Rules, standards, and the reality of obviousness.

• Author: Simon, Brenda M.

ABSTRACT

Obviousness, the great question of patent law, is a muddle. Attempts to clarify the doctrine face a significant obstacle--the goal of providing efficient and cost-effective prosecution limits the amount of time patent examiners can spend determining obviousness. As a result, examiners use the analogous arts test as a rough gauge of obviousness during prosecution. The hope was that the analogous arts test would provide an efficient, rules-based approach to obviousness. The Federal Circuit has not, however, provided much guidance on how to apply the analogous arts test, resulting in a soft rule, at best.

While this uncertainty may be tolerable during prosecution, where time-pressed examiners can be forgiven for relying on common sense among other things, courts should no longer rely on the outdated analogous arts test as a shortcut to find inventions obvious. During litigation, more time and resources can be spent on the obviousness assessment. At that time, decision makers should use a more appropriate standard, requiring assessment of common practices in the field of invention and whether the invention is obvious in light of these practices. This shift in the focus of the obviousness analysis during litigation should result in a more accurate determination of obviousness when it matters most.

CONTENTS INTRODUCTION I. THE DEVELOPMENT OF THE ANALOGOUS ARTS TEST A. Early Attempts to Provide a Bright-Line Rule B. Subjectivity in Defining the Field and the Problem Solved Blurs the Test C. Technological Advancement Adds to the Uncertainty 1. The New and Improved Person of Ordinary Skill in the Art 2. Technological Advancement and the Continued Viability of the Analogous Arts Test II. OBVIOUSNESS DURING PROSECUTION: THE ANALOGOUS ARTS Test as a Cost-Effective Tool A. Clarifying Whose Problem It Is B. Discounting Difficult-to-Access Art During Patent Prosecution to Increase Predictability III. OBVIOUSNESS DURING LITIGATION: USING A STANDARDS-BASED Approach When It Matters A. Solving the Problem to Be Solved B. Considering Difficult-to-Locate Prior Art C. Weakening the Presumption of Validity IV. OBJECTIONS TO THE PROPOSED CHANGES A. The Hobgoblin of Consistency B. The Costs of Deferring a Robust Evaluation of Obviousness 1. The "Troll" Problem 2. Companies Reluctant to Enter the Market 3. Uncertainty About Validity CONCLUSION INTRODUCTION

Courts and patent examiners face several challenges in assessing whether an invention is too obvious to deserve patent protection. (1) One of the greatest obstacles is the need to balance the benefits of certainty with the goal of rewarding innovation, which often shifts paradigms and upsets predictability. (2) These countervailing interests often arise in the classic debate about rules and standards. (3) Rules provide ex ante certainty that supports investment, while standards afford the ability to recognize creativity and innovation. (4)

In the last two decades, the United States Supreme Court has rejected many of the attempts to bring greater certainty to patent law. (5) The Court has recognized that the use of standards, rather than rules, provides the flexibility necessary to assess patentability. (6) For example, in its 2007 decision on obviousness, the Court disavowed the Federal Circuit's rigid requirement that the prior art contain a teaching, suggestion, or motivation to be combined. (7) Instead, the Court advanced a flexible standard, deciding obviousness in light of "[t]he diversity of inventive pursuits and of modern technology." (8)

Attempts to reevaluate the doctrine of obviousness in light of the rules versus standards debate should recognize the realities of prosecution and litigation. During prosecution, examiners have limited time and resources to determine obviousness. Consequently, they have attempted to use the analogous arts test as a bright-line rule to truncate the process. The doctrine of analogous art provides that examiners can only use references found to be analogous in assessing nonobviousness; they cannot consider nonanalogous art. (9) The Federal Circuit has provided little guidance on how to apply the test; it has been criticized as unpredictable--a soft rule, at best.

Perhaps worse than its subjectivity, the analogous arts test has become dated, focusing the analysis on factors that are no longer important or relevant. In many fields, invention is often a collaborative, or at least simultaneous, phenomenon. (10) Further, increased access to searchable information and processing power provides additional time to consider a wider range of prior art. (11) In light of these changes, courts and examiners have expansively defined the scope of analogous arts. (12) This is problematic because once a decision maker classifies art as analogous and therefore allowed to be considered, an obviousness finding is often a given. (13) Like the teaching, suggestion, or motivation test, the analogous arts test has allowed courts to be "cognitive misers" in assessing obviousness, limiting "the burdens of processing technical information." (14)

While subjectivity during prosecution can be tolerated given the limitations under which examiners operate, courts should no longer use the dated and unpredictable analogous arts test as a pretext for approving "complex inventions difficult for judges to understand" while excluding "less mysterious inventions a judge can understand." (15) Unlike examiners, litigants generally have more time and resources to establish obviousness during litigation. (16) Courts should make use of additional information that arises during litigation to engage in a more robust analysis of obviousness. Given that the ultimate determination of obviousness is a question of law based on underlying facts, (17) and examiners often have no formal legal training, courts are in a better position to engage in a more thorough analysis. (18)

This Article proposes that courts should ground the obviousness determination in reality, considering all prior art, regardless of whether it is analogous, and shifting the analysis to what actually happens in the innovative context. Courts will need to closely evaluate the differences between the prior art and the claimed invention in determining obviousness. (19) Rather than relying on the outmoded threshold categorization used in the analogous arts test as a shortcut to find inventions obvious, a more robust obviousness analysis will ensure the rich examination that the Supreme Court has mandated. (20) Essentially, courts should be wary of relying too heavily on the soft rule-abased approach of the analogous arts test. Instead, they should engage in the contextually based analysis of nonobviousness set forth by the Court in Graham v. John Deere Co. (21) and KSR International Co. v. Teleflex Inc., (22) which merely considers the scope and content of the prior art as one factor in a rich standard. This shift will ensure that courts consider all of the relevant factors to determine obviousness more accurately.

The two key inquiries of the analogous arts test, defining the field of the invention and the scope of the problem solved by the invention, are at the heart of its unpredictability. Part I examines the development of the analogous arts test, focusing on how subjectivity entered into a test that was supposed to provide greater predictability in assessing obviousness. Part I also discusses how transformations in the process of innovation should inform the ways in which courts and examiners define two central components of the obviousness inquiry: (1) the person having ordinary skill in the art ("PHOSITA"), which is the hypothetical being from whose perspective the question of obviousness is evaluated, and (2) the scope and content of the prior art.

Decision makers should adjust the application of the analogous arts test during prosecution and litigation to account for different constraints. Part II discusses how the analogous arts test should be modified during prosecution--examiners need to reinvigorate the PHOSITA in applying the analogous arts test and focus on the claims to provide greater certainty. Part III suggests that, during litigation, courts should limit their use of the analogous arts test and instead return to the heart of the rich contextual Graham standard, examining the differences between the claimed invention and the prior art, consistent with the Supreme Court's approach to obviousness. (23) Part IV concludes by responding to objections to the proposal. Reducing reliance on the analogous arts test during litigation should result in a better assessment of obviousness where it matters most.

1. THE DEVELOPMENT OF THE ANALOGOUS ARTS TEST

   Determining whether an invention is obvious is often the critical inquiry of patent law. (24) Section 103 of the Patent Act denies patents to inventions if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." (25) In evaluating obviousness, courts and examiners apply a broad standard using the Graham framework, which considers (1) the scope and content of the prior art, (2) differences between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) secondary considerations of nonobviousness, such as commercial success and long-felt but unmet need. (26)

   In assessing obviousness, prior art references can be combined to show that all of the elements of the claimed invention are present in the prior art. Such combination is permitted when there is a reason why a person having ordinary skill in the art would combine them. In hindsight, inventions often seem obvious, particularly where prior art references contain all the elements of the claimed invention and merely need to be combined. (27) Having a reason to combine helps prevent improper...