Comments On KSR Intl Co' v' Teleflex, Inc'

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Comments On KSR Intl Co. v. Teleflex, Inc.

• AIPLA IP Practice In Japan Committee
  Pre-MeetingOctober 17-18, 2006

Steven F. Meyer Morgan Finnegan,
LLPSFMeyer_at_morganfinnegan.com
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Points To Be Addressed

• Overview Of Obviousness Law
• Technical Aspects of Teleflexs Patent-In-Suit
• Rulings of District Court And Federal Circuit
• Positions Taken In the Petition for Certiorari
• Positions Argued In Supreme Court Briefs

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OVERVIEW OF OBVIOUSNESS LAW

• Patent StatuteA 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)

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OVERVIEW OF OBVIOUSNESS LAW

• Supreme Court Case LawWhile 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).

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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)

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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.See
  Tec 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
  implicitly1) in the prior art references
  themselves2) 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)

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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))

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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
  childrens 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 identified any suggestion,
  teaching, or motivation to combine the childrens
  art references . . .with the conventional trash
  or lawn bag references.In re Dembiczak, 175
  F.3d 994, 1000 (Fed. Cir. 1999).

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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 games 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)

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Points To Be Addressed

• Overview Of Obviousness Law
• Technical Aspects of Teleflexs Patent-In-Suit
• Rulings of District Court And Federal Circuit
• Positions Taken In the Petition for Certiorari
• Positions Argued In Supreme Court Briefs

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Teleflexs 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 systemsaid 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.
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Points To Be Addressed

• Overview Of Obviousness Law
• Technical Aspects of Teleflexs Patent-In-Suit
• Rulings of District Court And Federal Circuit
• Positions Taken In the Petition for Certiorari
• Position Argued In Supreme Court Briefs

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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.

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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.

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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
  findings 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.

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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.
• - Smiths solution of the problem of wire
  chafing is a different task than reducing the
  complexity and size of pedal assemblies.

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Points To Be Addressed

• Overview Of Obviousness Law
• Technical Aspects of Teleflexs Patent-In-Suit
• Rulings of District Court And Federal Circuit
• Positions Taken In the Petition for Certiorari
• Positions Argued In Supreme Court Briefs

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PETITION FOR CERTIORARI

• Petitioner KSR
• The Federal Circuit has departed from Supreme
  Courts 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

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PETITION FOR CERTIORARI

• Respondent Teleflex
• The Federal Circuit has not abandoned the Supreme
  Courts precedent on 103
• - In Graham, the Supreme Court warned lower
  courts against the use of hindsight. The Federal
  Circuits 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.

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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 Circuits T-S-M test departs from
  Supreme Courts 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

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FEDERAL CIRCUITS RESPONSE TO ARGUMENTS ADVANCED
IN KSR CASE

• The Federal Circuits and its predecessors
  motivation to combine requirement likewise
  prevents statutory proscribed hindsight reasoning
  when determining the obviousness of an
  invention.
• The 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)

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Points To Be Addressed

• Overview Of Obviousness Law
• Technical Aspects of Teleflexs Patent-In-Suit
• Rulings of District Court And Federal Circuit
• Positions Taken In the Petition for Certiorari
• Positions Argued In Supreme Court Briefs

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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 Courts
  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 Courts precedents.

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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.

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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-motiva
  tion 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 Courts 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.

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POSITIONS ARGUED IN SUPREME COURT BRIEFS

• Amici Curiae Intel Micron In Support of
  Petitioner
• The Federal Circuits 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.

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POSITIONS ARGUED IN SUPREME COURT BRIEFS

• Amici Curiae In Support Of Petitioner Different
  Standards for Different Technologies
• The Supreme Court should reject the Federal
  Circuits 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.

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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 applicants 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.

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POSITIONS ARGUED IN SUPREME COURT BRIEFS

• Amicus Curiae Intellectual Property Owners
  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 Andersons-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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