Teleflex, Inc. v. Ksr International Co. , 119 F. App'x 282 ( 2005 )

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1152
TELEFLEX, INCORPORATED and
TECHNOLOGY HOLDING COMPANY,
Plaintiffs-Appellants,
v.
KSR INTERNATIONAL CO.,
Defendant-Appellee.
__________________________
DECIDED: January 6, 2005
__________________________
Before MAYER,* SCHALL, and PROST, Circuit Judges.
SCHALL, Circuit Judge.
DECISION
Teleflex Incorporated and Technology Holding Company (collectively, “Teleflex”)
sued KSR International Co. (“KSR”) in the United States District Court for the Eastern
District of Michigan for infringement of U.S. Patent No. 6,237,565 B1 (“the ’565 patent”).
On December 12, 2003, the district court granted summary judgment in favor of KSR,
*
Judge Haldane Robert Mayer vacated the position of Chief Judge on
December 24, 2004.
after determining that claim 4 of the ’565 patent, the sole claim at issue, was invalid by
reason of obviousness. Teleflex Inc. v. KSR Int’l Co., 298 F. Supp. 2d 581 (E.D. Mich.
2003). Teleflex now appeals the district court’s decision. For the reasons set forth
below, we vacate the grant of summary judgment and remand the case to the district
court for further proceedings.
DISCUSSION
I.
Claim 4 of the ’565 patent relates to an adjustable pedal assembly1 for use with
automobiles having engines that are controlled electronically with a device known as an
electronic throttle control. As such, the assembly of claim 4 incorporates an electronic
pedal position sensor (referred to in claim 4, and throughout this opinion, as an
“electronic control”). The electronic control is responsive to the pedal pivot and thereby
generates an electrical signal corresponding to the relative position of the gas pedal
between the rest and applied positions. Claim 4 specifically provides for an assembly
wherein the electronic control is mounted to the support bracket of the assembly. This
configuration avoids movement of the electronic control during adjustment of the pedal’s
position on the assembly. Claim 4 reads:
A vehicle control pedal apparatus (12) comprising:
a support (18) adapted to be mounted to a vehicle
structure (20);
an adjustable pedal assembly (22) having a pedal arm (14)
moveable in force [sic] and aft directions with respect to
said support (18);
1
An adjustable pedal assembly (e.g., gas, break, or clutch) allows the
location of the pedal to be adjusted to accommodate a particular driver’s height.
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a pivot (24) for pivotally supporting said adjustable pedal
assembly (22) with respect to said support (18) and
defining a pivot axis (26); and
an electronic control (28) attached to said support (18) for
controlling a vehicle system;
said apparatus (12) characterized by said electronic control
(28) being responsive to said pivot (24) for providing a
signal (32) that corresponds to pedal arm position as said
pedal arm (14) pivots about said pivot axis (26) between
rest and applied positions wherein the position of said
pivot (24) remains constant while said pedal arm (14)
moves in fore and aft directions with respect to said pivot
(24).
The numbers in claim 4 correspond to the numbers in Figure 2 of the ’565 patent.
The specification of the ’565 patent indicates that prior-art pedal assemblies
incorporating an electronic control suffered from being too bulky, complex, and
expensive to manufacture. See ’565 patent, col. 1, ll. 48-53. It was this problem that
the ’565 patent set out to address. See id. col. 2, ll. 2-5.
Teleflex sued KSR in the Eastern District of Michigan, alleging that KSR’s
adjustable pedal assembly infringed claim 4 of the ’565 patent. KSR moved for
summary judgment of invalidity of claim 4 based on obviousness under 35 U.S.C.
§ 103. The district court granted KSR’s motion after determining that claim 4 was
obvious in view of a combination of prior art references. Teleflex timely appealed the
district court’s decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
II.
This court reviews a district court’s grant of summary judgment de novo.
TorPharm Inc. v. Ranbaxy Pharms., Inc., 336 F.3d 1322, 1326 (Fed. Cir. 2003). “In a
patent case, as in any other, summary judgment may be granted when there are no
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disputed issues of material fact, . . . or when the non-movant cannot prevail on the
evidence submitted when viewed in a light most favorable to it.” Knoll Pharm. Co. v.
Teva Pharms. USA, Inc., 367 F.3d 1381, 1383 (Fed. Cir. 2004). The movant carries the
initial burden of proving that there are no genuine issues of material fact. Celotex Corp.
v. Catrett, 477 U.S. 317, 322-24, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). If the
movant shows a prima facie case for summary judgment, then the burden of production
shifts to the nonmovant to present specific evidence indicating there is a genuine issue
for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S. Ct. 2505, 91 L. Ed.
2d 202 (1986). “When ruling on a motion for summary judgment, all of the nonmovant’s
evidence is to be credited, and all justifiable inferences are to be drawn in the
nonmovant’s favor.” Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 1379 (Fed. Cir.
2000). “Where the evidence is conflicting or credibility determinations are required, the
judgment should be vacated rather than reversed, and the case should be remanded for
further proceedings.” Jones v. Hardy, 727 F.2d 1524, 1531 (Fed. Cir. 1984).
“The grant of summary judgment of invalidity for obviousness must be done on a
claim by claim basis.” Knoll Pharm., 367 F.3d at 1383. Because patents are presumed
valid, “[t]he accused infringer must prove by clear and convincing evidence that each
claim that is challenged cannot reasonably be held to be non-obvious.” Id.; see also
Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed. Cir.
1998). Clear and convincing evidence exists when the movant “place[s] in the mind of
the ultimate fact finder an abiding conviction that the truth of its factual contentions are
‘highly probable.’” Colorado v. New Mexico, 467 U.S. 310, 316, 104 S. Ct. 2433, 81 L.
Ed. 2d 247 (1994).
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A patent claim is obvious, and thus invalid, when the differences between the
claimed invention 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.” 35 U.S.C. § 103; see also Graham v. John Deere Co., 383 U.S. 1, 14, 86 S.
Ct. 684, 15 L. Ed. 2d 545 (1966); In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999).
While obviousness is ultimately a legal determination, it is based on several underlying
issues of fact, namely: (1) the scope and content of the prior art; (2) the level of skill of
a person of ordinary skill in the art; (3) the differences between the claimed invention
and the teachings of the prior art; and (4) the extent of any objective indicia of non-
obviousness. See Graham, 383 U.S. at 17-18. When obviousness is based on the
teachings of multiple prior art references, the movant must also establish some
“suggestion, teaching, or motivation” that would have led a person of ordinary skill in the
art to combine the relevant prior art teachings in the manner claimed. See Tec Air, Inc.
v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1359-60 (Fed. Cir. 1999); Pro-Mold & Tool Co.
v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1572 (Fed. Cir. 1996). The nonmovant may
rebut a prima facie showing of obviousness with evidence refuting the movant’s case or
with other objective evidence of nonobviousness. See WMS Gaming, Inc. v. Int’l Game
Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999).
“The reason, suggestion, or motivation to combine [prior art references] 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 disclosures in
those references, are of special interest or importance in the field; or 3) from the nature
of the problem to be solved, ‘leading inventors to look to references relating to possible
04-1152 5
solutions to that problem.’” Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir.
2000) (quoting Pro-Mold, 75 F.3d at 1572). “Our case law makes clear that the best
defense against the subtle but powerful attraction of a hindsight-based obviousness
analysis is rigorous application of the requirement for a showing of the teaching or
motivation to combine prior art references.” Dembiczak, 175 F.3d at 999; see also Ruiz,
234 F.3d at 665 (explaining that the temptation to engage in impermissible hindsight is
especially strong with seemingly simple mechanical inventions). This is because
“[c]ombining prior art references without evidence of such a suggestion, teaching, or
motivation simply takes the inventor’s disclosure as a blueprint for piecing together the
prior art to defeat patentability—the essence of hindsight.” Dembiczak, 175 F.3d at 999.
Therefore, we have consistently held that a person of ordinary skill in the art must not
only have had some motivation to combine the prior art teachings, but some motivation
to combine the prior art teachings in the particular manner claimed. See, e.g., In re
Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (“Particular findings must be made as to
the reason the skilled artisan, with no knowledge of the claimed invention, would have
selected these components for combination in the manner claimed.” (emphasis added));
In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (“In other words, the examiner must
show reasons that the skilled artisan, confronted with the same problems as the
inventor and with no knowledge of the claimed invention, would select the elements
from the cited prior art references for combination in the manner claimed.” (emphasis
added)).
04-1152 6
III.
On appeal, Teleflex argues that we should vacate the district court’s grant of
summary judgment and remand the case because the district court committed multiple
errors in its obviousness determination. First, Teleflex urges that the district court erred
as a matter of law by combining prior art references based on an incorrect teaching-
suggestion-motivation test. Second, it contends that genuine issues of material fact still
remain as to whether a person of ordinary skill in the art would have considered it
obvious to combine prior art in the manner stated in claim 4. Finally, Teleflex argues
that the district court erred by not properly considering the commercial success of
Teleflex’s patented assembly and by failing to give adequate deference to the
patentability determination of the U.S. Patent and Trademark Office (“PTO”).
KSR responds that the district court did apply the correct teaching-suggestion-
motivation test, and that, under that test, the court correctly concluded that no genuine
issues of material fact existed so as to prevent the grant of summary judgment. KSR
contends that the district court properly discounted the declarations of Teleflex’s experts
because their opinions were based on mere legal conclusions. KSR also contends that
the district court properly dismissed Teleflex’s evidence of commercial success because
Teleflex failed to establish a nexus between commercial success and the claimed
invention. Finally, KSR argues that the district court gave proper deference to the PTO.
We agree with Teleflex that the district court did not apply the correct teaching-
suggestion-motivation test. We also agree that, under that test, genuine issues of
material fact exist, so as to render summary judgment of obviousness improper. For
04-1152 7
these reasons, we vacate the decision of the district court and remand for further
proceedings consistent with this opinion.
IV.
After comparing the teachings of the prior art with claim 4 of the ’565 patent, the
district court concluded that, at the time of the invention, all of the limitations of claim 4
existed in the prior art. The court explained that U.S. Patent No. 5,010,782, issued to
Asano et al. (“the Asano patent”), disclosed all of the structural limitations of claim 4 with
the exception of the electronic control. Teleflex, 298 F. Supp. 2d at 592 (“Asano
teaches an adjustable pedal assembly pivotally mounted on a support bracket with the
pedal moving in a fore and aft directions with respect to the support and the pivot
remaining in a constant position during movement of the pedal arm.”). Electronic
controls were well known in the prior art. Id. Consequently, after finding a person of
ordinary skill in the art would have been motivated to combine Asano and electronic
control references, the district court granted KSR’s motion for summary judgment of
invalidity by reason of obviousness.
The district court based its finding of a suggestion or motivation to combine
largely on the nature of the problem to be solved by claim 4 of the ’565 patent. Id. at
593-94. The court determined from the patent’s specification that the invention of the
’565 patent was intended to “solve the problem of designing a less expensive, less
complex and more compact [assembly] design.” Id. at 593. The court then explained
that U.S. Patent No. 5,819,593, issued to Rixon et al. (“the Rixon ’593 patent”),2 also
2
As explained by the district court, the Rixon ’593 patent teaches the
combination of an electronic control with an adjustable pedal assembly. The Rixon ’593
patent and claim 4 differ, however, in that the electronic control of Rixon is attached to
04-1152 8
“suffered from being too complex because the pedal position sensor is located in the
pedal housing and its fore and aft movement with the adjustment of the pedal could
cause problems with wire failure. Thus, the solution to the problem required an
electronic control that does not move with the pedal arm while the pedal arm is being
adjusted by the driver.” Id. at 594. The court then concluded that “a person with
ordinary skill in the art with full knowledge of Asano and the modular pedal position
sensors would be motivated to combine the two references to avoid the problems with
Rixon ’593.” Id.The district court also found an express teaching to attach the electronic control
to the support bracket of a pedal assembly based on the disclosure of U.S. Patent No.
5,063,811, issued to Smith et al. (“the Smith patent”). The court explained that Smith
teaches the use of a “rotary potentiometer . . . attached to a fixed support member and
responsive to the pedal’s pivot shaft.” Id. Moreover, the court stated that Smith
provided express teachings as to the desirability of attaching the electronic control to a
fixed support member in order to avoid the wire failure problems disclosed in the Rixon
’593 patent and solved by the ’565 patent: “[T]he wiring to the electrical components
must be secure from the possibility of chafing which will eventually result in electrical
failure. Thus, the pedal assemblies must not precipitate any motion in the connecting
wires themselves . . . .” Id. (quoting the Smith patent, col. 1, ll. 33-38).
(Cont’d. . . .)
the pedal housing instead of the support bracket. See Teleflex, 298 F. Supp. 2d at 594.
The electronic control of the Rixon reference consequently moves during adjustment of
the pedal assembly. Id. The electronic control of claim 4 does not move during
adjustment of the pedal assembly.
04-1152 9
Finally, the district court explained that the prosecution history of the ’565 patent
bolstered its finding of a suggestion or motivation to combine the Asano and electronic
control references. The court explained that the patent examiner initially rejected the
’565 patent in view of the teachings of U.S. Patent No. 5,460,061, issued to Redding et
al. (“the Redding patent”), and the Smith patent. The examiner stated that the Redding
patent disclosed the assembly structure of claim 4 and that Smith disclosed the
electronic control attached to the assembly support structure. The patentee overcame
the rejection, the court explained, by adding the limitation requiring the position of the
assembly’s pedal pivot to remain constant during adjustment of the assembly. (The
position of the pedal pivot of the Redding patent does not remain constant during
adjustment of the assembly position.) However, the Asano patent discloses an
assembly where the position of the pivot remains constant during adjustment of the
pedal assembly. Therefore, the district court reasoned, had Asano been cited to the
patent examiner, the examiner would have rejected claim 4 as obvious in view of the
Asano and Smith patents. Id. at 595.
We agree with Teleflex that the district court’s analysis applied an incomplete
teaching-suggestion-motivation test in granting KSR summary judgment. This is
because the district court invalidated claim 4 of the ’565 patent on obviousness grounds
without making “finding[s] as to the specific understanding or principle within the
knowledge of a skilled artisan that would have motivated one with no knowledge of [the]
invention to make the combination in the manner claimed.” Kotzab, 217 F.3d at 1371.
Under our case law, whether based on the nature of the problem to be solved, the
express teachings of the prior art, or the knowledge of one of ordinary skill in the art, the
04-1152 10
district court was required to make specific findings as to whether there was a
suggestion or motivation to combine the teachings of Asano with an electronic control in
the particular manner claimed by claim 4 of the ’565 patent. See Kotzab, 217 F.3d at
1371; Rouffet, 149 F.3d at 1357. That is, the district court was required to make
specific findings as to a suggestion or motivation to attach an electronic control to the
support bracket of the Asano assembly.
The district court correctly noted that the nature of the problem to be solved may,
under appropriate circumstances, provide a suggestion or motivation to combine prior
art references. However, the test requires that the nature of the problem to be solved
be such that it would have led a person of ordinary skill in the art to combine the prior
art teachings in the particular manner claimed. See Rouffet, 149 F.3d at 1357. We
have recognized this situation when two prior art references address the precise
problem that the patentee was trying to solve. See Ruiz, 357 F.3d at 1276 (“This record
shows that the district court did not use hindsight in its obviousness analysis, but
properly found a motivation to combine because the two references address precisely
the same problem of underpinning existing structural foundations.”). In this case, the
Asano patent does not address the same problem as the ’565 patent. The objective of
the ’565 patent was to design a smaller, less complex, and less expensive electronic
pedal assembly. The Asano patent, on the other hand, was directed at solving the
“constant ratio problem.”3 The district court’s reliance on the problems associated with
the Rixon ’593 patent similarly fails to provide a sufficient motivation to combine. This is
3
The constant ratio problem refers to the problem of creating an assembly
where the force required to depress the pedal remains constant irrespective of the
position of the pedal on the assembly. See Asano patent, col. 1, l. 48–col. 2, l. 13.
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because the Rixon ’593 patent does not address the problem to be solved by the ‘595
patent; rather, it suffers from the problem. The court did not explain how suffering from
the problem addressed by the ’595 patent would have specifically motivated one skilled
in the art to attach an electronic control to the support bracket of the Asano assembly.
Neither do we agree with the district court’s reliance on the express teachings of
the Smith patent. This is because the statement in the Smith patent that “the pedal
assemblies must not precipitate any motion in the connecting wires,” does not
necessarily go to the issue of motivation to attach the electronic control on the support
bracket of the pedal assembly. In other words, solving the problem of wire chafing is a
different task than reducing the complexity and size of pedal assemblies. What is more,
the Smith patent does not relate to adjustable pedal assemblies; therefore, it does not
address the problem of wire chafing in an adjustable pedal assembly.
Our view of the case is not altered by the ’565 patent’s prosecution history. That
is because a court’s task is not to speculate as to what an examiner might have done if
confronted with a piece of prior art. Rather, a court must make an independent
obviousness determination, taking into account the statutory presumption of patent
validity. See TorPharm, 336 F.3d at 1329-30 (“[W]here the factual bases of an
examiner’s decision to allow a claim have been undermined—as in other cases where
prior art not before the examiner is brought to light during litigation—a court’s
responsibility is not to speculate what a particular examiner would or would not have
done in light of the new information, but rather to assess independently the validity of
04-1152 12
the claim against the prior art under section 102 or section 103. Such determination
must take into account the statutory presumption of patent validity.”). 4
We also agree with Teleflex that the presence of genuine issues of material fact
rendered summary judgment inappropriate. KSR, in the first instance, failed to make
out a prima facie case of obviousness. The only declaration offered by KSR—a
declaration by its Vice President of Design Engineering, Larry Willemsen—did not go to
the ultimate issue of motivation to combine prior art, i.e. whether one of ordinary skill in
the art would have been motivated to attach an electronic control to the support bracket
of the assembly disclosed by Asano. Mr. Willemsen did state that an electronic control
“could have been” mounted on the support bracket of a pedal assembly. (Willemsen
Decl. at ¶ 33, 36, 39.) Such testimony is not sufficient to support a finding of
obviousness, however. See, e.g., In re Deuel, 51 F.3d 1552, 1559 (Fed. Cir. 1995)
(“‘Obvious to try’ has long been held not to constitute obviousness.”). Mr. Willemsen
also provided the following as a “specific motivation to combine” an electronic control
with an adjustable pedal assembly:
[A]n increasing number of vehicles sold in the United States
came equipped with electronic throttle control systems
because such systems offered various operational
advantages over cable-actuated throttle control systems
. . . . In order to function in a vehicle whose engine
incorporated an electronic throttle control, the adjustable
pedal assembly . . . would have had to be coupled to an
electronic pedal position sensor.
4
Noting Teleflex’s argument that the district court did not give adequate
deference to the PTO, we do not discern anything in the record indicating the district
court failed to properly defer to the PTO. Nevertheless, we reiterate that, on remand,
the district court must independently assess the evidence and determine whether KSR
has provided clear and convincing evidence indicating invalidity of claim 4 by reason of
obviousness.
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(Willemsen Decl. at ¶ 34, 37, 39.) This statement may be factually correct. However,
the issue is not whether a person of skill in the art had a motivation to combine the
electronic control with an adjustable pedal assembly, but whether a person skilled in the
art had a motivation to attach the electronic control to the support bracket of the pedal
assembly.
In addition, Teleflex offered two declarants—Clark J. Radcliffe, Professor of
Mechanical Engineering at Michigan State University; and Timothy L. Andresen, a
former engineer at Ford Motor Company and McDonnel-Douglas Corporation—in
rebuttal of the declaration of Mr. Willemsen. Mr. Radcliffe stated, inter alia, that “[t]he
location of the electronic control” (Radcliffe Decl. at ¶ 15) in claim 4 “was a simple,
elegant, and novel combination of features,” (Radcliffe Decl. at ¶ 16) as opposed to the
Rixon ’593 patent’s attachment of the electronic control to the assembly housing, which
was both electrically and mechanically complex (Radcliffe Decl. at ¶ 17). Mr. Andresen
also stated that the non-obviousness of claim 4 was reflected in Rixon’s choice to mount
the electronic control to the assembly housing instead of the assembly’s support
bracket. (Andresen Decl. at ¶ 5.) At the summary judgment stage of a proceeding, it is
improper for a district court to make credibility determinations. See, e.g., Jones, 727
F.2d at 1531. Therefore, by crediting KSR’s expert declarant and discrediting the two
declarants offered by Teleflex, the district court erred as a matter of law.
V.
In sum,
(1) We hold that, in granting summary judgment in favor of KSR, the district
court erred as a matter of law by applying an incomplete teaching-suggestion-motivation
04-1152 14
test to its obviousness determination. The correct standard requires a court to make
specific findings showing a teaching, suggestion, or motivation to combine prior art
teachings in the particular manner claimed by the patent at issue.
(2) Under this standard, we hold that genuine issues of material fact exist as
to 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.
(3) We consequently vacate the decision of the district court and remand the
case for further proceedings on the issue of obviousness, and, if necessary,
proceedings on the issues of infringement and damages.
Each party shall bear its own costs.
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