No. 2010-1341 (Fed. Cir. May 30, 2012)

An obviousness determination based on a “common-sense” approach without weighing objective indicia of nonobviousness represents an impermissible reliance on hindsight.

At summary judgment, the district court held that the asserted claim of the patent-in-suit was obvious in light of the combination of two prior art references. The two references taught all but one limitation of the asserted claim, that limitation having been added during prosecution to overcome the examiner’s rejection over those references. The district court held that the untaught limitation would have been “obvious to try” based on a “common sense approach.”

The Federal Circuit vacated and remanded the ruling, rejecting the district court’s “unsubstantiated reliance on ‘a common sense view’” in part based on the court’s reliance on the perspective of an artisan in an art other than the primary focus of the patent. The Federal Circuit also held that the district court’s common sense analysis was a form of prohibited reliance on hindsight; that it “used the invention to define the problem that the invention solves.” 

Compounding the impermissible reliance on hindsight was the district court’s failure to assess objective indicia of non obviousness. The Federal Circuit noted that such an analysis is obligatory precisely because the “objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight.”

The Federal Circuit did affirm the district court’s holding of non-infringement, where the accused embodiment practiced the claim limitation at issue in the obviousness analysis in the same way as the prior art. As such, the patentee’s argument for why the prior art lacked that limitation applied equally to explain why the accused product lacked the limitation. 

A copy of the opinion can be found here