Nonobviousness II: Requiem for the Suggestion Test

1. Nonobviousness II: Requiem for the Suggestion Test Patent Law – Prof Merges 3.11.08

2. [T]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.

3. KSR Int’l v. Teleflex The claimed invention at issue in this case is a straightforward combination of (i) a pre-existing type of “adjustable pedal,” and (ii) a pre-existing type of “electronic control” that is commonly used on newer cars.

4. 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 [sic] and aft directions with respect to said support (18);

5. 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).

6. 298 F.Supp.2d 581, 592 (ED Mich 2003) The Court finds little difference between the teachings of the prior art and claims of the patent-in-suit. Asano teaches the structure and function of each of the claim 4 limitations, except those relating to an electronic pedal position sensor. Specifically, Asano teaches an adjustable pedal assembly pivotally mounted on a support bracket with the pedal moving in a fore and aft directions with respect to the support and the pivot remaining in a constant position during movement of the pedal arm. Thus, Asano "fairly suggests" the same mechanical assembly design asserted in claim 4 of the patent-in-suit.

7. Dist ct. opinion, cont’d The electronic pedal position sensor asserted in claim 4, however, is fully disclosed by other prior art references. Both the 503 Series pedal position sensor and the '068 patent teach an electronic pedal position sensor being responsive to the pedal pivot shaft and causing a signal to be sent to the engine to increase or decrease engine speed based on the rotation of the pivot shaft.

8. It is undisputed that in the mid-1990's more cars required the use of an electronic device, such as a pedal position sensor, to communicate driver inputs to an electronically managed engine. It is also undisputed that adjustable pedal assemblies have existed in the art since the late 1970's. Clearly it was inevitable that adjustable pedal assemblies would be joined with an electronic device to work in conjunction with modern electronically controlled engines.

9. [T]he Court finds that Defendant has offered sufficient evidence of a suggestion to combine a pivotally mounted adjustable pedal assembly with an off-the-shelf modular pedal position sensor to solve the problem of designing a less expensive, less complex, and more compact adjustable pedal assembly for use with electronically controlled vehicles. -- 298 F.supp.2d 594

10. Federal Circuit opinion The specification of the ’565 patent indicates that prior-art pedal assemblies incorporating an electronic control suffered from being too bulky, complex, and expensive to manufacture. See ’565 patent, col. 1, ll. 48-53. It was this problem that the ’565 patent set out to address. See id. col. 2, ll. 2-5.

11. Fed Cir. We agree with Teleflex that the district court did not apply the correct teaching-suggestion-motivation test. We also agree that, under that test, genuine issues of material fact exist, so as to render summary judgment of obviousness improper. -- Fed Cir case no. 04-1152, slip op at 10.

12. Under our case law, whether based on the nature of the problem to be solved, the express teachings of the prior art, or the knowledge of one of ordinary skill in the art, the district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ’565 patent. See Kotzab, 217 F.3d at 1371; Rouffet, 149 F.3d at 1357. That is, the district court was required to make specific findings as to a suggestion or motivation to attach an electronic control to the support bracket of the Asano assembly.

13. [T]he test requires that the nature of the problem to be solved be such that it would have led a person of ordinary skill in the art to combine the prior art teachings in the particular manner claimed. We have recognized this situation when two prior art references address the precise problem that the patentee was trying to solve. . . . In this case, the Asano patent does not address the same problem as the ’565 patent. The objective of the ’565 patent was to design a smaller, less complex, and less expensive electronic pedal assembly. The Asano patent, on the other hand, was directed at solving [another] problem.

14. A consortium of five major corporations, including Microsoft and Cisco have filed as amicus supporting the petition.  Their brief argues that the current structured test for obviousness is too easy a hurdle for patentees and that the formalities of the test undermines courts ability to truly determine whether an invention is obvious to one skilled in the art.

15. Steps to a Supreme Court decision On October 3, 2005, the Court asked the Solicitor General to file a brief expressing the views of the US Government.  The new Chief Justice (Roberts) took no part in the decision.

16. In late May of 2006, the Solicitor General, joined by the PTO, filed a brief in support of the Petitioner. The brief is sharply critical of the Federal Circuit law in the area: The Federal Circuit has transformed one means of establishing obviousness under [the Graham] framework—proof that the prior art provided a teaching, suggestion, or motivation for combining separate prior art references—into an inflexible requirement for determining obviousness.

17. As this case demonstrates, the Federal Circuit’s teaching-suggestion-motivation test extends patent protection to non-innovative combinations of familiar elements. The issue is important, because many patent applications rest on the combination of prior art references, and because extension of patent rights to obvious combinations of familiar elements retards, rather than advances, new discoveries.

18. The Federal Circuit’s test creates a substantial obstacle to showing that a claimed invention that simply combines known features without substantial innovation would have been obvious, because the test requires the party challenging the patent to come forward with affirmative evidence in the prior art of a teaching, suggestion, or motivation to combine the features. … That showing may be difficult or impossible even though the combination, on its face, would have been obvious. For example, such affirmative evidence may be lacking if the claim arose in a newly emerging technical field or if the combination was so obvious to persons skilled in the art that no one would have had need or incentive to record the trivial extension of the art. Brief of the United States as Amicus Curiae at 9, 14

19. The Court should reiterate that the role of the hypothetical person of ordinary skill is critical in the nonobviousness inquiry and that the person is understood to have “an ability to combine and modify prior art references that is consistent with the creativity and problem-solving skills that in fact are characteristic of those having ordinary skill in the art.”  FTC Report, ch. 4, at 15. SG’s Amicus Brief on the Merits at 25.

20. On June 26, 2006, the Court granted certiorari in KSR v. Teleflex, No. 04-1350 (U.S.), which presents the Supreme Court with the opportunity to decide the following question: 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.” Pet. for Cert. at i, in KSR v. Teleflex, No. 04-1350.

21. KSR (cont’d) The question is essentially a broad challenge to the obviousness jurisprudence of the Federal Circuit.

22. KSR: impacted the Federal Circuit even before Court decided case • Dystar Textilfarben v. CH Patrick, No. 06-1088 (Fed. Cir. Oct. 3, 2006),

23. In Dystar and three other cases, the Federal Circuit struck down the claims at issue as invalid for obviousness. In two, the lower tribunal’s obviousness holding is upheld; in the other two, the lower tribunal’s nonobviousness holding is reversed.

24. Dystar Textilfarben v. CH Patrick, 464 F.3d 1356 (FC 2006) • Bringing the “person of ordinary skill” back into the suggestion-motivation test

25. KSR INTERNATIONAL CO. v. TELEFLEX INC. 2007 U.S. LEXIS 4745 (April 30, 2007)

26. [T]he Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to com bine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. -- casebook p. 666

27. Sensor prior art • Pages 667-668: Integrated and freestanding pedal sensors, described and claimed in various prior art patents

28. P. 670 Engelgau had not included Asano among the prior art references, and Asano was not mentioned in the patent’s prosecution. Thus, the PTO did not have before it an adjustable pedal with a fixed pivot point.

29. Supreme Ct. holding “We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.”

30. Highlights from opinion • US v Adams and “teaching away”

31. P. 674 When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.

32. “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.” -- p. 674

33. A “court can take account of the inferences and creative step s that a person of ordinary skill in the art would employ.” -- 674

34. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.

35. When 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. 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.

36. In re O'Farrell, 853 F.2d 894, 903 (Fed.Cir.1988) “Obvious to try” is NOT the appropriate standard While absolute certainty is not necessary to establish a reasonable expectation of success, In re O'Farrell, 853 F.2d 894, 903-04, (Fed.Cir.1988), there can be little better evidence negating an expectation of success than actual reports of failure. A reasonable jury could conclude from these reports that one of ordinary skill in the art would not have had a reasonable expectation of success . . . – Life Technologies, supra.

37. Merges, “Uncertainty and the Standard of Patentability,” 7 [Berkeley] High Tech. L.J. 1 (1993).

38. P. 677 A person having ordinary skill in the art could have combined Asano with a pedal position sensor in a fashion encompassed by claim 4, and would have seen the benefits of doing so.

39. Leapfrog v. Fisher-Price, 485 F.3d 1157 (Fed Cir 2007) • Affirming District court (Delaware) • Deadlocked jury, submitted to judge

42. Fisher-Price argues that claim 25 is nothing more than the Bevan device, a toy that teaches reading based on the association of letters with their phonemic sounds, updated with modern electronics that were common by the time of the alleged invention. Fisher-Price also responds that particularized and specific motivations to combine need not be found in the prior art references themselves in the context of an improvement that arises from a desire to generally improve a known device (e.g., to make the product smaller, lighter, or less expensive) using newer technology. – at 1160

43. At 1161 “[T]he common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.”

44. Holding ‘861 patent “would have been obvious in view of the combination of Bevan, the SSR, and the knowledge of one of ordinary skill in the art. -- 1161

45. At 1162 We agree with the district court that one of ordinary skill in the art of children's learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.

46. 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, 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.