With the end of the Supreme Court’s October 2014 term at hand, I thought it might be interesting to take a journey back to look at two of the biggest patent decisions in recent memory. Today we will focus on obviousness and KSR v. Teleflex.

There is absolutely no doubt that the Supreme Court’s decision in KSR largely took away objectivity, instead supplanting it with a subjective test. Ever since, the Federal Circuit and the Patent Office have struggled to get objectivity back into the test. The Federal Circuit has largely been successful, with at least several notable exceptions. With over 8,500 patent examiners, most of whom are not lawyers, the Patent Office has not been quite so successful, despite their best efforts: Many patent examiners continue to provide conclusory obviousness rejections.

It is hard to oversell the Supreme Court’s decision in KSR International v. Teleflex, simply because the question presented called into question one of the most well-established aspects of United States patent law. The question the Supreme Court invited briefing and argument on was this: “Whether the Federal Circuit has erred in holding that a claimed invention cannot be held obvious, and thus unpatentable under 35 U.S.C. §103(a), in the absence of some proven ‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”

Obviousness today is about predictability of results. This is true because, in addressing the foregoing question, the Supreme Court did away with the so-called teaching, suggestion or motivation test. Prior to KSR, if there was no teaching, suggestion or motivation to combine references, the patent examiner could not reject the claimed invention. Today, however, there are other rationales available to the examiner:

1. If the invention is a product of combining prior art elements according to known methods to yield predictable results, the invention is obvious.
2. If the invention is created through a substitution of one known element for another to obtain predictable results, the invention is obvious.
3. If the invention is achieved by using a known technique to improve a similar device in the same way, the invention is obvious.
4. If the invention is created by applying a known improvement technique in a way that would yield predictable results, the invention is obvious.
5. If the invention is achieved from choosing a finite number of identifiable, predictable solutions that have a reasonable expectation to succeed, the invention is obvious.
6. If known work in one filed of endeavor prompts variations based on design incentives or market forces and the variations are predictable to one of skill in the art, the invention is obvious.

As you can see, rationales 3 and 4 are virtually identical. All of these also focus on whether the resulting invention was achieved by combining known references in a way to produce predictable results. Thus, the way you must argue obviousness post-KSR is to say that there is no teaching, suggestion or motivation to combine the references and that the resulting combination of elements would not have been understood to produce predictable results by someone of skill in the art.

Of course, the initial framework used for determining obviousness is stated in Graham v. John Deere Co. The test requires consideration of:

(1) Determining the scope and content of the prior art.

(2) Ascertaining the differences between the claimed invention and the prior art.

(3) Resolving the level of ordinary skill in the pertinent art.

(4) Secondary considerations of non-obviousness.

The big problem I have with obviousness after KSR, at least at the Patent Office, is that it is so unevenly applied. That could have been predicted by the Supreme Court retreating from an objective test and instead embracing a subjective test that requires the decisionmaker to focus on whether they believe the results achieved were predictable. Given the KSR test, there is unfortunately no rational way to guarantee that personal opinions and subjectivity is removed from the analysis. This can be easily confirmed just by looking at what happens with respect to software at the Patent Office. In some areas of the Patent Office that handle software-related inventions, everything is obvious, and in other areas, nothing is ever obvious. For example, if the software deals with any kind of GPS navigation system, you simply will not get the same examination that you would receive if your software powers an e-commerce system.

Time will tell where we go from here, but I am of the belief that we now have a modern-day version of the “flash of creative genius” test relative to obviousness.

Tags: obvious, obviousness, patent, patents

This entry was posted on Tuesday, June 30th, 2015 at 16:37 and is filed under Patent Issues, posts. You can follow any responses to this entry through the RSS 2.0 feed. You can skip to the end and leave a response. Pinging is currently not allowed.