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KSR Int'l Co. v. Teleflex Inc.

Supreme Court of the United States

November 28, 2006, Argued ; April 30, 2007, Decided

No. 04-1350


 [*405]  [**1734]   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  [*406]  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 [****17]  designed pedals, KSR countered that claim 4 was invalid under the Patent Act, 35 U.S.C. § 103 (2000ed. and Supp. IV), because its subject matter was obvious.

HN1[] LEdHN[1][] [1]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  [***715] 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, 52 U.S. 248, 11 How. 248, 13 L. Ed. 683 (1851), and its progeny. See 383 U.S., at 15-17, 86 S. Ct. 684, 15 L. Ed. 2d 545. The analysis is objective:

HN2[] LEdHN[2][] [2]"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 [****18]  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, 15 L. Ed. 2d 545.

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550 U.S. 398 *; 127 S. Ct. 1727 **; 167 L. Ed. 2d 705 ***; 2007 U.S. LEXIS 4745 ****; 82 U.S.P.Q.2D (BNA) 1385; 75 U.S.L.W. 4289; 20 Fla. L. Weekly Fed. S 248


Subsequent History:  [****1] On remand at Teleflex, Inc. v. KSR Int'l Co., 228 Fed. Appx. 988, 2007 U.S. App. LEXIS 16051 (Fed. Cir., June 20, 2007)


Teleflex, Inc. v. KSR Int'l Co., 119 Fed. Appx. 282, 2005 U.S. App. LEXIS 176 (Fed. Cir., 2005)

Disposition: Reversed and remanded.

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Patent Law, Nonobviousness, General Overview, Elements & Tests, Prior Art, Graham Test, Secondary Considerations, Defenses, Patent Invalidity, Presumption of Validity, Predictability, Manner of Conception, Ordinary Skill Standard, Hindsight, Evidence, Fact & Law Issues, Infringement Actions, Summary Judgment, Constitutional Law, Congressional Duties & Powers, Copyright & Patent Clause