1. © 2007 Roberts Mlotkowski & Hobbes, P.C.
KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL. 127 S. Ct (2007) Stanislaus Aksman, Esq.
© 2007 Roberts Mlotkowski & Hobbes, P.C.
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2. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
IMPACT ON:
Inventors/Businesses/Patent prosecution
GUIDANCE FROM USPTO
POST-KSR DECISIONS
RECOMMENDATIONS
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3. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
BACKGROUND
RELEVANT FACTS
Teleflex, exclusive licensee of U.S. Patent 6,237,565 (“Engelgau
patent”), accused KSR of infringing claim 4 of the Engelgau patent, which
recited:
A vehicle control pedal apparatus comprising:
a support adapted to be mounted to a vehicle structure;
an adjustable pedal assembly having a pedal arm moveable in fore and aft directions with respect to said support;
a pivot for pivotally supporting said adjustable pedal assembly with respect to said support and defining a pivot axis; and
an electronic control attached to said support for controlling a vehicle system;
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4. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
BACKGROUND
said apparatus characterized by said electronic control being responsive to said pivot for providing a signal that corresponds to pedal arm position as said pedal arm pivots about said pivot axis between rest and applied positions wherein the position of said pivot remains constant while said pedal arm moves in fore and aft directions with respect to said pivot.” (Emphasis Added.)
In summary, claim 4 was directed to a vehicle control pedal apparatus including:
a position-adjustable pedal assembly with an electronic pedal position sensor attached to the support member of the pedal assembly. The attachment of the sensor to the support member enabled the sensor to remain in a fixed position even if the pedal was adjusted.
During prosecution of the Engelgau application USPTO rejected for obviousness claim similar to claim 4, which did not require a sensor placed on a fixed support. Claim 4 was allowed because it had this limitation.
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5. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
BACKGROUND
DISTRICT COURT PROCEEDINGS
The District Court granted KSR’s motion for summary judgment of invalidity for obviousness, applying the framework of Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
“[T]he scope and content of the prior art are determined; differences between the prior art and the claims at issue are ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”
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6. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
BACKGROUND
The Federal Circuit has employed a “teaching suggestion or motivation” (TSM) test to apply the Graham factors with more uniformity and consistency, i.e.,
a patent claim is only proved obvious if the prior art, the problem’s nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art teachings.
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7. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
BACKGROUND
The trial court, using the TSM test, found very little difference between prior art and claim 4:
Asano (U.S. Patent 5,010,782) taught everything contained in claim 4 except using a sensor to detect the pedal’s position and transmit it to a computer controlling the throttle. That additional aspect was revealed in two other items of prior art. The court then held that KSR satisfied the TSM test, because:
(1) the state of the industry would lead inevitably to combinations of electronic
sensors and adjustable pedals,
(2) Rixon (U.S. Patent No. 5,819,593) provided the basis for these developments, and
(3) Smith (U.S. Patent No. 5,063,811) taught a solution to Rixon’s chafing problems
by positioning the sensor on the pedal’s fixed structure, which could lead to the
combination of a pedal like Asano with a pedal position sensor.
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8. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
BACKGROUND
According to District Court, if Engelgau cited Asano to the PTO, claim 4 would have been rejected as an obvious combination of Asano and another reference of record.
CAFC DECISION
CAFC reversed because the District Court failed to apply the TSM standard strictly enough, i.e., no findings of specific understanding or principle within a skilled artisan’s knowledge that would have motivated one with no knowledge of the invention to attach an electronic control to the Asano assembly’s support bracket (rather than to a movable pivot).
The District Court’s recourse to the nature of the problem to be solved was insufficient because, unless the “prior art references addressed the precise problem that the patentee was trying to solve,” the problem would not motivate an inventor to look at those references.
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9. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
BACKGROUND
Engelgau sought to provide a simpler, cheaper, smaller adjustable electronically controlled pedal.
Prior art (Asano and other references) tried to solve different problems than Engelgau, and a person of ordinary skill would not be motivated by the prior art to put a sensor on Asano-like pedal.
The District Court’s “obvious to try” analysis was improper.
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10. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
SUPREME COURT HELD:
Supreme Court cases on obviousness emphasized expansive and flexible approach inconsistent with CAFC’s rigid application of the TSM test as the only test for obviousness.
generally, a court must ask whether the improvement is more
than the predictable use of prior art elements according to
their established functions;
need for caution in granting a patent for a combination of
elements from prior art;
if work is available in one field, design incentives and other
market forces can prompt its variations in the same or different field;
if ordinarily skilled person can implement a predictable variation,
obviousness rejection is proper;
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11. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
if a known technique improves one device, but ordinarily skilled person
recognizes it would improve a similar device in the same way, §103 bars
patentability, unless its actual application is beyond the person’s skill.
Often a court needs to consider:
interrelated teachings of multiple patents;
demands known to the design community or in the marketplace;
knowledge of person of ordinary skill in the art.
Obviousness analysis needs to be explicit:
“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of obviousness.”;
if prior art teaches against combination of old elements, a successful means to
combine them is more likely to be non-obvious;
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12. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
a patent including several elements is not obvious merely by showing that each of the elements was known in prior art;
though common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed invention does;
market demand, rather than scientific literature, can drive design trends in those technologies which provide little literature discussion of combinations or obvious techniques.
“[g]ranting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.” (Emphasis added.)
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13. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
The Court’s general rule for obviousness:
neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.
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14. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
CAFC ERRORS:
1. Look only to the problem addressed by applicant/patentee.
Correct analysis:
Any need or problem known in the field of endeavor at time of invention, addressed by
the patent, can provide a reason for combining the elements as claimed.
2. Assumption that a person of ordinary skill wishing “to solve a problem will be led only to those elements of prior art designed to solve the same problem. …The primary purpose of Asano was solving the constant ratio problem; so, the court [CAFC] concluded, an inventor considering how to put a sensor on an adjustable pedal would have no reason to consider putting it on the Asano pedal… Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”
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15. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
CAFC ERRORS:
Asano’s design (regardless of its purpose) was an obvious example of an adjustable pedal with a sensor on a fixed pivot point. It makes little sense to assume that a designer working to make an adjustable electronic pedal would ignore Asano because Asano’s device solved a constant ratio problem. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”
categorically rejecting “obvious to try” analysis. If there is a design need or market pressure to solve a problem and “…a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.”(Emphasis added.)
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16. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
CAFC ERRORS:
rejected as improper District Court’s reliance on secondary references which did not address the same problem as Engelgau.
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17. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
The Court explained:
At the time of Engelgau’s invention “there … existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance. The Court of Appeals considered the issue too narrowly by, in effect, asking whether a pedal designer writing on a blank slate would have chosen both Asano and a modular sensor similar to the ones used in the Chevrolet truckline and disclosed in the ’068 patent. …
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 a benefit to upgrading Asano with a sensor.
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18. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
In automotive design, as in many other fields, the interaction of multiple components means that changing one component often requires the others to be modified as well. Technological developments made it clear that engines using computer-controlled throttles would become standard. As a result, designers might have decided to design new pedals from scratch; but they also would have had reason to make pre-existing pedals work with the new engines. Indeed, upgrading its own pre-existing model led KSR to design the pedal now accused of infringing the Engelgau patent.” (Emphasis added.)
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19. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
On the last page of opinion the Court stated:
“Where, as here, the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate. We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius.
These advances, once part of our shared knowledge define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws.” (Emphasis added.)
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20. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
DECISION
GENERAL SUMMARY
Graham’s principles are valid
Supreme Court wants the CAFC to be more flexible - improper to use TSM test as the only test for obviousness
Supreme Court: no bright lines
CAFC-tried to establish a bright line
Use caution in granting a patent for a combination of prior art elements, particularly if results are predictable
Market demand, rather than literature, may drive design trends in certain technologies
Problems/solutions in non-analogous fields may render claimed invention obvious, but evaluation must be from perspective of one of ordinary skill in the art
Obvious to try analysis is proper under certain circumstances
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21. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
Obviousness rejections based on conclusory statements are improper; rational basis must be provided
Hindsight analysis improper
Showing that each claimed element is known in the art does not establish obviousness
Prior art’s teaching against combination of old elements may be helpful in establishing non-obviousness
If claim recites combination of two known devices according to their established functions, it may still be important to identify a reason why one of ordinary skill would make the combination. 21
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22. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
IMPACT
IMPACT OF SUPREME COURT DECISION ON:
Inventors/Businesses/Patent Prosecution
Possibly longer and higher cost prosecution
TSM may still be used, but Examiners have more flexibility
More difficulty in patenting inventions based on combination of known elements
Higher scrutiny across families of applications - inconsistent statements
Possibly more need for declarations/affidavits
Potentially easier to invalidate issued patents
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23. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
GUIDANCE FROM USPTO
3 May 2007 MEMORANDUM Neutral-no significant changes
immediately
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24. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
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25. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
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26. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
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27. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
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28. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
GUIDANCE FROM USPTO
Board of Patent Appeals & Interferences:
expected to issue decisions based on the KSR holding
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29. Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.,
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.,
WL (CAFC 6/28/2007)
Takeda, owner of U.S. Patent 4,687,777, sued Alphapharm (generic drug maker), and
several other generics for infringement of the ‘777 patent.
District Court (S.D. N.Y.) held: claims 1, 2 and 5 of the ‘777 patent not obvious.
CAFC affirmed.
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30. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
Relevant Facts :
Patent directed to class of drugs known as TZDs for treatment of Type 2 diabetes.
Takeda’s commercial product is ACTOS ® wherein pioglitazone is the TZD
compound.
Claim 1:
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31. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
Critical portion is left moiety of the molecule, the pyridyl ring.
Claim 2 specifically recites pioglitazone, the 5-ethyl compound, i.e.,
Alphapharm asserted the claims at issue were obvious over a prior art TZD compound, disclosed in Table 1 of the ‘777 patent as compound b, whose left moiety :
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32. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
District Court:
Alphapharm failed to prove by clear and convincing evidence prima facie obviousness of the asserted claims:
no motivation to select compound b as the lead compound for
anti-diabetic research (i.e., a known compound most promising for
modification to improve diabetes treatment);
teaching away from its use;
unexpected results of pioglitazone’s non-toxicity.
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33. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
On Appeal:
Alphapharm argued:
District Court erred in holding ethyl-substituted compounds non-obvious in
view of methyl-substituted compound b.
CAFC: structural similarity creates prima facie obviousness, but for prima facie
case also need sufficient support in prior art for the change in structure.
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34. POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
This is consistent with KSR, which emphasized importance of identifying
“ a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”.
The Court in KSR found no inconsistency between the TSM test and the Graham analysis; while the test is not applied as the only test, it can provide helpful insight into obviousness analysis.
Alphapharm asserted:
person of ordinary skill would modify compound b:
homologation - ethyl group for the methyl group
ring walking 6-position to 5 - position
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35. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
CAFC: trial court proceedings and prior art refute this approach
District court reviewed prior art:
Takeda’s U.S. Patent 4,287,200 disclosing hundreds of millions of TZDs.
In prosecution: test results for 9 compounds, including compound b, to show superiority over prior art.
the court did not find those 9 compounds as best anti-diabetic compounds.
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36. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
Sodha II article teaching 101 TZD anti-diabetic compounds, including compound b, not pioglitazone; 3 compounds best for toxicity and activity, not compound b, which caused “considerable increases in body weight and brown fat weight.”
Takeda’s ‘779 patent covered subset of compounds in the ‘200 patent, compound b specifically claimed
“ the compounds in which these heterocyclic rings are substituted have become important, especially [compound b].”
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37. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
District Court concluded: one of ordinary skill would not have chosen the
compound b as lead compound because:
Sodha II (more reliable than ‘779 patent) negated ‘779 patent’s favorable statement;
The 3 compounds of Sodha II were best candidates as lead compounds, not compound b, with its negative side effects, increase in body weight;
Admissions from Alphapharm’s witnesses, supported conclusion;
Chief IP counsel-Sodha II article did not suggest to a skilled person using
the compound b because of negative side effects (increased body weight
and brown fat).
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38. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
Dr. Mosberg, Alphapharm’s technical expert, said medicinal chemist would find
such effects “undesirable”.
Takeda’s witness said that at time of Sodha II’s publication link between obesity
and Type 2 diabetes was known.
Thus: Sodha II taught away from pyridyl compounds because of adverse side effects
linked with compound b.
Alphapharm said: KSR mandated reversal because the prior art compound b fell within
“the objective reach of the claim”; homologation and ring-walking
would have been “obvious to try”.
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39. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
CAFC: KSR sanctioned “obvious to try” under constrained conditions,
“[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp…the fact that a combination was obvious to try might show that it was obvious under §103.” (Emphasis added.)
Prior art gave no predictable solutions, and disclosed a broad spectrum of compounds. Thus, obvious to try analysis improper.
Prior art taught against compound b, closest prior art. Hence evidence showed not obvious to try.
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40. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
Alphapharm’s obviousness assertion hinged on the district court agreeing that compound b was the lead compound. The District Court disagreed and CAFC concurred.
Alphapharm’s obviousness argument also fails because prior art failed to suggest the molecular modifications in compound b:
process of modifying lead compounds was not routine
conflicting expert testimony-Takeda’s expert more credible
two differences between pioglitazone and compound b:
homologate CH3 to C2H5
move from 6 - to 5-position
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41. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
District court concluded:
prior art suggested that homologation did not decrease negative side effects;
one compound in Sodha II, with no reported problems, but at least similar potency to compound b, was significantly structurally different than compound b;
no reasonable expectation in the art that ring walking would produce desirable changes.
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42. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd.
Few other Alphapharm’s obviousness arguments rebutted by evidence of unexpectedly superior properties over compound b:
compound b toxic to liver and heart ;
pioglitazone comparatively potent and showed no toxicity;
studies on 50 compounds, including pioglitazone, showed the latter as the only one without toxicity.
District court’s decision of non-obviousness affirmed.
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43. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc.
Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc., 485 F.3d 1157 (CAFC 2007)
Leapfrog sued defendants (“Fisher-Price”) for infringing its U.S. Patent 5,813,861, claim 25:
An interactive learning device, comprising:
a housing including a plurality of switches;
a sound production device in communication with the switches and including a processor and a memory;
at least one depiction of a sequence of letters, each letter being associable with a switch; and
a reader configured to communicate the identity of the depiction to the processor,
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44. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc.
wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter, the sound being determined by a position of the letter in the sequence of letters.
The claimed device allows a child to press a switch connected with a single letter in a word and hear the sound of the letter as it is used in the word. This enables the child to associate the sound of the letter with the letter itself and sound out the word one letter at a time to learn to read phonetically.
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45. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc.
District Court: claim 25 of the Leapfrog patent invalid as obvious in view of the combined teachings of two pieces of prior art in view of knowledge of one of ordinary skill in the art.
CAFC: Affirmed
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46. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc.
RELEVANT FACTS:
Prior art Bevan patent taught an electro-mechanical learning toy.
one embodiment:
housing containing a phonograph record as a voice storage means;
a speaker to play sounds from the record;
actuated electric motor to turn the record;
puzzle pieces, each imprinted with 1 letter from a word, fit into openings on top of
the housing;
depressing the puzzle pieces causes the motor to turn the record, align it with the
needles to play the sound associated with the letter on the puzzle piece.
Thus, Bevan produces the same results as device of claim 25.
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47. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc.
Prior art Texas Instruments Super Speak and Read (SSR) used mechanical switches to detect which page of a book and where on the page a user was touching words. An electronic processor, memory and a speaker then generated certain sounds associated with the first letter in the word which was selected and the remaining letters, grouped together when touched.
Trial Court: it would have been obvious to replace the electro-mechanical parts of the Bevan toy with the electronics (processor, memory, speaker) of the SSR device to arrive at the claimed device of the Leapfrog patent.
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48. Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc.
CAFC: one of ordinary skill in the children’s toy art would have found it obvious to combine the Bevan device with the SSR technology to update Bevan using modern electronic components to gain the commonly understood benefits of such adaptation,
decreased size;
increased reliability;
simplified operation;
reduced cost.
Even though SSR only permits generation of a sound of the first letters of a word, it does so using electronic means. The claimed combination is the adaptation of an old idea or invention using newer technology that is commonly available and understood in the art. Even though the Bevan/SSR combination lacked a reader, required in the Leapfrog claim, but that element was well known in the art at the time of the Leapfrog invention.
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49. Copyright 2007 Roberts, Mlotkowski & Hobbes, P.C.
POST-KSR DECISIONS Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc.
CAFC quoted the KSR opinion : “ The combination of familiar elements according to known methods likely to be obvious when it does no more than predictable results”.
The CAFC concluded that accommodating a prior art device, which accomplishes the same goal as the claimed device, to modern electronics would have been “reasonably obvious” to one of ordinary skill in designing children’s learning devices and “applying modern electronics to older mechanical devices has been commonplace in recent years.”
Evidence of commercial success was outweighed by a strong case of prima facie obviousness.
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50. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
RECOMMENDATIONS
Preparing patent applications:
- substantially as before, at least for now;
- if invention includes a combination of elements, describe result
different from that of prior art.
Prosecution:
- use arguments other than those based on the TSM test;
-if appropriate, argue that analogous art teaches against claimed invention;
-if appropriate, may also use arguments based on the TSM test;
- evidence of unexpected results-in application, if possible;
- interview Examiner early in prosecution (e.g., after first Office Action; before
filing response);
- obvious to try and hindsight reconstruction arguments to rebut obviousness
rejections may still be used in proper circumstances.
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51. KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.
THANK YOU!
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