Obviousness Standard - Supreme Court gives a new perspective

Supreme Court rules that the Federal Circuit analyzed obviousness in an inflexible manner. KSR International Co. v. Teleflex, Inc. (4/30/07) Decision Teleflex and Technology Holding Co. (collectively "Teleflex") sued KSR for patent infringement. The trial court granted summary judgment in favor of KSR and the Federal Circuit reversed. The Supreme Court reversed the judgment of the Federal Circuit and remanded. Teleflex is the exclusive licensee of the Engelgau patent, claim 4 of which describes a mechanism for combining an electronic sensor with an adjustable automobile pedal so that the pedal's position can be transmitted to a computer that controls the throttle in the vehicle's engine. When Teleflex sued KSR, the latter responded by arguing that claim 4 is invalid for obviousness. KSR manufactures and supplies auto parts, including pedal systems. KSR developed an adjustable mechanical pedal for Ford Motor Co. and obtained the '976 patent for the design. To make the '976 pedal compatible with certain of General Motors Corporation's trucks, KSR added a modular sensor. Well before Engelgau applied for his patent, some inventors had obtained patents involving electronic pedal sensors for computer-controlled throttles, as well as for self-contained modular sensors. The prior art also contained patents involving the placement of sensors on adjustable pedals. During prosecution, the PTO rejected one of the claims that was similar to, but broader than, claim 4. The claim did not include the requirement that the sensor be placed on a fixed pivot point (included in claim 4). The PTO concluded that the claim was an obvious combination of the prior art. Engelgau did not include Asano among the prior art references; Asano claimed an adjustable pedal with a fixed pivot point. In reversing the trial court, the Federal Circuit relied on the "teaching, suggestion or motivation" test, finding that the trial court had not been strict enough in applying the test. The Supreme Court rejected the rigid approach used by the Federal Circuit, noting that if one skilled in the art could implement a predictable variation, 35 U.S.C. §103 likely barred its patentability. The obviousness analysis could not be confined to a formalistic conception of the words "teachings, suggestion, and motivation," or by overemphasis on the importance of published articles and the express content of issued patents. The diversity of inventive pursuits and of modern technology counseled against limiting the analysis in this way. In determining whether the subject matter of a patent claim was obvious, neither the particular motivation nor the avowed purpose of the patentee controlled. What mattered was the objective reach of the claim. The first error of the Federal Circuit was to foreclose this reasoning by holding that courts and patent examiners had to look only to the problem the patentee was trying to solve. The second error was in the Federal Circuit's assumption that one skilled in the art attempting to solve a problem would be led only to those elements of prior art designed to solve the same problem. The Federal Circuit's constricted analysis led it to erroneously conclude that a patent claim could not be proved merely obvious by showing that the combination of elements was "obvious to try." In addition, the Federal Circuit drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. When these standards were applied to the instant facts, claim 4 was clearly obvious.