U.S. Supreme Court
KSR International Co. v. Teleflex
550 U.S. 398
2007
Justice KENNEDY delivered the opinion of
the Court.
Teleflex Incorporated and its subsidiary
Technology Holding Company — both referred to here as Teleflex — sued KSR
International Company for patent infringement. The patent at issue, United
States Patent No. 6,237,565 B1, is entitled "Adjustable Pedal Assembly
With Electronic Throttle Control." Supp. App. 1. The patentee is Steven J.
Engelgau, and the patent is referred to as "the Engelgau patent."
Teleflex holds the exclusive license to the patent.
Claim 4 of the Engelgau patent describes
a mechanism for combining an electronic sensor with an adjustable automobile
pedal so the pedal's position can be transmitted to a computer that controls
the throttle in the vehicle's engine. When Teleflex accused KSR of infringing
the Engelgau patent by adding an electronic sensor to one of KSR's previously designed
pedals, KSR countered that claim 4 was invalid under the Patent Act, 35 U.S.C.
§ 103 (2000 ed. and Supp. IV), because its subject matter was obvious.
Section 103(a) forbids issuance of a
patent when "the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains."
In Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the Court set out a
framework for applying the statutory language of § 103, language itself based
on the logic of the earlier decision in Hotchkiss v. Greenwood, 11 How. 248, 13
L.Ed. 683 (1851), and its progeny. See 383 U.S., at 15-17, 86 S.Ct. 684. The
analysis is objective:
"Under § 103, the scope and content
of the prior art are to be determined; differences between the prior art and
the claims at issue are to be ascertained; and the level of ordinary skill in
the pertinent art resolved. 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., might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented." Id., at 17-18, 86
S.Ct. 684.
While the sequence of these questions
might be reordered in any particular case, the factors continue to define the
inquiry that controls. If a court, or patent examiner, conducts this analysis
and concludes the claimed subject matter was obvious, the claim is invalid
under § 103.
Seeking to resolve the question of
obviousness with more uniformity and consistency, the Court of Appeals for the
Federal Circuit has employed an approach referred to by the parties as the
"teaching, suggestion, or motivation" test (TSM 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.
See, e.g., Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323-1324
(C.A.Fed.1999). KSR challenges that test, or at least its application in this
case. See 119 Fed.Appx. 282, 286-290 (C.A.Fed.2005). Because the Court of
Appeals addressed the question of obviousness in a manner contrary to § 103 and
our precedents, we granted certiorari, 548 U.S. 902, 126 S.Ct. 2965, 165
L.Ed.2d 949 (2006). We now reverse.
I
A
In car engines without
computer-controlled throttles, the accelerator pedal interacts with the
throttle via cable or other mechanical link. The pedal arm acts as a lever
rotating around a pivot point. In a cable-actuated throttle control the
rotation caused by pushing down the pedal pulls a cable, which in turn pulls
open valves in the carburetor or fuel injection unit. The wider the valves
open, the more fuel and air are released, causing combustion to increase and
the car to accelerate. When the driver takes his foot off the pedal, the
opposite occurs as the cable is released and the valves slide closed.
In the 1990's it became more common to
install computers in cars to control engine operation. Computer-controlled
throttles open and close valves in response to electronic signals, not through
force transferred from the pedal by a mechanical link. Constant, delicate
adjustments of air and fuel mixture are possible. The computer's rapid processing
of factors beyond the pedal's position improves fuel efficiency and engine
performance.
For a computer-controlled throttle to
respond to a driver's operation of the car, the computer must know what is
happening with the pedal. A cable or mechanical link does not suffice for this
purpose; at some point, an electronic sensor is necessary to translate the
mechanical operation into digital data the computer can understand.
Before discussing sensors further we
turn to the mechanical design of the pedal itself. In the traditional design a
pedal can be pushed down or released but cannot have its position in the
footwell adjusted by sliding the pedal forward or back. As a result, a driver
who wishes to be closer or farther from the pedal must either reposition himself
in the driver's seat or move the seat in some way. In cars with deep footwells
these are imperfect solutions for drivers of smaller stature. To solve the
problem, inventors, beginning in the 1970's, designed pedals that could be
adjusted to change their location in the footwell. Important for this case are
two adjustable pedals disclosed in U.S. Patent Nos. 5,010,782 (filed July 28,
1989) (Asano) and 5,460,061 (filed Sept. 17, 1993) (Redding). The Asano patent
reveals a support structure that houses the pedal so that even when the pedal
location is adjusted relative to the driver, one of the pedal's pivot points
stays fixed. The pedal is also designed so that the force necessary to push the
pedal down is the same regardless of adjustments to its location. The Redding
patent reveals a different, sliding mechanism where both the pedal and the
pivot point are adjusted.
We return to sensors. Well before
Engelgau applied for his challenged patent, some inventors had obtained patents
involving electronic pedal sensors for computer-controlled throttles. These
inventions, such as the device disclosed in U.S. Patent No. 5,241,936 (filed
Sept. 9, 1991) ('936), taught that it was preferable to detect the pedal's
position in the pedal assembly, not in the engine. The '936 patent disclosed a
pedal with an electronic sensor on a pivot point in the pedal assembly. U.S.
Patent No. 5,063,811 (filed July 9, 1990) (Smith) taught that to prevent the
wires connecting the sensor to the computer from chafing and wearing out, and
to avoid grime and damage from the driver's foot, the sensor should be put on a
fixed part of the pedal assembly rather than in or on the pedal's footpad.
In addition to patents for pedals with
integrated sensors inventors obtained patents for self-contained modular
sensors. A modular sensor is designed independently of a given pedal so that it
can be taken off the shelf and attached to mechanical pedals of various sorts,
enabling the pedals to be used in automobiles with computer-controlled throttles.
One such sensor was disclosed in U.S. Patent No. 5,385,068 (filed Dec. 18,
1992) ('068). In 1994, Chevrolet manufactured a line of trucks using modular
sensors "attached to the pedal assembly support bracket, adjacent to the
pedal and engaged with the pivot shaft about which the pedal rotates in
operation." 298 F.Supp.2d 581, 589 (E.D.Mich. 2003).
The prior art contained patents
involving the placement of sensors on adjustable pedals as well. For example,
U.S. Patent No. 5,819,593 (filed Aug. 17, 1995) (Rixon) discloses an adjustable
pedal assembly with an electronic sensor for detecting the pedal's position. In
the Rixon pedal the sensor is located in the pedal footpad. The Rixon pedal was
known to suffer from wire chafing when the pedal was depressed and released.
This short account of pedal and sensor
technology leads to the instant case.
B
KSR, a Canadian company, manufactures
and supplies auto parts, including pedal systems. Ford Motor Company hired KSR
in 1998 to supply an adjustable pedal system for various lines of automobiles
with cable-actuated throttle controls. KSR developed an adjustable mechanical
pedal for Ford and obtained U.S. Patent No. 6,151,986 (filed July 16, 1999)
('986) for the design. In 2000, KSR was chosen by General Motors Corporation
(GMC or GM) to supply adjustable pedal systems for Chevrolet and GMC light
trucks that used engines with computer-controlled throttles. To make the '986
pedal compatible with the trucks, KSR merely took that design and added a
modular sensor.
Teleflex is a rival to KSR in the design
and manufacture of adjustable pedals. As noted, it is the exclusive licensee of
the Engelgau patent. Engelgau filed the patent application on August 22, 2000,
as a continuation of a previous application for U.S. Patent No. 6,109,241,
which was filed on January 26, 1999. He has sworn he invented the patent's
subject matter on February 14, 1998. The Engelgau patent discloses an
adjustable electronic pedal described in the specification as a
"simplified vehicle control pedal assembly that is less expensive, and
which uses fewer parts and is easier to package within the vehicle."
Engelgau, col. 2, ll. 2-5, Supp. App. 6. Claim 4 of the patent, at issue here,
describes:
"A vehicle control pedal apparatus
comprising:
"a support adapted to be mounted to
a vehicle structure;
"an adjustable pedal assembly
having a pedal arm moveable in for[e] and aft directions with respect to said
support;
"a pivot for pivotally supporting
said adjustable pedal assembly with respect to said support and defining a
pivot axis; and
"an electronic control attached to
said support for controlling a vehicle system;
"said apparatus characterized by
said electronic control being responsive to said pivot for providing a signal
that corresponds to pedal arm position as said pedal arm pivots about said
pivot axis between rest and applied positions wherein the position of said
pivot remains constant while said pedal arm moves in fore and aft directions
with respect to said pivot." Id., col. 6, ll. 17-36, Supp. App. 8 (diagram
numbers omitted).
We agree with the District Court that
the claim discloses "a position-adjustable pedal assembly with an
electronic pedal position sensor attached to the support member of the pedal
assembly. Attaching the sensor to the support member allows the sensor to
remain in a fixed position while the driver adjusts the pedal." 298
F.Supp.2d, at 586-587.
Before issuing the Engelgau patent the
U.S. Patent and Trademark Office (PTO) rejected one of the patent claims that was
similar to, but broader than, the present claim 4. The claim did not include
the requirement that the sensor be placed on a fixed pivot point. The PTO
concluded the claim was an obvious combination of the prior art disclosed in
Redding and Smith, explaining:
"`Since the prior ar[t] references
are from the field of endeavor, the purpose disclosed ... would have been
recognized in the pertinent art of Redding. Therefore it would have been
obvious... to provide the device of Redding with the ... means attached to a
support member as taught by Smith.'" Id., at 595.
In other words Redding provided an
example of an adjustable pedal, and Smith explained how to mount a sensor on a
pedal's support structure, and the rejected patent claim merely put these two
teachings together.
Although the broader claim was rejected,
claim 4 was later allowed because it included the limitation of a fixed pivot
point, which distinguished the design from Redding's. Ibid. Engelgau had not
included Asano among the prior art references, and Asano was not mentioned in
the patent's prosecution. Thus, the PTO did not have before it an adjustable
pedal with a fixed pivot point. The patent issued on May 29, 2001, and was
assigned to Teleflex.
Upon learning of KSR's design for GM,
Teleflex sent a warning letter informing KSR that its proposal would violate
the Engelgau patent. "`Teleflex believes that any supplier of a product
that combines an adjustable pedal with an electronic throttle control
necessarily employs technology covered by one or more'" of Teleflex's
patents. Id., at 585. KSR refused to enter a royalty arrangement with Teleflex;
so Teleflex sued for infringement, asserting KSR's pedal infringed the Engelgau
patent and two other patents. Ibid. Teleflex later abandoned its claims
regarding the other patents and dedicated the patents to the public. The
remaining contention was that KSR's pedal system for GM infringed claim 4 of
the Engelgau patent. Teleflex has not argued that the other three claims of the
patent are infringed by KSR's pedal, nor has Teleflex argued that the
mechanical adjustable pedal designed by KSR for Ford infringed any of its
patents.
C
The District Court granted summary
judgment in KSR's favor. After reviewing the pertinent history of pedal design,
the scope of the Engelgau patent, and the relevant prior art, the court
considered the validity of the contested claim. By direction of 35 U.S.C. §
282, an issued patent is presumed valid. The District Court applied Graham's
framework to determine whether under summary-judgment standards KSR had
overcome the presumption and demonstrated that claim 4 was obvious in light of
the prior art in existence when the claimed subject matter was invented. See §
103(a).
The District Court determined, in light
of the expert testimony and the parties' stipulations, that the level of
ordinary skill in pedal design was "`an undergraduate degree in mechanical
engineering (or an equivalent amount of industry experience) [and] familiarity
with pedal control systems for vehicles.'" 298 F.Supp.2d, at 590. The
court then set forth the relevant prior art, including the patents and pedal
designs described above.
Following Graham's direction, the court
compared the teachings of the prior art to the claims of Engelgau. It found "little
difference." 298 F.Supp.2d, at 590. Asano taught everything contained in
claim 4 except the use of a sensor to detect the pedal's position and transmit
it to the computer controlling the throttle. That additional aspect was
revealed in sources such as the '068 patent and the sensors used by Chevrolet.
Under the controlling cases from the
Court of Appeals for the Federal Circuit, however, the District Court was not
permitted to stop there. The court was required also to apply the TSM test. The
District Court held KSR had satisfied the test. It reasoned (1) the state of
the industry would lead inevitably to combinations of electronic sensors and
adjustable pedals, (2) Rixon provided the basis for these developments, and (3)
Smith taught a solution to the wire-chafing problems in Rixon, namely, locating
the sensor on the fixed structure of the pedal. This could lead to the
combination of Asano, or a pedal like it, with a pedal position sensor.
The conclusion that the Engelgau design
was obvious was supported, in the District Court's view, by the PTO's rejection
of the broader version of claim 4. Had Engelgau included Asano in his patent
application, it reasoned, the PTO would have found claim 4 to be an obvious
combination of Asano and Smith, as it had found the broader version an obvious
combination of Redding and Smith. As a final matter, the District Court held
that the secondary factor of Teleflex's commercial success with pedals based on
Engelgau's design did not alter its conclusion. The District Court granted
summary judgment for KSR.
With principal reliance on the TSM test,
the Court of Appeals reversed. It ruled the District Court had not been strict
enough in applying the test, having failed to make "`finding[s] as to the
specific understanding or principle within the knowledge of a skilled artisan
that would have motivated one with no knowledge of [the] invention' ... to
attach an electronic control to the support bracket of the Asano
assembly." 119 Fed.Appx., at 288 (quoting In re Kotzab, 217 F.3d 1365,
1371 (C.A.Fed.2000); brackets in original). The Court of Appeals held that the
District Court was incorrect that the nature of the problem to be solved
satisfied this requirement because unless the "prior art references
address[ed] the precise problem that the patentee was trying to solve,"
the problem would not motivate an inventor to look at those references. 119
Fed.Appx., at 288.
Here, the Court of Appeals found, the
Asano pedal was designed to solve the "`constant ratio problem'" —
that is, 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. Ibid. As for Rixon, the
court explained, that pedal suffered from the problem of wire chafing but was
not designed to solve it. In the court's view Rixon did not teach anything
helpful to Engelgau's purpose. Smith, in turn, did not relate to adjustable
pedals and did not "necessarily go to the issue of motivation to attach
the electronic control on the support bracket of the pedal assembly."
Ibid. When the patents were interpreted in this way, the Court of Appeals held,
they would not have led a person of ordinary skill to put a sensor on the sort
of pedal described in Asano.
That it might have been obvious to try
the combination of Asano and a sensor was likewise irrelevant, in the court's
view, because "`"[o]bvious to try" has long been held not to
constitute obviousness.'" Id., at 289 (quoting In re Deuel, 51 F.3d 1552,
1559 (C.A.Fed.1995)).
The Court of Appeals also faulted the
District Court's consideration of the PTO's rejection of the broader version of
claim 4. The District Court's role, the Court of Appeals explained, was not to
speculate regarding what the PTO might have done had the Engelgau patent
mentioned Asano. Rather, the court held, the District Court was obliged first
to presume that the issued patent was valid and then to render its own
independent judgment of obviousness based on a review of the prior art. The
fact that the PTO had rejected the broader version of claim 4, the Court of
Appeals said, had no place in that analysis.
The Court of Appeals further held that
genuine issues of material fact precluded summary judgment. Teleflex had proffered
statements from one expert that claim 4 "`was a simple, elegant, and novel
combination of features,'" 119 Fed.Appx., at 290, compared to Rixon, and
from another expert that claim 4 was nonobvious because, unlike in Rixon, the
sensor was mounted on the support bracket rather than the pedal itself. This
evidence, the court concluded, sufficed to require a trial.
II
A
We begin by rejecting the rigid approach
of the Court of Appeals. Throughout this Court's engagement with the question
of obviousness, our cases have set forth an expansive and flexible approach
inconsistent with the way the Court of Appeals applied its TSM test here. To be
sure, Graham recognized the need for "uniformity and definiteness."
383 U.S., at 18, 86 S.Ct. 684. Yet the principles laid down in Graham
reaffirmed the "functional approach" of Hotchkiss, 11 How. 248, 13
L.Ed. 683. See 383 U.S., at 12, 86 S.Ct. 684. To this end, Graham set forth a
broad inquiry and invited courts, where appropriate, to look at any secondary considerations
that would prove instructive. Id., at 17, 86 S.Ct. 684.
Neither the enactment of § 103 nor the
analysis in Graham disturbed this Court's earlier instructions concerning the
need for caution in granting a patent based on the combination of elements
found in the prior art. For over a half century, the Court has held that a
"patent for a combination which only unites old elements with no change in
their respective functions... obviously withdraws what already is known into
the field of its monopoly and diminishes the resources available to skillful
men." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,
340 U.S. 147, 152-153, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal
reason for declining to allow patents for what is obvious. The combination of
familiar elements according to known methods is likely to be obvious when it
does no more than yield predictable results. Three cases decided after Graham
illustrate the application of this doctrine.
In United States v. Adams, 383 U.S. 39,
40, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966), a companion case to Graham, the Court
considered the obviousness of a "wet battery" that varied from prior
designs in two ways: It contained water, rather than the acids conventionally
employed in storage batteries; and its electrodes were magnesium and cuprous
chloride, rather than zinc and silver chloride. The Court recognized that when
a patent claims a structure already known in the prior art that is altered by
the mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result. 383 U.S., at 50-51,
86 S.Ct. 708. It nevertheless rejected the Government's claim that Adams'
battery was obvious. The Court relied upon the corollary principle that when
the prior art teaches away from combining certain known elements, discovery of
a successful means of combining them is more likely to be nonobvious. Id., at
51-52, 86 S.Ct. 708. When Adams designed his battery, the prior art warned that
risks were involved in using the types of electrodes he employed. The fact that
the elements worked together in an unexpected and fruitful manner supported the
conclusion that Adams' design was not obvious to those skilled in the art.
In Anderson's-Black Rock, Inc. v.
Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), the
Court elaborated on this approach. The subject matter of the patent before the
Court was a device combining two pre-existing elements: a radiant-heat burner
and a paving machine. The device, the Court concluded, did not create some new
synergy: The radiant-heat burner functioned just as a burner was expected to
function; and the paving machine did the same. The two in combination did no
more than they would in separate, sequential operation. Id., at 60-62, 90 S.Ct.
305. In those circumstances, "while the combination of old elements
performed a useful function, it added nothing to the nature and quality of the
radiant-heat burner already patented," and the patent failed under § 103.
Id., at 62, 90 S.Ct. 305 (footnote omitted).
Finally, in Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), the Court derived from the
precedents the conclusion that when a patent "simply arranges old elements
with each performing the same function it had been known to perform" and
yields no more than one would expect from such an arrangement, the combination
is obvious. Id., at 282, 96 S.Ct. 1532.
The principles underlying these cases
are instructive when the question is whether a patent claiming the combination
of elements of prior art is obvious. When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability. For
the same reason, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill. Sakraida and Anderson's-Black
Rock are illustrative — 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 more
difficult in other cases than it is here because the claimed subject matter may
involve 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. Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background knowledge possessed
by a person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis should be
made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006)
("[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of
obviousness"). As our precedents make clear, however, the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.
B
When it first established the
requirement of demonstrating a teaching, suggestion, or motivation to combine
known elements in order to show that the combination is obvious, the Court of
Customs and Patent Appeals captured a helpful insight. See Application of
Bergel, 48 C.C.P.A. 1102, 292 F.2d 955, 956-957 (1961). As is clear from cases
such as Adams, a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently, known in
the prior art. Although common sense directs one to look with care at a patent
application that claims 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 relevant
field to combine the elements in the way the claimed new invention does. This
is so because inventions in most, if not all, instances rely upon building
blocks long since uncovered, and claimed discoveries almost of necessity will
be combinations of what, in some sense, is already known.
Helpful insights, however, need not
become rigid and mandatory formulas; and when it is so applied, the TSM test is
incompatible with our precedents. The obviousness analysis cannot be confined
by a formalistic conception of the words teaching, suggestion, and motivation,
or by overemphasis on the importance of published articles and the explicit
content of issued patents. The diversity of inventive pursuits and of modern
technology counsels against limiting the analysis in this way. In many fields
it may be that there is little discussion of obvious techniques or
combinations, and it often may be the case that market demand, rather than scientific
literature, will drive design trends. Granting patent protection to advances
that would occur in the ordinary course without real innovation retards
progress and may, in the case of patents combining previously known elements,
deprive prior inventions of their value or utility.
In the years since the Court of Customs
and Patent Appeals set forth the essence of the TSM test, the Court of Appeals
no doubt has applied the test in accord with these principles in many cases.
There is no necessary inconsistency between the idea underlying the TSM test
and the Graham analysis. But when a court transforms the general principle into
a rigid rule that limits the obviousness inquiry, as the Court of Appeals did
here, it errs.
C
The flaws in the analysis of the Court
of Appeals relate for the most part to the court's narrow conception of the
obviousness inquiry reflected in its application of the TSM test. In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls. What
matters is the objective reach of the claim. If the claim extends to what is
obvious, it is invalid under § 103. One of the ways in which a patent's subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution encompassed
by the patent's claims.
The first error of the Court of Appeals
in this case was to foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee was trying to solve. 119
Fed.Appx., at 288. The Court of Appeals failed to recognize that the problem
motivating the patentee may be only one of many addressed by the patent's
subject matter. The question is not whether the combination was obvious to the
patentee but whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.
The second error of the Court of Appeals
lay in its assumption that a person of ordinary skill attempting to solve a
problem will be led only to those elements of prior art designed to solve the
same problem. Ibid. The primary purpose of Asano was solving the constant ratio
problem; so, the court concluded, an inventor considering how to put a sensor
on an adjustable pedal would have no reason to consider putting it on the Asano
pedal. Ibid. Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle. Regardless of Asano's primary purpose, the design
provided an obvious example of an adjustable pedal with a fixed pivot point;
and the prior art was replete with patents indicating that a fixed pivot point
was an ideal mount for a sensor. The idea that a designer hoping to make an
adjustable electronic pedal would ignore Asano because Asano was designed to
solve the constant ratio problem makes little sense. A person of ordinary skill
is also a person of ordinary creativity, not an automaton.
The same constricted analysis led the
Court of Appeals to conclude, in error, that a patent claim cannot be proved
obvious merely by showing that the combination of elements was "[o]bvious
to try." Id., at 289 (internal quotation marks omitted). 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 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. In that instance the fact that a
combination was obvious to try might show that it was obvious under § 103.
The Court of Appeals, finally, drew the
wrong conclusion from the risk of courts and patent examiners falling prey to
hindsight bias. A factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex post
reasoning. See Graham, 383 U.S., at 36, 86 S.Ct. 684 (warning against a
"temptation to read into the prior art the teachings of the invention in
issue" and instructing courts to "`guard against slipping into use of
hindsight'" (quoting Monroe Auto Equip. Co. v. Heckethorn Mfg. &
Supply Co., 332 F.2d 406, 412 (C.A.6 1964))). Rigid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.
We note the Court of Appeals has since
elaborated a broader conception of the TSM test than was applied in the instant
matter. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367 (C.A.Fed. 2006) ("Our suggestion test is
in actuality quite flexible and not only permits, but requires, consideration
of common knowledge and common sense"); Alza Corp. v. Mylan Labs., Inc.,
464 F.3d 1286, 1291 (2006) ("There is flexibility in our obviousness
jurisprudence because a motivation may be found implicitly in the prior art. We
do not have a rigid test that requires an actual teaching to combine
..."). Those decisions, of course, are not now before us and do not
correct the errors of law made by the Court of Appeals in this case. The extent
to which they may describe an analysis more consistent with our earlier
precedents and our decision here is a matter for the Court of Appeals to
consider in its future cases. What we hold is that the fundamental
misunderstandings identified above led the Court of Appeals in this case to
apply a test inconsistent with our patent law decisions.
III
When we apply the standards we have
explained to the instant facts, claim 4 must be found obvious. We agree with
and adopt the District Court's recitation of the relevant prior art and its determination
of the level of ordinary skill in the field. As did the District Court, we see
little difference between the teachings of Asano and Smith and the adjustable
electronic pedal disclosed in claim 4 of the Engelgau patent. A person having
ordinary skill in the art could have combined Asano with a pedal position
sensor in a fashion encompassed by claim 4, and would have seen the benefits of
doing so.
A
Teleflex argues in passing that the
Asano pedal cannot be combined with a sensor in the manner described by claim 4
because of the design of Asano's pivot mechanisms. See Brief for Respondents
48-49, and n. 17. Therefore, Teleflex reasons, even if adding a sensor to Asano
was obvious, that does not establish that claim 4 encompasses obvious subject matter.
This argument was not, however, raised before the District Court. There
Teleflex was content to assert only that the problem motivating the invention
claimed by the Engelgau patent would not lead to the solution of combining
Asano with a sensor. See Teleflex's Response to KSR's Motion for Summary
Judgment of Invalidity in No. 02-74586 (ED Mich.), pp. 18-20, App. 144a-146a.
It is also unclear whether the current argument was raised before the Court of
Appeals, where Teleflex advanced the nonspecific, conclusory contention that
combining Asano with a sensor would not satisfy the limitations of claim 4. See
Brief for Plaintiffs-Appellants in No. 04-1152 (CA Fed.), pp. 42-44. Teleflex's
own expert declarations, moreover, do not support the point Teleflex now
raises. See Declaration of Clark J. Radcliffe, Ph.D., Supp. App. 204-207;
Declaration of Timothy L. Andresen, id., at 208-210. The only statement in
either declaration that might bear on the argument is found in the Radcliffe
declaration:
"Asano ... and the Rixon ... are
complex mechanical linkage-based devices that are expensive to produce and
assemble and difficult to package. It is exactly these difficulties with prior
art designs that [Engelgau] resolves. The use of an adjustable pedal with a single
pivot reflecting pedal position combined with an electronic control mounted
between the support and the adjustment assembly at that pivot was a simple,
elegant, and novel combination of features in the Engelgau '565 patent."
Id., at 206, ¶ 16.
Read in the context of the declaration
as a whole this is best interpreted to mean that Asano could not be used to
solve "[t]he problem addressed by Engelgau '565[:] to provide a less
expensive, more quickly assembled, and smaller package adjustable pedal assembly
with electronic control." Id., at 205, ¶ 10.
The District Court found that combining
Asano with a pivot-mounted pedal position sensor fell within the scope of claim
4. 298 F.Supp.2d, at 592-593. Given the significance of that finding to the
District Court's judgment, it is apparent that Teleflex would have made clearer
challenges to it if it intended to preserve this claim. In light of Teleflex's
failure to raise the argument in a clear fashion, and the silence of the Court
of Appeals on the issue, we take the District Court's conclusion on the point
to be correct.
B
The District Court was correct to
conclude that, as of the time Engelgau designed the subject matter in claim 4,
it was obvious to a person of ordinary skill to combine Asano with a pivot-mounted
pedal position sensor. There then existed a marketplace that created a strong
incentive to convert mechanical pedals to electronic pedals, and the prior art
taught a number of methods for achieving this advance. The Court of Appeals
considered the issue too narrowly by, in effect, asking whether a pedal
designer writing on a blank slate would have chosen both Asano and a modular
sensor similar to the ones used in the Chevrolet truckline and disclosed in the
'068 patent. The District Court employed this narrow inquiry as well, though it
reached the correct result nevertheless. The proper question to have asked was
whether a pedal designer of ordinary skill, facing the wide range of needs
created by developments in the field of endeavor, would have seen a benefit to
upgrading Asano with a sensor.
In automotive design, as in many other
fields, the interaction of multiple components means that changing one
component often requires the others to be modified as well. Technological
developments made it clear that engines using computer-controlled throttles
would become standard. As a result, designers might have decided to design new
pedals from scratch; but they also would have had reason to make pre-existing
pedals work with the new engines. Indeed, upgrading its own pre-existing model
led KSR to design the pedal now accused of infringing the Engelgau patent.
For a designer starting with Asano, the
question was where to attach the sensor. The consequent legal question, then,
is whether a pedal designer of ordinary skill starting with Asano would have
found it obvious to put the sensor on a fixed pivot point. The prior art
discussed above leads us to the conclusion that attaching the sensor where both
KSR and Engelgau put it would have been obvious to a person of ordinary skill.
The '936 patent taught the utility of
putting the sensor on the pedal device, not in the engine. Smith, in turn,
explained to put the sensor not on the pedal's footpad but instead on its
support structure. And from the known wire-chafing problems of Rixon, and
Smith's teaching that "the pedal assemblies must not precipitate any
motion in the connecting wires," Smith, col. 1, ll. 35-37, Supp. App. 274,
the designer would know to place the sensor on a non-moving part of the pedal
structure. The most obvious nonmoving point on the structure from which a
sensor can easily detect the pedal's position is a pivot point. The designer,
accordingly, would follow Smith in mounting the sensor on a pivot, thereby
designing an adjustable electronic pedal covered by claim 4.
Just as it was possible to begin with
the objective to upgrade Asano to work with a computer-controlled throttle, so
too was it possible to take an adjustable electronic pedal like Rixon and seek
an improvement that would avoid the wire-chafing problem. Following similar
steps to those just explained, a designer would learn from Smith to avoid
sensor movement and would come, thereby, to Asano because Asano disclosed an
adjustable pedal with a fixed pivot.
Teleflex indirectly argues that the
prior art taught away from attaching a sensor to Asano because Asano in its
view is bulky, complex, and expensive. The only evidence Teleflex marshals in
support of this argument, however, is the Radcliffe declaration, which merely
indicates that Asano would not have solved Engelgau's goal of making a small,
simple, and inexpensive pedal. What the declaration does not indicate is that
Asano was somehow so flawed that there was no reason to upgrade it, or pedals
like it, to be compatible with modern engines. Indeed, Teleflex's own
declarations refute this conclusion. Dr. Radcliffe states that Rixon suffered
from the same bulk and complexity as did Asano. See id., at 206. Teleflex's
other expert, however, explained that Rixon was itself designed by adding a
sensor to a pre-existing mechanical pedal. See id., at 209. If Rixon's base
pedal was not too flawed to upgrade, then Dr. Radcliffe's declaration does not
show Asano was either. Teleflex may have made a plausible argument that Asano
is inefficient as compared to Engelgau's preferred embodiment, but to judge
Asano against Engelgau would be to engage in the very hindsight bias Teleflex
rightly urges must be avoided. Accordingly, Teleflex has not shown anything in
the prior art that taught away from the use of Asano.
Like the District Court, finally, we
conclude Teleflex has shown no secondary factors to dislodge the determination
that claim 4 is obvious. Proper application of Graham and our other precedents
to these facts therefore leads to the conclusion that claim 4 encompassed
obvious subject matter. As a result, the claim fails to meet the requirement of
§ 103.
We need not reach the question whether
the failure to disclose Asano during the prosecution of Engelgau voids the
presumption of validity given to issued patents, for claim 4 is obvious despite
the presumption. We nevertheless think it appropriate to note that the
rationale underlying the presumption — that the PTO, in its expertise, has
approved the claim — seems much diminished here.
IV
A separate ground the Court of Appeals
gave for reversing the order for summary judgment was the existence of a
dispute over an issue of material fact. We disagree with the Court of Appeals
on this point as well. To the extent the court understood the Graham approach
to exclude the possibility of summary judgment when an expert provides a
conclusory affidavit addressing the question of obviousness, it misunderstood
the role expert testimony plays in the analysis. In considering summary
judgment on that question the district court can and should take into account
expert testimony, which may resolve or keep open certain questions of fact.
That is not the end of the issue, however. The ultimate judgment of obviousness
is a legal determination. Graham, 383 U.S., at 17, 86 S.Ct. 684. Where, as
here, the content of the prior art, the scope of the patent claim, and the
level of ordinary skill in the art are not in material dispute, and the
obviousness of the claim is apparent in light of these factors, summary judgment
is appropriate. Nothing in the declarations proffered by Teleflex prevented the
District Court from reaching the careful conclusions underlying its order for
summary judgment in this case.
* * *
We build and create by bringing to the
tangible and palpable reality around us new works based on instinct, simple
logic, ordinary inferences, extraordinary ideas, and sometimes even genius.
These advances, once part of our shared knowledge, define a new threshold from
which innovation starts once more. And as progress beginning from higher levels
of achievement is expected in the normal course, the results of ordinary
innovation are not the subject of exclusive rights under the patent laws. Were
it otherwise patents might stifle, rather than promote, the progress of useful
arts. See U.S. Const., Art. I, § 8, cl. 8. These premises led to the bar on
patents claiming obvious subject matter established in Hotchkiss and codified
in § 103. Application of the bar must not be confined within a test or
formulation too constrained to serve its purpose.
KSR provided convincing evidence that
mounting a modular 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. Its arguments, and the record, demonstrate that claim 4 of the Engelgau
patent is obvious. In rejecting the District Court's rulings, the Court of
Appeals analyzed the issue in a narrow, rigid manner inconsistent with § 103
and our precedents. The judgment of the Court of Appeals is reversed, and the
case is remanded for further proceedings consistent with this opinion.
It is so ordered.