THE ROLE OF MARKET INCENTIVES IN KSR’S OBVIOUSNESS INQUIRY

11 Wake Forest J. Bus. & Intell. Prop. L. 33

KSR was a game changer in the realm of patent law. The decision heightened the standard for patentability by introducing several “common sense”-based obviousness rationales. Under KSR’s flexible approach, invalidating patents based upon the concepts of “obvious to try,” “predictable variation,” and just plain common sense have received the bulk of the limelight. However, developing in the background is the jurisprudence espousing KSR’s “design trends or market pressure” rationale. The Court may have intended for the role of market incentives to be rather limited, such as confined to instances in which the patent-in-suit can fairly be characterized as a straightforward combination patent. However, since KSR, litigants have expanded the influence of marketplace demands via various successful obviousness arguments.

This article analyzes decisions ruling claims obvious based upon KSR’s design trends or market pressure, and the interplay between market incentives and secondary considerations. As discussed in detail below, there has been a wide spectrum of factual scenarios in which claims have been invalidated as obvious using market incentives. The post-KSR decisions discussed herein further reveal that during litigation, patentees should now be mindful that secondary indicia of non-obviousness may also support a market-incentive obviousness theory. Specifically, courts have discounted evidence of actual commercial success—or even turned the tables on the patentee, using commercial success as an implicit admission that the claimed invention is an obvious solution to a consumer demand. Similarly, evidence indicating that the claimed subject matter remedies a long-felt need or received praise by the industry has been readily dismissed.