Common Sense and Obviousness: Substantive Requirements

By McCord Rayburn

In May of 2007, the patent world was humming with discussion of the Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).  The discussions and CLE programs about the KSR decision were ominous.  The Supreme Court held that the Federal Circuit’s relatively straightforward “teaching-suggestion-motivation” (TSM) test for obviousness was too rigid.  Instead, the Supreme Court stated that an obviousness analysis must not “deny factfinders recourse to common sense.”  KSR at 421.  Indeed, Justice Kennedy’s opinion refers to “common sense” five times.  Naturally, many patent attorneys feared they would be seeing the words “common sense” in every office action they received from the USPTO.  Three years of Federal Circuit case law, however, have allayed many of these fears by adding substantive requirements for obviousness findings relying upon “common sense.”

One such case, TriMed, Inc. v. Stryker Corp., 2010 U.S. App. LEXIS 11700 (Fed. Cir. 2010), was decided on June 9, 2010.  In 2006, TriMed initiated an infringement action against Stryker, asserting that one of Stryker’s wrist fixation devices infringed certain claims of TriMed’s U.S. Patent No. 5,931,839.  The ‘839 patent covers an implantable device used to set bone fractures. After discovery, the district court granted Stryker’s motion for summary judgment of noninfringement by signing Stryker’s Statement of Uncontroverted Facts and Conclusions of Law.  On appeal in TriMed, Inc. v. Stryker Corp., 514 F.3d 1256 (Fed. Cir. 2008) (referred to as TriMed I), the Federal Circuit reversed and remanded because the district court had improperly construed a claim term as being subject to 35 U.S.C. § 112, paragraph 6.

On remand, Stryker moved for summary judgment of invalidity on the grounds that the asserted claims of the ‘839 patent were anticipated by and obviousness in light of three prior art references.  Stryker’s obviousness arguments asserted that the claims of the ‘839 patent were a combination of known elements from the references combined using a “logical, commonsense solution.”  In response, TriMed contested the alleged teachings of the prior art, the proposed combination of references, and the assertion that invention was a “logical, commonsense solution.”  TriMed also presented evidence of secondary considerations of nonobviousness.  The district court, again, granted Stryker’s motion by signing Stryker’s Statement of Uncontroverted Facts and Conclusions of Law, but crossed out the section on anticipation.

On appeal before the Federal Circuit for the second time in TriMed, Inc. v. Stryker Corp., 2010 U.S. App. LEXIS 11700 (Fed. Cir. 2010) (referred to as TriMed II), TriMed argued that the district court improperly resolved genuine issues of material fact in favor of Stryker.  Stryker argued, among other things, that, based upon known advantages and disadvantages of known methods, common sense and logic would have led one of ordinary skill in the art to manipulate the known elements to arrive at the claimed device.  Stryker further argued that because TriMed did not dispute that the methods were known at the time of the invention, there were no genuine issues of material fact.  The court, after discussing the legal standards for obviousness, found that there were factual disputes about the content of the prior art and whether the claimed invention achieves predictable results by using prior art elements according to their established functions.

More importantly, however, with respect to Stryker’s “common sense” argument, the court states “Stryker attempts to circumvent these genuine issues of material fact by suggesting that the claimed subject matter would have been obvious because it is, at least in part, a commonsense solution.”  Summarily dismissing Stryker’s argument, the court states:

Although reliance on common sense does not require a specific evidentiary basis, “on summary judgment, to invoke ‘common sense’ or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.”

TriMed II (quoting Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009)).  The court further states “Merely saying that an invention is a logical, commonsense solution to a known problem does not make it so.”  Id. The court then reverses the grant of summary judgment because genuine issues of material fact were unresolved and the record failed to provide a reasoned basis to support summary judgment.

TriMed II gives patent attorneys one more tool for rebutting obviousness rejections asserting that the claimed invention is merely a combination of known elements that provide a common sense solution to a known problem.  If such a rejection is only supported by a conclusory statement, the attorney can cite TriMed II and point out the failure to provide some articulated reasoning that supports the finding of obviousness.  Moreover, patent attorneys can breath a sigh of relief after cases like TriMed II because the Federal Circuit continues to provide structure to the broad, sweeping statements in Justice Kennedy’s KSR opinion.

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