close

For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney

MORE >

We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041
650.988.8500

San Francisco Office
555 California Street
13th Floor
San Francisco, CA 94104
415.875.2300

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101
206.389.4510

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036
212.921.2001

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200


Litigation Alert: KSR International Co. v. Teleflex Inc.—Ordinary Innovation is Obvious

On April 30, the Supreme Court in KSR International v. Teleflex, announced that "the results of ordinary innovation are not the subject of exclusive rights under the patent laws." The Court was criticizing the Federal Circuit's "teaching, suggestion and motivation" test for determining whether a patent is obvious, finding that a formalistic and rigid approach to this test "might stifle, rather than promote, the progress of useful arts." The Court accordingly adopted a more flexible approach, asking whether an improvement is more than a predictable use of prior art elements according to their established functions.

Teleflex is an exclusive licensee of a patent on an adjustable electronic pedal system. This system combines an electronic sensor with an automobile gas pedal for transmitting the pedal's position to a computer controlling the throttle in the vehicle's engine. Teleflex accused KSR of infringing the patent when KSR added an electronic sensor to one of its previously designed automobile gas pedals. KSR counter-attacked, alleging that the asserted patent claim was an obvious combination of known elements. The district court agreed with KSR and granted summary judgment of invalidity. The Federal Circuit, however, ruled that because the prior art references did not address the precise problem that the Teleflex patent was trying to solve, there was no teaching, suggestion or motivation to combine these references, and therefore vacated the summary judgment. The Supreme Court reversed and reinstated the summary judgment.

Section 103 prohibits issuance of a patent when "the differences between 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 its prior decision in Graham v. John Deere Co. of Kansas City, the Supreme Court established an objective framework for applying section 103 requiring: (1) determination of the scope and content of the prior art; (2) identification of any differences between the prior art and the claims at issue; (3) determination of the level of ordinary skill in the pertinent art; and (4) review of any relevant secondary considerations, such as commercial success, long felt but unresolved needs and failure of others. In subsequent cases, the Federal Circuit developed its "teaching, suggestion, or motivation" test to ensure a uniform and consistent approach to obviousness. Under this test, a patent claim is obvious only if there is "some motivation or suggestion to combine the prior art teachings" that can be found in the prior art itself, in the nature of the problem, or the knowledge of a person of ordinary skill in the art.

In KSR, the Supreme Court did not entirely reject the "teaching, suggestion, or motivation" test, but rather criticized the formalistic and rigid application of this test by the Federal Circuit in this case. The Court acknowledged that a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was independently known in the prior art. But, the Court ruled that any teaching, suggestion or motivation does not need to be explicit and courts can take into account the inferences and creative steps that a person of ordinary skill in the art may employ: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."

In order to determine whether there was a reason for one skilled in the art to combine known elements in a manner claimed by the patent, courts must analyze the interrelated teachings of prior art references, the effects of known demands in the marketplace, and the background knowledge possessed by a person of ordinary skill in the art. The Supreme Court stated that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results, and further indicated that any of the following may provide a "reason" for combining these known elements:

  • a need or problem known in the field of endeavor at the time of invention and addressed by the patent;
  • an obvious use of familiar elements beyond their primary purposes; or
  • a design need or market pressure to solve a problem.

The Court also rejected cases holding that a patent claim cannot be proved obvious merely by showing that that the combination of elements was "obvious to try." Rather, it recognized that, under particular circumstances, the fact that a combination was obvious to try might show that it was also obvious.

Finally, while acknowledging that there is a risk of hindsight bias, the Court emphasized that this risk cannot and should not overwhelm common sense in making obviousness determinations – either in the PTO or in the courts.

Thus, the Supreme Court has embraced a more expansive and flexible approach to obviousness. In particular, where new works have already been created and shared, further progress "is expected in the normal course," and thus ordinary innovation is deemed "obvious." This approach is likely to impact both prosecution and litigation practice and may make obviousness a more robust defense to patent infringement in certain circumstances. This is particularly relevant to the hardware and software industries, where patents frequently claim combinations of known techniques and elements.

The opinion is at http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf.


For further information, please contact:

Charlene M. Morrow, Patent Litigation Partner
cmorrow@fenwick.com, 650.335.7155

Heather N. Mewes, Patent Litigation Partner
hmewes@fenwick.com, 415.875.2302

Saina S. Shamilov, Patent Litigation Associate
sshamilov@fenwick.com, 650.335.7694

©2007 Fenwick & West LLP. All Rights Reserved.

This update is intended by Fenwick & West LLP to summarize recent developments in the law. It is not intended, and should not be regarded, as legal advice. Readers who have particular questions about these issues should seek advice of counsel.