Tuesday, February 1, 2011

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.