KSR vs. Teleflex: Everything You Need to Know
KSR vs. Teleflex is a federal court case in which the Supreme Court rejected the Federal Circuit’s test for obviousness as it relates to patent validity. 6 min read
What Is KSR vs. Teleflex?
KSR International Co. vs. Teleflex, Inc. is a federal court case decision made on April 30, 2007, in which the Supreme Court rejected the Federal Circuit's test for obviousness as it relates to patent validity. The Supreme Court ruled 9-0 that the Court of Appeals had wrongly addressed the obviousness question in a too-rigid, too-narrow manner that went against Section 103 of the Patent Act and Supreme Court precedent.
KSR is a Canadian-based auto parts manufacturer that produces products for General Motors and Ford Motor Company. Teleflex is KSR's competitor and designs adjustable pedals. Teleflex sued KSR for patent infringement regarding Patent No. 6,237,565, also known as the "Engelgau patent," to which Teleflex held exclusive licenses.
The patent in question is a mechanism for combining an adjustable automotive pedal with an electronic sensor, allowing the pedal's position to transmit through a computer controlling the vehicle's throttle. The claim included details that the sensor needed to be placed on a fixed pivot point.
Since the 1970s, inventors have designed adjustable pedals that can change location in the footwell. U.S. Patent No. 5,010,782 (the "Asano" patent) supports this. In considering these precedents and similar patents, the Supreme Court noted that sensors on adjustable pedals were already disclosed in prior art, including sensors on a fixed pivot point.
The trial granted judgment in KSR's favor noting that the Engelgau's patent claim was obvious and therefore not subject to patent protections. Following the decision, the trial court compared the prior art to claims in the Engelgau patent and found little difference between the two.
On appeal, however, the Federal Circuit ruled that the lower court hasn't been strict enough in applying the TSM test ("teaching, suggestion, and motivation"). The Supreme Court discussed the legal standard for rejecting the Federal Circuit's more rigid approach and noted inconsistencies with the ways in which the TSM test are applied.
Previous cases the Supreme Court referred to were Hotchkiss vs. Greenwood (1850), Graham vs. John Deere (1966), United States vs. Adams (1966), Anderson's-Black Rock, Inc. vs. Pavement Salvage Company (1969), and Sakraida vs. AG Pro, Inc. (1976).
The Supreme Court noted that when a work is available, market forces and design incentives can prompt variations of it either in the same field or in a different one. If an individual with ordinary skill can implement the predictable variation, then the subject no longer qualifies for patentability.
In the end, the Supreme Court decided to establish the "Graham" standard, not the TSM standard, for testing obviousness. The Graham test considers:
- The combination of prior art in hindsight
- Any prior art teaching away from the patent combination
- Whether the invention solves long-felt but unresolved needs
- Whether the invention is a commercial success
The result is harder-to-obtain patents.
Following the decision, courts must look into interrelated teachings regarding multiple patents and the effects their demands make on the design community. If anyone with no skilled background can produce an item, it is no longer non-obvious.
Why Is KSR vs. Teleflex Important?
The decision had wide-ranging effects on the U.S. patent system. It reviewed the history of the TSM test noting its inconsistencies and how the test limits the obviousness question. The TSM test was introduced in 1984 to reject a patent for obviousness only when teachings, suggestions, or motivation from prior art proved the patent combination's acceptance as non-obvious.
The Supreme Court also discovered flaws in the Federal Circuit's analysis, noting that it was wrong to tell patent examiners to look only at the problem the inventor was trying to sole. The correct approach is the ask whether the patent combination was obvious or not to a person with ordinary skill.
Essentially, the Supreme Court's decision in KSR vs. Teleflex makes obviousness easier to prove by replacing the TSM test with more flexible standards. As a business owner or inventor, it's important to understand how the decision may affect your patent portfolio.
The Decision's Effect on Patents
Existing patent owners affected by the Supreme Court's decision may find themselves susceptible to validity challenges. Every patent issued is presumed to be valid, and proving it invalid is a heavy burden. Following the decision, patent challengers can argue against the presumption of validity because the United States Patent and Trademark Office (USPTO) failed to compare the Engelgau patent to the Asano patent.
As such, the KSR vs. Teleflex decision opens the door to broader challenges for patent holders. Existing patent owners facing validity questions may want to ask if the TSM test was applied and, if not, was the correct Graham analysis (from the Graham vs. John Deere case) applied?
Future patents will also be affected. In general, obtaining a patent after KSR vs. Teleflex will be more difficult because there now exists a broader range of prior art to which we must compare future patents. This isn't necessarily a bad thing, however, since patents obtained now are more valid than ever.
What's the Difference Between the TSM Test and the Graham Standard?
The TSM test was developed in the early 1980s to clarify patent obviousness. The test required a challenger to show any "teaching, suggestion, or motivation" that would result in a person of ordinary skill to combine prior art as detailed in the patent. The test was meant to combat "hindsight bias" where inventions seem obvious after the fact, but not so much when they're issued.
Under the TSM test, validity presumption might have been weakened. Important patents needed to be evaluated under the stricter Graham standard, which demands additional evidence to overcome obviousness. Any patent issued under the TSM test is now open to new challenges because it was the wrong test to use.
With the common-sense Graham standard, it may be easier to prove an invention is not patentable, which can make it more difficult to successfully file a patent application.
The Supreme Court's decision in the KSR case has been criticized for taking away objectivity and replacing it with a subjective test. Since the decision, both the Federal Circuit and the Patent Office have struggled to regain objectivity. Most patent examiners are not lawyers, meaning that they continue to provide obviousness rejections without being aware of the fallacies in their decisions.
Another criticism is that the Graham test does not prevent hindsight as effectively as the TSM test. Critics argue that the question of obviousness should come at the time of the invention, not after the fact. Others say the Supreme Court ignored legislative history in the KSR decision, essentially taking a step back.
Frequently Asked Questions
- What is Teleflex and the Engelgau Patent?
Teleflex, Inc. is a rival to KSR International Co. in the design and manufacture of adjustable pedals. Teleflex is the exclusive licensee of the Engelgau patent, the application for which was filed Aug. 22, 2000, as a continuation of the previous U. S. Patent No. 6,109,241 from Jan. 26, 1999. The patentee Steven J. Engelgau claims he invented the patent's subject matter Feb. 14, 1998. The Engelgau patent regards an adjustable electronic pedal described in a "simplified vehicle control pedal assembly that is less expensive, and which uses fewer parts and is easier to package within the vehicle."
- When is a patent obvious?
A patent is considered obvious if what's claimed as new is not the result of inventive activity. In other words, if parts of the invention are common knowledge, it's too obvious for a patent. Patents must show some kind of innovation in adding or modifying an existing element.
- When is a patent novel?
Novelty refers to an invention that's new and nonobvious. You must consider prior art documentation to make sure every element in the claim is new.
- How does the KSR decision change patent evaluations?
After the KSR decision, new standards for analyzing obviousness involved common sense and 20/20 hindsight. Level of ordinary skill, the scope and contents of prior art, commercial success, licenses, unsolved needs, and failures are also considered.
Understanding the legal implications of the KSR vs. Teleflex Supreme Court decision can be difficult, so be sure to consult a patent attorney if your invention's validity is questioned. If you need help with defending your patent's validity, post your job on UpCounsel's marketplace. Only the top 5 percent of lawyers are accepted to the site, and they come from prestigious schools like Yale Law and Harvard Law with an average of 14 years of legal experience.