Olek Pawlowski IEOR 190 Spring 2009 UC Berkeley Explaining the basic concepts of the landmark Supreme Court patent case of KSR vs. Teleflex and specifically looking in to the TSM test and how motivation for combining prior art has changed.

 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 obvious

 Diagram from KSR’s patent.  No. 6,237,565

 Controls the amount of air going into the engine  More air => more fuel  More fuel => more power  Used to be controlled using cables, but is now done electronically

 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).

 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

 Teaching, suggestion and motivation  Requires that some teaching, suggestion or motivation to combine the elements together to show that a claim is obvious  Used to prevent hind-sight bias

 "Graham factors:“obviousness should be determined by looking at the scope and content of the prior art; the level of ordinary skill in the art; the differences between the claimed invention and the prior art; and objective evidence of non-obviousness.  In addition, the court outlined examples of factors that show "objective evidence of non-obviousness". They are: commercial success; long-felt but unsolved needs; and failure of others. Source:

 In the TSM Test, prior art had to address the specific problem  In the case of KSR vs. Teleflex, prior art would have had to show a sensor and a pedal  Motivation for invention would have to be explicitly stated in prior art (patents and publications being most commonly used)  Teleflex won the appeal because motivation for combining a senor and a pedal was not found in prior art, even if it was “obvious to try.”

 Something could be deemed obvious if prior art leads one with ordinary skill in the art to believe that there is a reasonable chance of success with the combination  Reasonable chance of success is an important part of that statement: brute force trying of combinations doesn’t trump inventions

 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

 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

 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

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