Experimenting With KSR v. Teleflex - Can Hindsight Be Mitigated? (Part 1)

Earlier this year, Professor Gregory Mandel published a paper that empirically studied the effects of hindsight bias, and concluded that this bias has the potential to seriously undermine obviousness determinations in patent law. Specifically, the study found that, once outcome information is known (i.e., the invention), people are cognitively incapable of preventing that information from influencing their understanding of past events. As a result, individuals consistently (and unconsciously) exaggerate what could have been anticipated in foresight.

In light of the KSR v. Teleflex case being considered by the Supreme Court, Professor Mandel decided to expound on his previous study and empirically test each competing theory before mock juries.

In a nutshell, the petitioner in KSR argues that the "suggestion test" - which requires that there be some pre-existing suggestion, teaching, or motivation to combine references - violates the Patent Act and the Supreme Court’s non-obvious precedent in Graham because the suggestion test purportedly lowers the obviousness bar and results in obvious advances being improperly found as non-obvious. Specifically, one argument is that combining references may have been obvious even if there was no explicit suggestion, teaching, or motivation to combine the references in the prior art.

Participant mock jurors in Mandel's study were given a hypothetical fact scenario concerning an invention, where the scenario was based on facts surrounding an actual issued patent that was challenged on non-obvious validity grounds in litigation and was the subject of a reported decision. The scenario included background information about the field of art of the invention, a variety of prior art reference information, a description of the problem that a person cast in the role of the inventor was working on, and a questionnaire.

To test the impact of the Federal Circuit’s suggestion instructions on the hindsight bias, foresight, hindsight, and suggestion instruction versions of the scenarios were designed. A separate condition was developed to examine the impact of the Supreme Court’s Graham framework on the hindsight bias. The results were as follows:

• Participants rated inventions non-obvious significantly more frequently in foresight than in hindsight in both the scenario without a suggestion to combine prior art references and the scenario with a suggestion to combine;

• For the scenario with no suggestion to combine, 42% of participants in the foresight condition thought that a solution to the problem was obvious, while 71% of participants in the hindsight condition thought that a solution was obvious;

• Results were similar for the scenario that included the explicit suggestion to combine: 49% of participants in the foresight condition thought that a solution to the problem was obvious, while 85% of those in the hindsight condition thought that a solution was obvious.

Thus, the study empirically demonstrated that use of the suggestion test was not a determinative factor in finding non-obviousness:

Regardless of whether there was a suggestion to combine references, mock jurors were no more likely to consider an invention non-obvious when instructed on the Federal Circuit’s suggestion, teaching, or motivation requirement than they were in the hindsight condition without instruction . . . As expected, Graham instructions had no significant effect on judgments of obviousness.

Professor Mandel continues:

[B]ased on the results of the instant study, the suggestion requirement does not cause the problems attributed to it. Critics of the suggestion requirement argue that, as a result of the suggestion test, inventions are improperly held to be non-obvious in situations where there is no explicit suggestion to combine elements in the prior art, even though the combination may have been obvious. For the scenarios in this study for which no suggestion to combine prior art references existed, mock jurors who received the Federal Circuit’s suggestion, teaching, or motivation instruction were no more likely to conclude that an invention was non-obvious than mock jurors who received no such instruction. The study indicates that the harm
hypothesized to be caused by the suggestion test does not materialize.

That being said, the study results are by no means a ringing endorsement of the suggestion requirement. The results indicate that the suggestion test also does not achieve its primary goal - ameliorating the hindsight bias. Mock jurors who received the suggestion instruction were subject to the same hindsight bias as those who received no instruction. This outcome was consistent whether or not there was a suggestion to combine references in the scenario.

Thus, Mandel proposes that bifurcating obviousness where possible seems to be the most viable solution for the time being. Bifurcation is not a perfect or complete solution, but has been demonstrated to produce far more accurate non-obvious decisions than current methods and jurisprudence. In addition, bifurcation would eliminate the need for the suggestion, teaching, or motivation requirement in the first instance. If there is no hindsight bias then there is no need to mitigate its effect.

Read Professor Mandel's article "Patently Non-Obvious II: Experimental Study on the Hindsight Issue Before the Supreme Court in KSR v. Teleflex"

The earlier study: "Patently Non-Obvious: Empirical Demonstration that the Hindsight Bias Renders Patent Decisions Irrational"

271 Blog: Should Obviousness in Patent Cases be Bifurcated to Avoid Hindsight Bias? (Part 1 of 2)

271 Blog: Should Obviousness in Patent Cases be Bifurcated to Avoid Hindsight Bias? (Part 2 of 2)