How should a court determine whether a patent claim is invalid for obviousness? Recent Federal Circuit decisions reveal that judges answer that question principally in two different ways, and that the difference matters to the outcome of the inquiry. This article discusses the competing frameworks and considers unresolved questions.

The Frameworks

The obviousness inquiry considers four well-established “Graham factors,” Graham v. John Deere, 383 U.S. 1, 17-18 (1966):

  1. The scope and content of the prior art;
  2. The differences between the prior art and the claimed invention;
  3. The level of ordinary skill in the art;
  4. Secondary considerations (objective indicia) of nonobviousness, such as commercial success, long felt but unsolved needs, and failure of others.

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