Professor Mendel's studies in hindsight bias determined that, once an outcome of an invention is known, individuals are cognitively incapable of properly discounting it when making a non-obviousness determination. So what can be done to correct this bias?
In a commercial litigation context, studies found that juror bias was significantly reduced when the defense attorney told mock-jurors that the plaintiff’s strategy was to have the jurors be "Monday morning quarterbacks," and that the jurors should avoid using hindsight in judging the defendants. Oddly enough, these results could not be replicated in a case dealing with non-obviousness. Other debiasing attempts (e.g., educating the jurors, increasing incentives or motivations for avoiding hindsight, using different types of jury instructions) proved unsuccessful as well.
The only approach found to substantially reduce hindsight bias is to conduct an obviousness determination starting from the prior art and problem to be solved, rather than concentrating on the invention first. In essence, the approach mirrors the European patent approach under Art. 52(1), which requires an "inventive step," rather than a "non-obvious" requirement (the standards are otherwise quite similar). And in order to obtain such an analysis in court, the issue of obviousness should be bifurcated:
It is important to note here that, under the proposal, the initial determination doesn't necessarily address whether or not the inventor's solution was obvious. Rather, it starts with the basic question of whether or not any solution to the prioblems was obvious to a PHOSITA. If the jury answers in the negative, then the Graham obviousness requirements are satisfied - the inventor’s specific solution cannot be obvious if no solution was obvious.
In order to ameliorate the hindsight bias, a patent trial should operate to the maximum extent as if the invention does not exist. This solution cannot be implemented where the trial is heard by a judge, but can be applied in jury trials, which currently represent over seventy percent of patent trials.
Under this proposal, the issues for trial would be bifurcated. The non-obvious issue often would be tried first, at least for trials in which the same jury is expected to hear all issues. Pre-trial hearings, out of the jury’s presence, would determine the analogous, relevant prior art. Such hearings would determine the admissibility of any expert testimony concerning the level of ordinary skill in the art and what a PHOSITA would know how to do. The pre-trial hearings would also be used to identify what problem the inventor was working on or what problem the invention solved.
Once the evidence probative of the non-obviousness issue is determined, the non-obvious stage of the trial would commence. The parties and their experts would be prohibited from mentioning or identifying the invention during trial. They could only present evidence of the prior art, the skill level and knowledge of a person having ordinary skill in the art, and the problem the inventor was working on. Following trial, the jury would deliberate on whether the advances sought were obvious to a person having an ordinary level of skill in the art.
Professor Mander goes further:
If the jury concludes that a solution was obvious, a second non-obvious question must be put to the jury. Simply because the jury concluded a solution to the problem was obvious does not mean that the inventor’s particular solution was obvious. Where the jury concludes that some solution was obvious, it would be informed of the invention, and then deliberate concerning whether the invention was obvious. In addition, a second special verdict form could be given to the jury with detailed instructions for deciding the non-obvious issue. The form would direct the jury to consider reasons that the invention might not have been achieved or was not obvious, and would instruct the jurors to write out these alternatives. Similar requirements have reduced the hindsight bias in other contexts.
Though informing the jury of the invention may introduce some bias, the efforts made up to this point should ameliorate it to the greatest extent possible, and it is impossible to evaluate a specific invention without informing the jury of it. This reworking of a patent trial would go a long way towards ameliorating the hindsight bias and would produce substantially less
biased decisions than current jurisprudence. It also identifies a new benefit of jury trials — juries can be shielded from invention knowledge, judges cannot.