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Let's begin with a review of the case law from the January 2005 CAFC ruling (04-1152) in KSR International v. Teleflex.

The 1966 Graham decision, commonly called the Graham factor test, has been the gold standard for determining the appropriateness of prior art combination obviousness, relying upon four fact issues: "(1) the scope and content of the prior art; (2) the level of skill of a person of ordinary skill in the art; (3) the differences between the claimed invention and the teachings of the prior art; and (4) the extent of any objective indicia of non-obviousness." (1) & (2) provide the bases for combination in arguing invalidity, while (3) & (4) provide the bases for combination refutation.

A patent claim is obvious, and thus invalid, when the differences between the claimed invention and the prior art “are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103; see also Graham v. John Deere Co., 383 U.S. 1, 14, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966); In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999). While obviousness is ultimately a legal determination, it is based on several underlying issues of fact, namely: (1) the scope and content of the prior art; (2) the level of skill of a person of ordinary skill in the art; (3) the differences between the claimed invention and the teachings of the prior art; and (4) the extent of any objective indicia of non-obviousness. See Graham, 383 U.S. at 17-18. When obviousness is based on the teachings of multiple prior art references, the movant must also establish some “suggestion, teaching, or motivation” that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed. See Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1359-60 (Fed. Cir. 1999); Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1572 (Fed. Cir. 1996). The nonmovant may rebut a prima facie showing of obviousness with evidence refuting the movant’s case or with other objective evidence of nonobviousness. See WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999).

The salient point is that veracity requires documentation, not speculation.

“The reason, suggestion, or motivation to combine [prior art references] may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved, ‘leading inventors to look to references relating to possible solutions to that problem.’” Ruiz v. A.B. Chance Co., 234 F.3d 654, 665 (Fed. Cir. 2000) (quoting Pro-Mold, 75 F.3d at 1572). “Our case law makes clear that the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references.” Dembiczak, 175 F.3d at 999; see also Ruiz, 234 F.3d at 665 (explaining that the temptation to engage in impermissible hindsight is especially strong with seemingly simple mechanical inventions). This is because “[c]ombining prior art references without evidence of such a suggestion, teaching, or motivation simply takes the inventor’s disclosure as a blueprint for piecing together the prior art to defeat patentability—the essence of hindsight.” Dembiczak, 175 F.3d at 999. Therefore, we have consistently held that a person of ordinary skill in the art must not only have had some motivation to combine the prior art teachings, but some motivation to combine the prior art teachings in the particular manner claimed. See, e.g., In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (“Particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed.” (emphasis added)); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (“In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed.” (emphasis added)).

The district court correctly noted that the nature of the problem to be solved may, under appropriate circumstances, provide a suggestion or motivation to combine prior art references. However, the test requires that the nature of the problem to be solved be such that it would have led a person of ordinary skill in the art to combine the prior art teachings in the particular manner claimed. See Rouffet, 149 F.3d at 1357. We have recognized this situation when two prior art references address the precise problem that the patentee was trying to solve. See Ruiz, 357 F.3d at 1276 (“This record shows that the district court did not use hindsight in its obviousness analysis, but properly found a motivation to combine because the two references address precisely the same problem of underpinning existing structural foundations.”).

The prosecution history does not shed light on the appropriateness of an obviousness combination.

Our view of the case is not altered by the ... patent’s prosecution history. That is because a court’s task is not to speculate as to what an examiner might have done if confronted with a piece of prior art. Rather, a court must make an independent obviousness determination, taking into account the statutory presumption of patent validity. See TorPharm, 336 F.3d at 1329-30 (“[W]here the factual bases of an examiner’s decision to allow a claim have been undermined—as in other cases where prior art not before the examiner is brought to light during litigation—a court’s responsibility is not to speculate what a particular examiner would or would not have done in light of the new information, but rather to assess independently the validity of the claim against the prior art under section 102 or section 103. Such determination must take into account the statutory presumption of patent validity.”).

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24 law professors filed an amicus brief supporting arguing for diluting the standard for finding obviousness in invalidating a patent claim, from requiring documentation, to a purely speculative, hypothetical "person having ordinary skill in the art" (PHOSITA).

Rather than focusing on what is already present in the prior art, the non-obviousness provision asks whether “the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art,” 35 U.S.C. §103, in light of all of the prior art. The Federal Circuit’s requirement that the prior art contain a “suggestion to combine” blurs the distinction between novelty and non-obviousness and fails to follow the statutory mandate that obviousness be judged from the perspective which the “person having ordinary skill in the art” would bring to the prior art as a whole.

There is apparently no room for the possibility that a person of ordinary skill in the art might find it obvious to apply prior art technology to a problem slightly different from the problem articulated in the prior art reference.

Here we have speculative whining by two dozen law professors about how a technologist, a hypothetical PHOSITA, might think, and seemingly arguing that such speculation should provide the basis for judicial decision.

Because the Patent and Trademark Office has limited ability in the context of an ex parte examination proceeding to collect evidence beyond what it can find in the written prior art, the Federal Circuit’s approach severely limits the Patent and Trademark Office’s ability to take into account the common knowledge of those in the art.

Here we have two dozen law professors slamming Patent Office examiners as nincompoops who don't know the basics of the technology they are examining patents for, commonly found in textbooks and periodicals, as well as prior art patents (hint).

Although amici do not deny the potential for hindsight bias, amici believe that the Federal Circuit’s suggestion test simply does not solve the hindsight bias. Rather than capture the actual knowledge of those of skill in the art at the time a claimed combination of existing technology was made, it introduces its own hindsight bias, suggesting that skilled artisans should somehow have thought to articulate each obvious possibility in prior art references. This assumption simply does not reflect reality.

Here we have 24 law professors pretending to have a grasp on technology with vagary. What is never addressed in the brief is exactly how one would "capture the actual knowledge of those of skill in the art at the time a claimed combination of existing technology was made" other than a written record. While paying lip service to it, these professors simply do not seem to comprehend the concept of "impermissible hindsight". If they do, they present no “suggestion, teaching, or motivation” to indicate as such.

The brief of the 24 law professors blathers with repeated abstract complaining about the social and economic evils of patents that shouldn't have been granted. What is never addressed is a workable standard for obviousness. In other words, the entire brief misses the point.

Another amicus brief by corporations (Cisco, Microsoft, Hallmark Brands, V.F., and Fortune Brands) took a different tack: citing wayside cases that are incongruent with the current standard as a basis for arguing against the current standard. The cases presented could equally be viewed as demonstrating that they were wrongly decided, as the courts decisions seemed arbitrary in lacking an objective basis in technological fact.

The corporate brief bitched about the difference between a finding of law and fact as limiting appellant review. This simply argues who should be the arbiter, ignoring what the obviousness standard should be.

The motivation test hurts innovation not only because the test itself makes it too easy to obtain a patent for obvious inventions, but also because the test undermines a key holding of Graham: “the ultimate question of patent validity is one of law... In contrast, the Federal Circuit has held that the presence or absence of a motivation to combine prior art references is a fact question for a jury to decide... Transferring obviousness determinations from courts to juries (whether through the motivation test or another framework) also diminishes the role of the Federal Circuit as a specialized patent court. Post-verdict and appellate review of jury verdicts on questions of fact is far more limited than is review of questions of law.

So the corporate brief never even comes close to addressing the 'obviousness standard' issue in a meaningful way, instead presenting its own pet peeve sideshow.

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The bottom line is that there needs to be an objective standard for a prior art combination as a basis for invalidating a patent owing to obviousness.

Technologies are well documented; to say otherwise is sheer ignorance. As a professional prior art searcher whose primary business is invalidating patents, I've never had a problem finding documentation about the state of the art for a technology at a point in time.

The biggest problem I see with regard to obviousness is the one-year grace period stemming from 102(b), instead of a first-to-file system with no grace period for validity with regard the prior art. Time and again I see anticipation from multiple sources within the year a patent is filed, indicating that the claimed invention wasn't innovative in the context of what others were doing at the same time. There's a real statement of PHOSTIA contemporaneous with supposed invention. The 102(b) one-year grace period does more to demolish the standard of invention for patents than anything.

The most significant danger to the patent system is turning validity into a subjective evaluation by either judge or jury, based solely on the charm and story-telling skills of expert witnesses.

“Our case law makes clear that the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references.”

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Patently-O on this. The Patent Prospector previously on this.