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 addition to mandating a flexible approach to deciding nonobviousness, the KSR opinion also introduced two predictability standards for determining nonobviousness. The Court described predictability of use (“Type I predictability”) — whether the inventor used the prior art in a predictable manner to create the invention — and predictability of the result (“Type II predictability”) — whether the invention produced a predictable result — both as a means for proving obviousness. While Type I predictability is easily explained as part of the flexible approach endorsed by KSR, Type II predictability represents a possible 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 looks instead at 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 Patent Office, the Federal Circuit, and lower courts are using Type II predictability fairly extensively. 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 Patent Office and courts need to reconsider how they use Type II predictability and interpret this part of KSR