23968
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Obviousness as Fact: The Issue of Obviousness in Patent Law Should Be a Question of Fact Reviewed with Appropriate Deference
Ted L. Field*
Article

  The full text of this Article may be found here.

27 Fordham Intell. Prop. Media & Ent. L.J. 555
Article by Ted L. Field*

ABSTRACT

[O]

ne of the most common defenses that an accused infringer raises in a patent infringement lawsuit is that the patent claims at issue are invalid for obviousness. The question of obviousness is based on several factual determinations, and the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit should sensibly review these determinations with deference to the jury’s or trial court’s findings. But these courts instead treat the ultimate determination of obviousness as a question of law to be reviewed de novo. This Article challenges the correctness of this standard of review and argues that courts should treat the ultimate determination of obviousness as a question of fact reviewed with appropriate deference. The Article considers several theoretical and practical reasons that support this argument. The Article concludes: (1) based on general policy considerations concerning standards of review, obviousness should be a question of fact; (2) the precedent on which the courts have relied in determining the standard of review for obviousness does not support the conclusion that obviousness is a question of law; (3) the treatment of obviousness as a question of law is inconsistent with the Federal Circuit’s treatment of analogous issues in patent law; and (4) based on an examination of recent case law, the Federal Circuit almost always treats obviousness as a de facto question of fact even though it is a de jure question of law. Thus, this Article concludes that the Supreme Court should hold that the ultimate issue of obviousness is properly a question of fact to be reviewed with appropriate deference.

*Professor of Law, South Texas College of Law Houston. J.D., summa cum laude, John Marshall Law School, 2002; M.S., Northwestern University, 1990; B.A., University of Illinois at Chicago, 1987. The author thanks Robert Jewett for his research assistance. The author also thanks the faculty of South Texas College of Law Houston for their helpful suggestions at a faculty scholarship workshop. Finally, the author thanks Jessica Y. Field for her encouragement and support. The author welcomes comments via e-mail at tfield@stcl.edu.