The Supreme Court dislikes bright line rules, but surely they wouldn’t opt for a totality of the circumstances approach to obviousness and throw away TSM, thereby leaving some 6,000+ patent examiners to make their own determinations about the qualitative value of an invention? Isn’t that what erasing “flash of creative genius” was meant to do away with? Sadly, the Supreme Court put on display their severe lack of understanding for all to see, believing obviousness to be about common sense. But who’s common sense? What boundaries would be put in place? As is all to familiar, the Supreme Court took the “we decide, you figure it out” approach. I guess they loathe showing their work, which is probably why they aren’t mathematicians!
In any event, last weekend I was in New Hampshire at the University of New Hampshire School of Law (i.e., the former Franklin Pierce Law Center) for dedication ceremonies relating to the opening of the Franklin Pierce Center for Intellectual Property at UNH. Chief Judge Randall Rader of the United States Court of Appeals for the Federal Circuit was also in attendance. Among other things, the Chief participated in a Judges’ panel that included Judge Pauline Newman and Judge Arthur Gajarsa. It was during this panel that Rader said that he would challenge anyone to demonstrate how the Supreme Court decision in KSR v. Teleflex did anything to change the law of obviousness and how the Federal Circuit addresses the issue.
Upon hearing Rader make such a bold statement the first thought that ran through my mind was — Really? Did he just say that? I have heard from others for some time that Rader has been heard to say these or similar things relating to obviousness, but I just discounted them as one would discount the output of a game of telephone. After something gets stated, shared and restated there is typically little of the same message remaining. That had to be why Rader was reported to have said such curious things about obviousness and the impact of KSR. But then I was sitting right there listening to Chief Judge Rader say something that is provably incorrect. I’ll bite. I’ll take that challenge.
In KSR, the Supreme Court said in unequivocal terms that the Federal Circuit decision below was wrong, and that sole reliance on the teaching, suggestion and motivation test was not in line with prior Supreme Court precedents, such as Graham v. John Deere. Nevertheless, the Supreme Court did recognize that when the Court of Customs and Patent Appeals was on to something when they first announced the teaching, suggestion, or motivation test. In fact, the Court called it a “helpful insight” into determining whether a claimed invention is obvious. Notwithstanding, helpful insight or not, the Supreme Court said that the TSM test had become rigid and mandatory, making it inconsistent with Supreme Court precedents that require a more flexible approach to obviousness. Indeed, the Supreme Court was correct in that the TSM test had become rigid and mandatory, but they were wrong to view that as a bad thing. An objective standard that leads to predictability of results is a far better approach to obviousness; it prevents subjectivity.
Subjective interpretation of what is patentable is exactly why Congress sought to prevent when this language was added to § 103: “Patentability shall not be negatived by the manner in which the invention was made.” Simply stated, if you were grading the Supreme Court decision in KSR it would have received a failing grade for failure to take into account the express language of the statute they were interpreting. But I digress.
The Supreme Court explained in KSR that: “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103.” But how does one determine whether something is obvious? A good question no doubt, but unfortunately the Supreme Court did not feel like answering it. What the Court did say, however, is that “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.” So TSM is not inconsistent, but a lack of teaching, suggestion or motivation does not render an invention non-obvious. Of course, everyone knows that up until the Supreme Court decided KSR demonstrating a lack of teaching, suggestion or motivation was the way you would demonstrate non-obviousness.
Of course, the Supreme Court did note that while waiting for the issuance of the final KSR decision the Federal Circuit seemed to adopt a kinder, gentler teaching, suggestion and motivation test, one not as rigid. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F. 3d 1356, 1367 (2006) (“Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense.”); Alza Corp. v. Mylan Labs., Inc., 464 F. 3d 1286, 1291 (2006) (“There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine…”). Those rulings were not, of course, before the Supreme Court, but anyone who is being honest knows that prior to this softening by the Federal Circuit the TSM test was rigid and hardcore, which was a good thing.
Slight softening around the edges as it applies to the “suggestion” prong is hardly the transformation in the law inspired by the Supreme Court in KSR. This is confirmed by the way the United States Patent and Trademark Office has been handling obviousness determinations since that fateful decision. In fact, here are the exemplary rationales that may support a conclusion of obviousness in the aftermath of KSR.
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
See MPEP 2143 (emphasis added).
While volumes and volumes could be written about how the USPTO deals with KSR, I’ll confine my commentary to two things specifically — rationales (E) and (G). First, you should immediately recognize that only rationale (G) relates to TSM, which should suggest to everyone that (A) through (F) are different than TSM. So the first thing to factually and truthfully recognize is that there are more potential rationales for finding an invention obvious after KSR. That is hardly revolutionary; it is well accepted within the patent community.
You should also immediately recognize that one of the new rationales for finding an invention obvious is that it was “obvious to try.” There can be absolutely no dispute here. Rejections on obviousness grounds based upon the invention being “obvious to try” were strictly prohibited prior to KSR. Sadly, the Supreme Court says that if something is obvious to try then it may be considered obvious, and patent examiners, the Board of Patent Appeals and Interferences and the Federal Circuit have done a 180-degree about-face on “obvious to try.”
More specifically, relative to “obvious to try,” prior to the Supreme Court issuing its decision in KSR, the Federal Circuit explained in In re Deuel (CAFC, 1995) that an obvious to try standard was an inappropriate test for obviousness. The Court in Deuel said succinctly and directly: “Obvious to try has long been held not to constitute obviousness.” Subsequently, after the Supreme Court KSR decision then Circuit Judge Rader wrote this about “obvious to try” in the majority opinion of In re Kubin: “Insofar as Deuel implies the obviousness inquiry cannot consider that the combination of the claim’s constituent elements was ‘obvious to try,’ the Supreme Court in KSR unambiguously discredited that holding.” So it would seem that Rader well understands that something changed in the law of obviousness as a direct result of the Supreme Court’s decision in KSR.
Of course, if you read In re Kubin, you will come across Rader’s attempts to say that the Supreme Court simply agreed with Federal Circuit precedent that predated Deuel. That, however, cannot save Rader’s claims now for at least two reasons. First, it is still undeniable that after Deuel “obvious to try” was discredited and was not the law. Second, if you look at the O’Farrell case that Rader says is in line with the Supreme Court rationale it says: “this court and its predecessors have repeatedly emphasized that ‘obvious to try’ is not the standard under § 103.” The O’Farrell court went on to say that an invention that is obvious can be one that is obvious to try, stating the operative question as: “when is an invention that was obvious to try nevertheless nonobvious?” So it is clear that inventions that were obvious to try could still be nonobvious and patentable under O’Farrell. Is that what the Supreme Court said in KSR? No. That is, however, what the Federal Circuit is trying to turn the Supreme Court KSR decision into.
So why would Chief Judge Rader make such an incorrect statement about obviousness law and the impact brought to bear by KSR? I certainly hope that he doesn’t actually believe what he said because it is really a rather ridiculous statement that has absolutely no truth. Anyone who works in the patent area can tell you with great certainty that the law of obviousness is extremely different, district courts no longer apply TSM, the Patent Office has their rationales and Guidance explaining that TSM isn’t the sine qua non that is always had been and even the Federal Circuit has recognized the shift in the law in case after case.
Perhaps Rader does believe what he said, but perhaps he is just trying a smoke-and-mirrors tactic with the Supreme Court. You know, watch the shinny object swing back and forth Supreme Court Justices. Your eyes are growing sleepy. SNAP! The Federal Circuit law relative to obviousness was the same before KSR as it has been since KSR. When you awaken you will feel refreshed and far more informed. SNAP!
Truthfully, I don’t know what Chief Judge Rader was saying or why, and I sure hope he doesn’t actually believe what he said. There does not seem to be any evidence that I can find in Rader’s decisions that would suggest that he still thinks that TSM is the law of the land, and his gyrations to limit “obvious to try” suggest he well understands that what the Supreme Court said was a substantial departure from the previous law of obviousness that needs softening by the Federal Circuit. Maybe, this is just his way of say that the Federal Circuit had already migrated to the understanding of obviousness that the Supreme Court laid out in KSR. A real stretch of “the one that got away” variety if you ask me.
Regardless of why it was said, it is unfortunate that Chief Judge Rader does not seize upon the opportunity to say things the way they actually are. What is the harm in recognizing that KSR changed the landscape in a significant way, but that the Supreme Court left the Federal Circuit with the difficult task of figuring out which, if any, of their previous decisions remain viable in this brave new obviousness world.
I also see no reason why observing the reality of the situation should be avoided. Being straight forward and recognizing the path the Supreme Court took us on with respect to obviousness would only work to benefit a struggling patent system. It is hardly news that it is more difficult to demonstrate an invention is non-obvious now than it was under the TSM approach, and the KSR abomination that exalts common sense and subjectivity over objectivity and proof is just another arrow in the quiver of those who are not particularly fond of patents and the U.S. patent system.
We continue to erode the rights of the patentee, make it easier to challenge issued patents and make it harder to obtain patents in the first place. That is what the Supreme Court did in KSR, and it is what they did in eBay, and it is what Congress did with the America Invents Act. Must judges be so politically correct that they cannot expressly recognize what is plain for everyone else to see? Regardless of what Chief Judge Rader thinks, the law of obviousness has changed significantly. It does no one any good to perpetuate a myth or falsehood about the ease of demonstrating something is non-obvious.
Respectfully, I dissent.