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Lewis & Clark Law Review

Volume 12 / Number 2 / Summer 2008


Nonobviousness: The Shape of Things to Come

Another Missed Opportunity: The Supreme Court’s Failure to Define Nonobviousness or Combat Hindsight Bias in KSR v. Teleflex

Gregory N. Mandel

12 Lewis & Clark L. Rev. 323 (2008)

This Article analyzes two significant errors of omission in the Supreme Court’s recent patent decision, KSR v. Teleflex. First, though KSR represents the Court’s eighth decision on nonobviousness since the standard was enacted in 1952, the Court still has never defined what this core patent standard requires. The failure to instruct on the level of ingenuity necessary to satisfy nonobviousness leads to inconsistent and unpredictable non-obvious decisions. Second, despite recognizing the problem of hindsight bias in nonobviousness analysis and the importance of ameliorating this bias to achieve accurate non-obvious decisions, the Supreme Court not only failed to take the hindsight problem seriously in KSR, but actually appeared to misconstrue the problem. As a result, nonobviousness decisions will continue to be systematically biased with respect to the legal inquiry required by section 103. This is a symposium article based on a presentation given at Nonobviousness—The Shape of Things to Come, a 2007 Lewis & Clark Law School Business Law Forum.

A Timing Approach to Patentability

John F. Duffy

12 Lewis & Clark L. Rev. 343 (2008)

Patent law’s “obviousness” doctrine, which bars patents for “obvious” innovations, is generally understood as trying to exclude from patentability those innovations that would have been created and disclosed even without the inducement of patent rights. An ideal test of obviousness would both serve that overarching policy goal and be sufficiently definite and clear that the doctrine could be applied with consistency. This Article demonstrates that a “timing approach” to patentability can achieve those twin objectives. The approach is based on the insight that the free and open competition to innovate present before patenting will reliably generate all obvious innovations quickly once the market and technological conditions make the innovation both valuable and obvious. Obvious innovations will thus arise soon after the technological or market conditions change to make the innovation more valuable or easier to achieve. Because changes in technology and market needs are relatively easy to observe, the timing of those changes can provide relatively clear and definite evidence of obviousness. This timing theory is remarkably good not only in explaining the results of the judicial decisions but also in predicting the existence of previously overlooked timing evidence. Most notably, a thorough review of the record in the seminal case of Hotchkiss v. Greenwood strongly suggests that the innovation there was an obvious response to a very recent technological development. A timing approach therefore reveals an important unifying pattern in the case law and connects that pattern to a fundamental relationship between the patent system and competition to innovate.

Pharma’s Nonobvious Problem

Rebecca S. Eisenberg

12 Lewis & Clark L. Rev. 375 (2008)

This Article considers the effect of the recent decision of the U.S. Supreme Court in KSR International Co. v. Teleflex, Inc. on the nonobviousness standard for patentability as applied to pharmaceutical patents. By calling for an expansive and flexible analysis and disapproving of the use of rigid formulas in evaluating an invention for obviousness, KSR may appear to make it easier for generic competitors to challenge the validity of drug patents. But an examination of the Federal Circuit’s nonobviousness jurisprudence in the context of such challenges reveals that the Federal Circuit has been employing all along the sort of flexible approach that the Supreme Court admonished it to use in KSR. The decisions of the Federal Circuit considering obviousness challenges to pharmaceutical patents suggest that the pharmaceutical industry does indeed have a nonobviousness problem, but that problem is not KSR. Rather, the problem is that many of the patents that the industry relies upon are invalid for obviousness under time-honored patent doctrine. Although perhaps able to survive the limited scrutiny that is possible on the basis of the information available at the prosecution stage, these patents cannot withstand a validity challenge with the benefit of a full evidentiary record at the infringement stage. It is more difficult to conduct an expansive and flexible analysis with limited information. KSR is more likely to have an impact on pharmaceutical patents if it makes it easier for the PTO to reject patent applications for obviousness in the first instance. It remains to be seen whether it will do so.

Nonobviousness: A Comment on Three Learned Papers

Rochelle Cooper Dreyfuss

12 Lewis & Clark L. Rev. 431 (2008)

This Article, a comment on the contributions of John Duffy, Rebecca Eisenberg, and Gregory Mandel, addresses three areas where improvements could be made in the law on nonobviousness. First, the quantum of inventiveness required for patentability should reflect the capabilities of the ordinary artisan. Second, the asymmetry in the error rate of nonobviousness determinations should be taken into account in setting the standard of nonobviousness. Third, the concept of nonobviousness—or, better, inventive step—should be operationalized by considering the opportunities, risks, and nonpatent incentives the inventor faced at the time of the innovation.

Economic Theories of the Nonobviousness
Requirement for Patentability: A Survey

Vincenzo Denicolò

12 Lewis & Clark L. Rev. 443 (2008)

In the economics literature, there have been four main approaches to the nonobviousness requirement for patentability: option value, sequential innovation, error-cost, and complementary innovation. This Article reviews these approaches and discusses their limits. All of the approaches share the premise that patenting may impose negative externalities, and thus is not always socially beneficial. When innovation is sequential, for instance, granting patent protection to trifling improvements of a path-breaking innovation may lower the pace of technological progress. Similarly, the overall incentive to innovate may be harmed if every minor component of a complex technology is separately patentable. In such circumstances, it may be desirable to deny patent protection even to genuine innovations.

Creativity, Innovation, and Obviousness

R. Keith Sawyer

12 Lewis & Clark L. Rev. 461 (2008)

Psychologists who study creativity have never incorporated nonobviousness into their definition of creativity. Nonetheless, much of the psychological research is relevant to legal issues, particularly in light of the Supreme Court’s decision in KSR v. Teleflex, in which the Court problematized previous notions of obviousness—but without presenting a new standard to replace it. However, there are many critical issues left unresolved in the Supreme Court’s opinion. After a brief introductory summary of the decision, the author discusses three unresolved issues and for each, discusses how creativity research could contribute to their resolution: (1) the role of prior art in invention; (2) the distinction between “ordinary” and exceptional innovation; and (3) the relative importance of proper posing of a problem and the combination that results in the solution. The author then briefly reviews research on the history of invention, proposes several recommendations for future changes to IP law, and concludes by noting a few of his concerns with the decision.

Now Why Didn’t I Think of That? The Cognitive
Processes that Create the Obvious

Colleen M. Seifert

12 Lewis & Clark L. Rev. 489 (2008)

The Supreme Court opinion in the KSR v. Teleflex case offers several claims about the cognitive processes involved in creativity. The “nonobviousness” inquiry in the decision builds upon a host of assumptions about how to invent new solutions to practical problems. Research in cognitive science provides some scientific evidence about the cognitive processes involved in creativity. In this Article, the author presents studies from laboratory research in cognitive science, including both classic studies on problem solving and creativity and several of her own studies. From this evidence, she concludes that reasoning about the nonobviousness of ideas requires a rich and varied theory of human cognitive processes, perhaps more extensive than the one suggested by the Supreme Court’s decision in KSR v. Teleflex.

Invisible Assumptions and the Unintentional Use of
Knowledge and Experiences in Creative Cognition

Steven M. Smith

12 Lewis & Clark L. Rev. 509 (2008)

Research on the cognitive processes involved in creative thinking sheds light on the nonobviousness of new ideas and inventions. An understanding of the conscious and unconscious use of prior knowledge and experiences is essential to the appreciation of the ways that new ideas come about and how those ideas should be evaluated. The creation of a guide for nonobviousness in patent law is proposed which would set out rigorous criteria for presenting and assessing evidence of nonobviousness that are as clear as those criteria that concern other aspects of patents. Such a guide would promote fairness in the consideration of patent evidence by describing practices and procedures that, if consistently applied, would tend to increase the fairness of patent evidence. Adherence to these procedures could conceivably decrease the number of wrongfully granted and wrongfully denied patents, and would help ensure that reliable procedures are included in the presentation and assessment of patent applications.

Psychologists’ Views on Nonobviousness: Are They Obvious?

Janet Davidson and Nicole Greenberg

12 Lewis & Clark L. Rev. 527 (2008)

This Article discusses how a partnership between patent lawyers and cognitive psychologists could help resolve patent issues surrounding nonobviousness and advance what is known about innovative problem solving. Despite the fact that psychologists typically do not have ordinary skill in the prior art of patent law, such a partnership seems like an obvious solution to the non-routine problem of nonobviousness. Focusing on human creativity, problem solving, and memory, the authors explore the important roles played by insightful problem solving, problem finding, collaboration, and hindsight bias in innovation and in the determination of its nonobviousness. Noting that insightful solutions might well result if patent lawyers and cognitive psychologists form a collaborative web, the authors conclude by providing suggestions for how psychologists can help reform section 103 of the Patent Act.

Patent Carrots and Sticks: A Model of Nonobviousness

Michael J. Meurer and Katherine J. Strandburg

12 Lewis & Clark L. Rev. 547 (2008)

The authors develop an informal model of the impact of the nonobviousness standard on the choice of research projects. Previous models assume that the basic question confronting a researcher is, “Shall I produce this particular invention?” More realistically, the authors think a researcher asks, “Which research path shall I pursue?” The model shows that a patent serves as a carrot to induce the choice of more difficult projects than would be pursued under the no-patent alternative. The nonobviousness standard serves as a stick to prod researchers to choose even more difficult projects. The results of the model help us understand why a fact-intensive issue like obviousness is a question of law. The model also helps us understand the optimal relationship between the nonobviousness standard and patentable subject-matter exclusions. Commentators often suggest subject-matter exclusions are unnecessary if the nonobviousness standard is used appropriately. The authors’ model suggests this intuition is wrong for inventions characterized by large social spillovers and high social costs of patenting; a simple subject-matter exclusion would be more efficient.

Level of Skill and Long-Felt Need: Notes on a Forgotten Future

Joseph Scott Miller

12 Lewis & Clark L. Rev. 579 (2008)

The Supreme Court’s KSR decision transforms the way we think about patent law’s ordinary artisan. The ordinary artisan, the Supreme Court states, “is also a person of ordinary creativity, not an automaton.” This transformation, which sweeps aside a contrary precept that had informed the Federal Circuit’s nonobviousness jurisprudence for a generation, raises a key question: How do we fill out the rest of our conception, in a given case, of the ordinary artisan’s level of skill at the time the invention was made? Reaching back to a large vein of case law typified by Judge Learned Hand’s decisions about nonobviousness, as well as an all-but-forgotten nonobviousness bill that died in committee in 1948, the author shows that the modern “level of skill” inquiry can comfortably rely on evidence of long-felt, unmet need in the art and the failure of others to meet that need.

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