[Upd-discuss] SCOTUS Overrules Rigid US Appeals Court Approach to Patentability of Combinations of Existing Elements

[Seth Johnson]

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(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."
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> 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=97bot=
h referred to here as Teleflex=97sued KSR International Company for paten=
t infringement.The patent at issue, United States Patent No. 6,237,565B1,=
 is entitled "Adjustable Pedal Assembly With Electronic Throttle Control.=
" Supplemental App. 1. The patentee is Steven J. Engelgau, and the patent=
 is referred toas "the Engelgau patent." Teleflex holds the exclusive lic=
ense to the patent.

Claim 4 of the Engelgau patent describes a mechanismfor combining an elec=
tronic sensor with an adjustable automobile pedal so the pedal's position=
 can be transmitted to a computer that controls the throttle in the vehic=
le's engine. When Teleflex accused KSR of infringing theEngelgau patent b=
y adding an electronic sensor to one of KSR's previously designed pedals,=
 KSR countered that claim 4 was invalid under the Patent Act, 35 U. S. C.=
 =A7103, because its subject matter was obvious.

Section 103 forbids issuance of a patent when "the differences between th=
e subject matter sought to be patented and the prior art are such that th=
e subject matter asa whole would have been obvious at the time the invent=
ion was made to a person having ordinary skill in the art to which said s=
ubject matter pertains."

In Graham v. John Deere Co. of Kansas City, 383 U. S. 1 (1966), the Court=
 set out a framework for applying the statutory language of =A7103, langu=
age itself based on the logic of the earlier decision in Hotchkiss v. Gre=
enwood, 11 How. 248 (1851), and its progeny. See 383 U. S., at 15=9617. T=
he analysis 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 particula=
r case, the factors continue to define the inquiry that controls. If a co=
urt, or patent examiner,conducts this analysis and concludes the claimed =
subject matter was obvious, the claim is invalid under =A7103.

Seeking to resolve the question of obviousness with more uniformity and c=
onsistency, the Court of Appeals for the Federal Circuit has employed an =
approach referred toby the parties as the "teaching, suggestion, or motiv=
ation" test (TSM test), under which a patent claim is only proved obvious=
 if "some motivation or suggestion to combine the prior art teachings" ca=
n 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 challeng=
es that test, or at least its application in this case. See 119 Fed. Appx=
=2E 282, 286=96290 (CA Fed. 2005). Because the Court of Appeals addressed=
 the question of obviousness in a manner contrary to =A7103 and our prece=
dents, we granted certiorari, 547 U. S ___ (2006). We now reverse.

I

A

In car engines without computer controlled throttles, the accelerator ped=
al interacts with the throttle via cable or other mechanical link. The pe=
dal arm acts as a lever rotating around a pivot point. In a cableactuated=
 throttle control the rotation caused by pushing down the pedal pulls a c=
able, which in turn pulls open valves in the carburetor or fuel injection=
 unit. The wider the valves open, the more fuel and air are released, cau=
sing combustion to increase and the car to accelerate. When the driver ta=
kes his foot off the pedal, the opposite occurs as the cable is released =
and the valves slide closed.

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

For a computer controlled throttle to respond to a driver's operation of =
the car, the computer must knowwhat is happening with the pedal. A cable =
or mechanical link does not suffice for this purpose; at some point, anel=
ectronic sensor is necessary to translate the mechanicaloperation into di=
gital data the computer can understand.

Before discussing sensors further we turn to the mechanical design of the=
 pedal itself. In the traditional design a pedal can be pushed down or re=
leased but cannot have its position in the footwell adjusted by sliding t=
he pedal forward or back. As a result, a driver who wishes tobe closer or=
 farther from the pedal must either repositionhimself in the driver's sea=
t or move the seat in some way. In cars with deep footwells these are imp=
erfect solutionsfor drivers of smaller stature. To solve the problem, inv=
entors, beginning in the 1970's, designed pedals thatcould be adjusted to=
 change their location in the footwell. Important for this case are two a=
djustable pedals disclosed 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 support structure that houses the pedalso that even when=
 the pedal location is adjusted relative tothe driver, one of the pedal's=
 pivot points stays fixed. The pedal is also designed so that the force n=
ecessary to pushthe pedal down is the same regardless of adjustments to i=
ts location. The Redding patent reveals a different, sliding mechanism wh=
ere both the pedal and the pivot point are adjusted.

We return to sensors. Well before Engelgau applied for his challenged pat=
ent, some inventors had obtained patents involving electronic pedal senso=
rs for computer controlled throttles. These inventions, such as the devic=
e disclosed in U. S. Patent No. 5,241,936 (filed Sept. 9, 1991) ('936), t=
aught that 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 el=
ectronic sensor on a pivot point in the pedal assembly. U. S. Patent No. =
5,063,811 (filed July 9, 1990) (Smith) taught that to prevent the wires c=
onnecting the sensor to the computer from chafing and wearing out, and to=
 avoid grime and damage from the driver's foot, the sensor should be put =
on a fixed part of the pedal assembly rather than in or on the pedal's fo=
otpad.

In addition to patents for pedals with integrated sensors inventors obtai=
ned patents for selfcontained modular sensors. A modular sensor is design=
ed independently of agiven pedal so that it can be taken off the shelf an=
d attached to mechanical pedals of various sorts, enabling the pedals to =
be used in automobiles with computercontrolled throttles. One such sensor=
 was disclosed in U. S. Patent No. 5,385,068 (filed Dec. 18, 1992) ('068)=
=2E In 1994, Chevrolet manufactured a line of trucks using modular sensor=
s"attached to the pedal support bracket, adjacent to the pedal and engage=
d with the pivot shaft about which the pedal rotates in operation." 298 F=
=2E Supp. 2d 581, 589 (ED Mich. 2003).

The prior art contained patents involving the placement of sensors on adj=
ustable pedals as well. For example, U. S. Patent No. 5,819,593 (filed Au=
g. 17, 1995) (Rixon) discloses an adjustable pedal assembly with an elect=
ronic sensor for detecting the pedal's position. In the Rixon pedal the s=
ensor is located in the pedal footpad. The Rixon pedal was known to suffe=
r from wire chafing when the pedal was depressed and released.

This short account of pedal and sensor technology leadsto the instant cas=
e.

B

KSR, a Canadian company, manufactures and supplies auto parts, including =
pedal systems. Ford Motor Companyhired KSR in 1998 to supply an adjustabl=
e pedal systemfor various lines of automobiles with cableactuated throttl=
e controls. KSR developed an adjustable mechanicalpedal for Ford and obta=
ined U. S. Patent No. 6,151,976(filed July 16, 1999) ('976) for the desig=
n. In 2000, KSR was chosen by General Motors Corporation (GMC or GM)to su=
pply adjustable pedal systems for Chevrolet and GMC light trucks that use=
d engines with computercontrolled throttles. To make the '976 pedal compa=
tible with the trucks, KSR merely took that design and added a modular se=
nsor.

Teleflex is a rival to KSR in the design and manufacture of adjustable pe=
dals. As noted, it is the exclusive licensee of the Engelgau patent. Enge=
lgau filed the patent application on August 22, 2000 as a continuation of=
 a previousapplication 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 o=
n February 14, 1998. The Engelgaupatent discloses an adjustable electroni=
c pedal describedin the specification as a "simplified vehicle control pe=
dalassembly that is less expensive, and which uses fewer parts and is eas=
ier to package within the vehicle." Engelgau, col. 2, lines 2=965, Supple=
mental App. 6. Claim 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 adj=
ustable pedal assembly with an electronic pedal position sensor attached =
to the support member of the pedal assembly. Attaching the sensor to the =
support member allows the sensor to remain in a fixed position while the =
driver adjusts the pedal." 298 F. Supp. 2d, at 586=96587.

Before issuing the Engelgau patent the U. S. Patent andTrademark Office (=
PTO) rejected one of the patent claims that was similar to, but broader t=
han, the present claim 4. The claim did not include the requirement that =
the sensorbe placed on a fixed pivot point. The PTO concluded the claim w=
as an obvious combination of the prior art disclosed in Redding and Smith=
, explaining:

   "'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 Smi=
th explained how to mount a sensor ona pedal's support structure, and the=
 rejected patent claim merely put these two teachings together.

Although the broader claim was rejected, claim 4 was later allowed becaus=
e it included the limitation of a fixed pivot point, which distinguished =
the design from Redding's. Ibid. Engelgau had not included Asano among th=
eprior art references, and Asano was not mentioned in the patent's prosec=
ution. Thus, the PTO did not have before it an adjustable pedal with a fi=
xed pivot point. The patentissued on May 29, 2001 and was assigned to Tel=
eflex.

Upon learning of KSR's design for GM, Teleflex sent a warning letter info=
rming KSR that its proposal would violate the Engelgau patent. "'Teleflex=
 believes that any supplier of a product that combines an adjustable peda=
lwith an electronic throttle control necessarily employstechnology covere=
d by one or more'" of Teleflex's patents. Id., at 585. KSR refused to ent=
er a royalty arrangement with Teleflex; so Teleflex sued for infringement=
, assertingKSR's pedal infringed the Engelgau patent and two other patent=
s. Ibid. Teleflex later abandoned its claims regarding the other patents =
and dedicated the patents to thepublic. The remaining contention was that=
 KSR's pedalsystem for GM infringed claim 4 of the Engelgau patent.Telefl=
ex has not argued that the other three claims of the patent are infringed=
 by KSR's pedal, nor has Teleflex argued that the mechanical adjustable p=
edal designed by KSR for Ford infringed any of its patents.

C

The District Court granted summary judgment in KSR's favor. After reviewi=
ng the pertinent history of pedal design, the scope of the Engelgau paten=
t, and the relevant prior art, the court considered the validity of the c=
ontested claim. By direction of 35 U. S. C. =A7282, an issued patent is p=
resumed valid. The District Court applied Graham's framework to determine=
 whether under summaryjudgment standards KSR had overcome the presumption=
and demonstrated that claim 4 was obvious in light of the prior art in ex=
istence when the claimed subject matter was invented. See =A7102(a).

The District Court determined, in light of the expert testimony and the p=
arties' stipulations, that the level of ordinary skill in pedal design wa=
s "'an undergraduatedegree in mechanical engineering (or an equivalent am=
ount of industry experience) [and] familiarity withpedal control systems =
for vehicles.'" 298 F. Supp. 2d, at 590. The court then set forth the rel=
evant prior art, including the patents and pedal designs described above.=


Following Graham's direction, the court compared the teachings of the pri=
or art to the claims of Engelgau. It found "little difference." 298 F. Su=
pp. 2d, at 590. Asano taught everything contained in claim 4 except the u=
se of asensor to detect the pedal's position and transmit it to thecomput=
er controlling the throttle. That additional aspect was revealed in sourc=
es such as the '068 patent and thesensors used by Chevrolet.

Under the controlling cases from the Court of Appeals for the Federal Cir=
cuit, however, the District Court was not permitted to stop there. The co=
urt was required also to apply the TSM test. The District Court held KSR =
had satisfied the test. It reasoned (1) the state of the industrywould le=
ad inevitably to combinations of electronic sensorsand adjustable pedals,=
 (2) Rixon provided the basis for these developments, and (3) Smith taugh=
t a solution to the wire chafing problems in Rixon, namely locating the s=
ensor on the fixed structure of the pedal. This could lead to the combina=
tion of Asano, or a pedal like it, with a pedalposition sensor.

The conclusion that the Engelgau design was obvious was supported, in the=
 District Court's view, by the PTO's rejection of the broader version of =
claim 4. Had Engelgau included Asano in his patent application, it reason=
ed, the PTO would have found claim 4 to be an obvious combination of Asan=
o and Smith, as it had found the broader version an obvious combination o=
f Redding and Smith. Asa final matter, the District Court held that the s=
econdaryfactor of Teleflex's commercial success with pedals based on Enge=
lgau's design did not alter its conclusion. The District Court granted su=
mmary judgment for KSR.

With principal reliance on the TSM test, the Court of Appeals reversed. I=
t ruled the District Court had not been strict enough in applying the tes=
t, having failed to make "'finding[s] as to the specific understanding or=
 principle within the knowledge of a skilled artisan that would have moti=
vated one with no knowledge of [the] invention' . . . to attach an electr=
onic control to the support bracket of the Asano assembly." 119 Fed. Appx=
=2E, at 288 (brackets in original) (quoting In re Kotzab, 217 F. 3d 1365,=
 1371 (CA Fed. 2000)). 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 prec=
ise problem that the patentee was trying to solve," the problem would not=
 motivate an inventor to look at those references. 119 Fed. Appx., at 288=
=2E

Here, the Court of Appeals found, the Asano pedal was designed to solve t=
he "'constant ratio problem'"=97that is, to ensure that the force require=
d to depress the pedal is the same no matter how the pedal is adjusted=97=
whereas Engelgau sought to provide a simpler, smaller, cheaper adjustable=
 electronic pedal. Ibid. As for Rixon, the court explained, that pedal su=
ffered from the problem of wire chafing but was not designed to solve it.=
 In the court's view Rixon did not teach anything helpful to Engelgau's p=
urpose. Smith, in turn, did not relate to adjustable pedals and did not "=
necessarily go to the issue of motivation to attach the electronic contro=
l on the support bracket of the pedal assembly." Ibid. When the patents w=
ere interpreted in this way, the Court of Appeals held, they would not ha=
ve led a person of ordinary skill to put a sensor on the sort of pedal de=
scribed in Asano.

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

The Court of Appeals also faulted the District Court's consideration of t=
he PTO's rejection of the broader version of claim 4. The District Court'=
s role, the Court of Appeals explained, was not to speculate regarding wh=
at the PTO might have done had the Engelgau patent mentioned Asano. Rathe=
r, the court held, the District Court was obliged first to presume that t=
he issued patent was validand then to render its own independent judgment=
 of obviousness 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, h=
ad no place in that analysis.

The Court of Appeals further held that genuine issues of material fact pr=
ecluded summary judgment. Teleflex had proffered statements from one expe=
rt that claim 4 "'was a simple, elegant, and novel combination of feature=
s,'" 119 Fed. Appx., at 290, compared to Rixon, and from another expert t=
hat claim 4 was nonobvious because, unlike in Rixon, the sensor was mount=
ed on the support bracket rather than the pedal itself. This evidence, th=
e court concluded, sufficed to require a trial.
 =

II

A

We begin by rejecting the rigid approach of the Court ofAppeals. Througho=
ut this Court's engagement with the question of obviousness, our cases ha=
ve set forth an expansive and flexible approach inconsistent with the way=
 the Court of Appeals applied its TSM test here. To be sure, Graham recog=
nized the need for "uniformity and definiteness." 383 U. S., at 18. Yet t=
he principles laid down in Graham reaffirmed the "functional approach" of=
 Hotchkiss, 11 How. 248. See 383 U. S., at 12. To this end, Graham set fo=
rth a broad inquiry and invited courts, where appropriate, to look at any=
 secondary considerations that would prove instructive. Id., at 17.

Neither the enactment of =A7103 nor the analysis in Graham disturbed this=
 Court's earlier instructions concerningthe need for caution in granting =
a patent 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 only unites old elements with no change intheir respective function=
s . . . obviously withdraws what isalready known into the field of its mo=
nopoly and diminishes the resources available to skillful men." Great Atl=
antic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 15=
2 (1950). This is a principal reason for declining to allow patents for w=
hat is obvious. The combination of familiar elements according to known m=
ethods is likely to be obvious when it does no more than yield predictabl=
e 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 G=
raham, the Court considered the obviousness of a "wet battery" that varie=
d from prior designs in two ways: It contained water, rather than the aci=
ds conventionally employed in storage batteries; and its electrodes were =
magnesium and cuprous chloride, rather than zinc and silver chloride. The=
 Court recognized that when a patent claims a structure already known in =
the prior art that is altered by the mere substitution of one element for=
 another known in the field, the combination must do more than yield a pr=
edictable result. 383 U. S., at 50=9651. It nevertheless rejected the Gov=
ernment's claim that Adams's battery was obvious. The Court relied upon t=
he corollary principle that when the prior art teaches away from combinin=
g certain known elements, discovery of a successful means of combining th=
em 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 ty=
pes of electrodes he employed. The fact that the elements worked together=
 in an unexpected and fruitful manner supported the conclusion that Adams=
's design was not obvious to those skilled in the art.

In Anderson's Black Rock, Inc. v. Pavement Salvage Co., 396 U. S. 57 (196=
9), the Court elaborated on this approach. The subject matter of the pate=
nt before the Court was a device combining two preexisting elements: a ra=
diantheat burner and a paving machine. The device, the Court concluded, d=
id not create some new synergy: The radiantheat burner functioned just as=
 a burner was expected tofunction; and the paving machine did the same. T=
he two in combination did no more than they would in separate,sequential =
operation. Id., at 60=9662. In those circumstances, "while the combinatio=
n of old elements performed a useful function, it added nothing to the na=
ture and quality of the radiantheat burner already patented," andthe pate=
nt failed under =A7103. Id., at 62 (footnote omitted).

Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court der=
ived from the precedents the conclusion that when a patent "simply arrang=
es old elements with each performing the same function it had been known =
to perform" and yields no more than one would expect from such an arrange=
ment, the combination is obvious. Id., at 282.

The principles underlying these cases are instructive when the question i=
s whether a patent claiming the combination of elements of prior art is o=
bvious. When a work is available in one field of endeavor, design incenti=
ves and other market forces can prompt variations of it, either in the sa=
me field or a different one. If a person of ordinary skill can implement =
a predictable variation, =A7103 likely bars its patentability. For the sa=
me reason, if a technique has been used to improve one device, and a pers=
on ofordinary skill in the art would recognize that it would improve simi=
lar devices in the same way, using the technique is obvious unless its ac=
tual application is beyond hisor her skill. Sakraida and Anderson'sBlack =
Rock are illustrative=97a court must ask whether the improvement is more =
than the predictable use of prior art elements according to their establi=
shed functions.

Following these principles may be more difficult in other cases than it i=
s here because the claimed subject matter may involve more than the simpl=
e substitution of one known element for another or the mere application o=
f a known technique to a piece of prior art ready for the improvement. Of=
ten, it will be necessary for a court to lookto interrelated teachings of=
 multiple patents; the effects of demands known to the design community o=
r present in themarketplace; and the background knowledge possessed bya p=
erson having ordinary skill in the art, all in order to determine whether=
 there was an apparent reason to combine the known elements in the fashio=
n claimed by thepatent at issue. To facilitate review, this analysis shou=
ldbe made explicit. See In re Kahn, 441 F. 3d 977, 988 (CA Fed. 2006) ("[=
R]ejections on obviousness grounds cannot be sustained by mere conclusory=
 statements; instead, there must be some articulated reasoning with some =
rational underpinning to support the legal conclusion of obviousness"). A=
s our precedents make clear, however, the analysis need not seek out prec=
ise teachings directed to the specific subject matter of the challenged c=
laim, for a courtcan take account of the inferences and creative steps th=
ata person of ordinary skill in the art would employ.

B

When it first established the requirement of demonstrating a teaching, su=
ggestion, or motivation to combineknown elements in order to show that th=
e combination is obvious, the Court of Customs and Patent Appeals capture=
d a helpful insight. See Application of Bergel, 292 F. 2d 955, 956=96957 =
(1961). As is clear from cases such as Adams, a patent composed of severa=
l elements is not proved obvious merely by demonstrating that each of its=
 elements was, independently, known in the prior art. Although common sen=
se directs one to look with care at a patent application that claims as i=
nnovation the combination of two known devices according to their establi=
shed 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 the claimed new invention does. This is so because in=
ventions in most, if not all, instances rely upon building blocks longsin=
ce uncovered, and claimed discoveries almost of necessity will be combina=
tions of what, in some sense, is already known.

Helpful insights, however, need not become rigid and mandatory formulas; =
and when it is so applied, the TSMtest is incompatible with our precedent=
s. The obviousness analysis cannot be confined by a formalistic conceptio=
n ofthe words teaching, suggestion, and motivation, or by overemphasis on=
 the importance of published articles and the explicit content of issued =
patents. The diversity of inventive pursuits and of modern technology cou=
nselsagainst 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 liter=
ature, will drive designtrends. Granting patent protection to advances th=
atwould occur in the ordinary course without real innovationretards progr=
ess and may, in the case 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 =
essence of the TSM test, the Court of Appeals no doubt has applied the te=
st in accord with these principles in many cases. There is no necessary i=
nconsistency between the idea underlying the TSM test and the Graham anal=
ysis. But when a court transforms the general principle into a rigid rule=
 that limits the obviousness inquiry, as the Court of Appeals did here, i=
t errs.

C

The flaws in the analysis of the Court of Appeals relate for the most par=
t to the court's narrow conception of the obviousness inquiry reflected i=
n its application of the TSM test. In determining whether the subject mat=
ter of a patent claim is obvious, neither the particular motivation nor t=
he 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 inval=
id under =A7103. One of the ways in which a patent's subject matter can b=
eproved obvious is by noting that there existed at the timeof invention a=
 known problem for 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 thi=
s reasoning by holding that courts and patent examiners should look only =
to the problem the patentee was trying to solve. 119 Fed. Appx., at 288. =
The Court of Appeals failed to recognize that the problemmotivating the p=
atentee may be only one of many addressed by the patent's subject matter.=
 The question is not whether the combination was obvious to the patentee =
but whether the combination was obvious to a person with ordinary skill i=
n the art. Under the correct analysis, any need or problem known in the f=
ield 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 per=
son of ordinary skill attempting tosolve a problem will be led only to th=
ose elements of prior art designed to solve the same problem. Ibid. The p=
rimary purpose of Asano was solving the constant ratioproblem; so, the co=
urt concluded, an inventor considering how to put a sensor on an adjustab=
le pedal would have noreason to consider putting it on the Asano pedal. I=
bid. Common sense teaches, however, that familiar items may have obvious =
uses beyond their primary purposes, and in many cases a person of ordinar=
y skill will be able to fit theteachings of multiple patents together lik=
e pieces of a puzzle. Regardless of Asano's primary purpose, the design p=
rovided an obvious example of an adjustable pedal with a fixed pivot poin=
t; and the prior art was replete with patents indicating that a fixed piv=
ot point was an ideal mount for a sensor. The idea that a designer hoping=
 to make anadjustable electronic pedal would ignore Asano because Asano w=
as designed to solve the constant ratio problemmakes little sense. A pers=
on of ordinary skill is also a person of ordinary creativity, not an auto=
maton.

The same constricted analysis led the Court of Appeals to conclude, in er=
ror, that a patent claim cannot be provedobvious merely by showing that t=
he combination of elements was "obvious to try." Id., at 289 (internal qu=
otation 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 know=
n options withinhis or her technical grasp. If this leads to the anticipa=
ted success, it is likely the product not of innovation but of ordinary s=
kill and common sense. In that instance the fact that a combination was o=
bvious to try might show that itwas obvious under =A7103.

The Court of Appeals, finally, drew the wrong conclusion from the risk of=
 courts and patent examiners falling prey to hindsight bias. A factfinder=
 should be aware, of course, of the distortion caused by hindsight bias a=
nd must be cautious of arguments reliant upon ex post reasoning. See Grah=
am, 383 U. S., at 36 (warning against a "temptation to read into the prio=
r art the teachings of the invention in issue" and instructing courts to =
"'guard against slipping into the use of hindsight'" (quoting Monroe Auto=
 Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F. 2d 406, 412 (CA6 1=
964))). Rigid preventative rules that deny factfinders recourse to common=
 sense, however, are neither necessary under our case law nor consistent =
with it.

We note the Court of Appeals has since elaborated a broader conception of=
 the TSM test than was applied in the instant matter. See, e.g., DyStar T=
extilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F. 3d 135=
6, 1367 (2006) ("Our suggestion test is in actuality quite flexible and n=
ot only permits, but requires, consideration of common knowledge and comm=
on sense"); Alza Corp. v. Mylan Labs., Inc., 464 F. 3d 1286, 1291 (2006) =
("There is flexibility in our obviousness jurisprudence because a motivat=
ion may be found implicitly in the prior art. We do not have a rigid test=
 that requires an actualteaching to combine . . ."). Those decisions, of =
course, are not now before us and do not correct the errors of law made b=
y the Court of Appeals in this case. The extent to which they may describ=
e an analysis more consistent withour earlier precedents and our decision=
 here is a matterfor the Court of Appeals to consider in its future cases=
=2EWhat we hold is that the fundamental misunderstandingsidentified above=
 led the Court of Appeals in this 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 re=
citation of the relevant prior art and its determination of the level of =
ordinary skill in the field. As did the District Court, we see little dif=
ference between the teachings of Asano and Smith and the adjustable elect=
ronic pedal disclosed in claim 4 of the Engelgau patent. A person having =
ordinary skill inthe art could have combined Asano with a pedal positions=
ensor in a fashion encompassed by claim 4, and wouldhave seen the benefit=
s of doing so.

A

Teleflex argues in passing that the Asano pedal cannot be combined with a=
 sensor in the manner described by claim 4 because of the design of Asano=
's pivot mechanisms. See Brief for Respondents 48=9649, and n. 17. Theref=
ore, Teleflex reasons, even if adding a sensor to Asano wasobvious, that =
does not establish that claim 4 encompasses obvious subject matter. This =
argument was not, however,raised before the District Court. There Telefle=
x was content to assert only that the problem motivating the invention cl=
aimed by the Engelgau patent would not lead to thesolution of combining o=
f Asano with a sensor. See Teleflex's Response to KSR's Motion for Summar=
y Judgment ofInvalidity in No. 02=9674586 (ED Mich.), pp. 18=9620, App. 1=
44a=96146a. It is also unclear whether the current argument was raised be=
fore the Court of Appeals, where Teleflex advanced the nonspecific, concl=
usory contention thatcombining Asano with a sensor would not satisfy the =
limitations of claim 4. See Brief for PlaintiffsAppellantsin No. 04=96115=
2 (CA Fed.), pp. 42=9644. Teleflex's own expert declarations, moreover, d=
o not support the point Teleflex now raises. See Declaration of Clark J. =
Radcliffe, Ph.D., Supplemental App. 204=96207; Declaration of Timothy L. =
Andresen, id., at 208=96210. The only 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 interprete=
d to mean that Asano could not be used to solve "[t]he problem addressed =
by Engelgau '565[:] toprovide a less expensive, more quickly assembled, a=
nd smaller package adjustable pedal assembly with electroniccontrol." Id.=
, at 205, =B610.

The District Court found that combining Asano with apivotmounted pedal po=
sition sensor fell within the scopeof claim 4. 298 F. Supp. 2d, at 592=96=
593. Given the sigificance of that finding to the District Court's judgme=
nt, it is apparent that Teleflex would have made clearer challenges to it=
 if it intended to preserve this claim. In light ofTeleflex's failure to =
raise the argument in a clear fashion,and the silence of the Court of App=
eals on the issue, we take the District Court's conclusion on the point t=
o be correct.

B

The District Court was correct to conclude that, as of the time Engelgau =
designed the subject matter in claim 4, itwas obvious to a person of ordi=
nary skill to combine Asanowith a pivotmounted pedal position sensor. The=
re then existed a marketplace that created a strong incentive toconvert m=
echanical pedals to electronic pedals, and the prior art taught a number =
of methods for achieving this advance. The Court of Appeals considered th=
e issue toonarrowly by, in effect, asking whether a pedal designer writin=
g on a blank slate would have chosen both Asanoand a modular sensor simil=
ar to the ones used in the Chevrolet truckline and disclosed in the '068 =
patent. The District Court employed this narrow inquiry as well,though it=
 reached the correct result nevertheless. The proper question to have ask=
ed was whether a pedal designer of ordinary skill, facing the wide range =
of needscreated by developments in the field of endeavor, wouldhave seen =
a benefit to upgrading Asano with a sensor.

In automotive design, as in many other fields, the interaction of multipl=
e components means that changing one component often requires the others =
to be modified as well. Technological developments made it clear that eng=
ines using computercontrolled throttles would becomestandard. As a result=
, designers might have decided todesign new pedals from scratch; but they=
 also would havehad reason to make preexisting pedals work with the newen=
gines. Indeed, upgrading its own preexisting model led KSR to design the =
pedal now accused of infringing the Engelgau patent.

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

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

Just as it was possible to begin with the objective toupgrade Asano to wo=
rk with a computercontrolled throttle, so too was it possible to take an =
adjustable electronicpedal like Rixon and seek an improvement that would =
avoid the wirechafing problem. Following similar steps to those just expl=
ained, a designer would learn from Smith toavoid sensor movement and woul=
d come, thereby, to Asano because Asano disclosed an adjustable pedal wit=
h a fixed pivot.

Teleflex indirectly argues that the prior art taught away from attaching =
a sensor to Asano because Asano in its view is bulky, complex, and expens=
ive. The only evidenceTeleflex marshals in support of this argument, howe=
ver, is the Radcliffe declaration, which merely indicates thatAsano would=
 not have solved Engelgau's goal of making a small, simple, and inexpensi=
ve pedal. What the declaration does not indicate is that Asano was someho=
w 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 r=
efute this conclusion. Dr. Radcliffe states that Rixon suffered from the =
same bulk and complexity as did Asano. See id., at 206. Teleflex's other =
expert, however, explained that Rixon was itself designed by adding a sen=
sor to a preexisting mechanical pedal. See id., at 209. If Rixon's base p=
edal was not tooflawed to upgrade, then Dr. Radcliffe's declaration does =
not show Asano was either. Teleflex may have made a plausible argument th=
at Asano is inefficient as compared to Engelgau's preferred embodiment, b=
ut to judge Asanoagainst Engelgau would be to engage in the very hindsigh=
t bias Teleflex rightly urges must be avoided. Accordingly,Teleflex has n=
ot shown anything in the prior art thattaught away from the use of Asano.=


Like the District Court, finally, we conclude Teleflex has shown no secon=
dary factors to dislodge the determination that claim 4 is obvious. Prope=
r application of Graham and our other precedents to these facts therefore=
 leads to the conclusion that claim 4 encompassed obvious subject matter.=
 As a result, the claim fails to meet the requirement of =A7103.

We need not reach the question whether the failure to disclose Asano duri=
ng the prosecution of Engelgau voidsthe presumption of validity given to =
issued patents, for claim 4 is obvious despite the presumption. We nevert=
heless think it appropriate to note that the rationale underlying the pre=
sumption=97that the PTO, in its expertise, hasapproved the claim=97seems =
much diminished here.

IV

A separate ground the Court of Appeals gave for reversing the order for s=
ummary judgment was the existence of adispute over an issue of material f=
act. We disagree withthe Court of Appeals on this point as well. To the e=
xtent the court understood the Graham approach to exclude the possibility=
 of summary judgment when an expert providesa conclusory affidavit addres=
sing the question of obviousness, it misunderstood the role expert testim=
ony plays inthe analysis. In considering summary judgment on that questio=
n the district court can and should take into account expert testimony, w=
hich may resolve or keep opencertain questions of fact. That is not the e=
nd of the issue, however. The ultimate judgment of obviousness is a legal=
 determination. Graham, 383 U. S., at 17. Where, as here, the content of =
the prior art, the scope of the patent claim,and the level of ordinary sk=
ill in the art are not in material dispute, and the obviousness of the cl=
aim is apparent in light of these factors, summary judgment is appropriat=
e. Nothing in the declarations proffered by Teleflex prevented the Distri=
ct Court from reaching the careful conclusions underlying its order for s=
ummary judgment in this case.

* * *

We build and create by bringing to the tangible and palpable reality arou=
nd us new works based on instinct, simple logic, ordinary inferences, ext=
raordinary ideas, and sometimes even genius. These advances, once part of=
 our shared knowledge, define a new threshold from which innovation start=
s once more. And as progress beginning from higher levels of achievement =
is expected in the normal course, the results of ordinary innovation are =
not thesubject of exclusive rights under the patent laws. Were it otherwi=
se patents might stifle, rather than promote, the progress of useful arts=
=2E See U. S. Const., Art. I, =A78, cl. 8.These premises led to the bar o=
n patents claiming obvious subject matter established in Hotchkiss and co=
dified in =A7103. Application of the bar must not be confined within ates=
t or formulation too constrained to serve its purpose.

KSR provided convincing evidence that mounting a modular sensor on a fixe=
d 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 the=
record, demonstrate that claim 4 of the Engelgau patent isobvious. In rej=
ecting the District Court's rulings, the Court of Appeals analyzed the is=
sue in a narrow, rigid manner inconsistent with =A7103 and our precedents=
=2E The judgment of the Court of Appeals is reversed, and the case remand=
ed for further proceedings consistent with this opinion.

It is so ordered.


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