1. Overview
Validity of patent hinges on novelty, utility, and non-obviousness
Utility generally not an issue
Pre-suit investigation focuses on infringement, novelty, and non-obviousness
Claim construction
Infringement
Validity (in 3 parts)
Is known art “prior art” under §102?
Does the known art “anticipate” any claims in the patent you want to enforce?
Claim-by-claim analysis
Does the known art make any of those claims obvious?
Even after suit filed, focus is on same issues
Difference is that parties have benefit of discovery

2. Obviousness 35 U.S.C. §103: Conditions for Patentability
“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section , 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 of the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”
Obviousness argument typically based on combining two references or one reference and knowledge of POSA

3. Graham v. John Deere Co., 383 U.S. 1 (1966)
Test for determining obviousness
Determine scope and content of prior art
Determine the difference between the claimed invention and the prior art
Determine the level of ordinary skill in the art
Determine if there are any relevant secondary considerations

4. Secondary Considerations
Whether invention commercially successful as a result of the merits of the claimed invention
Whether the invention satisfied a long-felt need
Whether others had tried and failed to make the invention
Whether others invented the invention at roughly the same time
Whether others copied the invention
. . .

5. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)
Basic test for obviousness is set forth in Graham v. Deere
Obviousness is based on:
Whether one of skill would have had a reason to combine/modify the prior art to achieve the claimed invention; and
Whether there was a reasonable expectation of success to combine/modify the prior art

6. Perfect Web Tech. v. InfoUSA Inc., 587 F.3d 1324 (Fed. Cir. 2010)
KSR expanded “the sources of information for a properly flexible obviousness inquiry” to include, among other things, “recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”
Before KSR, had to find TSM in prior art reference(s)

7. Factors Relevant to Finding “Reason to Combine/Modify . . .”
Whether claimed invention merely the predictable result of using prior art elements according to their known function(s)
Whether claimed invention provides obvious solution to known problem in relevant field
Whether prior art teaches or suggests desirability of combining elements in the invention
Whether prior art teaches away from combining elements in claimed invention
Whether it would have been obvious to try the combination of elements
Obvious to try not sufficient in unpredictable technologies

8. Level of Ordinary Skill in the Art
Determined based on:
Levels of education and experience of those working in the field
E.g., Vitale vs. Hess
Types of problems encountered in the field
Prior art solutions to those problems
Rapidity with which innovations are made
The sophistication of the technology
E.g., Packaging vs. Brachytherapy
Recall level of skill also relevant to claim construction
How POSA would have construed term is a function of level of skill in the art

9. Examples of Obviousness Analysis
Claims in Perfect Web
Claims in ‘586 Patent and Bonekamp
Claims in ‘168 Patent and Liprie/Friedman and Bonzel/Friedman
Why bother with Liprie/Friedman and Bonzel/Friedman if Fischell and Dake are closer art?