Patent Law Practice Center

CAFC rules Board misapplied law of common sense

On August 10, 2016, the Federal Circuit issued an important ruling in Arendi S.A.R.L. v. Apple, Inc.

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Obviousness and the modern-day “flash of creative genius”

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.

The Arbitrary Nature of Obviousness

Obviousness is where the rubber meets the road in terms of patentability, and it seems that the state of the law of obviousness is anything but clear. It has always been difficult to explain the law of obviousness to inventors, business executives and law students alike. Since the United States Supreme Court issued its decision in KSR v. Teleflex, it has become even more difficult to provide a simple, coherent articulation of the law of obviousness that is at all intellectually satisfying. That is in no small part due to the fact that the determination about whether an invention is obvious is now completely subjective.

If you look at the Federal Circuit cases, it seems that there is a lot of post hoc reasoning that simply justifies a conclusion already formed. De novo review of all the facts allows the Federal Circuit to be a super-panel that can simply supplant its own beliefs for the considered beliefs of patent examiners, the Board, a District Court Judge or even a jury. While conceptually it may seem like a good idea to have a fresh look by a reviewing court, this fresh look at all things leads to no predictability, and obviousness law in utter disarray.

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Will the Supreme Court Accept Soverain v. Newegg?

To many, Soverain v. Newegg is just another obviousness dispute; so why would the Supreme Court get involved? It is really more than your typical obviousness dispute, though. Increasingly, patent claims are held valid in a variety of different forums — they are initially granted, they are litigated in district court and at the ITC, and litigated again and again at the USPTO. In some instances, after all that litigation, and even after multiple successful reexaminations in favor of the patentee, the Federal Circuit will find the claims invalid as being obvious.

How is this the case? That is a good question. It stems from the fact that obviousness, which is supposed to be a mixed question of fact and law, is reviewed de novo by the Federal Circuit. It seems the Federal Circuit, which as an appellate court is not well-equipped to deal with determining facts, reviews the underlying facts de novo as well.

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Advanced Patent Prosecution Workshop: Chemical & Pharmaceutical Claim Drafting

Last week, I attended PLI’s Advanced Patent Prosecution Workshop 2011 in New York where an esteemed panel of experts offered hands-on claim drafting and amendment writing techniques.  The program was organized into four technological sections: Biotechnology, Chemical/Pharmaceutical, Electrochemical and Electronics/Computers. I attended the Chemical/Pharmaceutical segment where Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, discussed Chemical and Pharmaceutical Claim Drafting.  Here are some highlights from his presentation….

• Development of a Patent Portfolio – patent portfolio is developed in the context of a business plan and where in the life cycle the product is.
• Generic Player – differentiate product from innovator and create difficulty for competitors, other generics.
• Innovator – at what stage is the development? Integrate FDA and patent filing strategies and develop patents with an eye towards forcing infringement.
• Strategies for Early-stage and Late-stage Products
• Developing a Portfolio of both Listed and Unlistable Patents
• Start with the end-game and plan backwards (more…)