KSR International Vs. Teleflex INC Et Al

(Decision of US Supreme Court)

Author: Ruchira Kulkarni, Intern, Brain League IP Services

The decision of the Supreme Court in this case has been much awaited as it had the potential to change the landscape of the obviousness analysis. In 1966, the Supreme Court had set forth the Graham Framework, which was intended as an objective analysis to aid in determining the obviousness of a patent claim. However, towards the early 80’s, in an attempt to bring greater consistency and uniformity to the analysis of obviousness, the Federal Circuit developed another test, known as the TSM test. In this case, the Supreme Court has to determine whether the TSM test has a place in the obviousness jurisprudence developed by the United States Courts

Case Facts

KSR International (hereinafter ‘the petitioner’), a company that manufactures and supplies various auto parts, developed an adjustable mechanical pedal and obtained a patent for the design. Subsequently, the petitioner was hired by General Motors (hereinafter ‘GM’) to supply adjustable mechanical pedal systems for some of their vehicles that used engines with computer controlled throttles. In order to make their pedals compatible with GM’s vehicles, the petitioners merely added modular sensors to their existing (patented) pedal design. On learning this, Teleflex Inc (hereinafter ‘the respondent’) sued the petitioner for patent infringement, alleging that such a design infringed Claim 4 of the Engelgau patent, which described a method for combining an electronic sensor with an adjustable mechanical pedal, and which had been licensed exclusively to them.

Case History

The case was first heard by the District Court, which applied the framework developed in the case of Graham v. John Deere, 383 U. S. 1 (1966) and the teaching-suggestion-motivation (hereinafter ‘TSM’) Test to conclude that the subject matter of Claim 4 of the Engelgau patent was obvious and thus invalid under Section 103 of the US Patent Act. The Court of Appeals (Federal Circuit) reversed the decision of the District Court, principally on the ground that the District Court did not apply the TSM test strictly enough. The petitioner then filed a writ of certiorari and thus the case reached the Supreme Court.

(1) Was the Appellate Court’s application of the TSM test correct?

(2) What was the true scope of the TSM test, especially in the light of precedents of the Supreme Court?

 Holding

(1) No, the Court of Appeals (Federal Circuit) had applied the TSM test in a very narrow and rigid manner.

(2) The TSM test is merely a “helpful insight” in determining obviousness, but is not a rigid principle.

 Rule of Law

Section 103 of the Patent Act forbids issuance of a patent when the whole of the subject matter sought to be patented is obvious to a person with ordinary skill in the art to which the subject matter pertains, when considered in the light of prior art in existence at the time the invention was made.

The analysis of obviousness is done, in accordance with the Graham’s Framework, in three stages: (a) the scope and content of the prior art are determined (b) the differences between the prior art and the allegedly obvious claims are determined (c) the level of ordinary skill in the pertinent art is determined. If the differences are such that they would be obvious to a person with ordinary skill in the art, the claim would be obvious and thus not patentable under Section 103 of the Patents Act.

A secondary tool that may be used in determining obviousness is the TSM (Teaching-Suggestion-Motivation) test, under which a patent claim is only proved obvious if some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.

 Analysis

Issue 1: The Court of Appeal’s application of the TSM test was faulted because it was rigid, which resulted in narrowing of the inquiry into obviousness. For an invention which is a combination of elements existing in the prior art, it is important to identify what prompted the inventor to combine the elements in the way he did. However, this should merely be one facet of the inquiry into obviousness of the patent claim and should not be a mandatory formula.

As to the specific application of the TSM test, the analysis of obviousness under the TSM test need not seek out precise teachings directed to the specific subject matter of the claim in issue. This is because very often the technique or combination is the result of market demand and there may be little discussion of it in scientific literature. Instead, it is open to the Court to take into account the creativity of a person with ordinary skill in the art, that might lead him to draw inferences from the existing prior art, in creating the invention.

Issue 2: With regard to the scope of the TSM test, there is no inconsistency between the Graham’s framework and the TSM test. The TSM test provides a “helpful insight” into the analysis of obviousness. But, when it is applied as a rigid principle, which limits the inquiry into obviousness, it becomes incompatible with the precedents of the Court, which have set forth an expansive and flexible approach for determining the question of obviousness. Thus, the analysis of obviousness cannot be confined by a formalistic conception of the TSM test and undue emphasis ought not to be laid on published articles or on the explicit content of issued patents.

Conclusion: The Supreme Court preserved the Graham Framework, which it had previously set forth, as the principal tool for the analysis of obviousness and made it amply clear that the TSM test was merely a secondary tool to help in the analysis of obviousness.