Amicus Curiae Brief — KSR Intern. Co. v. Teleflex Inc.

ge FILED

7) MAY 2.5 2006

OFFICE THE CLERK

No. 04-1350 |_ SUPREME COURT, U.S._|

In the Supreme Court of the Gnited States

KSR INTERNATIONAL CO., PETITIONER

v.

TELEFLEX INC., ET AL.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE

PAUL D. CLEMENT

Solicitor General

Counsel of Record

PETER D. KEISLER

Assistant Attorney General

gp aon , THOMAS G. HUNGAR

ee Deputy Solicitor General

— = + semana - JEFFREY P. MINEAR

moon! > ane Assistant to the Solicitor

and Solicitor

LINDA M. ISACSON

WILLIAM G. JENKS

ROBERT J. MCMANUS

General

ANTHONY J. STEINMEYER

ANTHONY A. YANG

Associate Solicitors Attorneys

United States Patent and Department of Justice

Trademark Office Washington, D.C. 20530-0001

Alexandria, Va. 22313 (202) 514-2217

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QUESTION PRESENTED

Whether a claimed invention can be “obvious,” and

therefore unpatentable under 35 U.S.C. 103(a), without proof

of some “teaching, suggestion, or motivation” to modify or

combine the prior art in the manner claimed.

(I)

TABLE OF CONTENTS

Page

PG odd. nck ocddéddadn bodudb scotecwadansennsaeess 1

A. The Patent Act’s requirement of nonobviousness ... 2

B. The subject matter atissue ..............eeeeeee 4

eI Sd con cantecactevesnendeves 6

NN oa A as hh ik Oi pe tie dele eae ea 9

A. The Federal Circuit’s imposition of a teaching-

suggestion-motivation test to determine whether

a claimed invention would be obvious presents an

important question of patent law that warrants

IE «osc oddubpdndsdecdeacccnttssss 10

B. The question presented has significant practical

consequences and this case provides an

appropriate vehicle for its resolution ............. 16

SE cudcccucuscecadescdbibveonsatestescéancian 20

TABLE OF AUTHORITIES

Cases:

Anderson’s-Black Rock, inc. v. Pavement Salvage

gC 5 cdoeuharniiensdenssmad as 12, 17

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

SL no ennc ance each sds 2, 3, 10, 17

City of Erie v. Fap’s A.M., 529 U.S. 277 (2000) ........ 18

Dann v. Johnston, 425 U.S. 219 (1976) ...... 10, 11, 12, 13

Dembiczak, In re, 175 F.3d 994 (Fed. Cir. 1999) .... 14,14

FCC v. National Citizens Comm. for Broad., 436 U.S.

EN ci ete ss inl dnGle hdd déeumals wade tek bae 18

Federal Power Comm'n v. Transcontinental Gas

Pipe Line Corp., 365 U.S. 1 (1961) ...............4.. 18

(III)

IV

Cases—Continued: Page

Graham v. John Deere Co., 383 U.S. 1 (1996) ..... passim

Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248

GEE vc dvcvvdcdicisccdedeans these seunesiees 3, 10

Kahn, In re, 441 F.3d 977 (Fed. Cir. 2006) ............ 13

Kotzab, In re, 217 F.3d 1365 (Fed. Cir. 2000) ........ 8,14

Lee, In re, 277 F.3d 1338 (Fed. Cir. 2002) .......... 14, 15

Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998) .......... 10

Rouffet, In re, 149 F.3d 1350 (Fed. Cir. 1998) .......... 14

Ruiz v. A.B. Chance Co., 234 F.3d 654 (Fed. Cir.

DEED | n000ss00esen00d.eessrnisneenrieaeee 15

Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976) .......... 12

United States v. Adams, 383 U.S. 39 (1966) ........ 12, 13

varner-Jenkinson Co. v. Hilton Davis Chem. Co.,

SP TE. BSCE idan a osksdcsdosienssdtateician 18

Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340

OR Ge Se oot ccccccdsdssnedverésdicaseeeees 14

Constitution and statutes:

U.S. Const. Art. 1, § 8, Cl. 8 (Patent Clause) ............ 2

Act of Apr. 10, 1790, ch. 7,1 Stat. 109 ............0005. 2

Act of Feb. 21, 1793, ch. 11,1 Stat.318 ................ 2

Act of July 4, 1836, ch. 357, 5 Stat. 117 ................. 2

Act of Mar. 3, 1839, ch. 88, 5 Stat. 353 ................. 2

Act of July 8, 1870, ch. 230, 16 Stat. 198 ................ 2

Act of Aug. 5, 1939, ch. 451, 53 Stat. 1212 .............. 2

Act of July 19, 1952, ch. 950, 66 Stat. 792

(35 U.S.C. 1 et seq.) (Patent Act) ...........22-0005- 2

SR UTE, TRE GOE, 6c cccevccncacecesgavccectnns 2

Statutes—Continued: Page

I i oa eas denaneden 2

LD conbudcacedccetccecedcces passim

Miscellaneous:

Federal Trade Comm'n, 70 Promote Innovation:

The Proper Balance of Competition and Patent

Law and Policy (2003), available at

<www.fte.gov/os/2003/10/innovationrpt.pdf> ....... 19

John R. Thomas, Formalism at the Federal Circuit,

, Gs Ge PONG ccccccecece. ceocceces 14

In the Supreme Court of the United States

No. 04-1350

KSR INTERNATIONAL CO., PETITIONER

Uv.

TELEFLEX INC., ET AL.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE

This brief is submitted in response to the order of this

Court inviting the Solicitor General to express the views of

the United States. In the view of the United States, the peti-

tion for a writ of certiorari should be granted.

STATEMENT

Petitioner KSR International Co. is a Canadian company

that markets foot-operated throttle controls—gas pedals—for

passenger cars and light trucks. Pet. App. 20a. Respondents

Teleflex Inc. and its subsidiary Technology Holding Co. sued

KSR in the United States District Court for the Eastern Dis-

trict of Michigan for patent infringement, alleging that two of

KSR’s adjustable gas pedal systems literally infringe Claim

4 of their U.S. Patent No. 6,237,565 (the Engelgau patent).

Id. at la-2a, 20a, 23a-24a. The district court granted KSR’s

motion for summary judgment, concluding that Claim 4 of the

(1)

2

Engelgau patent is obvious within the meaning of Section

103(a) of the Patent Act of 1952, 35 U.S.C. 103(a), and there-

fore invalid. See Pet. App. 18a-49a. The Federal Circuit va-

cated the grant of summary judgment, concluding that the

district court incorrectly applied its “teaching-suggestion-

motivation” test in determining that Claim 4 would have been

obvious to a person of ordinary skill in the art. Jd. at la-17a.

A. The Patent Act’s Requirement Of Nonobviousness

The Patent Clause of the Constitution vests Congress with

authority “[t]o promote the Progress of Science and useful

Arts by securing for limited Times to * * * Inventors the

exclusive Right to their * * * Discoveries.” U.S. Const. Art.

1, § 8, Cl. 8. Congress has implemented the Patent Clause

through statutory enactments, commonly krown as the Patent

Acts, that have set out the conditions for securing a patent

and that strike “a careful balance between the need to pro-

mote innovation and the recognition that imitation and refine-

ment through imitation are both necessary to invention itself

and the very lifeblood of a competitive economy.” Bonito

Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146

(1989).' .

The Patent Act of 1952, as amended, provides the current

law governing the issuance and validity of patents. See 35

U.S.C. 100 et seg. Sections 101 through 103 provide (35 U.S.C.

101-103), as a general matter, that “patentability is dependent

upon three explicit conditions: novelty and utility as articu-

lated in § 101 and § 102, and non-obviousness * * * , as set

' See, e.g., Act of Apr. 10, 1790, ch. 7, 1 Stat. 109; Act of Feb. 21,

1793, ch. 11, 1 Stat. 318; Act of July 4, 1836, ch. 357, 5 Stat. 117; Act of

Mar. 3, 1839, ch. 88, 5 Stat. 353; Act of July 8, 1870, ch. 230, 16 Stat. 198;

Act of Aug. 5, 1939, ch. 451, 53 Stat. 1212; Act of July 19, 1952, ch. 950,

66 Stat. 792.

3

out in § 103.” Graham v. John Deere Co., 383 U.S. 1, 12

(1966); see Bonito Boats, 489 U.S. at 146-151, 156-157. Be-

cause “each of [these conditions] must be satisfied,” only

those new and useful inventions that would not have been

“obvious” at the time of their discovery exhibit the “level of

innovation necessary to sustain patentability.” Graham, 383

U.S. at 4, 17.

Congress enacted Section 103(a) to codify the principle,

which this Court first recognized in Hotchkiss v. Greenwood,

52 U.S. (11 How.) 248 (1851), that a new and useful device

does not qualify for a patent unless it embodies a “degree of

skill and ingenuity” beyond that of “an ordinary mechanic

acquainted with the business.” /d. at 267. See Graham, 383

U.S. at 11-18. Section 103(a) states that a claimed invention

is not eligible for a patent

if the differences between the subject matter sought to be

patented and the prior art are such that the subject mat-

ter as a whole would have been obvious at the time the

invention was made to a person having ordinary skill in

the art.

35 U.S.C. 103(a). “The nonobviousness requirement extends

the field of unpatentable material beyond that which is known

to the public under § 102, to include that which could readily

be deduced from publicly available material by a person of

ordinary skill in the pertinent field of endeavor.” Bonito

Boats, 489 U.S. at 150 (citing Graham, 383 U.S. at 15).

The question of nonobviousness is ultimately one of law,

but it turns on “several basic factual inquiries.” Graham, 383

U.S. at 17. This Court has identified four such inquiries: (1)

“the scope and content of the prior art”; (2) “differences be-

tween the prior art and the claims at issue”; (3) “the level of

ordinary skill in the pertinent art”; and (4) “secondary consid-

4

erations,” such as “commercial success,” that might provide

“indicia of obviousness or nonobviousness.” /d. at 17-18.

B. The Subject Matter At Issue

The technology at issue in this case is relatively simple

and its evolution is straightforward. Before the 1970s, the

driver of an automobile typically controlled the vehicle’s

speed by pressing a foot-operated gas pedal, which was bolted

at a fixed location within the footwell of the vehicle interior.

The pedal would act as a lever, rotate around a pivot point,

and pull a cable or mechanical linkage to actuate the engine

throttle. See Pet. App. 20a-2la. In the 1970s, automobile

manufacturers began offering adjustable pedal assemblies,

designed to accommodate drivers of different heights, that

enabled a driver to adjust the pedal position forward and

backward within the footwell. Jd. at 19a-20a; see C.A. App.

1568 (U.S. Patent No. 5,010,782, Col. 1, ll. 14-27 (Asano pat-

ent)).”

In the 1990s, automobile manufacturers sold increasing

numbers of vehicles in the United States that employed

* The driver’s adjustment of the pedal position could alter the

mechanical “lever{age!” at the pedal pad, by changing the distance

between the pad and the pedal pivot, and it could consequently require

the driver to apply a different amount of force when operating the

pedal. See C.A. App. 1568 (Asano patent, Col. 1, ll. 28-45). The 1989

Asano design addressed that problem by attaching the adjustable pedal

assembly to a fixed pivot point located on a stationary bracket in the

footwell. See id. at 1562, 1565-1567 (Asano patent, Fig. 5-8); Pet. App.

32a-33a. That design then utilized mechanical linkages to preserve a

constant force ratio and counteract the effect of adjusting the distance

between the pedal pad and pedal pivot. See C.A. App. 1568, 1570-1571

(Asano patent, Col. 1, ll. 48-65; Col. 2, Il. 15-23; Col. 8, 1. 63 - Col. 9, 1. 4);

Pet. App. 12a-13a & n.3. Not all adjustable pedal assemblies seek to

address that constant force problem. See, e.g., C.A. App. 1490-1491

(U.S. Patent No. 5,632,183, Col. 1, ll. 35-38, 52-54, Col. 2, ll. 13-15, Col.

4, ll. 26-29 (Rixon ‘183 patent)).

5 ‘

computer-controlled engines and electronic throttle controls.

See Pet. App. 21a, 41a. The manufacturers of gas pedal as-

semblies adapted their non-adjustable assemblies by attach-

ing an electronic sensor to the pedal, in place of the mechani-

cal linkage, to determine the pedal position and transmit a

corresponding electronic signal to the throttle. See id. at 21a.

The designs of that era reveal configurations for non-adjust-

able pedals, mounted on the wall of the footwell, in which the

electronic pedal position sensor is actuated by the pedal pivot

and is located on a stationary wall bracket to which the pedal

and its pivot connect. See id. at 33a-35a."

Respondents’ Engelgau patent reveals an adjustable pedal

apparatus that combines an adjustable gas pedal assembly

with an electronic pedal position sensor. The electronic sen-

sor, which measures the pedal position at the pivot, is at-

tached to the support bracket that connects the pedal assem-

bly to the wall of the footwell. Pet. App. 2a. 26a. The patent

explains that the pedal assembly “can be any of various ad-

justable pedal assemblies” and the electronic pedal position

sensor can be any such sensor “known in the art.” C.A. App.

38-39 (Engelgau patent, Col. 2, il. 54-56; Col. 3, ll. 22-24).

* US. Patent No. 5,385,068 (White patent) (C.A. App. 717-723) is

illustrative. The White patent, which was filed in 1992, discloses a

modular electronic pedal position sensor similar to a sensor later

installed in certain 1994 Chevrolet pick-up trucks. That sensor, known

as a CTS 503 Series position sensor, was designed to be mounted on the

pedal pivot of a gas pedal and included a fitting that allowed the sensor

to engage the pedal pivot shaft on different makes and models of vehicle

gas pedal assemblies. See Pet. App. 32a, C.A. App. 1051-1053 (Willem-

sen Decl. paras. 12-19). The sensor was mounted on the pedal support

bracket in Chevrolet trucks and determined the pedal’s position from

the movement of the pedal pivot shaft. /d. at 1052-1053, 1077 (Willem-

sen Deci. paras. 16-17, 19 & Exh. 8). See also, e.g., U.S. Patent Nos.

4,958,607 (Lundberg patent), 5,233,882 (Byram patent), 5,241,936 (Byler

patent) (C.A. App. 708-716), 5,887,488 (Riggle patent).

6

Claim 4, which is set out verbatim at Pet. App. 3a, de-

scribes an apparatus composed of: (1) a support mounted to

the vehicle structure; (2) an adjustable pedal assembly with a

pedal arm that moves fore and aft with respect to the support;

(3) a pivot located on the support to which the pedal assembly

is attached; and (4) an electronic pedal position sensor at-

tached to the support. /d. at 3a, 25a-26a. Claim 4 further

describes that the electronic pedal position sensor is respon-

sive to the pivot, the position of which remains constant with

pedal arm adjustments. /d. at 3a, 26a.

C. The Proceedings Below

KSR supplies a major automobile manufacturer with ad-

justable gas pedal assemblies for use with electronically con-

trolled throttles in certain truck lines. Respondents, who

compete with KSR, brought this suit alleging that KSR’s

pedal assemblies infringed three of respondents’ patents. As

a result of a series of motions and stipulations, the parties

focused their dispute on whether KSR’s pedal assemblies

infringed Claim 4 of the Engelgau patent. The parties filed

cross-motions for summary judgment, and the district court

granted judgment for KSR on the ground that respondents’

claimed invention would have been obvious to a person of or-

dinary skill in the art and that the Engelgau patent was there-

fore invalid. See Pet. App. 18a-24a.

The district court reached that conclusion based on the

four-part inquiry that this Court set out in Graham, supra.

See 383 U.S. at 17-18. It first determined that all of the ele-

ments of Claim 4 were revealed in the prior art because the

Asano patent taught each element except Claim 4's reference

to the use of an electronic pedal position sensor, which other

prior art references taught. See Pet. App. 28a-35a. The dis-

trict court then determined that a person of ordinary skill in

the art would have had college training in mechanical engi-

7

neering and experience in the field of pedal assemblies. /d.

at 35a-36a. The court next found that there was “little differ-

ence between the teachings of the prior art and claims of the

patent-in-suit,” and it further found that a person skilled in

the art would readily “combine a pivotally mounted adjustable

pedal assembly [the Asano patent] with an off-the-shelf modu-

lar pedal position sensor to solve the problem” that the

Engelgau patent addressed. /d. at 39a, 44a. The court also

evaluated, as a “secondary consideration,” respondents’ claim

of commercial success, but the court concluded that the con-

sideration was “insufficient to overcome |KSR’s] clear and

convincing evidence of obviousness.” /d. at 48a.

In analyzing whether it would have been obvious to a per-

son of ordinary skill to combine the Asano patent with an elec-

tronic pedal position sensor, the district court applied the

Federal Circuit’s “teaching-suggestion-motivation test.” See

Pet. App. 8a, 40a-46a. Under that test, a claimed invention

that combined elements already present in the prior art would

not have been obvious at the time of invention unless there

was a teaching, suggestion, or motivation in the prior art that

would have led a person of ordinary skill to combine the prior

art references in the manner claimed. See id. at 40a-41a. The

district court found that a person of ordinary skill would have

been motivated to combine pre-existing adjustable pedal as-

semblies with co-existing electronic pedal position sensors

and to avoid known problems with other pedal assemblies. /d.

at 42a-43a. The court observed that the prior art references

were closely related, others in the field had made similar com-

binations, and the patent examiner, who did not have the ben-

efit of the Asano reference, had recognized similar combina-

tions as obvious. /d. at 43a-46a.

The court of appeals reversed on the ground that the dis-

trict court had incorrectly applied the teaching suggestion-

motivation test. Pet. App. la-17a. The court of appeals stated

8

that its test required the district court to make factual find-

ings showing the “specific understanding or principle within

the knowledge of the skilled artisan that would have moti-

vated one with no knowledge of [the] invention to make the

combination” in “the particular manner claimed by claim 4 of

the |Engelgau] patent.” /d. at 1la-12a (quoting Jn re Kotzab,

217 F.3d 1365, 1371 (Fed. Cir. 2000)); see id. at 16a. In other

words, the court of appeals ruled that the district court could

not find the Engelgau patent invalid as obvious without “spe-

cific findings as to a suggestion or motivation to attach an

electronic control to the support bracket of the Asano assem-

bly.” Jd. at 12a.

The court of appeals concluded that the Asano patent

failed to provide such motivation because it addressed “the

constant pedal force problem” in adjustable pedal assemblies,

see note 2, supra, whereas the Engelgau patent purported to

disclose a “smaller, less complex, and less expensive elec-

tronic pedal assembly.” Pet. App. 12a-13a. The court of ap-

peals also stated that the prior art references that taught the

importance of avoiding movement of the pedal position sen-

sor’s wiring in non-adjustable pedal assemblies likewise were

insufficient because they did not address the problem of wire

chafing in “an adjustable pedal assembly” and did “not neces-

sarily go to the issue of motivation to attach the electronic

control on the support bracket.” /d. at 13a.

The court of appeals concluded that KSR’s other evidence

describing the prior use of electronic pedal position sensors

failed “to make out a prima facie case of obviousness.” Pet.

App. 14a. The court acknowledged that the evidence demon-

strated a motivation to combine an electronic pedal position

sensor with an adjustable pedal assembly and showed that

such a sensor “could have been’ mounted on the support

bracket of a pedal assembly,” but the court concluded that it

failed to show a particular “motivation to attach the electronic

9

control to the support bracket.” /d. at 14a-15a. The court of

appeals accordingly concluded that genuine issues of material

fact existed concerning “whether a person of ordinary skill in

the art would have been motivated * * * to attach an elec-

tronic control to the support structure of the [Asano] pedal

assembly.” Jd. at 16a-17a. It therefore vacated the district

court’s judgment and remanded the case “for further proceed-

ings on the issue of obviousness, and, if necessary, proceed-

ings on the issues of infringement and damages.” /d. at 17a.

DISCUSSION

This Court’s decision in Graham v. John Deere Co., 383

U.S. 1 (1966), sets out a flexible framework for determining

whether a claimed invention is nonobvious within the meaning

of Section 103(a) of the Patent Act of 1952, 35 U.S.C. 103(a),

That decision instructs the lower courts to determine the con-

tent of the prior art, identify the differences between the

prior art and the inventor’s claims, and then determine

whether a person of ordinary skill in the field would have

found the claimed invention obvious. The Federal Circuit has

transformed one means of establishing obviousness under

that framework—proof that the prior art provided a teaching,

suggestion, or motivation for combining separate prior art

references—into an inflexible requirement for determining

obviousness. As this case demonstrates, the Federal Circuit’s

teaching-suggestion-motivation test extends patent protection

to non-innovative combinations of familiar elements. The

issue is important, because many patent applications rest on

the combination of prior art references, and because exten-

sion of patent rights to obvious combinations of familiar ele-

ments retards, rather than advances, new discoveries. This

case presents a sound vehicle for the Court to determine

whether the Federal Circuit’s teaching-suggestion-motivation

10

test should continue to serve as the exclusive means of estab-

lishing obviousness under Section 103(a).

A. The Federal Circuit’s Imposition Of A Teaching-Sugges-

tion-Motivation Test To Determine Whether A Claimed

Invention Would Be Obvious Presents An Important

Question Of Patent Law That Warrants This Court’s

Review

1. This Court has explained that “the patent system rep-

resents a carefully crafted bargain that encourages both the

creation and public disclosure of new and useful advances in

technology, in return for an exclusive monopoly for a limited

period of time.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 63

(1998) (citing Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

489 U.S. 141, 150-151 (1989)). That bargain’s effectiveness in

inducing creative effort and disclosure depends on “a back-

drop of free competition in the exploitation of unpatented

designs and innovations,” and the nonobviousness require-

ment is essential in ensuring that “free exploitation of ideas

will be the rule, to which the protection of a federal patent is

the exception.” Bonito Boats, 489 U.S. at 151. Section 103(a)

embodies the understanding that “concepts within the public

grasp, or those so obvious that they readily could be, are the

tools of creation available for all.” /d. at 156; see Graham,

383 U.S. at 6.

This Court observed in Graham that Section 103(a)’s

nonobviousness requirement codifies a “functional approach,”

traceable to Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248

(1851), for defining the “general level of innovation necessary

to sustain patentability.” See Graham, 383 U.S. at 3-4, 11-12.

That approach proceeds from the perspective of a “hypotheti-

cal person” of ordinary skill in the relevant art, Dann v.

Johnston, 425 U.S. 219, 229 (1976), and turns on whether the

claimed invention “as a whole” would have been obvious at the

ll

time in light of the “differences between the subject matter

sought to be patented and the prior art.” 35 U.S.C. 103(a).

The “ultimate question” of patent validity is a question of

law, Graham, 383 U.S. at 17, but it rests on a judgment, in-

formed by relevant facts, of whether the hypothetical person

of ordinary skill in the art would have found the invention as

a whole “obvious.” Section 103(a) itself identifies three “cen-

tral factors relevant to any inquiry into obviousness” (/ohn-

ston, 425 U.S. at 226): the scope and content of the prior art,

the differences between the prior art and the claims at issue,

and the level of ordinary skill in the pertinent art. See Gra-

ham, 383 U.S. at 17. Other “secondary considerations” —in-

cluding a long-felt and unfulfilled need for the invention, the

prior failures of others, and the commercial success of the

invention—may also provide “indicia” supporting the legal

conclusion of “obviousness or nonobviousness.” /d. at 17-18,

35-36.

In specifying nonobviousness as a condition of patent-

ability, Section 103(a) codifies the Court’s historic approach

to evaluating whether a claimed invention is sufficiently inno-

vative to warrant a patent, Graham, 383 U.S. at 17, but it does

not specify how courts should weigh the relevant factors in

making the legal determination, in any particular case, of

whether an invention as a whole would have been “obvious.”

While the Court identified in its Grah wm decision the frame-

work for analysis and the relevant considerations, it observed

that the application of Section 103(a) would continue to de-

pend on the “given factual context,” that the inquiry is compa-

rable to that involving similar fact-dependant legal judgments

such as “negligence and scienter,” and that further refine-

ments “should be amenable to a case-by-case development.”

Id. at 18.

This Court’s decisions from Graham forward reflect the

understanding that courts must apply Section 103(a) “realisti-

12

caily” as a “practical test of patentability.” See 383 U.S. at 17.

The Court has accordingly declined to embrace rigid categori-

cal rules that would inflexibly limit the ability of the courts or

the United States Patent and Trademark Office (PTO)

—which has “the primary responsibility for sifting out unpat-

_entable material” (id. at 18)—to make individualized determi-

nations of obviousness. In none of its decisions has the Court

adopted the inflexible rule, which the Federal Circuit applied

in this case and has consistently articulated in other decisions,

that a court or PTO cannot conclude that a claimed invention

would have been obvious unless it makes “specific findings

showing a teaching, suggestion, or motivation to combine

prior art in the particular manner claimed by the patent at

issue” (Pet. App. 16a).*

2. The Federal Circuit’s teaching-suggestion-motivation

test subjects persons challenging the validity of a patent, as

well as PTO’s patent examiners, to substantial obstacles in

establishing obviousness beyond those that Section 103(a) and

this Court’s decisions prescribe. As this case aptly demon-

strates, the Federal Circuit’s rigorous and inflexible applica-

tion of its test alters Graham’s functional approach to the

nonooviousness inquiry in a way that unnecessarily sustains

patents that would otherwise be subject to invalidation as

obvious.

* See Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280-282 (1976) (ruling

that a claimed invention of a method for cleaning dairy barns was

obvious); Johnston, 425 U.S. at 226-230 (ruling that a claimed invention

of a computer program for managing bank accounts was obvious);

Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 61-

63 (1969) (ruling that a claimed invention of a paving machine was

obvious); United States v. Adams, 383 U.S. 39, 48-52 (1966) (ruling that

the claimed invention of a new type of battery was not obvious);

Graham, 383 U.S. at 24-26, 32-37 (ruling, in two consolidated cases, that

a claimed invention of a plow improvement and a claimed invention of

a container cap were obvious).

13

The Federal Circuit’s test departs from this Court’s pre-

cedents because it treats a particular method of demonstrat-

ing obviousness—namely, proof that the prior art taught,

suggested, or provided a motivation for combining the prior

art references—as the exclusive means of showing obvious-

ness. As the court of appeals stated in this case,

When obviousness is based on teaching of multiple prior

art references, the movant must also establish some “sug-

gestion, teaching, or motivation” that would have led a

person of ordinary skill to combine the relevant prior art

teachings in the manner claimed.

Pet. App. 6a (citations omitted; emphasis added). See id. at

7a, 1la-12a. While this Court’s flexible approach allows ample

room to rely on such teachings, suggestions, or motivations as

a sufficient basis for a finding of obviousness, see United

States v. Adams, 383 U.S. 39, 47 (1966), the Federal Circuit’s

test mandates that showing as a prerequisite to an obvious-

ness determination in any case involving a novel combination

of previously known elements. See Pet. App. at 12a (“the

district court was required to make specific findings as to_

whether there was a suggestion or motivation to combine the

teachings of Asano with ar »ectronic control in the particular

manner claimed by claim 4" (emphasis added)).’

* After the Court called for the views of the United States, the

Federal Circuit stated that its teaching-suggestion-motivation test “is

consistent with governing obviousness law,” citing Section 103(a) and

this Court’s decisions in Johnston and Graham. See In re Kahn, 441

F.3d 977, 987 (2006). But the Kakn decision does not acknowledge the

key difference: This Court's decisions nowhere suggest that a court

must make the specific findings that the Federal Circuit requires. To

the contrary, this Court has found that a claimed invention would have

been obvious based on the small difference between the prior art and

what the inventor claimed, without any mention of teaching, suggestion,

or motivation. See Johnston, 425 U.S. at 230.

14

The Federal Circuit’s test creates a substantial obstacle

to showing that a claimed invention that simply combines

known features without substantial innovation would have

been obvious, because the test requires the party challenging

the patent to come forward with affirmative evidence in the

prior art of a teaching, suggestion, or motivation to combine

the features. See, ¢.g., Jn re Kotzab, 217 F.3d 1365, 1370-1371

(Fed. Cir. 2000); Winner Int'l Royalty Corp. v. Wang, 202

F.3d 1340, 1348-1349 (Fed. Cir. 2000); /n re Rouffet, 149 F.3d

1350, 1357 (Fed. Cir. 1998). That showing may be difficult or

impossible even though the combination, on its face, would

have been obvious. For example, such affirmative evidence

may be lacking if the claim arose in a newly emerging techni-

cal field or if the combination was so obvious to persons

skilled in the art that no one would have had need or incentive

to record the trivial extension of the art. See John R.

Thomas, Formalism at the Federal Circuit, 52 Am. U. L. Rev.

771, 801-802 (2003).°

The Federal Circuit states that the teaching, suggestion

or motivation

may be found explicitly or implicitly: 1) in the prior art

references themselves; 2) in the knowledge of those of

ordinary skill in the art that certain references, or disclo-

* Indeed, the Federal Cireuit’s approach has led it to hold that

“(ejommon knowledge and common sense,’ even if assumed to derive

from the | PTO’s] expertise, do not substitute” for evidence of a “specific

hint or suggestion” to combine prior art. See /n re Lee, 277 F 3d 1338,

1344-1345 (2002). Thus, even when prior art is closely analogous to the

invention at issue, the court has required evidence showing a particular

suggestion or motivation to combine the prior art to create the in-

vention. See Jn re Dembiczak, 175 F 3d 994, 997, 1000 (Fed. Cir. 1999)

(lawn trash bag having a Halloween pumpkin design is not prima facie

obvious in the absence of evidence of suggestion to combine normal

trash bag with references describing pumpkin designs on paper bags).

15

sures in those references, are of special interest or impor-

tance in the field; or 3) from the nature of the problem to

be solved, “leading inventors to look to references relating

to possible solutions to that problem.”

Pet. App. 6a (citations omitted). The court’s seemingly help-

ful observation that the teaching, suggestion, or motivation

may be found “explicitly or implicitly” has not, in practice,

substantially reduced the burden that its test imposes. This

case is illustrative. The district court found that the Asano

patent revealed all of the elements of Claim 4 of the Engelgau

patent except the mounting of a pivot-actuated electronic

sensor on the adjustable pedal assembly support structure,

and that other manufacturers had mounted such sensors on

non-adjustable pedal assembly support structures. See id. at

42a-44a. The court of appeals nevertheless concluded that a

mechanical engineer with experience in pedal assembly faced

with the problem of mounting an electronic sensor on an ad-

justable pedal assembly would not be implicitly motivated to

transfer the known technique for mounting the electronic

sensor on the support structure of non-adjustable assemblies

to adjustable assemblies. See id. at 1la-13a; see also 13a-l5a

(rejecting the district court’s alternative bases for finding a

teaching, suggestion, or motivation to combine the elements).’

The Federal Circuit justifies its rigid teaching-suggestion-

motivation test as a necessary measure to eliminate the possi-

bility of “hindsight-based obviousness analysis.” Pet. App. 6a-

7a (quoting Jn re Dembiczak, 175 F.3d 994, 999 (Fed. Cir.

1999)); see Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed.

See generally Jn re Lee, 277 F.3d at 1343 (requiring “objective

evidence” of a particular “teaching, motivation, or suggestion to select

and combine the | prior art] references”); [n re Dembiczak, 175 F 3d at

999 (requiring “actual evidence” revealing a “clear and particular”

reason to select and combine the elements as combined in the inven-

tion).

16

Cir. 2000). While an inquiry into teaching, suggestion, or

motivation may shed light on the question of obviousness, this

Court did not perceive a need in Graham or subsequent cases

to employ such a rigid prophylactic test to prevent courts or

patent examiners from “read[ing] into the prior art the teach-

ings of the invention in issue.” Graham, 383 U.S. at 36. The

Federal Circuit’s test effectively constricts this Court’s guid-

ance in Graham respecting the nonobviousness inquiry, it

fails to account adequately for the problem-solving abilities of

persons of ordinary skill in the art, and it underestimates the

capabilities of courts and patent examiners to “resist the

temptation” of hindsight and to consider fairly the question of

obviousness. See ibid. Moreover, if there is a need for the

Federal Circuit's strict measures to guard against the possi-

bility of hindsight, this Court should make that decision itself.

B. The Question Presented Has Significant Practical Con-

sequences And This Case Provides An Appropriate Vehi-

cle For Its Resolution

1. The Federal Circuit’s adoption and strict application of

its teaching-suggestion-motivation test presents an issue of

substantial and ongoing practical importance. As this case

illustrates, the test renders patent examination and litigation

more costly, it grants patent applicants unjustified rewards

for disclosing non-innovative subject matter, and it forecloses

competitors from using the public storehouse of knowledge

that should be freely available to all.

The interlocutory posture of this case does not counsel

against review, because further proceedings on remand are

themselves a product of the Federal Circuit’s rigid rule. The

Federal Circuit's decision to vacate the district court’s grant

of summary judgment will require additional proceedings to

determine whether Claim 4 of the Engelgau patent would

have been obvious. The district court will be required to hold

17

a trial to determine, among other things, “whether a person

of ordinary skill in the art would have been motivated, at the

time the invention was made, to attach an electronic control

to the support structure of the pedal assembly disclosed by

the Asano patent.” Pet. App. 16a-17a. Those costly proceed-

ings are unnecessary. The district court convincingly ex-

plained that the combination of known elements would have

been obvious to a mechanical engineer confronted with the

task of developing an electronically controlled adjustable

pedal. /d. at 40a-46a. The claimed invention here is at least

as obvious as the inventions in Graham, see 383 US. at 24-26,

32-37, and Anderson’s-Black Rock, Inc. v. Pavement Salvage

Co., 396 U.S. 57, 60-63 (1969). The Federal Circuit's test nev-

ertheless prevents summary resolution of the issue, poten-

tially grants respondents an undeserved windfall, and pre-

vents a competitor from employing what should be “tools of

creation available to all.” Bonito Boats, 489 U.S. at 156.

The Federal Circuit’s test not only shunts cases to trial

that should be resolved at summary judgment, but it also un-

duly restricts the ability of PTO to reject obvious patent ap-

plications. Congress vested PTO with “primary responsibility

for sifting out unpatentable material.” Graham, 383 U.S. at

18. That responsibility, which requires technical expertise

drawn from a wide variety of disciplines, places extraordinary

burdens on patent examiners, particularly in light of the high

volume of patent applications. In fiscal year 2005 alone, PTO

received more than 400,000 patent applications. Section

103(a) plays a crucial role in filtering out non-innovative appli-

cations and focusing the examination efforts on substantial

claims. When PTO applies its technical expertise and reason-

ably articulates why a patent claim is obvious under Section

103(a), that determination is entitled to deference reflecting

“the primacy of the PTO in ensuring that the claims allowed

cover only subject matter that is properly patentable.”

18

Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S.

17, 33-34 (1997). PTO’s obviousness inquiry should not re-

quire an unnecessary search for evidence showing a perticular

suggestion, teaching, or motivation to make insubstantially

innovative combinations of elements that are known in the

prior art. PTO should instead be allowed to bring to bear its

full expertise—including its reckoning of the basic knowledge

and common sense possessed by persons in particular fields

of endeavor—when making the predictive judgment whether

an invention would have been obvious to a person of ordinary

skill in the art.”

2. Respondents contend (Br. in Opp. 2, 17-19) that this

case merely involves a routine application of summary judg-

ment standards that does not warrant this Court’s review. To

the contrary, the case presents an important and recurring

issue of basic importance in the field of patent law. The Fed-

eral Circuit’s longstanding teaching-suggestion-motivation

test has a substantial impact on commercial enterprise and

innovation. See Cisco Systems Amicus Br. It also has been

the subject of critical scholarly commentary. See Intellectual

Property Law Professors Amicus Br. The Federal Trade

Commission’s comprehensive report on the United States

patent system noted the controversy surrounding the

teaching-suggestion-motivation test, describing it as “* core

issue in assessing obviousness and a focal point of current

* Cf. City of Erie v. Pap’s A.M., 529 U.S. 277, 298 (2000) (opinion

of O'Connor, J.) (agency may take official notice of facts within its

special knowledge and is not confined to the evidence in the record in

reaching its expert judgment if party has opportunity to respond); FCC

v. National Citizens Comm. for Broad ., 436 U.S. 775, 813-814 (1978)

(agency's predictive judgment forecasting “the direction in which future

public interest lies necessarily involves deductions based on the expert

knowledge of the agency” (quoting Federal Power Comm'n v. Trans-

continental Gas Pipe Line Corp., 365 U.S. 1, 29 (1961))).

19

debate.” See Federal Trade Comm'n, To Promote Innova-

tion: The Proper Balance of Competition and Patent Law

and Policy, ch. 4, at 9-15 (2003), available at <www.ftc.gov/

os/2003/10/innovationrpt.pdf>.

This case presents a sound vehicle for examining the mer-

its of the Federal Circuit's test. The court of appeals squarely

ruled that KSR’s undisputed evidence at the summary judg-

ment stage of the proceedings did not establish a prima facie

case of obviousness under its established precedents requir-

ing proof of a teaching, suggestion, or motivation to combine.

Pet. App. 14a-15a. Respondents contested KSR’s assertion

that the claimed invention would be obvious to one of ordinary

skill in the art, but they did not dispute the core factual re-

cord relevant to this Court’s review of the court of appeals’

test. See C.A. App. 1547 (Radcliffe Decl. paras. 14-16), 1550

(Andresen Decl. paras. 5-7). KSR has properly preserved its

challenge to the court of appeals’ teaching-suggestion-motiva-

tion test by urging in the proceedings Lelow that this Court’s

decisions provided an alternative basis for affirmance. See

Pet. C.A. Br. 47-50. This case accordingly presents no proce-

dural impediments to this Court’s review.

20

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted.

PAUL D. CLEMENT

Solicitor General

PETER D. KEISLER

Assistant Attorney General

THOMAS G. HUNGAR

JAMES A. TOUPIN

General Counsel

JOHN M. WHEALAN

Deputy General Counsel

and Solicitor Deputy Solicitor General

LINDA M. ISACSON JEFFREY P. MINEAR

WILLIAM G. JENKS Assistant to the Solicitor

ROBERT J. MCMANUS General

Associate Solicitors ANTHONY J. STEINMEYER

United States Patent and ANTHONY A. YANG

Trademark Office Attorneys

MAY 2006