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IP Newsflash April April 2009: Obviousness: Should It Still Be A Question Of Law?


The idea of “obviousness” in patent law is one of the most difficult and arcane areas of the law. According to U.S. patent law, in order for a patent to be valid, the invention claimed in the patent must not be considered “obvious … to person having ordinary skill in the art.” (35 U.S.C. § 103(a).) The United States Patent and Trademark Office (“USPTO”) must determine whether or not an invention is obvious in view of prior art during patent examination. If so, a patent will not issue. During litigation, courts must apply the same standard after a patent has issued to determine whether the patent should still stand.

In 2007, the U.S. Supreme Court was called upon to revisit the notion of obviousness, and handed down a decision that has caused the USPTO and the courts to take a harder line than before in considering obviousness. That case was KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007). Since that decision, other courts have struggled to apply the Supreme Court’s directions on the question of obviousness of inventions. The appeals court of last resort before the U.S. Supreme Court is the Court of Appeals for the Federal Circuit. This court recently had occasion to consider those directions in the context of combining several prior art references to find an invention obvious.

On February 9, 2009, in Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., No. 08-1333 (Fed. Cir. 2009), the Federal Circuit invalidated for obviousness a patent that claims a candle holder with a removable cover that also acts as a base for the holder. The Federal Circuit thereby reversed the district court’s summary judgment finding that defendant Limited willfully infringed U.S. Patent No. 6,457,969.

According to the Federal Circuit, the district court was incorrect in denying Limited’s motion for summary judgment of obviousness and concluding that a motivation to combine the prior art did not exist. By requiring an explicit motivation to combine, the Federal Circuit felt that the district court erred in its understanding of KSR International Co. v. Teleflex Inc.The Federal Circuit explained that while KSR did contain language that the motivation to combine analysis “should be made explicit …” Ball Aerosol, supra, p.14, that language referred to the court’s analysis, and not to the teachings in the prior art. Instead, the Supreme Court in KSR intended that a court should apply a flexible standard in determining the existence of a motivation to combine in the prior art, which includes accounting for “‘the inferences and creative steps,’ or even routine steps, that an inventor would employ”. Id., p.15.

In some cases, patent owners present evidence of nonobviousness in an attempt to preserve a patent’s validity. That evidence is called “secondary considerations of nonobviousness,” and sometimes takes the form of evidence of commercial success of an invention. The Ball Aerosol case involved such an attempt, which did not succeed.

The Federal Circuit dismissed BASC’s argument that secondary considerations of commercial success support the district court’s conclusion of nonobviousness: “The minimal indications of commercial success argued by BASC do not outweigh the clear indication of obviousness apparent from the prior art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)”. Id., p.15. The Federal Circuit stated a similar view in Agrizap v. Woodstream Corp., No. 07-1415 (Fed. Cir. March 28, 2008) with regard to secondary considerations, “the objective evidence of nonobviousness simply cannot overcome such a strong prima facie case of obviousness.” Id., p.12.

In Ball Aerosol, the Federal Circuit collapsed the determination of obviousness into a question of predictability or foreseeability. “The Supreme Court in KSR stated that ‘[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.’ 127 S.Ct. at 1740. That is clearly the situation here. The combination of putting feet on the bottom of the candle holder and using the cover as a base for the candle holder was a predictable variation.” (Emphasis added), Id., p. 13. It was undisputed that the prior art disclosed all of the limitations of the claims. Therefore, “[t]he resulting, and desired, decreased heat transfer between the candle holder and the supporting surface from the combination would have been entirely predictable and grounded in common sense”. (Emphasis added), Id., p.13.

If a claimed invention like the candle holder in Ball Aerosol is “entirely predictable and grounded in common sense”, then in plain language it is foreseeable. In patent law, whether or not a consequence or occurrence is foreseeable has been a longstanding, and in recent years, highly discussed concept beyond the issue of obviousness. See e.g. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 493 F.3d 1368 (Fed. Cir. 2007).

The Supreme Court in both Graham and KSR has been clear in that while obviousness involves underlying factual issues, it is still ultimately a question of lawKSR, supra; Graham v. John Deere Co., 383 U.S. l, 17-18 (1966) (“While the ultimate question of patent validity is one of law, … the § 103 condition … lends itself to several basic factual inquiries.”) Yet, because the legal question is so intertwined with the facts, jury instructions for obviousness may still be submitted for consideration, and trial judges as a practical matter may still let the jury decide the ultimate question of “law”. For example, the American Intellectual Property Law Association (AIPLA) Model Patent Jury Instructions provides:

7.0 Obviousness

[The Defendant] contends that claim(s) [numbers] of the [abbreviated patent number] patent are invalid because the claimed invention(s) is “obvious.”

A claimed invention is invalid as “obvious” if it would have been obvious to a person of ordinary skill in the art of the claimed invention at the time the invention was made. Unlike anticipation, which allows consideration of only one item of prior art, obviousness may be shown by considering more than one item of prior art.

The following factors must be evaluated to determine whether [the Defendant] has established that the claimed inventions are obvious:

  1. the scope and content of the prior art relied upon by [the Defendant];
  2. the difference or differences, if any, between each claim of the [abbreviated patent number] patent that [the Defendant] contends is obvious and the prior art;
  3. the level of ordinary skill in the art at the time the invention of the [abbreviated patent number] patent was made; and
  4. additional considerations, if any, that indicate that the invention was obvious or not obvious.

Each of these factors must be evaluated, although they may be analyzed in any order, and you must perform a separate analysis for each of the claims.

[The Defendant] must prove obviousness by clear and convincing evidence. I will now explain each of the four factors in more detail.

As the question of obviousness becomes more a question of foreseeability, so much so that other factors can be ignored and instead the test is whether an invention was “entirely predictable and grounded in common sense”, then does the ultimate issue become more of a question of fact or law?

The concept of “foreseeable harm” is used in cases involving an assertion of negligence to limit the liability of a party, meaning that a reasonable person would be able to predict or expect the ultimately harmful result of their actions. The duty to act reasonably to avoid foreseeable risks of physical injury extends to any person.

Virtually every state has pattern jury instructions on negligence, most of which address the concept of foreseeability. See e.g. Suggested Pattern Jury Instructions, Volume I: Civil Cases, State of Georgia, Fifth Edition (emphasis added):

60.202 Torts; Proximate Cause; Foreseeability; Natural and Probable Consequence; Intervening Cause Rules (Chain Reaction Situation)

A defendant may be held liable for an injury when that person commits a negligent act that puts other forces in motion or operation resulting in the injury when such other forces are the natural and probable result of the act that the defendant committed and that reasonably should have been foreseen by the defendant. When the injuries could not reasonably have been foreseen as the natural, reasonable, and probable result of the original negligent act, then there can be no recovery. If the chain reaction that resulted from the defendant’s alleged negligence, if any, meets the above tests, then the plaintiff may recover.

The interplay between questions of law and fact is similarly present in negligence. For example, in Florida Power & Light Co. v. Periera, 705 So.2d 1359 (Fla. 1998), the Florida Supreme Court stated:

There are two distinct issues in this case, duty and proximate cause. Foreseeability can be relevant both to the element of duty and the element of proximate cause. See McCain v. Florida Power Corp., 593 So. 2d 500, 502 (Fla. 1992). “The duty element of negligence focuses on whether the defendant’s conduct foreseeably created a broader ‘zone of risk’ that poses a general threat of harm to others.” Id. The issue of duty is a question of law. “The proximate causation element, on the other hand, is concerned with whether and to what extent the defendant’s conduct foreseeably and substantially caused the specific injury that actually occurred.” Id. The issue of proximate cause is generally a question of fact. “In other words, the former is a minimal threshold legal requirement for opening the courthouse doors, whereas the latter is part of a much more specific factual requirement that must be proved to win the case once the courthouse doors are open.” Id. (footnote omitted). Florida Power & Light Co., supra, 705 So.2d at 1361.

If the determination of obviousness, as in Ball Aerosol, is collapsed into a determination of foreseeability, then to borrow the words of the Florida Supreme Court, who should determine what is necessary to open the door? And once inside the door, who should decide the ultimate question? For cases involving negligence, the ultimate question of “foreseeability” is one of fact, although the Court does consider “foreseeability” in initially determining whether any duty exists.

Yet in a patent case like Ball Aerosol that involves obviousness, the ultimate question of “foreseeability” is one of law. If a jury in a negligence case is capable of determining the ultimate question of whether a defendant’s conduct foreseeably caused the plaintiff’s injury – a factual determination – then why can’t a jury in a patent case make a similar factual finding as to whether an invention was “foreseeable” in light of existing facts? Under such a simplified standard, the determination of a patent’s validity does appear to be an appropriate factual question.

The Ball Aerosol case illustrates the harder line being taken by courts in deciding that inventions are obvious and unpatentable. This harder line is expected to continue for the foreseeable future.

If you have questions about how this may specifically impact you or your company, please contact any of the following attorneys:

Robert A. Gutkin, Author ([email protected])
John R. Harris, Editor ([email protected])

NOTE: This article represents the views of the author and does not necessarily represent the views or positions of the firm or of any of its clients. The information contained herein is of a general nature and is not intended to provide legal advice to or address the circumstances of any particular individual or entity. Although we endeavor to provide accurate and timely information, there can be no guarantee that this information is accurate as of the date it is received or that it will continue to be accurate in the future. No one should act on this information without appropriate professional advice after a thorough examination of the particular situation.