vs.

1. vs. Miguel Chan UC Berkeley IEOR 190G March 2009

2. Time Line 2007 Supreme Court reverses Federal Circuit’s ruling in favor of KSR based on Graham’s analysis 2003 District Court rules in favor of KSR 2002 Teleflex sues KSR on Claim 4 2002 KSR counter- attacks stating that Claim 4 is obvious 2005 Federal Circuit overrules in favor of Teleflex based on TSM test

3. KSR, a Canadian company, manufactures and supplies auto parts, including pedal systems. • In 2000, KSR was chosen by General Motors Corporation (GMC or GM)to supply adjustable pedal systems for Chevrolet and GMC light trucks that used engines with computer-controlled throttles. • KSR holds a US patent for “adjustable pedal system for cars with cable-actuated throttles” and KSR decided to include a modular sensor to its design to make it compatible with GMC trucks 

4. As KSR’s competitor, Teleflex also designs and manufactures adjustable pedals. Teleflex is the exclusive licensee of U.S. Patent No. 6,237,565 (the "Engelgau patent") and sued KSR for patent infringement (claim 4)

5. Adjustable pedal assembly with electronic throttle control • Overview of Invention: Simplified vehicle control pedal assembly incorporating both features (combining previously known patents) that is less expensive, requires fewer parts, and easier to package within the vehicle

6. Pedal arm moveable in fore and aft directions • A pivot supports pedal assembly and defines a pivot axis • Claim 4: Electronic throttle control signal corresponds to pedal arm position as pedal arm pivots about the axis between rest and applied positions

7. Definition of Obviousness • In order to obtain a patent, an invention must be nonobvious in addition to being novel. The test for nonobviousness is an objective inquiry into whether “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.” 35 U.S.C. § 103(a). • If a technician would have thought of it, then you likely shouldn't get a patent on it.

8. TSM Test • Over the past twenty-five years, the Court of Appeals for the Federal Circuit has developed a somewhat objective nonobviousness doctrine using teaching/suggestion/motivation (TSM) test.  • TSM litmus test shortcut developed by the Federal Circuit in subsequent cases (applying this for more than 40 years) • A patent claim is obvious only if there is “some motivation or suggestion to combine the prior art teachings” that can be found in the prior art itself, in the nature of the problem, or the knowledge of a person of ordinary skill in the art. • Original purpose to prevent hindsight bias; favors plaintiff (Teleflex).

9. Graham Analysis • Since 1966, Graham vs. Deere established the objective framework for applying Sec. 103 (1) Determination of the scope and content of the prior art (2) Identification of any differences between the prior art and the claims at issue (3) Determination of the level of ordinary skill in the pertinent art, that warrants the award of a patent. (4) Review of any relevant secondary considerations, such as commercial success, long felt but unresolved needs and failure of others • KSR makes clear that the TSM test sets the patentability bar too low and allows too many technically trivial inventions to receive patent protection.

10. Question Presented • Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven "'teaching, suggestion or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed"? • The problem is that the TSM test should not be the only test available to determine whether an invention is obvious. For instance, the Government argues that PTO Examiners should be able to reject claims based on their “basic knowledge” or “common sense.” • The Supreme Court expressed its belief that the Federal Circuit, in this case, crossed that line by applying the test so rigidly that, in essence, it operated as a litmus test for obviousness.

11. Consequences • forcing everyone who has grown comfortable with the TSM litmus test shortcut - including the Federal Circuit, the Patent and Trademark Office, and the patent bar - to return to full and proper Graham analyses when assessing the obviousness of patent claims.  • It had the practical and immediate effect of making patents significantly more difficult to obtain. • “If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” • Patent claim can be proved obvious merely by showing that the combination of elements was “obvious to try.” • Supreme Court has broaden the definition of a patent’s obviousness, therefore opening up all new ways to attack patents.

12. Example • The water faucets and towel dispensers that have built in sensors to sense the proximity of your hands and turn on the water, eject a towel. • This would be considered an invention at the time, even though the underlying mechanical/electrical parts were all known and when combined certainly worked according to well known laws of mechanics and electronics. It is the combination that was the insight. • Under this new "predictable" standard, this invention, like many others, would have be declared obvious.