Who Decides Obviousness: Judge or Jury?

By Dennis Crouch

Kinetic Concepts and Wake Forest University v. Smith & Nephew (Fed. Cir. 2012)

Wake Forest’s asserted patents cover a medical technique that uses suction to close a gaping wound.  In certain situations, the suction method – also called Negative Pressure Wound Therapy – is apparently better than stitches or – my personal favorite – super glue.  Smith & Nephew’s product has become popular – thus the lawsuit. My wife is an MD, so my usual wound therapy involves me saying “go see your momma.”

The issue in the Kinetic appeal involves the question of obviousness and whether the ultimate question of obviousness should be decided by a judge or by the jury.  The Supreme Court has repeatedly stated that obviousness is a question of law based upon a set of underlying facts.  However, most district court judges allow the jury to decide the legal question of obvious. Further, few judges pose interrogatory questions to the jury regarding the factual underpinnings of their legal determination.

Here, S&N proposed that the jury only be asked to resolve the disputed questions of fact outlined in the Supreme Court’s landmark 1966 decision Graham v. John Deere — questions such as the level of skill in the art and the scope and content of the prior art.  Under S&N’s proposal, the judge would then take those answers and form a conclusion on the ultimate legal question of obviousness.  The patentees responsive brief identified this process as “one of the worst suggestions of all time.” Here, the district court took a somewhat middle ground – deciding to give the legal issue to the jury, but also ask the jury to identify the underlying factual Graham factors.  In addition, the district court indicated that it would see the jury’s obviousness conclusion “as advisory.”  

The court wanted some factual guidance from the jury, but was also wary of asking the jury to write its response in narrative form. (Why?) In the end, the jury was asked several yes/no questions about the scope of the prior art; the differences between the prior art and the claimed invention; and whether secondary indicia of non-obviousness existed. After eight days of deliberation, the jury returned its verdict. Samples from the verdict form are shown below.


In its verdict, the jury concluded that the defendant had failed to prove the asserted claims to be obvious.

On JMOL, the district court rejected the jury verdict and held instead that the differences between the prior art and the claimed invention were so minimal as to be obvious to anyone of skill in the art. This holding thus left the asserted claims invalid. On appeal, the Federal Circuit has reinstated the jury verdict upholding the patent and held that the “district court committed error by failing to defer to the jury’s factual findings and granting JMOL on obviousness.” Professor Jason Rantanen wrote on this earlier:

Wake Forest, the patent holder, appealed a district court grant of JMOL of invalidity for obviousness of a claimed invention for treating difficult-to-heal wounds by applying suction (negative pressure). The CAFC reversed, holding that (1) the jury’s “advisory” opinion on the ultimate issue obviousness gave rise to implied findings of facts that the district court was required to accept provided that they were supported by substantial evidence, despite the presence of special interrogatories on the verdict form; (2) the jury’s implied findings of facts on the Graham factors were supported by substantial evidence; and (3) the ultimate conclusion of obviousness was that the claims were not obvious.

In arriving at the ultimate (legal) conclusion of nonobvious, the Federal Circuit focused its discussion on the lack of a reason to combine the prior art references (itself a factual finding), referencing concerns about hindsight reconstruction. In a statement suggesting a technology-based limitation on the use of common sense, the court held that “although expert testimony regarding motivation to combine is not always required, the technology at issue here is not the type of technology where common sense would provide the motivation to combine these references.”

The court’s usual approach to jury obviousness decisions typically begins with the jury’s ultimate conclusion of obviousness/nonobviousness and then works back to the factual determinations necessary to reach that conclusion. In the absence of a special verdict spelling out the factual determinations, the court presumes that the jury made those necessary factual determinations and will affirm the jury verdict so long as those facts were supported by substantial evidence at the trial. In Kinetic, there was a special verdict where the jury particularly identified some of its factual conclusions. However, even here, there were a number of factual determinations necessary to reach the nonobviousness verdict – and those are typically implied into the jury verdict. The basic conclusion of the Federal Circuit in this case was that Smith & Nephew’s obviousness argument was – at base – an attempt to challenge those underlying assumed factual determinations and, that challenge must fail because those determinations were supported by substantial evidence presented at trial.

Smith & Nephew challenged this working-back approach as wrong on (at least) two levels. First, since obviousness is a conclusion of law, the adjudged infringer argued that it couldn’t be the basis for presuming particular factual conclusions that were not expressly decided by the jury. This is even further bolstered by the fact that the district court judge identified the jury’s conclusion on obviousness as ‘advisory.’ The appellate court rejected those arguments by relying on its own precedent supporting the working-back approach and by determining that the district court’s reference to the ‘advisory’ nature of the jury verdict had no meaning.

The court went on to specifically indicate that it is proper to submit legal arguments to a jury:

[I]t is neither error nor dangerous to justice to submit legal issues to juries, the submission being accompanied by appropriate instructions on the law from the trial judge. The rules relating to interrogatories, jury instructions, motions for directed verdict, JNOV, and new trial, and the rules governing appeals following jury trials, are fully adequate to provide for interposition of the judge as guardian of the law at the proper point and when necessary. There is no question that the judge must remain the ultimate arbiter on the question of obviousness. He or she exercises that role first in exercising the judge’s duty of giving proper instructions on the law to the jury before it considers its verdict. The judge exercises control on the question again when presented with a motion for JNOV or new trial. In no sense need the judge abdicate the guardianship role.

R.R. Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506 (Fed. Cir. 1984).

En Banc Rehearing: Now, Smith & Nephew is preparing to ask the Court of Appeals for the Federal Circuit to rehear the case en banc asking the Federal Circuit to give meaning to the legal nature of an obviousness conclusion and ensure that an accused infringer has a right to an independent determination by a judge on the ultimate question of obviousness.


15 thoughts on “Who Decides Obviousness: Judge or Jury?

  1. 14

    Former CCPA Law Clerk said:
    The Jury Verdict form questions, while out of context, are confusing to say the least, what with double negatives and compound requests, e.g., the “only differences” [note the plural], “highly probable” [probability is not the basis for a fact finding], and then asking in a sub-question about “the difference” cast in a functional result term. Query whether the judge was being a “guardian” by permitting such questions to go to the jury. A jury poll to determine if they really understood the questions and what they were deciding would be instructive. All in all, this case does not promote clarity.

  2. 13

    Except Ned that obviousness, as a ground of invalidity, wasn’t even invented till the end of the 19th century, was it?

  3. 12

    Juries decide mixed questions of law and fact all the time. However, the procedure advocated here was once the procedure that prevailed in England where the courts in equity would decide the validity of the patent, but referred the trial of facts to the common law courts for trial by jury. When the facts were determined, the case was returned to the equitable court for an ultimate decision. Many times, what was going on was simply a legal fiction because the same judge presided over both trials.

  4. 11

    There has been a lot of litigation of this stuff in the Patents Court in London, with much analysis of obviousness. So, does anybody here know how S&N is getting on generally, in its world-wide wound sucking patent litigation?

    Apart from that though, isn’t it refreshing how multi-national patent litigation is no longer the exclusive preserve of innovative vs generic pharma. What with mech cases like this, and Apple/Samsung design and EE patents, the landscape today is wonderfully diverse.

    Obviousness in chem/bio/pharma is a law unto itself, because of the unpredictability in these fields. But how about “predictable” fields like mech, EE and design patents? I’m wondering whether there’s anything interesting to be revealed, by comparing and contrasting the US with England, on the obviousness of the present S&N subject matter.

  5. 10

    Dennis, I think MM’s point is that the suction method provided better results only in certain situations. If in most situations, the results are not as good or indifferent, that could be an argument for “expected” results. The new utility pertains only to the situatiions where the results were superior and unexpectedly so.


  6. 7

    I don’t often wear t-shirts and blue jeans. But when I do it is not not when I’m making supar important official muckity muck legal determinations.

  7. 6

    “Those people in blue jeans and tee shirts usually aren’t going to be qualified to write up what is, in effect, an office action, without looking like a complete nubcake.”

    Sounds to me like you’re describing the USPTO examining corps.

  8. 4

    Dennis, I think MM’s point is that the suction method provided better results only in certain situations. If in most situations, the results are not as good or indifferent, that could be an argument for “expected” results. The new utility pertains only to the situatiions where the results were superior and unexpectedly so.

    Imagine then a claimed genus ranged from 1-100. Superior results are found between 40 and 60. Can I claim the whole range, 1-100 on this evidence?

    If disclose a range or examples with superior results but do not claim them, or do not limit my claims to them, the problem with the claims is that they are not claiming the invention with any particularity, and are potentially invalid under section 112, paragraph 2.

    See e.g., Perkins Glue. Holland Furniture Co. v. Perkins Glue Co., 277 US 245 – Supreme Court 1928

  9. 2


    Because of how preposterous it will probably look.

    Those people in blue jeans and tee shirts usually aren’t going to be qualified to write up what is, in effect, an office action, without looking like a complete nubcake.

  10. 1

    Wake Forest’s asserted patents cover a medical technique that uses suction to close a gaping wound. In certain situations, the suction method – also called Negative Pressure Wound Therapy – is apparently better than stitches

    Just curious: are one or more of those “situations” recited in each of the claims at issue here? One would hope so …

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