The author of this blog is Solveig Singleton, a lawyer and senior adjunct fellow with the Progress and Freedom Foundation and commentator on ipcentral.info. My colleague James. V. Delong and I authored an amicus brief in KSR hoping for a tighter standard of non-obviousness for patents.

My take on KSR: Right result, proper caution–yet utterly frustrating.

In a nutshell, a unanimous Court overturns the appellate decision on the ground that the test of “obviousness” used below misunderstood the proper use of prior art in considering the validity of a combination patent; and, more generally, the Court of Appeals was too rigid and did not allow the fact finder recourse to common sense. The Court recognized the risk that too many inventions would seem “obvious” by hindsight, but said only that the appellate court took the wrong approach to the problem.

For a rationale, the Court drew on recent studies noted in the briefs (including PFF’s own) to note that, “in many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scienfitic literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.” (p. 15.)

Much of the Court’s discussion is specific to patents that combine older elements, speaking of “the need for caution in granting a patent based on the combination of elements found in the prior art” (p. 11).

“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary kill can implement a predictable variation, section 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” (p. 13). “The analysis need not seek out precise teaching directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” (p. 14). “If the claim extends to what is obvious, it is invalid…” (p. 16).

The Court corrected the Court of Appeals on three specific legal points.

1) “Any need or problem known in the field of endeavor can provide a reason for combining the elements in the manner claimed,” not just the motive of the patentee. (p. 16). 2) “In many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” –he will not just look to patents designed to solve the same problem. (pp. 16-17) 3) “… the fact that a combination was obvious to try might show that it was obvious under 103” (p. 17).

A more narrow opinion that still addresses the substantive issue of obviousness is hard to imagine. There was little guidance from the Court on the systemic issues raised by amici and the parties, such as evidentiary standards, presumptions of validity, how or why to improve the examiner’s and the courts’ access to the opinions of “persons of ordinary skill in the art,” and so on. The Court notes that the question of obviousness is a question of law (and therefore is for the judge to determine), but at the same time recognizes that far more will usually be needed to resolve each question than the mental processes of the judge, informed by common sense. Here the Court’s failure to give more direction is most frustrating. Treating obviousness as a question of mixed law and fact or even a matter for “judicial notice” might point to more concrete solutions to the problem (setting aside the appalling prospect of the question going to the jury).

The Court reached the right result, and the case is on the right track in paving the road for a more informed and somewhat higher standard of non-obviousness. But what exactly that will be, will again be left to the lower courts in a long drawn-out process that many observers think is broken.

Frustrating as it is, given the difficulty of patent issues, the Court’s caution is appropriate. What can Congress do now? Exercise caution as well. Rather than tackling the statutory standard of obviousness directly, address the better-understood institutional and legal process issues. Let more circuits hear patent appeals, to give the Federal Circuit some feedback. Think about how to improve accountability at the USPTO. If rigid rules do not do the trick, it means that somewhere, there must be the competent exercise of discretion—hard to manage without market forces. But it must be done.