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16 Stan. Tech. L. Rev. 709 (2012-2013)
The Federal Circuit's New Obviousness Jurisprudence: An Empirical Study

handle is hein.journals/stantlr16 and id is 706 raw text is: STANFORD TECHNOLOGY LAW REVIEW VOLUME 16, NUMBER 3 SPRING 2013 THE FEDERAL CIRCUIT'S NEW OBVIOUSNESS JURISPRUDENCE: AN EMPIRICAL STUDY Jason Rantanen* CITE AS: 16 STAN. TECH. L. REv. 709 (2013) ABSTRACT In 2007,following the Supreme Court's first opinion addressing obviousness in the Federal Circuit era ofpatent law, Rebecca Eisenberg and Harold Wegner, two of the most prominent voices in patent law, offered competing predictions about the effect KSR International Co. v. Teleflex, Inc. would have on the Federal Circuit's obviousness jurisprudence. Seeing KSR as part of a broader admonishment against the use of rigid rules rather than providing any substantive guidance, Eisenberg foresaw a future in which KSR changed what the Federal Circuit said about obviousness but not what it did. Wegner, in contrast, predicted that KSR would change case outcomes: inventions that were nonobvious the day before KSR would suddenly become obvious after the Court's opinion. This study empirically examines these two predictions using a novel dataset comprised of all pre- and post-KSR Federal Circuit decisions on obviousness over a fifteen-year period. This data reveals strong evidence that KSR has indeed altered the outcomes of the Federal Circuit's obviousness determinations, a change that has manifested in large part through an increase in the deference that the Federal Circuit is giving to district court determinations that patents are obvious as opposed to a shift in the substance of the law itself Moving beyond an examination of outcomes alone, this study uses the technique of content analysis to explore the heart of the second prediction: that KSR would affect what the Federal Circuit says about obviousness. This analysis * Associate Professor of Law, University of Iowa College of Law. The author would like to thank Christopher Cotropia, Lee Petherbridge, Shine Tu, David Schwartz, Herbert Hovenkamp, Christina Bohannan, the participants in the Iowa Legal Studies Workshop, and commentators on PatentlyO.com for comments on earlier drafts of this article, as well as Courtney Burks and Zachary Pratt for excellent research assistance. Comments are appreciated and can be sent to jason-rantanen@uiowa.edu.

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