- KSR v. Teleflex
Litigants=KSR v. Teleflex
FullName=KSR International Co. v. Teleflex Inc., et al.
CitationNew=550 U.S. ___
Prior=Judgment for appellee, 414 F. 3d 1366. On Writ of certiorari to the United States Court of Appeals for the Federal Circuit
Holding=The United States Court of Appeals for the Federal Circuit (CAFC) erred in rigidly applying the narrow teaching/suggestion/motivation standard for obviousness under 35 USC 103, for precluding application of "obvious to try" considerations, and for too rigidly constricting the use of hindsight, in conflict with the broader obviousness evaluation established in "Graham". Reversed and remanded to the CAFC. (Slip Op. p.24).
LawsApplied=35 U.S.C. § 103
Teleflex, Inc.sued the defendant, KSR International, claiming that one of KSR's products infringed its patent[US patent|6237565. "Adjustable pedal assembly with electronic throttle control", 2001-05-29] on connecting an adjustable vehicle control pedal to an electronic throttle control. KSR argued that merely combining these two elements was obvious, and therefore not patentable. KSR won at the district court level, only to have the opinion overturned by the Court of Appeals for the Federal Circuit in January 2005. Oral argumentswere heard by the Supreme Court on November 28, 2006. The petitioner, KSR, was represented by James W. Dabney. Deputy solicitor general Thomas G. Hungarrepresented the government, which sided with the petitioner. Thomas C. Goldstein argued on behalf of the respondent, Teleflex. [ [http://www.supremecourtus.gov/oral_arguments/argument_transcripts/04-1350.pdf Oral Argument Transcript] , 2006-11-28]
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 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. [http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf Syllabus and Opinion of the Court] , 2007-04-30]
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 art(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.
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?
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 art" 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." [ [http://www.scotusblog.com/wp/more-on-the-impact-of-KSR/ More on the impact of "KSR"] , Lawrence Ebert, 2007-05-01]
In [http://caselaw.findlaw.com/data2/circs/fed/061402p.pdf cite court
litigants=Leapfrog Enterprises, Inc. v. Fisher-Price, Inc.
date=May 9, 2007] , the Federal Circuit began applying the "KSR" case, holding US patent|5,813,861invalid as obvious.
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 [ [http://www.iptoday.com/articles/2007-09-nowotarski.asp Nowotarski, Mark, “Using KSR to Overcome an Obviousness Rejection”, Intellectual Property Today, September 2007] ] . 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 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." [ Focarino, Margaret, Deputy Commissioner of Operations, USTPO "Supreme Court decision on KSR Int'l. Co., v. Teleflex, Inc.", internal memo to USPTO technology art unit directors, May 3, 2006]
Graham v. John Deere Co." (1966)
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