KSR International Co. v. Teleflex, Inc.
Issues
What is the standard for determining whether or not an invention is “obvious,” and thus unpatentable, under 35 U.S.C. §103(a)? Did the Federal Circuit correctly hold that an existing patent may only be invalidated for being obvious if there is clear and convincing proof that some “teaching, suggestion, or motivation” exists which would lead a person of ordinary skill in that art to combine prior art and create the new invention?
Teleflex, Inc. sued KSR International Co. in the United States District Court for the Eastern District of Michigan for allegedly infringing upon KSR’s adjustable automotive pedal assembly patent. KSR argued that Teleflex’s patent was invalid for being obvious because it combined preexisting pedal technology and preexisting electronic control technology. The District Court agreed with KSR that Teleflex’s patent was invalid for being obvious and granted KSR’s motion for summary judgment. On appeal, the United States Court of Appeals for the Federal Circuit reversed, holding that the patent was not obvious because KSR failed to establish that some “‘suggestion, teaching, or motivation’ would have led a person of ordinary skill” in the field of automotive pedal technology “to combine the relevant prior art teachings” to create Teleflex’s device. The Supreme Court will either uphold or change the definition of non-obviousness used in the United States for the last twenty years. Broadening the definition of non-obviousness could invalidate patents for any number of devices that combine pre-existing elements and open everything from the pharmaceutical industry to the computer software industry to greater competition.
Questions as Framed for the Court by the Parties
Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious”, and thus unpatentable under 35 U.S.C. §103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”
American scientists and artisans have the right to seek patents and licensing for their unique innovations. The United States Constitution grants Congress the exclusive authority “to promote the science and useful arts, by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries.” U.S. Const. Art. 1, § 8, Cl. 8.
Additional Resources
Law about... Patent