<<font size="2">Patent holders:</font> be careful; section 103 of the US Patent Act is alive.  This caveat seems to be the  broad- nontechnical message obtained  from the recently decided US Supreme Court case, KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727.  This US Supreme Court decision clarified the test to be followed when granting a new patent on an item that combines elements of exiting patents.   Yet, even though under 35 U.S.C. § 282 an issued patent is presumed valid, it is interesting to see how patents already acquired may be trembled (lost?) by the posteriori application of both the US Patent Act §103 (35 U.S.C. §103) and this recently refurbished test. 

Section 103 of the US Patent Act prohibits the granting of patents when "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."  In simple words, if the new product to be patented is a combination of existing patents and common sense, a patent cannot be granted.  The US Supreme Court established an objective analysis for the application of §103 in 1966.  This analysis is called the Graham analysis. 

The Graham analysis is set as follows: "The scope and content of the prior art are . . . determined; differences between the prior art and the claims at issue are . . . ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness [sic] of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." having ordinary skill in the art."   Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 86 S. Ct. 684, 15 L. Ed. 2d 545.   In addition to the Graham test, US Circuit courts have used the TSM ("teaching, suggestion, or motivation") test to solve the 'obviousness' issue required by the Graham test. 

In KSR Int'l Co. v. Teleflex Inc. (KSR v. Teleflex), the US Supreme Court reversed the US Circuit court rigid interpretation of the TSM test and affirmed most of the District Court findings and holding of this case. Teleflex was the licensee of a US patent.  Teleflex patent refers to a ‘position-adjustable pedal assembly with an electronic pedal position sensor attached a fixed pivot point."  This patent combines elements of previously granted US patents.    Teleflex sued KSR for patent infringement.  KSR holds a US patent for ‘adjustable pedal system for cars with cable-actuated throttles' and KSR decided to include a modular sensor to its design to make it compatible with GMC trucks (KSR obtained a contract with GMC-General Motors- for the supply of these pedals and they needed to be adjusted to GMC' trucks).  Teleflex claimed KSR use of sensor in KSR's patented pedal was a violation of Teleflex patent. 

KSR defended by claiming that Teleflex patent was granted in violation of §103 of the US Patent Act.  The District Court granted summary judgment for KSR after a thorough application of the Graham test.  The Circuit court reversed the granting of summary judge and, according to the US Supreme Court decision, it erred when rigidly applying the TSM test to determine the ‘obviousness' factor in this case.

Again, KSR v.Teleflex clarifies with acumen how the Graham and the TSM are to be applied to patents holding elements of other already granted patents.  And, even though these tests are a game of words, they are necessary to a uniform application of the law.  Yet, we wonder what the scope of KSR v.Teleflex would be for those patent-holders in situations analogous to Teleflex.  Would competitors sue others with clearly erroneous patents under KSR v.Teleflex? What would, if anything, patent-holders like Teleflex do against the US Patent Office? May KSR v.Teleflex incentivize patent infringement lawsuits?