“Obviousness” v. “Anticipation”—Similar but Different Patent Law Defenses

In two recent Federal Circuit Court cases, Comaper v. Best Buy and Theronese v. Beckton Dickson, the district courts below erroneously applied patent law defenses of “anticipation” and “obviousness.” The Federal Circuit’s discussion of each case provides a useful framework to understand these inter-related defenses. 

The Federal Circuit Court explained:

“Anticipation” [under 35 USC §102] is a patent defense that must be based on a single prior art reference.  For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.

“Obviousness” [under 35 USC §103] is a patent defense that may be based on multiple prior art references. Determining obviousness requires considering whether two or more pieces of prior art could be combined, or a single piece of prior art could be modified, to produce the claimed invention. This analysis typically invokes the familiar teaching-suggestion-motivation (“TSM”) test, asking whether a person having ordinary skill in the art would have found some teaching, suggestion, or motivation to combine or modify the prior art references.

“Anticipation” requires only one step to prove, if a single prior art reference is available.  If a single document teaches all elements of a patent, in the same arrangement, the single prior art reference can invalidate the target patent. (Subject to a clear and convincing evidence standard for issued patents).

“Obviousness” requires two steps to prove.  Even though multiple patents can be used as prior art references, there must also be a “teaching” that suggests a “motivation” to combine the prior art references into a single new invention (the “TSM” test).  The “suggestion” to combine can be provided by the references themselves, through another document, or via affidavit or declaration testimony of a person of ordinary skill in the art of the invention.

In its landmark decision on patent obviousness, KSR International Co. v. Teleflex, Inc., the US Supreme Court emphasized that motivation may be present even if a combination just was obvious to try:

“[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”

Thus, [w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under [35 U.S.C.] § 103.

In one of the two cases referenced above, Comaper v. Best Buy, a jury found that the main independent claims for a computer fan housing were not obvious; but the dependent claims were obvious.  On post-trial motions, counsel argued it was logically impossible for independent claims to be non-obvious while the claims upon which they depend to be obvious. 

The district court rejected these arguments under an analysis that seemed (to the Federal Circuit) to require a single prior art teaching in order to find obviousness.  Pointing out the district court’s legal and logic flaws, the Federal Circuit explained that the “single prior art” teaching governs anticipation, not obviousness.  The Federal Circuit then went on to find that the claimed invention was obvious as a matter of law once multiple available prior art references were considered from the vantage point of one of ordinary skill in the art.

In the other case referenced above, Theronese v. Beckton, the district court instructed the jury that “anticipation” could be found if a single reference taught one skilled in the art that “all of the claimed elements could have been arranged as in the claimed invention.”

The Federal Circuit Court rejected this instruction, again because of an inherent logical flaw: it was logically possible that individual claim elements “could have been arranged” in a way that is not itself described or depicted in the anticipatory reference.

The Federal Circuit Court explained:

Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.

For a claim to be anticipated, each claim element must be disclosed, either expressly or inherently, in a single prior art reference, and the claimed arrangement or combination of those elements must also be disclosed, either expressly or inherently, in that same prior art reference.

The defenses of “anticipation” and “obviousness” are related, but different.  And as the Federal Circuit Court’s opinions imply, a periodic refresher in the set theory analysis can also be useful to patent litigation practitioners.

See the related article: The End of Bright-Line Tests in Patent Litigation.