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

Acushnet Co. v. Callaway Golf Co200912150145.jpg . (on petition for certiorari 2009)

The Supreme Court recently rejected Medela’s petition for certiorari arguing that the conclusion of obviousness should be made by a judge rather than a lay jury.

In the wake of Medela’s failure, Acushnet (maker of Titleist) is now asking the Supreme Court to hold that “a court reviewing a jury’s [obviousness] verdicts must always independently render its own legal conclusion regardless of whether one or all of the jury’s underlying findings are accepted as adequately supported by the evidence.” Taking that a step-further, Acushnet argues that a jury’s verdict on the question of obviousness should be seen as “entirely advisory as to the ultimate legal conclusion.”

Ascushnet takes-issue with the Federal Circuit’s holding that the “jury could have reasonably concluded that Acushnet failed to prove invalidity due to obviousness.” In petitioner’s view, the appellate panel should not have given any regard to the jury’s legal finding.

AcushnetPetition.pdf

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

43 thoughts on “Judge versus Jury (Again): Who Should Decide the Question of Obviousness?

  1. Good question Ned. Let’s see:

    England does infringement and validity before a single judge. Only about a third of cases go to a 3-judge appeal court. Once in a blue moon the case goes to a 5 judge panel at the Supreme Court.

    Germany does infringement, at first instance (and the invariable appeal) before a 3 judge panel, but validity at first instance before a 5 judge panel. Appeals (frequent) go to a 5 judge panel at the German Supreme Court (BGH). As an undergraduate you train to be a judge and start judging immediately on graduation.

    Decisions by committees are often unsatisfactory (especially when the members thereof don’t know their arse from their elbow). Me, I’m a fan of the English way: single judge, who used to be a patent litigator with a top reputation, has made enough money to be comfortable till death, and fancies topping off his brilliant career by judging, fencing with equally brilliant colleagues who are still advocates, being noted in the textbooks (and being called “My Lord” by all and sundry).

  2. Anyone who has been handed rough justice by a judge knows that any judge can and will justify his decision in a way that on the surface appears fair. With a judge deciding the issue, nothing is settled until the appeal.

    With a jury, even if one vote is bought, it still might not be enough to prevail.

    More importantly, if you lose a jury vote, more often than not you will accept it. I have been in more than one case where the losing party on any critical matter immediately attacks the judge for bias and tries to have him or her removed from a case.

    Tell me Max, why do they try cases in Europe to three judges? Kinda like having a jury, not so?

  3. Dear Max,

    The expression in the USA is “jury tampering.”

    While “nobbling” may be more colourful, “tampering” is more descriptive, at least in English.

  4. Ned is the English expression “jury nobbling” known in the USA? That’s when the Defendant gets to one or more jurors, before the jury decides.

    Transparency’s the thing, no? Let’s have Decisions that are i) based exclusively on the evidence and ii) based on reasoning that is set down in the written and published Decision.

  5. Why do we have juries at all? Think.

    No one has ever said that ordinary folk are better than judges at understanding the law.

    No one has ever said that ordinary folk are better than judges at understanding complex facts.

    But we still had juries.

    Why?

    Could it be that the judges could be tyrannical?

    Could it be that judges could be bought or could favor the powerful?

    Think of Chicago under Al Capone? Was there any justice in that city then when every judge obeyed Capone?

    Juries are not perfect. No one ever said they were. But they do have a function.

  6. Fantastic work there, Hack, stiffening spines all round. Well done indeed. Keep up the good work. I must have got it all wrong, yet again.

    Thanks for the interesting anecdote but, not knowing the details, I can’t comment further.

    But I do wonder, how much did your client pay for the services of these wimps of EP counsel. Was it money well spent? Did these individuals come highly recommended?

    Perhaps my firm is in with a chance of serving your client, if you decide to change.

  7. MaxDrei wrote, “Quite the reverse. On all but real 50:50 cases, it is pretty well clear to all, long before the decision is uttered, who’s going to win, on obviousness. If you don’t believe me, just participate in a few EPO cases, formulating the so-called “auxiliary requests” (claim sets that you want considering, in the event that claim 1 goes down). ”

    You sound like my various EP counsel who have been wrong each 7 times (including 3 cases now through appeal and 1 “tie” (where TBA remanded back to Opposition Division)) when they argued with me that it was so unlikely that I would keep the claims as granted (the Main Request I insisted on over their advice to provide an amended Main Request) due to likelihood of losing on inventive step.

  8. • How are “creativity” and “obviousness” related?

    • What does “ordinary skill in the art” (without more) have to do with creativity?

    • Are “inventiveness” and “creativity” closely linked?

    • Whether a “process” or a “boom,” if one could devise a test to measure a person’s latent creativity level, I wonder if it would relate to testing for obviousness?

    • Be that as it may, I’ve encountered some highly educated skilled in the art people that can’t create themselves out of a paper bag. This gives rise to the essential patentability question: Does ordinary skill in the art mean: (i) a creative person skilled in the art?, or (ii) merely an educated person skilled in the art?

    If the answer is the former (i) then, potentially, nothing would ever be patentable — and a lot would depend on the level of creativeness required, and you’d be out of the pan into the fire, because, how do you measure creativeness?

    And if you did have experts devise a test for creativeness, to whom do you administer the test?: The inventor, the examiner, Justices, appellate Judges or the Supremes, Congress or the elected Executive Branch officials, maybe the jurors, an infringer or the man on the street, those skilled in the art … just who?

    • What bearing does the perception of an invention being “complex” or “simple” have? Everything that is simple is not obvious and vice versa. No one suggested simple and obvious were the same, but neither this general subject matter nor any similar notion, which you’d think would of course be an integral part of any serious discussion of obviousness, never entered the USSC KSR Hearing transcript.

  9. MaxDrei said: “The more legal uncertainty the better then, Pontificator? I suppose it might depend on the “something” that we have to give up. What is it, pray?”

    I suggest you get a clue before you demean. Hint: you may want to start with literature on the law as a “living body” or a “living tree”. Good luck.

  10. I think any new invention is obviously not obvious since it hasent been invented for three hundred and seventyfive million years previously.If the golf ball is an improvement on the existing grant the patent. If it sells in a superior manor to its competitors grant the patent.Usually they are the ones who want it declared obvious because they werent smart enough to think of it thereselves.They should recieve sanctions for poor sportsmanship.

  11. JAOI says: “The only objective test that works for obviousness is Teaching, Suggestion or Motivation, TSM!, Graham don’t do it!”

    Good point

  12. “Any attorney would fight for who he represents — the patent owner or the alleged infringer — attorneys with a client are the least objective of anybody.”

    So ask them about a case where they aren’t representing anyone.

  13. There is a lot of overlooking here of the fact that obviousness has to be decided based on a legally correct reading and understanding of the specific claim language, not in the abstract. The Sup. Ct. has already held in Markman that this is the function of the judge. Likewise there are other legal issues like the effective dates of the subject patent and patent prior art. [Also there is frequent evidence that juries often cannot read claims correctly, especially in high-tech cases and especially in relation to highly technical prior art, resulting even in cases of juries finding claims un-obvious that are actually fully anticipated.]
    So, I don’t see how the Sup. Ct. going to cut judges out of ALL parts of an obviousness determination? [As opposed to potential jury decisions on underlying fact issues, such as contested testimony.]

  14. “Does this not mean that the court already reviews the decision and comes to its own legal conclusion? If the court agrees, the verdict stands; if the court does not agree, the judge overrules.”

    James, this is tricky in all areas of law, and especially so with the issue of obviousness of an invention, which is a question of fact and law. Juries generally find facts. Yes, a judge reviews their findings, but only to the extent of whether a reasonable jury could possibly get to those facts. Thus, a judge might disagree with the jury, but should still let their findings stand unless he or she decides that no reasonable jury should have gotten that result, given the evidence. If a case is so deficient in evidence that a particular result is compelled, the judge can make a decision before it gets to the jury, but many judges will let it go to the jury anyway, and hope that they get to the obvious answer. If they don’t, the judge then steps in.

  15. In regard to the obviousness issue, take a look at the objective factors. The three-piece design with the various selected materials is universally accepted/required at the highest levels of the game.

    This only goes to highlight that there is always someone who “knows” what is obvious without bothering to actually look at the prior art or understand the field.

  16. To the best of my knowledge and belief it is not done for attorneys representing opposing parties in EPO opposition proceedings to bet on the outcome. Now that Max has mentioned it, though, it could be fun!

  17. Hagbard, I concede, there is always room for surprises, but get the European Patent attorneys involved secretly to lay bets on the outcome, risking their own money, then see how much lies between them.

    The PHOSITA, yes. But the Examiner is not best placed to resist, when pre-issue Applicant comes forward with persuasive materials in support of its position. OK, a blindfold doesn’t convey the image I intended, sorry.

    But an Opponent is at eye level with the Patent Owner. The Opposition Division has only to listen to two opposing views of what the PHOSITA knows and thinks, and then choose between the two. That even an EPO Examiner can do, reasonably competently, the more so, the more sophisticated the subject matter gets.

  18. Max

    I have plenty of experience at the EPO. Maybe you work in arts where the norm is different from mine, but few are the opposition cases, in my experience, where the outcome is that predictable.

    Don’t get your point about the blindfold.

    And as for “forensic application of the EPO’s TSM test”… the PHOSITA, there’s the rub.

  19. JAOI
    More of a rant about the vacuousness of much debate on this subject than having an actual, you know, point. If anything, the point is that there’s never gonna be a simple answer, you can never please everyone, but a sensible framwork can be built that will work reasonably well if we don’t forget the basics.

  20. Hagbard, pre-grant at the EPO you have in the ring the blue corner guy, and the referee. There’s nobody in the red corner. Post grant, in opposition, there is. And you’re still not satisfied. You want the pre-issue referee to wear a blindfold as well?

    Can you imagine how it goes, in EPO oppositions, with red and blue hammering each other and a team of three referees intent only on forensic application of the EPO’s TSM test? Crap shoot it most decidedly is not.

    Quite the reverse. On all but real 50:50 cases, it is pretty well clear to all, long before the decision is uttered, who’s going to win, on obviousness. If you don’t believe me, just participate in a few EPO cases, formulating the so-called “auxiliary requests” (claim sets that you want considering, in the event that claim 1 goes down).

  21. Litigator black magic here with no basis in reality. What the heck is the point of even having a jury involved in findings of fact and/or law if they should be ultimately considered to be “advisory”. I guess this argument that petitioner makes can be made for any proceeding.

  22. Hiho six,

    ah, cum’on:
    Any attorney would fight for who he represents — the patent owner or the alleged infringer — attorneys with a client are the least objective of anybody.

  23. “Obviousness is all so very subjective and difficult, isn’t it? No, it isn’t.”

    Hmmm.

    Here’s the invention = A + B + C

    Here’s the closest prior art, disclosing A + B.
    Here’s some other prior art, disclosing C.

    For a finding of obviousness, strict TSM requires an explicit reason in the prior art to combine. Why have we got KSR? Because strict TSM wasn’t working: it was allowing stuff through that seemed to be obvious. What’s missing? The undocumented knowledge of the PHOSITA.

    EP-PSA is similar to TSM, except that examiners do try to factor in the knowledge of the PHOSITA. Problem is, EP examiners commonly mistake themselves for the PHOSITA.

    Apart from cases where the prior art really does point plainly and unambiguously to a claimed combination, obviousness ultimately depends on the characterisation of a conceptual PHOSITA and on adopting the mindset of that conceptual being. Anyone who thinks that can be reduced to a purely objective analysis of hard facts is kidding themselves.

    Patent offices do need an obviousness filter. Personally, I think the EPO’s filter generally works better than the USPTO’s, at least in terms of consistency and predictability. But no sensibly priced examination procedure can be expected to decide hard cases correctly. At some threshold, doubt needs to be resolved in favour of the applicant, and if anyone else cares enough then the granted patent can be subjected to closer scrutiny at a later date.

    If strict TSM doesn’t set the threshold of doubt at the correct level, then something more is needed. EP-PSA and the EPO’s three-man examining panel is arguably better, but certainly not perfect. KSR is just a set of pointers and the consensus seems to be that they’re not very useful for PTO examination.

    Once you get to court, and the state of the art at the priority date of the claim has been thoroughly dissected, with the help of expert opinion, you still end up with: “would it have been obvious to get here from there?” Whether a judge or a jury decides that question, it’s always gonna be something of a crapshoot, and building a case is really about stacking the odds in your own favour.

    Objective my armpit.

  24. “One man cannot do better than 12 who argue the matter behind closed doors”

    Actually that’s not true. Especially in an art such as my own. Even the worst examiner, or perhaps even attorney practicing in my area, would do a fton better than any jury of laypeople.

  25. The Rule:
    If the PTO grants the patent, it is presumed valid; if new prior art surfaces, and only if new prior art surfaces, can validity properly be challengable, either in re-exam or in court. Of course, there may be rare exceptions.

  26. The only objective test that works for obviousness is Teaching, Suggestion or Motivation, TSM!, Graham don’t do it!

  27. May be i’m missing something here, but isn’t the “question of law” on obviousness how the judge formulates that question to the jury? In other words, if the judge instructs the jury correctly on how to determine obviousness based on the underlying Graham factual inquiries, doesn’t that end the question of law issue?

  28. The more legal uncertainty the better then, Pontificator? I suppose it might depend on the “something” that we have to give up. What is it, pray?

    Or are we rather in Goldilocks country here: Not too much legal certainty, and not too little either, but rather, just the right amount of legal uncertainty.

    Right for litigators, or for Mr Micawber, or both? If so, why is that right for bona fide users of the patent system, that pay your fees and mine?

  29. “Legal certainty” is a platitude, like “safety.” You don’t get more of either without giving up something.

  30. Nice one Paul. I recall that “obvious” comes from the Latin ob Via – lying in the road., and that witness evidence of what was lying in that road of technological advance, ten years in the past, might be notoriously unreliable. Obviousness is all so very subjective and difficult, isn’t it? No, it isn’t.

  31. I’m not an attorney but if I recall correctly, I have read numerous
    times in my life where a judge throws out a jury verdict. Does this
    not mean that the court already reviews the decision and comes to
    its own legal conclusion? If the court agrees, the verdict stands; if
    the court does not agree, the judge overrules.

  32. In Farmer Giles of Ham, J.R.R. Tolkein reported events during the quest of a party of knights to enforce specific performance of a contractual obligation by a dragon: “The knights were discussion points of precedence and etiquette and their attention was distracted. Otherwise they would have observed that the dragon marks were now obvious and numerous.”

    How are these events to be interpreted within the legal framework called for in the US? Is the obviousness of the dragon traces a matter of fact, depending on what the knights could see from the path along which they were travelling, or what a reasonably alert knight could be expected to see? Or was it a standard to be inferred from evidence of one or more knights as to what they had in fact seen, something like negligence or scienter? And if it was an issue to be put to a jury of knights who had heard the evidence, could the finding be reversed by a judge on the basis that, after all, it did or did not meet legal standards of obviousness?

  33. Also, it’s a lot easier to hoodwi– I mean, convince – a jury with zero experience in patentability issues than it is to change the mind of an examiner who’s seen it all before.

  34. Counsel of despair, eh Ned. Nobody knows whether any issued claim is valid or invalid, until the jury has deliberated and pronounced.

    Funny then, isn’t it, that obviousness is despatched at the EPO, in full-blown, adversarial, disputed inter Partes opposition proceedings much quicker than the more difficult issues, of enablement, novelty, and whether matter was added during prosecution. Not a jury within a thousand kilometers of the court. In case you think that’s rough justice, ask the parties involved.

    Me, I blame the EPO-PSA. But then I would, wouldn’t I.

  35. Legal certainty where obviousness is involved?!!! If ever there was a situation where the jury should be involved in deciding an issue, it is in deciding obviousness. It is all a matter of degree based on the law and evidence, just as is guilt in a criminal case.

    One man cannot do better than 12 who argue the matter behind closed doors. Each person is different and will observe things slightly differently. Only when there is a consensus among the many should a decision be made.

    This view of mine also suggests that having one examiner decide issues of obviousness is dicey, even if the evidence is not in dispute. He or she may see everything or nothing as obvious, depending their experience and personalities.

  36. Instant reaction: Petitioner makes a solid point here. The legal conclusion will likely be a shoo-in, once the jury has found the relevant facts. But perhaps there will be special situations where the legal conclusion isn’t a foregone conclusion, even after the jury reports to the court on the facts. So, for good order, for the record, and for legal certainty, the court ought to put its legal imprimatur on the jury’s findings, every time.

  37. Obviousness, of course, is in the eyes of the beholder.

    What is invention? Invention is what makes the non-obvious obvious: everything is obvious after it has been invented. Another problem when testing for obviousness for patentability has to do with the Observer Effect, defined as: “In science, the observer effect refers to changes that the act of observing has on the phenomenon being observed.

    I.e., Before and after observation: before observation, is, is what it is, but after observation, what was no longer is – before’s is is gone forever after observation.

    It is, of course, impossible to tell if an invention is obvious before it has been invented – it has not yet been discovered, and thus it does not (yet) exist. And after it has been invented, at least to the extent that invention is what makes the non-obvious obvious, you can no longer tell if an invention was obvious.

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