One can’t help but notice that the Federal Circuit’s recent analyses of the nonobviousness standard emphasize the role of the implicit, or tacit, suggestion to combine in satisfying the requirement for proof of a suggestion to combine for obviousness to be found from a combination of references. Perhaps the court concludes that the implicit-suggestion flavor of the suggestion test will save that test from its otherwise seemingly hopeless clash with the Supreme Court’s section 103 jurisprudence. It’s certainly worth a closer look …

Three cases, one from March 2006 (Kahn), and two from the past few weeks, have sought both to root the suggestion test in the Supreme Court’s Graham decision and to pacify those who contend that the suggestion test imposes an improperly rigid evidentiary demand (improper because, although obviousness will doubtless sometimes be provable by suggestion evidence, obviousness may well exist even without documented suggestion evidence). In all three cases, the court approves the rejection, or invalidation, of a patent claim on the ground that the invention it recites would have been obvious. And in all three cases, the requisite “suggestion” is found to have been implicit.

The cases are …

• In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) (affirming PTO’s obviousness rejection of a claim to a reading machine) (Linn, J., for himself, Chief Judge Michel, and Judge Prost)

• Ormco Corp. v. Align Tech., No. 05-1426, 2006 WL 2493245 (Fed. Cir. Aug. 30, 2006) (reversing district court’s failure to hold claims invalid for obviousness on summary judgment, in view of implicit motivation to modify prior art) (Dyk, J., for himself and Judges Schall and Gajarsa) [ UPDATE 2: Patently-O covers the case here, and Patent Prospector covers the case here. ]

• Alza Corp. v. Mylan Labs., No. 06-1019, 2006 WL 2556356 (Fed. Cir. Sept. 6, 2006) (affirming district court’s holding claims invalid for obviousness) (Gajarsa, J., for himself and Judges Clevenger and Prost) [ UPDATE 2: Patently-O covers the case here, and Patent Prospector covers the case here and here. ]

Note that all three decisions are authored by the court’s newer judges. Note, too, that the Ormco case shows that, at least sometimes, the implicit suggestion can be so apparent (notwithstanding its implicitness) that no factfinder could reasonably fail to find it pointing the way toward the claimed invention under review. (I hope all my implicit suggestions to my students are that clear!)

I don’t think “implicit suggestion” cases save the suggestion test, I think they doom it. More below the fold …

In Alza, Judge Gajarsa opines, contra the suggestion test’s critics in recently filed briefs on KSR’s side of the KSR v. Teleflex Supreme Court case, that “[t]here is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine before concluding that one of ordinary skill in the art would know to combine references. This approach, moreover, does not exist merely in theory but in practice, as well. Our recent decisions in Kahn and Cross Medical Products amply illustrate the current state of this court’s views.” Slip op. at 6 (emphasis in original).

Putting to one side the home truth that one lawyer’s praiseworthy flexibility is another’s damnable arbitrariness, one can’t help but wonder …

If the suggestion test’s reason for being is to prevent the distortions of impermissible hindsight (and just a page before, Judge Gajarsa repeats that that is the suggestion test’s reason for being (referring to the test as “our anti-hindsight jurisprudence,” and stating that it “prevents statutorily proscribed hindsight reasoning when determining the obviousness of an invention,” slip op. at 4-5)), how are matters helped by holding that one can satisfy the demand for proof of a suggestion not with documented evidence of a suggestion but with a felt sense of the ordinary artisan’s likely response to the problem at hand and “some articulated reasoning with some rational underpinning”? Slip op. at 6 (quoting Kahn, but with emphases added). The door by which hindsight can enter is left ajar no less by the doctrine of implicit suggestion than by Graham’s unadorned nonobviousness standard. Nor is the problem solved by taking solace in the use of hired expert testimony offered in trial court proceedings (an expedient, by the way, that the Patent Office can’t use), as the Alza case would have us do. See slip op. at 13 (”Mylan’s expert, Dr. Amidon, testified that … .”). Both one’s evaluation of the expert’s testimony, and the expert’s testimony itself, take place in the present, and comment on what would have been known to someone at some point in the past; this is the playground of the hindsight bias.

Coherence is not helped by implicit suggestion cases. Nor is patent law administration: the Patent Office, which must play the primary role in implementing the nonobviousness requirement, simply cannot afford to build the expert testimony record of the sort the Federal Circuit blesses in Alza. And when the Patent Office engages in the sort of common-sense-but-hard-evidence-free reasoning that the Federal Circuit uses to bring down the patent in Ormco (see, e.g., slip op. at 16: “Providing the devices to the patient in one package, as opposed to two packages or three packages is not a novel or patentable feature in the light of the well-known practice of packaging items in the manner most convenient to the purchaser.”), the Office gets a kick in the ass (In re Lee) as often as it gets a pat on the head (In re Kahn).

Realpolitik, of course, is helped by implicit suggestion, at least along one dimension: The Supreme Court was far less likely to grant review to consider the soundness of the suggestion test where the lower courts could deploy the doctrine of implicit suggestions to strike down the worst of the improvidently granted patent claims, the claims where one simply can’t hold one’s nose and uphold it for lack of a documented suggestion to combine.

But that grant of review has arrived, in KSR v. Teleflex. My hope is that the Supreme Court will not be distracted by the deeply incoherent attempt to smooth the suggestion test’s sharpest edges with the doctrine of implicit suggestions. My hope is that the Supreme Court will focus, instead, on the core question whether an invention can have been obvious to an ordinary artisan confronted with a particular problem, even if nothing would have suggested the invention (explicitly or otherwise), simply because the invention fell within the scope of the ordinary artisan’s ordinary creative, inventive recombination and reconfiguration of the problem-solving tools and techniques of her art. My regular readers know, too, that I think the answer to that core question is “yes.”

UPDATE 1: And let me be clear … I don’t mean to suggest that hindsight bias is not a risk, or that we shouldn’t take steps to avoid it. It is a risk … it’s just not a bigger risk, or a different risk, than we face in all manner of legal tests that call for retrospective assessment (e.g., negligence, probable cause). The SG’s amicus brief on the merits in KSR explains the point quite nicely, as I’ve highlighted before. As a result, I don’t favor the suggestion test, which, in my view, is tantamount to burning down the village in order to “save” it.