Tuning the Obviousness Inquiry after KSR

Abstract

One of the most important and delicate judicial tasks in patent law is to keep the obviousness doctrine in reasonable working order. There are several reasons why the obviousness doctrine has been the subject of frequent judicial tinkering. First, patentability doctrines interact with each other, so doctrinal alterations that seem to be entirely external to the obviousness doctrine frequently have ripple effects on obviousness. The interaction between the utility and obviousness doctrines provides one good example. Second, the obviousness doctrine is internally complex. Cases in the chemical and biotechnology areas over the past several decades have amply illustrated this point. This article examines Chief Judge Rader’s contributions to the task of tuning the obviousness doctrine, with particular attention to cases that have arisen after the Supreme Court’s pronouncements on obviousness in KSR v. Teleflex.