to the knowledge and experience which most people already have, or which the person using the term believes that they do or should have...
" and who could find motivation "implicitly in the prior art." Kennedy emphasized that his opinion was directed at correcting the "errors of law made by the Court of Appeals in this case" and does not necessarily overturn all other Federal Circuit precedent
Precedent
In common law legal systems, a precedent or authority is a principle or rule established in a legal case that a court or other judicial body may apply when deciding subsequent cases with similar issues or facts...
.
Obviousness
When generally describing the obviousness test, the Court was largely uncontroversial:However, when the standard was applied to the facts before the Court, the Court stated:
Recognition of a benefit is arguably different than being motivated to make a change . For example, the benefit to having an eraser on the end of a pencil can be recognized by all, but does that make a pencil-eraser combination obvious?
Implications
A great deal of debate has sprung up in the wake of the decision, particularly over the implications on the TSM test and concepts including "obvious to try," "person having ordinary skill in the artPerson having ordinary skill in the art
The person having ordinary skill in the art , the person of ordinary skill in the art, the skilled addressee, person skilled in the art or simply the skilled person is a legal fiction found in many patent laws throughout the world...
" and summary judgment
Summary judgment
In law, a summary judgment is a determination made by a court without a full trial. Such a judgment may be issued as to the merits of an entire case, or of specific issues in that case....
. While not explicitly denouncing the TSM test, there is some harsh language in regard to it and the Federal Circuit's application of the test. The opinion stated that the application of the bar on patents claiming obvious subject matter "must not be confined within a test or formulation too constrained to serve its purpose." The opinion does denounce procedures that bar the use of "common sense" in multiple instances, including where "[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it." Chief Judge Paul Michel
Paul Redmond Michel
Paul Redmond Michel was an American federal judge on the United States Court of Appeals for the Federal Circuit from 1988 until 2010, and served as its chief judge from 2004 until his retirement....
of the Federal Circuit was quoted saying that by his interpretation, the TSM test remains part of the calculation of obviousness, "but it gives us forceful instruction on the manner in which the test is to be applied."
In , the Federal Circuit began applying the KSR case, holding invalid as obvious. A KSR-style obviousness analysis was applied in Perfect Web Technologies, Inc. v. InfoUSA, Inc.
Perfect Web Technologies, Inc. v. InfoUSA, Inc.
Perfect Web Technologies, Inc. v. InfoUSA, Inc. 587 F.3d 1324 , is a United States Court of Appeals for the Federal Circuit case in which the court held that a patent can be invalidated due to the obvious nature of the asserted claims...
, 587 F.3d 1324 (Fed. Cir. Dec. 2, 2009).
The USPTO
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
Board of Patent Appeals and Interferences
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
(BPAI) is citing KSR in about 60% of its decisions related to obviousness irrespective of whether it affirms a patent examiner's rejection or reverses the rejection. Overall reversal rates have stayed about the same, indicating that KSR has not suddenly made all inventions obvious. The BPAI is emphasizing that examiners must still give strong reasons for their rejections. The USPTO management has backed this emphasis up with a memorandum to all technology directors instructing them that when making an obviousness rejection "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."
See also
- Graham v. John Deere Co.Graham v. John Deere Co.Graham v. John Deere Co., 383 U.S. 1 , was a case in which the United States Supreme Court clarified the nonobviousness requirement in United States patent law, set forth in .-Facts and procedural history:...
(1966) - List of United States Supreme Court cases, volume 550
- List of United States Supreme Court cases