“Does the jurisprudence concerning ‘teaching away’—particularly the jurisprudence pertaining to whether a reference does or does not ‘teach away’—make any sense? And if not, what ought to replace it?”
“Teaching away” is a concept important to obviousness analysis under U.S. patent law. “Teaching away” basically bears upon the issue of motivation to combine elements in a manner set out by a patent claim, and such motivation is relevant to obviousness analysis but not to anticipation analysis: would one skilled in the art have had reason (or motivation) to put the known elements in the arrangement that the inventor has claimed? In a sense, “teaching away” is an anti-motivation, as it weighs against such an arrangement.
“Teaching away” is purely a creature of obviousness analysis. In anticipation analysis, “teaching” plays a role, but “teaching away” does not. Indeed, a common mistake among patent practitioners is to argue, in response to an anticipation rejection, that a cited reference “teaches away” from the claimed subject matter. What the practitioner (usually) ought to have said is that the cited reference discloses something different from the claimed subject matter. Such a careless use of terminology may have quite a serious effect: it may cause the decision-maker (court or agency) to dismiss an otherwise legitimate argument out of hand, or to give it short shrift. A simple quotation of Krippelz v. Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir. 2012), may be all that the decision-maker needs to dispose of the argument: “First and foremost, teaching away is not relevant to an anticipation analysis; it is only a component of an obviousness analysis.”
When questions are raised about legal obviousness of a claim, however, “teaching away” is an issue that is often joined and argued, both at the agency level and in the courts. Once the issue is joined, a decision-maker will typically set about to determine whether the reference really does “teach away” or not.
The question I propose to address is: Does the jurisprudence concerning “teaching away”—particularly the jurisprudence pertaining to whether a reference does or does not “teach away”—make any sense? And if not, what ought to replace it?
Does a Reference ‘Teach Away’ or Not?
In general, “teaching away” involves some criticizing, discrediting, misdirecting (that is, directing in a direction divergent from that path taken by the inventor) or otherwise discouraging of an approach, from the perspective of a person having ordinary skill in the art. E.g., Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see MPEP 2145, Part X(D). Evidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue. See, e.g., MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1264–65 (Fed. Cir. 2013).
There are many appellate decisions, not to mention a multitude of decisions of lower tribunals, discussing whether a particular reference does or does not “teach away” with regard to a particular claim. In some instances, the reference is found to “teach away”; and in some instances, it is found not to do so.
If a Reference ‘Teaches Away,’ What Is the Legal Effect?
If a party urges that a relevant reference “teaches away” from what is asserted in a claim, and if the decision-maker (the agency or a court) agrees that the reference does indeed “teach away,” that means the claim is nonobvious, right?
No, it doesn’t mean that. The Supreme Court’s KSR opinion says that “teaching away” makes nonobviousness “more likely,” not a certainty, and not presumptively the case. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), citing United States v. Adams, 383 U.S. 39, 51-52 (1966).
The Federal Circuit has gone further, observing that the prior art could include one or more references suggesting a combination, and others critiquing or otherwise discouraging the same. A reference may even refute its own “teaching away”: “Even a single reference can include both types of statements, and we have held that it is error to fail to consider the entirety of the art.” Arctic Cat Inc. v. Bombardier Recreational Products Inc., 876 F.3d 1350, 1360 (Fed. Cir. 2017).
So, if the reference is found to “teach away,” that finding is not determinative of the issue of obviousness in general, or of motivation in particular. A claim may be determined to be obvious anyway, if other evidence of substance in the record weighs in favor of such a determination.
If a Reference Does Not ‘Teach Away,’ What Is the Legal Effect?
What if the reference is determined not to “teach away”? Does that mean that some motivation to combine elements from different references must exist? Does it mean that the reference is effectively irrelevant and can safely be ignored? Does it mean that the claim is definitively obvious?
It means none of those things. “[T]the absence of a formal teaching away in one reference does not automatically establish a motivation to combine it with another reference in the same field.” Rembrandt Wireless Tech., LP v. Samsung Elecs. Co. Ltd., 853 F.3d 1370 1379-80 (Fed. Cir. 2017). “[E]ven if [the reference] does not teach away, its statements … are relevant to a finding regarding whether a skilled artisan would be motivated to combine….” Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc); accord Arctic Cat, 876 F.3d at 1360 (Fed. Cir. 2017) (citing authorities) (“As our precedent reflects, prior art need not explicitly ‘teach away’ to be relevant to the obviousness determination”).
So, to sum up, deciding whether a reference “teaches away” or not is not really determinative of anything pertaining to obviousness in general or to motivation in particular: relevant, yes; but determinative, no.
Therefore, pardon me for asking, but what is the point of the jurisprudential framework that purports to categorize references as either “teaching away” or not? The issue is not an either-or issue in the first place and deciding that a reference is one or the other does not resolve any major legal issues.
An Adjustment to Jurisprudence
Rather than spend effort to try to label a reference as “teaching away” or “not teaching away,” why not simply consider the reference for what it is worth?
Put another way, why not simply analyze a reference according to what it “teaches,” and how far “away” it goes? Put still another way, why not consider the question as a balancing test, as courts and agencies do with other fact-based issues?
Here are some considerations that may be weighed in the balance.
a) How Discouraging Is the Reference?
Discouragement is a spectrum, not a binary choice, and there is a wide range of discouragement. It is one thing to have a reference that says “You shouldn’t combine element A with element B”; and another thing for a reference to say “If you combine element A with element B, it may cause a serious explosion.” Even though the former seems to be more commanding by saying a thing “shouldn’t” be done, the latter makes mention of very dire consequences of doing the thing, perhaps making the latter example more discouraging.
Discouragement not only comes in many degrees, it comes in many forms. It may come in the form of a recommendation (something short of a prohibition, such as “It is not a good idea to combine element A with element B”), or a simple report that may be very discouraging without overtly criticizing or discrediting (“We tried combining element A with element B, and it didn’t work”), or a cautionary remark (“Combining element A with element B may be hazardous”), or a flat-out alarm (“For the love of all that is holy, don’t combine element A with element B!!”).
But how discouraging a reference may be is just one factor on the balance. Even if a reference is unmistakably discouraging to a significant (non-trivial) degree, other evidence must be taken into account. In Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1327-28 (Fed. Cir. 2017), the evidence indicated that a particular medication dissolved in the mouth would taste bitter (but not “too bitter”!). The district court had determined that, even if there had been motivation to make the medicinal formulation, the expected bitter taste (among other things) rose to the level of “teaching away,” and that effectively decided the obviousness question in favor of nonobviousness. The Federal Circuit said that the concerns, though valid, did not rise to “teaching away,” as they only pertained to whether the option was favored, and that expected bad taste would not determine whether the combination was a “still workable option.” It may be noteworthy that physicians regard a bad taste as immensely discouraging when prescribing such oral medications (especially oral medications administered to children, which was not the case in Bayer), and that a medicine a patient refuses to take might not be deemed “workable” by a physician for that reason alone. Arguably, the court trivialized some legitimate medical concerns. But the trivialization, if any, was brought about by trying to decide, as an either-or matter, whether there was “teaching away” or not.
A balancing approach would have been more straightforward: such discouragement was one consideration among many, and not overriding on the question of obviousness; so the matter ought to be sent back to the district court for re-evaluation of the strength of all of the evidence.
Where a reference is taken for what it is worth, trivialization would be less of a risk. A decision-maker applying a balancing approach would be better poised to avoid the absurdity of regarding an explicit, serious warning as little more than an offhand recommendation. Such absurdity may be well-illustrated, to comic effect, by this exchange from “Ghostbusters” (1984):
Egon: There’s something very important I forgot to tell you.
Egon: Don’t cross the streams.
Peter (puzzled): Why??
Egon: It would be bad.
Peter: I’m fuzzy on the whole good/bad thing. What do you mean, “bad”?
Egon: Try to imagine all life as you know it stopping instantaneously, and every
molecule in your body exploding at the speed of light.
Ray: Total protonic reversal.
Peter: Right. That’s “bad”?? Okay. All right, important safety tip. Thanks, Egon.
b) How Explanatory Is the Reference?
If a reference discourages a combination, does the reference say why? Does the reference point to any studies or tests? Are adverse consequences specifically mentioned? Does the reference offer a justification for its discouragement, or is the discouragement conclusory?
If reasons are given, are they technical reasons? A reference that discourages a combination principally for economic reasons (for example) deserves far less weight than a reference that discourages that combination principally for technical reasons. “[T]he fact that the two disclosed apparatus would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter fact is telling on the issue of nonobviousness.” Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); see also Telefonaktiebolaget LM Ericsson v. TCL Corp., 941 F.3d 1341, 1350 (Fed. Cir. 2019) (technological efficacy is what counts).
c) Does the Reference Know What It Is Talking About?
Credibility of evidence is always relevant to the weight that evidence ought to be given. Is the purported “teaching away” from a credible source? Is the technology of the reference close to the technology in the claims? Is the reference’s language truly pertinent to the pending question? Does the reference offer a detailed discussion or just a passing remark (or something in between)? Does the reference include troubling errors? Is the “teaching away” given short shrift or is it bolstered by other explanation and evidence and analysis?
When weighing credibility, the goal is quality, not quantity. Five crackpot references should not outweigh one opposing solid reference supported by evidence and reasoning.
d) A Few Other Considerations
The factors listed above are not exhaustive. Other things that may be taken into account are: How does the reference fit in relation to other references? Is it consistent with other references, or is it an outlier? With respect to the particular claims at issue, is the reference tangential or more on-point? How recent is the reference? What is the expert testimony as to the seriousness of the discouragement? If consequences are discussed, are the consequences serious? How serious? Do the authors of the reference have noteworthy credentials? Is there a rebuttal to the reference? Does the reference’s analysis include anything that doesn’t belong? Is the reference’s analysis missing something important? If multiple references discourage the combination, do they do so independently or does one reference cite to the other (or to the same source as the other)? And so on.
In other words, the “teaching away” issue could be evaluated, before an agency or a court, much like many other issues of fact and evidentiary weight are evaluated in general jurisprudence (not just patent law jurisprudence).
What Doesn’t Change?
If “teaching away” is integrated into a broader and more flexible balancing approach, many of the legal principles and precedents pertaining to obviousness remain unaffected. “Teaching away” is still relevant, particularly to the issue of whether one skilled in the art would have had an impetus to make the combination. If a reference speaks ill of a combination in any way or to any degree, such “teaching away” would not be determinative; but it would be evidence in favor of nonobviousness. A technical basis for “teaching away” generally ought to carry more weight than a non-technical reason. A decision-maker addressing a “teaching away” issue would still have to explain why the reference deserves to be given the weight that it is given.
Adopting a balancing approach is not a radical idea. All we have to do is set aside the notion that “teaching away” involves a binary choice.
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