Engineers’ Sense of Invention Elevated to Supremacy in KSR.

First I’d read the briefs in KSR, then came oral argument, then I read the opinion.  All along, the question was what was the origin of this new, non-specific measure for obviousness.  Maybe the Supremes, or their clerks, had been reading old issues of The New Yorker magazine, or other articles about the saga of the late inventor of the intermittent windshield wiper.  That case in more well-known by the citation, Kearns v. Chrysler Corp., 32 F.3d 1541, 1545, 31 USPQ2d 1746, 1749 (Fed. Cir. 1994), cert. den’d, 514 U.S. 1032; Kearns v. Porsche, Kearns v. Ferrari 39 F.3d 1194, and 53 F.3d 335 (Fed. Cir. 1994), cert. den’d, 516 U.S. 820, and 62 F.3d 1430 (Fed. Cir.), cert. den’d, 516 U.S. 989.

Recent reading lead me to a 1993 interview with The New Yorker magazine, in which Ted Daykin, a former Ford engineer, disputed the novelty of Prof. Kearns invention of the intermittent wiper. Daykin claimed that Kearns’ “electronic timing device was an obvious thing to try next.”  He rhetorically asked: “How can you patent something that is in the natural evolution of technology?”   Draw the parallels, at the time of the 1993 interview, Deere v. Graham and the 1952 patent act were the law, now KSR is the law.  Daykin’s observations stood out as some engineering minds’ precursor to rhetoricals posed at oral argument in the KSR case, which later morphed into the Supreme Court’s decision, and holdings such as the following:

“The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try.’” * * * “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.”

The Justices of our Supreme Court are not automotive engineers, but they obviously think like them.