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 novelor not so novelmanner. 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 Courts 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. KSRs 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 defendants 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 experts 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.
