“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.