Overturning a jury verdict holding the claims valid and infringed, the court determined that the claims were obvious in light of a single prior art patent. The reference taught all limitations of the claims, but did so across two separate embodiments. To arrive at the claimed invention, the court reasoned, a skilled artisan need only combine the two embodiments, which were illustrated in side-by-side figures in the patent. According to the court, making this combination “does not require a leap of inventiveness.”

So far, this seems fairly straightforward. But here’s the interesting part – the court did not conduct any sort of analysis under Graham v. John Deere to support its conclusion of obviousness. The opinion has no discussion of the Graham factors and, indeed, doesn’t even cite the case. Instead, the court points to the “predictable variation” language of KSR v. Teleflex and indicates that “one of ordinary skill in the art would have been motivated to combine the [separate embodiments of the reference] to arrive at [the claimed invention].”

Is it acceptable to skip the Graham analysis under these circumstances? The “predictable variation” language of KSR – relied upon here as support for the conclusion of obviousness – seems to cry out for a Graham analysis:

“[i]f a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” (emphasis added)

“Likely” seems to leave room for the possibility that a claim to a predictable variation is, in fact, nonobvious. The Graham framework likely provides an appropriate structure for evaluating the issue – secondary considerations seem particularly relevant here. The court, nevertheless, skipped the analysis altogether, at least in the written opinion.

This seems to beg the question of whether a summary conclusion of obviousness is acceptable in certain situations, or whether a full Graham analysis is always necessary. Is this the summary conclusion of obviousness that KSR warned against?

There’s another interesting wrinkle to the Boston Scientific v. Cordis opinion – While the court failed to mention or discuss the Graham factors, it did note – in two separate instances – that the skilled artisan would have been motivated to combine the separate embodiments of the prior art patent to arrive at the claimed invention. In the absence of a Graham analysis, the mentions of a ‘motivation to combine’ appear to be an important factor on which the court relies for its conclusion of obviousness. Indeed, in the absence of any discussion of the Graham factors, it seems to come dangerously close to litmus-test treatment of the issue.

Does this hint at a clarification of the role of the TSM test in an obviousness analysis in the post-KSR world? If, in fact, the ‘motivation to combine’ was used in litmus test fashion, is this acceptable following KSR? All of these questions surrounding Boston Scientific v. Cordis are likely limited to the realm of obviousness issues based on combinations of embodiments from a single reference, which is presumed to be a relatively small universe.

Read the PTP review and analysis of Boston Scientific v. Cordis here.

Consider the court’s recent opinion in Sundance v. DeMonte Fabricating. After characterizing the claimed invention as “the work of the skillful mechanic, not that of the inventor,” the court flatly rejected the district court’s consideration of secondary considerations of nonobviousness. “Secondary considerations of nonobviousness—considered here by the district court—simply cannot overcome this strong prima facie case of obviousness.”

Admittedly, the technology involved in Sundance is relatively simple and the prior art quite clear. Nevertheless, a categorical exclusion of the possibility that secondary considerations could overcome a showing of obviousness seems like dangerous precedent. Indeed, it even seems to contradict KSR, which uses language that clearly recognizes the possibility represented by secondary considerations (“If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” (emphasis added))

Is it possible this willingness to close the door provided by secondary considerations extends beyond simple technologies and close prior art? Another recent case might provide insight. Less than a month after deciding Sundance, the court reiterated – in dicta – the principle that ignoring secondary considerations might be warranted in certain “strong” cases of obviousness. In Friskit v. RealNetworks, the court rejected the argument that the lower court improperly ignored evidence of secondary considerations. According to the court, “’secondary consideration evidence’ such as commercial success, copying, and long-felt need does not necessarily overcome a strong showing of obviousness….” Ultimately, the court did turn to the ’secondary consideration evidence,’ only to dismiss it in a single sentence: “In any event, Friskit’s secondary consideration evidence does not provide persuasive support for the nonobviousness of “programmatic” and “direct” control.”

The court even seems willing to attack specific secondary considerations of nonobviousness. In Tokyo Keiso v. SMC Corporation, the court again pointed to a “strong showing of obviousness” as support for affirming a district court’s summary judgment of obviousness. In Tokyo Keiso, the patentee argued that a ‘long-felt need’ for the claimed invention demonstrated the nonobviousness of the invention. The district court had rejected this argument with novel reasoning – the relevant business involved a “niche market” and, as such, a delay in improvements to the prior art was “not surprising.” While not explicitly addressing this rationale for rejecting the secondary considerations argument, the court implicitly endorsed it, indicating that  “the California district court did not err in finding no genuine issue of material fact supportive of [the patentee's] case.”

KSR has, without question, ushered in a new era for obviousness law. With these recent cases from the Federal Circuit, it’s becoming clear that the revolution might extend to the scope and applicability of secondary considerations of nonobviousness.