[Ecommerce] SCOTUS Overrules Rigid US Appeals Court Approach to Patentability of Combinations of Existing Elements

[Seth Johnson]

This is a multi-part message in MIME format.
--

(This seems to me a very encouraging development with respect to
software patentability.  -- Seth)

> http://news.zdnet.com/21029595_226180220.html
> http://www.supremecourtus.gov/opinions/06pdf/041350.pdf



> http://news.zdnet.com/21029595_226180220.html


Supreme Court loosens patent 'obviousness' test

04/30/07

A unanimous U.S. Supreme Court ruling Monday backed away from a
decades old legal test that hightech firms argue has sparked an
abundance of obvious patents.

In a hotly anticipated decision that could make it easier to challenge
patents of questionable quality, the justices called for loosening the
current approach set by the nation's dedicated patent appeals court
for deciding when a combination of existing elements deserves patent
protection.

"Granting patent protection to advances that would occur in the
ordinary course without real innovation retards progress and may, in
the case of patents combining previously known elements, deprive prior
inventions of their value or utility," the court wrote in a majority
opinion (PDF) penned by Justice Anthony Kennedy.

The court heard oral arguments in November in the closely watched
case, which is rooted in an obscure dispute between KSR International
and Teleflex over vehicle gas pedal designs.

Technology companies were quick to praise the decision. Several
Silicon Valley heavyweights, including Intel and Cisco Systems, had
submitted supporting briefs urging the Supreme Court to revise the
lower court ruling.

"There will be a better opportunity for examiners to weed out patents
or applications that are not worthy of getting patents, and it will go
a long way toward reestablishing patent quality," said Emery Simon,
counselor to the Business Software Alliance, whose members include
Adobe Systems, Cisco Systems and Microsoft.

"What we don't know is how far the judges want the decision to go. We
don't know the answer to what the new rule is yet."
Todd Goldstein, attorney

Others were wary of the decision's broader economic implications on
patent holders and voiced concern that the decision will throw the
patent system into a state of confusion.

"I think it's very fair to say that it's going to be harder, more
costly and more timeconsuming for inventors to obtain U.S. patents in
all areas of technology, and particularly in areas with predictable
art, as we call them, such as mechanical inventions and software and
methods of doing business," Robert Greene Sterne, founding director of
the patent law firm Sterne Kessler Goldstein & Fox, said in a
conference call with reporters. He added that "existing patent
portfolios will need to be looked at, and existing relationships will
need to be evaluated."

Federal law dictates that an invention cannot be patented if a person
of "ordinary skill" in the same field could have come up with it. But
because it's easy to claim that an invention is obvious in hindsight,
the U.S. Court of Appeals for the Federal Circuit in 1982 concocted a
legal test designed to lead to a more objective conclusion.

That standard requires that for an invention to be declared obvious,
some "teaching, suggestion or motivation" must exist to show that a
person of ordinary skill would have thought to combine certain
elements.

Critics have argued that in practice, written evidence is required to
pass that test, which has made it harder to overturn allegedly obvious
patents and rendered it easier to obtain them from the U.S. Patent and
Trademark Office in the first place. Technology companies say that's
especially hard for them to prove because of the speedy rate at which
they tend to develop new products and ideas.

"It's not written down, it's not published, it's not the subject of
scholarly discussion, and that's where the Federal Circuit was
basically looking," Ed Black, president of the Computer and
Communications Industry Association, whose members include Google,
Oracle, Red Hat and Verizon, said in an interview with CNET News.com
on Monday.

The justices were sympathetic to those criticisms. "The diversity of
inventive pursuits and of modern technology counsels against limiting
the analysis in this way," they wrote. "In many fields it may be that
there is little discussion of obvious techniques or combinations, and
it often may be the case that market demand, rather than scientific
literature, will drive design trends."

Hardware and software makers have also argued that they're especially
threatened by the standard because they would like to be able to
rearrange at will the thousands of preexisting components that compose
their products. Some say the lax rules have sparked a stampede of
socalled patent "trolls" who make a living off predicting those
incremental changes to existing hightech inventions, landing patents,
and then going after companies for infringement.

Supporters of the Federal Circuit's test had argued that any changes
would dilute the value of their patents by erasing the
"predictability" they currently expect of the system. A number of
large, patentreliant companies like General Electric, 3M, Johnson &
Johnson and Procter & Gamble said they believed the current test has
been working well and is critical for protecting and encouraging
innovation.

Rather than throwing out the socalled "teaching, suggestion or
motivation" test entirely, the justices said they expected a number of
other factors to be considered as well, namely "the inferences and
creative steps that a person of ordinary skill in the art would
employ."

As a result of the ruling, "now I can just say, common sense, and a
person who was skilled in the particular area, would have known that
you could solve this problem using this technique," said Philip Swain,
a patent attorney with the firm Foley Hoag in Boston. "You don't have
to have a written suggestion or other evidence to suggest the
combination; you can just say the person would have inherently known
to use that solution."
--

> http://www.supremecourtus.gov/opinions/06pdf/041350.pdf


SUPREME COURT OF THE UNITED STATES
No. 04=961350
KSR INTERNATIONAL CO., PETITIONER v.
TELEFLEX INC. ET AL.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT

[April 30, 2007]


JUSTICE KENNEDY delivered the opinion of the Court.

Teleflex Incorporated and its subsidiary Technology Holding Company=97both =
referred to here as Teleflex=97sued KSR International Company for patent in=
fringement.The patent at issue, United States Patent No. 6,237,565B1, is en=
titled "Adjustable Pedal Assembly With Electronic Throttle Control." Supple=
mental App. 1. The patentee is Steven J. Engelgau, and the patent is referr=
ed toas "the Engelgau patent." Teleflex holds the exclusive license to the =
patent.

Claim 4 of the Engelgau patent describes a mechanismfor combining an electr=
onic sensor with an adjustable automobile pedal so the pedal's position can=
 be transmitted to a computer that controls the throttle in the vehicle's e=
ngine. When Teleflex accused KSR of infringing theEngelgau patent by adding=
 an electronic sensor to one of KSR's previously designed pedals, KSR count=
ered that claim 4 was invalid under the Patent Act, 35 U. S. C. =A7103, bec=
ause its subject matter was obvious.

Section 103 forbids issuance of a patent when "the differences between the =
subject matter sought to be patented and the prior art are such that the su=
bject matter asa whole would have been obvious at the time the invention wa=
s made to a person having ordinary skill in the art to which said subject m=
atter pertains."

In Graham v. John Deere Co. of Kansas City, 383 U. S. 1 (1966), the Court s=
et out a framework for applying the statutory language of =A7103, language =
itself based on the logic of the earlier decision in Hotchkiss v. Greenwood=
, 11 How. 248 (1851), and its progeny. See 383 U. S., at 15=9617. The analy=
sis is objective:

   "Under =A7103, 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, longfelt but unsolved needs, failure of others, etc.,
   mightbe utilized to give light to the circumstances
   surrounding the origin of the subject matter sought to be
   patented." Id., at 17=9618.

While the sequence of these questions might be reordered in any particular =
case, the factors continue to define the inquiry that controls. If a court,=
 or patent examiner,conducts this analysis and concludes the claimed subjec=
t matter was obvious, the claim is invalid under =A7103.

Seeking to resolve the question of obviousness with more uniformity and con=
sistency, the Court of Appeals for the Federal Circuit has employed an appr=
oach referred toby the parties as the "teaching, suggestion, or motivation"=
 test (TSM test), under which a patent claim is only proved obvious if "som=
e motivation or suggestion to combine the prior art teachings" can be found=
 in the prior art, the nature of the problem, or the knowledge of a person =
having ordinary skill in the art. See, e.g., AlSite Corp. v. VSI Int'l, Inc=
., 174 F. 3d 1308, 1323=961324 (CA Fed. 1999). KSR challenges that test, or=
 at least its application in this case. See 119 Fed. Appx. 282, 286=96290 (=
CA Fed. 2005). Because the Court of Appeals addressed the question of obvio=
usness in a manner contrary to =A7103 and our precedents, we granted certio=
rari, 547 U. S ___ (2006). We now reverse.

I

A

In car engines without computer controlled throttles, the accelerator pedal=
 interacts with the throttle via cable or other mechanical link. The pedal =
arm acts as a lever rotating around a pivot point. In a cableactuated throt=
tle control the rotation caused by pushing down the pedal pulls a cable, wh=
ich in turn pulls open valves in the carburetor or fuel injection unit. The=
 wider the valves open, the more fuel and air are released, causing combust=
ion to increase and the car to accelerate. When the driver takes his foot o=
ff the pedal, the opposite occurs as the cable is released and the valves s=
lide closed.

In the 1990's it became more common to install computers in cars to control=
 engine operation. Computercontrolled throttles open and close valves in re=
sponse toelectronic signals, not through force transferred from thepedal by=
 a mechanical link. Constant, delicate adjustments of air and fuel mixture =
are possible. The computer'srapid processing of factors beyond the pedal's =
position improves fuel efficiency and engine performance.

For a computer controlled throttle to respond to a driver's operation of th=
e car, the computer must knowwhat is happening with the pedal. A cable or m=
echanical link does not suffice for this purpose; at some point, anelectron=
ic sensor is necessary to translate the mechanicaloperation into digital da=
ta the computer can understand.

Before discussing sensors further we turn to the mechanical design of the p=
edal itself. In the traditional design a pedal can be pushed down or releas=
ed but cannot have its position in the footwell adjusted by sliding the ped=
al forward or back. As a result, a driver who wishes tobe closer or farther=
 from the pedal must either repositionhimself in the driver's seat or move =
the seat in some way. In cars with deep footwells these are imperfect solut=
ionsfor drivers of smaller stature. To solve the problem, inventors, beginn=
ing in the 1970's, designed pedals thatcould be adjusted to change their lo=
cation in the footwell. Important for this case are two adjustable pedals d=
isclosed in U. S. Patent Nos. 5,010,782 (filed July 28, 1989) (Asano) and 5=
,460,061 (filed Sept. 17, 1993) (Redding). The Asano patent reveals a suppo=
rt structure that houses the pedalso that even when the pedal location is a=
djusted relative tothe driver, one of the pedal's pivot points stays fixed.=
 The pedal is also designed so that the force necessary to pushthe pedal do=
wn is the same regardless of adjustments to its location. The Redding paten=
t reveals a different, sliding mechanism where both the pedal and the pivot=
 point are adjusted.

We return to sensors. Well before Engelgau applied for his challenged paten=
t, some inventors had obtained patents involving electronic pedal sensors f=
or computer controlled throttles. These inventions, such as the device disc=
losed in U. S. Patent No. 5,241,936 (filed Sept. 9, 1991) ('936), taught th=
at it was preferable to detect the pedal's position in the pedal assembly, =
not in the engine. The '936 patent disclosed a pedal with an electronic sen=
sor on a pivot point in the pedal assembly. U. S. Patent No. 5,063,811 (fil=
ed July 9, 1990) (Smith) taught that to prevent the wires connecting the se=
nsor to the computer from chafing and wearing out, and to avoid grime and d=
amage from the driver's foot, the sensor should be put on a fixed part of t=
he pedal assembly rather than in or on the pedal's footpad.

In addition to patents for pedals with integrated sensors inventors obtaine=
d patents for selfcontained modular sensors. A modular sensor is designed i=
ndependently of agiven pedal so that it can be taken off the shelf and atta=
ched to mechanical pedals of various sorts, enabling the pedals to be used =
in automobiles with computercontrolled throttles. One such sensor was discl=
osed in U. S. Patent No. 5,385,068 (filed Dec. 18, 1992) ('068). In 1994, C=
hevrolet manufactured a line of trucks using modular sensors"attached to th=
e pedal support bracket, adjacent to the pedal and engaged with the pivot s=
haft about which the pedal rotates in operation." 298 F. Supp. 2d 581, 589 =
(ED Mich. 2003).

The prior art contained patents involving the placement of sensors on adjus=
table pedals as well. For example, U. S. Patent No. 5,819,593 (filed Aug. 1=
7, 1995) (Rixon) discloses an adjustable pedal assembly with an electronic =
sensor for detecting the pedal's position. In the Rixon pedal the sensor is=
 located in the pedal footpad. The Rixon pedal was known to suffer from wir=
e chafing when the pedal was depressed and released.

This short account of pedal and sensor technology leadsto the instant case.

B

KSR, a Canadian company, manufactures and supplies auto parts, including pe=
dal systems. Ford Motor Companyhired KSR in 1998 to supply an adjustable pe=
dal systemfor various lines of automobiles with cableactuated throttle cont=
rols. KSR developed an adjustable mechanicalpedal for Ford and obtained U. =
S. Patent No. 6,151,976(filed July 16, 1999) ('976) for the design. In 2000=
, KSR was chosen by General Motors Corporation (GMC or GM)to supply adjusta=
ble pedal systems for Chevrolet and GMC light trucks that used engines with=
 computercontrolled throttles. To make the '976 pedal compatible with the t=
rucks, KSR merely took that design and added a modular sensor.

Teleflex is a rival to KSR in the design and manufacture of adjustable peda=
ls. As noted, it is the exclusive licensee of the Engelgau patent. Engelgau=
 filed the patent application on August 22, 2000 as a continuation of a pre=
viousapplication for U. S. Patent No. 6,109,241, which was filed on January=
 26, 1999. He has sworn he invented the patent's subject matter on February=
 14, 1998. The Engelgaupatent discloses an adjustable electronic pedal desc=
ribedin the specification as a "simplified vehicle control pedalassembly th=
at is less expensive, and which uses fewer parts and is easier to package w=
ithin the vehicle." Engelgau, col. 2, lines 2=965, Supplemental App. 6. Cla=
im 4 of the patent, at issue here, describes:

   "A vehicle control pedal apparatus comprising:

   a support adapted to be mounted to a vehicle structure;

   an adjustable pedal assembly having a pedal arm moveable in
   for[e] and aft directions with respect to said support;

   a pivot for pivotally supporting said adjustable pedal
   assembly with respect to said support and defining a pivot
   axis; and

   an electronic control attached to said support for controlling
   a vehicle system; said apparatus characterized by said
   electronic control being responsive to said pivot for
   providing a signal that corresponds to pedal arm position as
   said pedal arm pivots about said pivot axis between rest and
   applied positions wherein the position of said pivot remains
   constant while said pedal arm moves in fore and aft directions
   with respect to said pivot." Id., col. 6, lines 17=9636,
   Supplemental App. 8 (diagram numbers omitted).

We agree with the District Court that the claim discloses "a position adjus=
table pedal assembly with an electronic pedal position sensor attached to t=
he support member of the pedal assembly. Attaching the sensor to the suppor=
t member allows the sensor to remain in a fixed position while the driver a=
djusts the pedal." 298 F. Supp. 2d, at 586=96587.

Before issuing the Engelgau patent the U. S. Patent andTrademark Office (PT=
O) rejected one of the patent claims that was similar to, but broader than,=
 the present claim 4. The claim did not include the requirement that the se=
nsorbe placed on a fixed pivot point. The PTO concluded the claim was an ob=
vious combination of the prior art disclosed in Redding and Smith, explaini=
ng:

   "'Since the prior ar[t] references are from the field of
   endeavor, the purpose disclosed . . . would have been
   recognized in the pertinent art of Redding. Therefore it would
   have been obvious . . . to provide the device of Redding with
   the . . . means attached to a support member as taught by
   Smith.'" Id., at 595.

In other words Redding provided an example of an adjustable pedal and Smith=
 explained how to mount a sensor ona pedal's support structure, and the rej=
ected patent claim merely put these two teachings together.

Although the broader claim was rejected, claim 4 was later allowed because =
it included the limitation of a fixed pivot point, which distinguished the =
design from Redding's. Ibid. Engelgau had not included Asano among theprior=
 art references, and Asano was not mentioned in the patent's prosecution. T=
hus, the PTO did not have before it an adjustable pedal with a fixed pivot =
point. The patentissued on May 29, 2001 and was assigned to Teleflex.

Upon learning of KSR's design for GM, Teleflex sent a warning letter inform=
ing KSR that its proposal would violate the Engelgau patent. "'Teleflex bel=
ieves that any supplier of a product that combines an adjustable pedalwith =
an electronic throttle control necessarily employstechnology covered by one=
 or more'" of Teleflex's patents. Id., at 585. KSR refused to enter a royal=
ty arrangement with Teleflex; so Teleflex sued for infringement, assertingK=
SR's pedal infringed the Engelgau patent and two other patents. Ibid. Telef=
lex later abandoned its claims regarding the other patents and dedicated th=
e patents to thepublic. The remaining contention was that KSR's pedalsystem=
 for GM infringed claim 4 of the Engelgau patent.Teleflex has not argued th=
at the other three claims of the patent are infringed by KSR's pedal, nor h=
as Teleflex argued that the mechanical adjustable pedal designed by KSR for=
 Ford infringed any of its patents.

C

The District Court granted summary judgment in KSR's favor. After reviewing=
 the pertinent history of pedal design, the scope of the Engelgau patent, a=
nd the relevant prior art, the court considered the validity of the contest=
ed claim. By direction of 35 U. S. C. =A7282, an issued patent is presumed =
valid. The District Court applied Graham's framework to determine whether u=
nder summaryjudgment standards KSR had overcome the presumptionand demonstr=
ated that claim 4 was obvious in light of the prior art in existence when t=
he claimed subject matter was invented. See =A7102(a).

The District Court determined, in light of the expert testimony and the par=
ties' stipulations, that the level of ordinary skill in pedal design was "'=
an undergraduatedegree in mechanical engineering (or an equivalent amount o=
f industry experience) [and] familiarity withpedal control systems for vehi=
cles.'" 298 F. Supp. 2d, at 590. The court then set forth the relevant prio=
r art, including the patents and pedal designs described above.

Following Graham's direction, the court compared the teachings of the prior=
 art to the claims of Engelgau. It found "little difference." 298 F. Supp. =
2d, at 590. Asano taught everything contained in claim 4 except the use of =
asensor to detect the pedal's position and transmit it to thecomputer contr=
olling the throttle. That additional aspect was revealed in sources such as=
 the '068 patent and thesensors used by Chevrolet.

Under the controlling cases from the Court of Appeals for the Federal Circu=
it, however, the District Court was not permitted to stop there. The court =
was required also to apply the TSM test. The District Court held KSR had sa=
tisfied the test. It reasoned (1) the state of the industrywould lead inevi=
tably to combinations of electronic sensorsand adjustable pedals, (2) Rixon=
 provided the basis for these developments, and (3) Smith taught a solution=
 to the wire chafing problems in Rixon, namely locating the sensor on the f=
ixed structure of the pedal. This could lead to the combination of Asano, o=
r a pedal like it, with a pedalposition sensor.

The conclusion that the Engelgau design was obvious was supported, in the D=
istrict Court's view, by the PTO's rejection of the broader version of clai=
m 4. Had Engelgau included Asano in his patent application, it reasoned, th=
e PTO would have found claim 4 to be an obvious combination of Asano and Sm=
ith, as it had found the broader version an obvious combination of Redding =
and Smith. Asa final matter, the District Court held that the secondaryfact=
or of Teleflex's commercial success with pedals based on Engelgau's design =
did not alter its conclusion. The District Court granted summary judgment f=
or KSR.

With principal reliance on the TSM test, the Court of Appeals reversed. It =
ruled the District Court had not been strict enough in applying the test, h=
aving failed to make "'finding[s] as to the specific understanding or princ=
iple within the knowledge of a skilled artisan that would have motivated on=
e with no knowledge of [the] invention' . . . to attach an electronic contr=
ol to the support bracket of the Asano assembly." 119 Fed. Appx., at 288 (b=
rackets in original) (quoting In re Kotzab, 217 F. 3d 1365, 1371 (CA Fed. 2=
000)). The Court of Appeals held that the District Court was incorrect that=
 the nature of the problem to be solved satisfied this requirement because =
unless the "prior art references address[ed] the precise problem that the p=
atentee was trying to solve," the problem would not motivate an inventor to=
 look at those references. 119 Fed. Appx., at 288.

Here, the Court of Appeals found, the Asano pedal was designed to solve the=
 "'constant ratio problem'"=97that is, to ensure that the force required to=
 depress the pedal is the same no matter how the pedal is adjusted=97wherea=
s Engelgau sought to provide a simpler, smaller, cheaper adjustable electro=
nic pedal. Ibid. As for Rixon, the court explained, that pedal suffered fro=
m the problem of wire chafing but was not designed to solve it. In the cour=
t's view Rixon did not teach anything helpful to Engelgau's purpose. Smith,=
 in turn, did not relate to adjustable pedals and did not "necessarily go t=
o the issue of motivation to attach the electronic control on the support b=
racket of the pedal assembly." Ibid. When the patents were interpreted in t=
his way, the Court of Appeals held, they would not have led a person of ord=
inary skill to put a sensor on the sort of pedal described in Asano.

That it might have been obvious to try the combination of Asano and a senso=
r was likewise irrelevant, in the court's view, because "'"[o]bvious to try=
" has long been held not to constitute obviousness.'" Id., at 289 (quoting =
In re Deuel, 51 F. 3d 1552, 1559 (CA Fed. 1995)).

The Court of Appeals also faulted the District Court's consideration of the=
 PTO's rejection of the broader version of claim 4. The District Court's ro=
le, the Court of Appeals explained, was not to speculate regarding what the=
 PTO might have done had the Engelgau patent mentioned Asano. Rather, the c=
ourt held, the District Court was obliged first to presume that the issued =
patent was validand then to render its own independent judgment of obviousn=
ess based on a review of the prior art. The fact that the PTO had rejected =
the broader version of claim 4, theCourt of Appeals said, had no place in t=
hat analysis.

The Court of Appeals further held that genuine issues of material fact prec=
luded summary judgment. Teleflex had proffered statements from one expert t=
hat claim 4 "'was a simple, elegant, and novel combination of features,'" 1=
19 Fed. Appx., at 290, compared to Rixon, and from another expert that clai=
m 4 was nonobvious because, unlike in Rixon, the sensor was mounted on the =
support bracket rather than the pedal itself. This evidence, the court conc=
luded, sufficed to require a trial.

II

A

We begin by rejecting the rigid approach of the Court ofAppeals. Throughout=
 this Court's engagement with the question of obviousness, our cases have s=
et forth an expansive and flexible approach inconsistent with the way the C=
ourt of Appeals applied its TSM test here. To be sure, Graham recognized th=
e need for "uniformity and definiteness." 383 U. S., at 18. Yet the princip=
les laid down in Graham reaffirmed the "functional approach" of Hotchkiss, =
11 How. 248. See 383 U. S., at 12. To this end, Graham set forth a broad in=
quiry and invited courts, where appropriate, to look at any secondary consi=
derations that would prove instructive. Id., at 17.

Neither the enactment of =A7103 nor the analysis in Graham disturbed this C=
ourt's earlier instructions concerningthe need for caution in granting a pa=
tent based on thecombination of elements found in the prior art. For over a=
 half century, the Court has held that a "patent for a combination which on=
ly unites old elements with no change intheir respective functions . . . ob=
viously withdraws what isalready known into the field of its monopoly and d=
iminishes the resources available to skillful men." Great Atlantic & Pacifi=
c Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This i=
s a principal reason for declining to allow patents for what is obvious. Th=
e combination of familiar elements according to known methods is likely to =
be obvious when it does no more than yield predictable results. Three cases=
 decided after Graham illustrate the application of this doctrine.

In United States v. Adams, 383 U. S. 39, 40 (1966), a companion case to Gra=
ham, the Court considered the obviousness of a "wet battery" that varied fr=
om prior designs in two ways: It contained water, rather than the acids con=
ventionally employed in storage batteries; and its electrodes were magnesiu=
m and cuprous chloride, rather than zinc and silver chloride. The Court rec=
ognized that when a patent claims a structure already known in the prior ar=
t that is altered by the mere substitution of one element for another known=
 in the field, the combination must do more than yield a predictable result=
. 383 U. S., at 50=9651. It nevertheless rejected the Government's claim th=
at Adams's battery was obvious. The Court relied upon the corollary princip=
le that when the prior art teaches away from combining certain known elemen=
ts, discovery of a successful means of combining them is more likely to be =
nonobvious. Id., at 51=9652. When Adams designed hisbattery, the prior art =
warned that risks were involved in using the types of electrodes he employe=
d. The fact that the elements worked together in an unexpected and fruitful=
 manner supported the conclusion that Adams's design was not obvious to tho=
se skilled in the art.

In Anderson's Black Rock, Inc. v. Pavement Salvage Co., 396 U. S. 57 (1969)=
, the Court elaborated on this approach. The subject matter of the patent b=
efore the Court was a device combining two preexisting elements: a radianth=
eat burner and a paving machine. The device, the Court concluded, did not c=
reate some new synergy: The radiantheat burner functioned just as a burner =
was expected tofunction; and the paving machine did the same. The two in co=
mbination did no more than they would in separate,sequential operation. Id.=
, at 60=9662. In those circumstances, "while the combination of old element=
s performed a useful function, it added nothing to the nature and quality o=
f the radiantheat burner already patented," andthe patent failed under =A71=
03. Id., at 62 (footnote omitted).

Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court deriv=
ed from the precedents the conclusion that when a patent "simply arranges o=
ld elements with each performing the same function it had been known to per=
form" and yields no more than one would expect from such an arrangement, th=
e combination is obvious. Id., at 282.

The principles underlying these cases are instructive when the question is =
whether a patent claiming the combination of elements of prior art is obvio=
us. When a work is available in one field of endeavor, design incentives an=
d 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 predicta=
ble variation, =A7103 likely bars its patentability. For the same reason, i=
f a technique has been used to improve one device, and a person ofordinary =
skill in the art would recognize that it would improve similar devices in t=
he same way, using the technique is obvious unless its actual application i=
s beyond hisor her skill. Sakraida and Anderson'sBlack Rock are illustrativ=
e=97a court must ask whether the improvement is more than the predictable u=
se of prior art elements according to their established functions.

Following these principles may be more difficult in other cases than it is =
here because the claimed subject matter may involve more than the simple su=
bstitution of one known element for another or the mere application of a kn=
own technique to a piece of prior art ready for the improvement. Often, it =
will be necessary for a court to lookto interrelated teachings of multiple =
patents; the effects of demands known to the design community or present in=
 themarketplace; and the background knowledge possessed bya person having o=
rdinary skill in the art, all in order to determine whether there was an ap=
parent reason to combine the known elements in the fashion claimed by thepa=
tent at issue. To facilitate review, this analysis shouldbe made explicit. =
See In re Kahn, 441 F. 3d 977, 988 (CA Fed. 2006) ("[R]ejections on obvious=
ness grounds cannot be sustained by mere conclusory statements; instead, th=
ere must be some articulated reasoning with some rational underpinning to s=
upport the legal conclusion of obviousness"). 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 courtcan take accoun=
t of the inferences and creative steps thata person of ordinary skill in th=
e art would employ.

B

When it first established the requirement of demonstrating a teaching, sugg=
estion, or motivation to combineknown elements in order to show that the co=
mbination is obvious, the Court of Customs and Patent Appeals captured a he=
lpful insight. See Application of Bergel, 292 F. 2d 955, 956=96957 (1961). =
As is clear from cases such as Adams, a patent composed of several elements=
 is not proved obvious merely by demonstrating that each of its elements wa=
s, independently, known in the prior art. Although common sense directs one=
 to look with care at a patent application that claims as innovation the co=
mbination of two known devices according to their established functions, it=
 can be important to identify a reason that would have prompted a person of=
 ordinary skill in the relevant field to combine the elements in the way th=
e claimed new invention does. This is so because inventions in most, if not=
 all, instances rely upon building blocks longsince uncovered, and claimed =
discoveries almost of necessity will be combinations of what, in some sense=
, is already known.

Helpful insights, however, need not become rigid and mandatory formulas; an=
d when it is so applied, the TSMtest is incompatible with our precedents. T=
he obviousness analysis cannot be confined by a formalistic conception ofth=
e words teaching, suggestion, and motivation, or by overemphasis on the imp=
ortance of published articles and the explicit content of issued patents. T=
he diversity of inventive pursuits and of modern technology counselsagainst=
 limiting the analysis in this way. In many fields it may be that there is =
little discussion of obvious techniquesor combinations, and it often may be=
 the case that marketdemand, rather than scientific literature, will drive =
designtrends. Granting patent protection to advances thatwould occur in the=
 ordinary course without real innovationretards progress and may, in the ca=
se of patents combining previously known elements, deprive prior inventions=
 of their value or utility.

In the years since the Court of Customs and Patent Appeals set forth the es=
sence of the TSM test, the Court of Appeals no doubt has applied the test i=
n accord with these principles in many cases. There is no necessary inconsi=
stency between the idea underlying the TSM test and the Graham analysis. Bu=
t when a court transforms the general principle into a rigid rule that limi=
ts the obviousness inquiry, as the Court of Appeals did here, it errs.

C

The flaws in the analysis of the Court of Appeals relate for the most part =
to the court's narrow conception of the obviousness inquiry reflected in it=
s application of the TSM test. In determining whether the subject matter of=
 a patent claim is obvious, neither the particular motivation nor the avowe=
d 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 =A7=
103. One of the ways in which a patent's subject matter can beproved obviou=
s is by noting that there existed at the timeof invention a known problem f=
or which there was anobvious solution encompassed by the patent's claims.

The first error of the Court of Appeals in this case was to foreclose this =
reasoning by holding that courts and patent examiners should look only to t=
he problem the patentee was trying to solve. 119 Fed. Appx., at 288. The Co=
urt of Appeals failed to recognize that the problemmotivating the patentee =
may be only one of many addressed by the patent's subject matter. The quest=
ion 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. Und=
er 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.

The second error of the Court of Appeals lay in its assumption that a perso=
n of ordinary skill attempting tosolve a problem will be led only to those =
elements of prior art designed to solve the same problem. Ibid. The primary=
 purpose of Asano was solving the constant ratioproblem; so, the court conc=
luded, an inventor considering how to put a sensor on an adjustable pedal w=
ould have noreason to consider putting it on the Asano pedal. Ibid. Common =
sense teaches, however, that familiar items may have obvious uses beyond th=
eir primary purposes, and in many cases a person of ordinary skill will be =
able to fit theteachings of multiple patents together like pieces of a puzz=
le. Regardless of Asano's primary purpose, the design provided an obvious e=
xample of an adjustable pedal with a fixed pivot point; and the prior art w=
as replete with patents indicating that a fixed pivot point was an ideal mo=
unt for a sensor. The idea that a designer hoping to make anadjustable elec=
tronic pedal would ignore Asano because Asano was designed to solve the con=
stant ratio problemmakes little sense. A person of ordinary skill is also a=
 person of ordinary creativity, not an automaton.

The same constricted analysis led the Court of Appeals to conclude, in erro=
r, that a patent claim cannot be provedobvious merely by showing that the c=
ombination of elements was "obvious to try." Id., at 289 (internal quotatio=
n marks omitted). 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 wi=
thinhis or her technical grasp. If this leads to the anticipated success, i=
t is likely the product not of innovation but of ordinary skill and common =
sense. In that instance the fact that a combination was obvious to try migh=
t show that itwas obvious under =A7103.

The Court of Appeals, finally, drew the wrong conclusion from the risk of c=
ourts and patent examiners falling prey to hindsight bias. A factfinder sho=
uld be aware, of course, of the distortion caused by hindsight bias and mus=
t be cautious of arguments reliant upon ex post reasoning. See Graham, 383 =
U. S., at 36 (warning against a "temptation to read into the prior art the =
teachings of the invention in issue" and instructing courts to "'guard agai=
nst slipping into the use of hindsight'" (quoting Monroe Auto Equipment Co.=
 v. Heckethorn Mfg. & Supply Co., 332 F. 2d 406, 412 (CA6 1964))). Rigid pr=
eventative rules that deny factfinders recourse to common sense, however, a=
re neither necessary under our case law nor consistent with it.

We note the Court of Appeals has since elaborated a broader conception of t=
he TSM test than was applied in the instant matter. See, e.g., DyStar Texti=
lfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F. 3d 1356, 136=
7 (2006) ("Our suggestion test is in actuality quite flexible and not only =
permits, but requires, consideration of common knowledge and common sense")=
; Alza Corp. v. Mylan Labs., Inc., 464 F. 3d 1286, 1291 (2006) ("There is f=
lexibility in our obviousness jurisprudence because a motivation may be fou=
nd implicitly in the prior art. We do not have a rigid test that requires a=
n actualteaching to combine . . ."). Those decisions, of course, are not no=
w before us and do not correct the errors of law made by the Court of Appea=
ls in this case. The extent to which they may describe an analysis more con=
sistent withour earlier precedents and our decision here is a matterfor the=
 Court of Appeals to consider in its future cases.What we hold is that the =
fundamental misunderstandingsidentified above led the Court of Appeals in t=
his case to apply a test inconsistent with our patent law decisions.

III

When we apply the standards we have explained to the instant facts, claim 4=
 must be found obvious. We agree with and adopt the District Court's recita=
tion of the relevant prior art and its determination of the level of ordina=
ry skill in the field. As did the District Court, we see little difference =
between the teachings of Asano and Smith and the adjustable electronic peda=
l disclosed in claim 4 of the Engelgau patent. A person having ordinary ski=
ll inthe art could have combined Asano with a pedal positionsensor in a fas=
hion encompassed by claim 4, and wouldhave seen the benefits of doing so.

A

Teleflex argues in passing that the Asano pedal cannot be combined with a s=
ensor in the manner described by claim 4 because of the design of Asano's p=
ivot mechanisms. See Brief for Respondents 48=9649, and n. 17. Therefore, T=
eleflex reasons, even if adding a sensor to Asano wasobvious, that does not=
 establish that claim 4 encompasses obvious subject matter. This argument w=
as not, however,raised before the District Court. There Teleflex was conten=
t to assert only that the problem motivating the invention claimed by the E=
ngelgau patent would not lead to thesolution of combining of Asano with a s=
ensor. See Teleflex's Response to KSR's Motion for Summary Judgment ofInval=
idity in No. 02=9674586 (ED Mich.), pp. 18=9620, App. 144a=96146a. It is al=
so unclear whether the current argument was raised before the Court of Appe=
als, where Teleflex advanced the nonspecific, conclusory contention thatcom=
bining Asano with a sensor would not satisfy the limitations of claim 4. Se=
e Brief for PlaintiffsAppellantsin No. 04=961152 (CA Fed.), pp. 42=9644. Te=
leflex's own expert declarations, moreover, do not support the point Telefl=
ex now raises. See Declaration of Clark J. Radcliffe, Ph.D., Supplemental A=
pp. 204=96207; Declaration of Timothy L. Andresen, id., at 208=96210. The o=
nly statement ineither declaration that might bear on the argument isfound =
in the Radcliffe declaration:

   "Asano . . . and Rixon . . . are complex mechanical linkage
   based devices that are expensive to produce and assemble and
   difficult to package. It is exactly these difficulties with
   prior art designs that [Engelgau] resolves. The use of an
   adjustable pedal with a single pivot reflecting pedal position
   combined with an electronic control mounted between the
   support and the adjustment assembly at that pivot was a
   simple,elegant, and novel combination of features in the
   Engelgau '565 patent." Id., at 206, =B616.

Read in the context of the declaration as a whole this is best interpreted =
to mean that Asano could not be used to solve "[t]he problem addressed by E=
ngelgau '565[:] toprovide a less expensive, more quickly assembled, and sma=
ller package adjustable pedal assembly with electroniccontrol." Id., at 205=
, =B610.

The District Court found that combining Asano with apivotmounted pedal posi=
tion sensor fell within the scopeof claim 4. 298 F. Supp. 2d, at 592=96593.=
 Given the sigificance of that finding to the District Court's judgment, it=
 is apparent that Teleflex would have made clearer challenges to it if it i=
ntended to preserve this claim. In light ofTeleflex's failure to raise the =
argument in a clear fashion,and the silence of the Court of Appeals on the =
issue, we take the District Court's conclusion on the point to be correct.

B

The District Court was correct to conclude that, as of the time Engelgau de=
signed the subject matter in claim 4, itwas obvious to a person of ordinary=
 skill to combine Asanowith a pivotmounted pedal position sensor. There the=
n existed a marketplace that created a strong incentive toconvert mechanica=
l pedals to electronic pedals, and the prior art taught a number of methods=
 for achieving this advance. The Court of Appeals considered the issue toon=
arrowly by, in effect, asking whether a pedal designer writing on a blank s=
late would have chosen both Asanoand a modular sensor similar to the ones u=
sed in the Chevrolet truckline and disclosed in the '068 patent. The Distri=
ct Court employed this narrow inquiry as well,though it reached the correct=
 result nevertheless. The proper question to have asked was whether a pedal=
 designer of ordinary skill, facing the wide range of needscreated by devel=
opments in the field of endeavor, wouldhave seen a benefit to upgrading Asa=
no with a sensor.

In automotive design, as in many other fields, the interaction of multiple =
components means that changing one component often requires the others to b=
e modified as well. Technological developments made it clear that engines u=
sing computercontrolled throttles would becomestandard. As a result, design=
ers might have decided todesign new pedals from scratch; but they also woul=
d havehad reason to make preexisting pedals work with the newengines. Indee=
d, upgrading its own preexisting model led KSR to design the pedal now accu=
sed of infringing the Engelgau patent.

For a designer starting with Asano, the question was where to attach the se=
nsor. The consequent legal question, then, is whether a pedal designer of o=
rdinary skill starting with Asano would have found it obvious to put thesen=
sor on a fixed pivot point. The prior art discussedabove leads us to the co=
nclusion that attaching the sensor where both KSR and Engelgau put it would=
 have beenobvious to a person of ordinary skill.

The '936 patent taught the utility of putting the sensor on the pedal devic=
e, not in the engine. Smith, in turn, explained to put the sensor not on th=
e pedal's footpad but instead on its support structure. And from the known =
wirechafing problems of Rixon, and Smith's teaching that "the pedal assembl=
ies must not precipitate any motion in the connecting wires," Smith, col. 1=
, lines 35=9637, Supplemental App. 274, the designer would know to place th=
e sensor on a nonmoving part of the pedal structure. The most obvious nonmo=
ving point on the structure from which a sensor can easily detect the pedal=
's position is apivot point. The designer, accordingly, would follow Smith =
in mounting the sensor on a pivot, thereby designing an adjustable electron=
ic pedal covered by claim 4.

Just as it was possible to begin with the objective toupgrade Asano to work=
 with a computercontrolled throttle, so too was it possible to take an adju=
stable electronicpedal like Rixon and seek an improvement that would avoid =
the wirechafing problem. Following similar steps to those just explained, a=
 designer would learn from Smith toavoid sensor movement and would come, th=
ereby, to Asano because Asano disclosed an adjustable pedal with a fixed pi=
vot.

Teleflex indirectly argues that the prior art taught away from attaching a =
sensor to Asano because Asano in its view is bulky, complex, and expensive.=
 The only evidenceTeleflex marshals in support of this argument, however, i=
s the Radcliffe declaration, which merely indicates thatAsano would not hav=
e solved Engelgau's goal of making a small, simple, and inexpensive pedal. =
What the declaration does not indicate is that Asano was somehow so flawed =
that there was no reason to upgrade it, or pedals like it, to be compatible=
 with modern engines. Indeed, Teleflex's own declarations refute this concl=
usion. Dr. Radcliffe states that Rixon suffered from the same bulk and comp=
lexity as did Asano. See id., at 206. Teleflex's other expert, however, exp=
lained that Rixon was itself designed by adding a sensor to a preexisting m=
echanical pedal. See id., at 209. If Rixon's base pedal was not tooflawed t=
o upgrade, then Dr. Radcliffe's declaration does not show Asano was either.=
 Teleflex may have made a plausible argument that Asano is inefficient as c=
ompared to Engelgau's preferred embodiment, but to judge Asanoagainst Engel=
gau would be to engage in the very hindsight bias Teleflex rightly urges mu=
st be avoided. Accordingly,Teleflex has not shown anything in the prior art=
 thattaught away from the use of Asano.

Like the District Court, finally, we conclude Teleflex has shown no seconda=
ry factors to dislodge the determination that claim 4 is obvious. Proper ap=
plication of Graham and our other precedents to these facts therefore leads=
 to the conclusion that claim 4 encompassed obvious subject matter. As a re=
sult, the claim fails to meet the requirement of =A7103.

We need not reach the question whether the failure to disclose Asano during=
 the prosecution of Engelgau voidsthe presumption of validity given to issu=
ed patents, for claim 4 is obvious despite the presumption. We nevertheless=
 think it appropriate to note that the rationale underlying the presumption=
=97that the PTO, in its expertise, hasapproved the claim=97seems much dimin=
ished here.

IV

A separate ground the Court of Appeals gave for reversing the order for sum=
mary judgment was the existence of adispute over an issue of material fact.=
 We disagree withthe Court of Appeals on this point as well. To the extent =
the court understood the Graham approach to exclude the possibility of summ=
ary judgment when an expert providesa conclusory affidavit addressing the q=
uestion of obviousness, it misunderstood the role expert testimony plays in=
the analysis. In considering summary judgment on that question the district=
 court can and should take into account expert testimony, which may resolve=
 or keep opencertain questions of fact. That is not the end of the issue, h=
owever. The ultimate judgment of obviousness is a legal determination. Grah=
am, 383 U. S., at 17. Where, as here, the content of the prior art, the sco=
pe of the patent claim,and the level of ordinary skill in the art are not i=
n material dispute, and the obviousness of the claim is apparent in light o=
f these factors, summary judgment is appropriate. Nothing in the declaratio=
ns proffered by Teleflex prevented the District Court from reaching the car=
eful conclusions underlying its order for summary judgment in this case.

* * *

We build and create by bringing to the tangible and palpable reality around=
 us new works based on instinct, simple logic, ordinary inferences, extraor=
dinary ideas, and sometimes even genius. These advances, once part of our s=
hared knowledge, define a new threshold from which innovation starts once m=
ore. And as progress beginning from higher levels of achievement is expecte=
d in the normal course, the results of ordinary innovation are not thesubje=
ct of exclusive rights under the patent laws. Were it otherwise patents mig=
ht stifle, rather than promote, the progress of useful arts. See U. S. Cons=
t., Art. I, =A78, cl. 8.These premises led to the bar on patents claiming o=
bvious subject matter established in Hotchkiss and codified in =A7103. Appl=
ication of the bar must not be confined within atest or formulation too con=
strained to serve its purpose.

KSR provided convincing evidence that mounting a modular sensor on a fixed =
pivot point of the Asano pedal was a design step well within the grasp of a=
 person of ordinary skill in the relevant art. Its arguments, and therecord=
, demonstrate that claim 4 of the Engelgau patent isobvious. In rejecting t=
he District Court's rulings, the Court of Appeals analyzed the issue in a n=
arrow, rigid manner inconsistent with =A7103 and our precedents. The judgme=
nt of the Court of Appeals is reversed, and the case remanded for further p=
roceedings consistent with this opinion.

It is so ordered.

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