1. Graham provided an expansive and flexible approach to the obviousness question that is inconsistent with the way the Federal
Circuit applied its TSM test here. Neither §103’s enactment nor Graham’s analysis disturbed the Court’s earlier instructions
concerning the need for caution in granting a patent based on the combination
of elements found in the prior art. See Great Atlantic & Pacific Tea Co.
v. Supermarket Equipment Corp., 340 U. S. 147, 152. Such a combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results. See, e.g., United States v. Adams, 383 U. S. 39, 50–52. When a work is available in one field, design incentives and other market forces
can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable
variation, and would see the benefit of doing so, §103 likely bars its
patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than
the predictable use of prior-art elements according to their established
functions. Following these principles may be difficult if the claimed subject matter involves more than the simple substitution of one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement. To determine whether there was an apparent reason to combine the known
elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and
to the background knowledge possessed by a person having ordinary skill in the art. To facilitate review, this analysis should be made
explicit. But it need not seek out precise teachings directed to the
challenged claim’s specific subject matter, for a court can consider the
inferences and creative steps a person of ordinary skill in the art would
employ. Pp. 11–14.
(b) The TSM test captures a helpful insight: A patent composed of several elements is not proved obvious merely by demonstrating
that each element was, independently, known in the prior art.
Although common sense directs caution as to a patent application claiming as
innovation the combination of two known devices according to their established functions, it can be important to identify a reason
that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does. Inventions usually rely upon building blocks long since uncovered, and claimed
discoveries almost necessarily will be combinations of what, in some sense, is al-ready known. Helpful insights, however, need not become rigid and mandatory formulas. If it is so applied, the TSM test is
incompatible with this Court’s precedents. The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. In many fields there may be little discussion of obvious techniques or
combinations, and market demand, rather than scientific literature, may of-ten drive design trends. Granting patent protection to advances
that would occur in the ordinary course without real innovation retards
progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility. Since the TSM test was devised, the Federal Circuit doubtless has applied it in accord with these principles in many cases. There is no necessary
inconsistency between the test and the Graham analysis. But a court errs where, as here, it transforms general principle into a rigid rule limit-ing the obviousness inquiry. Pp. 14–15.
(c) The flaws in the Federal Circuit’s analysis relate mostly to its narrow conception of the obviousness inquiry consequent in its
application of the TSM test. The Circuit first erred in holding that courts and patent examiners should look only to the problem the
patentee was trying to solve. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a
reason for combining the elements in the manner claimed. Second, the appeals court erred in assuming that a person of ordinary skill in
the art attempting to solve a problem will be led only to those prior art
elements designed to solve the same problem. The court wrongly concluded that because Asano’s primary purpose was solving the
constant ratio problem, an inventor considering how to put a sensor on an adjustable pedal would have no reason to consider putting it on the Asano pedal. It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of
ordinary skill often will be able to fit the teachings of multiple patents
together like pieces of a puzzle. Regardless of Asano’s primary pur-pose, it provided an obvious example of an adjustable pedal with
a fixed pivot point, and the prior art was replete with patents indicating that such a point was an ideal mount for a sensor. Third, the court erred in concluding that a patent claim cannot be proved
obvious merely by showing that the combination of elements was obvious to try. 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 in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Finally, the court drew
the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. Rigid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law. Pp. 15–18.
2. Application of the foregoing standards demonstrates that claim 4is obvious. Pp. 18–23.
(a) The Court rejects Teleflex’s argument that the Asano pivot mechanism’s design prevents its combination with a sensor in the manner claim 4 describes. This argument was not raised before the District Court, and it is unclear whether it was raised before the Federal Circuit. Given the significance of the District Court’s finding that combining Asano with a pivot-mounted pedal position sensor
fell within claim 4’s scope, it is apparent that Teleflex would have made clearer challenges if it intended to preserve this claim. Its failure to clearly raise the argument, and the appeals court’s silence on the is-sue, lead this Court to accept the District Court’s conclusion. Pp. 18–
(b) The District Court correctly concluded that when Engelgau designed the claim 4 subject matter, it was obvious to a person of
ordinary skill in the art to combine Asano with a pivot-mounted pedal
position sensor. There then was a marketplace creating a strong incentive to convert mechanical pedals to electronic pedals, and
the prior art taught a number of methods for doing so. The Federal Circuit considered the issue too narrowly by, in effect, asking whether a pedal designer writing on a blank slate would have chosen
both Asano and a modular sensor similar to the ones used in the Chevrolet trucks and disclosed in the ’068 patent. The proper question
was whether a pedal designer of ordinary skill in the art, facing the wide range of needs created by developments in the field, would have seen an obvious benefit to upgrading Asano with a sensor. For such a de-signer starting with Asano, the question was where to attach the sensor. The ’936 patent taught the utility of putting the sensor on the pedal device. Smith, in turn, explained not to put the sensor
on the pedal footpad, but instead on the structure. And from Rixon’s known wire-chafing problems, and Smith’s teaching that the pedal assemblies must not precipitate any motion in the connecting wires, the designer would know to place the sensor on a nonmoving part of the pedal structure. The most obvious such point is a pivot
point. The designer, accordingly, would follow Smith in mounting the sensor there. Just as it was possible to begin with the objective to
upgrade Asano to work with a computer-controlled throttle, so too was it
possible to take an adjustable electronic pedal like Rixon and seek an
improvement that would avoid the wire-chafing problem. Teleflex has not shown anything in the prior art that taught away from the use of Asano, nor any secondary factors to dislodge the
determination that claim 4 is obvious. Pp. 20–23.
3. The Court disagrees with the Federal Circuit’s holding that genuine issues of material fact precluded summary judgment. The ultimate judgment of obviousness is a legal determination. Graham, 383 U. S., at 17. Where, as here, the prior art’s content, the
patent claim’s scope, and the level of ordinary skill in the art are not in ma-terial dispute and the claim’s obviousness is apparent,
summary judgment is appropriate. P. 23.
119 Fed. Appx. 282, reversed and remanded. Next Page ->