The Federal Circuit Defends the Motivation Test as a Protection from Hindsight; Emphasizes its Flexible Nature

Alza Corporation v. Mylan Laboratories, Inc., [06-1019](Fed. Cir. 2006) [GAJARSA, Clevenger, Prost] The Federal Circuit affirmed the district court’s judgment of noninfringement and invalidity.
SIGNIFICANCE: Undoubetedly defensive about the Supreme Courts review of KSR, the Federal Circuit engaged in a length defense if its motivation test to ward off hingsight, and emphasized its flexible nature,
QUOTE: “To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, there must be some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct.”
BRIEF: The Federal Circuit engaged in an extensive review of the motivation to combine requirement as a necessary guard against hindsight, and emphasized the flexibility of its obviousness jurisprudence.
A claimed invention is unpatentable if the differences between it 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.” Obviousness is a question of law, reviewed de novo, based upon underlying factual questions which are reviewed for clear error following a bench trial. These “underlying factual inquiries includ[e]: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness.” The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact, as is the presence or absence of a “reasonable expectation of success” from making such a combination.
The Federal Circuit said that in Graham the Court recognized the importance of guarding against hindsight, as is evident in its discussion of the role of secondary considerations as “serv[ing] to guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue.” The Federal Circuit explained that its, and its predecessor’s “motivation to combine” requirement likewise prevents statutorily proscribed hindsight reasoning when determining the obviousness of an invention. This requirement has been developed consistent with the Supreme Court’s obviousness jurisprudence as expressed in Graham and the text of the obviousness statute that directs us to conduct the obviousness inquiry “at the time the invention was made” 35 U.S.C. § 103. As we explained in Kahn, The motivation-suggestion-teaching test picks up where the analogous art test leaves off and informs the Graham analysis. To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, there must be some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. At its core, our anti-hindsight jurisprudence is a test that rests on the unremarkable premise that legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.
The Federal Circuit noted that the motivation may be found implicitly in the prior art, and disclaimed any rigid test that requires actual teaching to combine before concluding that one of ordinary skill in the art would know to combine references.