Teleflex Incorporated * * * sued KSR International Company [in a federal district court] for patent infringement. The patent at issue is entitled “Adjustable Pedal Assembly With Electronic Throttle Control.” The patentee is Steven J.

Engelgau, and the patent is referred to as “the Engelgau patent.” Telefl ex holds the exclusive license to the patent.

Claim 4 of the Engelgau patent describes a mechanism for combining an electronic sensor with an adjustable automobile pedal so the pedal’s position can be transmitted to a computer that controls the throttle in the vehicle’s engine.

[KSR designed a pedal assembly for General Motors Corporation (GMC) to use in its Chevrolet and GMC light trucks.] When Telefl ex accused KSR of infringing the Engelgau patent * * *, KSR countered that claim 4 was invalid * * * because its subject matter was obvious. * * * *

Seeking to resolve the question of obviousness with * * * uniformity and consistency, [the courts have] employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. KSR challenges that test, or at least its application in this case.

* * * *

* * * Important for this case are two adjustable pedals disclosed in

[other patents]. The Asano patent reveals a support structure that houses the pedal so that even when the pedal location is adjusted relative to the driver, one of the pedal’s pivot points stays fi xed. * * * The Redding patent reveals a different, sliding mechanism where both the pedal and the pivot point are adjusted.

[Also important for this case are two] patents involving electronic pedal sensors for computercontrolled throttles. These inventions

* * * taught that it was preferable to detect the pedal’s position in the pedal assembly, not in the engine. The [Smith] patent disclosed a pedal with an electronic sensor on a pivot point in the pedal assembly.

* * * *

* * * The [Rixon patent] discloses an adjustable pedal assembly with an electronic sensor for detecting the pedal’s position. The District Court granted summary judgment in KSR’s favor.

* * * *

* * * The court compared the teachings of the prior art to the claims of Engelgau. It found “little difference.” [The] Asano [patent]

taught everything contained in claim 4 except the use of a sensor to detect the pedal’s position and transmit it to the computer controlling the throttle. That additional aspect was revealed in sources such as * * * sensors [previously] used by Chevrolet.

* * * The District Court [also]

held KSR had satisfi ed the [TSM]

test. It reasoned (1) the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals, (2) Rixon provided the basis for these developments, and (3) Smith taught a solution to the wire chafi ng problems in Rixon, namely locating the sensor on the fi xed structure of the pedal.

* * * *

* * * [The U.S.] Court of Appeals [for the Federal Circuit]

reversed. It ruled the District Court had not been strict enough in applying the [TSM] test, having failed to make “fi nding[s] as to the specifi c understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention

* * * to attach an electronic control to the support bracket of the Asano assembly.”

Here, the Court of Appeals found, the Asano pedal was designed to solve the “constant ratio problem”—that is, to ensure that the force required to depress the pedal is the same no matter how the pedal is adjusted—whereas Engelgau sought to provide a simpler, smaller, cheaper adjustable electronic pedal. As for Rixon, the court explained, that pedal suffered from the problem of wire chafi ng but was not designed to solve it.

In the court’s view Rixon did not teach anything helpful to Engelgau’s purpose. Smith, in turn, did not relate to adjustable pedals and did not “necessarily go to the issue of motivation to attach the electronic control on the support bracket of the pedal assembly.”

* * * *

We begin by rejecting the rigid approach of the Court of Appeals.

Throughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and fl exible approach inconsistent with the way the Court of Appeals applied its TSM test here.

* * * For over a half century, the Court has held that a patent for a combination which only unites old elements with no change in their respective functions * * * obviously withdraws what is already known into the fi eld of its monopoly and diminishes the resources available to skillful

[persons]. * * * [Emphasis added.]

* * * *

* * * 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 his or her skill.

* * * *

The fi rst error of the Court of Appeals in this case was to * * *

[hold] that courts and patent examiners should look only to the problem the patentee was trying to solve.

The second error of the Court of Appeals lay in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.

* * * *

When we apply the standards we have explained to the instant facts, claim 4 must be found obvious.

* * * We see little difference between the teachings of Asano and Smith and the adjustable electronic pedal disclosed in claim 4 of the Engelgau patent. A person having ordinary skill in the art could have combined Asano with a pedal position sensor in a fashion encompassed by claim 4, and would have seen the benefi ts of doing so.

* * * *

* * * The judgment of the Court of Appeals is reversed, and the case remanded for further proceedings consistent with this opinion.

Questions:-

1. Suppose that a person of ordinary skill creates an item by implementing a predictable variation of another’s patented invention. Does the Court’s opinion indicate that the item is likely or unlikely to be patentable? Discuss.

2. Based on the Court’s reasoning, what other factors should be considered in determining the obviousness of a patent?