Not a Lexis Advance subscriber? Try it out for free.

KSR Int'l Co. v. Teleflex Inc.

Supreme Court of the United States

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

No. 04-1350

Case Summary

Procedural Posture

Respondent, licensees of a patent, alleged that petitioner, a competitor, infringed the licensees' patent for an accelerator pedal assembly for vehicles, but the competitor asserted that the patent claim in dispute was invalid as obvious under 35 U.S.C.S. § 103. Upon the grant of a writ of certiorari, the competitor appealed the judgment of the U.S. Court of Appeals for the Federal Circuit which reversed a summary judgment of patent invalidity.

Overview

To satisfy customer needs, the competitor modified its design for an adjustable pedal system for vehicles with cable-actuated throttles by adding a modular sensor to make the system compatible with vehicles using computer-controlled throttles. The licensees contended that the competitor infringed the patent claim of a position-adjustable pedal assembly with an electronic pedal position sensor attached a fixed pivot point. The U.S. Supreme Court unanimously held that the patent claim was invalid as obvious since mounting an available sensor on a fixed pivot point of the competitor's pedal was a design step well within the grasp of a person of ordinary skill in the relevant art, and the benefit of doing so was obvious. The marketplace created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for doing so. Further, the problem to be solved by the patent claim did not limit its application as prior art, the competitor's showing that it was obvious to try a combination of elements sufficiently supported the finding of obviousness, and the claim was the result of ordinary skill and common sense rather than innovation.

Outcome

The judgment reversing the summary judgment of invalidity was reversed, and the case was remanded for further proceedings.

LexisNexis® Headnotes

 

 

Patent Law > Nonobviousness > General Overview

HN1 35 U.S.C.S. § 103 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.

 

Patent Law > Nonobviousness > Elements & Tests > Prior Art

Patent Law > ... > Elements & Tests > Graham Test > Secondary Considerations

HN2  Prior Art

Under 35 U.S.C.S. § 103, the scope and content of 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. 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.

 

Patent Law > ... > Defenses > Patent Invalidity > Presumption of Validity

HN3  Presumption of Validity

By direction of 35 U.S.C.S. § 282, an issued patent is presumed valid.

Access the full text caseNot a Lexis Advance subscriber? Try it out for free.

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

KSR INTERNATIONAL CO., Petitioner v. TELEFLEX INC. et al.

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)

Prior History: ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT.

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

Disposition: Reversed and remanded.