Tuesday, February 1, 2011

Graham's Crackers

The first three Graham factors, the “primary” ones, are of no probative value concerning the issue of whether a claimed invention would have been obvious. They present a series of meaningless hoops to jump through for courts, parties, and juries, to the extent juries address the issue.

The Graham factors are: “[1] the scope and content of the prior art, [2] the differences between the prior art and the claims at issue, [3] the level of ordinary skill in the pertinent art, and [4] secondary considerations, otherwise known as objective indicia of nonobviousness.” Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1349 (Fed. Cir. 2009). The first and third of these factors are decidedly neutral, since discoveries in crowded, highly skilled fields can be just as obvious or non-obvious as discoveries in sparse, low skilled fields. The level of ordinary skill in the pertinent art is inherent equivocal. A high level of skill suggests, on the one hand, that any invention should be deemed more obvious because these highly skilled folks would have been able to combine prior art references but at the same time suggests that if an invention was obvious then it should have been invented earlier by one of these highly skilled folks in the field. Concerning the scope and content of the prior art, the definition of the field of an invention is itself precarious, since an invention is necessarily new and may well span more than one “field.” Moreover, the scope and content of the prior art is subsumed into the second factor. So those two factors are meaningless. [Update: See CELSIS IN VITRO, INC. V. CELLZDIRECT, INC. in which the majority (split opinion of course) notes that the crowded field, in this case, favored a finding of nonobviousness: "As to the scope and content of the prior art, the district court correctly emphasized and found based on the preliminary record that the art was a crowded field for many years and yet there was not one reference to [an aspect of the invention at issue]."]

The second factor (differences between the invention and the prior art) seems at first blush like the key Graham factor, but it does nothing but restate the statutory definition of obviousness, which simply states that an invention is obvious if the differences between it and the prior art would have been obvious. Helpful. Indeed, this factor is neutral as well. Sometimes a small change from the prior art can result in a major breakthrough, and sometimes it can be just an incremental, obvious step taken in the ordinary course of technological development. In the case of the electric light bulb, for example, the difference between the design that was commercially viable and the prior art was very small. Thus, the three main Graham factors have little bearing on the ultimate question, which is presumably whether an invention would have been a no brainer and should not result in a term of monopoly for the person who first filed an application for a novel combination.

The last Graham factor, secondary considerations, is the only Graham factor that has any meaningful relevance for determining whether an invention was a good one. In practice, however, these are often given short shrift by the Federal Circuit and the PTO. These considerations, such as long-felt need, industry acceptance, failure of others, copying and unexpected results, all provide at least some evidence that the invention added something useful to the existing state of knowledge.

As a whole, the Graham analysis never directly seeks to determine whether the invention was the result of a good idea. Only after somehow concluding that an invention would have been “obvious” based on the first three [non-]factors does a court even turn to the most pertinent available objective evidence for that issue.

The bottom line is this: Obviousness is completely unpredictable and has been for many years. The determination is in the end at the whim of whatever three judge panel of the Federal Circuit is drawn. The test used for this “question of law” has no analytical rigor. Stripped of the fa├žade of its boilerplate factors, it boils down to the opinion of the court. That makes obviousness both unpredictable and fundamentally unfair. It is time to toss Graham out. And until the courts can devise a legal framework that produces both fair and predictable results, obviousness should be left to juries to decide.

The Problem to be Solved Problem

“We have consistently stated that courts may find a motivation to combine prior art references in the nature of the problem to be solved, and that this form of motivation to combine evidence is particularly relevant with simpler mechanical technologies.” (Tokai v. Easton Enterprises (Fed. Cir. 2011).) An obviousness analysis that hinges on the identity of the problem solved by the invention at issue is necessarily fraught with hindsight bias. One cannot judge the worthiness of an invention by assuming the invention exists and then asking if it would have been obvious to invent that invention. That is essentially what the Federal Circuit is condoning with its reliance on the nature of the problem to be solved as the source of motivation to combine prior art references. The invention must be known before the problem to be solved can even be identified (unless the problem has not been solved, in which case there would be no invention). Often, identifying the problem to be solved is the hard part—it can be the key step on the road to invention.

What the court is saying in these problem-to-be-solved-as-motivation cases is that if in hindsight it looks like it would have been easy to combine a couple of simple mechanical devices to get the invention before the court, then no patent for you, regardless of the fact that no one else had thought to make such a combination despite the fact that the references were known and regardless of any objective indicia of non-obviousness, such as the fact that after the inventor first put the combination it became very popular. That kind of stuff won’t prevent summary judgment.

In a dissenting opinion, Judge Newman explained the problems with the current state of obviousness analysis as follows: “The determination of obviousness is not whether a person could, with full knowledge of the patented device, reproduce it from prior art or known principles. The question is whether it would have been obvious, without knowledge of the patentee’s achievement, to produce the same thing that the patentee produced. This judgment must be made without the benefit of hindsight. It is improper to take concepts from other devices and change them in light of the now-known template of the patented device, without some direction in the prior art that would render it obvious to do so.” (Tokai v. Easton Enterprises (Fed. Cir. 2011).)

Relying on the problem to be solved—the problem solved by the claimed invention—as the reason to combine references to get to that claimed invention inherently results in hindsight bias. That standard is the problem that needs to be solved.