Supreme Court: Time to Rethink Obviousness

PatentlyOImage025_smallKSR v. Teleflex (Supreme Court 2006).

The Supreme Court has granted KSR’s writ of certiorari and now will address fundamental questions of patentability that have been raised. The doctrine of nonobviousness ensures that patent rights are not granted on inventions that are simply throw-away modifications of prior technology.  Questions of obviousness are at play in virtually every patent case, in both proceedings before the USPTO and during infringement litigation.

Over the past twenty-five years, the Court of Appeals for the Federal Circuit has developed its nonobviousness doctrine using a motivation/suggestion/teaching test. According to the test, when various pieces of prior art each contain elements of an invention, the prior art can be combined together to invalidate a patent on the invention only when there is some motivation, suggestion, or teaching to combine the prior art.

KSR has asked the Supreme Court to rethink that approach and take a fresh look at the obviousness standard for patentability. The petition questions whether obviousness should require any proof of some suggestion or motivation to combine prior art references.

Question Presented: Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 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"?

Interestingly, the Supreme Court has not heard an obviousness since well before the founding of the Federal Circuit. In that case (Sakraida 1976), the High Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a).  Under the Sakraida standard, the Teleflex patent is arguably obvious.

Professor John Duffy has done a masterful job of shepherding this case through the system.  In an article several years ago, Duffy predicted the current rise of Supreme Court interest in patent case.  In fact, at that time he announced that the very issue now being debated in KSR was ripe for adjudication:

One very good candidate for [Supreme Court] review is the law governing whether an invention is not ‘‘obvious’’ at the time of invention. . . . [The Federal Circuit’s suggestion] test, which tends to make even seemingly trivial developments patentable, is entirely the Federal Circuit’s product.  It has no basis in the Supreme Court’s case law and may, in fact, be inconsistent with the Court’s most recent pronouncement on the subject (though that precedent is now more than a quarter century old). . . . None of this is to say that the Court will necessarily reject the doctrine developed by the Federal Circuit; it is only to suggest the Court is likely to end its long absence from this doctrinal area soon.

The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 S.Ct. Rev. 273, 340-41 (2003).  Robert Brauneis another GWU law professor led a group of 24 law professors in support of the petition. Although he did not file a brief (to my knowledge) Richmond Professor Christopher Cotropia argues that (1) recently, the CAFC has removed some rigidity from the obviousness determination and (2) the requirement for proof of a suggestion to combine should be thought of as a rule of evidence. [link].

According to Professor Duffy, the preliminary amici briefing schedule is as follows:

  • Amici supporting petitioner or neither side: August 10, 2006 (45 days after cert granted).
  • Amici supporting respondent: September 14, 2006 or 35 days after petitioner brief is filed — whichever is less.

Crouch’s Commentary: For those of you concerned about the potential impact of this case — It is very likely that the CAFC’s motivation test will be changed and briefs simply requesting “no change” are unlikely to to be given much weight.  Proposed solutions, including analogies to other areas of law (and foreign law) may be helpful.  In this case, I also believe that would be useful to provide the Court with a number of real-world examples of how the system works or how it should work.

Documents:

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20 thoughts on “Supreme Court: Time to Rethink Obviousness

  1. [quote] How science and engineering are done has changed enormously since the patent laws were first introduced. The advance of knowledge is now systematized and systematic.[/quote]

    And so too has business become more interrelated and international in nature such that IPR from separate disciplines overlap in products, business methods and commercial impact. This technological, informatics, communications and enterprise evolution should be represented in how IPR is treated imo.

    [quote] While the argument has been made that the Supreme Court is not populated with patent law experts, the same argument should be made that the Federal Circuit is not populated with technical subject matter experts on what would be obvious to one of ordinary skill in the art. [/quote]

    As technology has become more complex, intricate, fast paced and interrelated, it is difficult for any group, lawyers, judges, expert witnesses included, to be informed, let alone expert in all fields of IPR.

    A frailty of all of us is to admit limitations of humans to keep up with technology, diversity and communications. The entire ‘schema’ can be viewed now more as a process: questions of obviousness increasingly a question of timing for attention.

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  2. I disagree with the assertion that the Supreme Court has not considered an obviousness case (that is what you were saying?) since before the formation of the Federal Circuit. For starters, what about Dickenson v. Zurko (527 US 150) in 1999, which determined that the Federal Circuit should apply an APA standard of review to factual determinations by the PTO?

    Concluding that the Federal Circuit wasn’t even applying the right standard of review–and thus, appropriate deference to the PTO’s factual determinations underlying a legal conclusion of obviousness–is clearly a case on the obviousness standard.

    While the argument has been made that the Supreme Court is not populated with patent law experts, the same argument should be made that the Federal Circuit is not populated with technical subject matter experts on what would be obvious to one of ordinary skill in the art. The PTO–not the Federal Circuit–has the technical subject matter expertise to make the related factual determinations. Deference to the legal conclusions made based on those factual determinations is another consideration entirely.

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  3. The negative perception of patent quality is precisely that: a perception. The vast majority of sturm und drang (FUD) about patents and IP now is the result of post-dot-com nabobs scrutinizing a legal landscape that they conveniently ignored for more than 100 years (e.g. when patents routinely are discussed in the WSJ, TIME, and other publications, they are receiving undue scrutiny from those who really know not of what they speak). It is also the result of “business method” and software patents, both of which suffer from the same problem: the practitioners of those arts utterly failed to document their work until the patent system provided an incentive to do so. Thus, “bad” patents are granted not because of the standard of obviousness, but because of poor searches or a poor pool of art from which to draw.

    I have been a patent practitioner for 15 years. Crummy patents have always slid through, typically because an examiner is lazy or simply asleep at the switch. The majority of the more than 200 patents I have prosecuted and the 50 or so I have witnessed or participated being litigated have been reasonably well examined within the confines of the system, particularly the limitations imposed on the Examiner’s ability to search.

    Other than the Examiner being asleep at the switch, I have never seen a crummy patent that benefited from or was granted solely because the Examiner was hoist on the teaching, suggestion, motivation petard. I have seen many patents for worthwhile inventions granted because the only rejection the Examiner could come up with was to string together incoherent and uncombinable references that so happened to aggregate to recite the elements of the claimed invention.

    I would submit that the majority of rejections where TSM is a big factor and the invention is crummy could be cured by better searching that reveals a reference that contains the teaching, suggestion or motivation in question (or is an
    anticipatory reference as in Mr. Morgan’s example). If such a crummy patent were to make it to litigation, a motivated defendant could relatively easily turn up the magical reference and prove invalidity, either through the litgation or administrative procedures.

    Incidentally, I am very careful with the expenditure of my client’s money, whether that client be the several Fortune 500 companies I represent or the several independent inventors I have represented over the years.

    The PTO is a government agency. Like most governmental things, the people who use it also need to be protected from it. Patent practitioners need to be protected to a degree from the arbitrary and capricious behavior of examiners. This has never been so true as in the last five years, when the 18-month first action rule (a glowing example of the law of unintended consequences) has resulted in crappy searches and crappy rejections and prolonged prosecution of inventions deserving of patents. I don’t want to give the PTO another weapon with which to tool me and my clients around.

    Secondary factors are great. They are also very difficult to prove, especially when the cited art is not manufactured, as is often the case. Resort to secondary considerations to cure an arbitarily applied and evidentiarly impossible obviousness reject is not practical in most cases and reflects naivete on the part of the suggestor.

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  4. Similar to Malcom M., I think the majority of those against giving more tools to the PTO to strike down questionable patents are “patent prosecutor wholly dependent on bottom-feeding and bilking naive folks out of their money in exchange for a ‘genuine US patent’”, the ambulance chasers of our industry, who employ deplorable tactics that “kick up enough dust to choke a PTO Examiner into a compliant state of oxygen deprivation”.

    An attorney whose skills are valued can concentrate on secondary considerations to prove obviousness, instead of bilking the client’s money to come up with claim limitations that would have hard-to-find motivations [that PHOSITA would not have considered of documenting], leading to the present state of negative perception of patent quality.

    I hope the KSR case will result in greater latitude for the PTO in obviousness determination. This will lead to better perception of the US patent system by weeding out questionable patents and those attorneys who may not belong in the profession.

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  5. Kicking up some KSR comments

    Dennis Crouchs KSR cert grant post at Patently-O is drawing some great comments. The most savy observation thus far is from Dennis himself, in the body of the post. It pertains to amicus briefs:
    For those of you concerned about the potential i…

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  6. It might be helpful to this abstract debate if some of the commentators could provide specific examples of a “proven teaching, suggestion, or motivation leading a person of ordinary skill in the art to combine” two or more references. If the suggestion IS in one reference, could not that be an arguable 102 rather than a 103? E.g, where the second patent is cited on the face of, or in the specification of, the first patent? Even without an express incorporation by reference?
    Also, what about [what used to be rejected] “aggregation” claims in which there may not even be any particular recited functional or structural connection between some of the recited claim elements?

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  7. For the record, I prosecute patents and assist in litigation support. Unless your income as a patent prosecutor is wholly dependent on bottom-feeding and bilking naive folks out of their money in exchange for a “genuine US patent,” I don’t see why any citizen would want a system where more broad and more obvious claims are issued.

    The more tools the PTO has to strike down patent claims, the more my skills as a lawyer are valued. Anybody can kick up enough dust to choke a PTO Examiner into a compliant state of oxygen deprivation. That’s not a profession I care to be a part of.

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  8. Mark P writes

    “Face it, if it is that easy to find a motivation in your mind, it must be documented somewhere.”

    Discussing an issue such as “obviousness” in the abstract is always difficult but the statement above is simply false.

    Some things are so obvious that, in fact, they are not written down. It is only after the breathtakingly broad claim is issued that people waste time *writing* about the particular recited combination.

    It seems to me that there needs to be two tests, one for the “predictable” arts and one for the “unpredictable arts” (i.e., biochemistry). What happens in the unpredictable arts is that the utility of a particular combination of SPECIFIC chemicals can’t be determined prior to their combination. BUT the GENUSES of reagents which one will choose from to assemble the combination is finite and, for some applications, proscribed. In other words, it is obvious to try to combine certain chemicals to achieve GOAL X and it is reasonable to expect that some combination of those chemicals will lead you to that goal.

    So what happens at the PTO? What happens at the PTO is that the application provides one or two examples of a combination using specified ingredients in specified concentrations and submits a claim to the combination of, say, two of the GENUSES of those chemicals without concentration limitations. The Examiner comes back with a reference and says: here the two genuses are taught. The applicant adds another genus and maybe a broad recitation of concentrations to get out of the prior art.
    The Examiner finds some general teaching about the combination and the practicioner says, “That only makes it obvious to try but you couldn’t have known it would work until you did it. And we were the first.”

    And then the broad claim issues and the proud patentee can now exclude anyone from doing what was obvious in the first place: pick the sorts of reagents off the shelf which are known to work for a specific purpose and see if they do work.

    My point is not there is no patentable invention to be had from combining obvious-to-try-to-combine reagents. But the claims that issue from such combinations tend to be overly broad, given what the patentee has actually reduced to practice.

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  9. I appreciate the sentiment that TSM provides an objective test for the inherently subjective standard of nonobviousness. The problem with the TSM test is that it makes an inference from the lack of suggestion in the prior art to the conclusion that the invention must be nonobviousness. As a practical matter, some things are often too obvious to state and the fact that no one has suggested a combination could logically just as easily mean that the invention is obvious. Furthermore, TSM deviates from the objective PHOSITA standard and replaces it with a bright line rule requiring the chellenger to find what could be a needle in a haystack or, more often, to search in the haystack for a needle that is not there. Perhaps a better test would be one that asks whether it would have been obvious for PHOSITA to suggest, teach, or motivate the combination. This approach, perhaps incorrectly, shifts the inquiry back from the obviousness of the invention to the obviousness of what to place in the prior art. But then again TSM seems to unduly emphasize what was said in the prior art at the expense of asking whether the invention is an advance over the prior art, which is what the inquiry was supposed to be about according to the Court in Graham and Sakraida.
    It is good the the Court granted cert. I am not expecting any great answers or insights. It would be nice to see an opinion that affirms and clarifies Graham and places TSM in its proper context, as one part of the nonobviousness inquiry rather than the entire answer. I am sure patent prosecutors will be upset, but perhaps their sorrow will be balanced by the joy of the patent litigators who are concerned over suits based on questionably innovative patents.

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  10. I cannot believe how biased the people posting comments on this blog are. The motivation to combine test, that has allowed patents on garbage bags and some other equally absurd patents to be held valid. All of those ridiculous business method patents only issued because some of them were so obvious that no one bothered putting anything down in writing, thus failing the motivation to combine test. The motivation to combine basically eviscerates the person of skill in the art from the statute. IT is time for it to go.

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  11. First, this is just a frontal assault on software patents by Big Software. They and their Professors feel they are adequately protected by copyright and the DMCA and don’t need a bunch of little guys with SW patents getting in their way.

    Second, if Examiners cannot execute the current “motivation to combine” test very well, how well do you figure they are going to execute the “totality of the circumstances” test of Graham that Dabney is pushing for?

    The bogus argument that Dabney makes (Hi, Jim!) is that the FedCir should have stuck to the vague multi-faceted-balance-everything-under-the-sun test of Graham.

    It is totally unworkable in the USPTO. No matter WHAT the USSC decides, it is going to be reduced to some new Kwikee Set Of Roolz by the USPTO, or its Examiners are going to be pulling their hair out by the roots. And then, of course, we are right back where we started: a rigid rule (boo!) versus the flexibility of Graham (yay!). So what will really change?

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  12. Unless the test is based on evidence, the test will become subjective and we are back to pre-1952. The Federal Circuit has done a good job at formulating a test that is based on evidence. The only problem is what evidence, how can it be used, and who needs to provide it.

    It would seem an easy answer to the case at bar to simply require that, for combinations of well-known elements that produce no new function, the applicant provide the evidence that it is patentable, rather than the PTO provide evidence that it is not.

    The Court is good at setting up presumptions which require evidence to rebut. Look at Festo.

    If the Court deviates from an objective test, then it will have thrown a monkey wrench into the works, from which patent law may not recover.

    ABD

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  13. It seems to me that one of the reasons for having a specialized Court of Appeals for patent cases was to make it largely unnecessary for the non-experts on the Supreme Court to mess around with something as patent-specific as obviousness. Is Judge Rich’s great work now to be undone?

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  14. [quote\"Obvious" should be interpreted to mean "would likely have been found within a few months by a specialist in the relevant area who had all of the facts posing the problem available to him and dedicated himself to the problem".[\quote]

    I’d submit that this is pretty much what obvious is under current Graham and Federal Circuit jurisprudence, although I’d question the “few months.” Somewhere in your formulation takes into account the motivation the person of ordinary skill would have to combine the facts (teachings) to obtain the claimed invention.

    This case kind of scares the crap out of me. However, it seems that the Supreme Court is more likely than the Federal Circuit to see the value of some sort of evidentiary standard rather than some “totality of the circumstances” mishmash that the petitioners appear to contemplate.

    An Examiner can currently provide the motivation in a “because I said so” fashion by taking official notice of the motivation and backing it with factual references. Face it, if it is that easy to find a motivation in your mind, it must be documented somewhere.

    I’m scurred of this case, but I hope the Supreme Court does not indulge the irrational fears of purported victims of patent trolls.

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  15. To be patentable an idea has to be both “new” and “not obvious”. “New” and “not obvious” must have different meanings. if the idea is anticipated in the existing literature it is not new.

    There is no purpose in the government granting patents for inventions which were inevitable in short order. Indeed, a patent law is only constitutionally permitted if it “promote[s] the progress of science.” A test for the grant of state monopolies on ideas which does not, on balance, promote the progress of science is unconstitutional.

    How science and engineering are done has changed enormously since the patent laws were first introduced. The advance of knowledge is now systematized and systematic.

    “Obvious” should be interpreted to mean “would likely have been found within a few months by a specialist in the relevant area who had all of the facts posing the problem available to him and dedicated himself to the problem”.

    Any higher standard for proving obviousness would, in today’s scientific and engineering environment, be unconstitutional.

    So all you patent attorneys fighting a rear guard defence of the status quo may in fact be fighting a losing battle against the progress of engineering technique where harder and harder problems become easier and easier to solve.

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  16. Except for that guy who received a patent on one of the elements in the periodic table of chemical elements (I forget which one), there is nothing new under the sun. Without the motivation to combine test, an examiner usually can find all the limitations of a pending claim given that there are 6,000,000+ patent documents. I say, keep the motivation to combine test.

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  17. According to AIPLA the specific question for review is 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.

    In my suggestion the CAFC test is a necessary but not a sufficient condition. First an examiner or a court should look at a claimed set of features to see whether they are a true combination or a mere unpatentable collocation, a condition for a true combination being that the claimed features collectively produce a new result or advantage. That test is not rocket science, and has been known to patent lawyers since the nineteenth century.

    The test should be simple and objective, and not obscured by unnecessary and potentially misleading judicial rhetoric as to e.g. whether the test in easy in chemistry and electronics but difficult to satisfy in mechanics (see the A & P decision at 340 US 147 (1950).

    There is nothing wrong with the motivation/suggestion/teaching test provided to features that have been found form a true combination.

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  18. I wonder if granting cert here is related to the revocation of cert for LabCorp. Maybe some justices felt that this case would be a better forum to discuss software patents and such.

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  19. Supreme court – the next patent case

    The Supreme Court continues its review of patents. From Reuters.com – US high court to review patent “obviousness” case: The U.S. Supreme Court on Monday agreed to review an appeal of a key patent case that could set a standard…

    Reply
  20. Supreme court – the next patent case

    The Supreme Court continues its review of patents. From Reuters.com – US high court to review patent “obviousness” case: The U.S. Supreme Court on Monday agreed to review an appeal of a key patent case that could set a standard…

    Reply

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