Anticipate This!™ | Patent and Trademark Law Blog

Teleflex, Inc., et al. v. KSR International Co.

Posted in Opinion Commentary by Jake Ward on July 8, 2006

The District Court Misapplied the “Teaching-Suggestion-Motivation” Test for Obviousness.

(Fed. Cir. 2005, 04-1152), non-precedential

The CAFC vacated a summary judgment of invalidity by the district court (ED Mich.) in favor of Teleflex.  In particular, the court found that the district court applied an incomplete teaching-suggestion-motivation test in finding Teleflex’s U.S. Pat. No. 6,237,565 (the ‘565 patent) obvious. 

Teleflex originally sued KSR and alleged that KSR’s pedal assembly infringed the ‘565 patent.  KSR defended on the basis that Claim 4 of ‘565 was obvious and invalid. 

The technology recited by the Teleflex ‘565 patent involves an adjustable gas pedal assembly pivotally mounted on a support bracket, with an electronic throttle control (or electronic control) being attached to the support for signaling the relative position of the gas pedal.  The objective of the patent was “to design a smaller, less complex, and less expensive electronic pedal assembly.” 

The district court’s finding of obviousness was based on the combination of the Asano patent (pedal assembly without the electronic control) with either 1.) the Rixon patent (assembly with sensor located in the pedal housing,  and suffering from the problem addressed by the ‘565 patent); 2.) the Smith patent (electronic control on the support bracket of a pedal assembly, and directed to a different problem than that addressed by the ‘565 patent); or 3.) the Redding patent (assembly with a non-constant pedal pivot during adjustment, and cited by the Examiner in combination with the Smith patent during prosecution).

The CAFC held that the Asano patent does not address the same problem as the ‘565 patent, and therefore one of ordinary skill would not be led to combine Asano with the other patents in the particular manner claimed.  In addition, the Rixon patent suffers from the same problem addressed by the ‘565 patent, but suffering from the problem “fails to provide a sufficient motivation to combine.”  Further, the Smith patent is directed to the problem of wire chafing, a problem different from that of the ‘565 patent, and also is not related to an adjustable pedal assembly.  A person of ordinary skill is led to combine prior art teachings when the references address the precise problem that the patentee was trying to solve.  Finally, with respect to the Redding patent, the CAFC held that “the court’s task is not to speculate as to what an examiner might have done if confronted with a piece of prior art” but to “make an independent obviousness determination.”  Speculation as to what the Examiner would have done if confronted with a different reference is not relevant to the court’s determination of obviousness.

In sum, the district court misapplied the teaching-suggestion-motivation test and a general issue of material fact existed as to whether a person of ordinary skill in the art would have been motivated to attach an electronic control to the support structure of the Asano pedal assembly.

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