“Reviving Objectivity in Patentability Decisions”

Thursday, January 17, 2013

the Del Mar Marriott

Prior to Graham v. John Deere Co., courts were placing increasing weight on so-called “objective” considerations of non-obviousness  such as a long felt need for the invention, the failure of others, commercial success, etc. The great Judge Learned Hand was one of most ardent champions of this approach. As early as 1923 when still a district judge, he wrote that the “history of the art is a safer test” for determining non-obviousness as compared to a process of “speculating a priori upon what new steps are within the imagination of an ordinary journeyman.” Hand continued to endorse using “the history of the art” as a primary and more reliable test of patentability throughout his career, and until Graham, he was succeeding in bringing along other courts and commentators.   Graham’s description of objective historical and commercial evidence as being “secondary” considerations seemed to push the law away from that direction.  Recently, however, the Federal Circuit has been reversing that trend by placing more weight on the objective considerations of the very sort that Learned Hand identified as the most reliable indicator of non-obviousness   This talk will review the history, theory and changing fortunes of “objective considerations” and will consider the appropriate weight to be given to objective evidence in judging the validity of patents.
















About Judge Reyna:

Jimmie V. Reyna was appointed to the United States Court of Appeals for the Federal Circuit by President Barack Obama in 2011.  Prior to his appointment, Judge Reyna was an international trade attorney and shareholder at Williams Mullen, where, from 1998 to 2011, he directed the firm’s Trade and Customs Practice Group and its Latin America Task Force, and served on its board of directors (2006-08, 2009-11). He was an associate and partner at the law firm of Stewart and Stewart (1986-98).  From 1981 to 1986, Judge Reyna was a solo practitioner in Albuquerque, New Mexico and, prior to that, an associate at Shaffer, Butt, Thornton & Baehr, also in Albuquerque, New Mexico.

Judge Reyna served on the U.S. roster of dispute settlement panelists for trade dis­putes under Chapter 19 of the North American Free Trade Agreement, and the U.S. Indicative List of Non-Governmental Panelists for the World Trade Organization, Dispute Settlement Mechanism, for both trade in goods and trade in services.

Read full bio here >


About John Duffy:

John Duffy joined the Law School in 2011 after serving on the faculty at George Washington University Law School since 2003, most recently as Oswald Symister Colclough Research Professor of Law. Duffy teaches torts, administrative law, patent law and international intellectual property law.

In the field of intellectual property, Duffy has been identified as one of the 25 most-influential people in the nation by The American Lawyer and one of the 50 most influential people in the world by the U.K. publication Managing Intellectual Property. He was named a legal “visionary” by the Legal Times in 2009 and has been profiled in BusinessWeek.

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