Secondary considerations: a structured framework for patent analysis.

• Author: Darrow, Jonathan J.

The most serious weakness in the present patent system is the lack of a uniform test or standard for determining whether the particular contribution of an inventor merits the award of the patent grant.

... The present confusion threatens the usefulness of the whole patent system and calls for an immediate and effective remedy.--National Patent Planning Commission, 1943 (1)

1. INTRODUCTION

   While the opening quotation was penned by the National Patent Planning Commission in 1943, it could just as well describe the confusion that pervades patentability determinations today. Despite the periodic interventions of Congress and the courts, the framework for evaluating obviousness--patents cannot be granted on inventions that are obvious--is surprisingly skeletal and undeveloped. (2) Such a paucity of guidance is not for want of foresight: decades ago the drafters of the modern patent standard expressly suggested that "at a later time ... some criteria ... [could] be worked out" to further define patentability, but Congress has never acted upon this suggestion. (3)

   The continuing absence of a detailed, structured framework for determining patentability is not only unnecessary, but also anomalous within intellectual property jurisprudence. Copyright law fair use determinations are guided by [section] 107, which provides four non-exclusive factors as well as illustrative examples. (4) Trademark law relies on the eight Polaroid (5) factors to guide the infringement analysis. In contrast, patent law obviousness determinations must be made on the scant language of [section] 103, which provides neither examples nor useful factors. (6) Graham v. John Deere Co. of Kansas City, (7) generally cited as the seminal modern Supreme Court obviousness decision, does little more than rearrange and restate the language of [section] 103. (8)

   Yet, within the Graham decision lie doctrinal seeds which, if cultivated, could potentially grow into a robust framework to guide the obviousness determination. In addition to restating the language of [section] 103, Graham promisingly added: "Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy." (9)

   Unfortunately, since Graham the doctrine of secondary considerations has been neither deliberately developed nor evenly applied. No judicial decision or secondary source has established itself as an accepted model for subsequent courts to follow. Acting within this statutory and judicial void, most courts have haphazardly applied whatever secondary considerations parties have troubled themselves to assert, with predictably erratic results. (10) This paper endeavors to bring together the divergent strands of the secondary considerations doctrine into a single, robust framework that might be further developed by future commentators and courts.

   Part II introduces the secondary considerations doctrine, illustrates the extent to which the doctrine is underdeveloped and inconsistently applied, and explains how congressional and judicial developments, including KSR International Co. v. Teleflex Inc., (11) have accelerated the need for the adoption of a uniform and well-developed secondary considerations framework. Part III responds to that need by proposing a comprehensive model framework for the utilization of secondary considerations, including a discussion of five under-acknowledged or newly proposed secondary considerations. Part IV explores the curiously voluminous criticism of secondary considerations and reconciles this criticism with broad doctrinal acceptance by judges and others for more than 150 years. Through the analysis, it becomes apparent that secondary considerations cannot be rigidly cabined within the [section] 103 obviousness determination. A second major contribution of this paper is therefore to explain that, contrary to prevailing doctrine, secondary considerations are in fact indicia of patentability, rather than merely indicia of [section] 103 obviousness.

2. PATENTABILITY, OBVIOUSNESS, AND SECONDARY CONSIDERATIONS

   1. Secondary Considerations Explained

      Secondary considerations are thought to aid judges in determining whether a given invention rises to the level of a patentable invention by providing "objective indicia" of patentability. (12) These indicia are not based on the technical complexity of the invention itself, but relate to non-technical, contextual factors surrounding the development of the invention. For example, if others had toiled for years, but failed to achieve the invention ultimately contributed by the inventor, this would tend to show that the invention is worthy of a patent. Similarly, if a product embodying an invention achieves commercial success in the marketplace by displacing prior art products, this suggests that the value of the invention to society as compared to the prior art is sufficient to warrant a patent.

      Because secondary considerations require an exploration of the context within which an invention came into being, they are responsive to Judge Hand's insistence that the patentability determination "should involve[] as complete a reconstruction of the art that preceded it as is possible." (13)

   2. The Secondary Considerations Doctrine Is Substantially Underdeveloped

      Although the secondary considerations doctrine has been germinating for more than 150 years, the doctrine is still surprisingly underdeveloped and inconsistently relied upon. In fact, there is no generally cited opinion or secondary source that even lists all of the secondary considerations to which a court might refer, let alone one that provides a roadmap for analysis. (14)

      The Supreme Court in Graham listed three--(1) commercial success; (2) long-felt need; and (3) failure of others--but then added "etc." in an apparent indication that other factors may also be considered. (15) Immediately after listing these three secondary considerations, the Court cites a note by Richard Robbins (16) which, in addition to the three factors just mentioned, discusses (4) "commercial acquiescence"; (17) (5) "simultaneous solution"; (18) (6) "professional approval"; (19) and (7) "[p]rogress [t]hrough the Patent Office" as additional subtests of nonobviousness. (20) In his conclusion, Robbins notes that he has only devoted attention to those subtests "with which the courts have particularly struggled," suggesting that even more secondary considerations may be relevant. (21) Indeed, courts and commentators have analyzed and weighed a number of other factors under labels such as (8) "[c]opying"; (22) (9) "[r]espect by the [i]ndustry"; (23) (10) "[a]cclaim"; (24) (11) "[u]nexpected [r]esults"; (25) (12)"skepticism"; (26) (13)"teach[ing] [a]way"; (27) (14) "[l]ong experimentation"; (28) and (15) "[u]tility." (29) Other less common secondary considerations have also been discussed. (30)

      The Supreme Court, true to its expressed desire to maintain a flexible patent jurisprudence, (31) has provided only vague guidance as to the relevance and weight to be accorded to secondary considerations. The Court implied, for example, that an evaluation of secondary considerations may not always be required. (32) The Court also provided a particularly impenetrable explanation of the purpose that might be served by secondary considerations. "[S]econdary considerations ... might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." (33) Perhaps because of the linguistic ambiguity, lower courts have generally avoided any discussion of the Supreme Court's minimal contextual language with respect to secondary considerations.

      In the absence of an accepted framework, vast variations exist in the degree of attention devoted to secondary considerations from one case to another. Some courts meticulously analyze each secondary factor in turn. (34) For example, the District Court for the Northern District of West Virginia ruled on the obviousness of the antibiotic levofloxacin only after fastidiously examining eight secondary considerations in separately titled subsections. (35) Similarly, the Federal Circuit in Geo M. Martin Co. v. Alliance Machine Systems International LLC devoted nine paragraphs to secondary considerations, including a discussion of commercial success, long-felt need, industry praise, copying, and simultaneous invention. (36) Others, however, cite Graham, but offer no discussion of secondary considerations at all. (37) For example, in Sundance, Inc. v. Demonte Fabricating Ltd., the Federal Circuit simply stated that the proffered "[s]econdary considerations ... simply cannot overcome this strong prima facie case of obviousness," without actually discussing any of them. (38) Similarly, the Supreme Court in KSR International Co. v. Teleflex Inc. devoted a lone sentence to the issue of secondary considerations. (39) One study found that only forty-one of the ninety-three obviousness opinions examined included secondary consideration evidence at all. (40)

      This desultory approach to secondary considerations persists even after the Federal Circuit's decision in Stratoflex Inc. v. Aeroquip Corp., (41) which requires the consideration of objective indicia when present, and its repeated incantations that secondary considerations may be "the most probative and cogent evidence in the record." (42) Despite this strong language, the Federal Circuit has stopped short of creating a comprehensive framework for the analysis of secondary considerations. (43) This failure to provide guidance to lower courts may result from the lack of agreement among Federal Circuit judges themselves on the proper analysis of secondary considerations. (44)

      Regardless of the depth of treatment of secondary considerations...