A realistic approach to the obviousness of inventions.

• Author: Durie, Daralyn J.

TABLE OF CONTENTS INTRODUCTION I. OBVIOUSNESS, BEFORE AND AFTER KSR A. The Prior Art and the Role of the PHOSITA in Evaluating It B. The Problem of Combining References C. Secondary Considerations D. KSR and the Standard of Review II. PROCEDURAL EFFECTS OF KSR A. The Increasing Role of the PHOSITA B. Patentee Reliance on Secondary Considerations C. Applying the New Rules: Procedural Problems 1. The PTO 2. The Courts III. TAKING REALISM SERIOUSLY CONCLUSION INTRODUCTION

Obviousness is the ultimate condition of patentability. (1) 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. (2) 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. 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: an invention can't be obvious unless there is a teaching, suggestion, or motivation to combine prior art elements or modify existing technology; (3) an invention can't be obvious merely because it is obvious to try; (4) and so forth.

In its decision last year in KSR International Co. v. Teleflex Inc., (5) the Supreme Court rejected the use of "rigid" rules to decide obviousness cases. (6) In its place, the Court offered not a new test, but a constellation of factors designed to discern whether the person having ordinary skill in the art (the PHOSITA) (7) would likely think to make the patented invention. (8) In short, the Court sought to take a realistic approach to obviousness--to make the obviousness determination less of a legal construct and to put more weight on the factual determination of what scientists would actually think and do about a particular invention.

As a general principle, this realistic focus is a laudable one. The too-rigid application of rules designed to prevent hindsight bias had led to a number of results that defied common sense, including the outcome of KSR itself in the Federal Circuit. But the realistic approach has some (dare we say it) nonobvious implications for evidence and procedure, both in the Patent and Trademark Office (PTO) and in the courts. The greater focus on the characteristics of individual cases suggests a need for evidence and factual determinations, but the legal and structural framework under which obviousness is tested means that it is difficult to make and review those determinations. The realistic approach is also incomplete, because the obviousness inquiry depends critically on the counterfactual assumption that the PHOSITA, while ordinarily skilled, is perfectly informed about the prior art. If we are to take a realistic approach to obviousness, we should make it a consistent approach, so the ultimate obviousness determination reflects what scientists in the field would actually think. So far, despite KSR, it does not. The result of taking the realistic approach seriously may be--to the surprise of many--a law of obviousness that is in some respects more, not less, favorable to patentability than the standard it displaced.

In Part I, we review the law of obviousness and the likely substantive effects of the KSR decision. In Part II, we explore the less-noticed procedural effects of KSR, as both the PTO and the courts try to inject realism and evidence into a legal framework that is not designed to evaluate them. Finally, in Part III, we discuss the ways in which the obviousness inquiry still uses a legal construct rather than a realistic inquiry into what the PHOSITA would think of an invention. We argue there that obviousness should be reconceived as a truly realistic inquiry, one that focuses on what the PHOSITA and the marketplace actually know and believe, not what they might believe in a hypothetical, counterfactual world.

1. OBVIOUSNESS, BEFORE AND AFTER KSR

   In Graham v. John Deere Co., (9) the Supreme Court set out the framework pursuant to which courts should evaluate whether an invention is obvious. The Court determined that the ultimate question of patent validity is an issue of law that depends on certain underlying facts. It identified the factual inquiries pertinent to a determination of obviousness as: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the art. (10) In addition, the Court noted the importance of secondary considerations of nonobviousness derived from the circumstances surrounding the putative invention. (11)

   1. The Prior Art and the Role of the PHOSITA in Evaluating It

      Obviousness is determined with reference to whether a purported invention would have been obvious to a PHOSITA; a person who "thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights...." (12) In Environmental Designs, Ltd. v. Union Oil Co. of California, (13) the Federal Circuit set forth the following factors for defining a PHOSITA: (1) the inventor's educational background; (2) the kinds of problems confronted in the art; (3) solutions found previously; (4) the speed of innovation in the art; (5) the level of sophistication of the technology; and (6) the educational level of workers in the field. (14) The court cautioned that not all factors will be relevant in every case. (15) And, although one of the listed factors is the inventor's educational background, the court has also recognized that the PHOSITA cannot be equated with the inventor, because the inventor is presumptively a person of extraordinary insight or skill. (16)

      Although the PHOSITA is described as a "person," (17) the PHOSITA is a hypothetical construct in at least two respects. First, the PHOSITA is presumed to be familiar with all of the art in the area of his or her field, even if that art was secret and would not in fact have been known. (18) Second, the PHOSITA need not be a single person; instead, the PHOSITA may be a group of people possessing skills not typically aggregated in any given human being. (19) Of course, no actual human being would ever meet this standard. So, under traditional obviousness jurisprudence, obviousness is to be measured not with respect to what actual skilled people in the field would know or be motivated to do based on the prior art actually known to them. Instead, obviousness is to be measured with reference to a hypothetical construct that virtually by definition could not exist. And even that construct is only sketchily defined. It is rare, for instance, that parties spend much time fighting about who the PHOSITA is, or do more than sketch out a resume with educational background and years of experience. The PHOSITA seems curiously disconnected from the inquiry he or she is supposed to perform.

   2. The Problem of Combining References

      Most inventions do not spring ab initio from the mind of the inventor. They build on, improve, or combine things already known in the world in new and unforeseen ways. Inventions that take the form of a combination of existing ideas present particular problems for obviousness analysis. All the elements of the invention are present in the prior art, but they are not present in the same place in the prior art. Would the PHOSITA have thought to combine these two different prior art ideas to make the patented invention? Or is judicial combination of prior art references selected for the court by the defendant an example of hindsight bias? (20)

      Before KSR, the Federal Circuit combated the risk of hindsight bias in these combination cases by requiring that a party challenging obviousness prove that the prior art disclosed some teaching, suggestion, or motivation to combine the references. (21) Decisions split on the question of whether that suggestion had to be present in the prior art references themselves, or whether a motivation could be implicit in the knowledge or goals of the PHOSITA. (22) It was this teaching-suggestion-motivation, or TSM, test that led the Federal Circuit to conclude that the adjustable electronic sensor gasoline pedal at issue in KSR was nonobvious, even though both adjustable accelerator pedals and electronic sensors on (nonadjustable) accelerator pedals were known in the prior art. (23)

   3. Secondary Considerations

      The use of a hypothetical person to decide what scientists in the real world could do is worrisome. In Graham, the Supreme Court noted that economic evidence of how the invention was actually treated in the real world "may have relevancy" to the obviousness inquiry. (24) The Court identified "commercial success, long felt but unsolved needs, failure of others, etc." as relevant secondary indicia of the nonobviousness of an invention. (25) Other cases have elaborated upon the "etc." as including the licensing of the patent, (26) initial skepticism by others in the field, (27) praise, (28) independent simultaneous invention by others, (29) and copying. (30) In order to rely on evidence of these secondary considerations, there must be a nexus between the factor and the patented invention. (31) Thus, for example, a defendant seeking to rely on evidence that an invention is commercially successful must show that its commercial success is a function of the patented feature, and not some other reason. (32) At the simplest level, this nexus requirement can be satisfied if the scope of the claims and the patented product are coextensive, in which case the court will generally presume that the commercial success is a function of...