Revisiting Obviousness

Many technology companies believe the current law on obviousness hinders product development by extending patent protection to insignificant advances. The Court of Appeals for the Federal Circuit ('CAFC') reconfigured the obviousness framework established by the Supreme Court to limit the subjectivity of obviousness determinations by adding a 'teaching-suggestion-motivation' test, which is at the heart of a case the Supreme Court has recently agreed to consider. In Teleflex, the CAFC applied the 'teaching-suggestion-motivation' test in vacating a lower court finding of obviousness. Teleflex Inc. v. KSR Intern. Co., 119 Fed.Appx. 282 (Fed. Cir. 2005). Substantially unchecked to date, this will be the first full hearing on the obviousness doctrine in more than 30 years.

In 1966, the Supreme Court introduced a multi-factored obviousness framework involving the consideration of the scope and content of the prior art which measured the differences between the patented invention and the prior art against the backdrop of the ordinary level of skill of people working in the field at the time of invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The Supreme Court realized the difficulty of recognizing non-obviousness in hindsight and allowed the weighing of secondary considerations, including economic and motivational factors as objective indicators of non-obviousness. Id. The Federal Circuit supplemented the Supreme Court's obviousness doctrine with its 'teaching-suggestion-motivation' test to protect against the entry of hindsight into the obviousness analysis in all cases ' not just those in which evidence is offered of these secondary considerations. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006).

Under the 'teaching-suggestion-motivation' test, even where all claimed elements exist in the prior art, a claim is non-obvious unless a teaching, suggestion, or motivation to combine the elements as claimed is found in the prior art. In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999). The motivation for a combination may be implied by the prior art as a whole, but there must be some specific record in the prior art to serve as a basis for such a conclusion. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Prior to Teleflex, an implicit showing of obviousness was based on what the combined teachings in analogous prior art would have suggested in view of the knowledge of a person of ordinary skill and the nature of the narrowly tailored problem to be solved. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1277 (Fed. Cir. 2004). Under this approach, prior art from within a single field could be combined if it showed motivation for the suggested change even if the motivation was different from that which gave rise to the claimed invention. On the other hand, prior art from different fields could be combined only when the motivation provided by the prior art was the same as that which gave rise to the claimed invention. In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992).

The Manual of Patent Examining Procedure ('MPEP') instructs examiners to utilize a framework drawing on both Supreme Court and Federal Circuit obviousness criteria. MPEP, ” 2141, 2143. However, as the Graham framework offers no specific alternative to this test, the 'teaching-suggestion-motivation' test has often overshadowed the Graham framework. In Teleflex, the district court, re-examining the validity of the patent, found motivation to combine elements of the prior art in the specific manner claimed even though there was no explicit statement of the motivation in the prior art. Teleflex, 298 F. Supp. 2d 581 (E.D. Mich. 2002). The district court stressed the functional equivalence of the combination of mechanical elements in the prior art to the claimed combination of mechanical and electrical elements. However, the motivation for the claimed placement of the electrical element in a mechanical system differed from the motivation for the placement of mechanical elements performing the equivalent function in the prior art. The Federal Circuit reversed the obviousness finding because there was no 'specific record' showing a 'teaching-suggestion-motivation' for a combination in the 'particular manner' claimed. Teleflex, 119 Fed.Appx. at 285, 286. According to the CAFC, an implicit suggestion to combine, even from within the field, must be driven by the same motivations for the claimed arrangement; otherwise, obviousness could be found based largely on subjective interpretations. Id.

KSR and the parties filing amicus briefs in the Teleflex case believe that, while the 'teaching-suggestion-motivation' test has eliminated the flexibility needed to filter out obvious and/or frivolous patents, it has not increased predictability and certainty in patent rights. They argue that this imbalance in the obviousness standard adversely impacts the return on investment for innovation by: 1) inviting the 'tragedy of the anti-commons' a situation where multiple patent holders each exclude others so that no one has effective use of resources; 2) encouraging defensive, large scale patenting which draws resources away from research and development; and 3) increasing the possibility of re-examinations and litigations, which creates uncertainty in the legal rights of patent holders and increases the risk exposure to potential innovators, tempering investments in research and development. Brief of Cisco Systems Inc., et al. on Petition for Writ of Certiorari to the CAFC in Teleflex, 2005 WL 1503650 at *7. While some of these detrimental effects may be mitigated by market devices such as patent pools and cross licensing, these solutions do not eliminate the negative impact of these factors: namely, increasing prices. Id. The Supreme Court is being asked to rebalance the obviousness standard to more effectively 'promote the Progress of Science and the Useful Arts,' as set forth in the Constitution. Id. at 8.

The Court upheld the Graham framework in Anderson's-Black Rock v. Pavement Co., 396 U.S. 57 (1969) and Sakraida v. Ag Pro, 425 U.S. 273 (1976), notwithstanding demands for clarification. Although this suggests the Supreme Court's unwillingness to yield on the flexibility of this framework, the denial of writs of certiorari in six obviousness-based CAFC cases prior to Teleflex suggests tacit approval of at least some application of the 'teaching-suggestion-motivation' test. The Court may seek middle ground by introducing some of the flexibility of the Graham framework into this test. However, KSR and the parties filing amicus briefs have provided no such solution, suggesting only the elimination of the 'teaching-suggestion-motivation' test.

In two subsequent cases, the CAFC has seemed to broaden the scope of evidence that may be used to establish the required teaching, suggestion, or motivation. For example, in In re Kahn, the CAFC upheld a finding of obviousness, stating that, '[i]n considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made.' 441 F.3d 977, 988 (Fed. Cir. 2006). This language was also quoted in Ormco Corp. v. Align Tech., Inc., 2006 U.S. App. LEXIS 22306 (Fed. Cir. August 30, 2006) in which the CAFC also found claims obvious despite the failure of the cited prior art to explicitly provide motivation for the claimed combination. The CAFC further stated that 'the 'motivation-teaching-suggestion' test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.' In re Kahn, 441 F.3d at 988.

The range of possible outcomes is broad and difficult to predict, but the impact on patent examination and patent disputes is likely to be significant.

Patrick Fay is a partner at the New York Intellectual Property law firm of Fay Kaplun & Marcin, LLP. He specializes in patent prosecution and analysis in the mechanical, electrical, and biomedical fields. Fay can be reached at [email protected]. Samuel Lo is an intern at the firm while working on his J.D. at Brooklyn Law School.

Many technology companies believe the current law on obviousness hinders product development by extending patent protection to insignificant advances. The Court of Appeals for the Federal Circuit ('CAFC') reconfigured the obviousness framework established by the Supreme Court to limit the subjectivity of obviousness determinations by adding a 'teaching-suggestion-motivation' test, which is at the heart of a case the Supreme Court has recently agreed to consider. In Teleflex, the CAFC applied the 'teaching-suggestion-motivation' test in vacating a lower court finding of obviousness. Teleflex Inc. v. KSR Intern. Co. , 119 Fed.Appx. 282 (Fed. Cir. 2005). Substantially unchecked to date, this will be the first full hearing on the obviousness doctrine in more than 30 years.

In 1966, the Supreme Court introduced a multi-factored obviousness framework involving the consideration of the scope and content of the prior art which measured the differences between the patented invention and the prior art against the backdrop of the ordinary level of skill of people working in the field at the time of invention. Graham v. John Deere Co ., 383 U.S. 1, 17 (1966) . The Supreme Court realized the difficulty of recognizing non-obviousness in hindsight and allowed the weighing of secondary considerations, including economic and motivational factors as objective indicators of non-obviousness. Id. The Federal Circuit supplemented the Supreme Court's obviousness doctrine with its 'teaching-suggestion-motivation' test to protect against the entry of hindsight into the obviousness analysis in all cases ' not just those in which evidence is offered of these secondary considerations. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006).

Under the 'teaching-suggestion-motivation' test, even where all claimed elements exist in the prior art, a claim is non-obvious unless a teaching, suggestion, or motivation to combine the elements as claimed is found in the prior art. In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999). The motivation for a combination may be implied by the prior art as a whole, but there must be some specific record in the prior art to serve as a basis for such a conclusion. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Prior to Teleflex, an implicit showing of obviousness was based on what the combined teachings in analogous prior art would have suggested in view of the knowledge of a person of ordinary skill and the nature of the narrowly tailored problem to be solved. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1277 (Fed. Cir. 2004). Under this approach, prior art from within a single field could be combined if it showed motivation for the suggested change even if the motivation was different from that which gave rise to the claimed invention. On the other hand, prior art from different fields could be combined only when the motivation provided by the prior art was the same as that which gave rise to the claimed invention. In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992).

The Manual of Patent Examining Procedure ('MPEP') instructs examiners to utilize a framework drawing on both Supreme Court and Federal Circuit obviousness criteria. MPEP, ” 2141, 2143. However, as the Graham framework offers no specific alternative to this test, the 'teaching-suggestion-motivation' test has often overshadowed the Graham framework. In Teleflex, the district court, re-examining the validity of the patent, found motivation to combine elements of the prior art in the specific manner claimed even though there was no explicit statement of the motivation in the prior art. Teleflex, 298 F. Supp. 2d 581 (E.D. Mich. 2002). The district court stressed the functional equivalence of the combination of mechanical elements in the prior art to the claimed combination of mechanical and electrical elements. However, the motivation for the claimed placement of the electrical element in a mechanical system differed from the motivation for the placement of mechanical elements performing the equivalent function in the prior art. The Federal Circuit reversed the obviousness finding because there was no 'specific record' showing a 'teaching-suggestion-motivation' for a combination in the 'particular manner' claimed. Teleflex, 119 Fed.Appx. at 285, 286. According to the CAFC, an implicit suggestion to combine, even from within the field, must be driven by the same motivations for the claimed arrangement; otherwise, obviousness could be found based largely on subjective interpretations. Id.

KSR and the parties filing amicus briefs in the Teleflex case believe that, while the 'teaching-suggestion-motivation' test has eliminated the flexibility needed to filter out obvious and/or frivolous patents, it has not increased predictability and certainty in patent rights. They argue that this imbalance in the obviousness standard adversely impacts the return on investment for innovation by: 1) inviting the 'tragedy of the anti-commons' a situation where multiple patent holders each exclude others so that no one has effective use of resources; 2) encouraging defensive, large scale patenting which draws resources away from research and development; and 3) increasing the possibility of re-examinations and litigations, which creates uncertainty in the legal rights of patent holders and increases the risk exposure to potential innovators, tempering investments in research and development. Brief of Cisco Systems Inc., et al. on Petition for Writ of Certiorari to the CAFC in Teleflex, 2005 WL 1503650 at *7. While some of these detrimental effects may be mitigated by market devices such as patent pools and cross licensing, these solutions do not eliminate the negative impact of these factors: namely, increasing prices. Id. The Supreme Court is being asked to rebalance the obviousness standard to more effectively 'promote the Progress of Science and the Useful Arts,' as set forth in the Constitution. Id. at 8.

The Court upheld the Graham framework in Anderson's-Black Rock v. Pavement Co ., 396 U.S. 57 (1969) and Sakraida v. Ag Pro , 425 U.S. 273 (1976), notwithstanding demands for clarification. Although this suggests the Supreme Court's unwillingness to yield on the flexibility of this framework, the denial of writs of certiorari in six obviousness-based CAFC cases prior to Teleflex suggests tacit approval of at least some application of the 'teaching-suggestion-motivation' test. The Court may seek middle ground by introducing some of the flexibility of the Graham framework into this test. However, KSR and the parties filing amicus briefs have provided no such solution, suggesting only the elimination of the 'teaching-suggestion-motivation' test.

In two subsequent cases, the CAFC has seemed to broaden the scope of evidence that may be used to establish the required teaching, suggestion, or motivation. For example, in In re Kahn, the CAFC upheld a finding of obviousness, stating that, '[i]n considering motivation in the obviousness analysis, the problem examined is not the specific problem solved by the invention but the general problem that confronted the inventor before the invention was made.' 441 F.3d 977, 988 (Fed. Cir. 2006). This language was also quoted in Ormco Corp. v. Align Tech., Inc., 2006 U.S. App. LEXIS 22306 (Fed. Cir. August 30, 2006) in which the CAFC also found claims obvious despite the failure of the cited prior art to explicitly provide motivation for the claimed combination. The CAFC further stated that 'the 'motivation-teaching-suggestion' test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.' In re Kahn, 441 F.3d at 988.

The range of possible outcomes is broad and difficult to predict, but the impact on patent examination and patent disputes is likely to be significant.

Patrick Fay is a partner at the New York Intellectual Property law firm of Fay Kaplun & Marcin, LLP. He specializes in patent prosecution and analysis in the mechanical, electrical, and biomedical fields. Fay can be reached at [email protected]. Samuel Lo is an intern at the firm while working on his J.D. at Brooklyn Law School.