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Comments On KSR Int’l Co. v. Teleflex, Inc.

Comments On KSR Int’l Co. v. Teleflex, Inc. AIPLA IP Practice In Japan Committee “Pre-Meeting” October 17-18, 2006. Steven F. Meyer Morgan & Finnegan, LLP SFMeyer@morganfinnegan.com. Points To Be Addressed. Overview Of Obviousness Law Technical Aspects of Teleflex’s Patent-In-Suit

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Comments On KSR Int’l Co. v. Teleflex, Inc.

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  1. Comments On KSR Int’l Co. v. Teleflex, Inc. AIPLA IP Practice In Japan Committee “Pre-Meeting”October 17-18, 2006 Steven F. Meyer Morgan & Finnegan, LLPSFMeyer@morganfinnegan.com 1024368

  2. Points To Be Addressed • Overview Of Obviousness Law • Technical Aspects of Teleflex’s Patent-In-Suit • Rulings of District Court And Federal Circuit • Positions Taken In the Petition for Certiorari • Positions Argued In Supreme Court Briefs

  3. OVERVIEW OF OBVIOUSNESS LAW • Patent Statute:A patent may not be obtained though the invention is not identically disclosed or described as set for the in section 102 of this title, if 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 at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.35 U.S.C. §103(a)

  4. OVERVIEW OF OBVIOUSNESS LAW • Supreme Court Case Law:While obviousness is ultimately a legal determination, it is based on several underlying issues of fact, namely:(1) the scope and content of the prior art; (2) the level of skill of a person of ordinary skill in the art; (3) the differences between the claimed invention and the teachings of the prior art; and (4) the extent of any objective indicia of non-obviousness.Graham v. John Deere Co., 383 U.S.1, 17-18 (1966).

  5. OVERVIEW OF OBVIOUSNESS LAW Supreme Court Case Law: Combination Patents • Where an alleged invention consists of “an assembly of old elements,” a court must inquire whether the claimed invention “only unites old elements with no change in their respective functions, or whether the combined elements co-act with one another to produce some “new or different function” or “an effect greater than the sum of the several effects taken separately.” • If there is no such new or different function or effect, then the claimed subject matter is said to fail “the test of validity of combination patents,” and is deemed to have been obvious under 35 U.S.C. §103 without the necessity of further analysis.Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)

  6. OVERVIEW OF OBVIOUSNESS LAW Federal Circuit Case Law: “Teaching, Suggestion, or Motivation” Test • When obviousness is based on the teachings of multiple prior art references, the accused infringer/PTO must also establish some “suggestion, teaching, or motivation” that would have led a person of ordinary skill in the art to combine the relevant prior art teachings.SeeTec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1359-60 (Fed. Cir. 1999); Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,75 F.3d 1568, 1573 (Fed. Cir. 1996) • The reason, suggestion, or motivation to combine [prior art references] may be found explicitly or implicitly:1) in the prior art references themselves;2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or3) from the nature of the problem to be solved, ‘leading inventors to look to references relating to possible solutions to that problem.’”Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000)

  7. OVERVIEW OF OBVIOUSNESS LAW Federal Circuit Case Law: “Teaching, Suggestion or Motivation” Test • Therefore, we have consistently held that a person of ordinary skill in the art must not only have had some motivation to combine the prior art teachings, but some motivation to combine the prior art teachings in the particular manner claimed. See, e.g., In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (“Particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed.” (emphasis added))

  8. OVERVIEW OF OBVIOUSNESS LAW Federal Circuit Case Law: Example of Objectionable Application Of “Teaching, Suggestion, or Motivation” Test • An orange trash bag decorated with lines and facial features cause the bag, when filled with leaves, to resemble a jack-o’-lantern. Although children’s art designs for giving brown paper bags the appearance of a jack-o’-lantern were already well-known, the Federal Circuit concluded that the trash bag was patentable because the Board of Patent Appeals and Interferences had not “particularly identif[ied] any suggestion, teaching, or motivation to combine the children’s art references . . .with the conventional trash or lawn bag references.”In re Dembiczak, 175 F.3d 994, 1000 (Fed. Cir. 1999).

  9. OVERVIEW OF OBVIOUSNESS LAW Federal Circuit Case Law: Example of Objectionable Application of “Teaching, Suggestion, or Motivation” Test • The Patent Office had found that, to the “common sense of a person of ordinary skill in the art,” it was obvious that one could combine a prior patent for an on-screen television menu with an on-screen picture-quality adjustment for a video game played on a television already illustrated in the game’s handbook. The Federal Circuit, however, ruled that obviousness must be based on “objective evidence of record,” and not upon “common sense.” Finding no specific published suggestion in the record, the Federal Circuit ruled the alleged “invention” patentable. In re Lee, 277 F.3d 1338 (Fed. Cir. 2002)

  10. Points To Be Addressed • Overview Of Obviousness Law • Technical Aspects of Teleflex’s Patent-In-Suit • Rulings of District Court And Federal Circuit • Positions Taken In the Petition for Certiorari • Positions Argued In Supreme Court Briefs

  11. Teleflex’s ‘565 Patent-In-Suit • Claim 4 • A vehicle control pedal apparatus (12) comprising: • a support (18) adapted to be mounted to a vehicle structure (20);an adjustable pedal assembly (22) having a pedal arm (14) moveable in force [sic] and aft directions with respect to said support (18);a pivot (24) for pivotally supporting said adjustable pedal assembly (22) with respect to said support (18) and defining a pivot axis (26); andan electronic control (28) attached to said support (18) for controlling a vehicle system;said apparatus (12) characterized by said electronic control (28) being responsive to said pivot (24) for providing a signal (32) that corresponds to pedal arm position as said pedal arm (14) pivots about said pivot axis (26) between rest and applied positions wherein the position of said pivot (24) remains constant while said pedal arm (14) moves in fore and aft directions with respect to said pivot (24).

  12. Prior Art Asano U.S. Patent No. 5,010,782 Discloses All of The Structural Limitations of Claim 4 Except The Electronic Control.

  13. Prior Art Rixon U.S. Patent No. 5,819,593 An adjustable pedal assembly including an electronic throttle control assembly.

  14. Prior Art Smith et al. U.S. Patent No. 5,063,811 Rotary potentiometer 28 is fixed to the housing 26.

  15. Points To Be Addressed • Overview Of Obviousness Law • Technical Aspects of Teleflex’s Patent-In-Suit • Rulings of District Court And Federal Circuit • Positions Taken In the Petition for Certiorari • Position Argued In Supreme Court Briefs

  16. DISTRICT COURT RULING • Granted summary judgment invalidating claim 4 under §103 based on the Asano patent and the electronic control references. • Based its finding of a suggestion or motivation to combine largely on the nature of the problem to be solved by claim 4 of the ‘565 patent - Invention of ‘565 patent was intended to “solve the problem of designing a less expensive, less complex and more compact [assembly] design.”

  17. DISTRICT COURT RULING Finding of suggestion or motivation to combine: - The Rixon ‘593 patent also “suffered from being too complex because the pedal position sensor is located in the pedal housing and its fore and aft movement with the adjustment of the pedal could cause problems with wire failure. Thus, the solution to the problem required an electronic control that does not move with the pedal arm while the pedal arm is being adjusted by the driver.” - The Smith patent provides express teachings as to the desirability of attaching the electronic control to a fixed support member in order to avoid the wire failure problems disclosed in the Rixon ‘593 patent and solved by the ‘565 patent.

  18. FEDERAL CIRCUIT RULING (NON-PRECEDENTIAL UNDER FED. CIR. R. 47.6) • The district court did not apply the correct teaching-suggestion-motivation test. Under that test, genuine issues of material fact exist, so as to render summary judgment of obviousness improper. • The district court invalidated claim 4 of the ‘565 patent on obviousness grounds without making “finding[s] as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention to make the combination in the manner claimed.”

  19. FEDERAL CIRCUIT RULING (NON-PRECEDENTIAL UNDER FED. CIR. R. 47.6) • The “nature of the problem to be solved” cannot provide the motivation where the prior art references seek to solve different problems. - The Asano patent does not address the same problem as the ‘565 patent-in-suit. - The Rixon ‘593 patent does not address the problem to be solved by the ‘565 patent; rather it suffers from the problem. - Smith’s solution of the problem of wire chafing is a different task than reducing the complexity and size of pedal assemblies.

  20. Points To Be Addressed • Overview Of Obviousness Law • Technical Aspects of Teleflex’s Patent-In-Suit • Rulings of District Court And Federal Circuit • Positions Taken In the Petition for Certiorari • Positions Argued In Supreme Court Briefs

  21. PETITION FOR CERTIORARI Petitioner KSR: • The Federal Circuit has departed from Supreme Court’s precedents construing §103 - Graham v. John Deere Co. – no mention of “T-S-M” test. - Anderson-Black Rock v. Pavement Salvage – where a patent covers merely a combination of old elements, the patent will not be valid unless the combination produces “ a new or different function” or demonstrates a “synergistic result.” - Sakraida v. Ag Pro • The “T-S-M” test virtually precludes summary judgment under §103

  22. PETITION FOR CERTIORARI Respondent Teleflex: • The Federal Circuit has not abandoned the Supreme Court’s precedent on §103 - In Graham, the Supreme Court warned lower courts against the use of hindsight. The Federal Circuit’s “T-S-M” test is a safeguard against hindsight. - Sakraida and Anderson-Black Rock did not override Graham. • Federal Circuit did not err by determining that genuine issues of material fact existed.

  23. PETITION FOR CERTIORARI Amicus Curiae U.S. Solicitor General: • Graham sets out a flexible framework for determining whether a claimed invention is non-obvious per §103(a). • Federal Circuit’s “T-S-M” test departs from Supreme Court’s precedents because it treats a particular method of demonstrating obviousness (i.e., the “T-S-M” test) as the exclusive means of showing obviousness. - “When obviousness is based on teaching of multiple prior art references, the movant must also establish some ‘suggestion, teaching or motivation’ . . .” • Evidence of “T-S-M” may be lacking if: -claim arose in a newly emerging technical field -so obvious that there is no need to publish the trivial extension of the art

  24. FEDERAL CIRCUIT’S RESPONSE TO ARGUMENTS ADVANCED IN KSR CASE • “[T]he Federal Circuit’s and its predecessor’s ‘motivation to combine’ requirement likewise prevents statutory proscribed hindsight reasoning when determining the obviousness of an invention.” • “[T]he ‘motivation to combine’ requirement entails consideration of both the ‘scope and content of the prior art’ and ‘level of ordinary skill in the pertinent art’ aspects of the Graham test.” • “There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine before concluding that one of ordinary skill would know to combine references.” Alza Corp. v. Mylan Labs., Inc., 80 USPQ 2d 1001 (Fed. Cir., Sept. 6, 2006)

  25. Points To Be Addressed • Overview Of Obviousness Law • Technical Aspects of Teleflex’s Patent-In-Suit • Rulings of District Court And Federal Circuit • Positions Taken In the Petition for Certiorari • Positions Argued In Supreme Court Briefs

  26. POSITIONS ARGUED IN SUPREME COURT BRIEFS Petitioner KSR: • The Federal Circuit declined to acknowledge the existence of, to follow, or to distinguish Sakraida or any other of the Supreme Court’s precedents applying the “test of validity of combination patents.” Instead, citing its own post-1982 precedents, the Federal Circuit held that the District Court “did not apply the correct teaching-suggestion-motivation test.” • The “T-S-M” test has no basis in the text of §103 and conflicts with the Supreme Court’s precedents.

  27. POSITIONS ARGUED IN SUPREME COURT BRIEFS Petitioner KSR: “T-S-M” Test Is Built On A Rejection Of Supreme Court Precedents • Federal Circuit repudiated the “test of validity of combination patents” that Supreme Court applied in Sakraida. “There is no warrant for judicial classification of patents, whether into ‘combination’ patents and some other unnamed and undefined class or otherwise. Nor is there warrant for different treatment or consideration of patents based on a judicially devised label. Reference to ‘combination’ patents is, moreover, meaningless.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983) • The Federal Circuit re-interpreted §103 as purportedly precluding courts or the PTO from concluding that a claimed invention would have been obvious at the time of its making in the absence of some proven teaching, suggestion, or motivation to make the particular claimed subject matter.

  28. POSITIONS ARGUED IN SUPREME COURT BRIEFS Petitioner KSR: “T-S-M” Test Effective Precludes Summary Judgment • Even where there is no genuine issue of fact with regard to the scope and content of the prior art, the level of skill in the art, or the extent of any differences between claimed subject matter and the prior art, the “teaching-suggestion-motivation test” still virtually precludes summary judgment of whether claimed subject matter fails the §103(a) condition for patentability in a given case. • The decision below is fundamentally at odds with this Court’s repeated holdings that “the ultimate question of patent validity is one of law,” Graham 383 U.S. at 17; see also Sakraida, 425 U.S. at 280 (“The ultimate test of patent validity is one of law”), and unwisely transfers decision-making authority from courts to lay juries.

  29. POSITIONS ARGUED IN SUPREME COURT BRIEFS Amici Curiae Intel & Micron In Support of Petitioner: • The Federal Circuit’s requirement that it identify a specific element of the prior art that taught the combination in question is a particularly difficult standard to meet in the high-technology fields. The semiconductor and software industries do not have an extensive publication tradition, and when researchers do publish, they are unlikely to discuss obvious developments, such as the combination of two preexisting elements, instead focusing on more significant technological developments. • For Intel, Micron, and their peer companies, the nearly insurmountable difficulty of obtaining summary judgment on obviousness grounds increases the pressure to settle, even where the patent at issue is seemingly obvious on its face.

  30. POSITIONS ARGUED IN SUPREME COURT BRIEFS Amici Curiae In Support Of Petitioner: Different Standards for Different Technologies The Supreme Court should reject the Federal Circuit’s rigid requirement and return to a more flexible approach that allows courts to consider different evidence of obviousness as appropriate for different technologies. Documentary evidence of a prior teaching, motivation or suggestion to combine elements should remain relevant to the obviousness inquiry. In fields like medicine and biotechnology where advances are heavily documented, such evidence might well be dispositive in assessing claims of obviousness. But in other fields where advances are not heavily documented, the obviousness of a patent to a person of ordinary skill in the field should be provable by other means.

  31. POSITIONS ARGUED IN SUPREME COURT BRIEFS Amicus Curiae IBM in support of neither party: • References should be presumed combinable by a person having ordinary skill in the art where the references are within the scope of the “analogous art.” Analogous art is prior art in the field of the applicant’s endeavor or, of not, then reasonable pertinent to the particular problem with which the inventor was concerned. • Once established, the presumption may be rebutted by evidence showing that a person of ordinary skill would not have been motivated to make the combination. Thus, rebuttal evidence might include proof that the combination was technologically infeasible or impossible at the time, or evidence that the prior art was “teaching away” from the combination.

  32. POSITIONS ARGUED IN SUPREME COURT BRIEFS Amicus Curiae Intellectual Property Owner’s Association In Support Of Respondents: • While the Federal Circuit has not always been consistent in applying the suggestion test, the Federal Circuit has stated that a flexible standard should be used. Specifically, the Federal Circuit has stated that “the teaching, motivation or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). • The suggestion test is correctly viewed as a part of the first Graham factor, determination of the scope and content of the prior art. • “Synergism” should not be established as a necessary indicium of nonobviousness. IPO believes that Anderson’s-Black Rock and Sakraida are entirely consistent with the analytical framework of Graham, and that neither case requires that combined elements take on novel, synergistic, or surprising functions.

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