West Case Update

Patent Invalid If Innovation Was Obvious Use of Existing Art

Description Supreme Court held a patent invalid for obviousness. The patent combined several existing elements into a new combination to solve a particular problem. This was obvious to a person of ordinary skill in the art involved.

Topic Intellectual Property

Key Words Patent; Validity; Obviousness; Combination of Elements

C A S E S U M M A R Y

Facts KSR, an auto parts maker, produced an adjustable mechanical accelerator pedal for Ford and received a patent for it. Later, GM hired KSR to supply pedals for certain vehicles. To make the pedal compatible for GM, KSR added a modular sensor. Teleflex sued KSR for infringement of its patent for a sensor attached to the pedal. KSR claimed the patent was invalid for obviousness. The trial court held for KSR. The Federal Circuit reversed. KSR appealed.

Decision Reversed and remanded. A patent claiming the combination of elements of prior art is obvious if the improvement is no more than the predictable use of prior art elements according to their established functions. A patent's subject matter can be proved obvious 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 question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Here, all components used in the final solution by KSR in providing the pedal assembly to GM were obvious applications of existing art.

Citation KSR International v. Teleflex, 127 S.Ct. 1727 (Sup. Ct., 2007)

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Patent Invalid If Innovation Was Obvious Use of Existing Art
Description	Supreme Court held a patent invalid for obviousness. The patent combined several existing elements into a new combination to solve a particular problem. This was obvious to a person of ordinary skill in the art involved.
Topic	Intellectual Property
Key Words	Patent; Validity; Obviousness; Combination of Elements
C A S E S U M M A R Y
Facts	KSR, an auto parts maker, produced an adjustable mechanical accelerator pedal for Ford and received a patent for it. Later, GM hired KSR to supply pedals for certain vehicles. To make the pedal compatible for GM, KSR added a modular sensor. Teleflex sued KSR for infringement of its patent for a sensor attached to the pedal. KSR claimed the patent was invalid for obviousness. The trial court held for KSR. The Federal Circuit reversed. KSR appealed.
Decision	Reversed and remanded. A patent claiming the combination of elements of prior art is obvious if the improvement is no more than the predictable use of prior art elements according to their established functions. A patent's subject matter can be proved obvious 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 question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Here, all components used in the final solution by KSR in providing the pedal assembly to GM were obvious applications of existing art.
Citation	KSR International v. Teleflex, 127 S.Ct. 1727 (Sup. Ct., 2007)