"Blockbuster" Academic Studies on KSR, Obviousness

Professor Joseph Scott Miller of the Lewis & Clark Law School ( and author of the Fire of Genius Blog) has put together a special issue of the law journal that focuses upon the many aspects of the KSR Supreme Court obviousness ruling. Thus publications include:

• Gregory N. Mandel, Another Missed Opportunity: The Supreme Court’s Failure to Define Nonobviousness or Combat Hindsight Bias in KSR v. Teleflex, 12 Lewis & Clark L. Rev. 323 (2008)

- Arguing that the KSR Court never defined what obviousness requires. Also, despite recognizing the problem of hindsight bias in nonobviousness analysis, the Court appeared to misconstrue the problem. As a result, "nonobviousness decisions will continue to be systematically biased with respect to the legal inquiry required by section 103."

• John F. Duffy, A Timing Approach to Patentability, 12 Lewis & Clark L. Rev. 343 (2008).

- Arguing that a “timing approach” to patentability that considers the free and open competition to innovate present before patenting will reliably generate all obvious innovations quickly once the market and technological conditions make the innovation both valuable and obvious.

• Rebecca S. Eisenberg, Pharma’s Nonobvious Problem, 12 Lewis & Clark L. Rev. 375 (2008).

- Recent CAFC cases having obviousness challenges to pharmaceutical patents suggest that the pharmaceutical industry does indeed have a nonobviousness problem, but that problem is not KSR. Rather, the problem is that many of the patents that the industry relies upon are invalid for obviousness under time-honored patent doctrine.

• Rochelle Cooper Dreyfuss, Nonobviousness: A Comment on Three Learned Papers, 12 Lewis & Clark L. Rev. 431 (2008).

- This paper addresses three areas where improvements could be made in the law on nonobviousness. First, the quantum of inventiveness required for patentability should reflect the capabilities of the ordinary artisan. Second, the asymmetry in the error rate of nonobviousness determinations should be taken into account in setting the standard of nonobviousness. Third, the concept of nonobviousness—or, better, inventive step—should be operationalized by considering the opportunities, risks, and nonpatent incentives the inventor faced at the time of the innovation.

Other papers include:

• Vincenzo Denicolò, Economic Theories of the Nonobviousness Requirement for Patentability: A Survey, 12 Lewis & Clark L. Rev. 443 (2008).

• R. Keith Sawyer, Creativity, Innovation, and Obviousness, 12 Lewis & Clark L. Rev. 461 (2008).

• Colleen M. Seifert, Now Why Didn’t I Think of That? The Cognitive Processes that Create the Obvious, 12 Lewis & Clark L. Rev. 489 (2008).

• Steven M. Smith, Invisible Assumptions and the Unintentional Use of Knowledge and Experiences in Creative Cognition, 12 Lewis & Clark L. Rev. 509 (2008).

• Janet Davidson and Nicole Greenberg, Psychologists’ Views on Nonobviousness: Are They Obvious?, 12 Lewis & Clark L. Rev. 527 (2008).

• Michael J. Meurer and Katherine J. Strandburg, Patent Carrots and Sticks: A Model of Nonobviousness, 12 Lewis & Clark L. Rev. 547 (2008).

• Joseph Scott Miller, Level of Skill and Long-Felt Need: Notes on a Forgotten Future, 12 Lewis & Clark L. Rev. 579 (2008).

View the entire listing here (link)

Special thanks to Hal Wegner for forwarding this information.

KSR Invades Preliminary Injunctions at the CAFC

Erico Int'l Corp. v. Vutec Corp. (2007-1168) February 19, 2008

After surviving reexamination, Erico alleged that their J-Hook patent was being infringed by the defendants. While one of the defendants assured Erico that they would stop selling the allegedly infringing product, they "sold the very products it promised to retain and continued to manufacture and sell knock off J-Hooks."

The district court granted Erico's motion for a preliminary injunction. In defending against the motion, it was argued, among other things, that the patent was invalid due to obviousness. The documents relied upon for obviousness were (1) a reference that was considered by the PTO during reexamination, combined with (2) a new reference (the "EAI/TIA spacing standards" document). The district court did not find the obviousness arguments persuasive, noting that "the [PTO] had sufficient information before it during its prior examinations to assess the very obviousness claim [defendant] now raises, and because secondary considerations of nonobviousness cut in [Erico's] favor."

Vacating the preliminary injunction, the CAFC concluded that the prior art posed a "serious challenge" to the validity of the patent. Citing KSR and Dystar, the court found that "it is reasonable to infer that one of ordinary skill would have considered the [reexamination reference] coupled with the EIA standards and common knowledge within the art as shown by Mr. Laughlin's testimony to explain that Claim 17 is vulnerable based on invalidity."

The court also noted that, for the purposes of preliminary injunctions,

a defendant need not prove actual invalidity. On the contrary, a defendant must put forth a substantial question of invalidity to show that the claims at issue are vulnerable. Thus, a showing of a substantial question of invalidity requires less proof than the clear and convincing standard to show actual invalidity.

Judge Newman, dissenting:

[The Supreme Court] explained that "[t]he purpose of a preliminary injunction is merely to preserve the relative positions of the parties until a trial on the merits can be held" . . . The question here on appellate review is whether the district court abused its discretion in deciding to maintain the status quo during this litigation.

The district court decided that the status quo should be preserved during this litigation. In overturning that decision, the panel majority mistakes the law, misplaces the burdens, misconstrues the assumptions, and ignores the district court's discretionary authority and its balance of the equitable aspects. The panel majority does not explain how the district court abused its discretion, nor is recognition given to the standard of review whereby, as this court has stated: "A decision granting a preliminary injunction will be overturned on appeal only if it is established that the district court made a clear error of judgment in weighing relevant factors, or relied on incorrect law or on clearly erroneous factual findings."

Patentee Win Rates Rise, then Dip Sharply After KSR

LegalMetric has released a new study on patent owner win rates since the Supreme Court's decision in KSR, and found that patent owner win rates at first increased but then fell substantially below their long-term averages.

According to LegalMetric,

[T]he long-term overall win rate for patent owners varies slightly, around 60 percent. In May and June (after the Supreme Court KSR decision which was issued on April 30, 2007), the overall win rate increased to 79.5 percent (May) and 69.7 percent (June). Thereafter it dropped to 55.6 percent in July and further to 41.2 percent in August. The August figure is considerably outside the normal range of variation for overall patent owner win rates.

The long-term contested win rate for patent owners varies around 25 percent. In May it spiked to 46.7 percent, but it has fallen thereafter to 23.1 percent in June (similar to the long-term average), 14.3 percent in July, and 18.1 percent in August. The latter two figures are outside the normal range of variation for contested win rates and may indicate a long-term change. Time will tell.

One hypothesis for the short-term increase and longer-term fall in win rates post-KSR is that cases which easily met the new standard were decided more quickly. If so, the public should see some rebound from the extremely low win rates of July and August.

View press release from LegalMetric here (link).

View Power Point slides charting the statistics here (link).

USPTO's KSR Guidelines Coming Soon to an Office Near You

Sources from the PTO have said that the initial phase of KSR training is nearly complete. The final guidelines have apparently been approved by OMB, and it is likely that the training material will be published in the next Official Gazette. Stay tuned.

The "KSR Effect" Hits the E.D. Texas, Joint Infringement Liberally Applied

AdvanceMe Inc v. RapidPay LLC, (6:05-cv-424), August 14, 2007

AdvanceMe filed suit against multiple defendants, including RapidPay, alleging infringement of U.S. Patent No. 6,941,281 (“the ‘281 patent”). Claim 1 from the '281 patent reads as follows:

1. A method for automated payment, comprising:

at a merchant, accepting a customer identifier as payment from the customer and electronically forwarding information related to the payment to a computerized merchant processor;

at the computerized merchant processor, acquiring the information related to the payment from the merchant, authorizing and settling the payment, and forwarding at least a portion of the payment to a computerized payment receiver as payment of at least a portion of an obligation made by the merchant; and

at the computerized payment receiver, receiving the portion of the payment forwarded by the computerized merchant processor and applying that portion to the outstanding obligation made by the merchant to reduce such obligation.

INVALIDITY:

During litigation, a number of prior art references were put forward, and one of the references was found to anticipate. Nevertheless, Judge Davis went further in pointing out that the claims were obvious as well:

The patent-in suit, simply put, is a computerized method for securing debt with future credit card receivables. While the patent inventor, Barbara Johnson, implemented an aggressive marketing and business development program that brought this financing method to widespread use, she did not invent a new business method. Rather, Johnson built on long-established prior art, packaged the idea in a
new way, and marketed it aggressively.

There are multiple prior art references, not considered by the PTO when issuing the
patent, that render the patent invalid, especially in light of the Supreme Court’s recent ruling in KSR Int’l Co. v. Teleflex, Inc. In KSR, the Supreme Court opined “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” 127 S. Ct. 1727, 1740 (2007). The [prior art was] available in the field at the time of the purported invention. Johnson merely implemented a predictable variation of these existing methods in establishing her invention. While Johnson’s work exhibits excellent entrepreneurship, it does not entitle AdvanceMe to a legal monopoly on this method of providing financing to small businesses. Rather AdvanceMe must continue to compete in the marketplace for its share of the market, which will benefit the economy and consumers as a whole.

JOINT INFRINGEMENT

The claims in the '281 patent require actions by multiple parties (merchant, merchant processor, payment receiver). The defendants argued that, since none of them alone performed all the steps of the claims, they could not be liable for direct infringement. Taking the more liberal approach to joint infringement, the court stated that

A showing of “agency” or “working in concert” is not required in order to establish a
sufficient connection between the defendant and the third party or parties performing the patent method’s steps . . . The sufficient connection can be shown
through a contractual relationship between the defendant and the third party or parties performing the steps of the patented method.

* * *

Both Reach and MMT [co-defendants] directly infringe the asserted claims of the ‘281 patent. Under Reach and MMT’s programs, all of the elements of the patent claims are performed either by Reach or MMT, the merchants that enter into contracts with Reach or MMT, the merchant processors that enter into contracts with Reach or MMT, or agents or instrumentalities of these entities.

Interestingly, the opinion did not mention BMC v. PaymenTech, where the lower court dismissed BMC's joint-infringement claims. This case is currently before the CAFC (No. 2006-1503), and was recently noted in the PharmaStem case ("The viability and scope of that theory of liability is a subject of considerable debate.")

• Download the (54-page) opinion here (link)

• Michael Smith just tracked this case for his "Recent Rulings for Defendants" list, and notes: "For those of you keeping score, that drops the 2007 win rate for plaintiffs to 33% and the two-year win rate to 57%."

• David Goldin is the President & CEO of AmeriMerchant, who was one of the defendants in this case. David is a blogger as well, and used the blog to solicit prior art against the '281 patent(link), which apparently was a big help in the case (link).

CAFC Flexes It's Muscle on Obviousness, Infringement

PharmaStem Therapeutics, Inc. v. Viacell, Inc. (05-1490) July 9, 2007

PharmaStem sued Viacell and 5 other defendants over broad patents related to stem cell medical treatment for persons having compromised blood and immune systems. After a 3 week jury trial, the jury returned a verdict in favor of PharmaStem, finding that the patents were not obvious and infringed. After the defendants filed JMOL motions to overturn the verdicts, the district court reversed the finding of infringement, but maintained that the patents were not invalid. Prior to, and during, the litigation, PharmaStem's patents survived 3 reexamination requests.

In a controversial split opinion, the CAFC upheld the JMOL on infringement and sua sponte held that the patents were invalid for obviousness.

Infringement:

One of the sticking points in the litigation was language in the claims that required that the recited composition contained stem cells "in an amount sufficient to effect hematopoietic reconstitution of a human adult."

Each of the defendants are in the business of servicing families with newborn infants in which blood from the infant's umbilical cord is collected and cryopreserved for possible later use. The problem was that PharmaStem could not show enough evidence that the defendants' cord blood contained a "sufficient" supply of stem cells to effect successful reconstitution of an adult. An expert provided testimony based on the defendants' marketing materials, but did not consider any data regarding the composition of the cord blood units. Accordingly, the expert's testimony was excluded.

In a more interesting move, the CAFC also determined that the method claims could not be infringed because all the steps were not performed by the same party - the defendants were responsible for collecting and cryopreserving cord blood samples, while transplant physicians unrelated to the defendants thawed the cord blood and used it for transplanting. Also, since the defendants never "owned" the blood, there was no contributory infringement:

While cord blood is certainly a product, the transaction between the defendants and their clients is plainly not the sale of "a material or apparatus for use in practicing a patented process," as is required by section 271(c) with respect to method patents. The evidence at trial showed that the cord blood remained the property of the families throughout the period in which the defendants stored it. The defendants were never owners of the blood, but instead were merely bailees; they were not free to dispose of the blood as they chose, but were contractually obligated to preserve it pending the families’ need for it at some point in the future. On those occasions when the cord blood was needed, the defendants provided the blood to transplanters in satisfaction of their contractual obligation to ship the families’ cord blood samples to a transplanter upon direction. Neither that transaction nor any earlier transaction between the families and the defendants constituted a "sale" of the cord blood.

Obviousness:

The CAFC came out of the gate framing the obviousness issue as one revolving around the "reasonable expectation of success":

The idea of using cryopreserved cord blood to effect hematopoietic reconstitution was not new at the time the inventors filed the applications that matured into the ’681 and ’553 patents . . . Accordingly, this is not a case in which there is any serious question whether there was a suggestion or motivation to devise the patented composition or process.

The more difficult question is whether the prior art would have given rise to a reasonable expectation of success in creating the process claimed in the ’553 patent and the composition claimed in the ’681 patent. In addressing that question, the parties focus on whether the inventors had a reasonable expectation that cord blood could be successfully used in transplants for hematopoietic reconstitution.

PharmaStem brought forward testimony asserting that those working in the transplant field did not believe blood would be suitable as a transplant tissue. However, the CAFC dismissed this evidence in light of statements made in the patentees own specification:

The problem with Dr. Bernstein’s testimony about the prior art references is that it cannot be reconciled with statements made by the inventors in the joint specification and with the prior art references themselves . . . [In the patentee's specification], the inventors acknowledged that it was previously known that the properties of cord blood are quite different from those of adult blood and that hematopoietic stem cells had been found in cord blood in much greater concentrations than in adult blood.

[C]ontrary to Dr. Bernstein’s contention that the prior art did not disclose the presence of stem cells in cord blood, the inventors cited several prior art references and stated flatly that "hematopoietic stem cells have been demonstrated in human umbilical cord blood." Moreover, the inventors noted that the prior art references showed that the concentration of stem cells in cord blood was "at a much higher level than in the adult." Nor can those statements in the specification be dismissed as
reflecting a careless use of the term "hematopoietic stem cell."

* * *

Accordingly, PharmaStem’s argument that stem cells had not been proved to exist in cord blood prior to the experiments described in the patents is contrary to the representation in the specification that the prior art disclosed stem cells in cord blood. Admissions in the specification regarding the prior art are binding on the patentee for purposes of a later inquiry into obviousness . . . Nor is there any unfairness in holding the inventors to the consequences of their admissions, as their characterization of the prior art as showing the presence of stem cells in cord blood is hardly unreasonable.

And then, the CAFC dropped the big one:

While the inventors may have proved conclusively what was strongly suspected before—that umbilical cord blood is capable of hematopoietic reconstitution—and while their work may have significantly advanced the state of the science of hematopoietic transplantations by eliminating any doubt as to the presence of stem cells in cord blood, the mouse experiments and the conclusions drawn from them were not inventive in nature. Instead, the inventors merely used routine research methods to prove what was already believed to be the case. Scientific confirmation of what was already believed to be true may be a valuable contribution, but it does not give rise to a patentable invention . . . Good science and useful contributions do not necessarily result in patentability.

PharmaStem also put forward secondary considerations in support of non-obviousness, but the CAFC was not receptive, stating that "there was no indication that the praise for the inventors’ work was based on any inventive contribution they made, as opposed to their proof, through laboratory work, that fetal blood contains large numbers of stem cells. As noted, the former is a basis for patentability; the latter is not. "

With regard to the reexamination, the CAFC viewed the analysis in the reexamination certificate as "flawed," based on similar reasons used to reverse the jury verdict.

Judge Newman's dissent: in a 31 page opinion (!!) Judge Newman took the majority to task over most every issue, stating that, while there was room to disagree over the jury's verdict, the majority opinion went too far in reversing infringement and non-obviousness. Also, Judge Newman came close to accusing the majority of exceeding its appellate authority by re-trying the case on appeal. Some notable quotes follow:

The discoveries of these inventors were met with universal acclaim and widespread utilization, including the founding of many commercial enterprises, all of which are reported to have licensed the patents except for these defendants. Unimpressed by these considerations, my colleagues on this panel now reconstruct these inventions by selection and inference, with perfect hindsight of the discoveries.

* * *

The panel majority scours the prior art for clues that could fit the eventual achievement, and then rules that the achievement was obvious, no matter that it eluded the others whose work is now compiled by this court so as to invalidate these patents.

* * *

My colleagues ignore not only the scientific experts who testified at the trial, but also the PTO examiners who conducted the three reexaminations . . . My colleagues do not explain where the PTO went wrong; instead, they rearrange the past, criticize the acclaim heaped on these inventors, and propose that if the people in this field knew what this court knows, they would not have been so impressed.

* * *

The question is whether the jury's verdict is sustainable on the evidence presented, not whether we could have or would have gone the other way on the evidence presented.

* * *

It is often far easier to recognize the problem than to find and demonstrate the solution. The patent law recognizes that advances of great power may be based as much on persistent and skilled investigation as on the flash of creative genius, for both serve to transcend that which was previously achieved . . . Scientific methodology usually starts with a hypothesis based on what is already known; the record shows that several scientists mentioned the idea of rebuilding destroyed blood cells. However, none achieved this long-sought goal, and the record shows the extreme skepticism concerning even the possibility of this achievement.

* * *

The district court ruled that PharmaStem had not proved infringement because PharmaStem did not separately analyze the stem cell content of each sample of cord blood . . . Every defendant testified that the blood it collected and stored was analyzed for cell content at the time of collection. The jury was not instructed that such evidence was inadequate and inadmissible -- as the district court ruled post-trial. On the evidence presented, this is not a sound basis for rejecting the jury's verdict. The tardy rejection of the testimony of PharmaStem's expert witness, Dr. Hendrix, is an inappropriate application of Daubert and its succeeding cases, on which the panel majority relies, for there was no criticism of the expert's scientific credentials or her analysis of the prior art and the state of the science.

* * *

The principles of patent infringement are not negated when the steps of a method claim are performed by more than one entity. There was no instruction as to legal impossibility of liability as to the '553 patent, and no objection was raised to the verdict questions. We are not told whether the legal theory of sale or rent was aired at the trial, but it is apparent that the jury was fully apprised of the nature of the accused activities, as reflected in the jury questions . . . It is irrelevant whether any steps of a method claim can be viewed as a "service;" infringement requires only that the steps be performed.

Is KSR Actually Helping Applicants at the BPAI?

Earlier in the month, the 271 Blog reported on post-KSR appeals at the BPAI related to obviousness (link), and reported that "only" 36% of obviousness cases were reversed on appeal. This inevitably lead to the question: "what was the reversal rate before KSR?"

This resulted in further digging, and a bit of controversy. The BPAI traditionally publishes statistics in the Official Gazette (OG), and similarly posts statistics on the BPAI link of the Office's web page.

Back in 2005, a widely-distributed analysis was made on reversal rates, based off of the OG, and reported that the reversal rate was around 60%:

Disposition-------% of Dispositions--------[% decided cases]
Affirmed------------------- 36. 6%------------------[40 % decided]
Affirmed-in-Part---------12.6 %-------------------[14 % decided]
Reversed-------------------40.9 %------------------[45 % decided]
Reversals-------------------53.5 %------------------[59 % decided]

Partial Remands, Dismissals--------9.9 %

TOTAL, 100.0%

Now, the 59% "reversal" number was a combination of decisions that outright reversed a rejection (40.9%), and partial reversals (i.e., "affirmed-in-part" - 12.6%). It is important to note here, that the reversals included ALL rejections, and not just obviousness rejections.

Turning to the published numbers on the BPAI site (link), the numbers tell a slightly different story:

FY 2005 (link) -- reversed = 39.6%; partial reversals = 12.5%; total reversals = 52.1%

FY 2006 (link) -- reversed = 34.8%; partial reversals = 12.1%; total reversals = 46.9%

FY 2007, through April (link) -- reversed = 29.6%; partial reversals = 13.9%; total reversals = 43.5%

Judging from the "reversed" numbers alone, the 36% rate of reversal on obviousness rejections for May 2007 suggests an increased rate of reversal at the BPAI. Again, the early numbers (2005-2007) combined all reversals, which may or may not have been based on obviousness. Thus, it can be extrapolated that the reversal rate of 36% on "obviousness-only" rejections suggests an increase in the overall reversal rate. It follows that the likelihood of reversal on 103 grounds increased as well.

The BPAI is expected to publish its May numbers shortly, and they will be posted when they come out.

Post-KSR Activity at the BPAI

The Board of Patent Appeals and Interferences issued two decisions on May 10 addressing obviousness and KSR. In one decision, the examiner was reversed, while the second decision affirmed the 103 rejection. Both decisions came from art unit 2100

U.S. Application 09/757,913 (PAIR link) - obviousness reversed

We begin our analysis by noting that in the rejection of claims 1 and 12, the Examiner asserts that Chen teaches the limitations argued by Appellants (i.e., "stopping the context information updating . . ." and "taking a snapshot of the compression and decompression context information . . ." )(see Answer 4; see also claim 1). However, when we look to the Examiner's rejection for specific citations for these argued limitations, there are none (Answer 4, ¶1). In responding to Appellants' arguments, the Examiner asserts that Chen inherently teaches "stopping the context information updating" as claimed (see Answer 16). Likewise, the Examiner asserts that Chen inherently teaches "taking a snapshot of the compression and decompression context information," as claimed. (See Answer 18,T 2: 8-10, i.e., "It is inherent that a snapshot can only be taken when all the data has been received as claimed. Otherwise, the snapshot would be useless").

After carefully considering both the Chen and Maggenti references, we find no specific teaching or suggestion within either reference that fairly meets the language of the claim that requires "stopping the context information updating. . .," and "taking a snapshot of the compression and decompression context information . . ." (claim 1). We find that to affirm the Examiner on this record would require speculation on our part. Furthermore, the Court of Appeals for the Federal Circuit has determined that 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." In re Robertson, 169 F.3d 743,745,49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (internal citations omitted). Because we find the combination of Chen and Maggenti fails to teach or suggest all the limitations recited in the claim, we agree with Appellants that the Examiner has failed to meet the burden of presenting a prima facie case of obviousness. Accordingly, we will reverse the Examiner's rejection of independent claim 1 as being unpatentable over Chen in view of Maggenti.

U.S. Application 09/999,074 (PAIR link) - obviousness affirmed

Contrary to Appellants' argument, Guheen in fact discloses technological means to perform user management (e.g., developing user profiles via a database and customizing interfaces based on specific user profiles) as we discussed previosly. Moreover, Berg's flow management engine tracks each user's identification (e.g., the user's login name) for each particular step in a flow in a database." Based on these collective teachings, as well as the inferences and creative steps that the skilled artisan - an electrical engineer with several years of related industry experience - would reasonably employ, we see no reason why the skilled artisan would not have combined the user management features of Guheen with Berg's workflow management capability. Such a combination would provide, among other things, customized interfaces tailored to particular users in a workflow environment. For at least these reasons, the skilled artisan would have reasonably combined the respective teachings of the references.

Joe Miller at the Fire of Genius is compiling a post-KSR collection of CAFC and district court cases, as well as BPAI decisions on obviousness. It's a fantastic resource that should be visited by everyone in the weeks/months (years?) to come.

Should Presumptions Be Used for Obviousness?

Professor Timothy Holbrook wrote a brief article prior to the KSR decision which discusses the use of a presumption-based approach for obviousness:

This situation is ripe for the use of presumptions. If all of the limitations of the claim are present in the prior art, then the court would look for either a motivation to combine the prior art or a teaching away from the claimed invention.

The presence of a suggestion to combine should create a presumption of obviousness, rebuttable by strong secondary considerations, such as the failure of others, unexpected results, or long-felt but unsolved need, or by contrary evidence from the prior art.

Similarly, the presence of a teaching away should create a presumption of non-obviousness, rebuttable by other secondary considerations suggesting the advancement was merely trivial or by other parts of the prior art demonstrating that one of skill in the art would not view this combination as being discouraged by the prior art.

Importantly, in the absence of either a suggestion to combine or a teaching away, no presumption arises and the court should apply the Graham methodology alone, absent any presumptions. Indeed, the absence of either a motivation or a teaching away says very little about the state of the art one way or the other; it is merely an absence of evidence and not evidence of a lack of technical knowhow.

After KSR, this idea seems to make sense, in light of the SCOTUS opinion. An interesting proposition that is worth a read.

T. Holbrook: "Obviousness in Patent Law and the Motivation to Combine: A Presumption-Based Approach" (SSRN link; Wash. U. link)