The Law/Fact Lever: How the Federal Circuit Can Control Obviousness Outcomes

"The Graham test does not explain where we fit in additional inquiries of motivation-to-combine and reasonable-expectation-of-success, but we do know that these are also factual questions. What that means procedurally is that the judgment of the fact finder (often a jury or PTAB panel) is given deference on appeal."

"By recharacterizing a fact-finder's assessment of the evidence as reflecting error of a 'legal standard,' the court can sidestep deferential review entirely. Questions of law are reviewed afresh - de novo - on appeal without any deference given to the lower court's judgment or reasoning."

Obviousness determinations in patent law occupy a unique procedural position established by Graham v. John Deere Co. The Supreme Court classified obviousness as a question of law while identifying four underlying factual inquiries: prior art scope and content, differences between prior art and claims, ordinary skill level, and objective nonobviousness indicia. Additional factual questions regarding motivation-to-combine and reasonable expectation of success also apply. This mixed character creates procedural complexity: factual findings receive appellate deference, but legal conclusions receive de novo review. The Federal Circuit exploits this distinction by recharacterizing factual assessments as legal standard errors, enabling fresh appellate review without deference to lower court judgments.

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