Obvious Standards in Patents; A Supreme Court Review
August 19th, 2015/By Admin/In Blog
A Motion for Summary Judgment in the patent infringement case of Teleflex v. KSR was originally granted, then reversed, and then reviewed by the Supreme Court. The following are thoughts on the Supreme Court’s ruling as presented by Firm Partner Robert M. Freedman:
The issue reviewed by the Supreme Court in this case was whether a patent can be granted, and then infringed upon, if the invention was one that would be an obvious solution for a problem in the marketplace, or known to the design community; and the inventor of the patent used skill and knowledge ordinary to someone skilled in the art, combined with inter-related teachings of prior patents and art.
The Supreme Court held that the Appellate Court’s reversal of the defendant’s MSJ in this case was based on too rigid an application of the “obviousness” test, and in turn reversed the Appellate Court’s decision. In its opinion, the Supreme Court noted that the Federal Circuit has employed a “teaching, suggestion, or motivation” (TSM) test (see Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S. Ct. 684, 15 L. Ed. 2d 545,), under which a patent claim is only proved “obvious” if the prior art, the problem’s nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.
The Supreme Court found that, in the instant case, the invention is an efficient combination of an adjustable pedal (Asano system), which allows a pedal to move fore and aft to accommodate taller or shorter drivers, with an electronic throttle control, which adjusts throttle based on electronic sensors relaying the position of the pedal. Here, the “obviousness” test hinged on 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. The Court determined that equipping an Asano pedal with sensor was an obvious progression given the industry’s movement toward electronic throttle control. Although the court stopped short of invalidating Teleflex’s patent, it did mention that their finding in this case diminishes the presumption created by the Patent and Trademarks Office’s issuance of a patent – which customarily indicates that the invention was not “obvious.”
