CAFC: District court must specify motivation to combine prior art references


Teleflex v. KSR (Fed. Cir. 2004) (unpublished).

Intro: Teleflex sued KSR for alleged infringement of Teleflex’s patented adjustable gas-pedal assembly (Patent No. 6,237,565).  The case was dismissed on summary judgment after the judge determined that the invention was obvious.  Teleflex appealed the decision.

Obviousness: 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." The determination of whether an invention is obvious is based on a number of factors — commonly termed Graham Factors, including:

  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.

If obviousness is found by combining multiple references, there must also be some motivation to combine the prior art teachings in the particular manner claimed. In re Kotzab.

The Case: In its decision, the Appellate Court agreed with Teleflex, that the district court applied an incomplete teaching-suggestion-motivation test. 

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.” . . . The 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.

Because the district court failed to make specific findings as to the suggestion or motivation to combine references, the CAFC vacated and remanded.