Nature of the Case
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Facts
P sued D for patent infringement. The patent at issue, '565 is referred to as 'the Engelgau patent.' P holds the exclusive license to the patent. Claim 4 describes a mechanism for combining an electronic sensor with an adjustable automobile pedal so the pedal's position can be transmitted to a computer that controls the throttle in the vehicle's engine. D countered that claim 4 was invalid under §103 because its subject matter was obvious. In the 1990's it became common to install computers in cars to control engine operation. The computer's rapid processing of factors beyond the pedal's position improves fuel efficiency and engine performance. In computer control, an electronic sensor is necessary to translate the mechanical operation into digital data the computer can understand. In the 1970s, manufacturers designed pedals that could be adjusted to change their location in the footwell as part of height adjustments with the driver. The Asano patent reveals a support structure that houses the pedal so that even when the pedal location is adjusted relative to the driver, one of the pedal's pivot points stays fixed. The Redding patent reveals a different, sliding mechanism where both the pedal and the pivot point are adjusted. Some inventors had obtained patents involving electronic pedal sensors for computer-controlled throttles. The '936 patent disclosed a pedal with an electronic sensor on a pivot point in the pedal assembly. Patent '811 taught that to prevent the wires connecting the sensor to the computer from chafing and wearing out and to avoid grime and damage from the driver's foot, the sensor should be put on a fixed part of the pedal assembly rather than in or on the pedal's footpad. Inventors obtained patents for self-contained modular sensors. Patent '068 used modular sensors 'attached to the pedal assembly support bracket, adjacent to the pedal and engaged with the pivot shaft about which the pedal rotates in operation.' Patent '593 discloses an adjustable pedal assembly with an electronic sensor for detecting the pedal's position. The sensor is located in the pedal footpad. Ford hired D to supply an adjustable pedal system for various lines of automobiles with cable-actuated throttle controls. D developed an adjustable mechanical pedal for Ford and obtained '986 for the design. D supplied adjustable pedal systems for Chevrolet and GMC light trucks that used engines with computer-controlled throttles. To make the '986 pedal compatible with the trucks, D merely took that design and added a modular sensor. Engelgau filed the patent application on August 22, 2000, as a continuation of a previous application for '241, which was filed on January 26, 1999. He invented the patent's subject matter on February 14, 1998. The Engelgau patent discloses an adjustable electronic pedal. The claim discloses 'a position-adjustable pedal assembly with an electronic pedal position sensor attached to the support member of the pedal assembly. Attaching the sensor to the support member allows the sensor to remain in a fixed position while the driver adjusts the pedal.' Before issuing the Engelgau patent PTO rejected one of the patent claims that was similar to, but broader than, the present claim 4. The claim did not include the requirement that the sensor be placed on a fixed pivot point. The PTO concluded the claim was an obvious combination of the prior art disclosed in Redding and Smith. Claim 4 was later allowed because it included the limitation of a fixed pivot point, which distinguished the design from Redding's. Engelgau had not included Asano among the prior art references. The PTO did not have before it an adjustable pedal with a fixed pivot point. The patent issued on May 29, 2001, and was assigned to P. P sent a warning letter to D that its proposal to GM would violate the Engelgau patent. P sued D for infringement. The Court granted summary judgment in D's favor. It applied Graham's framework and determined that the level of ordinary skill in pedal design was ''an undergraduate degree in mechanical engineering (or an equivalent amount of industry experience) [and] familiarity with pedal control systems for vehicles.'' Under the controlling cases from the Court of Appeals, the court was required also to apply the TSM test. It held D had satisfied the test. It reasoned (1) the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals, (2) Rixon provided the basis for these developments, and (3) Smith taught a solution to the wire chafing problems in Rixon, namely, locating the sensor on the fixed structure of the pedal. This could lead to the combination of Asano, or a pedal like it, with a pedal position sensor. The Court held that had Engelgau included Asano in his patent application, the PTO would have found claim 4 to be an obvious combination of Asano and Smith, as it had found the broader version an obvious combination of Redding and Smith. D got summary judgment. P appealed. The Court of Appeals ruled the District Court had not been strict enough in applying the TSM test. The Court of Appeals found the Asano pedal was designed to solve the ''constant ratio problem'' whereas Engelgau sought to provide a simpler, smaller, cheaper adjustable electronic pedal. That it might have been obvious to try the combination of Asano and a sensor was likewise irrelevant, in the court's view, because '''obvious to try' has long been held not to constitute obviousness.'' The Court of Appeals faulted the District Court's consideration of the PTO's rejection of the broader version of claim 4. The District Court's role was not to speculate regarding what the PTO might have done had the Engelgau patent mentioned Asano. The District Court was obliged first to presume that the issued patent was valid and then to render its own independent judgment of obviousness based on a review of the prior art. The fact that the PTO had rejected the broader version of claim 4, the Court of Appeals said, had no place in that analysis. It reversed and D appealed.
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