Rules, Standards, and the Reality of Obviousness

Case Western Reserve Law Review, Dec 2014

By Brenda M. Simon, Published on 01/01/14

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Rules, Standards, and the Reality of Obviousness

Rules, Standards, and the Reality of Obviousness Brenda M. Simon 0 0 Thi s Article is brought to you for free and open access by the Student Journals at Case Western Reserve University School of Law Scholarly Commons. It has been accepted for inclusion in Case Western Reserve Law Review by an authorized administrator of Case Western Reserve University School of Law Scholarly Commons - Rules, Standards, and the Reality of Obviousness Brenda M. Simon† Obviousness, the great question of patent law, is a muddle. Attempts to clarify the doctrine face a significant obstacle—the goal of providing efficient and cost-effective prosecution limits the amount of time patent examiners can spend determining obviousness. As a result, examiners use the analogous arts test as a rough gauge of obviousness during prosecution. The hope was that the analogous arts test would provide an efficient, rules-based approach to obviousness. The Federal Circuit has not, however, provided much guidance on how to apply the analogous arts test, resulting in a soft rule, at best. While this uncertainty may be tolerable during prosecution, where time-pressed examiners can be forgiven for relying on common sense among other things, courts should no longer rely on the outdated analogous arts test as a shortcut to find inventions obvious. During litigation, more time and resources can be spent on the obviousness assessment. At that time, decision makers should use a more appropriate standard, requiring assessment of common practices in the field of invention and whether the invention is obvious in light of these practices. This shift in the focus of the obviousness analysis during litigation should result in a more accurate determination of obviousness when it matters most. Associate Professor, Thomas Jefferson School of Law; Non-Resident Fellow, Stanford Law School. Thanks to Deven Desai, John Duffy, Hank Greely, Tim Holbrook, Eric Lane, Mark Lemley, Orly Lobel, Elizabeth Rosenblatt, Jake Sherkow, Ted Sichelman, Howard Strasberg, Marketa Trimble, and participants at the Intellectual Property Scholars Conferences at Stanford Law School and Cardozo Law School, the Distinguished Speaker Series at Whittier Law School, and the Corporate Innovation and Legal Policy Seminar and PatCon4 at the University of San Diego for helpful comments and suggestions on earlier drafts. Case Western Reserve Law Review·Volume 65·Issue 1·2014 Rules, Standards, and the Reality of Obviousness Contents Introduction .....................................................................................26  I.  The Development of the Analogous Arts Test.......................30 Introduction Courts and patent examiners face several challenges in assessing whether an invention is too obvious to deserve patent protection.1 One of the greatest obstacles is the need to balance the benefits of To address these problems, commentators have set forth numerous proposals, such as altering the presumption of validity, providing more rigorous examination, and considering whether a patent would have been necessary ex ante to induce innovation. See, e.g., Michael Abramowicz & John F. Duffy, The Inducement Standard of Patentability, 120 Yale L.J. 1590, 1596 (2011) (proposing a shift from the cognitive model of analyzing nonobviousness to one that relies on inducement theory); Doug Lichtman & Mark A. Lemley, Rethinking Patent Law’s Presumption of Validity, 60 Stan. L. Rev. 45, 59–61 (2007) (questioning the presumption of validity); Glynn S. Lunney Jr., E-Obviousness, 7 Mich. Telecomm. & Tech. L. Rev. 363, 412, 416 (2001) (discussing inducement in the context of e-commerce patents); Kristen Osenga, Entrance Ramps, Tolls, and Express Lanes—Proposals for Decreasing Traffic Congestion in the Patent Office, 33 Fla. St. U. L. Rev. 119, 121–22 (2005) (offering proposals to adjust the examination process in terms of speed and quality). certainty with the goal of rewarding innovation, which often shifts paradigms and upsets predictability.2 These countervailing interests often arise in the classic debate about rules and standards.3 Rules provide ex ante certainty that supports investment, while standards afford the ability to recognize creativity and innovation.4 In the last two decades, the United States Supreme Court has rejected many of the attempts to bring greater certainty to patent law.5 The Court has recognized that the use of standards, rather than rules, provides the flexibility necessary to assess patentability.6 For example, in its 2007 decision on obviousness, the Court disavowed the Federal Circuit’s rigid requirement that the prior art contain a teaching, suggestion, or motivation to be combined.7 Instead, the Court advanced a flexible standard, deciding obviousness in light of “[t]he diversity of inventive pursuits and of modern technology.”8 Attempts to reevaluate the doctrine of obviousness in light of the rules versus standards debate should recognize the realities of (...truncated)


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Brenda M. Simon. Rules, Standards, and the Reality of Obviousness, Case Western Reserve Law Review, 2014, Volume 65, Issue 1,