Under 35 U.S.C. § 103, “[a] patent for a claimed invention may not be ob-tained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill
309 See id.
310 Id. (quoting Quiet Tech. DC-8, Inc. v. Hurel-Dubois UK Ltd., 326 F.3d 1333, 1345 (11th
Cir. 2003)).
311 Id.
312 Id.
313 Id.
in the art to which the claimed invention pertains.”314 “Obviousness” is a question of law.315 Four factual inquiries have to be resolved before determining obvious-ness.316 They include: “the scope and content of the prior art, the differences be-tween the prior art and the claimed invention, the level of ordinary skill in the field of the invention, and any relevant objective considerations.”317
The ultimate question is “whether there was an apparent reason to combine the known elements in the way a patent claims.”318 When determining obvious-ness, as the Supreme Court has held, “it will often be necessary to look to interre-lated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge pos-sessed by a person having ordinary skill in the art.”319 To overcome obviousness, several non-obviousness factors may be considered.320 They, known as “secon-dary considerations,” include: “commercial success, long felt but unsolved needs, failure of others, etc.”321
While the final question of non-obviousness is a question of law, there are fac-tual questions needed to be decided.322 The key issue is who can be a person hav-ing ordinary skill in the art (“PHOSITA”).323 The Federal Circuit in Daiichi
314 35 U.S.C. § 103 (2013).
315 See Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1295 (Fed. Cir.
2012).
316 See id.
317 Id.
318 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007).
319 Id.
320 See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
321 Id. at 17.
322 See CHISUMET AL., supra note 276, at 564-65.
323 See id. at 620-21.
kyo Co. v. Apotex, Inc.324 has provides several factors for defining a PHOSITA.325 The factors include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educa-tional level of active workers in the field.”326 But, neither of these factors is dispo-sitive.327
After the level of a PHOSITA is decided, a technical expert can come in to as-sist the court or jury to figure out what such PHOSITA would have thought about the non-obviousness or obviousness of the claimed invention.328 There are various cases showing the role of a technical expert in playing a PHOSITA.
4.6.2 Invalidity Testimony
Under Dow Chem. Co. v. Mee Indus., Inc.,329 “[c]orroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.”330 In Dow Chem. Co., the Federal Circuit disagreed with the defendant’s theory of obviousness based on an expert testimony that
324 Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254 (Fed. Cir. 2007).
325 See Brenda M. Simon, The Implications of Technological Advancement for Obviousness, 19
MICH. TELECOMM. & TECH. L. REV. 331, 339 (2013).
326 Daiichi Sankyo, 501 F.3d at 1256 (citation and quotation both omitted).
327 See id. (“These factors are not exhaustive but are merely a guide to determining the level of
ordinary skill in the art.”).
328 See Rebecca S. Eisenberg, Obvious to Whom? Evaluating Inventions from the Perspective
of PHOSITA, 19 BERKELEY TECH. L.J. 885, 899 (2004) (“The defendant can offer testi-mony of an expert witness who will review the prior art and explain why it would have made the invention obvious, and the patent owner will predictably counter with its own ex-pert telling the opposite story.”).
329 Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370 (Fed. Cir. 2003).
330 Id. at 1378 (citations omitted).
shows prior public use.331 The Federal Circuit held that “the testimony was vague as to whether the alleged [prior public use] occurred more than a year prior to the filing of the applications that issued as the patents-in-suit, and the testimony lacked corroboration in any event.”332 Because the expert testimony was improperly ad-mitted, the Federal Circuit reversed the district court’s judgment of obviousness.333
4.6.3 Common Sense
“Common sense” can be one determining factor of obviousness.334 After KSR Int’l Co. v. Teleflex Inc.335 held by the Supreme Court in 2007, a court can base on
“common sense” to combine prior art references to reach the conclusion of obvi-ousness, which has been criticised as a hindsight approach to obviousness.336
Under Meyer Intellectual Properties Ltd. v. Bodum, Inc.,337 an expert may testify on “common sense” for establishing obviousness. In Meyer Intellectual Properties Ltd., the district court excluded the defendant’s expert from testifying on obviousness because it held that in his report the expert “advance[d] his opinion as a mere ipse dixit: ‘Trust me—I know obviousness when I see it, and this is it.’”338 However, the Federal Circuit reversed that ruling.339 While characterizing the ex-pert report as merely stating that “the [disputed patents] are obvious because one
331 See id.
332 See id.
333 See id.
334 See Thomas G. Hungar & Rajiv Mohan, A Case Study Regarding the Ongoing Dialogue
Between the Federal Circuit and the Supreme Court: The Federal Circuit’s Implementation of KSR v. Teleflex, 66 SMU L. REV. 559, 561-62 (2013).
335 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
336 See Simon, supra note 325, at 339-40.
337 Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354 (Fed. Cir. 2012).
338 Id. at 1363 (citation omitted).
339 See id. at 1376.
skilled in the art would have been motivated based on familiarity with the prior art to combine the known method ... with the [known] structure,”340 the Federal Cir-cuit held that the expert “invoked the common sense of one skilled in the art as evidence of motivation to combine prior art references.”341 Under the Federal Cir-cuit case law, “the common sense of one skilled in the art can play a role in the ob-viousness analysis.”342 Therefore, the Federal Circuit ruled that the district court abused its discretion by preventing the defendant’s expert from being heard by the jury.343
Meyer Intellectual Properties Ltd. creates a problem because it may ease the burden of proof on a defendant to form its obviousness arguments. While the Su-preme Court in KSR affirmed a flexible test of obviousness,344 it still cautioned that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”345 When a technical expert testifies at the time of trial, her knowledge has already been based on the long-existing and contemporary technology. It is unavoidable to bring the contemporary technology into the mind of a PHOSITA at the time of the invention.
Even though the Supreme Court allows an “obvious-to-try” standard,346 there is still some form of motive, such as “a design need or market pressure to solve a
340 Id. at 1375.
341 Id.
342 Id. at 1375-76 (quotation omitted).
343 See id. at 1376.
344 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421-22 (2007) (“Rigid preventative rules
that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”).
345 Id. at 421.
346 See id.
problem [, and] a finite number of identified, predictable solutions.”347
Therefore, a technical expert has to base his view on some reference. Merely concluding that a PHOSITA would have been motivated to combine prior art refer-ences at the time of the invention without reciting any other documents is a repre-sentation of hindsight. Meyer Intellectual Properties Ltd. is now more likely to cause that hindsight.
4.6.4 Rebuttal to Obviousness Factors
As shown in Outside the Box Innovations, LLC v. Travel Caddy, Inc.,348 ex-pert testimony on non-obviousness may help prevent judicial hindsight of obvious-ness. In Outside the Box Innovations, LLC, the patentee submitted an expert to tes-tify that the prior art references did not disclose all elements of the claims and there was no suggestion of combining these references to reach the claimed invention.349 The district court excluded the patentee’s expert from testifying on non-obviousness because the expert was not a patent attorney and therefore could not understand the claims.350
While holding that an abuse of discretion existed, the Federal Circuit did not end its analysis because the infringer also argued that the exclusion was harm-less.351 Applying the Eleventh Circuit case law, the Federal Circuit disagreed with the infringer’s assertion.352 Under the Eleventh Circuit case law, “errors in admis-sion or excluadmis-sion of evidence may be tolerated unless they affect the substantial rights of the parties; that is, unless the errors have a ‘substantial influence’ on the
347 Id.
348 Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285 (Fed. Cir. 2012).
349 See id. at 1298.
350 See id. at 1295-96.
351 See id. at 1297.
352 See id. at 1297-99.
outcome of a case or leave ‘grave doubt’ as to whether they affected the outcome of a case.”353 The Federal Circuit found that the exclusion of the patentee’s expert testimony might have influenced the outcome of the obviousness analysis.354 Therefore, the exclusion ruling could not be affirmed.355
The Federal Circuit’s holding was based on a non-obviousness concern on the district court’s obviousness analysis. The Federal Circuit cautioned that “advances in technology may in retrospect appear obvious to a judge, stimulated by advo-cacy.”356 The solution of eliminating such judicial hindsight as recognized by the Federal Circuit is “the testimony of persons experienced in the field of the inven-tion.”357 Reviewing the district court’s reasoning, the Federal Circuit found that
“[a] substantial right was indeed affected, for obviousness depends on evidentiary facts found and evaluated from the viewpoint of a person in the field of the inven-tion, as of the time of the invention.”358
Therefore, while an obviousness analysis is based on evaluating the Graham inquiries to answer the ultimate question of law, expert testimony is helpful for a patentee to defend obviousness and to prevent judicial hindsight. So, an evidentiary ruling that excludes such expert testimony is an abuse of discretion.
Unlike Meyer Intellectual Properties Ltd., the Federal Circuit in Outside the Box Innovations offers to a patentee a good tool to conquer a “common sense“ conclusion made by the technical expert of its opponent. But, both prece-dents create a phenomenon where an issue of obviousness is a battle of technical experts. Whether a claim is obvious is subject to the credibility of each technical
353 Id. at 1297 (emphasis added) (citations and quotations both omitted).
354 See id. at 1297-98.
355 See id. at 1299.
356 Id. at 1297.
357 Id.
358 Id. at 1297-98.
expert, but not to an objective view of a PHOSITA.