William & Mary Law Review
`
`Volume 50 | Issue 3
`
`Article 5
`
`A Realistic Approach to the Obviousness of
`Inventions
`
`Daralyn J. Durie
`
`Mark A. Lemley
`
`Repository Citation
`Daralyn J. Durie and Mark A. Lemley, A Realistic Approach to the Obviousness of Inventions, 50 Wm. &
`Mary L. Rev. 989 (2008), http://scholarship.law.wm.edu/wmlr/vol50/iss3/5
`
`Copyright c 2008 by the authors. This article is brought to you by the William & Mary Law School Scholarship Repository.
`http://scholarship.law.wm.edu/wmlr
`
`Exhibit 1062
`ARGENTUM
`IPR2017-01053
`
`000001
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`

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`A REALISTIC APPROACH TO THE OBVIOUSNESS OF
`INVENTIONSt
`
`DARALYN J. DURIE* & MARK A. LEMLEY**
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................
`I. OBVIOUSNESS, BEFORE AND AFTER KSR .................
`A. The Prior Art and the Role of the
`........................
`PHOSITA in Evaluating It
`B. The Problem of Combining References ...............
`C. Secondary Considerations .........................
`D. KSR and the Standard of Review ...................
`II. PROCEDURAL EFFECTS OF KSR .......................
`A. The Increasing Role of the PHOSITA ................
`B. Patentee Reliance on Secondary Considerations ......
`C. Applying the New Rules: Procedural Problems .......
`1.The PTO .....................................
`2. Th e Courts ...................................
`III. TAKING REALISM SERIOUSLY
`.......................
`.......................................
`CONCLUSION
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`990
`992
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`992
`994
`995
`998
`999
`999
`1004
`1007
`1008
`1013
`1015
`1019
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`t 0 2008 Daralyn J. Durie & Mark A. Lemley.
`* Partner, Keker & Van Nest LLP, San Francisco, CA.
`** William H. Neukom Professor, Stanford Law School; Of Counsel, Keker & Van Nest
`LLP.
`We thank Kevin Collins, Terry Fisher, Rose Hagan, Tim Holbrook, Greg Mandel, Joe
`Miller, Arti Rai, Josh Sarnoff, Katherine Strandburg, and participants in workshops at the
`Advanced Patent Law Institute, the University of Washington School of Law, and the Works
`in Progress/Intellectual Property conference for discussions of the topic or comments on a
`prior draft.
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`INTRODUCTION
`
`Obviousness is the ultimate condition of patentability.' The
`nonobviousness requirement-that inventions must, to qualify for
`a patent, be not simply new but sufficiently different that they
`would not have been obvious to the ordinarily skilled scientist-is
`in dispute in almost every case, and it is responsible for invalidating
`more patents than any other patent rule.2 It is also perhaps the
`most vexing doctrine to apply, in significant part because the
`ultimate question of obviousness has an "I know it when I see it"
`quality that is hard to break down into objective elements. That
`hasn't stopped the Federal Circuit from trying to find those objective
`elements. In the last quarter-century, the court has created a
`variety of rules designed to cabin the obviousness inquiry: an
`invention can't be obvious unless there is a teaching, suggestion, or
`motivation to combine prior art elements or modify existing
`technology;' an invention can't be obvious merely because it is
`obvious to try;4 and so forth.
`In its decision last year in KSR International Co. v. Teleflex Inc.,'
`the Supreme Court rejected the use of "rigid" rules to decide
`obviousness cases.6 In its place, the Court offered not a new test, but
`a constellation of factors designed to discern whether the person
`having ordinary skill in the art (the PHOSITA)7 would likely think
`
`1. See generally NON-OBVIOUSNESS: THE ULTIMATE CONDITION OF PATENTABILITY (John
`F. Witherspoon ed., 1980).
`2. See John R. Allison & Mark A. Lemley, Empirical Evidence on the Validity of Litigated
`Patents, 26 AIPLA Q.J. 185, 209 tbl.2 (1998).
`3. See, e.g., In re Sang-Su Lee, 277 F.3d 1338, 1343 (Fed. Cir. 2002); In re Dembiczak,
`175 F.3d 994, 999 (Fed. Cir. 1999); Lindemann Maschinenfabrik GmbH v. Am. Hoist &
`Derrick Co., 730 F.2d 1452, 1462 (Fed. Cir. 1984).
`4. See, e.g., In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988).
`5. 127 S. Ct. 1727 (2007).
`6. Id. at 1739.
`7. The statute refers to "a person having ordinary skill in the art ...." 35 U.S.C. § 103(a)
`(2000). On the PHOSITA abbreviation, see, for example, John 0. Tresansky, PHOSITA - The
`Ubiquitous and Enigmatic Person in Patent Law, 73 J. PAT. & TRADEMARK OFF. SOC'y 37
`(1991); see also ROBERT L. HARMON, PATENTS AND THE FEDERAL CIRCUIT § 4.3 (5th ed. 2001);
`Joseph P. Meara, Note, Just Ww is the Person Having Ordinary Skill in the Art? Patent Law's
`Mysterious Personage, 77 WASH. L. REV. 267 (2002). The first known use of the term
`PHOSITA appears to be in Cyril A. Soans, Some Absurd Presumptions in Patent Cases, 10
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`to make the patented invention.8 In short, the Court sought to take
`a realistic approach to obviousness-to make the obviousness
`determination less of a legal construct and to put more weight on
`the factual determination of what scientists would actually think
`and do about a particular invention.
`As a general principle, this realistic focus is a laudable one. The
`too-rigid application of rules designed to prevent hindsight bias had
`led to a number of results that defied common sense, including the
`outcome of KSR itself in the Federal Circuit. But the realistic
`approach has some (dare we say it) nonobvious implications for
`evidence and procedure, both in the Patent and Trademark Office
`(PTO) and in the courts. The greater focus on the characteristics of
`individual cases suggests a need for evidence and factual
`determinations, but the legal and structural framework under
`which obviousness is tested means that it is difficult to make and
`review those determinations. The realistic approach is also
`incomplete, because the obviousness inquiry depends critically on
`the counterfactual assumption that the PHOSITA, while ordinarily
`skilled, is perfectly informed about the prior art. If we are to take a
`realistic approach to obviousness, we should make it a consistent
`approach, so the ultimate obviousness determination reflects what
`scientists in the field would actually think. So far, despite KSR, it
`does not. The result of taking the realistic approach seriously may
`be-to the surprise of many-a law of obviousness that is in some
`respects more, not less, favorable to patentability than the standard
`it displaced.
`In Part I, we review the law of obviousness and the likely
`substantive effects of the KSR decision. In Part II, we explore the
`less-noticed procedural effects of KSR, as both the PTO and the
`courts try to inject realism and evidence into a legal framework that
`is not designed to evaluate them. Finally, in Part III, we discuss the
`ways in which the obviousness inquiry still uses a legal construct
`rather than a realistic inquiry into what the PHOSITA would think
`of an invention. We argue there that obviousness should be
`reconceived as a truly realistic inquiry, one that focuses on what the
`
`IDEA 433, 438 (1966).
`8. KSR, 127 S. Ct. at 1734, 1739.
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`PHOSITA and the marketplace actually know and believe, not what
`they might believe in a hypothetical, counterfactual world.
`
`I. OBVIOUSNESS, BEFORE AND AFTER KSR
`
`In Graham v. John Deere Co.,9 the Supreme Court set out the
`framework pursuant to which courts should evaluate whether an
`invention is obvious. The Court determined that the ultimate
`question of patent validity is an issue of law that depends on certain
`underlying facts. It identified the factual inquiries pertinent to a
`determination of obviousness as: (1) the scope and content of the
`prior art; (2) the differences between the prior art and the claims
`at issue; and (3) the level of ordinary skill in the art.10 In addition,
`the Court noted the importance of secondary considerations of non-
`obviousness derived from the circumstances surrounding the
`putative invention."
`
`A. The Prior Art and the Role of the PHOSITA in Evaluating It
`
`Obviousness is determined with reference to whether a purported
`invention would have been obvious to a PHOSITA; a person who
`"thinks along the line of conventional wisdom in the art and is not
`one who undertakes to innovate, whether by patient, and often
`expensive, systematic research or by extraordinary insights ...."12 In
`Environmental Designs, Ltd. v. Union Oil Co. of California,3 the
`Federal Circuit set forth the following factors for defining a
`PHOSITA: (1) the inventor's educational background; (2) the kinds
`of problems confronted in the art; (3) solutions found previously; (4)
`the speed of innovation in the art; (5) the level of sophistication of
`the technology; and (6) the educational level of workers in the
`field.' 4 The court cautioned that not all factors will be relevant in
`every case.15 And, although one of the listed factors is the inventor's
`
`9. 383 U.S. 1, 17 (1966).
`10. Id.
`11. Id. at 17-18.
`12. Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).
`13. 713 F.2d 693 (Fed. Cir. 1983).
`14. Id. at 696.
`15. Id.
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`educational background, the court has also recognized that the
`PHOSITA cannot be equated with the inventor, because the
`inventor is presumptively a person of extraordinary insight or
`skill.'6
`Although the PHOSITA is described as a "person,"17 the
`PHOSITA is a hypothetical construct in at least two respects. First,
`the PHOSITA is presumed to be familiar with all of the art in the
`area of his or her field, even if that art was secret and would not in
`fact have been known. 8 Second, the PHOSITA need not be a single
`person; instead, the PHOSITA may be a group of people possessing
`skills not typically aggregated in any given human being.'9 Of
`
`16. Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454 (Fed. Cir. 1984). But
`see Daiichi Sankyo v. Apotex, 501 F.3d 1254, 1256 (Fed. Cir. 2007) (relying on educational
`level of the inventor in determining the level of skill in the art); cf. Ruiz v. A.B. Chance Co.,
`234 F.3d 654, 666-67 (Fed. Cir. 2000) (listing factors, but omitting educational background of
`inventor). Using the inventor's own background to define a PHOSITA risks making the
`inquiry recursive by defining the PHOSITA as someone in possession of the skills or insights
`necessary to come up with the invention. Thus, for example, in Sud-Chemie Inc. v. CSP Tech8.
`Inc., No. 4:03-CV-003-SEB-WGH, 2006 WL 2246404, at *37 (S.D. Ind. Aug. 4,2006), the court
`concluded that the PHOSITA was a Ph.D.-level scientist based in part on testimony that the
`technology described in the patents in suit had not been contained in the scientific literature
`prior to the patents' issuance and thus it would have required a Ph.D.-level scientist to
`address the concepts contained in the patents. Taking this reasoning to its logical extreme,
`if one defines the PHOSITA as someone who would already have grasped the contents of a
`patent, then many inventions would become obvious.
`17. 35 U.S.C. § 103(a) (2000).
`18. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) ("[The law] presumes that all prior
`art references in the field of the invention are available to this hypothetical skilled artisan.");
`Custom Accessories, Inc. v. Jeffrey-Allan Indus., 807 F.2d 955, 962 (Fed. Cir. 1986) ("The
`person of ordinary skill is a hypothetical person who is presumed to be aware of all the
`pertinent prior art.").
`19. This principle is relatively well established with respect to the definition of a
`PHOSITA for purposes of enablement under 35 U.S.C. § 112. See Enzo Biochem, Inc. v.
`Calgene, Inc., 188 F.3d 1362, 1373-74 (Fed. Cir. 1999); In re Brown, 477 F.2d 946, 950
`(C.C.P.A. 1973); In re Naquin, 398 F.2d 863, 866 (C.C.P.A. 1968); Technicon Instruments
`Corp. v. Alpkem Corp., 664 F. Supp. 1558, 1578 (D. Or. 1986) ("If two distinct technologies are
`relevant to an invention, then the disclosure will be adequate if a person of ordinary skill in
`each of the two technologies could practice the invention from the disclosures."). The leading
`treatise argues that "it would seem ... the 'person skilled in the art' within the meaning of
`Section 112 is the same as the 'person having ordinary skill in the art' within the meaning of
`Section 103 on non-obviousness," 3 DONALD S. CHISUM, CHISUM ON PATENTS § 7.03[2][b]
`(2007), though one of the authors has argued otherwise. See Dan L. Burk & Mark A. Lemley,
`Is Patent Law Technology-Specific?, 17 BERKELEY TECH. L.J. 1155, 1189-90 (2002). Thus,
`although there is a dearth of case law on whether the PHOSITA may be a group of people for
`purposes of obviousness, it seems likely that the Federal Circuit would (at least pre-KSR)
`endorse that result.
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`course, no actual human being would ever meet this standard. So,
`under traditional obviousness jurisprudence, obviousness is to be
`measured not with respect to what actual skilled people in the field
`would know or be motivated to do based on the prior art actually
`known to them. Instead, obviousness is to be measured with
`reference to a hypothetical construct that virtually by definition
`could not exist. And even that construct is only sketchily defined. It
`is rare, for instance, that parties spend much time fighting about
`who the PHOSITA is, or do more than sketch out a resume with
`educational background and years of experience. The PHOSITA
`seems curiously disconnected from the inquiry he or she is supposed
`to perform.
`
`B. The Problem of Combining References
`
`Most inventions do not spring ab initio from the mind of the
`inventor. They build on, improve, or combine things already known
`in the world in new and unforeseen ways. Inventions that take the
`form of a combination of existing ideas present particular problems
`for obviousness analysis. All the elements of the invention are
`present in the prior art, but they are not present in the same place
`in the prior art. Would the PHOSITA have thought to combine these
`two different prior art ideas to make the patented invention? Or is
`judicial combination of prior art references selected for the court by
`the defendant an example of hindsight bias?2"
`Before KSR, the Federal Circuit combated the risk of hindsight
`bias in these combination cases by requiring that a party
`challenging obviousness prove that the prior art disclosed some
`teaching, suggestion, or motivation to combine the references. 21
`Decisions split on the question of whether that suggestion had to be
`present in the prior art references themselves, or whether a
`motivation could be implicit in the knowledge or goals of the
`
`20. See Gregory N. Mandel, Patently Non-Obvious: Empirical Demonstration that the
`Hindsight Bias Renders Patent Decisions Irrational, 67 OHIO ST. L.J. 1391 (2006) [hereinafter
`Patently Non-Obvious 1]; Gregory N. Mandel, Patently Non-Obvious II: Experimental Study
`on the Hindsight Issue Before the Supreme Court in KSR v. Teleflex, 9 YALE J.L. & TECH. 1
`(2007) [hereinafter Patently Non-Obvious Il).
`21. See In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).
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`PHOSITA.22 It was this teaching-suggestion-motivation, or TSM,
`test that led the Federal Circuit to conclude that the adjustable
`electronic sensor gasoline pedal at issue in KSR was nonobvious,
`even though both adjustable accelerator pedals and electronic
`sensors on (nonadjustable) accelerator pedals were known in the
`prior art.23
`
`C. Secondary Considerations
`
`The use of a hypothetical person to decide what scientists in the
`real world could do is worrisome. In Graham, the Supreme Court
`noted that economic evidence of how the invention was actually
`treated in the real world "may have relevancy" to the obviousness
`inquiry.24 The Court identified "commercial success, long felt but
`unsolved needs, failure of others, etc." as relevant secondary indicia
`of the nonobviousness of an invention.25 Other cases have elaborated
`upon the "etc." as including the licensing of the patent,26 initial
`skepticism by others in the field,27 praise,2" independent simul-
`taneous invention by others,29 and copying.3" In order to rely on
`evidence of these secondary considerations, there must be a nexus
`between the factor and the patented invention.31 Thus, for example,
`
`22. Compare In re Sang-Su Lee, 277 F.3d 1338, 1343 (Fed. Cir. 2002) with In re Kahn, 441
`F.3d 977, 987-88 (Fed. Cir. 2006).
`23. See Teleflex, Inc. v. KSR Int'l Co., No. 04-1152, 2005 WL 23377 (Fed. Cir. Jan. 6,
`2005).
`24. Graham v. John Deere Co., 383 U.S. 1, 18 (1966).
`25. Id. at 17.
`26. Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopedics, Inc., 976 F.2d 1559, 1575
`(Fed. Cir. 1992).
`27. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1368 (Fed. Cir.
`2004) (finding evidence that "skilled artisans were initially skeptical about the invention"
`relevant to nonobviousness).
`28. Vulcan Eng'g Co. v. Fata Aluminium, Inc., 278 F.3d 1366, 1373 (Fed. Cir. 2002)
`("Appreciation by contemporaries skilled in the field of the invention is a useful indicator of
`[nonobviousness].").
`29. Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1379 (Fed. Cir. 2000) (evidence
`of near-simultaneous invention tended to prove obviousness).
`30. Akamai Techs., Inc. v. Cable & Wireless Servs., Inc., 344 F.3d 1186, 1196 (Fed. Cir.
`2003) (providing evidence that an accused infringer's copying of the patentee's invention is
`"relevant to an obviousness determination").
`31. See, e.g., In re DBC, No. 2008-1120, 2008 WL 4764340 (Fed. Cir. Nov. 3, 2008)
`(rejecting evidence of commercial success because it could have been attributable to superior
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`a defendant seeking to rely on evidence that an invention is
`commercially successful must show that its commercial success is
`a function of the patented feature, and not some other reason.32 At
`the simplest level, this nexus requirement can be satisfied if the
`scope of the claims and the patented product are coextensive, in
`which case the court will generally presume that the commercial
`success is a function of the patented invention." The inquiry is more
`complex, however, if the claimed invention is only part of the
`product. In that case, the patentee must demonstrate that the
`commercial success of the product results from the patent rather
`than from nonpatented features.34 This nexus can be established by
`evidence that the claimed feature is present in a number of
`commercially successful products 5 or even survey evidence that the
`claimed feature leads to a competitive advantage.36
`In some cases, the Federal Circuit has suggested that an
`evaluation of secondary considerations is an essential part of the
`obviousness inquiry.37 Indeed, the Federal Circuit has often said
`that courts should consider this evidence as a mandatory part of the
`"totality of the evidence" used to reach a conclusion regarding
`obviousness.3" Moreover, perhaps to emphasize the importance of
`these factors, the Federal Circuit has often referred to them as
`"objective" rather than "secondary" considerations.39 But theory and
`
`marketing rather than to the invention); Brown & Williamson Tobacco Corp. v. Philip Morris
`Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000) ("A nexus between commercial success and the
`claimed features is required.").
`32. Id. For detailed discussion of the problems in inferring nonobviousness from
`commercial success, see, for example, Edmund W. Kitch, Graham v. John Deere Co.: New
`Standards for Patents, 1966 SUP. CT. REv. 293; Robert P. Merges, Commercial Success and
`Patent Standards: Economic Perspectives on Innovation, 76 CAL. L. REV. 803 (1988).
`33. Brown & Williamson, 229 F.3d at 1130.
`34. J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997).
`35. Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549, 1556 (Fed. Cir. 1987); see also
`Asyst Techs., Inc. v. Emtrak Corp., No. 2007-1554, 2008 WL 4529500 (Fed. Cir. Oct. 10, 2008)
`(rejecting evidence of commercial success because it was not linked to the novel features of
`the invention).
`36. Winner Intl Royalty Corp. v. Wang, 202 F.3d 1340, 1350-51 (Fed. Cir. 2000).
`37. See, e.g., Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed. Cir. 2000) ("In order to
`determine obviousness as a legal matter, four factual inquiries must be made ... [including]
`secondary considerations of nonobviousness .... ") (emphasis added).
`38. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 (Fed. Cir. 2007); Richardson-
`Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997).
`39. See, e.g., Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14,26 (Fed. Cir. 2000).
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`practice are not always in accord. If the other Graham factors are
`sufficiently persuasive, the Federal Circuit has been willing to
`dismiss the potential impact of secondary considerations.4" Federal
`Circuit jurisprudence likewise provides no clear hierarchy between
`secondary considerations, considered as a whole, and the other
`three Graham factors. In at least one case, the Federal Circuit has
`also implied that some of these secondary considerations are
`intrinsically more important than others. In Ecolochem, Inc. v.
`for instance, the court explicitly
`Southern California Edison Co.,
`gave the three named considerations more weight than those which
`collectively fall under the "etc." label.42 In other cases, however, the
`courts have drawn no such distinction and treated each of them in
`the same fashion.4"
`Each of these secondary considerations seems intended to help
`determine whether the invention was in fact obvious to those of
`ordinary skill in the art at the time of the invention. For example,
`one of the most commonly invoked secondary considerations of non-
`obviousness is commercial success, which requires a showing that
`a product met with actual success in the marketplace as a result of
`the claimed invention. There is an appealing straightforwardness
`to the commercial success argument. If something is both obvious
`and lucrative, one wouldn't expect it to remain on the shelf for long:
`surely someone would be motivated to seize on an obvious, and
`obviously profitable, opportunity. Thus, the logic goes, the fact that
`
`40. See, e.g., Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120,1131
`(Fed. Cir. 2000) (documenting the district court's failure to consider secondary indicia of non-
`obviousness harmless error because "these indicators of nonobviousness cannot overcome the
`strong evidence of obviousness"); Riverwood Int'l Corp. v. Mead Corp., 212 F.3d 1365, 1367
`(Fed. Cir. 2000) ("[The objective factors did not carry sufficient weight to override a
`conclusion of obviousness based on the primary considerations."); cf. Applied Materials, Inc.
`v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1570 (Fed. Cir. 1996) ('CThe
`objective evidence of unobviousness is not evaluated for its 'separate knockdown ability'
`against the 'stonewall' of the prima facie case .... " (quoting In re Rinehart, 531 F.2d 1048
`(C.C.R.A. 1976))).
`41. 227 F.3d 1361 (Fed. Cir. 2000).
`42. Id. at 1380 ('CThe factors specifically mentioned in Graham, and those that we give the
`most weight to in the instant case, are the commercial success of the invention, long-felt but
`unsolved needs, and failure of others to invent."); see also Hybritech, Inc. v. Monoclonal
`Antibodies, Inc., 802 F.2d 1367, 1379-80 (Fed. Cir. 1986).
`43. See, e.g., Eli Lilly & Co. v. Goldlne Pharms., Inc., 471 F.3d 1369, 1380 (Fed. Cir. 2006)
`(drawing no distinction between named and unnamed secondary considerations).
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`someone actually commercialized the invention and made a lot of
`money doing so, suggests that the invention wasn't obvious.
`Otherwise, someone else would have commercialized it already.
`Patentees can likewise rely on a long-felt need that was addressed
`by the patented invention; the theory being, as above, that the need
`would have been addressed by others had the solution been
`obvious.44 Similarly, "evidence of failed attempts by others could be
`determinative on the issue of obviousness" because the failed
`attempts by those others would seem to demonstrate that the
`invention was not obvious to them. Evidence of third-party licensing
`may also demonstrate that others have looked at the patent and
`deemed it sufficiently novel to be worth paying for, although the
`courts have recognized that the importance of this factor may be
`diminished where it is '"cheaper to take licenses than to defend
`infringement suits."'45
`All of these objective considerations are, on their face, grounded
`in real-world facts. Indeed, the Federal Circuit has noted that "such
`real-world considerations provide a colorful ... foundation on which
`to rest a nonobviousness determination."46 But while the Federal
`Circuit lauds these "real-world considerations," it has declined to
`rely on evidence of secondary considerations where that objective
`evidence is at odds with the hypothetical nature of the obviousness
`construct.47
`
`D. KSR and the Standard of Review
`
`In KSR, the Supreme Court ostensibly made the obviousness
`inquiry more "flexible" and pragmatic.48 In rejecting the Federal
`Circuit's rigid application of the TSM test,49 the Supreme Court
`ostensibly sought to create a test that would be more attuned to the
`
`44. See, e.g., id.
`45. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004)
`(quoting EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985)).
`46. Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559,
`1575 (Fed. Cir. 1992).
`47. See, e.g., Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1365 (Fed. Cir.
`2007) (discounting expert's testimony that he had been "surprise[d]" by the inventor's work
`because the expert was not aware of all the prior art).
`48. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
`49. Id.
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`realities of what would actually be obvious to a person of skill in the
`art. In purportedly doing so, however, the Court's opinion has also
`been read as suggesting that the objective considerations may be
`less important than the other Graham factors.
`Although the ultimate question of obviousness is an issue of law,
`the courts have recognized that obviousness must be determined
`with reference to underlying facts, such as the level of ordinary skill
`in the art and the scope and content of the prior art, as laid out in
`Graham. At the same time that the Supreme Court purported to
`make the inquiry more flexible (and presumably fact-driven),
`however, it also reaffirmed that obviousness is an issue of law, and
`thus particularly appropriate for resolution at summary judgment."°
`Nonetheless, in light of the presumption of validity, any factual
`questions underlying that determination are to be resolved by clear
`and convincing evidence. 5'
`
`II. PROCEDURAL EFFECTS OF KSR
`
`A. The Increasing Role of the PHOSITA
`
`KSR is a bit of a Rorschach test, offering language that can be
`twisted to support virtually any view of obviousness law. But the
`one consistent strand that runs through the opinion is a rejection of
`rigid rules, replaced with a case-by-case focus on what actual
`scientists in the field would know or could develop with ordinary
`inventive skill.52 The Court wants to know whether scientists in this
`particular discipline would believe this particular invention to be
`obvious. This is evident at a number of points in the opinion:
`
`We begin by rejecting the rigid approach of the Court of
`Appeals. Throughout this Court's engagement with the question
`
`50. Id. at 1745-46.
`51. Pharmastem Therapeutics, 491 F.3d at 1360.
`52. The Court was also motivated by a sense that the Federal Circuit got this particular
`case wrong-a sentiment with which we agree-and by a belief that the Federal Circuit erred
`too often on the side of upholding doubtful patents. For empirical scholarship calling that
`latter sense into question, see, for example, Christopher A. Cotropia, Nonobviousness and the
`Federal Circuit: An Empirical Analysis of Recent Case Law, 82 NOTRE DAME L. REV. 911
`(2007); Lee Petherbridge & R. Polk Wagner, The Federal Circuit and Patentability: An
`Empirical Assessment of the Law of Obviousness, 85 TEX. L. REv. 2051 (2007).
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`of obviousness, our cases have set forth an expansive and
`flexible approach inconsistent with the way the Court of Appeals
`applied its TSM test here....
`
`The combination of familiar elements according to known
`methods is likely to be obvious when it does no more than yield
`predictable results....
`
`Helpful insights, however, need not become rigid and
`mandatory formulas; and when it is so applied, the TSM test is
`incompatible with our precedents. The obviousness analysis
`cannot be confined by a formalistic conception of the words
`teaching, suggestion, and motivation, or by overemphasis on the
`importance of published articles and the explicit content of
`issued patents. The diversity of inventive pursuits and of
`modern technology counsels against limiting the analysis in this
`way....
`... There 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.'
`
`We expect two effects from this realistic,5 5 case-by-case approach.
`First, courts will have to pay more attention than they have in the
`last quarter-century to who the PHOSITA is and what he or she
`thinks. Although Graham spoke of a requirement to determine "the
`level of ordinary skill in the pertinent art,""6 in practice, explicit
`factual determinations of the PHOSITA's skill have been rare. 7
`Rather, the courts have looked for a suggestion in the art to make
`the claimed invention, and have paid less attention to whether those
`in the field would have figured out the claimed invention on their
`
`53. KSR, 127 S. Ct. at 1739.
`54. Id. at 1739-41.
`55. See also Michael J. Meurer & Katherine J. Strandburg, Patent Carrots and Sticks: A
`Model of Nonobviousness, 12 LEwis & CLARK L. REV. 547 (2008) (referring to KSR as a "more
`realistic approach").
`56. 383 U.S. 1, 17 (1966).
`57. Becky Eisenberg says that the Federal Circuit "all but ignored" the perspective of the
`PHOSITA before KSR. Rebecca S. Eisenberg, Obvious to Whom? Evaluating Inventions from
`the Perspective of PHOSITA, 19 BERKELEY TECH. L.J. 885, 888 (2004).
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`own.5 8 This must change in the wake of KSR. We expect to see
`greater reliance on expert testimony regarding what those of skill
`in the art would have known and been capable of developing. 59 And
`indeed we are starting to see greater Federal Circuit attention to
`the level of skill in the art.'
`Second, the role of the PHOSITA will expand beyond just
`combining existing references to include developing his or her own
`ideas. The PHOSITA has been treated in the Federal Circuit as a bit
`of a "dullard,"61 aware of the art but devoid of creativity or inventive
`skills." By contrast, in KSR, the Supreme Court spoke of the
`PHOSITA not simply as someone who combines preexisting work,
`but as someone who solves problems by applying a reasonable
`amount of ingenuity:
`
`If a person of ordinary skill can implement a predictable
`variation, § 103 likely bars its patentability. For the same
`reason, if a technique has been used to improve one device, and
`a person of ordinary skill in the art would recognize that it
`would improve similar devices in the same way, using the
`
`58. See, e.g., SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed.
`Cir. 2000) (stating that the suggestion test applies to all inventions, not merely those that
`combine existing references).
`59. We acknowledge that there is language in the Court's opinion suggesting that it might
`not be inconsistent with a broad, flexible application of the teaching-suggestion-motivation
`standard. See KSR, 127 S. Ct. at 1739. But that standard will satisfy the Court's opinion only
`if it is closely tied to the actual knowledge and capabilities of the PHOSITA. Id. at 1740. For
`this reason, we agree with Joe Miller that the change in KSR is more than just one of "verbal
`formulae." Joseph Scott Miller, Remixing Obviousness, 16 TEX. INTELL. PROP. L.J. 237, 239
`(2008).
`60. See, e.g., Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1361-63 (Fed.
`Cir. 2006) (overturning a district court's fact-finding regarding the level of skill in the