Obviousness: Before and After
Panel
Panel 11: Recent Developments in Patent Law
Moderator
Dan Wadhwani, Professor of Management and Fletcher Jones Chair in Entrepreneurship, University of the Pacific, Eberhardt School of Business
Description
Non-obviousness, codified in 35 U.S.C. § 103, has been called “the ultimate condition of patentability” because of its crucial function of weeding out trivial patents and because of the challenges decision-makers have faced in devising a framework to determine whether a patent claim is obvious. The starting place for modern § 103 jurisprudence is Graham v. John Deere, the foundational Supreme Court decision interpreting this statutory provision. One of Graham’s important moves to was divide the evidence that bears on whether a patent claim is obvious into two general categories. The first set of inquiries, sometimes characterized as the “prima facie” case, mainly implicates pre-patent technical disclosures, known in patent law under the collective term “the prior art.” These inquiries include determinations of the prior art’s scope and content, differences between the prior art and the claim at issue, and the average level of skill in the technological area of the claimed invention. The second set of inquiries, which the Supreme Court in fact called “secondary considerations,” includes non-technical evidence such as commercial success of the claimed invention, long-felt need for a solution that the invention provided, and the failure of others to successfully address the problem ultimately solved by the patent. Decision-makers have used both types of evidence in determining whether or not patent claims comply with § 103.
In this Article, I argue that the primary-secondary heuristic that the Court set forth in Graham—and which it borrowed from a law review article that worked off some assumptions that are outdated if they were ever correct—has led to conceptual errors, and should be rejected in favor of a different framework. Among other things, the Court’s artificial segmenting of the § 103 inquiry into technical and non-technical siloes has led to mis-evaluations of the probative value of various types of evidence bearing on the obviousness question. I maintain that the logically salient way of organizing evidence in § 103 cases is not the primary-secondary divide, but the distinction between evidence that is available before the filing date of the patent application (ex ante) and evidence that is available after that date (ex post). Thus, after abandoning the primary-secondary framework, courts should instead classify evidence proffered on the question of obviousness into ex ante and ex post categories. I explain that, in contradistinction to the dubious guidance of Graham, the proposed approach fully accounts for the crucial role that the Patent Act attaches to the filing date in determinations of patentability. Finally, I contend that, should we wish to modulate the non-obviousness requirement so as to increase incentives for post-filing experimentation and commercialization activities, the Article’s framework provides a ready lever for implementing such a change.
Location
Pacific McGeorge School of Law, Lecture Hall, 3200 Fifth Ave., Sacramento, CA
Obviousness: Before and After
Pacific McGeorge School of Law, Lecture Hall, 3200 Fifth Ave., Sacramento, CA
Non-obviousness, codified in 35 U.S.C. § 103, has been called “the ultimate condition of patentability” because of its crucial function of weeding out trivial patents and because of the challenges decision-makers have faced in devising a framework to determine whether a patent claim is obvious. The starting place for modern § 103 jurisprudence is Graham v. John Deere, the foundational Supreme Court decision interpreting this statutory provision. One of Graham’s important moves to was divide the evidence that bears on whether a patent claim is obvious into two general categories. The first set of inquiries, sometimes characterized as the “prima facie” case, mainly implicates pre-patent technical disclosures, known in patent law under the collective term “the prior art.” These inquiries include determinations of the prior art’s scope and content, differences between the prior art and the claim at issue, and the average level of skill in the technological area of the claimed invention. The second set of inquiries, which the Supreme Court in fact called “secondary considerations,” includes non-technical evidence such as commercial success of the claimed invention, long-felt need for a solution that the invention provided, and the failure of others to successfully address the problem ultimately solved by the patent. Decision-makers have used both types of evidence in determining whether or not patent claims comply with § 103.
In this Article, I argue that the primary-secondary heuristic that the Court set forth in Graham—and which it borrowed from a law review article that worked off some assumptions that are outdated if they were ever correct—has led to conceptual errors, and should be rejected in favor of a different framework. Among other things, the Court’s artificial segmenting of the § 103 inquiry into technical and non-technical siloes has led to mis-evaluations of the probative value of various types of evidence bearing on the obviousness question. I maintain that the logically salient way of organizing evidence in § 103 cases is not the primary-secondary divide, but the distinction between evidence that is available before the filing date of the patent application (ex ante) and evidence that is available after that date (ex post). Thus, after abandoning the primary-secondary framework, courts should instead classify evidence proffered on the question of obviousness into ex ante and ex post categories. I explain that, in contradistinction to the dubious guidance of Graham, the proposed approach fully accounts for the crucial role that the Patent Act attaches to the filing date in determinations of patentability. Finally, I contend that, should we wish to modulate the non-obviousness requirement so as to increase incentives for post-filing experimentation and commercialization activities, the Article’s framework provides a ready lever for implementing such a change.
Speaker Bio
Dmitry Karshtedt's primary research interest is in patent law. His legal scholarship has been or will be published in the Vanderbilt Law Review, Washington University Law Review, and Iowa Law Review, and cited in three of the leading patent law casebooks and a casebook on intellectual property. Professor Karshtedt's academic work has won several awards, including the Samsung-Stanford Patent Prize and the scholarship grant for judicial clerks sponsored by the University of Houston Law Center Institute for Intellectual Property and Information Law.
Before going into law, Professor Karshtedt completed a Ph.D. in chemistry from U.C. Berkeley and worked as a staff scientist for a semiconductor materials startup. He is a co-author on five scientific publications and a co-inventor on ten U.S. patents. Professor Karshtedt received his law degree from Stanford Law School, where he served as the Senior Symposium Editor for the Stanford Law Review. Professor Karshtedt practiced in the Patent Counseling and Innovation Group at Wilson Sonsini Goodrich & Rosati and clerked for the Honorable Kimberly A. Moore on the U.S. Court of Appeals for the Federal Circuit. Immediately prior to starting his position at GW, Professor Karshtedt was a Fellow at the Center for Law and the Biosciences at Stanford Law School.