Obviousness Analysis

Graham v. John Deere Co. (S.Ct. 1966) established the four-factor test that governs all § 103 analysis: STATUTORY BASIS: 35 U.S.C. § 103: 'A patent for a claimed invention may not be obtained... if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the pertinent art'; FOUR GRAHAM FACTORS (questions of fact, underlying the legal conclusion): FACTOR 1 — SCOPE AND CONTENT OF THE PRIOR ART: what prior art references exist and what do they teach?; all prior art available before the effective filing date; includes patents, publications, public uses, sales, and any public disclosures; combination of multiple references is permissible; FACTOR 2 — DIFFERENCES BETWEEN PRIOR ART AND CLAIMED INVENTION: what is the gap between what the prior art teaches and what the claim requires?; identify the differences (the 'delta') that the applicant/patentee claims as the invention; FACTOR 3 — LEVEL OF ORDINARY SKILL IN THE ART (POSITA): what knowledge, skills, and experience does the person of ordinary skill have?; higher POSITA skill = more prior art knowledge is presumed known; higher POSITA skill can make a claim more vulnerable to obviousness (POSITA would have known more combinations); FACTOR 4 — SECONDARY CONSIDERATIONS (OBJECTIVE INDICIA OF NON-OBVIOUSNESS): commercial success (with nexus to the claimed invention); long-felt need (the problem existed for a long time before the invention); failure of others (others tried but failed to solve the problem); copying by competitors; unexpected results; praise from experts in the field; licensing (others paid to use the invention); LEGAL CONCLUSION: after considering all four factors, the court or examiner makes a legal conclusion about whether the claimed invention was obvious; no single factor is determinative.

KSR International Corp. v. Teleflex Inc. (S.Ct. 2007) significantly expanded the scope of obviousness: THE PRE-KSR TSM TEST: before KSR, the Federal Circuit had developed the teaching-suggestion-motivation (TSM) test; to find obviousness, you had to find: a specific teaching, suggestion, or motivation in the prior art to make the claimed combination; the TSM test was applied rigidly — without explicit motivation in the references, the combination was not obvious; KSR HOLDING: the Supreme Court unanimously rejected the rigid application of the TSM test; KSR RULES: (a) 'obvious to try' can establish obviousness when there is a 'finite number of identified, predictable solutions and a person of ordinary skill [would have] good reason to pursue the known options within his or her technical grasp'; (b) a person of ordinary skill in the art is 'a person of ordinary creativity, not an automaton'; (c) combining prior art elements with 'ordinary skill and common sense' can render a claim obvious; (d) prior art can suggest a combination by: recognizing a problem and finding a known solution to that problem; using a technique that has worked in a related field; combining elements already obvious to combine; following market demands; (e) 'it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does'; this is more flexible than TSM but still requires articulating WHY; IMPACT: KSR made it easier to find patents obvious; USPTO began rejecting more claims on obviousness grounds; IPR proceedings often succeed on obviousness; OBVIOUS TO TRY: the most important KSR addition; if there are a few obvious choices to try and all are predictable, trying them all = obvious; not 'obvious to try' if: the number of choices is large; results are unpredictable; skilled person had no reason to prefer one over another.

Secondary considerations provide objective evidence that an invention was not obvious: COMMERCIAL SUCCESS: evidence that the patented invention achieved commercial success; requires NEXUS: the commercial success must be linked to the patented features, not to marketing, brand, or unpatented features; this is the most commonly cited secondary consideration but also the most scrutinized; a patent owner must show: (a) the product was commercially successful; (b) the commercial success is due to the patented features; (c) not attributable to other factors (advertising, first-mover advantage, brand); LONG-FELT NEED: evidence that a problem existed for many years before the invention and no one solved it; shows that skilled persons tried but failed; the longer the need existed unsatisfied, the stronger the evidence; must show: (a) the need/problem existed; (b) it was recognized in the field; (c) no satisfactory solution was found until the invention; FAILURE OF OTHERS: explicit evidence that others tried and failed to solve the same problem; published literature describing unsuccessful attempts is powerful evidence; COPYING: when a competitor copies the patented invention rather than designing around it, this suggests the invention was not obvious; otherwise the competitor would simply use the obvious alternative; UNEXPECTED RESULTS: the invention performs significantly better than the prior art would have predicted; must show comparative data comparing the claimed invention to the closest prior art; the results must be 'unexpectedly good' not just 'slightly better'; LICENSING: widespread licensing suggests the industry viewed the invention as valuable and non-obvious; licensees would not have paid if the technology were obvious to practice without the patent; PRAISE FROM EXPERTS: contemporaneous praise from skilled artisans; industry awards; publication in top journals; WHO BEARS THE BURDEN: prima facie case of obviousness shifts the burden to the patentee to show non-obviousness; secondary considerations must be specifically linked to the claimed invention; WEIGHT: well-presented secondary considerations can overcome a strong prima facie case; Federal Circuit has reversed PTAB obviousness findings based on secondary considerations.

Obviousness challenges are common in both IPR and litigation but have important procedural differences: IPR OBVIOUSNESS (§§ 311-319): GROUNDS: only § 102 (anticipation) and § 103 (obviousness) based on patents or printed publications; other prior art forms (prior use; sales) cannot be raised in IPR; EVIDENCE STANDARD: preponderance of the evidence (lower than district court's clear and convincing); about 45-50% of claims reaching FWD in IPR are canceled; CLAIM CONSTRUCTION: Phillips standard (same as district court since 2018 change); DISCOVERY: limited; depositions of declarants only; no document requests; PETITION FORMAT: 60-page limit (35 pages of argument + 25 appendix); must present all arguments within the petition — new theories after institution are limited; PTAB OBVIOUSNESS: three-APJ panel; KSR flexible approach applied; motivation to combine is examined carefully; unexpected results must be established through declaration evidence; DISTRICT COURT OBVIOUSNESS: EVIDENCE STANDARD: clear and convincing evidence for invalidity; this is a higher bar than IPR preponderance; DISCOVERY: full discovery available (document requests; depositions; interrogatories); experts can be deposed at length; CLAIM CONSTRUCTION: Markman hearing; Phillips standard; can be appealed to Federal Circuit; JURY ROLE: obviousness is ultimately a legal question (facts → legal conclusion); the jury can decide the underlying factual questions (Graham factors); the judge decides the ultimate legal question of obviousness; SECONDARY CONSIDERATIONS: important at both IPR and district court; particularly valuable in district court where the commercial context is more fully developed through discovery; more likely to overcome IPR institution if presented early; DUAL TRACK STRATEGY: file IPR on obviousness grounds (prior art); simultaneously pursue § 101 and § 112 invalidity in district court; IPR gives faster invalidity outcome; district court covers grounds IPR cannot.

Patent challengers and owners use specific arguments and counter-arguments in obviousness disputes: COMMON OBVIOUSNESS ARGUMENTS (CHALLENGERS): COMBINATION ARGUMENT: combine reference A + reference B to arrive at the claim; motivation: both references are in the same field; the combination solves a known problem; a skilled person would have been motivated to combine; DESIGN CHOICE ARGUMENT: a claim element is a design choice among known alternatives; all alternatives perform the same function; skilled persons would routinely select among them; OBVIOUS TO TRY ARGUMENT (KSR): a finite number of possible solutions; each solution was known; a skilled person would have tried them all; the result was predictable; TEACHING AWAY COUNTERARGUMENT: the prior art taught AWAY from the claimed solution; explicitly discouraged or warned against the combination; a skilled person would not have made the combination given the teaching away; UNEXPECTED RESULTS COUNTERARGUMENT: the combination produces results that were unexpected; comparative data showing better performance than expected; must be specific and tied to the claim; NEXUS FOR SECONDARY CONSIDERATIONS: commercial success is tied to the specific claimed features; not just the product as a whole; quantitative data preferred; MISSING MOTIVATION ARGUMENT: no reason to combine the specific references in the specific way claimed; the combination would destroy the utility of one of the references; the motivation to combine is hindsight reconstructed from the claimed invention; CLAIM INTERPRETATION ARGUMENTS: the claim requires more than what the prior art teaches; the combination lacks a specific claim element; the combination teaches something different from what the claim requires; PRACTICAL PROSECUTION STRATEGY: always present secondary considerations evidence in prosecution; include comparative data in the specification at filing; document commercial success during prosecution; industry praise and licensing evidence collected post-filing can be presented during prosecution via declarations.