Expecting the unexpected.

• Author: Lemley, Mark A.
• Position: Patentability of unexpected results from obvious to try experimentation

Introduction

Patent law rewards invention. Invention in turn means not merely that something is new, but that it is nonobvious--something that ordinary scientists in the field wouldn't have figured out. We have a number of legal doctrines designed to decide whether an invention would be obvious to those in the field. One of the most important of those doctrines is the doctrine of "unexpected results." If the patentee's invention produced unexpected results, the law says, that is pretty good evidence that it wasn't obvious.

A second important doctrine, established in the law only in 2007, is that if it is obvious to try to make something, and if those who might try would expect to succeed, making that thing is not patentable. After all, if an ordinary scientist would think to try a particular approach and would expect to succeed, actually doing so isn't really inventive. It's just the ordinary work we expect of scientists.

These two doctrines can conflict. What if it is obvious to try something, but actually trying it leads to unexpected results? This actually happens with some frequency, particularly in the chemical and pharmaceutical industries, where researchers are motivated to try various standard modifications of known chemicals but where the unpredictability of the art means that they can expect to be surprised by what they learn from time to time. Perhaps surprisingly, courts have not yet decided how to resolve this conflict, with a number of cases in the last several years preferring one doctrine or the other without directly acknowledging the conflict.

I argue that when these two legal doctrines conflict, the doctrine of unexpected results must give way. Obviousness is based on the idea that we should not give a patent if ordinary scientists could have gotten to the result without the encouragement of that patent. (1) If researchers of ordinary skill were already motivated to try a new variation, and correctly expected that they would succeed, actually trying the new variation is normal science lacking the extra skill or insight required for invention. And if scientists would have created the new variation in the ordinary course of their duties, they would of necessity have stumbled upon the unexpected results. Normal science, not the incentive of a patent, led them to that outcome, so the invention is not patentable.

This result may alarm patent owners in the pharmaceutical industries, who have been obtaining patents for this sort of normal experimentation for years. But I think it is required by the Supreme Court's decision in KSR International Co. v. Tele flex Inc., which held that an invention was not patentable if it was obvious to try. (2) While pharmaceutical patent owners may lament the loss of these patents, the rest of the world may not. Patents likely to be affected by the obvious-to-try rule tend to be follow-on patents used to try to extend the life of expired patents on new chemical entities, not breakthrough drugs that require strong protection. And pharmaceutical patent owners may have other avenues to obtain protection they legitimately need.

Thinking about the tension between unexpected results and obviousness to try also offers a window on why we have an obviousness doctrine at all. KSR's focus on obviousness to try may represent a fundamental shift in thinking about obviousness, from a focus on whether the result was expected to a focus on whether the process of getting to that result was conventional.

1. THE LAW OF OBVIOUSNESS

   1. The Primary Analysis

      We grant patents only to inventions that are novel and nonobvious--ones that an ordinary scientist in the field would not have come up with. Obviousness is the "ultimate condition" of patentability--the single most significant doctrine dividing those ideas worth granting a patent on from runof-the-mill work that does not deserve a patent. (3) As the Supreme Court made clear in KSR, an ordinarily skilled researcher is "not an automaton," but a scientist who is a problem-solver and will be motivated to improve things in the ordinary course of scientific work. (4)

      The nonobviousness requirement--that inventions must, to qualify for a patent, be not simply new but sufficiently different that they would not have been obvious to the ordinarily skilled scientist--is in dispute in almost every case, and it is responsible for invalidating more patents than any other patent rule. (5) It is also perhaps the most vexing doctrine to apply, in significant part because the ultimate question of obviousness has an "I know it when I see it" quality that is hard to break down into objective elements. (6)

      That hasn't stopped the Federal Circuit from trying to find those objective elements. In the last quarter-century, the court has created a variety of rules designed to cabin the obviousness inquiry. (7) Some of those rules--that an invention can't be obvious unless there is a teaching, suggestion, or motivation to combine prior art elements or modify existing technology, (8) and that an invention can't be obvious merely because it is obvious to try (9)--were swept away by the Supreme Court in 2007. In KSR, the Court insisted on context-specific standards rather than rigid rules. (10)

   2. Secondary Considerations (or Objective Evidence)

      A second body of Federal Circuit obviousness precedent remained unchanged by KSR, however. Those cases involve the so-called "secondary considerations" or "objective evidence" of nonobviousness. (11) While the basic obviousness inquiry is focused on what a hypothetical reasonable expert--the person having ordinary skill in the art, or "PHOSITA" (12)--would think is obvious, courts also consider real-world evidence about how the invention was received in the marketplace. These secondary considerations may include, for instance, whether the invention was a commercial success, whether others tried and failed to achieve it, and how the inventor was treated by the relevant scientific community. (13) Secondary considerations have taken on greater significance since KSR as patentees have turned to them to try to overcome the stricter primary test of obviousness. (14)

      For our purposes, the most important of the objective considerations is unexpected results. The paradigm case of unexpected results is United States v. Adams. (15) Adams invented a just-add-water battery with a long shelf life that produced a stable current. (16) Prior literature had indicated that the elements of the battery could not safely be combined together and might even explode. (17) While the prior art disclosed each of the elements of Adams's battery separately, the Court held that the combination of those elements was nonobvious, relying on the unexpected nature of his results to those of skill in the art. (18) The fact that no one expected Adams's battery to work meant that people of ordinary skill in the field wouldn't try making it. That Adams did--and succeeded--was deserving of a patent. (19)

      Adams was a case involving not only unexpected results, but also what patent law calls "teaching away" from the invention. It wasn't just that the prior art didn't expect Adams's success, but that the prevailing wisdom told him not to bother trying. Indeed, he demonstrated his battery for Army experts, who refused to believe it could work even after seeing the results with their own eyes. (20) The rationale here seems straightforward: if the PHOSITAs thought that something wouldn't work, and the patentee showed that, surprisingly, it did, the patentee's discovery was likely not obvious to those PHOSITAs. (21)

      Patentees frequendy present evidence of their unexpected results, and the Federal Circuit has considered that evidence in a large number of cases, essentially always as evidence in support of the patentee and a finding of nonobviousness. (22) By contrast, the absence of a secondary consideration like unexpected results is not treated as evidence of obviousness. Instead, it is neutral. (23) Unexpected results are treated as a reason to treat the invention as nonobvious. In fact, however, they are more properly understood as indirect evidence that bears on the question of whether the PHOSITA would have been motivated to make the invention.

   3. Obvious to Try

      While objective evidence of unexpected results can trace its pedigree at least as far back as the Supreme Court's 1966 decision in Graham v. John Deere Co., (24) the other doctrine of interest to us is of more recent vintage. That doctrine concerns what to do when it would be obvious to the PHOSITA to make a particular change to the prior art or test a new machine or compound. Scientists may be motivated to improve existing technology in a variety of standard ways without the need for a patent. Some of those improvements are the result of simple linear thinking that implements existing knowledge; for example, if having one USB port on a computer is good, why not try having two? Others are optimization based on goals known to be desirable even if the means is not; for example, if raising battery life on a laptop from three to four hours is good, raising it to five hours should be even better.

      Just because ordinary scientists are motivated to try something doesn't mean they will succeed, however. It is obviously desirable to build a time machine (25) or to cure cancer, but that doesn't mean a scientist of ordinary skill would know how to do it. As the Federal Circuit put it, if "trying" simply means throwing darts at a combinatorial dartboard to see what sticks, getting the right answer is not obvious even if lots of people would like to get that answer. (26)

      The Federal Circuit originally drew from that logic the conclusion that obviousness to try was irrelevant--that it was not the proper test for obviousness. That mantra was repeated in a number of cases over a twenty-fiveyear period. (27) But frankly it never made much sense. If something is obvious to try, scientists of ordinary skill will...