- These objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight.
- These objective criteria help inoculate the obviousness analysis against hindsight.
- These objective criteria thus help turn back the clock and place the claims in the context that led to their invention. Technical advance, like much of human endeavor, often occurs through incremental steps toward greater goals. These marginal advances in retrospect may seem deceptively simple, particularly when retracing the path already blazed by the inventor.
- Simply because the technology can be easily understood does not mean that it will satisfy the legal standard of obviousness. In fact, objective consideration of simple technology is often the most difficult because, once the problem and solution appear together in the patent disclosure, the advance seems self-evident. Instead, the proper analysis requires a form of amnesia that “forgets” the invention and analyzes the prior art and understanding of the problem at the date of invention.
- The district court has used the invention to define the problem that the invention solves. Often the inventive contribution lies in defining the problem in a new revelatory way. In other words, when someone is presented with the identical problem and told to make the patented invention, it often becomes virtually certain that the artisan will succeed in making the invention.
- The mere recitation of the words “common sense” without any support adds nothing to the obviousness equation. Within the statutory test to determine if a claimed invention has advanced its technical art field enough to warrant an exclusive right, “common sense” is a shorthand label for knowledge so basic that it certainly lies within the skill set of an ordinary artisan.
Wednesday, May 30, 2012
Hindsight, Problem to be Solved, Common Sense
In Mintz v. Dietz & Watson, Inc., the Federal Circuit vacated a district court's finding of obviousness and discussed some issues involving hindsight, using the invention to define the problem to be solved, and the notion of "common sense."
Posted by Shawn T. Gordon at 8:39 AM