The following argument preview was written by Brian Love of the Stanford Supreme Court Litigation Clinic.
On Tuesday, November 28, the Court will hear argument in KSR International Co. v. Teleflex, Inc. (No. 04-1350). The question presented in this case is whether the Federal Circuit’s teaching-suggestion-motivation test for determining whether an invention is “obvious†is the proper standard under 35 U.S.C. § 103(a).
James W. Dabney of Fried, Frank, Harris, Shriver, & Jacobson, L.L.P. will argue for petitioner KSR International, and Tom Hungar, Deputy Solicitor General, will argue on behalf of the United States as an amicus in support of petitioner. Thomas C. Goldstein of Akin, Gump, Strauss, Hauer, & Feld, L.L.P. will argue on behalf of respondents Teleflex. The complete briefs are available via this post.
Patent Law Background
Section 103(a) of the Patent Act requires that an invention must be “non-obvious†in order to be patentable. The Court has not addressed the test for non-obviousness since its 1976 decision in Sakraida v. AgPro. Since its creation in 1982, the United States Court of Appeals for the Federal Circuit has heard all district court appeals arising under federal patent law, as well as direct appeals from the U.S. P.T.O. Board of Patent Appeals and Interferences. Under Federal Circuit precedent, an invention is deemed obvious if there is an explicit or implicit “teaching, suggestion, or motivation†that would lead a person having ordinary skill in the relevant art to combine teachings in the prior art in the manner claimed in the patent at issue. According to the Federal Circuit, this requirement is necessary to counteract impermissible hindsight bias that might otherwise lead to the invalidation of patents covering seemingly simple, yet worthwhile inventions. While Supreme Court precedent does not explicitly embrace this teaching-suggestion-motivation test, according to the Federal Circuit, it does not explicitly preclude it either. The Court’s foremost decision on the question of obviousness, Graham v. John Deere Co., establishes a framework in which obviousness is determined with respect to the content of the prior art, the differences between the prior art and the claims at issues, and the level of ordinary skill in the relevant art. Graham, however, also leaves courts free to additionally consider other relevant secondary considerations such as commercial success of the invention at issue, whether the invention satisfied a long-felt need, and whether others tried and failed to solve the problem addressed by the inventor.
Facts and Procedural History
On November 18, 2002, respondent filed suit against petitioner in the Eastern District of Michigan, alleging infringement of claim 4 of U.S. Patent No. 6,237,565 (the ‘565 or Engelgau patent). Claim 4 of the Engelgau patent covers an adjustable gas pedal system (APS) for use in automobiles having an engine controlled by an electronic throttle control (ETC). The claim additionally requires that the ETC be attached to the stationary support bracket of the APS pedal assembly with a fixed pivot to prevent movement of the ETC during adjustment of the pedal position. An APS allows the driver of a vehicle to move the location of the pedals fore and aft in the vehicle footwell to avoid sitting in an uncomfortable or unsafe position too far forward in the driver’s seat. Such assemblies have been produced since the 1970s, well before the priority date of the Engelgau patent. An ETC allows an engine throttle to be actuated by electronic sensors that read the position of the gas pedal rather than by the manual movement of a cable attached to the gas pedal. ETCs have been installed in vehicles with increasing frequency since the mid-1990s, and thus were also well known in the prior art before the priority date of the Engelgau patent.
Petitioner moved for summary judgment, arguing that claim 4 of the Engelgau patent was invalid under the Supreme Court’s prior precedent on the test for obviousness – which, it asserted, precludes mandatory application of the Federal Circuit’s teaching-suggestion-motivation requirement. The district court disagreed with petitioner’s interpretation of the Court’s precedent but nonetheless granted summary judgment under the teaching-suggestion-motivation test. It deemed the asserted claim obvious in light of U.S. Patent No. 5,010,782 (the Asano APS), a prior art patent covering an APS for use with a mechanical throttle control, in combination with a “CTS 503 Series†ETC installed in certain 1994 Chevrolet pick-up trucks. The district court found that the Asano APS and a CTS 503 ETC together disclose each limitation of claim 4 of the Engelgau patent and that a person with ordinary skill in the art faced with Engelgau’s task of designing a simplified and inexpensive APS with ETC would be motivated to combine the Asano APS with the CTS 503 to reduce the complexity of the resulting system.
On appeal, the Federal Circuit reversed and remanded, holding that the district court failed to properly apply the teaching-suggestion-motivation test and improperly resolved disputed issues of fact in favor of petitioner as the moving party. Petitioner again raised – unsuccessfully – the Supreme Court’s prior precedent. The Federal Circuit held that the district court erred by failing to make specific findings as to whether there existed a teaching, suggestion, or motivation to combine the Asano APS with the CTS 503 ETC “in the particular manner†claimed in claim 4 of the Engelgau patent – which, according to the court, would have required the district court to find a teaching, suggestion, or motivation to specifically attach an ETC to the stationary support bracket of the Asano APS as is required by the asserted claim. The Federal Circuit also held that conflicting expert testimony and declarations presented to the district court established genuine issues of material fact which made summary judgment inappropriate.
Arguments Before the Court
Petitioner and its amici primarily argue that the Supreme Court should reject the Federal Circuit’s teaching-suggestion-motivation test because it has no basis in either the text or origin of § 103(a) and conflicts with the Court’s prior patent law decisions. Petitioner characterizes the Federal Circuit’s use of the teaching-suggestion-motivation test as a willful rejection of the Court’s precedent. Moreover, it contends, the test renders § 103(a) a meaningless defense for accused infringers in all but rare cases and effectively precludes the use of summary judgment of invalidity under § 103(a). Petitioner argues that the Court should adhere to its past patent law precedents which, in its view, mandate that a combination of prior art elements must be deemed obvious unless the known elements work together to produce a new “synergistic†effect, above and beyond the known functions of the components.
As amicus in support of petitioner, the United States argues that the Court’s decision in Graham sets out the proper test for obviousness, which in its view, mandates that patent rights be awarded only when an invention manifests “an extraordinary level of innovation.†According to the Solicitor General, although the Federal Circuit’s teaching-suggestion-motivation test is a legitimate means of proving obviousness, it conflicts with the Graham framework when applied as a mandatory requirement and unnecessarily extends patent rights in many cases to what should be deemed obvious subject matter.
Respondents counter that petitioner and its amici mischaracterize the teaching-suggestion-motivation test as an overly difficult standard requiring an explicit teaching, suggestion, or motivation to combine in the prior art. According to respondents, Federal Circuit precedent has repeatedly indicated that motivation to combine may be implicit and thus readily found in myriad ways—a fact that is underscored by the long line of Federal Circuit cases holding patents invalid as obvious. Respondents also argue that, contrary to petitioner’s contention that it conflicts with the Court’s past precedent, the teaching-suggestion-motivation test is compelled by Graham’s failure to state a specific test for obviousness in favor of case-by-case development. According to respondents, the teaching-suggestion-motivation test properly balances the interests of patentees and the public by counteracting improper hindsight bias that might otherwise lead courts to invalidate legitimate patents as obvious while remaining flexible enough to knock out inventions undeserving of patent rights. Respondents also counter the standards proposed by petitioner and the United States. They contend that petitioner’s focus on the capability rather than the motivation of those skilled in the art cannot be reconciled with § 103(a)’s use of the language “would have†and that petitioner’s “synergy†standard does not comport with Graham’s multifactor test and is conspicuously rejected by petitioner’s amicus, the Solicitor General. Respondents also argue that the Solicitor General’s proposed “innovation†standard similarly cannot be correct because it parallels the standard previously used by the Court but rejected by Congress with the enactment of the 1952 Patent Act, which established § 103(a) and the term “obvious.â€
The pivotal issue in KSR will be whether the Court adopts the Federal Circuit’s teaching-suggestion-motivation test as the sole standard for obviousness, retains the test as a sufficient but non-exclusive test for obviousness, or abandons the test entirely in favor of the synergy standard proposed by petitioner, the innovation standard proposed by the United States, or another standard entirely. However, no matter how the Court rules, the case promises to have swift impact on Federal Circuit precedent, which has already shown signs of a shift toward a more lenient and increasingly “implicit†interpretation of the teaching-suggestion-motivation test since the Court granted certiorari.
[Disclosure: Tom Goldstein of Akin Gump represents the respondent in this case.]
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