Articles

Will U.S. Supreme Court Take Up Petition Urging Fundamental Rewriting Of Federal Circuit Law On Invalidity Due To Obviousness?

Robinson Vu

On January 6th of this year, the United States Court of Appeals for the Federal Circuit, in a non-precedential decision, vacated an Eastern District of Michigan decision granting defendant’s motion for summary judgment of patent invalidity due to obviousness, ruling that the district court had erred in its analysis. Defendant sought certiorari from the U.S. Supreme Court. Earlier this month (on October 3), the Court (which has not yet ruled on whether to grant certiorari) invited the Solicitor General of the United States to submit briefs on behalf of the government as to whether the Federal Circuit’s “teaching-suggestion-motivation” formulation of the patent obviousness test in this and other cases is appropriate for determining an invention’s patentability. KSR Int’l Co. v. Teleflex Inc., U.S., No. 04-1350, briefs invited (Oct. 3, 2005).

The Eastern District Of Michigan’s Teleflex Opinion

The Teleflex case arose out of a dispute regarding KSR’s alleged infringement of Teleflex’s U.S. Patent No. 6,237,565 (the “‘565 Patent”) directed toward an adjustable pedal assembly for use with automobiles having engines that are controlled with an electronic throttle. Claim 4 of the ‘565 Patent, the only claim at issue, incorporated an electronic pedal position sensor in the pedal assembly. The electronic control was described as being responsive to the pedal pivot and as generating an electrical signal corresponding to the relative position of the gas pedal between the rest and applied position. Claim 4 provided for an assembly wherein the electronic control was mounted to the support bracket of the assembly. The configuration would avoid movement of the electronic control during adjustment of the pedal’s position on the assembly. Claim 4 reads, in full:

A vehicle control apparatus comprising:

a support adapted to be mounted to a vehicle structure;

an adjustable pedal assembly having a pedal arm moveable in force 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.

The district court concluded that, at the time of the invention, all of the limitations of claim 4 respectively existed in the prior art. Teleflex v. KSR, 298 F. Supp.2d 581, 592 (E.D. Mich. 2003). The court explained that U.S. Patent No. 5,010,782 issued to Asano et al. (the “Asano patent”), disclosed all of the structural limitations of claim 4 with the exception of the electronic control. Despite the absence of this element in the Asano patent (which made it impossible to declare the patent non-novel over Asano, given that such a finding requires that a single prior art reference contain all the limitations of a claim), the court granted defendant’s summary judgment motion based on obviousness, finding that electronic controls were well known in the art and that a person of ordinary skill in the art would have been motivated to combine Asano and electronic control references. As evidence of such motivation, the district court relied on the problem that claim 4 of the ‘565 Patent (seemingly) solved. The court determined from the patent’s specification that the invention of ‘565 Patent was intended to “solve the problem of designing a less expensive, less complex, and more compact [assembly] design.” Teleflex, 298 F. Supp.2d at 593. The court then explained that U.S. Patent No. 5,819,593, issued to Rixon et al., also “suffered from being too complex because the pedal position sensor is located in the pedal housing and its fore and aft movement with the adjustment of the pedal could cause problems with wire failure. Thus, the solution to the problem required an electronic control that does not move with the pedal arm while the pedal arm is being adjusted by the driver.” Id. at 594.

According to the court, the Rixon patent teaches the combination of an electronic control with an adjustable pedal assembly. Its difference vis à vis claim 4 of the ‘565 Patent is that its electronic control is attached to the pedal housing instead of the support bracket. Consequently, the electronic control moves during movement of the pedal assembly. However, the court found another reference in which the electronic control was located on the assembly. U.S. Patent No. 5,063,811, issued to Smith, expressly taught an electronic control attached to the support bracket of a pedal assembly. Moreover, the court found that Smith expressly provided the desirable feature of attaching the electronic control to a fixed member in order to avoid the wire failure problems disclosed in the Rixon ‘593 patent and (ostensibly) solved by the ‘565 Patent: “[T]he wiring of the electrical components must be secure from the possibility of chafing which will eventually result in electrical failure. Thus, the pedal assemblies must not precipitate any motion in the connecting wires themselves. . . .” Id. The court concluded that “a person of ordinary skill in the art with full knowledge of Asano and the modular pedal position sensors would be motivated to combine the two references to avoid problems with Rixon ‘593.” Id.

The Federal Circuit’s Teleflex Decision

A three judge panel of the Federal Circuit, comprising Judges Mayer, Schall, and Prost, vacated the district court’s decision, holding that the lower court’s “analysis applied an incomplete teaching-suggestion-motivation test in granting KSR summary judgment.” Teleflex Inc. v. KSR Int’l Co., No. 04-1152 (Jan. 6, 2005) (slip op.). The court held that the district court had invalidated claim 4 “without making finding[s] as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with knowledge of [the] invention to make the combination in the manner claimed.” Id., at *10. Specifically, “the district court should have made specific findings as to a suggestion or motivation to attach an electronic control to the support bracket of the Asano assembly.” Id., at *11. The lower court’s error, according to the panel, stemmed from the fact that the prior art references cited did not address “the precise problem that the patentee was trying to solve.” Id.

In this case, the Asano patent does not address the same problem as the ‘565 Patent. The objective of the ‘565 Patent was to design a smaller, less complex, and less expensive electronic pedal assembly. The Asano patent, on the other hand, was directed at solving the “constant ratio problem.” The district court’s reliance on the problems associated with the Rixon ‘593 patent similarly fails to provide a sufficient motivation to combine. This is because the Rixon ‘593 patent does not address the problem to be solved by the ‘595 Patent; rather, it suffers from the problem. The court did not explain how suffering from the problem addressed by the ‘595 patent would have specifically motivated one skilled in the art to attach an electronic control to the support bracket of the Asano assembly.

Id., at *12. In addition, the panel repudiated the district court’s reliance on the Smith patent for two reasons: (1) Smith’s disclosure that “the pedal assemblies must not precipitate any motion in the connecting wires themselves. . . ” does not necessarily go to the issue of motivation to attach the electronic control on the support bracket of the pedal assembly; and (2) the Smith patent does not relate to adjustable pedal assemblies. Id.

Review Sought

In April of this year, defendant KSR filed a petition for writ of certiorari with the Supreme Court, questioning the Federal Circuit’s “teaching-suggestion-motivation” test for obviousness. KSR’s petition states that the Federal Circuit erred in holding that an invention cannot be held obvious in the absence of some proven teaching, suggestion, or motivation (contemporaneous with the respective prior art references) that would have led a person of ordinary skill in the art to combine the relevant teachings in the manner claimed. KSR argued that this standard departed from governing Supreme Court precedents construing 35 U.S.C. § 103, particularly Graham v. John Deere Co., 385 U.S. 1, 148 (1966).

KSR was supported in its petition by amicus curiae briefs from twenty-four law professors,1 the Progress Freedom Foundation,2 and a consortium of corporations including Microsoft, Cisco, and Hallmark.3 The briefs all argued, in essence, that the Federal Circuit’s current standard for making a prima facie showing of invalidity due to obviousness is unduly skewed in favor of patentees, who rely on the statutory presumption of validity and the alleged absence of a suggestion to combine references so as effectively to undermine courts’ ability to make a determination that an alleged invention would be obvious to one skilled in the art. It is also notable that the factual and subjective nature of determining whether a hypothetical person of ordinary skill would have perceived such a teaching/suggestion/motivation arguably makes it very difficult, in practice, for a court ever to enter an obviousness invalidity determination on summary judgment, because patentee can always point to allegedly-unresolved issues of material fact as to the existence and strength of the alleged teaching/suggestion/motivation.

It remains unclear what the Solicitor General will tell the Supreme Court in his submission in response to the recent Call For Views Of The Solicitor General (“CVSG”) (the Solicitor will, as is customary, consult with the responsible governmental agency, in this case the United States Patent and Trademark Office, in formulating the government’s position as to whether granting certiorari on this issue would be desirable). Nor is it clear if the Supreme Court will even grant certiorari (though the CVSG certainly indicates some interest by the Court in the issue presented), and it has been sufficiently long since the Court ruled directly on the obviousness standards that predicting which way it might lean on the merits is impossible to determine. Patentees and their adversaries alike will thus be monitoring this case closely in view of the not-insignificant chance of a substantial shift in the balance of power from patentees to patent infringement defendants if the Supreme Court disclaims the teaching-suggestion-motivation analysis applied by the Federal Circuit in recent years.

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1 http://patentlaw.typepad.com/patent/ksramicus.pdf.
2 http://patentlaw.typepad.com/patent/ProgressFreedomFoundation.pdf.
3 http://patentlaw.typepad.com/KSR%20MicrosoftCisco_Amicus.pdf.

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