Divergent Technical Teachings of a Primary Reference Matter in an Obviousness Analysis
A popular counter-argument to an obviousness attack is that the primary reference of the combination “teaches away” from the proposed combination. That is, if reference (A) is proposed to be modified by the teachings of reference (B) in some manner, and reference (A) criticizes, discredits or discourages that manner of combination, then reference (A) is said to “teach away” from the combination — thus, precluding an obviousness determination on that proposed combination.
In practice however, it is a rare reference that includes a technical explanation that is so strongly worded to satisfy the teaching away standard. Yet, as the Federal Circuit made clear this week, less pronounced evidence of divergent technical teachings cannot be disregarded by the Patent Trial & Appeal Board (PTAB).
As obviousness is analyzed in retrospect, there is a strong potential for hindsight bias. For this reason, there are a number of related safeguards to the teaching away prohibition. All of these safeguards are designed to protect from hindsight bias by considering the basic starting point of any obviousness combination — the “motivation,” or articulable rationale for modifying the primary reference in the first instance.
For example, in addition to teaching away, there are related doctrines such as “operating principle” and the “intended purpose of a primary reference. A modification to either of these is rarely considered to be an obvious change. Likewise, any modification to the primary reference that would render the primary reference inoperable is also an unobvious change.
Last week in Polaris Industries, Inc. v. Arctic Cat, Inc. the Federal Circuit explained the proper analysis of divergent technical teaching evidence as follows (here):
Polaris contends that the Board’s analysis with respect to [claims 17-19] suffers from multiple legal errors, all of which stem from the premise that “[v]ehicle design is essentially a packaging exercise,” in which the “components are standard, but where they are placed is creative.” [¶] We conclude that the Board’s analysis of these claims was inadequate. . . . This is because the Board (1) failed to consider Polaris’s uncontested evidence that skilled artisans would not have been motivated to place a fuel tank under Denney’s seats; and (2) applied a legal analysis that not only finds no support in our caselaw, but also runs contrary to the concept of teaching away.
Polaris introduced undisputed evidence below that placing a fuel tank underneath one of Denney’s seats would have required significantly raising the occupancy area. According to Polaris, such a modification would have been contrary to Denney’s teaching that, “[b]y raising the occupancy area, the center of gravity of the ATV is also raised,” which results in “a decrease in vehicle stability and subsequent increased risk of rollovers.[“] The question, then, is whether the Board properly considered this undisputed evidence and other evidence introduced by the parties in evaluating whether persons of skill in the art would have been motivated to modify Denney to meet the limitations of claims 17–19. [¶] The remainder of the Board’s analysis demonstrates that it did not. The Board failed to analyze whether Denney “teaches away” from claims 17–19 by determining whether “a person of ordinary skill, upon reading [Denney], would be discouraged from following the path set out in [Denney], or would be led in a direction divergent from the path that was taken by the applicant.” This was error.
[T]he Board rejected Polaris’s supposed “conflat[ion] [of] known modifications having known benefits with subjective preferences,” and held “that an obviousness analysis should focus on whether a modification is known to implement and has known benefits[.]” The Board then stated that “one of ordinary skill has the ability to weigh the various benefits and disadvantages based on subjective preferences in an analysis largely unrelated to obviousness.” [¶] We have never articulated a framework for analyzing whether claims would have been obvious that includes the phrase “subjective preference” or that permits a tribunal to wholly disregard the significance of prior art teachings based on such a characterization. Nevertheless, the Board applied its “subjective preferences” analysis to reject Polaris’s argument that Denney’s stated desire for a low center of gravity “teaches away” from making modifications that would raise the ATV’s center of gravity, without conducting a proper teaching away analysis.
There are three specific problems with the “subjective preference” analysis espoused and applied by the Board. First, by completely disregarding certain teachings as ill-defined “subjective preferences,” the Board’s approach invited the “distortion caused by hindsight bias” into the fold. . . . [¶] Second, the Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention. . . . [¶] Third, the Board’s analysis encourages the fact-finder to outright discard evidence relevant both to “teaching away” and to whether skilled artisans would have been motivated to combine references. . . . . .But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference.
The Board’s treatment of [the undisputed] evidence was deficient, and we therefore vacate its determination that claim 17 would have been obvious. Because claims 18 and 19 depend from claim 17, we vacate the Board’s obviousness determination with respect to those claims as well. [¶] On remand … [t]he Board must determine whether Denney merely expresses a general preference for maintaining very low seats or whether Denney’s teachings “criticize, discredit, or otherwise discourage” significantly raising the occupancy area of Denney’s ATV to add a fuel tank under one of the seats. Even if the Board determines that Denney does not teach away because it merely expresses a general preference, the statements in Denney are still relevant to determining whether a skilled artisan would be motivated to combine Denney and Furuhashi.
(emphasis added, internal quotes/citations omitted)
Again this week, the Board considered a potentially divergent technical teaching of a primary reference, but this time noted the Board’s flexibility absent evidence on point in Think Products, Inc. v. ACCO Brands Corp. (here). In this instance the Board explained:
In particular, the Board relied on the statement with regard to the alternate embodiment of Figure 4 that “[w]ith this configuration, the locking head 104 will not rotate relative to the anchor 20,” to infer that other embodiments, such as figure 2, “permit rotation.” The Board further noted that the testimony of Think Products’s expert “fail[ed] to explain adequately why a person of ordinary skill in the art would understand from McDaid’s disclosure  that the embodiment of Figure 2 does not permit rotation”—i.e., that there was nothing in the record before the Board to show that Figure 2 did not rotate. Thus, the Board held that McDaid did not teach away from a combination with Chen and that all of the challenged claims would have been obvious over the two references.
. . .
Think Products cites nothing in the record, whether statements from the prior art or expert testimony, to support this understanding of Figure 2. The Board (1) reasonably inferred from the disclosure that Figure 4 did not permit rotation that other embodiments may permit rotation, (2) reasonably concluded that the structure of Figure 2 appears susceptible to rotation, and (3) correctly noted that nothing in the record, including the testimony of Think Products’s expert, indicates that the embodiment of Figure 2 does not permit rotation. Thus, we find the Board’s conclusion of obviousness to be supported by substantial evidence.
As pointed out by the Court in Polaris “[w]e have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained. We have also recognized that, when the art in question is relatively simple, as is the case here, the opportunity to judge by hindsight is particularly tempting.” (internal quotes and citations omitted)
Patent Owners seeking to leverage the available safeguards against hindsight bias in an obviousness determination, divergent technical teachings and illogical modes of combination must be supported by evidence to force the discussion on the USPTO, not mere attorney argument.