John Haynes
Rishi Suthar
Companies accused of patent infringement often ask “How did they get a patent on that? It is so obvious.” The reality is that most modern patents are nothing more than a combination of known elements assembled in a novel—or not so novel—manner. The challenge for accused infringers is how to prove that the claimed combination of elements was known to those skilled in the art. The “smoking gun” in such cases is a single prior reference that discloses the exact same combination, but such smoking guns are all too rare. Accused infringers are thus often forced to argue that the patented combination would have been obvious to others using only the ordinary skill of those in the field.
Practitioners generally agree that since the U.S. Supreme Court’s ruling in KSR v. Teleflex (2007), proving obviousness has become easier, because KSR eliminated any rigid formula for proving obviousness and placed renewed emphasis on the problems being solved and the use of plain common sense. KSR’s looser framework, however, can also create a trap for the unwary who fail to gather the proof needed to satisfy even the looser standards set forth in KSR.
Awareness of these traps, and how to avoid them, is essential to the successful litigant.
Common Pitfalls in Proving Obviousness
1. More is not always better: Accused infringers may spend hundreds of thousands of dollars creating claim charts that map out invalidity theories across dozens of prior art references. These charts often focus on finding each individual element of a combination in as many places as possible, but rarely focus on the reason why a “skilled artisan” (i.e., a person having ordinary skill in the art) would want to put those separate pieces together. Proving obviousness is like putting together a jigsaw puzzle: You certainly need all the pieces, but if you do not put the pieces together the jury will never understand the full picture.
2. Legal rhetoric is no substitute for competent evidence: Attorneys often make the mistake of using legal arguments as the glue to hold their puzzle together. Bald assertions that a person skilled in the art would know how to fit the puzzle together, however, do little to explain what the puzzle should look like or why the skilled artisan would know exactly where the pieces fit.
A recent Federal Circuit decision, ActiveVideo v. Verizon (2012), provides a good example of how lawyer rhetoric is rarely sufficient to demonstrate obviousness. In ActiveVideo, the defendant’s expert testified that each of the claim elements were “modular” and could be combined to achieve the claimed combination because of efficiency and market demand. The expert’s assertions were rejected, however, because he failed to explain how the “modular” puzzle pieces fit together in the exercise of ordinary skill.
3. Common sense must be common knowledge: Although KSR placed renewed emphasis on the use of common sense to solve ordinary problems, it did not sanction the use of “common sense” to plug holes absent proof that the skilled artisan was aware of both the problem and the common sense solution. Litigants need to frame the problem facing the skilled artisan and then explain how that artisan would use their ordinary skill to solve the problem in the same manner as is claimed in the patent.
This requires more than lawyers’ arguments about “common sense” dictating the claimed combination. It requires a careful analysis of how the skilled artisan would have approached the problem, the tools available to solve it, and the reasons why solving it would have resulted in the claimed combination. In the jigsaw puzzle analogy, you need the pieces, the picture on the box, and the knowledge that putting the pieces together will yield that picture.
How to Avoid the Pitfalls
As the Supreme Court stated in KSR, the obviousness analysis is a flexible one. In other words, the approach is highly dependent on the technology at issue and the problems the patent seeks to address. Regardless of the approach, however, following a few simple guidelines will go a long way towards a successful defense.
1. Don’t forget the basics: The Supreme Court provided the framework for proving obviousness in the seminal case of Graham v. John Deere (1966). KSR did not lessen the importance of this framework, and litigants should always begin an obviousness analysis by outlining the proof needed to prevail on each element of that framework. This requires not only developing a clear picture of the prior art, but also a clear picture of the industry at issue, market pressures, and secondary considerations like long-felt need and commercial success.
2. Analyze the invention as a whole: Most inventions are comprised of combinations of known elements, so proving obviousness requires more than finding each piece of the puzzle. Care must be taken to explain, in detail, the modification to the prior art as a whole.
Obviousness in some cases, such as in KSR or Stone Strong v. Del Zotto (2011), may be satisfied by explaining the reasonable expectation of success of combining the prior art’s known elements, but more complex inventions may require expert explanation of why one skilled in the art would have been inclined to combine the teachings in seemingly unrelated disciplines. Although composing an owner’s manual is unnecessary, enough detail should be presented so that it is clear that one skilled in the art would recognize and perform the modifications to the prior art with anticipated results.
3. Always identify a convincing reason why the specific combination of known features claimed in the patent would have been obvious to the skilled artisan: While the Supreme Court acknowledged in KSR that the prior art need not explicitly provide a motivation to combine prior art features, it did not eliminate the requirement that the skilled artisan have a reason to combine prior art features in the manner claimed. In KSR, the reasons to combine stemmed from market pressures of transitioning from cable-actuated throttles to drive-by-wire systems, in connection with common problems existing in the prior art. Motivation may also be shown through “common sense” or by demonstrating that the claimed combination would have been “obvious to try” in order to solve a particular problem. To prevail using such motivations, litigants must do more than simply repeat the language of KSR.
As the Federal Circuit recently explained in In re Novel (2012), succeeding on a common sense theory requires the accused infringer to provide a rational explanation as to why the skilled artisan would consider a specific combination a product of common sense. Similarly, when relying on an “obvious to try” rationale, care must be taken to explain precisely why there are only a finite number of solutions to the problem at hand, as well as why the particular modification to the prior art yields nothing more than expected results. See Perfect Web v. InfoUSA (2009). Even though conclusory statements in these scenarios are tempting, they will almost guarantee an unsuccessful defense.
4. Develop a solid evidentiary record for each aspect of the obviousness inquiry: This requires forming obviousness theories early, using the discovery process to develop those theories, and then carefully funneling the evidence to support them through fact and expert witnesses.
While obviousness determinations often turn on the sufficiency of an expert’s opinion, successful litigants should not assume that experts alone will carry the day. It is just as important to gather literature and fact-witness testimony that directly or indirectly supports the obviousness defense. Litigants should seek to introduce testimony from knowledgeable individuals in the industry to establish known problems and known solutions in the prior art, as well as reasons why it is desirable to combine those solutions in the manner recited in the claims of the patent. Such evidence will not only bolster the expert’s opinion, but may also help preserve important invalidity defenses in the event the fact finder does not give the expert’s opinions much weight, or in less complex cases, no weight at all. See, e.g., Stone Strong v. Del Zotto (2011).
While no set blueprint exists for guaranteeing a perfect obviousness combination, the main point to remember is that proving obviousness requires proof, and a lawyer’s argument or conclusory expert testimony is not sufficient. Careful litigants form their obviousness theories early in the case and develop the factual record to support those theories. Keeping each of the above points in mind throughout litigation will put you on the right track to avoiding the usual pitfalls and presenting a convincing invalidity defense.
John Haynes is a partner in Alston & Bird’s Intellectual Property Litigation Group and has experience litigating a wide variety of disputes involving complex technology and intellectual property. He specializes in complex patent cases involving electronics, wireless communications, computer software, and networking. Rishi Suthar is an associate in the firm’s Intellectual Property Litigation Group. Prior to attending law school, Rishi worked as a patent examiner for the U.S. Patent and Trademark Office.
