The Obviousness Standard in Patent Law: KSR International Co. v. Teleflex Inc.

The Obviousness Standard in Patent Law:
KSR International Co. v. Teleflex Inc.
Brian T. Yeh
Legislative Attorney
American Law Division
Summary
The Patent Act provides protection for processes, machines, manufactures, and
compositions of matter that are useful, novel, and nonobvious. Of these three statutory
requirements, the nonobviousness of an invention is often the most difficult to establish.
To help courts and patent examiners make the determination, the U.S. Court of Appeals
for the Federal Circuit developed a test called “teaching, suggestion, or motivation”
(TSM). This test provided that a patent claim is only proved obvious if the prior art, the
nature of the problem to be solved, or the knowledge of those skilled in the art, reveals
some motivation or suggestion to combine the prior art teachings. In KSR International
Co. v. Teleflex Inc. (550 U.S. ___ , No. 04-1350, decided April 30, 2007), the U.S.
Supreme Court held that the TSM test, if it is applied by district courts and patent
examiners as the sole means to determine the obviousness of an invention, is contrary
to Section 103 of the Patent Act and to Supreme Court precedents that call for an
expansive and flexible inquiry, including Graham v. John Deere Co. of Kansas City,

383 U.S. 1 (1966).

Background
Section 103(a) of the Patent Act provides one of the statutory bars for patentability¹
of inventions: a patent claim will be considered invalid if “the differences between the
subject matter sought to be patented and the prior art² are such that the subject matter as
a whole would have been obvious at the time the invention was made to a person having

¹ Each application for a patent consists of two primary parts: (1) a “specification,” which is a
written description of the invention enabling those skilled in the art to practice the invention, and
(2) one or more claims that define the scope of the subject matter which the applicant regards as
his invention. 35 U.S.C. § 112. Therefore, these claims define the scope of the patentee’s rights
under the patent. 3-8D^ONALDS.C^HI^SUM,C^HI^SUM^ONP^ATENTS§ 8.01 (2006).
² “Prior art” is a term that refers to the materials (usually called “references” in patent law) that
comprise the available knowledge regarding the subject matter of the invention sought to be
patented, such as other issued patents, publications, and evidence of actual uses or sales of the
technology. R^OGERS^CHECHTER&J^OHNT^HOM^AS,P^RI^NCI^P^{LES OF}P^ATENTL^AW4-1 (2d ed. 2004).

ordinary skill in the art to which said subject matter pertains.”³ In other words, for the
subject matter of an alleged invention or discovery to be patentable, it must be
“nonobvious” at the time of its creation. The nonobviousness requirement is met if the
subject matter claimed in a patent application is beyond the ordinary abilities of a person
of ordinary skill in the art in the appropriate field.⁴
In the landmark 1966 case Graham v. John Deere Co. of Kansas City, the Supreme
Court established an analytic framework for courts to determine “nonobviousness.” The
so-called Graham test describes several factors that must be assessed:
While the ultimate question of patent validity is one of law ... the § 103 condition,
which is but one of three conditions, each of which must be satisfied, lends itself to
several basic factual inquiries. 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 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. As indicia of obviousness or⁵
nonobviousness, these inquiries may have relevancy.
While a single prior art reference could form the basis of a finding of
nonobviousness, multiple prior art references are often involved in the analysis. In such
a situation, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) had
developed an approach in which an invention would be considered obvious only if there
was an explicit or implicit “teaching, suggestion, or motivation” that would lead a person
of ordinary skill to combine multiple prior art references to produce an invention.⁶ Such
a “teaching, suggestion, or motivation” (TSM) could have come from either (1) the
references themselves, (2) knowledge of those skilled in the art, or (3) the nature of a
problem to be solved, leading inventors to look to references relating to possible solutions
to that problem.⁷ Because § 103 of the Patent Act requires that an invention’s
obviousness be determined from the standpoint of a person having ordinary skill in the
art “at the time the invention was made,” the TSM test was designed, in part, to defend
against “the subtle but powerful attraction of a hindsight-based obviousness analysis.”⁸

³ 35 U.S.C. § 103(a).
⁴ The U.S. Court of Appeals for the Federal Circuit has previously set forth a list of factors that
are relevant to the inquiry into the level of ordinary skill in the art: “(1) the educational level of
the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems;
(4) rapidity with which innovations are made; (5) sophistication of the technology; and (6)
educational level of active workers in the field.” Environmental Designs, Ltd. v. Union Oil Co.,

713 F.2d 693, 698 (Fed. Cir. 1983).

⁵ 383 U.S. 1, 17-18 (1966).
⁶ Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F .3d 1568, 1572-73 (Fed. Cir. 1996);
Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1359-60 (Fed. Cir. 1999).
⁷ Pro-Mold, 75 F.3d at 1573.
⁸ In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).

KSR International v. Teleflex
The patents at issue in KSR International v. Teleflex pertain to an adjustable pedal
system (APS) for use with automobiles having electronic throttle-controlled engines.
Teleflex Inc. holds an exclusive license for the patent on this device that allows a driver
to adjust the location of a car’s gas and break pedal so that it may reach the driver’s foot.
KSR International Co. also manufactures an adjustable pedal assembly. Initially, KSR
supplied APS for cars with engines that use cable-actuated throttle controls; thus, the APS
that KSR manufactured included cable-attachment arms.⁹ In mid-2000, KSR designed
its APS to incorporate an electronic pedal position sensor in order for it to work with
electronically controlled engines, which are being increasingly used in automobiles. In
2002, Teleflex filed a patent infringement lawsuit against KSR after KSR had refused to
enter into a royalty arrangement, asserting that this new design came within the scope of
its patent claims. In defense, KSR argued that Teleflex’s patents were invalid because
they were obvious under § 103(a) of the Patent Act — that someone with ordinary skill
in the art of designing pedal systems would have found it obvious to combine an
adjustable pedal system with an electronic pedal position sensor for it to work with
electronically controlled engines.¹⁰
The District Court’s Opinion. The U.S. District Court for the Eastern District
of Michigan agreed with KSR that the patent was invalid for obviousness, granting¹¹
summary judgment in favor of KSR. The court determined that there was “little
difference between the teachings of the prior art and claims of the patent-in-suit.”¹²
Furthermore, the court opined that “it was inevitable” that APS would be combined with
an electronic device to work with electronically controlled engines.¹³
The Federal Circuit’s Opinion. Teleflex appealed the decision to the Federal
Circuit. The appellate court vacated the district court’s ruling, after finding that the
district court had made errors in its obviousness determination. Specifically, the Federal
Circuit noted that the district court had improperly applied the TSM test by not adhering
to it more strictly — the district court had reached its obviousness ruling “without making
findings as to the specific understanding or principle within the knowledge of a skilled
artisan that would have motivated one with no knowledge of [the] invention to make the¹⁴
combination in the manner claimed.” The Federal Circuit explained that district courts
are “required” to make such specific findings pursuant to Federal Circuit case law¹⁵
establishing the TSM standard. In regard to the patent in the case, the appellate court
found that the prior art in adjustable pedal design had been focused on solving the
“constant ratio problem” (described as when “the force required to depress the pedal

⁹ Teleflex Inc. v. KSR Int’l Co., 298 F. Supp. 2d 581, 584 (E.D. Mich. 2003).
¹⁰ Id. at 585.
¹¹ Id. at 596.
¹² Id. at 592.
¹³ Id. at 593.
¹⁴ Teleflex, Inc. v. KSR Int’l Co., 119 Fed. Appx. 282, 288 (Fed. Cir. 2005) (internal quotations
and citation omitted).
¹⁵ Id.

remains constant irrespective of the position of the pedal on the assembly”); whereas the
motivation behind the patented invention licensed to Teleflex was “to design a smaller,
less complex, and less expensive electronic pedal assembly.”¹⁶ In the Federal Circuit’s
view, unless the “prior art references address the precise problem that the patentee was
trying to solve,” the problem would not motivate a person of ordinary skill in the art to
combine the prior art teachings — here, the placement of an electronic sensor on an
adjustable pedal.¹⁷
The Supreme Court’s Opinion. The Supreme Court granted certiorari on June
26, 2006, to review the KSR case, in which the central question before the Court was
whether the Federal Circuit had erred in crafting TSM as the sole test for obviousness
under § 103(a) of the Patent Act.¹⁸ On April 30, 2007, the Court unanimously reversed
the Federal Circuit’s judgment, holding that the TSM test for obviousness was
incompatible with § 103 and Supreme Court precedents.¹⁹ Associate Justice Anthony
Kennedy, delivering the opinion of the Court, explained that the proper framework for a
court or patent examiner to employ when determining an invention’s obviousness is that
set forth in the Court’s 1966 opinion Graham v. John Deere Co. of Kansas City. That
analytical framework provides “an expansive and flexible approach” to the question of²⁰
obviousness that the “rigid” and “mandatory” TSM formula does not offer.
Justice Kennedy observed that the Graham approach, as further developed in three
subsequent Supreme Court cases decided within ten years of that case,²¹ is based on
several instructive principles for determining the validity of a patent based on the
combination of elements found in the prior art:
^!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, it is
likely obvious under § 103 and unpatentable.
^!If a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.²²
Justice Kennedy then provided additional guidance for courts in following these
principles. To determine whether there was an apparent reason to combine the known

¹⁶ Id.
¹⁷ Id.
¹⁸ KSR Int’l Co. v. Teleflex, Inc., 119 Fed. Appx. 282 (Fed. Cir. 2005), cert. granted, 74
U.S.L.W. 3720 (U.S. June 26, 2006) (No. 04-1350).
¹⁹ KSR Int’l Co. v. Teleflex Inc., 550 U.S. ___ , 127 S.Ct. 1727, 1735 (2007).
²⁰ Id. at 1739, 1741.
²¹ United States v. Adams, 383 U.S. 39 (1966); Anderson’s-Black Rock, Inc. v. Pavement Salvage
Co., 396 U.S. 57 (1969); Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976).
²² KSR, 127 S.Ct. at 1740.

elements in the manner claimed by the patent at issue, courts should explicitly engage in
an analysis that considers the following elements:
^!the 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.²³
He further explained that a court should not solely take into account the “precise
teachings” of the prior art, but rather can consider the “inferences and creative steps” that
a person of ordinary skill in the art would likely use.²⁴
The Federal Circuit’s TSM test, and its mandatory application, is contrary to Graham
and its progeny because it limits the obviousness analysis and is too formalistic, Justice
Kennedy argued.²⁵ In addition, he believed that the TSM test hindered the ability of
courts and patent examiners to rely upon “common sense.”²⁶ In dicta, the Court’s opinion
appears to imply that the TSM test could have contributed to issued patents or
unsuccessful challenges to the validity of certain patents that do not reflect true
innovation: “Granting 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.”²⁷ Finally, Justice
Kennedy criticized the Federal Circuit for “overemphasizing the importance of published
articles and the explicit content of issued patents.”²⁸
However, Justice Kennedy allowed that TSM provides “a helpful insight” — that a
patent comprised of several elements is not obvious just because each of those elements
was, independently, known in the prior art.²⁹ This “essence” of the TSM test is not
necessarily inconsistent with the Graham analysis, and thus he predicted that the Federal
Circuit has likely applied the TSM test on many occasions in ways that accord with the
Graham principles. It is the Federal Circuit’s rigid application of its TSM rule, however,
that the Court deemed was problematic in this case.³⁰
Justice Kennedy identified four specific legal errors committed by the Federal
Circuit. First, the appellate court had held that courts and patent examiners should look
only to the problem the patentee was trying to solve, rather than other problems addressed

²³ Id. at 1740-41.
²⁴ Id. at 1741.
²⁵ Id.
²⁶ Id. at 1742.
²⁷ Id. at 1741.
²⁸ Id. (“In many fields there may be little discussion of obvious techniques or combinations, and
market demand, rather than scientific literature, may often drive design trends.”).
²⁹ Id.
³⁰ Id.

by the patent’s subject matter.³¹ Second, the appellate court had assumed that a person
of ordinary skill trying to solve a particular problem will be led only to those elements of
prior art designed to solve the same problem; however, “common sense teaches ... 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.”³² The third error of the lower court was its erroneous conclusion that
a patent claim cannot be proved obvious by showing that the combination of elements was
“obvious to try”; instead, Justice Kennedy noted, “the fact that a combination was obvious
to try might show that it was obvious under § 103.”³³ The final error was the Federal
Circuit’s adherence to “rigid preventative rules” to avoid the risk of hindsight bias on the
part of courts and patent examiners, because such rules “deny factfinders recourse to
common sense.”³⁴
As to the specific patent claim at issue in this case, the Court adopted the
obviousness analysis of the district court and expressly held that the claim “must be found
obvious” in light of the prior art.³⁵
Concluding Observations. The KSR decision potentially may generate litigation
over the validity of some patents issued and upheld under the Federal Circuit’s TSM
standard; the uncertainty over the enforceability of certain patents³⁶ thus has ramifications
for lawsuits between alleged patent infringers and patent holders, as well as between
patentees and their licensees (for example, a patent licensee may want to challenge the
validity of the patent to avoid paying royalties or even the imposition of an injunction).
While the KSR Court rejected TSM as the sole test for obviousness, the Court did not
expressly invalidate it either. Instead, the Supreme Court explained that courts and patent
examiners, in evaluating a patent’s claimed subject matter for obviousness under § 103,
must use common sense, ordinary skill, and ordinary creativity in applying the Graham
factors and principles to the specific facts of the case.

³¹ Id. at 1742 (“Under the correct analysis, any need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for combining the
elements in the manner claimed.”).
³² Id.
³³ Id. (“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.”).
³⁴ Id.
³⁵ Id. at 1743-44 (“There then 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.”).
³⁶ For example, in addition to undermining the foundation of the TSM standard, the KSR decision
explicitly rejected Federal Circuit precedent that had held that “obvious to try” did not constitute
obviousness. There are some instances when “obvious to try” could be used to prove
obviousness, the KSR Court ruled. Id. at 1742. Existing patents that may be vulnerable to the
“obvious to try” assertion could face the prospect of being invalidated.