KSR v. Teleflex Inc. Trial Court Ruling. □ Teleflex sued KSR for infringement of. U.S. Patent No. 6,, to Engelgau. (“Adjustable Pedal Assembly With. Teleflex sued KSR International (KSR), alleging that KSR had infringed on its patent for an adjustable gas-pedal system composed of an. Syllabus. NOTE: Where it is feasible, a syllabus (headnote) will be released, as is being done in connection with this case, at the time the opinion is issued.
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Where it is feasible, a syllabus headnote will be released, as is being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader. See United States v. This prompted inventors to telefles and patent pedals that could be adjusted to change their locations.
KSR INT’L CO. v. TELEFLEX INC.
Asano is also designed so that the force necessary to depress the pedal is the same regardless of location adjustments. The Redding patent reveals a different, sliding mechanism where both the pedal and the pivot point are adjusted. In newer cars, computer-controlled throttles do not operate through force transferred from the pedal by a b link, but open and close valves in response to electronic signals.
For the computer to know what is happening with the pedal, an electronic teelflex must translate the mechanical operation into digital data. Inventors had obtained a teoeflex of patents for such sensors. Inventors had also patented self-contained modular sensors, which can be taken off the shelf and attached to any mechanical pedal to allow it to function with a computer-controlled throttle.
Chevrolet also manufactured trucks using modular sensors attached to the pedal support bracket, adjacent to the pedal and engaged with the pivot shaft about which the pedal rotates. Other patents disclose electronic telfelex attached to adjustable pedal assemblies. For example, the Rixon patent locates the sensor in the pedal footpad, but is known for wire chafing.
Respondents Teleflex hold ksg exclusive license for the Engelgau patent, claim 4 of which discloses a position-adjustable pedal assembly with an electronic pedal position sensor attached a fixed pivot point. Despite having denied a similar, broader claim, the U. Against this background the obviousness or nonobviousness of the subject matter is determined.
Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc. That additional aspect was revealed in, e. The appeals court found that the Asano pedal telefelx designed to ensure that the force required to depress the pedal is the same no matter how the pedal is adjusted, whereas Engelgau sought to provide a simpler, smaller, cheaper adjustable electronic pedal.
KSR vs. Teleflex: Everything You Need to Know
So interpreted, the court held, the patents would not have led a person of ordinary skill to put a sensor on an Asano-like pedal. That it might have been obvious to try that combination was likewise irrelevant.
Finally, the court held that genuine issues of material fact precluded summary judgment. KSR provided convincing evidence that mounting an available sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art and that the benefit of doing yeleflex would be obvious.
Graham provided an expansive and flexible approach to the obviousness question that is inconsistent with the way the Federal Circuit applied its TSM test here. Such a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
AdamsU. When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions. Following these principles may be difficult if the claimed subject matter involves more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement.
To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art.
To facilitate review, this analysis should be made explicit. A patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art. Although common sense directs caution as to a patent application claiming as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does.
Inventions usually rely upon building blocks long since uncovered, and claimed discoveries almost necessarily will be combinations of what, in some sense, is already known. Helpful insights, however, need not become rigid and mandatory formulas. The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents.
In many fields there may be little discussion of obvious techniques or combinations, and market demand, rather than scientific literature, may often drive design trends.
Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.
Since the TSM test was devised, the Federal Circuit doubtless has applied it in accord with these principles in many cases. There is no necessary inconsistency between the test and the Graham analysis.
But a court errs where, as here, it transforms general principle into a rigid rule limiting the obviousness inquiry. The Circuit first erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.
Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem. It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. Third, the court erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try.
When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp.
If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Finally, the court drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias.
KSR vs. Teleflex: Everything You Need to Know
Application of the foregoing standards demonstrates that claim 4 is obvious. This argument was not raised before the District Court, and it is unclear whether it was raised before the Federal Circuit. There then was a marketplace creating a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for doing so.
The proper question was whether a pedal designer of ordinary skill in the art, facing the wide range of needs created by developments in the field, would have seen an obvious benefit to upgrading Asano with a sensor. For such a designer starting with Asano, the question was where to attach the sensor. Smith, in turn, explained not to put the sensor on the pedal footpad, but instead on the structure. The most obvious such point is a pivot point.
The designer, accordingly, would follow Teleflrx in mounting the sensor there. Just as it was possible to begin with the objective to upgrade Asano to work with a computer-controlled throttle, so too was ker possible to take an adjustable electronic pedal like Rixon and seek an improvement that would avoid the wire-chafing problem.
Teleflex has not shown anything in the prior art that taught away from the use of Asano, nor any secondary factors to dislodge the determination that claim 4 is obvious.
The ultimate judgment of obviousness tdleflex a legal determination. GrahamU. Argued November 28, —Decided April 30,