Predictability and Nonobviousness in Patent Law After KSR

In KSR International Co. v. Teleflex, Inc., the Supreme Court addressed the doctrine of nonobviousness, the ultimate question of patentability, for the first time in thirty years. In mandating a flexible approach to deciding nonobviousness, the KSR opinion introduced two predictability standards for determining nonobviousness. The Court described predictability of use (hereinafter termed “Type I predictability”)— whether the inventor used the prior art in a predictable manner to create the invention—and predictability of the result (hereinafter termed “Type II predictability”)—whether the invention produced a predictable result—both as a means for proving obviousness. Although Type I predictability is easily explained as part of the flexible approach endorsed by KSR, Type II predictability represents a potentially radical shift in the nonobviousness doctrine. Instead of focusing on whether reasons already existed to create the invention, like Type I predictability does, a Type II predictability analysis takes the invention’s creation as a given and examines instead the invention’s operation. Type II predictability moves the analysis away from the gap between the prior art and the invention to the invention only. The United States Patent and Trademark Office (“USPTO”), the Federal Circuit, and lower courts are using Type II predictability fairly extensively after KSR. The problem with this usage is that Type II predictability runs counter to statutory language, introduces hindsight bias, discriminates against certain technologies, and conflicts with basic patent theory. Accordingly, the USPTO and courts need to reconsider the use of Type II predictability and their interpretation of KSR