The Federal Circuit’s New Obviousness Jurisprudence: An Empirical Study

By Jason Rantanen

[Download the draft article]

Obviousness remains one of the primary issues raised in patent cases.  A few weeks ago, Dennis noted that "the vast majority of BPAI/PTAB decisions focus on the question of obviousness,"  and 5 of the 11 opinions involving utility patents issued by the Federal Circuit this past month addressed obviousness.  Many of these cases revolve around application of the Supreme Court's decision in KSR v. Teleflex, and reflect disagreements over the interpretation of the Court's opinion 

This article presents the results of an empirical examination of the Federal Circuit's obviousness jurisprudence over a period of fifteen years, asking whether the Federal Circuit really changed its behavior as a result of KSR.  In systematically examining the court's opinions, I found the following:

  • Following KSR the Federal Circuit has become substantially less favorable to patentees on the issue of obviousness. 
  • The Federal Circuit’s ubiquitous pre-KSR requirement that patent challengers identify a “teaching, suggestion, or motivation” (“TSM”) to combine or modify the prior art has largely disappeared, at least in formal terms.
  • Although the concept underlying TSM has endured, in the form of a “reason to combine” requirement, the post-KSR form of that requirement differs substantially from its pre-KSR incarnation.
  • The Federal Circuit now routinely relies on language from KSR that “[a] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions”  and the use of “common sense” to find combinations and modifications of the prior art to be obvious.
Although there may be some disagreement within the court, taken as a whole this study provides strong evidence that the Federal Circuit has both changed what it says and does when reviewing appeals involving the issue of obviousness. The magnitude of some of my findings was particularly surprising: for example, in the five years after KSR the Federal Circuit affirmed the PTO on the issue of obviousness 91% of the time (94 out of 103 times).
 
Over the next few weeks I'll be posting some of my findings that didn't make it into the article. 

14 thoughts on “The Federal Circuit’s New Obviousness Jurisprudence: An Empirical Study

  1. You even blamed him for an application which had its parent (with no new matter) originally submitted in February of 2000.

    I didn’t blame him for the application, anon.

    Even you aren’t that d–b.

    the rate under Kappos should actually BE higher than the historical rate

    Oh, really. Please explain your math and your assumptions.

  2. And it’s funny, because your latest crusade to denigrate Kappos is downright pathetic.

    You even blamed him for an application which had its parent (with no new matter) originally submitted in February of 2000. (and if you have trouble finding it, or if my conscience is too busy with archery lessons, its on the Smartphone Wars, thread at Jan 31, 7:16 PM.

    It’s clear you are engaged in a smear campaign. What’s the matter, did his parting shot for treating software patents fairly (e.g. intellectually honestly) hurt your feelings? LOL – we see the way you lash out when your poor feelings are bruised. I guess when you hyperinflate your ego, it gets extremely sensitive, much like a ballon filled with so much hot air that it is right on the verge of exploding.

  3. the allowance rate under his watch is at record high levels

    LOL – the rate is not at record high levels. It is at the historical rate, recovering from a (MM-hide-your-eyes-pure-denial) rate dive.

    I explained this to you before. You were not listening then either.

    Further, the rate under Kappos should actually BE higher than the historical rate, given that the artifical suppression under Duffas was lifted.

    I explained this to you as well before. You were not listening then either.

    The capstone of the Duffas effort to reject its way out of the ever-growing use of the office was also rejected in Tafas, as myself and other greats such as David Boundy have explained to you. You have not listened to these messages either.

    The effort failed and we are now living with its remnants: record levels of backlog in all the various buckets at the Office. Turn the graph I shared (from the thread which featured your your mere vacuous “you’re on a roll” retort) and flip it upside down, then overlay the backlog growth charts. Let me know what you think of that.

    There is nothing counter-intuitive here, unless you refuse to listen to me. Now that is not only counter-intuitive, but counterproductive.

    You choosing that path is not really a surprise to anyone.

  4. What’s “Kappos fault”? Why is that funny?

    I would like to hear Director Kappos explain why the allowance rate under his watch is at record high levels after KSR and a number of other “anti-patent” Supreme Court decisions. One would predict (indeed, many did) that such decisions would negatively impact the allowance rate. An increase in the allowance rate is somewhat counter-intuitive.

    Absent Kappos’ explanation, I’d be curious to know what Dennis and/or Jason think the explanation is.

  5. KSR is just a repackaging of the same issue and really does nothing to improve the quality of the law. Consider: “[a] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions” and the use of ‘common sense’ to find combinations and modifications of the prior art to be obvious.” ‘Predictable’, ‘common sense’, these are no more useful for participants than “obvious”. KSR should be narrowly construed as torching TSM, and nothing more. The rest of the decision mostly re-emphasizes old precedent.

    What would improve the obviousness framework, at the prosecution stage at least, just goes back to basic jurisprudence: make the obviousness decision be better explained. Require the Patent Office to follow a slightly more formal procedure with increased requirements for fact finding and specificity. Too many that obviousness conclusions are made with the wave of a single sentence.

  6. Will this paper cover the odds at each step, from first appeal on? If the loss rate at the Federal Circuit is 91%, what is it overall?

  7. “Dennis noted that ‘the vast majority of BPAI/PTAB decisions focus on the question of obviousness’.”

    Does this surprise anybody … before or after KSR?

    If you are going to reject a claim at the USPTO, most times you do it under 102 or 103. Moreover, even if you have a 102 rejection, you oftentimes have 103 rejections of dependent claims. Since a 102 rejection is harder to make, it should come as a surprise that most BPAI/PTAB decisions involve a rejection under 103.

  8. Thanks Daniel. I thought about writing from a judge-based perspective, but decided to focus on the court as a whole for this first piece. You raise a good point, though, and I think there is a story to be told about how some of the changes in the court’s jurisprudence have played out. I have the judge-based data and may post some of it over the next few weeks.

  9. Haven’t read the draft yet, but the abstract seems to suggest that you look at the court as a whole. Do you account for changes in the composition of the CAFC pre-and post KSR? Which individual judges relate to obviousness differently post-KSR and which individual judges haven’t changed?

  10. From page 46: “There is a statistically significant difference in appeals arising from the PTO, and a borderline difference in the appeals arising from the PTO.” I think that should be “…from the PTO, and … from District Courts and the ITC”, if I’m reading Table 3 correctly.

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