An Emperical Analysis of Teaching, Suggestion, and Motivation to Combine before the Federal Circuit

In "The Federal Circuit and Patentability: An Empirical Assessment of the Law of Obviousness" (August 18, 2006), Lee Petherbridge and R. Polk Wagner use empirical data from over fifteen years of jurisprudential pronouncements to conclude that the Federal Circuit has developed a doctrine in this area that is relatively stable and appears reasonably predictable. "Indeed," they write, "contrary to much recent commentary, these results suggest that the Federal Circuit’s doctrinal toolkit - especially the much-discussed (and oft-maligned) 'teaching, suggestion, or motivation' test for combinations of references - has not had a significant observable effect on the results of obviousness cases at that Court.

According to the authors,

Over the years the Federal Circuit has paid great homage to the decision in Graham [v. John Deere]. Not only has it consistently relied on the Supreme Court’s factor-based approach to determining the question of obviousness, it has also accepted the Supreme Court’s invitation for appellate court involvement. In that vein, it has focused its attention on developing the jurisprudence surrounding the Supreme Court’s holding that the determination of obviousness vel non is to be ascertained “at the time the invention was made.” To ensure that the obviousness inquiry is properly temporally located the court has engaged perhaps the most straightforward approach. It has, as a conceptual matter, relocated the obviousness inquiry to the “time the invention was made.” It then asks, in light of the contemporaneous topography of relevant prior art, whether the claimed subject
matter would be apparent to or easily perceived by a person of ordinary skill
in the relevant art.

This rather simple logical step has given rise to the kernel of the court’s contribution to the obviousness analysis set forth in Graham: that somewhere within the full scope of the relevant prior art, the claimed subject matter must be sufficiently taught or suggested that it would have been easily perceived by a person of ordinary skill in the art. As a consequence of some of the linguistic formulations that appear in the Federal Circuit case law, the requirement that prior art make apparent the arrangement of disparate sources and teachings has come to be known as the “suggestion test” or the requirement that the prior art provide a “teaching, suggestion, or motivation” to collect and combine disparate sources of prior art information. For purposes of uniformity, for the remainder of the paper we will refer to the test as either “the teaching, suggestion, or motivation test” or “TSM.”

Among the results cited in their study:

1. The Federal Circuit affirmed the outcome of obviousness determinations a clear majority of the time.
2. The Federal Circuit found claims obvious a clear majority of the time.
3. The overall rate at which the Federal Circuit affirmed the PTO is nearly identical to the overall affirmance rate and is increasing.
4. There has been a substantial increase in the appearance of Teaching-Suggestion-Motivation ("TSM") analysis in Federal Circuit opinions.
5. As TSM analysis has become more prominent in Federal Circuit opinions, the rate at which the Federal Circuit affirmed or reversed the reviewed tribunal has not substantially changed.
6. The frequency of an obvious or nonobvious outcome is not substantially different in cases that include a TSM analysis and those that do not.
7. As TSM analysis has become more prominent in Federal Circuit opinions, the rate at which the Federal Circuit reached a nonobvious outcome decreased.
8. As TSM analysis has become more prominent in Federal Circuit opinions, the rate at which the Court reversed the PTO decreased.
9. As TSM analysis has become more prominent in Federal Circuit opinions, the court has shown an increase in the number of sources on which it relies to analyze TSM.