The Federal Circuit's New Obviousness Jurisprudence: An Empirical Study

Abstract

Following the Supreme Court’s 2007 decision in KSR v. Teleflex, commentators predicted that one of two things would happen: the Federal Circuit would change how it actually ruled on the issue of whether patents were obvious or that it would merely change what it said.

This study empirically examines these two predictions using a novel dataset comprised of all pre- and post-KSR Federal Circuit decisions on obviousness over a fifteen-year period. Examining this data reveals strong evidence that KSR has indeed altered the outcomes of the Federal Circuit’s obviousness determinations, a change that has manifested in large part through an increase in the deference that the Federal Circuit is giving to district court determinations that patents are obvious.

Moving beyond an examination of outcomes alone, this study uses the technique of content analysis to explore the heart of the second prediction: that KSR would affect what the Federal Circuit says about obviousness. This analysis demonstrates that the Federal Circuit has indeed changed what it says. Essentially gone is the use of the Federal Circuit’s ubiquitous pre-KSR “teaching, suggestion, or motivation” (“TSM”) framework in analyzing obviousness. Furthermore, while the underlying requirement that patent challengers identify some “reason to combine” or “reason to modify” prior art references has endured, it is hardly a reincarnation of TSM, either in terms of vigor or structure.

Keywords: patent, obviousness, empirical