Once a generation or so, the Supreme Court reviews the "obviousness" provision of the Patent Act, 35 U.S.C. § 103(a):
A patent may not be obtained though the invention . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.The Supreme Court's most recent decisions interpreting the obviousness provision -- Great Atlantic & Pac. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) and Sakraida v. Ag Pro, Inc., 425 U.S. 274 (1976) (perhaps better known to readers of Woodward and Armstrong's The Brethren as Justice Brennan's notorious "cow shit" case) -- declared that a "patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."
In Teleflex, as this case was styled in the lower courts, the Federal Circuit injected a subjective element into § 103's test of obviousness:
While obviousness is ultimately a legal determination, it is based on several underlying issues of fact, namely: (1) the scope and content of the prior art; (2) the level of skill of a person of ordinary skill in the art; (3) the differences between the claimed invention and the teachings of the prior art; and (4) the extent of any objective indicia of non-obviousness. When obviousness is based on the teachings of multiple prior art references, the movant must also establish some “suggestion, teaching, or motivation” that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.The Solicitor General has filed a brief supporting the grant of certiorari. The government argues that Federal Circuit "has transformed one means of establishing obviousness . . . -- proof that the prior art provided a teaching, suggestion or motivation for combining prior art references -- into an inflexible requirement for determining obviousness." Also urging a grant of cert. and ultimate reversal are 24 law professors and a consortium of economists and historians. (For those not familiar with the political economy of intellectual property in academia, professors who teach intellectual property are generally opposed to the idea.)
The Intellectual Property Owners Association, by contrast, supports the respondents and the Federal Circuit decision. As reported in ScienceNOW Daily News, the Biotechnology Industry Organization opposes reversal on the grounds that a low threshold for obviousness would "deter investment within the biotechnology industry" and "negatively affect public health."
My quick take? Patent law's "person having ordinary skill in the art", or PHOSITA, is one of the most obvious instances of a hypothetical person in the law who is as objective as she is fictional. Reversed.