Washington Journal of Law, Technology and Arts Volume 7, Issue 4 Spring 2012
Tuning the Obviousness Inquiry After KSR
Mark D. Janis (fn*)
Abstract
One of the most important and delicate judicial tasks in patent law is to keep the obviousness doctrine in reasonable working order. There are several reasons why the obviousness doctrine has been the subject of frequent judicial tinkering. First, patentability doctrines interact with each other, so doctrinal alterations that seem to be entirely external to the obviousness doctrine frequently have ripple effects on obviousness. The interaction between the utility and obviousness doctrines provides one good example. Second, the obviousness doctrine is internally complex. Cases in the chemical and biotechnology areas over the past several decades have amply illustrated this point. This Article examines Chief Judge Rader's contributions to the task of tuning the obviousness doctrine, with particular attention to cases that have arisen after the Supreme Court's pronouncements on obviousness in KsR v. Teleflex.
Table of Contents
Introduction..............................................................................336
I.Balancing Obviousness Against Utility and Disclosure Doctrines............................................................................337
A.Obviousness v. Section 101 Utility: The Fisher Dissent ........................................................................337
B.Obviousness and the § 112 Written Description.............340
II.Obviousness Doctrine After KSR........................................342
A.The Continued Vitality of the (Flexible) TSM Test: Translogic...................................................................342
B.The Proper Role of the "Obvious to Try" Inquiry...........346
III.The Appellate Role in Obviousness Determinations...........348
Introduction
The obviousness doctrine is rightly considered one of the most crucial legal innovations in patent jurisprudence.(fn1) It also may be as difficult a concept to implement as any in patent law, or in law generally. Given its strong sensitivity to context and its holistic orientation, it seems apparent that obviousness will never be captured in a comprehensive legislative code. Obviousness, then, presents judges with an unenviable and ongoing maintenance task.
This Article, which focuses on Chief Judge Rader's contributions to the obviousness jurisprudence, shows that judicial attention is critical, whether the task is to reconfigure the doctrine's very foundations or simply to conduct routine maintenance. Part I addresses obviousness in the context of other patentability doctrines (in particular, the utility and disclosure doctrines), and observes that changes to these doctrines frequently have ripple effects for the law of obviousness, drawing on examples both pre- and post-KSR International Co. v. Teleflex, Inc.(fn2) Parts II and III take up selected aspects of the obviousness doctrine itself, examining the ongoing task of judicial fine-tuning after KSR and presenting it as one of patent law's most important judicial labors.
I. Balancing Obviousness Against Utility and Disclosure Doctrines
The obviousness doctrine is too often viewed in isolation. To be sure, the obviousness jurisprudence is vast, and the obviousness inquiry in any given case may require immersion in a wealth of technical facts. However, obviousness is merely one component of a constellation of patentability requirements that interact with one another. in particular, tuning of the obviousness doctrine is quite likely to have collateral consequences for the utility and description doctrines-and vice versa. Two important biotechnology patent cases-In re Fisher(fn3) and In re Kubin(fn4) - illustrate the point especially well.
A. Obviousness v. Section 101 Utility: The Fisher Dissent
Fisher, the expressed sequence tags ("ESTs") case, is principally about the requirement that the invention claimed in a patent evince "substantial" and "specific" utility.(fn5) For the first time, the Federal Circuit squarely and explicitly embraced the Brenner v. Manson(fn6) utility standard, positioning the utility requirement as a non-trivial obstacle to patentability, at least in some areas of chemical and biotechnological research.(fn7) The Fisher court also applied a gloss to the Brenner standard, attempting, with rather limited success, to define the concepts of substantiality and specificity. (fn8)
That the Federal Circuit would endorse a robust utility requirement in Fisher was by no means a foregone conclusion. The Federal Circuit's pre-Fisher utility jurisprudence, exemplified by the court's opinion in In re Brana,(fn9) seemed to have established a relatively permissive approach to utility. At the time, it appeared that an applicant's credible assertions of utility would establish prima facie utility in most cases, shifting to the U.S. Patent and Trademark Office (PTO) the responsibility for mustering rebuttal evidence, a task that the PTO was generally not well-suited to undertake. But the practice of patenting ESTs had drawn significant scholarly criticism, and the PTO's 2001 utility guidelines had sent a strong signal that EST claims would be closely scrutinized for compliance with the utility requirement.(fn10)
Nor did Judge Michel's opinion in Fisher garner unanimous support. Judge Rader dissented.(fn11) Much of the dissenting opinion questions the wisdom of using the utility doctrine to filter research tools out of the patent system. In a key passage that has received less attention than it warrants, Judge Rader acknowledged that the PTO's impulse might be sound, but it had chosen the wrong doctrine to effectuate that impulse:The Office needs some tool to reject inventions that may advance the "useful arts" but not sufficiently to warrant the valuable exclusive right of a patent. The Patent Office has seized upon this utility requirement to reject these research tools as contributing "insubstantially" to the advance of the useful arts. The utility requirement is ill suited to that task, however, because it lacks any standard for assessing the state of the prior art and the contributions of the claimed advance. The proper tool for assessing sufficient contribution to the useful arts is the obviousness requirement . . . .(fn12)
Why had the PTO not gravitated to the obviousness requirement already? Judge Rader blamed the Federal Circuit.(fn13) The Federal Circuit's approach to obviousness for DNA inventions in In re Deuel,(fn14) observed Judge Rader, had created a dilemma for the PTO, reducing the threshold for obviousness to such a degree that it deprived the PTo of the opportunity to use obviousness in its ordinary role as the principal fine-tuning mechanism among patentability doctrines.(fn15) It was understandable that the PTO had elaborated a more robust form of the utility doctrine as a counterbalance to a toothless obviousness requirement-but, as Judge Rader recognized, this was an inferior solution. The problem, as Judge Rader saw it, was potential obviousness, and the obviousness doctrine should supply the solution. That is, rather than distort the utility test, the Patent Office should seek ways to apply the correct test, the test used world wide for such assessments (other than in the United States), namely inventive step or obviousness.(fn16)
This insight-that the obviousness and utility doctrines interact-is an important one, having deep historical roots. The earliest u.s. patent statutes did not include an obviousness requirement, nor was any such requirement firmly established in the then-existing case law. But the statute did permit patent rights to be defeated if the invention was not "sufficiently useful and important."(fn17) Judges never embraced this criterion as the ultimate test of patentability, and it eventually fell into disuse while the obviousness doctrine flourished. Perhaps judges instinctively understood that an unhinged inquiry into "importance" would be too subjective as a patentability tool, while an obviousness inquiry-requiring a comparison with discrete, identified prior art evidence-might be more disciplined.(fn18) Judge Rader's Fisher dissent is a powerful reminder of our longstanding commitment to obviousness as the ultimate condition of patentability.(fn19)
B. Obviousness and the § 112 Written Description
The obviousness doctrine...
