KSR International Co. v. Teleflex Inc.
550 U.S. 398 (2007)

  • Teleflex owned a patent adding an electronic sensor to a car's gas pedal (to control the throttle). When KSR began marketing a similar product, Teleflex sued for infringement.
    • KSR argued that the combination of the two elements was obvious, and therefore Teleflex's patent was invalid because it failed the requirement for nonoviousness in 35 U.S.C. 103.
  • The Trial Court found for KSR. Teleflex appealed.
    • The Trial Court found that if you combine two other references (a patent by Asano and a patent by Chevy), you have all of the elements of all the claims. Therefore the patent isn't nonobvious.
  • The Appellate Court reversed. KSR appealed.
    • The Appellate Court found applied the TSM Test and found that the Teleflex patent was not obvious.
      • The TSM Test (Teaching, Suggestion & Motivation) says that a patent is obvious if some motivation or suggestion to combine the prior art teachings can be found in the prior art.
    • Basically, under the TSM Test, in order to be obvious, there would have to be a prior art reference for the gas pedal, and one for the electronic sensor, and a reference suggesting that the two should be combined.
    • The Court found that Asano wasn't a good reference because it was trying to solve a different problem than what Teleflex as trying to solve.
    • The Court found that "obvious to try" does not equal obvious.
      • Just because something makes sense to do, that doesn't mean it is obvious for purposes of 103.
    • The Court found that Asano was 'teaching away' from the Teleflex patent.
      • Teaching away basically means that the reference discourages a reader from trying the thing that the new patent eventually perfected.
        • For example, if a reference that talked about superconductors said, "there will never be a room-temperature superconductor" then it is teaching away from a room-temperature superconductor.
  • The US Supreme Court reversed and invalidated Teleflex's patent.
    • The US Supreme Court found that the TSM Test was not to be rigidly applied.
      • Artisans are not automatons, and are capable of making leaps of logic without having to have a reference telling them to do so.
      • The Court found that Asano was a good reference because skilled artisans will fit the teachings of multiple patents together like pieces of a puzzle, even if the reference is trying to solve a different problem.
    • The Court found that "obvious to try" is obvious.
    • The Court found that Asano wasn't teaching away from the Teleflex patent.
    • The Court noted that granting too many patents would impede innovation.
  • The TSM Test made the job of the patent examiner easy because it was very objective (you had to have references or the patent would be granted). After this case, the TSM Test can still be used, but it isn't dispositive, so a patent can still be obvious even if there isn't a direct reference suggesting that someone combine all the prior art references, the job of the patent examiner has become more difficult because there is now a subjective analysis of how a skilled artisan would have been able to combine all the prior art.