KSR and the F-Words

By Professor Shubha GhoshGhosh_shubha

Now that the Supreme Court has issued its opinion in KSR v. Teleflex, the first reaction is what took it so long?   During the past six months since oral arguments in late November, I was expecting that the Court was taking its time crafting a historical opinion that delved into the genesis and evolution of the nonobviousness doctrine since the Hotchkiss decision in 1851.  The Court does mention the Hotchkiss decision and a few others, but the six month gestation has yielded a compact, thirty page decision that can be summarized with three simple F-words: formalism, functionality, and flexibility. 

Formalism: First, the Court rejects what it describes as an overly formalistic application of the TSM test.   How the Court formulates the test is telling: "[A] patent claim is only proved obvious if some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art."   The emphasis here is on the word "only."  The Court concludes that this approach is overly rigid when it requires the finding of a specific understanding or principle within the knowledge of PHOSITA that would have motivated the invention. According to the Court, the Federal Circuit was wrong in requiring a prior art reference that addressed the precise problem that the patentee was trying to solve for a finding of obviousness. The Court concludes that the problem itself, combined with the common sense of PHOSITA, can motivate an invention and make it obvious.   

Functionality: If formalism is out now with KSR, then functionalism is in.  What this means is that obviousness needs to be determined by looking at the invention as a whole in the context of the field.   As the Court puts it: "Often, it will be necessary for a court to look at interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue."  We are reminded that "a person of ordinary skill is also a person of ordinary creativity, not an automaton."   The automaton here is the rigid surveyor of prior art references that lead up to an invention.   The person of ordinary creativity, by contrast, works in the contexts of a community of inventors and of the marketplace.  The nonobviousness inquiry needs to reflect these realities within which inventions and patents function. 

Flexibility: Finally, functionalism mandates flexibility, whose elements the Court captures as follows:  "The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.  The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way.  In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design decisions."   ScreenShot033All of which means that in order to conclude that an invention is obvious, "it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." 

All of this reference to common sense and reason should sound familiar.  What the Court is doing is injecting some common law reasoning into the nonobviousness inquiry, much like the Court revived common law thinking on secondary liability in its 2005 Grokster decision.  The appeal to flexibility and context makes sense if one understands the KSR decision as being addressed to courts, as it most certainly is.  But the nagging problem is how does this flexibility function in the modern administrative practice of patent law?  In excoriating the Federal Circuit, the Court has created great deal of uncertainty in maneuvering through the shoals of the USPTO.   The Patent bar, needless to say, loved the rigid TSM test precisely because it was easy to work around.  Of course, the test’s patent friendliness was appreciated as well.   The Court’s more flexible approach is justifiably motivated by the need for higher standards in the patent system in order to ensure real innovation, promote progress, and strengthen existing patents.  But the opinion is written for judges, not patent examiners and prosecutors, and as  a result, the common law-like opinion will invite more litigation and judicial scrutiny to determine what is and isn’t obvious.

Note: Shubha Ghosh is a professor of law at Southern Methodist University and has published widely in the area of intellectual property law. He also blogs at the Antitrust & Competition Policy Blog.

21 thoughts on “KSR and the F-Words

  1. 21

    Mark and Henry, I understand you are sceptical. Having prosecuted thousands of cases under PSa at the EPO I am a (boring) fan of PSA. It does get the balance right, between Inventor and validity attacker. And it’s fair to both sides. And it’s objective. And it excludes hindsight, and reliance on facts after the event. I have tried to explain it. Maybe I am not very good at that, sorry. I remain convinced from experience that it is like riding a bike: you can’t learn it by reading books.

  2. 20

    Per Max, the key inquiry of PSA is “does the published art, at the relevant date, contain any hint or suggestion (sounds like TSM right?) to a person skilled in the art, who desires to achieve the technical effect, to modify D1 by addition of the characterising feature, to achieve that effect? If yes: obvious. If No: not obvious. Black and white, yes or no. Done and dusted. Nothing ex post facto. Fair to both inventor and petitioner for revocation of the claim.”

    In my view, the “any hint or suggestion” portion of this query sets the bar too low for a finding of obviousness. This is why I advocate the proximate cause analytical framework. The court and examiner should consider whether the hint or suggestion provided by the prior art is sufficient to render the applicant’s contribution no more than a small link in the chain of causation, or instead whether the applicant’s contribution sufficiently substantial to be considered the most recent proximate cause, so that the obviousness (or inventive step) rejection should not apply.

  3. 19

    No offense Max, but your explanation does not seem meaningfully to differentiate PSA from “our” obviousness tests. And my experience in the EP tells me there isn’t a great deal of practical difference, but the Examiners are a) less susceptible to BS and b) unyielding in the subjective evaluation of what the person skilled in the art might do with D1. Thus the result that more inventions lack inventive step than in the US.

    Your concluding remark: “Thousands can do it, but few can teach others how to do it.” Reminds me of the words of an old Swiss patent clerk: “If you can’t explain it simply, you don’t understand it well enough.”

  4. 18

    Addendum to my comment above: Problem Solution Analysis works well when 22 equal rank EPO Boards of Appeal operate it, and no Board outranks any other. Their decisions compete with each other. In the short run, much legal uncertainty but, in the long run (27 years by now, and 1000’s of decisions), emergence of a clear picture. The EPO is free of any control by any superior court, or any binding precedent. Quite a difference from the USPTO, which must bend the knee to each new decision of SCOTUS. One would think that common law binding precedent would bring more legal certainty. Well, maybe or maybe not. We shall see.

  5. 17

    Henry Groth, thanks. I will try. PSA is “Problem and Solution Approach” to the examination of obviousness. It was devised by the members of the Boards of Appeal of the EPO, who were all appoimted in 1978, when the EPO first opened its doors, but had no actual cases to judge till some time later. They used the breathing space to set up their approach to obviousness. It had to “work” with Examiners from all the Member States, arriving in Munich to start examining, and all coming from national Patent Offices with quite different traditions for examining obviousness. It had to be objective, quick and robust. It is.

    You start by reading what the inventor wrote in his/her app, about the tech field and the contribution to the state of the art. Inventor gets full faith and credit for what is writen in the app. You do your search (with hindsight, of course). You select from the references brought to light a “realistic” starting point in the published art. It has to be realistic in relation to what the inventor has defined as the field and the contribution to it. You subtract from the technical features recited in the claim those present in the starting point reference (invariably designated D1). What is surplus is the technical feature that “characterises” the claimed subject matter relative to the starting point. Now: what technical effect flows from modifying the D1 teaching, by the addition to it of the characterizing technical feature? The famous PSA “objective problem” is the problem of achieving exactly that technical effect, when starting from the starting point but without ANY hindsight knowledge of the technical feature solution in the claim under examination. So, does the published art, at the relevant date, contain any hint or suggestion (sounds like TSM right?) to a person skilled in the art, who desires to achieve the technical effect, to modify D1 by addition of the characterising feature, to achieve that effect? If yes: obvious. If No: not obvious. Black and white, yes or no. Done and dusted. Nothing ex post facto. Fair to both inventor and petitioner for revocation of the claim. You simply won’t find parties coming away from the EPO with credible tales of repeated injustice. The same ones who get burned by PSA on Monday get on Tuesday a claim wider than what they got in USA. Provided they are represented by counsel with PSA expertise, of course.

    Of course there is a wealth of expertise, and finer points of the PSA approach, in the 1000’s of cases by now decided by the 22 Technical Boards of Appeal of the EPO. Civil law continental Europe (JP and CN also civil not common law) knows no doctrine of binding precedent so the progress of the law is a sort of Darwinian evolution of the most robust line of legal logic. The point about PSA is that this Darwinian evolution only carries it forward, from strength to strength. For guidance on PSA, I commend the various materials available from the EPO website. Precious few other sources handle it correctly. It is like riding a bike. Thousands can do it, but few can teach others how to do it.

  6. 16

    Perhaps MaxDrei could provide us with a link that explains what he is referring to with the term “EPO PSA.” Alternatively, MaxDrei could explain what is meant by “EPO PSA” in his own terms. Otherwise, the value of his earlier comment will be lost on many folks, including myself.

  7. 15

    I’ve now read literally hundreds of comments on KSR, lamenting the absence of a fair, objective test for obviousness that avoids ex post facto analysis. EPO PSA sees off ALL of the difficulties. I have yet to see any comment that is a legitimate criticism of it, from a commentator who knows what he is talking about. Another magic thing about it is that would also sweep through a PTO backlog like a dose of salts. Sadly, even UK commentator patent attorneys (who should know better) rubbish it, I guess out of a vested interest, to preserve the much more expensive English way of litigating obviousness. PSA is truly objective, and is not swayed by mischaracterisations of the prior art put into the app by the inventor and his attorney. It is interested rather in what technical features the invention includes, and what technical effects they bring. Claim the features and argue (obviousness) the effects. But make sure you mentioned your effects, in your application as filed. In Europe we operate on a first to file principle. You will be held to what your invention was, on the day you filed it, because otherwise the later filed might beable to leapfrog you. BTW, my doubt is whether PSA is compatible with common law. It developed under a civil law system. But, when no common law man understands PSA, it is a bit much, for me to hope for other contributors to tell me whether or not it is workable, in USA.

  8. 14

    Many on this blog are calling for common law principles to guide the obviousness inquiry. I have thought about this for the past few years, and it appears to me that patent law should incorporate a foreseeability test into the obviousness inquiry. There is an abundant amount of precedent related to foreseeability, especially as foreseeability is used to evaluate whether a particular cause is proximate. Hopefully, professors (such as Ghosh and Morris) will draft law review articles on this and other helpful analytical techniques to elucidate the obviousness inquiry for PTO examiners, district courts, and the CAFC. If such masterminds, are looking for a humble co-author, I am willing to volunteer my fair share of hours to the cause, and they can contact me at jp3smiles@yahoo.com.

  9. 13

    As a patent prosecutor, I know how easy it is overcome an obviousness rejection using the “… there is no teaching suggestion or motivation here to combine.” It is too easy, extremely easy. Too many patents issue where they are arguable “obvious,” despite the lack of teaching in the references at hand. The motivation could have been in the community but not in the reference.

    But now, the new standard sounds like the pendalum has swang all the way to the other extreme. Now, any conjured up reason that the examiner can come up with will be sufficinet to reduce the invention to an obvious manipulation?

    A middle of the road test is needed.

  10. 11

    While I don’t have a monopoly on the phrase “The F-word” (although think how rich I’d be if I did), I find it amusing that Prof. Ghosh uses this expression in his title, just about a month after I posted “Where is the F word in MedImmune and SanDisk?” on my brand new blog http:\\myunpublishedworks.com\blogspot.com, posting of 3/30/07 . My F word is a law professor word, too, but not quite as abstract as “formalism, functionality and flexibility.” Mine is FORUM as in FORUM SHOPPING. But then, I do favor the concrete myself, because that’s how my brain works, and possibly because I’ve practiced and am even registered before the PTO. And, you guessed it, I’m old.

    For KSR, I chose a V word: VACATING. See second post on the blog, dated today.

    And of course everything is about the P word: Patents.

  11. 10

    In my subjective opinion, Robert and Mark have hit the mark square on – Hear!, hear! Teaching, Suggestion & Motivation worked because TMS is based on identifiable evidence – patentability should not be likened to measuring cloud. A subjective test for obviousness is absurd, and it is disturbing for the Supremes to so obviously miss the mark. I’ve not seen any useful suggestions here or elsewhere for testing obviousness other than TSM.

    Dennis offered a pragmatic suggestion on 11/29/06: “The new key to avoiding invalidity will be secondary indicia of nonobviousness.” But there may be no secondary indicia in many situations because who teaches away from sound innovative solutions?

    Perhaps the focused power of Dennis’ blog-pen postings will lead to concerned practitioners posing practical proposals and a way out of the subjective KSR quagmire.

  12. 9

    Thank you Professor Ghosh for recognizing the central problem with patentability tests, that is largely unappreciated outside the patent prosecution bar: a standard manageable for an administrative agency. Some formalism is absolutely necessary.

    The Federal Circuit created TSM with a mind toward creating a standard that could be rationally applied in the agency and meaningfully reviewed both in the agency and in the courts.

    To a large extent, this manageability of the standard was given short shrift by commentators and amici, as well as the parties themselves.

    My greatest fear in KSR was creation of an amorphous standard under which the PTO could routinely abuse applicants, as seems to be the politically motivated wont these days.

    That fear has not come to full realization as I think the SCt left TSM mostly in place, but tilted the obviousness field in favor of the PTO.

    Like others on this thread, I have to express some skepticism of the professoriate, who, of late, have bloviated excessively on a topic of which they know very little (especially in the practical sense). I can’t say that your work suffers from this shortcoming to nearly the degree of many of your colleagues.

  13. 8

    A subjective test for obviousness has, unfortunately, returned.

    You write that KSR will “strengthen existing patents,” and later admit that “the common law-like opinion will invite more litigation and judicial scrutiny to determine what is and isn’t obvious.” The truth is that KSR will raise the spectre that any district court judge who isn’t “wowed” by some invention will neglect the clear and convincing standard and declare a patent invalid. Hindsight is amazingly unforgiving.

    A subjective, “common law,” approach, as you term it, is actually likely to chill innovation by making patents more vulnerable. A weak patent system chills innovation, and the KSR decision moves us a step backward in that regard.

  14. 7

    Dear John who wrote,
    “I just love articles and opinions of IP professors who aren’t even patent attorneys.”
    “The bar for patents had been set too low and was past due to be raised.”

    Your “bar for patents” comment was responded to on the thread titled,
    The Legacy of KSR v. Teleflex, and a question was posed to you:

    How would you test for obviousness? Do you have any useful thoughts?

  15. 6

    “I just love articles and opinions of IP professors who aren’t even patent attorneys.”

    When you have nothing intelligent to say, attack the credentials. When that fails to sway the crowd (which is most of the time), then resort to simple name-calling. When that doesn’t work, dredge up some garbage that suggests the author of the opinion is associated with commies or terrorists. Rinse, wash, repeat.

  16. 5

    Professor, even if you are not a “patent attorney,” your comments are most welcome, and more importantly, enlightening. Some people seem to forget that none of the lawyers that argued the KSR case were patent attorneys, and of course none of the Supreme Court justices that decided the case are patent attorneys. And as you noted, the KSR opinion is written for judges – the vast majority of whom are not patent attorneys. Heck, of the 17 judges at the CAFC (including senior and inactive judges), I believe that only FOUR of them are patent attorneys (Newman, Lourie, Gajarsa and Linn). On top of that, I have seen more than a few self-professed “patent attorneys” around here that are only capable of declaring their own patent expertise rather than offering any useful or enlightening views on the KSR opinion.

  17. 4

    Credentials aside, anyone can read the KSR opinion and distill with what I came up with here. So I am not professing any special insights. In any case, I was expressing a viewpoint that is in fact sympathetic to patent prosecutors. But whatever the sympathies, the fact remains that patent laws are written for all us, not just for the patent bar, or for the professoriate.

  18. 3

    Although the opinion may have been written for judges, not patent examiners, the opinion will be applied by patent examiners to break the will of those with less income to pursue appeals. The court did not say “the nature of the problem as evidenced in the prior art, or the knowledge of a person having ordinary skill in the art as evidenced in the prior art.” The court’s opinion removed both the written documentation element and the timing element from the obviousness test. Now, the examiner need only come to understand the nature of the problem as set out in the patent application being examined and unconsciously adopt as the Examiner’s own, the applicant’s knowledge as set out in the patent application being examined. What makes this even worse is that after reading thousands of patents and patent applications, an Examiner probably will not be able to determine at what point in time he received his relevant knowledge and will come to truly believe that he possessed such particular knowledge prior to the date that the application the was file one or more years prior. Such true belief over a murky timing cannot be overcome by applicant argument and would necessitate an appeal to an authority other than the Examiner. Those with little income to pursue their business dreams by appealing the Examiner’s decision will be more willing to accept less protection than they would receive were they to have the money to appeal or in fact will give up on their business entirely and let their patent application go abandoned. Because of its financial impact, this decision favors established businesses over start-up businesses and works in the opposite direction of the new business purpose of patents.

  19. 2

    If the opinion was a paper turned in for a grade in your IP law class, would you find it convincing, and would you give it more than a mere passing grade?
    My remark would be, decent job, but try harder to get to the point, and to provide a convincing conclusion.

  20. 1

    You outta right bylines for the Associated Press. The title of your article demands one’s attention. Great job.

Comments are closed.