Judge versus Jury: Who Should Decide the Question of Obviousness?

Medela AG v. Kinetic Concepts, Inc. (on petition for a writ of certiorari 2009)

Following their success in KSR, James Dabney and John Duffy have combined again to challenge the law of obviousness. This time the focus is litigation procedure. The pair – on behalf of their client Medela – argue that a judge (rather than a lay jury) should determine whether a patent is obvious. In its petition for certiorari, Medela poses the following question:

Whether a person accused of patent infringement has a right to independent judicial, as distinct from lay jury, determination of whether an asserted patent claim satisfies the “non-obvious subject matter” condition for patentability.

The ultimate question of obviousness is a “legal determination.” KSR & John Deere. And questions of law are ordinarily decided by a judge trained in the law. Markman. According to the petitioners, the black-box of the jury is problematic because it effectively limits appellate review to considering the rationales that a jury “might have adopted.” I.e., the current practice does not offer “meaningful appellate review over the legal issue of patent validity.” Quoting Baumstimler v. Rankin, 677 F .2d 1061 (5th Cir. 1982). En banc precedent from both the Fifth Circuit and Ninth Circuit conflict with modern obviousness procedure sanctioned by the Federal Circuit.


  • File Attachment: Medela v. Kinetic Petition for Cert Final.pdf (253 KB)
  • The Graham v. John Deere obviousness procedure: When deciding the ultimate question of obviousness, the decision-maker considers (1) the scope and content of the prior art; (2) the differences between the claimed invention and the prior art; (3) the level of ordinary skill in the prior art; and (4) secondary considerations of nonobviousness. Of course, the conclusion of obviousness never logically follows from the factual elements– rather ordinarily an obviousness conclusion can only be inferred. In some ways, the jury determination of obviousness serves as a way to cover-up the gaping holes of subjectivity required in the final step of the Deere obviousness procedure. For many (if not most) litigated patents, reasonable minds will differ on the question of obviousness even when parties agree to the underlying factual background. It is precisely this type of imponderable question that calls for a jury decision as a way to maintain respect for the court.
  • Procedure: If Medela is successful, future jury instructions will likely include more detailed interrogatory questions regarding the facts necessary to reach a conclusion of obviousness. Some courts prefer to avoid detailed jury questions in order to avoid inconsistent jury findings and to eliminate potential grounds for appeal.
  • Professor Cotropia foreshadowed this issue in a 2007 Patent-O guest post soon after KSR. Chris Cotropia, KSR and the Line Between Fact and Law, Patently-O (May 6, 2007) at https://patentlyo.com/patent/2007/05/ksr_and_the_lin.html (“The Court in KSR introduces a procedural change, folding the TSM-like inquiry into the question of law level of the analysis.”).

24 thoughts on “Judge versus Jury: Who Should Decide the Question of Obviousness?

  1. 22

    The petition cites Nies’s dissent in Lockwood, but does not elaborate. Readers of this thread should read her opinion to see how truly important and complex this issue really is.

    The primary basis for her opinion is that patents are “public rights” for which there exists no constitutional right to a trial by jury. Congress, if it chose, could assign the entire issue of validity to the executive, completely ousting the judiciary. That is the basis of allowing “executive agencies” jurisdiction to decide issues traditionally decided by courts; and is the basis for the constitutionality of patent reexaminations.

    But there is a contrary line of Supreme Court precedent beginning with Marbury v. Madison that states that only the judiciary can pass on patent validity; an a finding of invalidity by the PTO (via a statutory reissue)could not affect patent validity as a matter of separation of powers. McCormich Harvesting v. Aultman; 169 U.S. 606 (1898) While this line of cases would not seem to be directly on point to the jury trial question; it severely undercuts Nies’s views about patents involving “public rights,” i.e., that Congress had to power to have the issue taken away from the judiciary and decided by the executive.

    US v. American Bell Tel., 128 US 315 also gives a virtually complete history of patent invalidity proceedings both in equity and in law; both here in the US and in England. Apparently there was a well recognized an action at law to set aside a patent at the time of the 7th Amendment.

    Finally, the Graham “validity is an issue of law” cites to A&P, which in turn cites to even earlier cases. The chain of authority ends at Brown v. Piper, 91 US 38. There the court stated:

    “Evidence of the state of the art is admissible in actions at law under the general issue without a special notice, and in equity cases without any averment in the answer touching the subject. It consists of proof of what was old and in general use at the time of the alleged invention. It is received for three purposes, and none other — to show what was then old, to distinguish what was new, and to aid the court in the construction of the patent.”

  2. 20

    Of course, the consequence of making obviousness a matter of law is that no obviousness decision at first instance is safe from reversal on appeal. Won’t that result in even longer delays, between issuing proceedings and getting to closure? Is that what Prof. Duffy wants, actually? He’s an academic, who feeds on CAFC Decisions, doesn’t he?

  3. 19

    Much enjoyed your comment Mr Palmer. I take it though, that your last sentence is rhetorical. You’re not really expecting an answer, I’m sure.

  4. 18

    There used to be a legal test before KSR. Now you see it, now it’s gone. Perhaps KSR reduced it to a matter of fact, but more likely to a mere matter of opinion. Is a gut feeling a matter of fact or a matter of law? My gut tells me it is neither! Where does that leave us?

  5. 17

    Well, that last comment from Lionel Hutz really does expose issues. I don’t see how the ambit of a patent claim can be a question of fact. Markman is right. Praise to John Duffy, for putting up to SCOTUS the analogous question, in obviousness. Not clear to me at all, what will be the answer.

  6. 15

    Like MaxDrei, I am puzzled why the US has turned obviousness (“a classic jury question” that is nonetheless no decided by a jury in other common-law countries) into a question of law to get around the jury competence problem.

    Could you US lawyers out there educate us on what exactly qualifies as a “jury” under the US constitution? A quick web-search has told me that SCOTUS has held a 5-person jury is good enough, it doesn’t have to be 12. Does it have to be an essentially random bunch of people? Would it be constitutional to restrict the jury pool to say, real-life PHOSITA equivalents?

    Cheers, Luke

  7. 14

    Two wrongs don’t make a right. Just because juries can’t cope with finding the fact “obvious or not” isn’t reason enough to decree that what is or is not obvious is NOT an issue of fact. Patent law is hard enough already for lay observers to understand but going down the road that what is or is not obvious is a matter of law, just to solve the jury competence problem, just makes more problems than there were before.

  8. 13

    Examiner here. One time I had an attorney tell me that with 112, 6th, the attorney could get claim interpretation directly to a jury because determining equivalents is a matter of fact and not law. The other claims would be interpreted by the judge as a matter of law. Is this correct?

  9. 12

    There is no test for inventive step and under Graham there cannot be. There are simply evidential weights of greater or lesser persuasive power that can be placed on one side or the other of the scales of justice. What case law can teach is the nature of the weights and how they have been used in the past to achieve particular outcomes. In that respect I disagree with El Rukn – a knowledge of case law is of great help and the performance of a knowledgeable person should be much better than that of a rookie.

    For example, if you read old Supreme Court case law, you find that a new function or result is evidence of patentability. Not conclusive of patentability, but rebuttable evidence pointing in that direction. However, if the Supreme Court says something is evidence of patentability, a wise patent draftsman will go looking for it, and will make sure that the relevant evidence finds its way into the specification.

    So there you have an oddity. Before the EPO there has been for the last 30 years a legal test (problem/solution analysis), but obviousness is a question of fact. Before the US courts there is no legal test, but obviousness is a question of law. And you think that lawyers (including patent judges) are not sometimes deeply confused?

  10. 9

    “Some courts prefer to avoid detailed jury questions in order to avoid inconsistent jury findings and to eliminate potential grounds for appeal.”

    The Crouchster got to the heart of the problem with the above quote. As other commenters above noted, the judge is the empire and, together with his/her clerks, it’s his/her job to keep the lawyers in line so the jury understands what the heck is going on. And the judge needs to know, at all times, that the jury understands what the heck is going on.

    That said, I have no problem with specialized courts in any area where specialized courts are desired, including patents. Why not?

  11. 8

    This is a very interesting petition, and I like the way it casts jurors as reviewing an administrative order rather than just saying that there’s a complexity exception to the right to a jury trial. The admin angle might be what gets this case in the door.

    If it was just about jurors and their ability to decide complex cases, the easy response would be what some other commenters have already said–that jurors decide complex things all of the time, like medical malpractice, toxic torts, product liability cases with harebrained scientific theories of causation, complex financial cases, etc. In that light, asking what of a person of ordinary skill in the relevant art would think isn’t much different from asking what the reasonable accountant would do, or the reasonable pharmaceutical designer, or the reasonable doctor.

    There’s already a fair amount of literature out there about the competence of juries to decide complex issues, and it’s not limited to patent cases.

    There’s a 3d Circuit case that says that in really complex cases there’s a potential conflict between the seventh amendment right to a jury trial and the fifth amendment right to due process, and in the case before it the solution was not to put the issues to a jury. In re Japanese Electronic Products Antitrust Litigation, 631 F.2d 1069 (3d Cir. 1980) .

    There’s a 9th Circuit going the other way that basically says that in complex cases it’s up to the judge to manage the case and up to the attorneys to develop and present it to the jury in a way the jury understands. Also, the case notes that judges aren’t necessarily better than jurors at complex cases. [I’d add that most district judges aren’t scientists and in some districts the average juror might know more about the patent than the average judge]. In re US Financial Securities Litigation, 609 F.2d 411 (9th Cir. 1979).

    There’s also the famous antitrust case where the judge asked the jurors some technical questions after they were unable to reach a verdict. The jurors were so clueless that the judge declared a mistrial. Testimony quoted here:
    link to atharkhan.net
    and also in 92 Harv L Rev 898, 908-909, fn. 60.

    In my view, section III of the petition is the most interesting.

    The fact that the CAFC has reached a different conclusion from the 9th and 7th Circuits isn’t terribly interesting as those courts don’t really do patent cases anymore. The fact that a jury verdict is a black box is sort of inherent in the nature of a jury, and if you don’t like it you can draft more complicated verdict forms.

  12. 7

    The brief in this matter kills me: droning on and on about the many pages of 103 caselaw in various hornbooks as if you need to be Learned Hand to make an obviousness determination: show me some examiners conducting a “Graham analysis” — please, the closest my boys and girls in the USPTO get to that is whether they had some “S’mores” or other tasty graham cracker treats recently. But even if they did perform such an analysis, it is all hot air: A 103 determination is always going to be a judgment call, nothing more, nothing less. It is like obscenity, you can summarize the decision processs as knowing it when you see it. All inventions may be deemed obvious or non-obvious: whether a given 103 shot-caller deems some given claim as valid or invalid over the prior art depends on one’s biases, childhood, the state of your marriage (typically not so great in my experience), and on and on. It doesn’t matter whether that shot-caller is an examiner, a judge, or a lay juror, the 103 determination will just boil down to a gut feel, a judgment call on ether and vapor.

    But maybe I am just a cynic after toiling in the patent trenches for too long now. At least I never fool myself that I should argue 103 caselaw to an examiner: what folly, what a waste of your poor client’s money to do so. Let me give you my “secret” that I have gleaned from arguing many hundreds of successful responses: it is much more important for you to be conversant in the technology than the 103-flavor-of-the-month-caselaw because the average examiner is nowhere near conversant in my humble opinion. And that is not saying they are dumb, far from it, they are just generally inexperienced, over-worked, under-paid, etc. So they will inevitably misinterpret their primary reference. And then your response is effortless: Examiner, the Jones reference discloses apples, not oranges. And once you get that point across (to make this gig less boring I say to do so with vim, vigor, and deft sense of humor), you are done: what does it matter what the secondary reference discloses, it is immaterial at that point. But if my examiner tells me I am obvious over Jones in view of Smith — and Jones and Smith disclose exactly what the examiner says they do, you better start juggling and tap dancing. But such cases are rather rare in my experience, an experience that spans over years and years of this shizzle.

    My point being that a 103 judgment call is just that: it is a gut feel, it is your intuition, it is driving by the “seat of your pants”, etc. It is just a judgment call at the end of the day. So stop all this nonsense about the endless pile of 103 “law.” Let me propose the following hypothetical for two 103 shot-callers: one is to take a year off and read 103 caselaw until she is black and blue. The other will be virgin, completely untainted by 103 caselaw knowledge. Give them each the same claim and the same prior art. Stand back and observe the difference. You won’t have any logical difference from the black-and-blue shotcaller or the (surely much happier) virgin shotcaller. Both will make a judgment call that is ultimately one of intuition, their “common sense” and other such intangibles. So I say stop wasting time with 103-dom and get back in the trenches, this is a tough economy for the foreseeable future.

  13. 6

    I find it remarkable that the cert. petition never even mentions the Seventh Amendment right to jury trial. It seems that the legal system (and elites generally, at least in this country) has an extreme bias in favor of the cult of the expert. Presumably, we unwashed masses require an expert to tell us how to fix dinner and to wipe our a–es.

    I agree that the law of obviousness is murky, but that’s largely a result of SCOTUS. In any event, obviousness would seem a classic case of an issue of ultimate fact like negligence. Let’s hope the Supremes don’t grant cert. in this case and do even more violence to the right to trial by jury.

  14. 5

    In tort law, juries decide all the time what the hypothetical reasonable man would have done.

    PHOSITA is patent law’s equivalent of the reasonable man of tort except that PHOSITA has ordinary skill in the art to which the subject matter sought to be patented pertains (Re-read your section 103. Wow. There it is, right smack in the middle of the actual statute. Who would have guessed?)

  15. 4

    The answer is simple. Obviousness should be decided by a jury. Patent examiner’s decide obviousness all the time merely by whether it looks obvious to them (thanks to KSR). That is not what a judge does and it would not make sense to have a judge decide obviousness when that same determination was previously decided by a patent examiner jury of one.

  16. 3

    This question has been the subject of much debate in the context of recent P2P copyright infringement cases, namely the two trial for J. Russert and J. Tenenbaum.

    Relevant discussions and briefs are noted on the website of Ben Sheffner, copyrightsandcampaign.com

  17. 2

    Determinations of obviousness are more clearly a question of (tricky) law than are determinations of claim scope, and I’ve no problem letting a district court judge make the necessary determinations. The problem is that if you add this to the pile of matters decided by district court judges to which the Fed Cir gives no deference, you end up with a system in which they are the only court in the land that can decide the big issues “for real” in patent cases. This can work only if the other circuits are added to the mix of courts permitted to handle patent appeals. And perhaps that is where all of this is headed.

  18. 1

    An interesting brief and a question of fundamental importance. My guess is that the Supremes will hear the case – if they decide that it is a question for the judge, then you could find obviousness hearings becoming as frequent as Markman hearings.

    Is obviousness really a question of law? It is perhaps a legal finding based on analysis of an underlying fact pattern, rather like negligence. However, the courts say that it is a question of law, so that must be true.

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