Ksr International Co. v. Teleflex Inc. - Obviousness Revisited - April 2008 - Intellectual Property and Technology Law

• Publication year: 2008
• Pages: 35
• Citation: Vol. 37 No. 4 Pg. 35

37 Colo.Law. 35 Colorado Lawyer 2008.

2008, April, Pg. 35. KSR International Co. v. Teleflex Inc. - Obviousness Revisited - April 2008 - Intellectual Property and Technology Law

The Colorado Lawyer
April 2008
Vol. 37, No. 4 [Page 35]

Articles
Intellectual Property and Technology Law
KSR International Co. v. Teleflex Inc. - Obviousness Revisited
by Jon R. Trembath

Intellectual Property and Technology articles are sponsored by the CBA Intellectual Property and Technology Law and Policy Sections. They provide information of interest to intellectual property and technology attorneys who advise clients on protecting and exploiting various forms of intellectual property in the marketplace.

Article Editors

Sean R. O'Dowd, Boulder, of Neugeboren Law Firm, PC - (303) 501-7405, sean@neugeborenlaw.com; John Ritsick Broomfield, of Flextronics International - (303) 927-4745 john.ritsick@flextronics.com

About the Author

Jon R. Trembath, Denver, of Merchant & Gould PC practices general intellectual property law with an emphasis on patent litigation. He has litigation experience involving patents, trademarks, copyrights, and trade secrets, and has appeared before the Court of Appeals for the Federal Circuit. Jon also counsels clients on intellectual property protection, and he has worked in the following technology areas: software, integrated circuit fabrications and design, radios, medical/dental devices, oil field exploration and production, underground boring, pipe lining, chemical manufacturing, waste remediation, and consumer goods - (303) 357-1670.

This article provides an overview of "obviousness" in terms of patent law. The discussion focuses on the U.S. Supreme Court's opinion in KSR International Co. v. Teleflex Inc. and federal appellate cases applying the analysis set forth in that opinion.

The field of patent law experienced many significant changes in 2007. This article focuses on one case in particular.(fn1) The opinion in KSR International Co. v. Teleflex Inc.2 likely will have the greatest impact of the cases decided in 2007. KSR revised the standards by which courts assess the requirement that, for an invention to be patentable, it must not be "obvious." In particular, KSR addresses how courts will consider "prior art" - that is, a combination of ideas in the public domain - to determine whether an invention is obvious and therefore not patentable.

In KSR, the U.S. Supreme Court rejected a restrictive test developed by the U.S. Court of Appeals for the Federal Circuit, which required a showing of a "teaching, suggestion or motive" to combine prior art references to invalidate a patent claim for being obvious. In its place, the Court adopted a more flexible test that focuses on whether the prior art "predicted" the combination, while acknowledging that a motive to combine prior art teachings may inform the analysis. Although KSR makes it easier to prove "obviousness," its full impact will only be determined as lower courts apply its teachings in future cases.

Background: Patents and Obviousness

The U.S. patent system is intended to promote innovation. A patent gives an inventor a limited time during which others may be precluded from practicing an invention. However, innovation may be stifled if advances adding insignificantly to society's collective knowledge are rewarded with patents, precluding others from use of the insignificant advances. Thus, there is an inherent tension between protecting worthy innovation and keeping commonly understood concepts available as building blocks for future innovation.

Section 103 of Title 35 of the U.S. Code is intended to help the U.S. Patent Office and the courts strike the correct balance when considering whether an innovation is worthy of patent protection. Congress determined that inventions that are "obvious" to those familiar with the relevant technological landscape lack the minimal amount of creativity required for a patent. Section 103 precludes patentability when

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.(fn3)

Patent law thus requires some minimal level of creativity for an invention to be patentable.

What is "obvious" under 35 U.S.C. § 103 apparently is not that obvious, because several Supreme Court opinions have addressed how obviousness should be determined. Lower courts have struggled with articulating viable standards for assessing obviousness. KSR, the Supreme Court's latest consideration of obviousness, rejected a standard adopted by the U.S. Court of Appeals for the Federal Circuit, and offers some guidance for analyzing obviousness. Understanding prior Supreme Court opinions puts KSR in context and helps assess its impact on the obviousness analysis.

History: U.S. Supreme Court Case Law

The generally applied roadmap for assessing obviousness under § 103 was set forth in Graham v. John Deere Co.(fn4) It provides:

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or non-obviousness 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.(fn5)

Graham has been the touchstone for the obviousness analysis since its issuance in 1966.

The Anderson's-Black Rock and Sakraida Opinions

Two other cases that address obviousness are Anderson's-Black Rock, Inc. v. Pavement Salvage Co.(fn6) and Sakraida v. AG Pro, Inc.(fn7) However, unlike Graham, these cases had been ignored, effectively vacated sub silencio, by the Federal Circuit. Because KSR arguably revives Anderson's-Black Rock and Sakraida, knowledge of these opinions is helpful to understanding KSR.

In Anderson's-Black Rock, the invention was placement of a radiant-heat burner on a standard asphalt paving machine.(fn8) Use of radiant heat with asphalt was known.(fn9) Placing the heater on the paving machine improved the bonding of subsequent layers of asphalt and thus improved the overall quality of the pavement placement.(fn10) However:

The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a "new or different function," within the test of validity of combination patents.(fn11)

According to the Court, an obviousness analysis could be informed by whether synergy existed in the combination of known elements. The Court stated, "A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here."(fn12)

The Court concluded:

while the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented. We conclude further that[,] to those skilled in the art[,] the use of the old elements in combination was not an invention by the obvious-nonobvious standard. Use of the radiant-heat burner in this important field marked a successful venture. But as noted, more than that is needed for invention.(fn13)

Sakraida was the last significant word on obviousness from the Supreme Court before KSR. The invention in Sakraida was the rapid release of a sheet of water to clean a barn floor.(fn14) The Sakraida Court quoted the following from Great A. & P. Tea Co. v. Supermarket Equipment Corp.:(fn15)

Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. . . . A patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. . . .(fn16)

In responding to the Court of Appeals' conclusion that the invention achieved a "synergistic result through a novel combination," the Sakraida Court stated:

We cannot agree that the combination of these old elements to produce an abrupt release of water directly on the barn floor from storage tanks or pools can properly be characterized as synergistic, that is, "result[ing] in an effect greater than the sum of the several effects taken separately." Rather, this patent simply arranges old elements with each performing the same function it had been known to perform. . . . Such combinations are not patentable under standards appropriate for a combination patent. . . . [T]his assembly of old elements that delivers water directly rather than through pipes or hoses to the barn floor falls under the head of "the work of the skillful mechanic, not that of the inventor." Exploitation of the principle of gravity adds nothing to the sum of useful knowledge where there is no change in the respective functions of the elements of the combination; this particular use of the assembly of old elements would be obvious to any person skilled in the art of mechanical application.(fn17)

The Anderson's-Black Rock and Sakraida opinions, read together, suggest that the Supreme Court believed an invention combining known prior art elements likely would be obvious, unless some synergy could be shown from the combination.

History: Federal Circuit Case Law

Formed in 1982,18 the Federal Circuit generally...