1. Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 8 Dr. Tal Lavian (408) 209-9112 Tlavian@berkeley.edu 321 Haviland Mondays 4:00-6:00 PatentEng-Berkeley-Lavian 1 Week 10: KSR Obviousness

2. 2 Aro Top 1964 – repair v reconstruction City of Elizabeth 1877 – experimental use Chakrabarty 1980 – patentable subject matter DSU v. JMS * 2006 – inducing infringement eBay 2006 – permanent injunctions Egbert 1881 - experimental use All Supreme Court except * Major Cases PatentEng-Berkeley-Lavian Week 10: KSR Obviousness

3. 3 Festo 2002 – pros.history estoppel Graver Tank [Graver Mfg v Linde] 1950 – doctrine of equivalents Graham v. Deere 1966 – obviousness Gurley * 1994 – teaching away Harvard Mouse [Canada] 2002 - patentable subject matter Knorr-Bremse * 2004 - willfulness KSR 2007 – obviousness All Supreme Court except * Major Cases PatentEng-Berkeley-Lavian Week 10: KSR Obviousness

4. 4 Markman 1994 – claim construction Monsanto (Canadian) * 2004 – plants Parker v Flook 1978 – patentable subject matter Seagate 1994 – teaching away State Street * 1998 – patentable subject matter Westinghouse v Boyden Brake 1898 – reverse DOE All Supreme Court except * Major Cases PatentEng-Berkeley-Lavian Week 10: KSR Obviousness

5. Defendant: KSR Intl. Manufacturing of All Pedal Systems Adjustable and fixed pedal modules Foot and hand-operated brakes Electronic throttle controls Electronic sensors PatentEng-Berkeley-Lavian 5 Week 10: KSR Obviousness

6. Plaintiff: Teleflex Inc. Diversified Global Company Medical Aerospace Commercial PatentEng-Berkeley-Lavian 6 Week 10: KSR Obviousness

7. What is it all about? Teleflex sues KSR Claims KSR infringed on their patent of connecting a sensor to a pedal to control throttle in a car KSR argued that it is not patentable because it is obviousKSR argued that it is not patentable because it is obvious PatentEng-Berkeley-Lavian 7 Week 10: KSR Obviousness

8. The Patent PatentEng-Berkeley-Lavian 8 Week 10: KSR Obviousness

9. Claim 4. A vehicle control pedal apparatus (12) comprising: a support (18) adapted to be mounted to a vehicle structure (20); an adjustable pedal assembly (22) having a pedal arm (14) moveable in force and aft directions with respect to said support (18); a pivot (24) for pivotally supporting said adjustable pedal assembly (22) with respect to said support (18) and defining a pivot axis (26); and an electronic control (28) attached to said support (18) for controlling a vehicle system; said apparatus (12) characterized by said electronic control (28) being responsive to said pivot (24) for providing a signal (32) that corresponds to pedal arm position as said pedal arm (14) pivots about said pivot axis (26) between rest and applied positions wherein the position of said pivot (24) remains constant while said pedal arm (14) moves in fore and aft directions with respect to said pivot (24). The Patent PatentEng-Berkeley-Lavian 9 Week 10: KSR Obviousness

10. KSR’s Defense Adding a sensor to the pedal is not patentable because it is obvious Won initially in district courts Teleflex won in appeals court by relaying on TSM test, which was one of the most widely used tests to determine obviousness prior to KSR PatentEng-Berkeley-Lavian 10 Week 10: KSR Obviousness

11. The Case DISTRICT COURT Ruling: Favor KSR Basis: Section 103 APPEALS COURT Ruling: Favor Teleflex Basis: TSM Test SUPREME COURT Ruling: Favor KSR Basis: Section 103 PatentEng-Berkeley-Lavian 11 Week 10: KSR Obviousness

12. “Obviousness” Title 35 USC Section 103 A patent may not be obtained though the invention […] if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Graham vs. Deere PatentEng-Berkeley-Lavian 12 Week 10: KSR Obviousness

13. “Obviousness” TSM Test there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious PatentEng-Berkeley-Lavian 13 Week 10: KSR Obviousness

14. Graham Analysis Since 1966, Graham vs. Deere established the objective framework for applying Sec. 103 (1) Determination of the scope and content of the prior art (2) Identification of any di ff erences between the prior art and the claims at issue (3) Determination of the level of ordinary skill in the pertinent art, that warrants the award of a patent. (4) Review of any relevant secondary considerations, such as commercial success, long felt but unresolved needs and failure of others KSR makes clear that the TSM test sets the patentability bar too low and allows too many technically trivial inventions to receive patent protection. PatentEng-Berkeley-Lavian 14 Week 10: KSR Obviousness

15. 15 Federal Circuit’s Four Errors The Supreme Court stated that the Federal Circuit erred when it applied the well-known teaching- suggestion-motivation (TSM) test in an overly rigid and formalistic way. PatentEng-Berkeley-Lavian Week 10: KSR Obviousness

16. 16 Federal Circuit’s Four Errors (KSR, 82 USPQ2d at 1397) (1) "[H]olding that courts and patent examiners should look only to the problem the patentee was trying to solve." (2) Assuming "that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem." PatentEng-Berkeley-Lavian Week 10: KSR Obviousness

17. 17 Federal Circuit’s Four Errors (KSR, 82 USPQ2d at 1397) (3) Concluding "that a patent claim cannot be proved obvious merely by showing that the combination of elements was 'obvious to try.' " (4) Overemphasizing "the risk of courts and patent examiners falling prey to hindsight bias" and as a result applying "[r]igid preventative rules that deny factfinders recourse to common sense." PatentEng-Berkeley-Lavian Week 10: KSR Obviousness

18. New Standard? Obvious to try not the new standard, certain conditions must apply: –Design need or market pressure to solve the problem –There are a finite number of foreseeable solutions to the problem –The result obtained is reasonably predictable This is closer to the broader Graham’s ruling in 1966 PatentEng-Berkeley-Lavian 18 Week 10: KSR Obviousness

19. The Final Ruling  Supreme Court ruled in favor of KSR unanimously  Justice Kennedy: “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”  Motivation could be found implicitly when it is obvious to try with the conditions listed in previous slide  Electrical sensors are becoming a norm over mechanical connections in everything, so market pressure dictated that KSR putting a sensor on the pedal is obvious as sensors are widely known to be more reliable and cheaper PatentEng-Berkeley-Lavian 19 Week 10: KSR Obviousness

20. “Obviousness” Supreme Court: Narrow and rigid application of TSM test “A person of ordinary skill in the art is also a person of ordinary creativity, not a automaton.” PatentEng-Berkeley-Lavian 20 Week 10: KSR Obviousness

21. Implications Application of the TSM Test PHOSITA KSR vs. Teleflex cited in about 60% of decisions related to obviousness (reversal rates still the same) PatentEng-Berkeley-Lavian 21 Week 10: KSR Obviousness

22. Results TSM test is no longer the standard for determining obviousness TSM can no longer be rigidly applied No inconsistency between TSM and Graham analysis. Overall, scope of what is obvious is broadened, and it is much easier to invalidate patent based on obviousness PatentEng-Berkeley-Lavian 22 Week 10: KSR Obviousness

23. KSR Obviousness Obvious to Try: If a combination was obvious to try, it might show that it was obvious under Sec. 103 depending on the instance. Anticipate Success: If a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and it leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Common Sense: Common sense teaches that familiar items may have obvious uses beyond their primary purposes and will be able to fit the teachings of multiple patents together like pieces of a puzzle. Combination of Familiar Elements: The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Predictable Results: A combination must do more than yield a predictable result. PatentEng-Berkeley-Lavian 23 Week 10: KSR Obviousness

24. KSR Obviousness (cont'd) Predictable Use: An improvement is more than the predictable use of prior art elements according to their established functions Synergy: The device did not create some new synergy, the combination did no more than they would in separate, sequential operation. Improvement: Improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way Range of Needs: The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen benefit to upgrading Asano with a sensor. PatentEng-Berkeley-Lavian 24 Week 10: KSR Obviousness

25. 25 KSR Summary reaffirmed the four-prong analysis for obviousness set forth in Graham; stressed that a reasoned analysis must be provided to support any conclusion of obviousness; recognized the continued viability of the "teaching, suggestion, or motivation" (TSM) approach when properly applied; PatentEng-Berkeley-Lavian Week 10: KSR Obviousness

26. 26 KSR Summary explained that TSM is not to be employed in a rigid or formalistic manner; clarified that TSM is not the exclusive test whereby obviousness may be determined; and explained that a broader range of rationales may be employed to support an obviousness rejection. PatentEng-Berkeley-Lavian Week 10: KSR Obviousness

27. Example The water faucets and towel dispensers that have built in sensors to sense the proximity of your hands and turn on the water, eject a towel. This would be considered an invention at the time, even though the underlying mechanical/electrical parts were all known and when combined certainly worked according to well known laws of mechanics and electronics. It is the combination that was the insight. Under this new "predictable" standard, this invention, like many others, would have to be declared obvious. PatentEng-Berkeley-Lavian 27 Week 10: KSR Obviousness