KSR v. Teleflex: Reasons for Reversal & Remand

The following analysis is from Lawrence Ebert, a New Jersey patent lawyer whose blog IPBiz covers intellectual property news.

On January 6, 2005, the Court of Appeals for the Federal Circuit (CAFC) issued a non-precedential opinion in the case Teleflex v. KSR (2005 U.S. App. LEXIS 176) which vacated a grant of summary judgment in favor of the defendant KSR and remanded the case to the district court for further proceedings. The opinion was by Judge Schall, with Judges Mayer and Prost also on the panel. The opinion cited In re Kotzab, 217 F.3d 1365, 1371 (CAFC 2000) for the proposition: “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.” The specific text quoted from Kotzab was the following: “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.” The opinion cited Ruiz v. Chance, 234 F.3d 654, 665 (CAFC 2000) for the text: “The reason, suggestion, or motivation to combine [prior art references] may be found explicitly or implicitly: 1) in the prior art references themselves; 2) 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; or 3) from the nature of the problem to be solved, ‘leading inventors to look to references relating to possible solutions to that problem.'” The opinion by the CAFC enumerated two problems with the district court opinion, one about an improper application of the teaching-suggestion-motivation (TSM) test and one about an improper application of summary judgment: “We agree with Teleflex that the district court did not apply the correct teaching-suggestion-motivation test. We also agree that, under that test, genuine issues of material fact exist, so as to render summary judgment of obviousness improper. For these reasons, we vacate the decision of the district court and remand for further proceedings consistent with this opinion.”

The emphasis in the improper application of the TSM test goes to the words “in the manner claimed.” The CAFC wrote: “Under our case law, whether based on the nature of the problem to be solved, the express teachings of the prior art, or the knowledge of one of ordinary skill in the art, the district Court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ‘565 patent.”

Summary judgment was inappropriate because the CAFC found that the one declaration offered by KSR was inadequate because it “did not go to the ultimate issue of motivation to combine prior art, i.e. whether one of ordinary skill in the art would have been motivated to attach an electronic control to the support bracket of the assembly disclosed by Asano. Mr. Willemsen did state that an electronic control “could have been” mounted on the support bracket of a pedal assembly.” This is where the “obvious to try” matter appears in the CAFC opinion: such testimony is not sufficient to support a finding of obviousness, however. See, e.g., In re Deuel, 51 F.3d 1552, 1559 (Fed. Cir. 1995) (“‘Obvious to try’ has long been held not to constitute obviousness.”) One can see that the CAFC was looking to the words of the claim: “the issue is not whether a person of skill in the art had a motivation to combine the electronic control with an adjustable pedal assembly, but whether a person skilled in the art had a motivation to attach the electronic control to the support bracket of the pedal assembly.”

The Supreme Court reversed and remanded the CAFC decision on April 30, 2007. The Supreme Court identified three errors of the CAFC:

1. The Circuit first erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve.

2. 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.

3. 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.

Of #1, one notes that the CAFC was reviewing the analysis presented by the district court: “The district court 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. Id. at 593-94.” Separately, one notes that the nature of the problem is not the only way to establish motivation. One can look to the prior art references themselves or to 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.

Of #2, in an obviousness rejection, one is trying to identify the elements of the proposed claim that appear in the prior art and find some motivation to combine the prior art teachings in the particular manner claimed.

Of #3, there are many things that may be viewed as “obvious to try,” that for any of various reasons, don’t actually get tried. Further, in a multi-element system, there can be many permutations of things that can be tried.

There is no doubt that the Supreme Court decision lowered the burden for challenging a patent claim through obviousness under 35 USC 103. Although the TSM inquiry was not removed from the obviousness analysis, it can now be satisfied more easily. Furthermore, the resolution of this particular case suggests that obviousness challenges through summary judgment procedures will be more successful.