Love it or hate it, the Federal Circuit’s “suggestion test” approach to proving obviousness is a guard against the hindsight bias. Indeed, that’s the central reason the Federal Circuit states for using the test.

In KSR, advocates for eliminating the “suggestion test” increase their chances for success by helping the Supreme Court get a handle on the nature of, and possible responses to, this risk of hindsight bias.

The SG contends, in its amicus brief on the merits, that the hindsight bias problem is no worse in patent law than in other branches of law, and that awareness of the risk is itself a sufficient guard against the bias. Here’s the key passage:

The Federal Circuit’s rigid [suggestion] test underestimates the capacity of courts and the PTO to avoid the influence of hindsight. Retrospective analysis is not unique to patent law, but regularly arises in a wide variety of contexts, including the determination of the competency of counsel in criminal proceedings, reasonable use of force by police officers, and probable cause. In those situations, as in Graham, the Court has consistently recognized that decisionmakers can avoid the improper influence of hindsight by maintaining conscious awareness of its potentially distorting influence in the decisionmaking process. Courts routinely find, for example, an absence of probable cause in cases in which the police in fact find substantial quantities of contraband in a search. There is no reason to think that courts in patent cases cannot be similarly discerning.

SG Amicus Brief on the Merits at 21 (citations and footnote omitted).

The Progress & Freedom Foundation, in its amicus brief on the merits, tackles the hindsight bias challenge in a different way. According to PFF, the key is recognizing that the nonobviousness standard itself can’t do all the work of ameliorating hindsight bias. I quote at length from PFF’s brief below the fold.

PFF argues as follows:

In essence, where the Federal Circuit has gone wrong is in placing too great a burden on an articulation of the nonobviousness doctrine as the solution to the problem of controlling the exercise of subjective judgment and hindsight bias in the huge organization that is the USPTO. This temptation must be resisted, because giving in to it represents an effort to force a legal test to perform a quality control function that it is ill-suited to perform. It is, in the classic joke, the equivalent of searching under the street light because the light is better there.

In reality, there is a subjective element in applying the test. No articulation of the standard can eliminate it completely, and the effort to find such an articulation has led to the current situation.

But adopting the correct standard does not require that USPTO or the courts give in to subjective whim, because there are administrative mechanisms that can be used to make the exercise of subjective judgment fair and reasonably consistent over time.

For example, USPTO could adopt the current Federal Circuit test as a first cut, because it does indeed represent a crucial benchmark. Any invention which fails the “teaching-suggestion-motivation” test is clearly not patentable. But this need not end the inquiry. If the examiner thinks he/she has a special case in which this test does not capture the reality of the situation, perhaps the matter could be referred to a multiperson review committee, thus eliminating the influence of a single examiner’s whim. Or perhaps boards of outside experts could be established, or community peer review processes conducted over the Internet.

Another possibility is that the incentive system for patent examiners might need correction. Some observers fear that a more rigorous application of the standard will tempt an examiner to stamp “rejected” on an applications just to clear his desk and earn a point under the USPTO personnel system. Or, because examiners are awarded one point for the first office action, a second for the second office action, and no more, they have an incentive to start by rejecting patents for no good reason. Then the “second action” can be to grant the patent, earning, in effect, two points for one review. If the first action is acceptance, the examiner gets only a single point.

The point is that the USPTO can devise administrative solutions to address any problems created by a less rigid, but more legally-valid, approach to determining nonobviousness. The Federal Circuit might then alleviate the concern about the danger of hindsight by assessing the adequacy of the agency’s “internal gyroscope” … .

PFF Amicus Brief on the Merits at 13-15.