KSR v. Teleflex

In 2007, the US Supreme Court decided KSR v. Teleflex. Wikipedia has a nice summary. Findlaw has the complete text of the decision.

Teleflex patented an adjustable pedal.

Adjustable pedal? Yep. When driving a car, folks adjust the driver's seat forward and backward to place the steering wheel at a comfortable arm's length. However, some drivers have long arms and short legs (or vice versa), so the pedals are not always at a comfortable leg's length. There are a number of ways to put a pedal at a comfortable leg's length by sliding it closer to (or farther away from) the driver. These ways were well described in several references in the technical literature.

There are also a number of ways to send a signal from the pedal to the engine (or the brakes). One of these was a particular type of sensor. It had long been used in fixed pedals, but never in adjustable pedals. This sensor was also well described in several references in the technical literature.

Teleflex patented the combination of a particular type of adjustable pedal with this particular type of sensor. KSR started manufacturing and selling this combination. Teleflex sued.

It's an aphorism as old as the first patent system, most recently repeated in In re Wright:

Only God works from nothing. Man must work with old elements.

So, once an invention has been made, it's fairly straightforward to go to the literature and find all of the elements of the invention -- but not all in one place.

• If you'd like to use the invention without paying royalties, then you say, "It was obvious to combine these elements, so no patent should be granted. If one has already been granted, then it should be declared invalid."
• If you're the inventor, and would like to collect royalties, then you say, "No way was it obvious to combine these elements! Grant me my patent! If one has already been granted, then enforce it."

This debate has been around as long as the aphorism about God-the-inventor has been around.

The Court of Appeals for the Federal Circuit (the intermediate court tasked by Congress to decide such matters) settled this debate with the TSM test:

There must be some pre-existing (that is, before the invention was made) Teaching, Suggestion, or Motivation ("TSM") to combine the elements. This TSM doesn't have to be in the to-be-combined literature references themselves, but it has to be somewhere in the pre-existing literature. A lot of the time it is, and a lot of the time it isn't. Let's not speculate; let's look.

We require this sort of TSM filter, for otherwise every patent would be void, or every patent would be valid. Congress couldn't have intended either of these outcomes.

In KSR, the Federal Circuit applied the TSM test, held that the patent was valid, and ordered KSR to pay lots of money to Teleflex. KSR appealed to the Supreme Court.

The Supreme Court agreed with this test, but with a major twist:

In determining whether the subject matter of a patent claim is obvious, 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. ...
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 [a prior art patent] with a sensor.

It therefore reversed the Federal Circuit, held the patent invalid, and declared that KSR owed nothing to Teleflex.

Whoa.

• Not: "Would it have been obvious to the ordinary pedal designer to select these two elements -- out of all possible pairs of elements -- for combination?".
• Instead: "If the combination had been handed to an ordinary pedal designer on a silver platter, would he have recognized the benefit of the combination? That after-the-fact recognition is the motivation -- the M of the TSM test -- to make the combination in the first place.".

Lemme say it again:

Only God works from nothing. Man must work with old elements.

Go back to your high-school algebra class. The teacher gives you two equations in two variables, and says, "Solve the system of equations."; that is, "Find an x and a y that make both equations true.". This is a much more difficult -- and creative -- task than is the task, "Confirm that x=3 and y=7 solves this system.".

If KSR is allowed to stand, then no invention which could have been made from a combination of references -- which is all of them -- is valid, despite that fact that for a long time nobody ever actually did combine those references. The only exception is the situation in which a combination -- at an ordinary engineer's desk, and without stepping into the lab -- would not be seen by the engineer as being beneficial. An actual lab test will be required before this ordinary engineer will believe that this combination has benefits.

Fortunately, the Supreme Court still recognizes the authority of Congress to write whatever kind of Patent Act that it chooses to write. Congress has so far chosen to leave the word "obvious" undefined.

I propose that it add the following definition:

• A patent is "obvious" if it is a combination of two or three references in the literature, and
  • the references have been published before the patent was applied for, and could have been combined, on paper, by an ordinary engineer;
  • which said engineer, after having made this paper combination, would have seen that it would also be beneficial to do so in the lab, and in the marketplace.
• A patent is not "obvious" if it requires four or more such references to be combined.
• Even if a patent would be "obvious" under the foregoing rules, it is not "obvious" if:
  • this state of obviousness has persisted throughout the seven year period ending with the filing of the patent application; and
  • nobody ever published, in a single reference, an actual combination of these two or three references -- references which were allegedly so obvious and so beneficial to combine.

"But," I hear the doubters say, "some things are so obvious that no one even mentions them in the literature."

Whoa. "The literature" is not limited merely to patent publications, together with technical journals and their Popular Mechanics (and/or Scientific American) adjuncts.

No, "the literature" also includes the entire Internet, including the entire blogosphere. You can't piece together three blog posts to show that this new invention (for which a patent has been applied/granted) is actually old? Ridiculous!

Of course, having made that piece-together of blog posts, you're now going to have to let the patent owner/applicant:

• piece together three seven-years-or-older blog posts -- or some such-older references -- to show that the background technology was actually a lot older than seven years; and
• challenge you to find some single blog post -- or some single reference --, between the most recent such reference and the filing of the patent application, which actually combines these three much-older references.

I like seven years as being the appropriate period for the non-inventive engineer to search the literature, to combine the references which are obvious to combine, and to put something into the literature -- if only into a blog post -- which actually makes this oh-so-obvious combination. I like seven years as an incubation period because that is how long it takes a bankruptcy to get off your credit report -- long enough to demonstrate that things have changed, but no so long as to be punitive.

I'm prepared to select a number of years other than seven. You, however, must be prepared to present an explanation as to why this different period is a better incubation period for the non-inventive engineer to actually make this piece-together which is oh-so-obvious to make, and to leave behind some publicly-accessible record that he actually made it (and when!).

What say you? Please contact me.