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 Holdi ng Company (collectiv ely, “Teleflex”) sued KSR International Co. (“KSR”) in the Un ited 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 vacat ed the position of Chief Judge on December 24, 2004.after determining that claim 4 of the ’565 patent, the sole cla i m 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 s u mmary judgment and remand the case to the district court for further proceedings. DISCUSSI ON
I. Claim 4 of the ’565 patent relate s to an adjustable pedal assembly 1 for use with automobiles having engines that are controlled electronically with a device k nown as an electronic throttle control. As such, the asse mbly of claim 4 incorporates an electronic pedal position sensor (referred to in clai m 4, and throughout this opin i on, as an “electronic control”). The electronic contro l is responsive to the pedal pivot and thereb y generates an electrical s i gnal c o rresponding to the relative pos ition of the gas pedal between the rest and applied positions. Claim 4 spec ifically prov ides for an assembly wherein the electronic control is mounted to t he support bracket of the assembly. This configuration avoids movement of the elect r onic control dur ing adjustment of the pedal’s position on the assembly. Claim 4 reads: A vehicle c ontrol pedal appar atus (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 wit h 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 a ccommodate a particular driver’s height

.
04-1152 2a 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) attac hed to said support (18) for controlling a vehicle system; said appar atus (12) characterized by said electronic control (28) being responsiv e 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 wher ein 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 spec ification of t he ’565 patent i ndic a tes that prior-art pedal assemblies incorporating an electronic control suffe red from being too bulky, complex, an d expensiv e 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 s ued KSR in the Eas t ern Distr ict of Michigan, alleging that KSR’s adjustable pedal as sembly infringed claim 4 of the ’565 pat ent. KSR moved for summary judgment of invalidity of clai m 4 based o n obviousness under 35 U.S.C. § 103. The district c ourt granted KSR’s motion after det ermining that c l aim 4 was obvious in view of a combination of prior ar t references. Teleflex timely appealed t he 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 Phar ms., Inc. , 336 F.3d 1322, 1326 ( F ed. Cir. 2 0 03). “In a patent cas e , as in any other, summary ju dgment may be granted wh en th ere are no

04-1152 3disputed is sues of material fact, . . . or when the non-movant cannot prevail on the evidenc e submitted when viewed in a light most favorable to it.” Knoll P h arm. Co. v. Teva Phar ms. USA, Inc. , 367 F.3d 1381, 1383 (Fed. Cir. 2004). The movant carries the initial burden of proving t hat there are no genuine issues of material fact. Ce lotex 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 cas e for summary judgment, then the burden of production shifts to the nonmovant to present specific evidenc e indicating there is a genuine issu e 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 judgmen t, all of the nonmovant’s evidenc e is to be c r edited, and all justif iable 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 ev idence is c onflicting or credibility determinations are required, the judgment should be v a cated rather than reve rsed, 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 invali dit y for obviousness must be done on a claim by claim bas is.” Knoll Pharm. , 367 F. 3d at 1383. Bec ause patents are presumed valid, “[t]he accused infringer must prove by clear and convinc i ng ev idence that each claim that is challeng ed cannot reasonably be hel d to be non-obvious.” Id. ; see al so Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH , 139 F.3d 877, 881 (Fed. Cir. 1998). Clear and convincing evidence exis ts 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 Me xic o , 467 U.S. 310, 3 16, 104 S. Ct. 2433, 81 L. Ed. 2d 247 (1994).

04-1152 4A patent claim is obvious, and thus inva lid, when the differences between the claimed inv ention and the prior art “are such that the subject matter as a w hole would have been obvious at the time the invention was made to a person having or dinary skil l 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 dete rmination, it is bas ed on several underly ing issues of fact, namely: (1) the scope and content of the prior art; (2) the level of skill o f
a person o f ordinary skill in the art; (3) the differences between the claime d invention and the teachings of the prior art; and (4) t he extent of any objective indicia of no nobvious nes s. See Graham , 383 U.S. at 17-18. When obvious ness is based on the teachings of multiple prior art references, the movant must also establish s o me “suggestio n , teaching , or motivation” that w ould have led a person of ordinary skill in th e art to combine the relevant prior ar t 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 Plastic s , Inc. , 75 F.3d 1568, 1572 (Fed. Cir. 1996). The nonmovant may rebut a prima facie s howing of obvious nes s with ev idenc e refuting the mov a nt’s case or with other objective evi dence of nonobv ious ness. See WMS Gam i ng, Inc. v. Int’l Game Tech. , 184 F.3d 1339, 1359 (Fed. Cir. 1999). “The reason, suggestion, or motivation to c o mbine [prior art references] may be found explicitly or implicitly : 1) in the prior art refer ences 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, ‘l eading inv entors to look to references relating to possible

04-1152 5solutions t o 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 cas e law makes clear that the best defense against the subtle but powerful at traction of a hindsight-based obviousnes s analys is is rigorous application of the require ment for a showing of the teaching or motivation to combine pr ior art references.” Dembiczak , 175 F.3d at 999; see also Ruiz , 234 F.3d at 665 (explaining that the temptati on to engage in imper missible h i ndsight is especially strong with seemingl y simple mechanical inventions ). This is becaus e “[c]ombining prior art refer ences without evidence of such a suggestion, teaching, or motivation simply takes the inventor’s discl osure as a blueprint for piecing together the prior art to defeat patentabilit y—the essence of hindsight.” Dembiczak , 175 F.3d at 999. Therefore, we have c ons istently held that a per son of ordinary skill in the art must not only have had some motivation to combine the pr ior art teachings, but some motivation to combine the prior art teachings in the particular manner claimed. See, e.g. , In r e Kotzab , 217 F.3d 1365, 1371 (Fed. Cir. 2000) (“Parti cular findings must be made as to the reason the skilled artis an, with no knowledge of th e claimed invention, would hav e selected these components for combination i n the manner cl ai med .” (emphasis added)); In re Rouff e t , 149 F.3d 1350, 1357 (Fed. Cir. 1998) (“In other words, the exa m iner must show reas ons that the skille d artisan, confronted with the same problems as the inventor and with no knowl edge of the claimed invention, would select the elements from the cited prior ar t references for combination in the manner claimed .” (emphasis added)).

04-1152 6III. On appeal, Teleflex argues that we should vacate the district court’s grant of summary judgment and remand the case becaus e the district court committed multiple errors in its obviousness determination. F i rst, Teleflex urges that the district court erred as a matter of law by combining prior ar t references based on an incorrec t teachingsuggestion-motivation test. Second, it contends that genuine issues of materi al fact still remain as to whether a person of ordinar y skill in the art would have co nsidered it obvious to combine prior art in the manner st ated in claim 4. Finally, Teleflex argue s that the district court e rred by not properly consider ing the commercial success of Teleflex’s patented assembly and by faili ng 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 cor r ect teaching-suggest i onmotivation test, and that, under that test, th e court correctly concluded that no genuine issues of material fact existed so as to pr event the grant of summary judgment. KSR contends that the dist rict court properly disc ounted the declarations of Teleflex’s expert s because their opinions were bas ed on mere lega l conclusions. KSR also contends that the district court properly di smiss ed Teleflex’s ev idence of commercial succes s becaus e Teleflex failed to establis h a nexus be tween commercial succ ess and the claimed invention. Finally, KS R argues that the district court gave proper deference to the PTO. We agree with Teleflex that the district court did not apply the c o rrect teachingsuggestion-motivation test. We also agree that, under that test, genuine issues of material fact exist, so as to render su mmary judgment of obviousness im proper. For

04-1152 7these reas ons, we v a cate the decision of the distric t 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 t he invention, all of the limitation s of claim 4 existed in t he prior art. The court explained that U.S. Patent No. 5,010,782, issued t o Asano et al. (“the Asano patent”), disclos ed all of the st ructural limitations of claim 4 with the exception of the electronic control. Teleflex , 298 F. Supp. 2d at 592 (“Asano teaches an adjustable pedal ass e mbly pivo tally mounted on a support bracket with the pedal mov i ng in a for e and aft directions with respect to the support and the pivot remaining in a const ant pos ition during movement of t he pedal arm.”). Electronic controls were well kn own in the prior art. Id. Consequently, after finding a person of ordinary skill in the art would ha ve been mo tivated to combine Asano an d electronic control references, the district court gr anted 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 t he nature of the pr oblem to be solved by clai m 4 of t he ’565 patent. Id. at 593-94. The court determined from the patent’s specification that the invention of the ’565 patent was intended to “s olve the pr obl em of designing a le ss 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 pa tent”), 2 als o

2 As explained by the district c ourt, the Rixon ’593 patent teaches the combination of an electronic control with an adjustable pedal assembly. The Rix o n ’593 patent and claim 4 differ, however, in that t he electronic control of Rixon is attached t o

04-1152 8“suffered from being too complex because t he pedal position sensor is loc a ted in the pedal hous ing 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 wh ile t he pedal arm is being adjusted by the driver.” Id. at 594. The court then c oncluded that “a person wit h ordinary sk ill in the art wit h full knowledge of Asano and the m odular p e d a l pos itio n sensors would be motivated to c o mbine the tw o refere nces to av oid the problems wit h Rixon ’593. ” Id. The district court also found an express te aching to attach the electronic control to the support bracket of a pedal assembly based on the disclos ure of U.S. Patent No. 5,063,811, issued to Smith et al . (“the Smith patent”). The court explained t hat 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 cour t stated that Smith provided express teachings as t o the desir abili ty of attaching the el ectronic control to a fixed support member in order to avoid th e wire failure problems disclosed in the Rixon ’593 patent and solv ed by the ’565 patent: “[T]he wiring to the electrical components must be secure from the possib ility of chafi ng wh ich will eventu a lly result in electrical failure. Thus, the pedal assem b lies must not precipit ate 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 , 2 98 F. Supp. 2d at 594. The electronic control of the Rixon refer ence 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 9Finally, the district court explained that the prosecution history of the ’5 65 patent bolstered it s finding of a suggestion or moti vation to combine the Asano and electronic control references. The court explained t hat the patent examiner initially r e jected the ’565 patent in view of the t eachings of U.S. Patent No. 5,460,061, issued to Redding et al. (“the Redding patent”), and th e Smith patent. The exami ner s t ated that the Reddin g patent dis c losed the assembly structure of claim 4 and that Smith disclosed the electronic control attached to the assembly support structure. Th e patentee overcame the rejection, the cour t explained, by adding the limitation requirin g the position of the assembly’s pedal piv o t to remain constant during adjustment of the assembly. (The position of the pedal pivot of the Reddin g patent does not remain constant during adjustment of the assembly position.) Howev e r, the Asano patent discloses an assembly where the position of the pivot remains const ant during adjustment of the pedal assembly. Therefore, the district court reasoned, had Asano been c i ted to the patent examiner, the ex aminer would hav e 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 analy s is applied an incomplete teaching-s uggestion- motivation test in granting KSR summary judgment. This is because the district court invalidated claim 4 of the ’565 patent on obvious nes s ground s without making “finding[s] as to the spec ific under standing or principle within the knowledge of a skilled artisan that would hav e motivated one with no kno wledge of [the ] invention to make the combinat ion 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 10district court was required to make spec ific findings as to whether there was a suggestion or motivation to combine the teac hings 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 di strict court was required to make specific findings as to a suggestion or moti vation to attach an electronic control to the support bracket of the Asano ass e mbly. The district court correctly noted t hat the nat ure of the problem to be solved may, under appropriate circumstances, provide a s uggestion or motivation to combine prior art references. However, the test requires that the nat ure of the problem to be solved be such that it would have led a person of ordinary sk ill in the art to combine the prior art teachings in the part icular manner claimed. See Rouffet , 149 F.3d at 1357. We have recognized this situation when two pr ior art references address the precise problem that the patentee was trying to s o lv e. See Ru iz , 357 F.3d at 1276 (“This record shows that the distric t court did not use hinds ight in its obv iousness analysis, but properly found a motivation to c o mbine bec ause the t w o references addres s precisely the same problem of underpinning existing struct ural 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 direct ed at solving the “constant ratio problem.” 3 The district court’s reliance on the problems associated wit h the Rixon ’593 patent similarly fails to provide a sufficient motivati on to combine. This is

3 The constant ratio problem refers to the problem of creating an as sembly 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.

04-1152 11because 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 expl ain how su ffering from the problem addressed by the ’595 patent would have specifically motivated one skille d in the art to attach an electronic control to the support bracket of the Asano as sembly. Neither do we agree wit h the dis t rict court’s reliance o n the express teachings of the Smith patent. This is bec ause the statement in t he Sm ith patent that “the pedal assemblies must not precipitat e any mo tion 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 word s, 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 doe s not relate to adjust able pedal assemblies ; t herefore, it does not address the problem of wire chafing in an adjustable pedal assem b ly. Our view of the case is not altered by the ’565 patent’s prosecut ion history. That is becaus e a court’s task is not t o speculate as to what an e x am iner might have done if confronted with a piece of prior art. R a ther, a court must make an independent obvious nes s determination, taking into acc ount the statutory pr esumption of patent valid ity. See TorPharm , 336 F.3d at 1329-30 (“[W]here the factual bases of an examiner’s decision to allow a c l aim hav e been undermined—as in other cases wher e prior art not before the exam iner is brought to light during litigation—a court’ s responsibility is not to speculate what a par ticular examiner would or would not hav e done in light of the new informa tion, but rather to ass e ss in dependently the validity of

04-1152 12the claim against the prior art under section 102 or secti on 103. Such determination must take i n to account the statut ory presumption of patent validity.”). 4 We also agree with T e leflex that the pres ence of genuine issues of material fact rendered s u mmary judgment inappropriate. KSR, in t he first instance, failed to make
out a prim a facie case of obviousness. The only declaration offered by KSR— a declaration by its Vice President of Design Engineerin g, Larry Willemsen—d id not go to the ultimate issue of motivation to combine pr ior 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 disclo s ed by Asa no. Mr. W illemsen did state that an electron ic control “could hav e been” mounted on t he support bracket of a pedal a ssembly. (Willems e n Decl. at ¶ 33, 36, 39.) Such testimony is not sufficient to support a finding of obvious nes s, however. See, e.g. , In re Deuel , 51 F.3d 1552, 1559 (Fed. Cir. 1995) (“‘Obvious to try’ has long be en held not to constitute obvious nes s.”). Mr. Willemsen also prov ided the following as a “specific motivation to combine” an electronic control with an adjustable pedal assembly: [A]n increasing number of vehicl es sold in t h e United States came equipped with electronic throttle control systems because such sys tems offered various operational advantages over cable-actuated th rottle control systems . . . . In order to functi on in a vehic l e whose engine incorporated an elect r onic th rottle control, the adjus table pedal assembly . . . would hav e had to be coupled to an electronic pedal pos ition sensor.

4 Noting T e leflex’s argument that t he distric t court did not give adequate deference to the PTO , we do not discern anyt hing in t he record indi cating t h e district court failed to properly defer to the PTO. Ne vertheless, we reiter ate that, on remand, the district court must i ndependently assess the eviden ce and det ermine whether KSR has provided clear and conv incing evidence indi cating invalidity of claim 4 by reason o f obvious nes s.

04-1152 13(Willemsen Decl. at ¶ 34, 37, 39.) This st atement may be factually correct. Howev e r, the issue is not whether a per son of skill in the art had a motivation to combine the electronic c ontrol with an adjus table pedal assembly, but whet her a person skilled in the art had a motivation to attach the electronic c ontrol to the support bracket of the pedal assembly. In addition, Teleflex offered tw o decla rants—Clark J. Radcliffe, Professor of Mechanical Engineering at Michigan State Universit y ; and Timothy L. Andresen, a former engineer at Ford Motor Company and McDonnel-Douglas Corporation—in rebuttal of the declara tion of Mr. Willemsen. Mr. Radcliffe stated, inter alia , that “[t]h e location of the electronic control” (Radcliffe Decl. at ¶ 15) in claim 4 “wa s a simple, elegant, and novel combination of features,” (Radcliffe Decl. at ¶ 16) as opposed to the Rixon ’593 patent’s attach ment of the electronic control to the assembly housing, whic h was both electrically and mec han ically comp le x (Radc lif fe De cl. at ¶ 17). Mr. Andresen also stated that the non-obviousness of claim 4 was reflected in Rixon’s c hoice to mount the electronic control to the assembly ho using 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 decla rant and discrediting the two declarants offered by Teleflex, the distri ct court erred as a matter of law.
V. In sum, (1) We hold that, in granti ng summary j udgment in favor of KSR, the district court erred as a matter of law by applying an incomplete teaching-s uggestion- motivation

04-1152 14test to its obviousness determination. T he correct standard requires a court to make specific findings showing a teaching, sugges tion, or motivation to combine prior art teachings in the particular manner claimed by the patent at issue. (2) Under this standard, we hold that genui ne is sues of material fact exist as to whether a person of ordinar y skill in the art would hav e been motivated, at the time the invention was made, to attach an electr onic control to the support structure of the pedal assembly disclosed by the Asano patent. (3) We consequently vacate the dec ision of the district court and remand the case for further proceedings on the is s ue of obviousness , and, if necessary, proceedings on the issues of infringement and damages. Each party shall bear its own costs.

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