SECONDARY CONSIDERATIONS IN
`NONOBVIOUSNESS ANALYSIS:
`THE USE OF OBJECTIVE INDICIA
`FOLLOWING KSR V. TELEFLEX
`
`NATALIE A. THOMAS*
`
`One of the basic requirements for patenting an invention is that the invention be
`nonobvious. Following the Supreme Court’s decision in Graham v. John Deere,
`secondary considerations—also known as objective indicia of nonobviousness—
`have been considered when determining whether an invention is nonobvious. Sec-
`ondary considerations provide tangible evidence of the economic and motivational
`issues relevant to the nonobviousness of an invention. Types of secondary-
`considerations evidence include commercial success, long-felt but unmet need, and
`copying by competitors. For many years, the Federal Circuit’s teaching, suggestion,
`or motivation test often eliminated the need for the court to rely on secondary con-
`siderations in the obviousness inquiry. Due to the Federal Circuit’s stringent appli-
`cation of this test, the obviousness inquiry was generally resolved by examining the
`prior art.
`
`In 2007, the Supreme Court decided KSR v. Teleflex, which endorsed a flexible
`obviousness analysis and rejected the Federal Circuit’s strict application of the
`teaching, suggestion, or motivation test. Following KSR, scholars predicted that
`secondary-considerations evidence would provide a critical tool for patentees
`seeking to demonstrate the nonobviousness of an invention. Inspired by that predic-
`tion, this Note evaluates how secondary-considerations evidence has been utilized
`in the first few years post-KSR. It finds that the Federal Circuit has continued to
`impose stringent relevancy requirements on the use of secondary-considerations
`evidence, and that it remains difficult for patentees to employ secondary considera-
`tions in favor of a nonobviousness conclusion. Specifically, secondary-
`considerations evidence has not been used with much success outside of pharma-
`ceutical patent cases. More often than not, the Federal Circuit has summarily dis-
`missed secondary-considerations evidence as insufficient in cases involving
`mechanical arts patents. This Note concludes by suggesting that the Federal
`Circuit’s current practice for using secondary considerations should inform pro-
`posals by scholars for industry-specific tailoring of the patent system and patent
`law’s use of secondary considerations, and that the Federal Circuit should continue
`to engage with secondary-considerations evidence in order to provide more gui-
`dance to lower courts during the post-KSR transition period.
`
`* Copyright  2011 by Natalie A. Thomas. J.D., 2011, New York University School of
`Law; Ph.D., 2008, New York University; B.S., 2003, Duke University. For comments on
`earlier drafts, I thank Professors Herbert Schwartz, Katherine Strandburg, Oren Bar-Gill,
`and the fellows of the Lederman/Milbank Fellowship in Law and Economics. I would also
`like to thank the members of the New York University Law Review, especially Brian Lee,
`David Lin, Chris Kochevar, and Daniel Derby, for their efforts in preparing this Note for
`publication. Any errors are my own.
`
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`INTRODUCTION
`
`To qualify for a patent, an inventor must contribute a novel,
`useful, and significant technical advance. In other words, the advance
`must not be obvious or trivial. This requirement seems only fair. The
`national patent system established under the Constitution contem-
`plates such a quid pro quo: In exchange for disclosing his or her inven-
`tion to the public, an inventor is rewarded with a temporary, exclusive
`right.1 The public does not benefit from the award of a patent right for
`an obvious discovery, since such an award would remove a clear and
`evident improvement from the public domain for the patent term.2
`The nonobviousness requirement was first codified in the 1952
`Patent Act.3 Although the nonobviousness requirement was a natural
`addition to the Patent Act, given the patent system’s goal of pro-
`moting innovation, courts and the Patent and Trademark Office
`(PTO)4 have struggled to create a coherent procedure for determining
`when a claimed “invention” is in fact nonobvious. Indeed, it is chal-
`lenging to articulate how anyone might go about determining if a
`claimed invention is nonobvious.
`This obviousness inquiry is significant because millions of dollars
`may ride on a patent examiner’s judgment as to whether a patent
`should issue and on a judge or jury’s determination of whether an
`issued patent is invalid for obviousness.5 The inquiry is further compli-
`
`1 35 U.S.C. § 154 (2006) (outlining a patent term of twenty years).
`2 See Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152 (1950)
`(“The function of a patent is to add to the sum of useful knowledge. Patents cannot be
`sustained when, on the contrary, their effect is to subtract from former resources freely
`available to skilled artisans.”).
`3 Patent Act of 1952, Pub. L. No. 593, § 103, 66 Stat. 792, 798.
`4 The Patent and Trademark Office (PTO) is the agency within the Department of
`Commerce responsible for examining patent applications and granting patents (as well as
`registering trademarks). The USPTO: Who We Are, U.S. PATENT & TRADEMARK OFFICE,
`http://www.uspto.gov/about/index.jsp (last visited Oct. 23, 2011). During the patent exami-
`nation process, the PTO staff rejects patent applications that fail to meet the statutory
`requirements for patentability. A patent examiner with skill in the relevant technology
`area conducts the first official assessment of the obvious or nonobvious nature of a claimed
`invention. See PATENT & TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING
`PROCEDURE § 2141, at 2100-115 to -118 (6th ed. 2007), available at http://www.uspto.gov/
`web/offices/pac/mpep/mpep_e8r6_2100.pdf (setting forth guidelines for an examiner’s
`analysis of the nonobviousness requirement). If the examiner finds the invention obvious,
`she will reject the application. Id. at 2100-116 to -117. Appeals from PTO denials of patent
`applications are heard by panels of at least three members of the PTO’s Board of Patent
`Appeals and Interferences. 35 U.S.C. § 6(b). The panels are staffed by administrative
`patent judges, the Board’s directors, and the Commissioner for Patents. Id. § 6(a). These
`decisions can subsequently be appealed to the United States Court of Appeals for the
`Federal Circuit. Id. § 141.
`5 See John R. Allison et al., Valuable Patents, 92 GEO. L.J. 435, 440–41 (2004) (noting
`median direct litigation costs of $2 million per party in 2003 in patent suits with $1 million
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`cated by the fact that it occurs ex post and is often made by a
`lacking skill
`in the art.7 Technically inexperienced
`factfinder6
`factfinders may allow hindsight to affect the obviousness inquiry.8
`What seems obvious now may not have been obvious at the time of
`invention.
`In order to guide the obviousness inquiry, the Federal Circuit—
`the court with appellate jurisdiction over patent cases9—adopted a
`teaching, suggestion, or motivation (TSM) test. A proposed invention
`was obvious if a teaching, suggestion, or motivation in the prior art
`pointed to the invention. The TSM test was intended to structure the
`obviousness inquiry, but instead led to instances of patents of ques-
`tionable validity being upheld.10 In the 2007 case KSR International v.
`Teleflex Inc., the Supreme Court rejected the Federal Circuit’s rigid
`application of the TSM test and emphasized that the touchstones of
`the obviousness inquiry are flexibility and common sense.11 In the
`wake of KSR, many predict that it will be easier to prove patents
`obvious.12 Decision makers must strike a delicate balance between
`
`to $25 million at stake); see also JAMES BESSEN & MICHAEL J. MEURER, PATENT FAILURE:
`HOW JUDGES, BUREAUCRATS, AND LAWYERS PUT INNOVATORS AT RISK 105 tbl.5.2, 108
`tbl.5.3 (2008) (estimating a $275,000 average value for patents worldwide and a $332,800
`average value for chemical composition patents, based on market regression calculations in
`1992 dollars).
`6 Multiple parties may assess the obviousness or nonobviousness of an invention,
`including PTO examiners, judges, and juries, depending on the stage of the proceeding. For
`the purposes of this Note, a reference to “factfinder” or “decision maker” implicates the
`relevant party.
`7 Patent examiners are grouped by specialization. Thus, an examiner often has a tech-
`nical background that renders her generally competent to examine the patent application
`assigned to her specialization group. See supra note 4 (explaining the PTO procedure). In
`contrast, judges are often assumed to be laypersons without specialized technical knowl-
`edge. See Safety Car Heating & Lighting Co. v. Gen. Electric Co., 155 F.2d 937, 939 (2d
`Cir. 1946) (“Courts, made up of laymen as they must be, are likely either to underrate, or
`to overrate, the difficulties in making new and profitable discoveries in fields with which
`they cannot be familiar . . . .”).
`8 See infra note 29 (discussing the challenges of hindsight bias).
`9 28 U.S.C. § 1295 (2006) (delimiting the Federal Circuit’s jurisdiction).
`10 See, e.g., Amanda Wieker, Secondary Considerations Should Be Given Increased
`Weight in Obviousness Inquiries Under 35 U.S.C. § 103 in the Post-KSR v. Teleflex World,
`17 FED. CIR. B.J. 665, 665 (2008) (describing the teaching, suggestion, or motivation (TSM)
`test’s impact on patent quality).
`11 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–22 (2007).
`12 See, e.g., Ali Mojibi, An Empirical Study of the Effect of KSR v. Teleflex on the
`Federal Circuit’s Patent Validity Jurisprudence, 20 ALB. L.J. SCI. & TECH. 559, 581–84
`(2010) (conducting an empirical study to test the hypothesis that KSR heightened the stan-
`dard for finding inventions nonobvious); Janice M. Mueller, Chemicals, Combinations, and
`“Common Sense”: How the Supreme Court’s KSR Decision Is Changing Federal Circuit
`Obviousness Determinations in Pharmaceutical and Biotechnology Cases, 35 N. KY. L.
`REV. 281, 285–86 (2008) (observing that KSR appears to make obviousness easier to estab-
`lish); Jennifer Nock & Sreekar Gadde, Raising the Bar for Nonobviousness: An Empirical
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`ensuring that obvious inventions are not given patent protection and
`ensuring that an invention that was nonobvious at the time of inven-
`tion is found nonobvious when later assessed by a court or the patent
`office.
`Patent case law provides for the use of secondary-considerations
`evidence—also referred to as objective indicia of nonobviousness—to
`aid the obviousness inquiry.13 This evidence is considered more judi-
`cially cognizable than the highly technical facts frequently involved
`with patent litigation, as it is generally rooted in nontechnical facts
`about the invention, such as industry response or commercial suc-
`cess.14 Following KSR, some scholars have predicted that secondary
`considerations will be critical to patentees’ future efforts in demon-
`strating that their inventions are nonobvious.15
`This Note examines the state of secondary-considerations
`evidence in the first few years after KSR. Part I provides an overview
`of the nonobviousness requirement of patentability, secondary consid-
`erations, and the KSR decision. Part II empirically examines the
`Federal Circuit’s treatment of secondary-considerations evidence in
`the years after KSR and concludes that such evidence has not been
`used with much success outside of pharmaceutical patent cases. More
`often than not, courts have summarily dismissed secondary-
`considerations evidence as insufficient. Part III considers how current
`use of such evidence should inform proposals for altering the use of
`secondary considerations. In addition, this Part contends that the use
`
`Study of Federal Circuit Case Law Following KSR, 20 FED. CIR. B.J. 369, 378–81 (2011)
`(noting that KSR’s holding suggests that it will be easier to find an invention obvious and
`that early predictions and analyses regarding the impact of the decision suggest the same);
`Diane Christine Renbarger, Note, Putting the Brakes on Drugs: The Impact of KSR v.
`Teleflex on Pharmaceutical Patenting Strategies, 42 GA. L. REV. 905, 908–09 (2008) (noting
`that KSR may have heightened the standard for finding pharmaceutical inventions
`nonobvious).
`13 See, e.g., Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966) (endorsing the use of
`secondary-considerations evidence to shed light on the obviousness inquiry).
`14 Id. at 36 (“[Secondary-considerations evidence] focus[es] attention on economic and
`motivational rather than technical issues and [is], therefore, more susceptible of judicial
`treatment than are the highly technical facts often present in patent litigation.”); see
`Michael Abramowicz & John F. Duffy, The Inducement Standard of Patentability, 120
`YALE L.J. 1590, 1655–57 (2011) (arguing that the inducement standard requiring courts to
`consider secondary-considerations evidence is “more administrable than the current
`system”); Richard L. Robbins, Note, Subtests of “Nonobviousness”: A Nontechnical
`Approach to Patent Validity, 112 U. PA. L. REV. 1169, 1172 (1964) (noting that inquiries
`into “economic and motivational . . . issues . . . are more amenable to judicial treatment
`than are the technical facts with which the courts generally struggle”).
`15 See Daralyn J. Durie & Mark A. Lemley, A Realistic Approach to the Obviousness of
`Inventions, 50 WM. & MARY L. REV. 989, 1004–07 (2008) (“As the legal rules that fight
`hindsight bias, such as the TSM test, are trimmed back . . . patentees will want to rely more
`on so-called secondary considerations of nonobviousness . . . .”).
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`of secondary-considerations evidence should be increased to guide the
`obviousness inquiry with a judicially accessible source of information
`about the inventive process.
`
`I
`THE NONOBVIOUSNESS REQUIREMENT, SECONDARY
`CONSIDERATIONS, AND KSR V. TELEFLEX
`
`A. The Nonobviousness Requirement
`
`Although not initially included in the patent statute passed by the
`First Congress in 1790,16 the nonobviousness requirement is now con-
`sidered the ultimate threshold for patentability.17 This requirement is
`codified in § 103 of the Patent Act:
`A patent may not be obtained though the invention is not identi-
`cally disclosed or described as set forth in section 102 of this title, if
`the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the
`invention was made.18
`The nonobviousness requirement reserves patent protection for
`innovative contributions. However, if the threshold for patentability is
`too high, then researchers will be less likely to pursue socially benefi-
`cial research paths.19 Promoting the optimal level of innovation
`requires striking the right balance in defining obviousness. Congress
`attempted to define obviousness in the context of the patent system as
`that which would have been obvious at the time of the invention to a
`person having ordinary skill in the art (PHOSITA), replacing the prior
`focus on “invention.”20
`Unfortunately, the statutory codification of the nonobviousness
`requirement for patentability does not provide a framework for deter-
`
`16 Patent Act of 1790, ch. 7, 1 Stat. 109 (repealed 1793).
`17 2 DONALD S. CHISUM, CHISUM ON PATENTS § 5.06, at 5-735 (2010) (“The nonobvi-
`ousness requirement of Section 103 is the most important and most litigated of the condi-
`tions of patentability.”).
`18 35 U.S.C. § 103(a) (2006).
`19 See, e.g., Michael J. Meurer & Katherine J. Strandburg, Patent Carrots and Sticks: A
`Model of Nonobviousness, 12 LEWIS & CLARK L. REV. 547, 563 (2008) (“If the nonobvi-
`ousness threshold is . . . set too high, . . . non-optimal and inefficiently difficult projects will
`have to be undertaken to obtain a patent.”).
`20 ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY:
`CASES AND MATERIALS 629–30 (4th ed. 2007). See generally John F. Duffy, Inventing
`Invention: A Case Study of Legal Innovation, 86 TEX. L. REV. 1, 33–43 (2007) (describing
`the evolution of the standard of invention).
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`mining what would have been obvious to a PHOSITA at the time of
`invention. In Graham v. John Deere Co., the Supreme Court
`explained how the obviousness analysis under § 103 should be per-
`formed.21 Under Graham, courts apply a fact-based inquiry to deter-
`mine whether or not the claimed subject matter of a patent is obvious
`as a matter of law.22 First, courts must determine the scope and con-
`tent of the prior art. Second, courts must identify the differences
`between the prior art and the claims at issue. Third, courts must ascer-
`tain the level of ordinary skill in the art.23 Based on this three-step
`inquiry, courts may determine the obviousness of the invention at
`issue.24 However, Graham also provided a fourth step: the utilization
`of secondary considerations. The Court explained as follows: “Such
`secondary considerations as commercial success,
`long-felt but
`unsolved needs, failure of others, etc., might be utilized to give light to
`the circumstances surrounding the origin of the subject matter sought
`to be patented. As indicia of obviousness or nonobviousness, these
`inquiries may have relevancy.”25
`
`B. Secondary Considerations
`
`Rather than focusing on the specifics of the technological
`advance, a secondary-considerations analysis approaches nonobvious-
`ness through an examination of “economic and motivational . . .
`issues.”26 Although their weight in the obviousness inquiry is an open
`question, secondary considerations are most likely termed “secon-
`dary” because they “are relevant through a process of inference to the
`ultimate technical issue of nonobviousness,” not because they are of
`lesser importance.27 Because secondary considerations do not require
`a detailed understanding of technology, they can significantly aid judi-
`cial assessments of patent validity. In addition, by providing objective
`
`21 Graham v. John Deere Co., 383 U.S. 1 (1966).
`22 Id. at 17.
`23 Id.
`24 For example, if the decision maker finds that the prior art contains references that
`largely overlap with the claimed invention with only minute differences distinguishing the
`claimed invention, and the level of skill in the art is high (assume that the typical person
`having ordinary skill in the art is found to have ten years of engineering experience and an
`advanced degree), then the conclusion that the invention is obvious (and not patentable)
`seems reasonable.
`25 Graham, 383 U.S. at 17–18.
`26 Id. at 36.
`27 Andrew Blair-Stanek, Increased Market Power as a New Secondary Consideration in
`Patent Law, 58 AM. U. L. REV. 707, 712 (2009) (quoting Donald S. Chisum, Professor,
`Univ. of Wash. Law Sch., Recent Developments in Patent Law, Address Before the
`AIPLA Annual Meeting (Oct. 26, 1984), in 1984 AIPLA BULL. 618, 620–21) (internal
`quotation marks omitted).
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`information about the context for the inventive process, secondary
`considerations may prevent hindsight bias from affecting decision
`makers’ assessments of the obviousness of an invention;28 decision
`makers may be prone to such bias once the invention is sitting before
`them.29 Following Graham’s endorsement of secondary considera-
`tions, courts adopted secondary-considerations analysis as a critical
`part of the nonobviousness inquiry.30
`Many secondary considerations have been proposed by scholars
`and cited by courts.31 The most common include commercial success,
`
`28 Graham, 383 U.S. at 36 (“[Secondary considerations] may also serve to ‘guard
`against slipping into use of hindsight.’” (quoting Monroe Auto Equip. Co. v. Heckethorn
`Mfg. & Supply Co., 332 F.2d 406, 412 (6th Cir. 1964))).
`29 See HERBERT F. SCHWARTZ & ROBERT J. GOLDMAN, PATENT LAW AND PRACTICE
`90–91 (6th ed. 2008) (noting that secondary considerations “focus the decision maker’s
`attention on the circumstances surrounding the origin of the claimed invention” and “may
`help the decision maker avoid the use of hindsight”). Hindsight bias is a cognitive phenom-
`enon that causes people to overstate or overestimate the predictability or likelihood of past
`events. See Jeffrey J. Rachlinski, A Positive Psychological Theory of Judging in Hindsight,
`65 U. CHI. L. REV. 571, 576–81 (1998) (defining hindsight bias and summarizing the psy-
`chological literature on hindsight bias). The specter of hindsight bias is a constant concern
`in determinations of obviousness. Under § 103, the factfinder must determine whether an
`invention would have been obvious to a person having ordinary skill in the art (PHOSITA)
`at the time of invention. 35 U.S.C. § 103 (2006). Once the factfinder knows that the inven-
`tion exists today, it can be difficult to prevent hindsight bias from affecting the factfinder’s
`analysis. See Gregory N. Mandel, Patently Non-obvious: Empirical Demonstration That
`Hindsight Bias Renders Patent Decisions Irrational, 67 OHIO ST. L.J. 1391, 1404 (2006)
`(“Overestimating the likelihood of a known invention occurring will tend to make the
`invention appear obvious. Perhaps even more powerfully, the tendency to overestimate the
`foreseeability of the invention will make the invention appear to have been more obvious
`than it actually was.”); id. at 1419 (concluding from empirical studies of hindsight bias,
`including one of first-year law students participating as mock jurors, that hindsight bias
`significantly impacts nonobviousness decisions in patent law).
`30 See, e.g., Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983)
`(“Indeed, evidence of secondary considerations may often be the most probative and
`cogent evidence in the record. . . . It is to be considered as part of all the evidence, not just
`when the decisionmaker remains in doubt after reviewing the art.”); In re Fielder, 471 F.2d
`640, 644 (C.C.P.A. 1973) (“[S]uch evidence must always be considered in connection with
`the determination of obviousness.”); George M. Sirilla, 35 U.S.C. § 103: From Hotchkiss to
`Hand to Rich, the Obvious Patent Law Hall-of-Famers, 32 J. MARSHALL L. REV. 437,
`535–48 (1999) (describing the evolution of the use of secondary considerations in the
`PTO’s Manual of Patent Examining Procedure and in Federal Circuit doctrine); Dorothy
`Whelan, Note, A Critique of the Use of Secondary Considerations in Applying the Section
`103 Nonobviousness Test for Patentability, 28 B.C. L. REV. 357, 364–65 (1987) (noting that
`the Federal Circuit adopted secondary considerations as the fourth part of the obviousness
`inquiry).
`31 See Graham, 383 U.S. at 17–18 (highlighting the use of the secondary considerations
`of commercial success, long-felt but unsolved needs, and the failure of others); Blair-
`Stanek, supra note 27, at 712–13 (“Courts to date have developed nine secondary consider-
`ations: (1) long-felt need; (2) failure of others; (3) commercial success; (4) commercial
`acquiescence via licensing; (5) professional approval; (6) copying by and praise from
`infringers; (7) progress through the PTO; (8) near-simultaneous invention; and (9) unex-
`pected results.”); Robbins, supra note 14, at 1172–83 (proposing the use of long-felt
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`long-felt but unmet need, failure of others, and professional approval
`or skepticism.32 Generally, secondary-considerations evidence sup-
`ports a finding of nonobviousness.33 For example, failure of others
`may indicate that others attempted to find a solution but failed, sug-
`gesting that the successful inventor’s discovery truly was nonob-
`vious.34 Whether all secondary considerations are equally informative,
`or accurately illuminate the nonobviousness of an invention, is
`debated.35 Some scholars criticize the use of any secondary considera-
`tions, arguing that they are not objective enough or that they fail to
`combat hindsight bias.36 Despite these critiques, the Supreme Court
`continues to endorse secondary considerations.37 As post-KSR deci-
`sion makers have more license than ever to consult secondary-
`considerations evidence, it is important to understand both how it is
`used in practice and how its use could be improved. To ground the
`discussion, the remainder of this Section details some commonly
`accepted secondary considerations.
`Commercial success is the first secondary consideration listed in
`Graham and also the most commonly invoked.38 In theory, if a
`product that is expected to be commercially successful was obvious to
`invent, then other competitors likely would have already developed
`
`demand, commercial success, commercial acquiescence, simultaneous solution, profes-
`sional approval, and progress through the PTO); Whelan, supra note 30, at 370–74 (dis-
`cussing the use of licensing, copying by an infringer, progress through the PTO, near-
`simultaneous invention, and professional approval).
`32 See generally SCHWARTZ & GOLDMAN, supra note 29, at 91–93 (listing commonly
`invoked secondary considerations); Whelan, supra note 30, at 366 (same).
`33 One exception is secondary-considerations evidence of simultaneous invention. See
`DAN L. BURK & MARK A. LEMLEY, THE PATENT CRISIS AND HOW THE COURTS CAN
`SOLVE IT 117 (2009) (noting that simultaneous invention is not supportive of nonobvious-
`ness). A competitor’s showing that several inventors converged on the invention in ques-
`tion at the same time would suggest that the inventive step was obvious. In such a situation,
`a likely explanation would be that the state of the art developed to the point where the
`inventive step became possible and therefore obvious.
`34 Robbins, supra note 14, at 1173.
`35 See Whelan, supra note 30, at 377–80 (arguing that commercial success, licensing,
`copying, and progress through the PTO should not be independently relevant in the obvi-
`ousness analysis under § 103); see also Blair-Stanek, supra note 27, at 724–28 (proposing
`the use of increased market power as a stand-alone secondary consideration and critiquing
`the use of licensing and commercial success as currently implemented).
`36 See Mandel, supra note 29, at 1421–25 (concluding that secondary considerations do
`not ameliorate hindsight bias because such evidence is infrequently available and often
`unreliable). See generally Robert P. Merges, Commercial Success and Patent Standards:
`Economic Perspectives on Innovation, 76 CAL. L. REV. 803 (1988) (critiquing the use of
`secondary considerations).
`37 See infra Part I.C (discussing KSR and the continued recognition of secondary
`considerations).
`38 Graham v. John Deere Co., 383 U.S. 1, 17 (1966); Wieker, supra note 10, at 675
`(“Commercial success is the most frequently encountered secondary consideration.”).
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`it.39 In that case, the market for subsequent entrants to achieve com-
`mercial success would be depleted. The potential for achieving com-
`mercial success is thought to drive inventors to formulate solutions to
`existing problems to satisfy marketplace demands. If an inventor
`develops a product that is commercially successful, presumably others
`recognized the product’s potential for commercial success, attempted
`to develop a solution to the same problem, and failed.40
`Long-felt but unmet need is a closely related and frequently
`invoked secondary consideration. The underlying rationale for
`accepting long-felt demand as evidence of nonobviousness partially
`overlaps with that for accepting evidence of commercial success.41 An
`industry’s desire for an improvement in technology provides a motiva-
`tion for invention.42 Because it can be assumed that a market exists
`for a product that satisfies a long-felt need, an inventor or business-
`person working in the field has an incentive to develop a solution. If
`the demand for a solution persists over time, despite this potential
`reward, the solution may be assumed to be nonobvious. Thus, if a pat-
`entee can prove that his invention satisfies a long-felt need, the inven-
`tion is likely nonobvious.
`A third secondary consideration is failure of others.43 If others
`facing the same state of the art attempted to develop a solution to
`satisfy a need but failed—while the inventor succeeded—by inference,
`the solution employed by the inventor must be nonobvious. If the
`solution were obvious, it is assumed that others working to solve the
`same problem also would have succeeded.
`Professional approval is an additional secondary consideration
`that can illuminate the viewpoint of a PHOSITA at the time of inven-
`tion. Contemporaneous statements about an invention may assist a
`factfinder in determining whether those with ordinary skill in the art
`would have found the invention obvious. If experts in the field con-
`temporaneously hailed the invention as revolutionary or as answering
`a long-felt need, a hypothetical PHOSITA would probably have found
`
`39 SCHWARTZ & GOLDMAN, supra note 29, at 92.
`40 See Robbins, supra note 14, at 1175 (outlining inferences that can be drawn from
`commercial success).
`41 Wieker, supra note 10, at 677 (“The premise behind the secondary consideration of
`long felt need is closely aligned with that of commercial success. Both concepts assume that
`a defect in the market creates economic incentives that lead inventors to find a solution
`and, therefore, to reap economic rewards.”).
`42 Robbins, supra note 14, at 1172.
`43 Graham, 383 U.S. at 17; Robbins, supra note 14, at 1174 (proposing the failure of
`others as an indication of nonobviousness).
`
`Eye Therapies Exhibit 2049, 9 of 43
`Slayback v. Eye Therapies - IPR2022-00142
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`December 2011]
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`SECONDARY CONSIDERATIONS
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`2079
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`the invention nonobvious.44 Similarly, if competitors or experts in the
`field had expressed surprise or doubt as to whether the invention was
`possible, that skepticism may be construed as evidence that the inven-
`tion was nonobvious.45
`Finally, unexpected results is a frequently invoked secondary con-
`sideration.46 Evidence of unexpected results may provide a reliable
`indicator of whether an invention is nonobvious because the probable
`or anticipated result of an experiment is likely to be embodied in an
`obvious invention.47 The courts and the PTO are more inclined to
`accept secondary-considerations evidence of unexpected results in
`“the less predictable fields, such as chemistry, where minor changes in
`a product or process may yield substantially different results.”48
`Finally, relying on a demonstration of unexpected results is consistent
`with the innovation policy viewpoint that “low probability experimen-
`tation should generally be rewarded.”49
`While secondary considerations may offer insights for deter-
`mining the obviousness of an invention, the evidence must be relevant
`to the analysis. For example, commercial success might be attributable
`to appealing packaging or advertising and not to the invention itself.
`Alternatively, a patentee might have developed the solution to a long-
`felt but unmet need due to innovations in complementary technology
`that changed the state of the art. In such a scenario, the change in
`technology might make what was previously nonobvious to unsuc-
`cessful would-be inventors obvious to inventors working in the con-
`text of a different state of the art.50 Similarly, praise by competitors
`might have been made in order to gain investors’ interest in the com-
`petitors’ work in the same field. Such statements might be self-serving
`and thus would need to be scrutinized for context and relevancy. To
`
`44 See generally Robbins, supra note 14, at 1181–82 (outlining the justification for
`relying on evidence of professional approval as an indicator of nonobviousness).
`45 See, e.g., Whelan, supra note 30, at 373 (describing the potential informational value
`of competitor or industry skepticism