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KSR International Co. v. Teleflex Inc.

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KSR International Co. v. Teleflex Inc.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), is a decision by the Supreme Court of the United States concerning the issue of obviousness as applied to patent claims.

Teleflex sued KSR International, claiming that one of KSR's products infringed Teleflex's patent on connecting an adjustable vehicle control pedal to an electronic throttle control. KSR argued that the combination of the two elements was obvious, and the claim was therefore not patentable. The district court ruled in favor of KSR, but the Court of Appeals for the Federal Circuit reversed in January 2005.

Oral arguments were heard by the Supreme Court on November 28, 2006. The petitioner, KSR, was represented by James W. Dabney and patent law academic John F. Duffy. Deputy solicitor general Thomas G. Hungar represented the government, which sided with the petitioner. Thomas C. Goldstein argued on behalf of the respondent, Teleflex.

On April 30, 2007, the Supreme Court unanimously reversed the judgment of the Federal Circuit, holding that the disputed claim 4 of the patent was obvious under the requirements of 35 U.S.C. §103, and that in "rejecting the District Court’s rulings, the Court of Appeals analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the "teaching-suggestion-motivation" (TSM) test.

Justice Kennedy emphasized that, while his opinion was directed at correcting the "errors of law made by the Court of Appeals in this case," it was necessary to reverse the Federal Circuit's decision in light of the Federal Circuit's misapplication of controlling Supreme Court law: "As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Kennedy's opinion stated, "A person of ordinary skill is also a person of ordinary creativity, not an automaton." He acknowledged that his description of a person having ordinary skill in the art (PHOSITA) does not necessarily conflict with Federal Circuit cases that described a PHOSITA as having "common sense" and who could find motivation "implicitly in the prior art."

When generally describing the obviousness test, the Court was largely uncontroversial:

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.

However, when the standard was applied to the facts before the Court, the Court stated:

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