Infringement of a Patent

Among the various decisions in matters related to patents, the recent decision of the US Supreme Court in the case KSR International vs. Teleflex Inc. has clarified confusions prevailing in regard to non-obviousness of an invention.

KSR International, manufacturing and supplying auto-parts developed an adjustable pedal system for cars with cable actuated throttles obtained a US design patent and added a modular sensor to its design for computer controlled throttle. Teleflex which is a competitor of KSR in this business is the exclusive licensee of a patent granted Engelgau entitled ‘Adjustable pedal assembly with electronic throttle control’ under US patent and filed the infringement suit against KSR International for infringing a patent of which it was the sole licensee as the patent relates to computerized adjustable pedal system for controlling fuel supply (throttle) to the engine of an automobile. KSR countered that patent was invalid as it did not satisfy the criterion of Sect6ion 103 in the US Patent Act which forbids issuance of a patent when “the difference between the subject matter sought to be patented and the prior art are such that the subject matter as a whole have been obvious at the time of the invention was made to a person having ordinary skill in the art”. Teleflex had first approached the District Court which granted a judgement in favour of KSR employing TSM Test (teaching, suggestion or motivation) under which a patent claim is only proved obvious if the prior art, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine prior art teachings. However, the Court of Appeals reversed the decision of the District Court on the grounds that it did not apply the TSM test properly.

The Supreme Court unanimously rejected the verdict of the Court of Appeals on following grounds:

That the Court of Appeals failed to recognize the problem motivating the patentee and applied the TSM criterion in a rigid manner and failed to take a broad view.
That the Court of Appeals assumed 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.
That the Court of Appeals concluded wrongly that a patent claim cannot be obvious merely by showing that the combination of elements was obvious to try.

The Supreme Court while clarifying the confusion in the case was of the view that the obviousness inquiry could not be confined by a formalistic conception of the words teaching, suggestion, and motivation, as the common sense teaches that familiar items may have obvious uses beyond their primary purposes. It also declared that the District Court was correct to conclude that a person of ordinary skill to combine earlier patents on adjustable pedals. There existed a market, which created a strong incentive to convert mechanical pedals to electronic pedals.

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Infringement of a Patent-US