1 (Slip Opini o n) OCTOBER T ERM , 20 06 Sy llabu s N O TE : Wh er e it i s feas ibl e , a s y llab u s (h ead n ot e) wil lbe rel e as ed , as is bein g d o n e incon n ecti onwithth is cas e , a tth e ti meth e op in i o n is is s u ed

. Th e s y ll abu s con s titu tes n o p a r t of th e op in i o nof th eC o u r t bu t h a s be en pre p are dbyt h e Re po rte ro f De ci sio n s fo r t h e co nveni e nce of t h e reade r . Se e United Statesv. Detro it Timbe r& Lumb er Co., 200U. S

. 3 21, 337

. 

# SUPREME CO URT O F THE UNI TED STATES
Sy llabu s 

### KSR IN TE RNATI O NAL C O

. v . TE L E FL E XIN C

. ET AL


### . CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT No. 04–1 35 0. Ar g u ed November28, 200 6—D e c i ded Apr il 30, 200 7 To c o n t r o l a c o n v en tion al au tomobile’s sp eed, th e dr iv erdepr esses or

r e leases th e g a s pedal, w h i c hin ter a c t s w i thth e thr o ttle v i a a c able or ot her mecha nica l link. Beca us e t h e pedal’s pos i t i on in t h e foot well norma lly ca nn otb e a d j u st ed, adriver wis h ing t o b e clos er or fa rt he r from it must either reposition hi mself inth e seat orm o v e th e seat, b o t hof whichca n b e imperfects o lut i ons for s m a ller drivers in ca rs with deep footwells. This p r omptedinventors to design and paten t pedals th at c o u l d be ad ju ste dto c h a n g e th eirloc ation s. Th e Asan o pa t e ntrevea l s as u pportst ruct ure w h ereb y, whe n t h e peda l loca tion is adju s t ed, on e of th e pedal’s piv o t poin ts stay s fix e d. Asan o is al so desig n ed so th at th e for c e n e c e ssar yto dep r ess th e ped a lis th e sa m e rega rdles s of loca t i on a d j u stment s . The Redding pa t e nt revea l s adif

fer en t, slidin gmec h a n i sm w h e r e bothth e pedalan d t h e piv o t poin t ar e adju sted.

In newe r ca rs , comput er-con t r olled t hrot t l es do notoper a t e t hrough for c e tr an sfer red fr om th e p e dal bya mec h an ic al lin k, bu t openan d close valves in response to electron ic sig n als. Forth e c o mpu t erto kn owwh at is h a ppen i n g withth e pedal, anelec tr on ic sen s ormu st tr an slate th e mec h a n i c a l oper ationin to di g i tal d ata. In v e n t or s h a d obtaineda nu mber of p aten t s for such sensors. The so-called ’936 patent taught that it was p r eferable to d e tect the pedal’s position in th e pedalmec h an ism, n o t i nth e en g i n e , so th e pa ten tdi sc losed a pedal w i thanelec tr on ic sensorona piv o tpoin t inth e pedal as sem bly

. Th e Smithpaten ttau gh t th at to prev en t th e w i res c o n n e c t in g t h e s e ns or t o the comput er f r om cha fing a n d wea r ing ou t , t h e s e ns or sh ou ld be pu t ona fix e d par tof th e pedal asse mblyr ath erth aninor on the pedal’s footpad. Inventors had also patented self-contained modular senso r s, which can be takenoff the shelf and attached to any2 KSR INT’L CO. v. TELEFLEX INC. Sy llabu s mecha nica l peda l t o allow it t o funct ion w i t hacomput er-cont r olled throttle. The ’068 patent disclose d one such sensor. Chevrolet also manufactured trucks using modular sen s ors attachedto the pedal su ppor tbr ac ket, adjac e n tt o th e pedal a n d en g a g e d withth e piv o t sh aft a b ou t w h ic hth e pedal r o tate s. O t h e rpaten t s d i sc lose elec

tr on icsen s or s att ac h e d to ad ju sta b le ped a lasse mbl i es. Forex ample, th e Rix o npaten tloc ates th e sen s orinth e pedal footp ad, b u t is kn ow n for wirecha fin g .

Afterpeti tion e rK S R dev e lop e d anad ju st a b le ped a l sy st em forc a r s w i thc able-ac t u ated th r o ttle s an d ob tain e d its ’9 76 pate n tforth e de

s i gn, Genera lMot o rs Corpora t i on (GMC) chos e KS R t o s u pply a d

j u s t ab le peda l s y s t ems for t rucks us ing co mput er-cont r o lled t hrot t l es . To make the ’976 ped a l co mpatible with the trucks, KSR addeda modula r s e ns or t o it s design. Res p ondent s (Teleflex) hold t h e exclu

siv e lic en se for th e En g e l g au paten t , c l aim 4 of w h i chdiscloses a posi

tion -adju s tab l e pedal asse m b lyw i thanel ec tr on icpedalpositionsen s o r a t t a ched afixed pivot point

. Des p ite having denied a s i mila r, br oaderc l aim, th e U. S. Pa t e n tan d Tr ade m ar k O ffic e (PTO ) h a d al

lowed cla i m 4 b e ca us e it included t h e limita t i on of a fixed pivotposi

t i on, which dis t inguis hed t h e des i gn from Redding’s

. Asa n o wa s nei

t h er included a m ong t h e En gelga upa t e nt ’s prior a r tref e rences no r ment ioned in t h e pa t e nt ’s pros ecut ion, a n d t h e PTO did nothave b e for e it anadjusta b le pedal w i tha fix e d pivot poin t. Afterlear n i ngof KSR’s design for GMC, Teleflex suedfor infringement, asserting that K S R’s ped a l s y stem in fr in g e d th e En g e lg aupaten t ’s c l aim 4. K S R c o u n t er ed th a tc l aim 4 w a s in v a lid u n d er§103 of th e Paten tAc t, which forbids issuance of a patent when “the difference s be tween the su bjec t ma ttersou gh tto be paten t ed an d th e pr iorar t ar e su c hth at th e su bjec t m attera s a w h o le w o u l d h av e beenobv i ou s a tth e t i m e the invention was made to aperson having ordinary skill in the art.”

Graham v. Jo hn De e r eCo. of KansasCit y , 383 U. S. 1, 17–1 8, set ou t anobjec t iv e an aly s is forapply i n g§103: “[T]h e sc ope an d c o n t en t of the prior art are .

. . determined ; differences between the prior art an d th e c l aim s atis su e ar e . . . asc e r tain e d; an d th e lev e l of or din a r y skillinth e pe r t in en t ar t r e s o lv ed. Ag ain s t th is b a c k g r ou n dth e obv i

ous n es s or nonob v ious nes s of t h e s u bj ect ma tt er is det e rmined. S uch s e conda r y con s idera t i ons a s commercia ls ucces s , long feltb u tun solved needs, failure of othe rs, etc., migh t be u t i lizedto g i v e ligh tto t h e circums t a nces s urrou n d ing t h e origin of t h e s u bj ectma t t er sou gh tto be p aten t ed.” Wh ile th e se qu en ce of th ese qu e s tion s migh t be reordered in any particular case , the fa ctors define the controlling inquiry. However, seeking to reso lve the obviousne ss q u estionw i th more uniformit ya n d cons is tency , t h e Federa l Circuitha s employed a “teac h i n g , su gg estion , ormotiv ation” (TS M ) test, u n d er w h i cha pat

-3 Cite as: 55 0 U

. S. ____ (2007) Sy llabu s ent claim is only provedobvi ous if th e pr iorar t, th e pr ob lem’s n atu r e , or the knowledge of a person havingordinary skill in t h e art reveals some motiv a ti onorsug g e stionto c o mbin e th e pr iorar t t e ac h i n g s.

The Dis t rictCourtgr a n t e d KS R s u mma ryj u dgment

. Af t e r review

in gpedal de si g nh i stor y , the En g e lg aupaten t ’s sc ope, an d th e r e le

v a n tpr iorar t, th e c o ur t c o nsider ed c l aim 4’s v a lidity , a pply i n g Gra

ham ’s fra m ework t o det e rmine whet h e r under s u mma ry-j udgment stan dar d s K S R h a d demon s tr atedth a tc l aim 4 w a s o b v i ou s. Th e court fo und “l ittle difference” betw een the prior art’s t e achings and c l aim 4: A s an o tau gh t ev er y t h i n gc o n tain e d inth e c l aim ex c e pt u s in g a sen s orto de tec tth e pedal’ s posi tionan dtr an smitit to a c o mpu t er controlling the throttle. That addi t i onal a s pect was revealed in, e.g . , th e ’068 pa te n tan d Ch ev r o let’s sen s or s. Th e c o u r tt h enh e ld th at K S R s ati sfiedth e TSM test , r e ason in g(1) th e st ate of th e in du str y w o u l d lead in ev itablyto c o mbin at ion s of elec tr on icsen s or s an d ad

justable ped a ls, (2) Rixon providedth e bas is forth ese de v e lopmen ts, an d (3) Sm ithtau gh t a solu tionto Rix o n ’ s c h a fin gpr obl e ms bypos i

t i oning t h e s e ns or ont h e pe da l’s fixed s t ruct ure , w h ich could lea dt o th e c o mbin ati onof a pedal like Asan o w i tha pedal posi ti onsen s or .

Revers ing, t h e Federa l Cir cuitruled t h e Dis t rictCou r tha d not appliedthe T S M test strictly enough , havi ng fa iled t o ma ke findings as to th e spec i f icu n d er stan din gorpr inc i ple w i th ina skil led ar tis a n ’ s kn ow ledg e that w o u l d h av e motiv ate d on e w i thn o kn ow ledg e of th e in v e n t ionto attac hanelec tr on icc o n t r o l to th e Asan o as s e mbly ’s su p portb r a c ket

. The Courtof Appea l s held tha tt h e Dis t rictCourt ’s re c o u r s e to th e n atu r e of th e pr oblem to be solv ed w a s insu ffic i en t be

cause, unless the prior art refere nces addressed the precise proble m th at th e paten t ee w a s tr y i n gto solv e, th e pr oblem w o u l d n o t motiv ate an inventor to look at those referen ces. The appeals court found that th e Asan o ped a l w a s desig n ed to en su r e th at th e for c e r e qu ir ed to de

pr ess th e ped a l is th e sa m e n o matter h o wth e pedal is a d ju sted, wherea s Enge lga us o ughtt oprovide as i mpler, s m a ller, chea p er a d

justable electronic pedal. T h e Ri xon ped a l, s a id t h e court , s u ffe red fr om c h a fin g bu t w a s n o t desig n ed to sol v e th at pr oblem an d tau gh t not h ing helpf u l t o Engelga u ’s purpos e. S m it h, in t urn, did notrela t e to adju s t a b le pedals an d didn o t n e c e ssar i l yg o to th e iss u e of motiv a tionto at tac h th e elec tr on ic c o n t r o l onth e pedala sse mb ly ’s su ppor t b r a c ket

. S o int e rpret e d, t h e court held, t h e pa t e nt s would nothave led a person o f ordinary skill to put a sens or on an Asan o-like peda l. Th at it migh t h av e beenobviou s to tr yth at c o mbin ation w a s likew is e irreleva nt

. Fina lly, t h e cou r theldth at g e n u i n e issu es of mater i a l fact precluded summary judgment. Held: The Fed e ra l Circuitaddres s e d t h e ob vious n es s q u es t i on in anar r o w , r i g i d man n e r th at is in c o n s isten twith§103 an d th is Cou r t ’s4 KSR INT’L CO. v. TELEFLEX INC. Sy llabu s precedent s . KS R provided convin cing e v idence t h a tmount ing a n av aila ble sen s oron a fix e d piv o t poin t of th e Asan o pedal w a s a de

sign step wellwithin the grasp of a perso nof ordinary skill in the r e lev a n tar t a n d th at th e be n efit of doin gso w o u l d be o b v i ou s. Its ar

g u men t s, an d th e r e c o r d , demon s tr ate t h at th e En g e lg aupaten t ’ s c l aim 4 is obv i ou s. Pp. 11–24.

1. Graham provided an expansive and fl e x ible appr oac hto th e ob

v i ou sn ess qu estionth atis i n c o n s isten tw i thth e w a yth e Feder a l Cir

c u i t appliedit s TSM testh e r e . Neith e r§103’s en ac tme n t n o r Gra

ham ’s a n a l ys is dis t urb ed t h e Court ’s ea rlier ins t ruct ions concernin g th e n eed forcau t ioning r an tin ga paten t basedonth e c o mbin at ionof elements found in the prior art. See Great Atlantic & Pa cific Tea Co. v. Supermark e t Eq uipment Corp. , 3 4 0 U. S

. 1 4 7 , 15 2

. S uch acomb i

nation of familiar elements accordin gto kn ow nmeth ods is l i kelyt o be obvious wh en it doe s no more th any i e l d pr edic ta ble r e su lts. See, e.g . , United Statesv. Adams , 383 U. S. 3 9 , 50 –5 2. Wh ena w o r kis av a ilab l e in one field, des i g nincent ives a n d ot her ma rketforces ca n prompt variat ions of it, e i th er in th e same field or in another. If a per s onof or di n a r yskill inth e ar t c a nim plemen t a pr edic table v a r i a tion , an d w o u l d see th e ben e fit of doin gso, §103 likely bar s it s pa t

entability. Moreover, if a techniqu e has been used to improve one device, and a person of ordi nary skill in the art would recognize that itwould improve s i mila r devices in t h e s a me wa y, us ing t h e t e c h

n i qu e is obv i ou s u n l ess its a c tu al applic at i o nis bey o n dth at per s on ’s skill. A court must askwhether th e imp r ovement is m o re than the pr edic table u s e of pr ior

- ar t elemen ts ac c o r d in gto th eir estab lish e d funct ions

. Following t h es e principl es may b e difficult if t h e cla i med su bjec t ma tte rin v o lv es mor e th anth e s i mple su b s ti t u tionof on e known element for another or the mere applica t i on of a known t e ch

n i qu e to a piec e of pr iorar t ready for the i m provement. To determine whet h er t h erewa s a n a pparentrea s on t o comb ine t h e known ele

ments in the way a patent claim s , it will o f ten be necessary to look to in ter r e lated te ac h i n g s of multiple pa ten t s; to th e effec t s of deman d s kn ow nto th e desig nc o mmu n i tyorpr esent inth e m a r k etplac e; an d t o the background knowledgepossessed b yapers on having ordina r y skillin the art

. To faci lit ate review , this a n alysis should be made ex plicit. But it need not seek out pr ecis e t e achings direct e dt o t h e cha l

lenged cla i m’s s p ecific s u bj ectma tt er, for acourtca n co ns ider t h e in

ferences and creative step s apersonof ordinary skill in t h e art would employ. Pp. 1 1–14.

(b ) The TS M tes tca pt ures a helpful ins i ght : A pa t e nt compos ed of sev e r a l eleme n ts i s n o t pr ov ed obv i ou s me r e lybydemon s tr atin gth a t each element was, independently, kn owninth e pr iorart. Alth ou gh common s e ns e direct s ca ut ion a s t o apa t e nta pplica t ion cla i ming as5 Cite as: 55 0 U

. S. ____ (2007) Sy llabu s in n o v ationth e c o mbin ationof tw o kn own dev i c e s ac c o rdin gto th eir es t a b l is hed funct ions , itca n b e importa n t t o ident i fy a rea s on t h a t would have prompt ed aperson of ordina rys k ill in t h e a r tt o comb in e t h e element s a s t h e new invent ion does

. Invent ions us ua lly rely upon b u ilding b l ocks long since unco vere d, a n d cla i med dis c overies almos tnecess arily will be combinat ions of what, in som e sense, is al

rea d y known

. Helpful ins i g h t s , however , need notb e come rigid a n d man d ator yfor mu las. If it is so applied, th e TSMtest is i n c o mpatibl e wit ht h is Court ’s precedent s . The divers it yof invent ive p urs uit s a n d of modern t e chnologycou n s e ls a g ains t confining t h e ob vious n es s a n a l ys is b yaforma lis tic c o ncept ion of t h e words t e a c hing, s u gges tion , an d moti v ation , orbyov er emph asizi n gth e impor tan c e of pu b

lis hed a r ticles a n d t h e explicitcont entof is s u ed pa t e nts

. In ma ny fields t h ere ma y b e lit t l e discus s i on of ob vious t e chniq u e s or comb ina

tion s, an d ma r k et deman d , r ath erth ansc ien t ificliter a t u r e , mayof

tendr iv e desi g ntr en ds. G r an tin gpaten t pr otec tionto a dv a n c e s th at would occu r i nt h e ordina r ycou r s ew i th ou t r e al in n o vationr e tar d s progres s a n d ma y, for pa t e n t s comb ining previous ly k n o wn element s , deprive prior inventions of their valu e or utility. S i nce the TSMtes t wa s devis e d, t h e Federa l Circuitdoub t l es s ha s a pplied itin a ccord wit ht h es e principles in many ca s e s . There is no neces s a ry incons is

ten c ybetw eenth e te stan d th e Graham ana l ys is

. But acourterrs where, a s here, it t r a n s forms genera l principle int o a rigid rule limit

in gth e obv i ousn ess in qu ir y . Pp. 14–15.

(c) Thefla w s in t h e Federa lCircuit ’ s a n a l ys is rela t e mos t ly t o its na rrow conc ept i on of t h e ob vious n es s inq u iry co ns eq uentin it s a p pli

ca t i on of t h e TS M t e s t

. The Circuitfirs terred in holdingt h a tcourts an d paten tex amin er s sh ou l dlook on lyto th e pr oblem th e paten t ee wa s t r ying t o s o lve. Under t h e corre cta n a l ys is , a n y need or prob lem kn ow ninth e field an daddr essed byth e p aten tc a npr ov ide ar e ason for combining the elemen ts inth e man n e r c l aimed. Secon d , th e ap peals court erred in assumi ng that a per s on of ordinary skill in th e ar t at temp tin gto solv e ap r oblem w illbe led on lyto th ose pr iorar t elements designed to solvethe sa me prob lem. The c o urtwro ngly concluded t h a tb e ca us e As a n o’s prima r y purpos e wa s s o lv ing t h e con stan t r atio pr oblem, anin ven t orc o n s ider in gh o wto put a sen s oron a na d j u s t ab le peda l would have no rea s on t o cons ider put t i ng iton t h e As a n o peda l. Itis common s e ns e t h a tfa milia r it ems ma y have ob vious us es beyond t h eir p r ima r y purpos es , a n d apers on of ordina r y skill of ten wil lbe able to fi t the te achings of multip le patent s to

gether like pieces of a puzz le. Regardless of Asano’s p r imary pur

pose, it provi d ed an obvious exampl e of anadju sta b le pedal w i tha fix e d piv o t poin t, an d th e priorar t w a s r e plete w i thpat e n t s in dic at

ing t h a ts uch apoint wa s a nidea l mou n tfor as e ns or. Third, t h e6 KSR INT’L CO. v. TELEFLEX INC. Sy llabu s courter red inconcludin g t h a tapa t e ntcla i m ca nnotb e proved ob vi

ou s mer e lybysh ow in gth at th e c o mbin atio nof elemen ts w a s obv i ou s to tr y . Wh enth er e is a de sig nn e ed or market pressure to solve a pr oblem an d t h er e ar e a fin i te n u m berof iden tified, pr edic table solu

tions, a perso nof ordinary skill in the ar t has good rea s on to pursue th e kn ow n option s w i th inh i s orh e rtech nic a l g r asp. If th is lead s to t h e a n t i cipa t e d s ucces s , itis likely t h e productnotof innova t i on b u t of ordinary skill and com m on sense. Finally, the court drew the wrong conclusion from the risk of courts and patent exa m iners falling pr eyto h i n d sigh t bias. Rig i d pr ev en tativ e r u l es th at denyr e c o u r s e to common s e ns e a r e neit her n e ces s a ry unde r , no r co ns is t e ntwit h , t h is Cou r t ’s c a se law

. Pp. 15–18.

2. Applic ation of th e for eg oin gstan dar d s de mon s tr ate s th at c l a i m 4 is obv i ou s. Pp. 18–23. (a) Th e Cou r tr ejec t s Teleflex ’s ar gu men tth at th e Asan o piv o t mecha nis m ’s des i gn preven t s it s comb in a t i on wit h a s e ns or in t h e ma nner cla i m 4des crib e s . This a r gumentwa s not ra ised b e fore t h e Dis t rictCourt , a n d itis unclea r whet h eritwa s ra is ed b e fore t h e Federa l Circuit

. Given t h e significa nce of t h e Dis t rictCourt ’s finding th at c o mbin in gAsan o w i tha piv o t-mou n t ed pedal po siti onsen s orfell wit h in cla i m 4’s s c ope, itis a ppa rentt h a tTeleflex woul d have ma de clea rer c h a llenges if itint e nded t o pres erve t h is cla i m. It s fa ilure to clea rly ra is e t h e a r gument , a n d t h e a ppeals court ’s s ilence on t h e is

s u e, lea dt h is Courtt o a cceptt h e Dis t rict Court ’s conclu s ion. Pp. 1 8– 20. (b ) The Dis t rictCourtcorre ct ly concludedt h a twhen Engelga u desig n ed th e claim 4 su bj ec tmatter , it w a s obv i ou s to a per s onof or

dinary skill inthe art to combine A s ano with a pivot- mounted peda l pos i t i on s e ns or. Theret h enwa s ama rket pla c e crea t i ngas t rong i n c e n t iv e to c o nv er t mec h a n i cal pedal s to elec tr on ic peda ls, an d th e pr iorar t tau gh t a n u m berof meth ods for doin gso. Th e Feder a l Cir

cuit considere dthe issue too narro wl y by, in effect, asking whether a peda l des i gner writ i ng on ab l a n k s l at e would have chos e n b o t h Asan o an d a modu larsen s orsimilarto th e on es u s ed in th e Ch ev r o let trucks and disclosed in the ’068 p atent. The proper question was whether a ped a l designer of ordinary skill in the art, faci ng the wide ra nge of needs crea t e d b yde velopment s in t h e field, wou l d have s e en anobv i ou s ben efit to u p g r a d in gAsan o w i tha sen s or . Forsu c ha de

sig n erstar tin gw i thAsan o, th e qu estionw a s w h e r e to att ac hth e sen s or . Th e ’936 p aten tt a u gh t th e u t ilityof pu ttin gth e sen s oron t h e peda l device. S m it h, in t urn, expla i ne d nott o put the s e ns or on the pedal footpad, but inste a d on the structure

. And from Rixon’s known wire-c ha fing prob lems , a n d S m ith’s t e a ching t h a tt h e peda l asse mbl i es m u st n o t pr ec ipitate an ymoti oninth e c o n n ec tin gw i r e s,7 Cite as: 55 0 U

. S. ____ (2007) Sy llabu s the designer would know t o place the se nsor on a nonmoving part of t h e peda l s t ru ct ure. T h e mos tob vious s u ch pointis apivotpoint

. The des i gner, a ccordingl y, w o uld follow S m it h in mount in g t h e s e ns or th er e. Ju st as it w a s pos s ibl e to beg i nw i t hth e objec t iv e to u p g r ad e Asan o to w o r kw i tha c o mpu t er -c on tr olled th r o ttle, so to o w a s i tpos sible to take anadju s t a b le elec tr on ic pedal l i ke Rix o nan d seekan impr ov emen t th at w o u l d av oid th e w i re-chafing proble m. Teleflex h a s n o t sh ow nan y t h i n gi nth e pr iorar t th at t a u gh taw ayfr om th e u s e of A s an o, n o ran ysec o ndar yfac t or s to dislo d g e th e d e ter m in atio n th at c l aim 4 i s obv i ou s. Pp. 20– 23.

3

. The Court dis a grees with t h e Federa lCircuit ’ s holding t h a t genuineis s u es of ma t e ria l fa ctprecludeds u mma ry j u dgment

. T h e u l tima te ju dg men tof obv i ou sn ess is a leg a l deter m in at i o n . Graham , 383 U. S., at 17. Wh er e, as h e r e , th e pr i o rar t’s c o n t en t, th e pa ten t claim’s scope, and the level of ordina ry skill in the art a r e not in ma

t e ria ldisput e a n d t h e cla i m’s ob vious n es s is a ppa rent , s u mma ry ju dg men tis appr opr i ate. P. 23. 119 Fed. Appx . 282, r e v e r s ed an d r e man d ed.

K ENNEDY , J ., d e livered t h e op inion for a una nimous Court

._________________

_________________ 1 Cite as: 55 0 U

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NOTICE: This op i n ion is subjec t to f o rmal revi si on bef o r e publicat ion in the p r eli m in ary p r in t of th e U n it edS t at es R e p o rts

. R e ad ers ar e r e qu es ted to n o tif yth e R e p o r t e rof D e c i s i on s , Su p r em e C o u r t of th e U n ited St at es , Wa s h

ington, D. C. 2054 3, of any typ o gra p hical or other f o rmal err o rs , in or der th atc o rr ect i on sm a y b e mad eb e f o r e th ep r e lim in aryp r in t go es t o p r es s . 

# SUPREME CO URT O F THE UNI TED STATES

No. 04–1 35 0 

### KSR IN TE RNATI O NAL C O ., PE TITIONE R v. TELE FLEXINC. ET AL


### . ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEAL S FOR THE FEDERAL CIRC UI T [Apr il 30, 20 0 7 ] 

### J USTICE 

### K E NNEDY 

### delivered the opinion of the Court. Teleflex In corporated and its subsidiary Technology Holding Co mpany—bo t h referre dto here as Teleflex

— sued KSR International Company for patent infringement. The patent at issue, United Sta t es Patent No. 6,237,5 6 5 B1, is entitled “Adjus table Pedal Assembly With Elec

tronic Thro ttle Control.” Supplem ental App. 1. The pat

entee is Steven J. Enge lgau, and the patent is referred to as “the Engelgau patent.” Telef l ex holds t h e exclusive license to t h e patent. Claim 4 of the Engelgau patent describes a mechanism for combini n g an elec tronic sens or with an adjustable automobile pedal so th e pedal’s po sition can be transmit

ted to a co mputer tha tcontrols t h e throttle in the vehicle’s engine. When Teleflex accused KSR of infringing the Engelgau p a tent by adding an electronic sensor to one of KSR’s previously desi gned pedals, KSR countered that claim 4 was invalid under the Patent Act, 35 U. S. C. §103, because its subject matter was obvious. Section 103 forbids i ssuance of a patent when “the differences between the subje ct matter sough tto be pat

-2 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### ented and the prior art are such that the subject matter a s a whole wo uld have been obvious at the time the invention was made to a person having ordi nary s k ill in the art to which said subject mat t er pertains.” In Graham v. John Deere Co. of Kansas City , 383 U. S. 1 (1966), the Court set out a framework for applying th e statutory l anguage of §103, l anguage itself based on t h e logic of the earlier decision in Hotchkissv. G reen wood , 11 How. 248 (1 851), and its progeny. See 383 U. S., at 15–17

. The analysis is objective: “Under §103, the scope and content of the prior art are to be deter m ined; diff erences bet w een the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this backgrou n d the obvi ousness or nonobvi

ousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilizedto give li ght to the circumsta nces sur rounding th e origin of t h e subject matter sought to be patented.” Id. , at 17–18. While the s e quence of these quest ions might be reordered in any particular case, the fa ctors continue to define the inquiry that controls. If a court, or patent examiner, conducts th is analysis and concludes the clai med subject matter was obvious, the claim is invalid under §103. Seek ing to resolve the questionof obviou sness with more uniformity and consistenc y, the Court of Appeals for the Federal Circuitha s employed an approac hreferred t o by the parti es as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, th e nature of the problem, or th e k n owledge of a person hav

ing ordinary skill in th e art. See, e.g., Al-S ite Corp. v. VS I3 Cite as: 55 0 U

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### Int ’ l, Inc. , 174 F. 3d 1308, 1323–1324 (CA Fed. 1999 ). KSR challenges that test, or atlea s t its application in thi s case. See 119 Fed. Appx. 282, 286–290 (CA Fed. 2005)

. Because the Court of Appeals addressed the question of obviousness in a manner contrary to §103 and our prece

dents, we granted certi o rari, 547 U. S ___ (2006). We now reverse. I A In car engines without compute r -controlled throttles, the accelerator pedal interacts wi th the thro ttle via cable or other m e chanical link. The pedal arm acts as a lever rotating a r ound a pivotpoint. In acable-actua t ed throt t le control the rotation c aused by p u shing dow nthe peda l pulls a cable, which in turn pulls o p en valves i nthe carbu

retor or fuel injection unit. The wider the valv es open, the more fuel and air are releas ed, causing combustion to increase and the car to accelerate. When the driver ta kes his foot off the pedal, the opposite occurs as the cable is released an d the valves slide clos ed. In the 1990’s it beca me more common to install com

puters in cars to control engine operation. Computercontrolled throttles open and close valves in response to electronic signals, not through for c e transferr ed from the pedal by amechanical link. Constant, delicate adjust

ments of air and fuel mi xture are possibl e. The computer’s rapid proce ssing of factors beyond the peda l’s position improves fuel efficiencyand engine performance. For a com p uter-contr olled throttle to resp ond to a driver’ s operation of the ca r, th e computer must know what is happening with the pedal. A cable o rmechanical link does not suffice for this purpose; at so me point, a n electronic sensor is necessary to translate the mechanical operation i n to digital data the computer can understand. Before discussing sens ors further we turn to the me

-4 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### chanical design of the pedal itself. In the traditional design a pedal can be pushed down or released but canno t have its po sition inthe footwell adjusted by sliding th e pedal forwa rd or ba ck. As a result, a drive rw h o wishes to be closer orfarther from the pedal must eith er repositio n himself in t h e driver’ s seat or move the seat i nsome way. In cars wit hdeep footwells these are imperfect solutions for drivers of smaller stature. To solve the problem, in

ventors, beginning in the 1970’s, designed pedals that could be adjusted to ch ange their location in the footwell. Important for this case are two adjustable ped a ls disclos e d in U. S. Patent Nos. 5,010,782 (filed July 28, 1989) (Asano) and 5,460,061 (filed Sept. 17, 1993) (Redding). The Asano patent reve als a support st ructu re that houses the peda l so that even when the pedal location is adjusted relative to the driver, one of the pedal’ s pivot points stays fixed. The pedal is also designed so that the force necessary to push the pedal down is the same regardless of adjustments to its location. The Redding pate nt reveals a di fferent, slid

ing mechanism where both the pedal and the pivot point are adjusted. We return to sensors. We ll before Engelgau applied for his challen g ed patent, some inventors had o b tained pat

ents involving electronic pedal sensors forcomputercontrolled throttles. These invent ions, such as the devic e disclosed inU. S. Patent No. 5,241, 936 (filed S e pt. 9, 1991) (’936), taught that it was prefera b le to detect the pedal’s position in the pedal assembly, not in the engine. The ’936 patent disc losed a pedal with an electronic sensor on a pivot point in the pedal assembly. U. S. Patent No. 5,063,811 (f iled July 9, 1990) (Smith) taught that to pre

vent the wi res connecting the sensor to the computer fro m chafing and wearing out, and to avoid grime and dama ge from the driver’ s foot, the sensor s h ould be put on a fixed part of the pedal assembly rather than in or on the pedal’s footpad.5 Cite as: 55 0 U

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### In addition to patents for pedals with integrat ed sensors inventors obtained patents for self-contai n ed modular sensors. A modular sensor is designed independently of a given pedal so that it can be taken off the s h elf and at

tached to mechanical pedals of various sorts, enabling the pedals to be used in automobiles w i th compute r -controlled throttles. One such s e nsor was disclosed in U. S. Pa tent No. 5,385,068 (filed Dec. 18, 1992) (’068). In 1994, Chevro

let manufa ctured a line of trucks using modular sensors “attached t o the pedal support b r acket, a d j a cent to th e pedal and engaged wi th the pivot shaft about which the pedal rotates in operation.” 298 F. Supp. 2d 5 81, 589 (ED Mich. 2003). The prior art contained patents involving th e placement of sensors on adjustabl e pedals as well. For e x ample, U. S. Patent No. 5,819,593 (filed Aug. 17, 1995) (Rixon) dis

closes an adjustable pedal assembly with an electronic sensor for detecting t h e pedal’s position. In the Rixo n pedal the sensor is locat e d in the pedal footpad. The Rixo n pedal was known to s u ffer from wire chafin g when the pedal was depressed and released. This short account of pedal and sensor technology leads to the instant case. B KSR, a Ca nadian company, manufactures and supplies auto parts, including p e dal systems. Ford Mo tor Compan y hired KSR in 1998 to supply an adjustable pedal system for various lines of aut omobil es with cable-actuated throt

tle controls

. KSR developed anadjustable mechanical pedal for Ford and ob tained U. S. Patent No. 6,151,97 6 (filed July 16, 1999) (’976) for th e design. I n2000, KSR was chosen by General Motors Corporation ( G MC orG M ) to supply a d justable pedal systems for Chevrolet and GMC light tru cks that use dengines with comp uter-control l ed throttles. To make the ’976 pedal compatible with the6 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### truc k s, K S R merely took thatdesign and added a modular sensor. Teleflex is a rival to KSR in the design and manufacture of adjustable pedals. A s noted, it i s the exclusive license e of the Engelgau patent. Engelgau filed the pa tent applica

tion on August 22, 20 00 as a continuation of a previous application for U. S. Pa tent No. 6,1 09,241, which was filed on January 26, 1999. He has swo r n he invented the pat

ent’s subject matter onFebruary 1 4 , 1998. The Engelga u patent discloses an adjustabl e electronic ped a l described in the specification as a “simplified vehicle control pedal assembly that is less expensive, and which uses few e r parts and is easier to packa g e wi thin the vehicle.” Engel

gau, col. 2, l i nes 2–5, S u pplemental App. 6. Claim 4 of the patent, at issue here, describes: “A vehicle c o ntrol pedal apparatus comprising: a support a d apted to b e mo unted to a vehicle struc

ture; an adjusta b le pedal assembly h a ving a pedal arm moveable in for[e] and aft di rect ions with r e spect to said support; a pivot for pivotally supporting sa id adjustable pedal assembly with respect to said support and de fining a pivot axis; and an electronic control attachedto said support for con

trolling a vehicle system; said appara tus charac t e rized by said electronic control being responsive to sai dpi vot for providing asignal that corres p onds to pedal ar m position as said pedal arm pivots about said pivot axis b e tween rest and ap

plied positi ons wherei n the positi on of said pivot re

mains cons tant while said pedal arm moves in fore and aft directions with re spect to said pivot.” Id., col.7 Cite as: 55 0 U

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### 6, lines 17–36, Supplemental App. 8 (diagram num

bers omitted). We agree w i th the District Court t hat the claim discloses “a position-adjustable pedal assembly with an electronic pedal position sensor attachedto the supportmember of the pedal a ssembly. Attachingth e sensor to the suppor t member allows the sensor to remain in a fixed position while the driver adjusts the pedal

. ” 298 F. Supp. 2d, at 586–587. Before issuing the Eng e lgau patent the U. S. Patent a n d Trademar k Office (PT O ) rejected one of the patent clai ms that was si milar to, but broader than, the present claim 4. The claim d i d not include the requ irement that the sensor be placed on a fixed pi vot point. The PTO concluded th e claim was an obvious combination of the prior art d i s closed in Redding and Smith, explaining:

“ ‘ S ince the prior ar[t] references are from the field of endeavor, the purpose disclosed .

. . would have been recognized in the pertinent art of Redding. Therefore it would have been obvious .

. . to provide the device of Redding with the .

. . means attached to a support member as taught by Smith.’ ” Id. , at 595. In other words Redding provided an example of an adjust

able pedal and Smith explained how to moun t a sensor o n a pedal’s support st ruc t ure, and t h e rejected patent clai m merely put these two teachings tog e ther. Although t h e broader claim was rejected, claim 4 was later allowed because i tincluded the limitation of afixed pivot point, which distinguished the desig nfrom Red

ding’s. Ibid

. Engelgau had not included Asano among the prior art references, and Asano was not mentioned in the patent’s pro s ecution. Thus, th e PT O didnot h a ve before it an adjustab le pedal with a fixed pivot point. The patent issued on May 29, 2001 and was assigned to Teleflex. Upon learning of KSR’s design for GM, Teleflex sent a8 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### warning letter informing KSR t hat its proposal would violate the Engelgau patent. “ ‘Te l eflex believes that an y supplier of a product that combines an adjus t able pedal with an el ectronic th rottle contr o l necessar ily employs technology covered by one or more’ ” of Teleflex’ s patents. Id. , at 585. KSR refu sed to enter a ro yalty arrangemen t with Teleflex; so Teleflex su ed for infringement, asserting KSR’s peda l infringed the Engelgau patent and two other patents. Ib id. Telefl ex later aban doned its cl aims regard

ing the other patents and dedicated the patents to the public. The remaining contention was that KSR ’ s pedal system for GM infring e d claim 4 of the Enge lgau patent

. Teleflex ha s not argue dthat the other three claims of the patent are infringed by KSR’ s pedal, nor has Telefl ex argued that the mecha n ical adjustable pedal designed by KSR for Ford infringed any of its patents. C The Distric tCour t g r a n ted summ ary ju dgme nt in K S R ’ s favor. Aft e r reviewi n g the per t inent history of ped a l design, the scope of the Engelgau patent, and the relevant prior art, th e court considered the validity of the contested claim. By direction of 35 U. S. C. § 282, an issu ed patent is presumed valid. The Distric tC o urt applied Graham ’s framework to determine whether under summaryjudgment s t andards KSR ha d ove rcome the presumption and demonstrated tha tclaim 4 was obvious in light of the prior art in existence w h en the claimed subjectmatter was invented. See §102(a). The Distric tCourt determined, in light of the expert testimony and the pa rties’ stipul ations, that the level of ordinary s k ill in pedal design was “ ‘an u n dergradua t e degree inmechanical engineering (or an equivalent amount of industry experience) [and] fam iliarity with pedal control systems for vehicles.’ ” 298 F. Supp. 2d, a t 590. The court then s e t forth the relevant prior art, in

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### cluding the patents andpedal designs described above. Following Graham ’s direction, the court compared the teachings of the prior art to the claims of Engelgau. It found “littl e difference.” 298 F. Supp. 2d, a t590. Asan o taught everything contained in claim 4 except the use of a sensor to detect the pedal’s po sition and transmit it to the computer controlling the throttle. That addi tional aspect was revealed in sources such as the ’068 pa tent and th e sensors used by Chevro let. Under the controlling cases from the Court o f Appeal s for the Fed e ral Circuit , however, the Distric tCourtwas not permitt e d to stop t h ere. The court was r e quired also to apply the TSM test. The District Court held KSR ha d satisfied the test. It re asoned (1) the state of the industr y would lead inevitably to combi nations of electronic sensors and adjustable pedals , (2) Rixon provided the basis f o r these devel o pments, and (3) Smith taught a solution to t h e wire chafing problems in Rixo n, namely locating the sen

sor on the fixed struct ure of the pedal. This could lead to the combin ation of As ano, or a p e dal like it, with a pedal position sen s or. The conclusion that the Engelgau design was obvious was suppor t ed, in the DistrictCo urt’s view, by the PT O ’ s rejection of the broader version of claim 4. Had Engelgau included Asano in h i s patent application, it reasoned, th e PTO would have foundclaim 4to be an obvious combina

tion of Asa n o and Smith, as it had found the broader version an obvious combination of Redding a n d Smith. As a final mat t er, the District Cour t held that the secondary factor of Te leflex’s commercial success with p e dals based on Engelgau’s design did not alter its conclusion. Th e District Court gran tedsummary j u dgment for KS R. With princi pal reliance on the TSM test, th e Court of Appeals reversed. It ruled th e District Court h a d not been strict enough in applying the test, having failed to make
“ ‘finding[s] as to the specificun derstanding or principle10 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### within the knowledge of a skill ed artisan that would have motivated one with no k n owledge of [the] invention’

. . . t o attach an e l ectronic control to the support br acket of th e Asano assembly.” 119 Fed. Appx., at 288 (brackets i n original) (quoting In re Kotzab , 217 F. 3d 1365, 1371 (CA Fed. 2000)). The Cour t of Appeals held that the District Court was incorrect th at the natu r e of the p r oblem to be solved satisfied this requirement because unless the “prior art references address[ed] the precise probl e m that the patentee w a s trying t o solve,” the problem would not motivate an inventor to look at those references. 119 Fed. Appx., at 28 8. Here, the C o urt of App e als found, the Asano pedal wa s designed to solve the “ ‘ c onstant ratio problem’ ”—that i s , to ensure t hat the force requi red to depress the pedal is the same no matter h o w the ped a l is adjusted—whereas Engelgau s o ught to provide a simpler, smaller, cheaper adjustable electronic pedal. Ibid. As for Rix o n, the court explained, that pedal suffered from the problem of wire chafing but was not designed to solve it. In the court’s view Rixondid not teach anyth i n g helpful to Engelga u ’s purpose. S m ith, in tur n , did not r e late to adjustable ped

als and did not “necessarily go to t h e issue of motivation to attach the electronic control on the support bracket of th e pedal assembly.” Ibid. When the patents were inte r preted in t h is way, th e Court of Appeals held, they wou l d not have led a person of ordinary skill to put a sens or on the sort of pedal described in Asano. That it mi ght have bee nobvious to try the co mbination of Asano and a sensor was like w ise irrelevant, in th e court’s view, because “ ‘ “[o]bviou s to try” has long been held not to constitute obviousness.’ ” Id. , at 289 (quotin g In re Deu el , 51 F. 3d 1552, 1559 (CA Fed. 1995)). The Court of Appeals also faulted the Distri ct Cour t ’ s consideration of the PTO’s reje cti on of the broader version of claim 4. The Distric tCourt’s role, the Court of Appeals11 Cite as: 55 0 U

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### explained, was not to speculate regarding what the PTO might have done had the En gelgau patent mentioned Asano. Ra ther, the c o urt held, the Distric tCour t wa s obliged first to presume that the issued patent was vali d and then to render its own independent judgment of obvi

ousness ba s e d on a revi ew of the prior art. The fact that the PTO h a d rejectedthe broader version of claim 4, the Court of Appeals said, had no place in that analysis. The Court of Appeals further held that genuine issues of material fact preclude d summaryjudgment. Teleflex had proffered statements from one expert that claim 4 “ ‘was a simple, el egant, and novel combination of f e atures,’ ” 11 9 Fed. Appx., at 290, co mpared to Rixon, and from another expert that claim 4 was nonobvi o us becaus e, unlike i n Rixon, the sensor was mounted on the sup p ort brack e t rather tha nthe pedal itself. This evidence, the court concluded, sufficed to require a trial. II A We begin by rejecting the rigid ap proach of the Court of Appeals. Throughoutthis Court’s engagement with th e question of obviousnes s, our cases have set forth an ex

pansive and flexible approach inconsistent with the wa y the Court of Appeals applied its TSM test h e re. To be sure, Grah a m recognized the need for “uniformity and definiteness .” 383 U. S., at 18. Yet the principles lai d down in Graham reaffi rmed the “f unctional approach” of Hotchkiss , 11 How. 248. See 383 U. S., at 12. To this en d, Graham se t forth a broad inqu iry and invited courts, where appropriate, to look at an y secondary considera

tions that w o uld prove instructive. Id. , at 17. Neither the enactment of §103 nor the analysis in Gra

ham disturbed this Court’s earlierinstruction s concerning the need for caution in granting a patent based on the combination of elemen ts found in the prior art

. For over a12 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### half century, the Court has held that a “pate n t for a com

bination which only uni tes old elements with n o change in their respective functions . . . obviously withdr aws what is already kn own into the field of its monopol yand dimin

ishes the resources av ailable to s k illful men. ” Grea t At

lantic & P a cific Tea Co

. v. Superm arke t Equip m ent Corp. , 340 U. S. 147, 152 (19 50). This i s a principal reason f o r declining to allow patents for what is obvious. The combi

nation of familiar elements accordi n g to known methods is likely to be obvious when it does no more than yield pre

dictable results. Three cases decided after Graham illus

trate the ap plication of this doctrin e . In United Sta t esv. Ad a m s , 383 U. S. 39, 40 (1966), a companion case to Graham , the Court considered the obviousness of a “wet battery” t hat variedfrom prior designs in two ways: It contained water, rather than the acids conventionally e m ployed in storage batteries; and i t s electrodes were magn esium and cuprous chl o ride, rather than zinc and silver chloride. T h e Court recognized that when a pat e nt claims a structu re already known in the prior art th at is altered by the mere substitution of one element foranother k n own in the field, thecombinatio n must do more than yiel d a predicta ble result. 383 U. S., at 50–51. It nevertheles s rejected the Govern ment’s claim that Adams ’ s battery w a s obvious. The Court relied upon the corollary principle that when the prior art teaches away from combining certain k n o w n elements, discovery of a successful means of combining them is more likely to be nonobvious. Id. , at 51–52. Wh en Adams designed hi s battery, the prior art warned tha trisks wer e involved in using the t y pes of electrodes he employed. The fact th at the element s work ed to gether in an unexpected and fruit

ful manner supported the conclusion that Adams’s design was not obvious to thos e skilled in the art. In Anderso n’s-Bl ack R o ck, Inc. v. Pavemen tSa lvage Co. , 396 U. S. 5 7 (1969), th e Court elaborated on this approach.13 Cite as: 55 0 U

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### The subjectmatter of the patent before the Court was a device com b ining two pre-existi ng elements: a radian theat burner and a pavi ng machine. The device, the Court concluded, did not cre ate some new synergy: The radiantheat burner functioned just as a burner was expected to function; and the paving machine did the same. The two in combination did no more than they would in separate, sequential operation. Id. , at 60–62. In those circum

stances, “while the co mbination o f old el eme n ts performed a useful fu nction, it added nothing to the nature an d quality of the radiant-heat burner already patented,” and the patent failed under §103. Id., a t62 (footnote omitted). Finally, in Sakraid av. AG Pro, Inc. , 425 U. S. 273 (1976), the Court deri ved from the precedents the conclu

sion that when a pa tent “s imply arranges old elem e n ts with eachperforming the same function it had been known to perform” a n d yields n o more than one would expect fro m such an arrangem ent, the combination is obvious. Id

. , at 282. The principles underl y ing these cases are instructive when the q u estion is whether a patent clai ming the co m bination of elements of prior art is obvious. When a wo rk is availablein one fieldof endeavor, design incentives and other market forces can prompt variations of it, eitheri n the same fi eld or a dif f erent one. If a personof ordinary skill can implement a predictab l e variation, §103 likel y bars its patentability. For the same reason, if a techniq u e has beenu s ed to imp r ove one d e vice, and a person o f ordinary skill inthe a rt would recognize that it would improve similar devices in the same way, u s ing the tec h

nique is obvi ous unl ess its actual a pplication i s beyond hi s or her skil l. Sakraidaand Anderson’s-Bla c k Rockare illustrative—a court must ask whether th e improvement is more th an the predictable use of prior art elemen ts according t o their established functions. Following these princi ples may be more diffic u lt in other14 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### cases than it is here b e cause the claimed subject matter may involv e more th an the simple substitution of one k n own element for another or the mere application of a known te ch nique to a piece of prior art ready for the i m provement. Often, it will be necessary for a court to loo k to interrelated teachings of mult iple patents; the effects of demands known to the design community or present in the marketplace; and the backgro und knowledge possessed b y a person having ordin a ry s k ill in the art, al l in order to determine whether th ere was an apparent re ason to com

bine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made ex plicit. See In re Kahn , 441 F. 3d 977, 988 (CA Fed. 2006) (“[R]ejection s on obviou sness grounds cannot be sustained by mere con c lusory sta t ements; instead, there must be some articulated reasoning with so me rational underpinning to support the legal conclusio nof obviou s ness”). As our precede n ts make cl ear, however, the analy

sis need not seek out precise teachings dir e cted to the specific subject matter of the challenged claim, for a court can ta ke account of th e inferences and creative steps th a t a person of ordinary skill in the ar t would employ. B When it first established the re quirement of demon

strating at e aching, suggestion, or motivation to combine k n own elements in or der to show that the combination i s obvious, th e Court of Customs and Patent Appeals cap

tured a helpful insight. See Applica t ion of Bergel, 29 2 F. 2d 955, 956–957 (1961). As is clear from cases such as Adams , a patent composed of several ele m ents is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although c o mmon sense directs one to look with care a ta patent application that claims a s i nnovation the combina

tion of two known de vices a ccor d ing to the i r established15 Cite as: 55 0 U

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### functions, i tcan be i m portant to identify a reason t hat would have prompted a person of ordinary s k ill in the relevant field to comb ine the elements in t h e way th e claimed new invention does. This is so because inventions in most, if not all, inst ances rely upon buildi n g blocks lon g since uncovered, and claimed di scoveries almost of neces

sity will be combinations of what, in some sen s e, is already kno w n. Helpful ins i ghts, however, need not become rigid an d mandatory formulas; a n d when it is so appli e d, the TSM test is inco mpatible with our precedents. The obviousn e ss analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the i m portance of publishe d articles and the explicit content of issuedpatents. The diversity of inventive pursuits and of modern technology counsels against limiting the an alysis in this way. In many fields it may be tha tthere is lit tle discussi on of obviou s technique s or combinations, and itoften may be the case that marke t demand, rather than scientific literature, will drive design trends. Granting pa tent protection to advances tha t would occurin the ordi nary cour se without real innovation retards pro gress and may, in the case of patents combin

ing previously known e l ements, deprive prior i n ventions of their value or utility. In the yea r s since th e Court of Customs and Patent Appeals set forth the e ssence of the TSM test, the Courto f Appeals no doubt has applied the test in accord with thes e principles i nmany cases. There i s no n e cess ary inconsis

tency between the ide aunderlying the TSM test and the Graham an alysis. But when a court transfor m s the gen

eral principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs. C The flaws i nthe analy s is of the C o urt of Appeals relate16 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### for the most part to th e cou rt’s narrow conce p tion of th e obviousness inquiry reflected in its application of the TSM test. In determining whether t h e subject matter of a patent claim is obvious, neither the particular motivati on nor the avowed purpo s e of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is i n valid under §103. One of the ways in which a patent’s subject matter can be proved obvious is by n o ting that there existe d at the ti me of invention a known problem f o r which there was a n obvious sol u tion enco mpassed by the patent’s claims. The first er ror of the Court of Appeals in this case was to foreclose this reasoning by holding that courts an d patent examiners sho u ld looko n ly to theproblem t h e patentee was trying to solve. 119 Fed. Appx., at 288. Th e Court of Appeals failed to reco gnize thatthe problem motivating the patentee may be only one of many ad

dressed by the patent’s subj ect matter. The question is not whether the combi nation was obvious to the patentee but whether the combination was obvious to a person with ordinary skill inthe ar t. Under the correct analysis, any need or problem k n own in the fie l d of endeavor at the time of invention and addressed by th e patent can provide a reason for combining the elem ents in the man n er claimed. The second error of th e Court of Appeals layin its as

sumption that a pe rson of ordinary s k ill attempting to solve a problem willb e led only t o those elements of pr ior art designed to solve t h e same pr oblem. Ibi d

. T h e p r i

mary purpose of Asa n o was solv ing the constant ratio problem; so, the cour t conclu ded, an inventor considering how to put a sensoronan adjustable pedalwould have n o reason to c o nsider putting it on the Asano pedal. Ibid. Common sense teaches , however, that familiar items may have obvio u s uses b e yond their primary purposes, and in many cases a person of ordinary s k ill will be able to fit the teachings of multiple patents together lik e pieces of a17 Cite as: 55 0 U

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### puzzle. Regardless of Asano’ s primary purpose, the desi gn provided an obvious example of anadjustable pedal with a fixed pivot point; and the prior a rt was repl ete with pa t

ents indicat i ng that afixed pivot point was an i d eal mount for a sens or. The idea that a desi gner hoping to make a n adjustable electronic pedal wo uld ignore Asano because Asano was designed to solve the constant ratio problem makes little sense. A person of ordinary skill is a l so a person of or dinary crea t ivity, not a nautomaton. The same constricted a nalysis led the Court o f Appeals to conclude, in error, th at a pa tent claim cannot be prove d obvious me rely by sho w ing that the combin ation of ele

ments was “obvious to try.” Id. , at 289 (intern a l quotation mark s omitted). Whe nthere is a design ne ed or market pressure to solve a problem and there are a f i nite numb e r of identifie d , predictable so lutio n s, a perso nof ordina ry skill has good reason to pursue th e known options within his or her t e chnical grasp. If this leads to th e anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious t o try might show that i t was obvious under §103. The Court o f Appeals, finally, drew the wrong conclusion from the ri sk of courts and patent examiners falling prey to hindsight bias. A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. See Graham , 3 83 U. S., at 36 (warning against a “temptation to read into the prior art the teach i ngs of the invention in issue” and instructingcourts to “ ‘guard against slippin g into the use of hindsight’ ” (quoti ng Monroe Auto Equip

ment Co. v. Heck ethornMfg. & Su pply Co. , 332 F. 2d 406, 412 (CA6 1964))). Rigid preven tative rule s that deny factfinders recourse to common s e nse, however, are ne i

ther necessary under o u r case law nor consistent with it. We note the Court of Appeals has since elaborated a18 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### broader conception of the TSM test than was applied in the instantmatter. S ee, e.g., Dy Star Textilf arben Gmb H & Co. Deu tschl a nd KG v. C. H. Patri c k Co . , 464 F. 3d 1356, 1367 (2006) (“Our suggesti o n test is in actuality quite flexible and not only permits, but requ i res , consid

eration of c o mmon knowledge and common s e nse”); Alza Corp. v. M y lan Labs., Inc. , 464 F. 3d 1286, 1291 (2006) (“There is flexibility in our obviousness jurisprude nce because a motivation may be found implici t l yin the prior art. We do not have arigid test t h at requires an actua l teaching to combine . . .”). Those decisions, of course, are not now before us an d do no t c o rrect the errors of law made by the Court of Appeals in this case. The extent to which they may describe an analy s is more consistent with our earlier precedents and our decision here is a matter for the Cou rt of Appea l s to consider in its fu ture cases. What we hold is that t h e fundamental misun d erstandings identified above led the Court of Appeals in this case to apply a testinconsistent with our p a tent law d e cisions. III When we apply the s t andards we have expla i ned to the instant facts, claim 4 must be found obvious. We agree with and a d opt the Di strict Court ’ s recitationof the rele

vant prior art and its determination of the level of ordi

nary skill in the field. As did the District Court, we s ee little difference between the teachi ngs of Asano and Smith and the adjustable elec tronic pedaldisclosed in claim 4 of the Engelgau patent. A person having ordinary skill i n the art could have combined Asano with a pedal position sensor in a fashion encompassed by claim 4, and would have seen t h e benefits of doing so. A Teleflex ar gues in pas s ing that the Asano p e dal cannot be combined with a sensor in th e manner described by19 Cite as: 55 0 U

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### claim 4 because of the design of Asano’s pivot mechanisms. See Brief for Respondents 48–49, and n. 17. Therefore, Teleflex reasons, evenif adding a sensor to Asano was obvious, that does not establish th at claim 4 encompasses obvious subject mat t er. This a r gu ment was n o t, however , raised before the District Cour t. There Telef l ex was con tent to assert only thatthe problem motivating the inve n tion claimed by the Engelgau patent would not lead to the solution of combining of Asano with a senso r . See Tele

flex’s Response to KSR’s Motion forSummary Judgment of Invalidity i nNo. 02–7 4586 (ED Mich.), pp. 18–20, App. 144a–146a. It is also unclear wh ether the current argu

ment was raised befor e the Court of Appeals, where Tele

flex advanced the nonspecific, conclusory contention that combining Asano with a sens or would not satisfy the limitations of claim 4. See Brief for Plaintiffs-Appellants in No. 04–1152 (CA Fed.), pp. 42 –44. Teleflex’s own e x pert declar ations, moreover, do not support the point Teleflex now raises. See Declaration of Clark J. Radcliffe, Ph.D., Supplemental App. 204–207; Declaration of Timo

thy L. Andresen, id., at 208–210. The on ly statement in either declaration tha tmight bear on the argument i s found in the Radcliffe declaration: “Asano . . . and Rixon . . . are complex mechanical linkage-based devices that are expensive to produce and assemble and difficult to pa ckage. It is exactl y these difficulties with prior a rt designs tha t[En g el

gau] resolves. The us e of anadjustable ped a l with a single pivot reflecting p e da l position combined with an electronic c o ntrol mounted betwe en the support and the adjustment assembly at th at pivot wa s a simple, elegant, and novel co mbination of features in the Engelgau ’5 65 patent.” Id., at 206, ¶16. Read in th e context of the declaration as a whole this is best interpreted to mean thatAsano could not be used t o20 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### solve “[t]he problem addressed by Engelga u’565[:] to provide a l e ss expensiv e, more quickly asse mbled, and smaller package ad just able pedal assembly w i th electronic control.” Id., at 205, ¶10. The Distric tCourt found that combining Asano with a pivot-mounted pedal p o sition sensor fell within the scope of claim 4. 298 F. Supp. 2d, at 592–593. Given the sigifi

cance of tha tfinding to the Distric tCourt’s jud g ment, it is apparent t hat Teleflex would h a ve made clearer cha l

lenges to it if it intended to pr e s e rv e t h i s c l a i m . I nl i gh to f Teleflex’s failure to raise the argu ment in a clear fashion , and the sil e nce of theCourt of Appeals on t h e issu e, we take the D i strict Cou rt’s conc lus i on on the point to be correct. B The Distric tCourt was correct to conclude that, as of the time Engelgau designed the subj ect matter in claim 4, it was obvious to a personof ordinary skill to combine Asan o with a pivo t-mounted pedal position sensor. There then existed a marketplac e that crea t ed a stron gincentive to convert mechanical pedals to electronic ped a ls, and the prior art ta ught a number of methods for achieving this advance. The Court of Appeals considered the issue t o o narrowly b y , in effect, askingwh ether a pedal designer writing on a blank sla t e would h a ve chosenboth Asan o and a modular sensorsimilar tothe ones used in the Chevrolet truckline and disclosed in the ’068 patent. The District Co urt employed th is narrow inqui ry as well, though it r e ached the correct re sult nevertheless. The proper question to have asked was whether a pedal d e signer of ordinary sk ill, facing the wide range of needs created by developmen ts in the field of ende avor, would have seen abenefit to u p gradin g Asano with a sensor. In automotiv e design, as in many other fields, the inter

action of multiple components means that changing one21 Cite as: 55 0 U

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### component often requires the others to be modified as well. Tec hnological developmen ts made itclear that engines usi n g computer-contro lled throttles would become standard. As a result, designers might have decided to design new pedals from scratch; but they al so would have had reason to make pre-existing pedals work with the new engines. In deed, upgrading it s own pre-existing model l e d KSR to de sign the pedal now accused of infringing th e Engelgau patent. For a desig n er startin g with Asa n o, the question wa s where to attach the sensor. The consequent legal ques

tion, then, is whether a pedal des i gner of or dinary sk ill starting with Asano would have found it obvious to put the sensor on a fixed pivot poin t. The prior art discussed above leads us to the conclusion that atta ching the sensor where both KSR and Engelgau put it would have been obvious to aperson of ordinary s k ill. The ’936 pa tent taugh tthe utility of putting the sensor on the ped a l device, not in the engine. S m ith, in tu rn, explained to put the sensor not on the pedal’ s footpad but instead on its support structure. And from the known wire-chafing problems of Rixon, and Smith’s teaching th at “the pedal assembli es must not precipitate any motion in the connecting wires,” Smith, col. 1, lines 35–37, Supple

mental App. 274, the designer would kno wto place the sensor on a nonmoving part of th e pedal structure. Th e most obvious nonmoving point on the structure fro m which a sensor can easily detect the pedal’s position is a pivot point. The designer, a ccordingly, would follow Smith in mountin g the sensor on a pivot, thereby designing an adjustable electronic pedal covered by claim 4. Just as it was possible to begin with the objective to upgrade As ano to work with a co mputer-con trolled throt

tle, so too was it possible to take an adjustab le electronic pedal like Rixon and seek an improvement that would avoid the wire-chafing problem. Following similar steps to22 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### those just explained, a designer would learn from Smith to avoid sensor movement and would come, thereby, to Asano because Asano disclos e d an adjustable pedal with a fixe d pivot. Teleflex indirectly ar gu es that the prior artta ught a w a y from attaching a sen s or to Asano because Asano in its view is bul ky, complex, and ex pensive. The o n ly evidence Teleflex marshals in support of this argument, however, is the Radclif fe declarat ion, which merely indicates tha t Asano would not have solved Engelgau’s goal of making a small, simp le, and inexpensive pedal. What the declara

tion does not indicate is that Asano was somehow so flawed that there was no reason to upgrade i t , or pedals like it, to be compatible with modern engines. Indeed, Teleflex’s own declara t ions re fute this conclusion. Dr

. Radcliffe states that Rixon suffered from the same bul k and complexity as did Asano. See id., at 206

. Teleflex’s other expert, however , explai nedthat Rixon was itself designed by adding a s e nsor to a pre-existing mechanical pedal. See id., at 209. If Rixon’s base pedalwas not too flawed to upgrade, then Dr. Ra dcliffe’s declaration does not show Asano was either. Teleflex may have made a plausible a r gument th at Asano is inefficient as compared to Engelgau’s preferred embodiment, but to judge Asano against En gelgau woul d be to enga ge in the very hindsigh t bias Teleflex rightly u r ges mustbe avoided. Accordin gly , Teleflex has not shown anythingin the pri o r art tha t taught away from the use of Asan o. Like the District Court , fina lly, we conclude Teleflex ha s shown no secondary fa ctors to dislodge the determination that claim 4 is obvious

. Proper application of Graham and our other precedents to these facts therefore leads to the conclusion that claim 4 encompassed obvious subject matter. As a result, the claim fails to meet the require

ment of §10 3

. We need n o t reach the quest ion whether th e failure to23 Cite as: 55 0 U

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### disclose As ano during the prosecution of Engelgau voids the presumption of validity given to issued patents, for claim 4 is obvious desp ite the pres umption. We neverthe

less think it approp riate to note that the rati onale under

lying the presumption—that the PTO, in its expertise, has approved the claim—se ems much diminished h e re. IV A separate ground the Court of Ap peals gave f o r revers ing the order for summary jud g ment was the existence of a dispute over an issue of material fact. We disagree with the Court of Appeals on this point as well. To the extent the court u n derstood t h e Graham approach to exclude the possibility of summary judgment when an expert provides a conclusory affidavit addressing the question of obvious

ness, itmis understood the roleexpert testimony plays i n the analysis. In consi d ering summary judgment on that question the district court can and should take into ac

count expert testimony, which may resolve or keep open certain questions of fact. That is not the endof the issue, however. The ultimate judgme nt of obviousne ss is a l e gal determination. Graham , 383 U. S., at 17. Where, as h e re, the content of the prior art, the scope of the patent claim, and the level of ordinary s k ill in the art are not in mate

rial dispute, and the obviousness of the claim is apparent in light of these factors, summaryjudgment is appropri

ate. Nothing in the declarat ions proffered by Teleflex prevented the Distric tCourt fro m reachingthe careful conclusions underlying its order for summary judgment i n this case. * * * We build and create by bringing to the tan gible and palpable reality around us new works based on instin ct, simple logic , ordinary i n ferences, extraordinary ideas, an d sometimes even genius

. These advances, once part of our24 KSR INT’L CO. v. TELEFLEX INC. Opinion of t h eCourt 

### shared kno w ledge, define a new threshold from which innovation starts once more. And as progre ss beginning from higher levels of achievemen t is expected in the no r mal course, the results of ordinary innovationare not the subject of exclusive righ ts under t h e patent laws. Were it otherwise p a tents migh t stifle, ra ther than promote, th e progress of useful arts. See U. S. Const., Art. I, §8, cl. 8. These premises led to t h e bar on patents claiming obvious subject matter established in Hotchkissand codified i n §103. Appli c ation of th e bar must not be confined within a test or formulation too constrained to serve its purpose. KSR provi d ed convincing evidence that mounting a modular sensor on a f i xed pivot p o int of the Asano pedal was a design step we ll within the grasp of a person of ordinary skill inthe relevant a rt. Its arguments, and the record, demonstrate that claim 4 of the Engelgau patent is obvious. In rejectingthe District Court ’ s rulings, the Court of Appeals anal yzed the issue in a n a rrow, ri gi d manner inconsistent with §103 an d our precedents. The judgment of the Court of Appeals is reversed, and the cas e remanded for furtherproceedings consistent with th is opinion. It is so orde red.