Re-Thinking the "Motivation to Combine" in Patent Law
48 AIPLA Q.J. 1 (2020)
32 Pages Posted:
Date Written: May 8, 2020
In determining whether a patent claim is invalid for obviousness, one of the most important inquiries is whether a skilled artisan would have been motivated to combine the prior art references that are alleged to invalidate the claim. The Federal Circuit has consistently held that this “motivation-to-combine” inquiry is a question of fact. However, this Article argues that the Federal Circuit is mistaken. Treating the motivation-to-combine inquiry as a question of fact violates Supreme Court precedent and eviscerates the settled rule that obviousness itself is a question of law. Moreover, treating the motivation-to-combine inquiry as a question of fact makes patent litigation more cumbersome and inefficient by impeding summary judgment on the obviousness defense. Thus, the Federal Circuit should discard its rule that the motivation-to-combine inquiry is a question of fact and should instead treat this inquiry as part of the ultimate obviousness determination—a question of law.
Keywords: Patent; Obviousness; Motivation to Combine
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