KSR vs. Teleflex

1
KSR vs. Teleflex
Explaining the basic concepts of the landmark
Supreme Court patent case of KSR vs. Teleflex and
specifically looking in to the TSM test and how
motivation for combining prior art has changed.

• Olek Pawlowski
• IEOR 190 Spring 2009
• UC Berkeley

2
What is it all about?

• Teleflex sues KSR
• Claims KSR infringed on their patent of
  connecting a sensor to a pedal to control
  throttle in a car
• KSR argued that it is not patentable because it
  is obvious

3
Adjustable pedal assembly with electronic
throttle control

• Diagram from KSRs patent.
• No. 6,237,565

4
Throttle

• Controls the amount of air going into the engine
• More air gt more fuel
• More fuel gt more power
• Used to be controlled using cables, but is now
  done electronically

5
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 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) and an 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).

6
KSRs Defense

• Adding a sensor to the pedal is not patentable
  because it is obvious
• Won initially in district courts
• Teleflex won in appeals court by relaying on TSM
  test, which was one of the most widely used tests
  to determine obviousness prior to KSR

7
TSM Test

• Teaching, suggestion and motivation
• Requires that some teaching, suggestion or
  motivation to combine the elements together to
  show that a claim is obvious
• Used to prevent hind-sight bias

8
Graham Analysis

• "Graham factorsobviousness should be determined
  by looking at
• the scope and content of the prior art
• the level of ordinary skill in the art
• the differences between the claimed invention and
  the prior art and
• objective evidence of non-obviousness.
• In addition, the court outlined examples of
  factors that show "objective evidence of
  non-obviousness". They are
• commercial success
• long-felt but unsolved needs and
• failure of others.
• Source http//en.wikipedia.org/wiki/Inventive_st
  ep_and_non-obviousnessTeaching-suggestion-motivat
  ion_.28TSM.29_test

9
More TSM

• In the TSM Test, prior art had to address the
  specific problem
• In the case of KSR vs. Teleflex, prior art would
  have had to show a sensor and a pedal
• Motivation for invention would have to be
  explicitly stated in prior art (patents and
  publications being most commonly used)
• Teleflex won the appeal because motivation for
  combining a senor and a pedal was not found in
  prior art, even if it was obvious to try.

10
Obvious To Try

• Something could be deemed obvious if prior art
  leads one with ordinary skill in the art to
  believe that there is a reasonable chance of
  success with the combination
• Reasonable chance of success is an important part
  of that statement brute force trying of
  combinations doesnt trump inventions

11
New Standard?

• Obvious to try not the new standard, certain
  conditions must apply
• Design need or market pressure to solve the
  problem
• There are a finite number of foreseeable
  solutions to the problem
• The result obtained is reasonably predictable
• This is closer to the broader Grahams ruling in
  1966

12
The Final Ruling

• Supreme Court ruled in favor of KSR unanimously
• Justice Kennedy A person of ordinary skill is
  also a person of ordinary creativity, not an
  automaton.
• Motivation could be found implicitly when it is
  obvious to try with the conditions listed in
  previous slide
• Electrical sensors are becoming a norm over
  mechanical connections in everything, so market
  pressure dictated that KSR putting a sensor on
  the pedal is obvious as sensors are widely known
  to be more reliable and cheaper

13
Results

• TSM test is no longer the standard for
  determining obviousness
• TSM can no longer be rigidly applied
• No inconsistency between TSM and Graham analysis.
  
• Overall, scope of what is obvious is broadened,
  and it is much easier to invalidate patent based
  on obviousness

14
References

• http//en.wikipedia.org/wiki/Inventive_step_and_no
  n-obviousness
• http//www.fitzpatrickcella.com/images/pub_attachm
  ent/attachment498.pdf
• http//en.wikipedia.org/wiki/KSR_v._Teleflex