A patented invention for gas pedals should be determined invalid on grounds of obviousness, the lawyer of a major supplier of gas pedals for General Motors Corp. will argue Monday, Nov. 27, 2006, before the United States Supreme Court.

In 2002 Teleflex Inc., owners of a patent called “Adjustable Pedal Assembly With Electronic Throttle Control,” accused KSR International Co. of using the patented inven-tion without authorization.

KSR International Co., which supplies gas pedals for General Motors cars such as the Tahoe, Yukon, and Escalade, denied the accusation, asserting that the invention would be obvious to a person of reasonable skill in the art.

The Supreme Court will examine the “flexible standard” that according to Teleflex Inc. has been practiced for forty years in determining whether a patent is obvious. The case involves a question that has bedeviled courts for decades: How does a judge de-cide whether an invention is obvious, and has the U.S. Court of Appeals for the Federal Circuit gone against congressional intent in holding that a court must find that there was some “teaching, suggestion or motivation” that would have led a person of ordinary skill to combine existing technologies into the invention at issue?

“By limiting patent protection to ‘non-obvious subject matter,’ § 103(a) [of the Patent Act] prevents the legal system from burdening industry with a thicket of patents that are both economically and technologically trivial,” KSR International Co.’s lawyer said in briefs filed for the Supreme Court.

Teleflex Inc., on the other hand, points to the burden that would be imposed on the judiciary if the Court rules in favor of KSR International Co.

“Addressing this new issue…in this closely watched case would also imply an ob-ligation on the part of the judiciary to search out grounds for deeming patents obvious that are not presented by the parties, a substantial and burdensome departure from or-dinary practice,” the lawyer for Teleflex said in court documents.

The Engelgau patent at issue, named for inventor Steven Engelgau, lists four claims for the invention, only one of which—claim 4—has been called into question in this suit. The issue, as stated by petitioner KSR International Co., is the “combination of two pre-existing elements: (i) a pre-existing type of ‘adjustable pedal,’ and (ii) a pre-existing type of ‘electronic control’ found in newer cars.”

Adjustable gas pedals can be moved in resting position to maximize comfort for drivers of all different heights.

“Adjustable pedals are old in the art,” said KSR International Co. in the briefs. “They were a common technology at least twenty-five years before the alleged invention at issue here.

KSR International Co. also holds that since the mid-1990s, more and more cars have been equipped with engines that are controlled electronically.

Respondent Teleflex Inc., however, argues that not the combination of these two elements but the manner they were combined in is the critical feature that makes this invention patentable.

The patent is presumed valid until someone can present “clear and convincing” evidence of obviousness. To demonstrate the obvious nature of claim 4 of the patent, KSR International Co. presented to the district court a declaration from a person with experience in the industry. Teleflex Inc. did the same thing to show that claim 4 would not be obvious to a person in the field.

The district court held claim 4 invalid as obvious, but on appeal the Federal Cir-cuit reversed the holding and “remanded the case for further proceedings on the ques-tion whether claim 4 was obvious under the proper legal standard,” as stated in the re-spondent’s brief.

Case law regarding non-obvious subject matter stems back to 1851 when the U.S. Supreme Court held in Hotchkiss v. Greenwood that a method of manufacturing clay and porcelain doorknobs could not be termed "non-obvious" because the same method had been previously applied to wood and metal doorknobs.

Congress codified the concept of non-obvious subject matter in the Patent Act in 1952. In a subsequent case, Graham v. John Deere Co., the Court stated: "It bears re-peating that we find no change in the general strictness with which the test is to be ap-plied.”

In two other cases since the 1952 Patent Act, Anderson’s-Black Rock, Inc. v. Pavement Salvage Co. and Sakraida v. Ag Pro, Inc., the Court examined whether an alleged invention combines old elements without changing their functions or combines old elements in a manner that produces a new function.

KSR International Co. will argue that claim 4 of the Engelgau patent does not combine old elements in a way to create an effect greater than the effects of the ele-ments taken separately, thereby yielding no new function.

Copyright Brigham Young University 27 Nov 2006