Patent Law Viewed Through an Evidentiary Lens: The 'Suggestion Test' as a Rule of Evidence

Abstract:     
The Federal Circuit's recent nonobviousness jurisprudence has been the subject of much criticism. Reports from the Federal Trade Commission and the National Research Council and a pending petition for certiorari to the Supreme Court all conclude that the Federal Circuit has improperly relaxed the nonobviousness standard. Most of this criticism focuses on the Federal Circuit's implementation of part of the nonobviousness inquiry - the suggestion test. The suggestion test queries whether a suggestion to make the invention existed before the invention's creation. The Federal Circuit allegedly requires a suggestion to come solely from prior art references. The court ignores other evidence of undocumented suggestions that may exist in the knowledge of those skilled in the relevant technology or the nature of the problem being solved.

This Article tests the validity of this criticism and finds that the Federal Circuit has not narrowed the suggestion test. By taking a novel look at the jurisprudence, the Article concludes that, instead, the court has adopted an evidentiary-like aspect to the suggestion test. Those cases where it appears the court is focusing only on the prior art are actually instances where the court is exercising an evidentiary aspect of the suggestion test. The suggestion test's rule of evidence excludes undocumented evidence of suggestion that does not contain the requisite detail and analysis. This rule of evidence is tailored to adjust the level of detail and analysis required to correspond to the complexity of the technology at issue. As a result, the suggestion test's rule of evidence helps to reduce overvaluation of suggestion evidence and the resulting, incorrect obviousness determinations. However, the rule may produce some erroneous nonobviousness determinations of its own, particularly at the United States Patent and Trademark Office, and thus should be relaxed in this context. Finally, this use of an evidentiary lens to look at, and evaluate, patent doctrine has application in patent law far beyond nonobviousness and the suggestion test.

Keywords: patents, evidence, nonobviousness, obviousness, suggestion test

JEL Classifications: K39, K40, K41, O31, O34

Working Paper Series