Case Law Update on Obviousness:
Common Sense and the “Simple” Invention
The 2007 U.S. Supreme Court decision, KSR International Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007), significantly modified the test that courts employ to analyze the question of obviousness. The Supreme Court criticized the Court of Appeals for the Federal Circuit for too rigidly applying its “teaching-suggestion-motivation” test, for example, by often requiring that evidence of motivation to modify the prior art or to combine references must be found in published materials. Id. at 1741.
The Supreme Court explained that “[i]n many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends.” Id. The Supreme Court also noted that some new products or methods may simply be the result of common sense. For example, the Court explained that,
[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
Id. at 1742. One reason why the lower courts had, prior to KSR, avoided relying upon common sense when considering obviousness was undoubtedly the fear that if they substituted their own judgment for that of skilled artisans who were working in the relevant field when the invention was made, they might fall prey to hindsight, and thus make the wrong decision. The Supreme Court recognized this risk, but it pointed out that “[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it.” Id. at 1742-43. The Court also indicated that a lower court may permit or even require an evaluation of common sense and common knowledge in the art as part of its obviousness determination. See id. at 1743.
But when will a Federal Circuit judge feel comfortable relying upon common sense and perhaps also deciding that expert testimony is unnecessary to resolve a question of obviousness? Cases following KSR indicate that common sense may be relied upon when the claimed invention involves technology that judges consider to be simple to understand and/or familiar to a layperson, namely, certain mechanical components, consumer products, or business methods.
For example, Cimline, Inc. v. Crafco, Inc., 413 F. App’x 240, 2011 WL 715233 (Fed. Cir. 2011) (unpublished), dealt with the automation of a previously manually operated conveyer belt used for pouring material into cracks in a road surface. The Federal Circuit found that using a powered instead of a manual conveyer belt “requires nothing more than common sense to appreciate the resultant advantage.” Id. at 246. Consequently, the claims were found obvious without the need for expert testimony. Id. at 246-47. The Federal Circuit has also relied on common sense in cases involving methods for building concrete block walls, and locking and clamping devices. Stone Strong, LLC v. Del Zotto Prods. of Fla., Inc., 455 F. App’x 964, 2011 WL 4913415 (Fed. Cir. 2011) (unpublished); Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010); Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317 (Fed. Cir. 2012).
Similarly, the Federal Circuit has also relied upon common sense in cases involving products or services arguably familiar to a layperson. For example, Odom v. Microsoft Corp., 429 F. App’x 967, 2011 WL 1666922 (Fed. Cir. 2011) (unpublished), involved the design of toolbars or pull-down menus in computer software programs. The case of Western Union Co. v. Moneygram Payment Systems, Inc., 626 F.3d 1361 (Fed. Cir. 2010), involved replacement of a fax machine with an electronic keypad in a method of ordering a money wire. And Meyer Intellectual Properties Ltd. v. Bodum, Inc., 690 F.3d 1354 (Fed. Cir. 2012), involved adding a milk-frothing mechanism to a French press coffee maker. In each of these cases, the Federal Circuit also found the differences between the claimed inventions and the prior art to be small and the success of the claimed modifications to be predictable in advance based on common sense.
Norgren, decided in November 2012, involved claims drawn to a clamp for connecting two fluid flow elements in a compressed air device. 699 F.3d 1317. The difference from the prior art was found to be the presence of a hinge on one side of the clamp. Id. at 1326. The International Trade Commission (ITC) had previously found that there was motivation to add the hinge in order to avoid a problem with loose parts, as well as for ease of use. Id. To support that argument, the ITC had noted that a prior art patent cited in Norgren’s specification taught adding a hinge to a connection in a water pipe in order to solve a similar loose parts problem and to make the connection easier to use. Id. Considering the ITC’s conclusions, the Federal Circuit commented that “[h]inges are a common mechanical component that would have been known to those of ordinary skill in the art to solve a loose parts problem.” Id. Other evidence, such as expert testimony and the problems with the prior art described in the patent, also showed that there were only a finite number of ways to solve this problem and that those in the art would have expected addition of a hinge in this instance to succeed. Id. at 1327. Thus, based on all of these factors—the familiarity in the art with hinges, the few ways to solve the loose parts problem, and the expectation of success—the Federal Circuit agreed with the ITC that the claims were obvious. Id. at 1327-28. Furthermore, the Federal Circuit did not find Norgren’s evidence of secondary considerations such as long-felt need and commercial success, to be persuasive. Id.
Thus, when a particular constellation of factors is present—an invention that the judge, as a layperson, can understand, that involves elements known in the art, and that represents one of only a few solutions to a known problem in a predictable technology—a judge may well consider the claim obvious. As a result, patent drafters handling inventions in arguably familiar or simple technologies should be prepared to address these issues and to explain to the examiner that their claimed inventions were not predictably successful, address a problem that was not previously recognized, or create new and unforeseen benefits.