The Supreme Court yesterday rendered a very positive decision that will enhance patent quality by ensuring that patents are not issued on combinations that are obvious. Ruling in the KSR Int'l Co. v. Teleflex Inc appeal, the court cautioned against granting patents for combination of elements found in prior art without properly considering whether the combination would have been predictable given the state of the industry. The court said:
[P]atent for a combination which only unites old elements with no change in their respective functions…obviously withdraws what is already known in the field to its monopoly and diminishes the resources available to skillful men.
The case revolved around a patent on adjustable electronic gas pedals used in cars, trucks and other four wheelers. Teleflex has an exclusive license on a patent for an adjustable gas pedal with an electronic sensor. KSR owns a patent on an adjustable gas pedal system for cars operated by cable as opposed to electronic sensors. Teleflex alleged that KSR infringed its patent by mounting an electronic sensor on its gas pedals. KSR countered that mounting an electronic sensor on an adjustable pedal was obvious to anyone in the automotive industry. Besides, earlier patents showed how adjustable gas pedals were made. They also showed how electronic sensors had to be mounted on these pedals. Therefore, Teleflex's patent was invalid.
Applying its long established teaching, suggestion, motivation (TSM) test, the Federal Circuit overruled KSR's arguments. The TSM test requires prior art to suggest that known elements can be combined in order for the combination to be obvious. Obviousness can also be determined based on the nature of the problem to be solved or on the knowledge of a person having ordinary skill in the art. The court held that even though different earlier patents revealed how to make adjustable gas pedals and how to mount electronic sensors on non-moving parts of the pedals, they did not mention that the two could be combined. These earlier patents were only trying to solve problems either with the working of adjustable gas pedals or electronic sensors.
Reversing the Federal Circuit's decision, the Supreme Court held that the Federal Circuit was wrong in rigidly sticking to the TSM test. Although the test was important, the court should also have looked at other factors, such as market demand, that might motivate combination of known elements. In this case, the court overlooked that KSR's combination of an electronic sensor with an adjustable gas pedal would have been obvious to anyone working in the automotive industry. The court therefore held Teleflex's patent to be invalid. The court observed that granting patents on advances that would “occur in the ordinary course” would retard technological progress.
Yesterday's ruling is a step in the right direction in improving patent quality. Improvement in obviousness standards will ensure that patents that do not really contribute anything to the state of the art are not issued.