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The Supreme Court will soon determine the obvious, albeit only in the realm of patent law. On Nov. 28 the Court hears oral argument in KSR International Co. v. Teleflex Inc. The issue is whether an innovation is obvious under 35 U.S.C. �103 — and thus not patentable — only when prior art contains a teaching, suggestion, or motivation that would lead a person with ordinary skill in the art right to the innovation. KSR argues that the teaching-suggestion-motivation test, applied by the U.S. Court of Appeals for the Federal Circuit, is wrong on precedent and policy grounds. Innovative industries, intellectual property professors, and institutional thinkers have weighed in with numerous amicus briefs, mainly supporting KSR. Here is what they had to say. (References and citations have been omitted.)
Historical antecedents for the current dilemma exist, and so do precedents for its resolution, that come from the late 19th century. . . . Then, as now, explosive technological, financial, and institutional change created a climate of creativity. Then, as now, complaints of overreaching and fears of gridlock abounded. Then, as now, the concept of “obviousness” was a puzzle — what was truly new and what was within the grasp of anyone skilled in the art — only some grasped it a little more quickly than others. — James V. Delong, writing for the Progress & Freedom Foundation
[T]he Federal Circuit’s mandatory test, however well intentioned, has proved to be unnecessary, misguided, and counterproductive. It should not be adopted as the exclusive method for establishing obviousness. — Paul Clement, solicitor general, writing for the United States
[T]he requirement of nonobviousness is the sole provision which fully implements the core notion of patent law that patents should be granted only for significant advances over previously known technology. Patents are awarded as “an inducement, to bring forth new knowledge.” . . . Obvious developments “will be made anyway, without the �fuel of interest’ which the patent system supplies.” — DePaul University law professor Katherine Strandburg, writing for IP law professors
[T]wo types of error are possible. One is that a patent will be denied that should have been granted; the other, that a patent is granted when anyone adequately skilled in the field, confronted with the problem solved by the novelty, would have come up with the same idea. There is a gray area where the outcome is not completely certain. It is fair to say that the Federal Circuit’s test, which requires, in essence, documented and precise proof of “teaching-suggestion-motivation,” defines the lower bound of that gray area. That is, any novelty that fails this test is obvious within the meaning of the patent law, beyond doubt, because prior practitioners already pointed it out. However, some innovations might still be properly classified as obvious within the meaning of the statute even though prior writers had not pointed them out with precision. — Delong
By imposing its own “teaching-suggestion-motivation” test . . . , the Federal Circuit has permitted claims drawn specifically to what this [Supreme] Court has prohibited — a combination of two old elements with the same function as the individual elements. [For example, i]n Knoll [Pharmaceuticals Co. v. Teva Pharmaceuticals USA Inc. (2004)], the Federal Circuit reversed the district court’s grant of summary judgment of invalidity based on obviousness. The invention was for an analgesic (pain-relieving) composition comprising hydrocodone (Vicodin) and ibuprofen, two well-known analgesics. The Federal Circuit acknowledged that such a combination was known in the prior art, but nevertheless reversed the district court’s finding of invalidity because no reference specifically taught that combining these two well-known pain killers would produce a combination having pain-killing properties. — Barbara Jones of the AARP Foundation, writing for AARP, Patients Not Patents Inc., and the Public Patent Foundation
Even more importantly, the court of appeals’ view disregards the ability of a “person of ordinary skill in the art” to rearrange old elements without being told, merely by exercising common sense, especially if the innovative step is a trifling one. . . . For example, in one case, the Federal Circuit reversed a determination by the [Patent and Trademark Office] that a claimed invention of a lawn trash bag having a Halloween pumpkin design was obvious because the prior art references — describing conventional trash bags and methods for making “paper bag pumpkins” — did not specifically suggest the combination of those references. Although common sense dictates that such a combination is obvious, the Federal Circuit ruled that the PTO could not rely on common sense in determining that the decorated trash bags were not patentable. — Andrew Pincus of Mayer, Brown, Rowe & Maw, writing for the Business Software Alliance
[T]he Federal Circuit does not acknowledge that ordinary skill encompasses more than knowledge. The court explicitly equates “the level of skill in the art” with “understandings and knowledge.” This equation ignores the part of ordinary skill comprising routine experimentation and application of ordinary tools, methods, and problem-solving abilities. . . . . . . As Professor [Rebecca] Eisenberg has noted, “[a]ctive practitioners of a technology bring more to a problem than may be found in written prior art, including training, judgment, intuition, and tacit knowledge acquired through field experience.” — Strandburg
Common knowledge is not often the subject of detailed written exposition, making it difficult and costly for the patent examiner to find evidence of common knowledge to meet the Federal Circuit’s suggestion test. As the National Academy of Sciences recently explained in its report on the patent system: “[S]cientists, artisans, and creative people generally speaking strive to publish non-obvious information. So if it is obvious to those of skill in the art to combine references, it is unlikely that they will publish such information.” — Strandburg
The flexibility in assessing claimed inventions for obviousness that this Court prescribed in Graham [v. John Deere Co. (1966)] is a sensible construction of Section 103(a) for the additional reason that the obviousness inquiry must be structured to produce equivalent results in all fields of scientific and technical knowledge. Even if there were a convincing argument that the content of the prior art could somehow serve as a sure barometer of obviousness in mature fields (and we believe there is not), such an argument could only rest on the view that, because of the sheer abundance of the prior art, the absence of a teaching, suggestion, or motivation permits an inference of nonobviousness. That reasoning is wholly inapplicable to fields such as computer hardware and software, in which the prior art less visibly illuminates the ability of the person of ordinary skill in the art to combine prior-art references. — Pincus
In many high-technology fields . . . the Federal Circuit’s paradigm of an inventor drawing upon years of printed journal articles and prior patents simply does not exist. “[P]atent law has lost its primarily mechanical character, branching out into biotechnology, semiconductors, computer hardware and software, electronics, and telecommunications.” In many of these fields, innovation is ever more rapid, and business cycles are increasingly short. Electronic devices such as personal computers and cellular phones (and the software that makes them function) that were cutting edge are quickly obsolete. New developments are disseminated at speeds that outstrip conventional documentation. There is no need in these fields for developed bodies of published literature that would spell out teachings, motivations, or suggestions in the manner required by the Federal Circuit’s test. — Kathleen Sullivan of Quinn Emanuel Urquhart Oliver & Hedges, writing for Time Warner Inc., IAC/Interactive Corp., and Viacom Inc.
Computer software is another fast-developing area that is ill-suited to the Federal Circuit’s rigid test for proving obviousness. . . . . . . [S]oftware evolves rapidly. Microsoft introduced its first disk operating system (MS-DOS) only in 1980. Windows, the graphical interface that operates on top of DOS, was introduced in 1983, and since then it has gone through four major transformations as well as numerous minor revisions. The evolution of the Linux operating system is even more rapid because it is “open source” code that is constantly modified by its users, who share their innovations under a general public license. Here again, the technology moves too quickly for published references to keep up. Finally, software innovations are typically not well documented. The software industry does not rely upon systems of formal documentation used in other technical fields. Like their colleagues in the Internet field, software engineers have little incentive or ability to publish their knowledge in scholarly journals. What does get published tends to be theoretical, rather than practical. Moreover, good computer programmers minimize comments elaborating on the innovations in their programs. In fact, they believe that it is counterproductive to explain trivial or obvious improvements in their software. — Sullivan
The inevitable effect of the Federal Circuit’s obviousness standard is to “permit the patenting of extremely trivial innovations,” merely because the documentation necessary to satisfy the Federal Circuit’s test is absent. In fact, the Federal Trade Commission has discerned “a trend since the advent of the Federal Circuit toward reducing the size of the step required for patentability — that is, reducing the rigor of the nonobviousness standard.” — Pincus
[T]he Federal Circuit’s rigid test devalues genuine inventions. The problem of incremental, non-inventive follow-on developments illustrates this point: After investing considerable time and money in research, an inventor might make genuine innovation in an emerging technology, patent that innovation, and start marketing that innovation under the patent. If others are able to obtain patents for mundane or trivial improvements to this innovation that would be obvious under a flexible test, however, the inventor will not be able to fully realize the value of an invention. The follow-on patents will block the inventor from making workmanlike improvements to the invention. And the inventor will be unable to realize the patent’s full value because licenses for the follow-on patents must be obtained in order to practice the original invention fully. The Federal Circuit’s test, moreover, encourages innovators to take wasteful steps to avoid these problems, further undermining innovation. To protect their inventions where it is too difficult to show that follow-on inventions are obvious (and the Patent Office, therefore, cannot be trusted to reject patents for trivial improvements adjacent to true innovations), inventors have an incentive to seek patents on any incremental improvements that they desire to make and to ensure that every obvious improvement (whether of commercial interest or not) is published. Thus, prudent inventors are forced to divert time and resources away from productive activities into duplicative patent applications or wasteful submissions to the Journal of Obvious Suggestions in their area. — Sullivan
The Federal Circuit’s test says, in essence, that all doubtful cases, all cases in the gray area, will be decided in favor of patentability. In other words, it has decided to run zero risk of rejecting a meritorious claim even at the cost of accepting numerous nonmeritorious patents. This is not sensible doctrine. Nor is it in accord with the statutory language or the precedents of this Court. — Delong
[The motivation-suggestion-teaching] test evolved over the Federal Circuit’s lifetime as a means for addressing a serious impediment to objective evaluation of obviousness — namely, the interjection of hindsight into the calculus by the evaluator. “We �cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.’ ” By invoking hindsight, evaluators are prone to the notorious pitfall of declaring true inventions merely unpatentable combinations of old elements. — Blair Taylor of Venable, writing for the Bar Association of the District of Columbia’s Patent, Trademark & Copyright Section
The Federal Circuit’s rigid test underestimates the capacity of courts and the PTO to avoid the influence of hindsight. Retrospective analysis is not unique to patent law, but regularly arises in a wide variety of contexts, including the determination of the competency of counsel in criminal proceedings. In those situations, as in Graham, the Court has consistently recognized that decision makers can avoid the improper influence of hindsight by maintaining conscious awareness of its potentially distorting influence in the decision-making process. Courts routinely find, for example, an absence of probable cause in cases in which the police in fact find substantial quantities of contraband in a search. There is no reason to think that courts in patent cases cannot be similarly discerning. — Clement
While the motivation-suggestion-teaching test may be used as an initial test . . . , this Court could craft other secondary tests that by themselves, or in combination with motivation-suggestion-teaching test, address obviousness issues in fields not amenable to explicit or implicit suggestions for combining prior art. An approach that includes casting a wider, more inclusive evidentiary net, without sacrificing established standards, should be taken to avoid tossing the proverbial baby out with the bath water. — Taylor
Historians suggest that the Court hold that the obviousness inquiry is designed to prohibit patents on inventions that could have been made by those skilled in the art within a reasonable period of time (following the time that the invention at issue was actually made) and within reasonable budgetary constraints. Historians believe that this standard is implicit in the Court’s holding in Hotchkiss [v. Greenwood (1851)] that an invention is unpatentable if it requires “no more ingenuity or skill . . . to construct . . . than that possessed by an ordinary mechanic acquainted with the business.” Some threshold of time and effort is required to distinguish patentable from unpatentable inventions. — Joshua Sarnoff of the Glushko-Samuelson Intellectual Property Law Clinic at American University’s Washington College of Law, writing for economists and legal historians
This Court should reiterate that, when the PTO applies its technical expertise and reasonably articulates why a patent claim is obvious under Section 103(a), that determination is entitled to deference reflecting “the primacy of the PTO in ensuring that the claims allowed cover only subject matter that is properly patentable.” The obviousness inquiry should not require the PTO to conduct an unnecessary search for evidence showing a particular suggestion, teaching, or motivation to make insubstantially innovative combinations of elements that are known in the prior art. The PTO should instead be allowed to bring to bear its full expertise — including its reckoning of the basic knowledge and common sense possessed by persons in particular fields of endeavor — when making the predictive judgment whether an invention would have been obvious to a person of ordinary skill in the art. The patent applicant should bear the burden of proving [the PTO] wrong. — Clement

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