The first Zurich IP Retreat was held on Friday/Saturday 8/9 September 2017 on the shores of lake Zurich, organized by INGRES and ETH Zurich, in honour of Dr. Dieter Brändle, the first President of the
Swiss Federal Patent Court who will retire at the end of 2017. It brought together
opinion leaders in the law of innovation and technology from all over the
world, including judges, litigators, patent attorneys, in-house lawyers and
academics, to discuss one of the fundamental problems in patent law: the need
to assess the prior art, and most notably inventive step (non-obviousness),
without hindsight and knowledge of the invention. Is this even possible from a
psychological perspective? Likely how successful are the approaches to avoid
hindsight bias developed in different jurisdictions? Presentations and panel discussions
over the course of two short days shed some light on these questions.
Psychological Dimensions
The opening
presentation and the first panel looked at hindsight bias from a psychological perspective.
Aileen Oeberst (Professor, University of Mainz, Germany) gave
an overview of the psychological research on hindsight bias. “Hindsight bias”
has two components: on the one hand, after the event is known, it appears more
inevitable than before the event (“It had to happen”). On the other hand, it
appears more foreseeable than it actually was (“I knew it all along”).
A third aspect is that the event distorts the memory – after the event, one
even remembers (falsely) that the one predicted the event. Since this latter
aspect seems not to play a role in the context of patent law, it is not further
addressed. Which aspect of hindsight bias is more important in the context of
obviousness assessments in patent law is an unresearched question. It is
potentially important because the underlying process informs which debiasing
strategies, if any, could be successful. Prof. Oeberst also raised the question
whether knowledge of an invention is more alike an “event” or almanac
knowledge, which are the categories commonly studied in hindsight experiments,
and hinted that it might not fit into either of these categories.
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| Aileen Oeberst |
Hindsight
bias is a very robust phenomenon with small to mediate effect sizes.
Small effect sizes may still have an important effect on binary choice if the
decider is on the threshold; i.e., in close cases. Whether domain expertise can
safeguard against hindsight bias is not entirely clear, experts – specifically
judges – are certainly not immune to hindsight bias.
Deliberation in groups does not seem to reliably reduce hindsight bias, but the
research is limited and restricted to small groups (three people).
Debiasing
hindsight bias is generally considered very difficult.
Instructions to “ignore the ex post knowledge” are useless.
The best strategy is to withhold the knowledge of the outcome from the decision
maker, but this may not be feasible for obviousness assessments. Short of
shielding the decision maker from information, “consider the opposite”
strategies show promise.
It is, however, important that the decision maker comes up with his or her own
reasons why the opposite may have happened. It is therefore unclear whether
advocacy demonstrating reasons for other outcomes is a successful strategy for
debiasing.
Greg Mandel (Professor, Temple University Law School, USA)
summarized his original research on hindsight bias in patent law.
Mandel found, in an experimental study with mock jurors, a strong effect of
hindsight bias. While only between 23% and 49% of participants (depending on
scenario) found that a solution to the technical problem presented – with a
selection of pertinent prior art – was obvious when they did not know the
patented solution, 59% to 85% found the solution obvious when they were aware
of it. In other words, about a third more decision makers found the invention
obvious when they were aware of it versus those who were only told of the
problem, despite having been informed of the same prior art references.
Standard jury instructions for patent cases and explanation of the “teaching
suggestion motivation” test did not reduce hindsight bias.
Marco Kleine (Senior Research Fellow, MPI for Innovation
and Competition, Munich, Germany) added some thoughts from an experimental
economist’s perspective, but had to admit that the economic research in this
area largely relied on the psychological studies introduced by Prof. Oeberst.
Several studies indicate that hindsight bias increases over time,
which might be important when obviousness is judged years after the invention
was made. The type of ex post information matters – almanac questions exhibit
greater hindsight bias than real world events or case scenarios.
Mark Schweizer (President elect, Federal Patent Court,
Switzerland) added that people tend to incorrectly believe that others are more
susceptible to cognitive biases than they are themselves (“bias blind spot”).
Cognitive sophistication, as measured by SAT (Scholastic Aptitude Test) and the
Cognitive Reflection Test (CRT) does not reduce the bias blind spot.
In other words, smart people also believe they are less susceptible to biases
than others, but are in fact equally biased.
Avoiding Hindsight Bias In
Patentability Assessment Around The World
The second panel
sought to show which approaches to reduce hindsight bias different jurisdictions
had developed.
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| Szepler, Yu, Klett, Arnold, Kalden, Bremi, O'Malley, Meier-Beck, Ashley (2nd Panel) |
Graham Ashley (Chair, EPO Board of Appeal) briefly summarized
the EPO’s problem-solution approach (PSA).
Selection of the closest prior art is done with knowledge of the invention,
potentially introducing hindsight bias. The attempt to avoid this is the
requirement that the prior art must address the same or a similar problem than
the invention. A critique of having a “closest” prior art, i.e., conducting
inventive step assessment only starting from one prior art document, is that
the invention must be inventive over the entire state of the art (Article 56
EPC), so it should be irrelevant what the starting point is.
When
defining the objective problem to be solved, care must be taken that the
problem is defined as achieving the effect
of the distinguishing features, not the distinguishing features. If the distinguishing
feature is X, the problem is not to find X, but how to achieve the effect that
X has.
Another
safeguard against hindsight bias is a strong emphasis on whether the skilled
person “would” have found the solution. The “would” question has three aspects:
(i) would the skilled person having started from D1 (= closest prior art) have
actually considered D2; (ii) would he or she actually found the solution in D2;
and (iii) would the skilled person have applied the suggested solution to the
teaching of D1? Graham explained that “his” Board of Appeal often sketched the
argument for inventive step as well as against inventive step, assuming first
that the invention is based on inventive step, then assuming that it is not
based on inventive step. Whichever argument reads more convincingly prevails.
Peter Meier-Beck (Presiding Judge, 10th [Patent]
Senate, Federal Court of Justice, Germany) emphasized that a retrospective view
cannot be avoided, but one should strive to avoid being biased. There is a risk
to read into the text what one has only learned subsequently. It is essential
that any piece of prior art is read in its own context. Reducing the reading to
elements or paragraphs which are or seem to be similar or close to the
invention is highly dangerous and seduces to interpreting the text in
accordance with an understanding which is predetermined by the patent in suit,
i.e. by hindsight.
Starting
the analysis by determining the closest piece of prior art is also highly
dangerous. We need to know the invention to determine what is the closest piece
of prior art. But ante inventionem the skilled person does not necessarily know
the most promising springboard. Taking this springboard for granted is pure
hindsight. Defining the problem by determining the difference between the
invention and the closest piece of prior art is also hindsight. Sometimes it is
plausible that the skilled person would have tried to solve that problem,
sometimes the problem construed that way may be artificial.
Of course,
we need some reduction of the complexity of prior art to find a reasonable
starting point. But is makes sense to ask the question whether the starting
point was realistic ante inventionem and whether it was plausible that a
skilled person would have tried to solve a problem which is the result of our
hindsight-led “problem construction” and not mentioned in a prior art document.
It is not enough that the skilled person
could have started from the closest prior art, it is required that he or she
would have – a similar question like the one posed in the third step of the
PSA, but now posed in a different context, namely the choice of the starting
point for the development that led to the invention.
Kathleen M. O’Malley (Judge, Court of Appeals for the
Federal Circuit, USA) explained that currently, there were three avenues to
challenge patents in the United States – through the District Courts up to the
CAFC, through the International Trade Commission, and through the USPTO Patent
and Trademark Appeal Boards (PTAB) to the CAFC. The approaches in the different
venues were not necessarily congruent, which leads to problems. The PTAB has
been instructed to “get rid of bad patents” – it has been told to be
(hindsight) biased. PTAB combine a lot of references in finding obviousness,
unlike District Courts. They also do not consider secondary, objective
criteria, that traditionally plays an important role in obviousness
determinations in US law.
Hindsight
bias is particularly difficult to deal with in patent cases. In other cases, the
court can limit the information the jury receives, e.g., changes to product
design after an injury occurred. This is not possible in patent cases; the jury
must know the invention. O’Malley believes that (constitutionally mandated)
twelve-member juries lead to better decisions, as the discussion becomes more
nuanced and violations of jury instructions less likely.
Additional “biases”
may be introduced by attorneys. Counsel for patentee tries to paint the
inventor as heroic and sympathetic. Copying, which is considered a secondary
indication of inventiveness, often helps the patentee.
Relevant prior
art may also be from related fields, not necessarily from the same field as the
invention. There is not necessarily a “closest” prior art except in chemical/pharmaceutical
cases, where the assessment must start from a lead compound. Expert evidence is
used to understand what the prior art actually taught back at the priority
date.
It is
important to show that there was motivation to combine references. Such motivation
can come from outside the field of the invention. Another important
consideration is whether there was a reasonable expectation of success.
Teaching away, often difficult to prove, may safeguard against hindsight bias.
Secondary evidence
such as a surprising effect of the new feature, a longfelt need, scepticism in
the field and failed attempts by others to solve the same problem (ideally by
the defendant), industry praise, commercial success and copying areimportant
elements of hindsight analysis and help avoiding hindsight bias.
Inventions
in technological fields that are familiar to the general public may be found
obvious more readily, while complex technology makes a combination of
references seem less obvious to a jury of lay people.
Rian Kalden (Judge, The Court of Appeal of The Hague,
Netherlands) notes that hindsight affects inventive step by definition, because
the judge is supposed to go back in time before the contribution by the
invention was known. This assessment requires knowledge of the contribution.
Simple
solutions to difficult problems are often underappreciated. Dutch courts
generally employ the the PSA, but it is not required. Cases are often framed in
PSA terms by the lawyers. One criticism is that the PSA is not suitable for “problem
inventions”, where the creative act lies in defining the problem. Well – if it
is not suitable, do not use the PSA, it is not required by law. While the PSA
may not be immune to hindsight bias, neither are other approaches.
One
safeguard against hindsight bias is that under the PSA, the closest prior art
must be a document that skilled person would actually have looked at – in the same
field, trying to solve the same problem. The closest prior art may only be from
a different field of technology if there is a good reason choose it. One should
not simply count the number of identical features – this may be decisive only
when there are several realistic starting points.
Formulating
the objective problem determines the outcome of the case. The great risk of the
PSA is formulating the wrong problem – such as including a feature of the
invention in the problem to be solved rather than an effect of that feature. The
objective problem must not contain any pointers to the solution. There is
almost always disagreement on the formulation of the problem to be solved
between the parties. Judges need to be very careful. If the closest prior art
is the same as in the application, the problem should be the same as the one
formulated in the application, too. However, if the closest prior art is different,
the objective problem will be different, too.
Would the
skilled person have arrived at the solution at the priority date? Only a
combination of two documents, possibly with common general knowledge (CGK), is
allowed. A combination of more than two documents is an indication of
inventiveness. No combination with just any other document that happens to
share the missing feature is sufficient. There must be a pointer to the
document to be combined and an incentive to find it, read it and use it. Not
everything that can be found will be found. If the title and abstract of a
reference point to another direction, the skilled person will probably not read
it. Is there a reasonable expectation of success that the disclosed solution
will work? Generally yes, unless there is teaching away and there are other
options without teaching away.
Hindsight
may also favour patentees, when further positive effects of the invention are
found only after the filing date. It is difficult to ignore such effects, but
they should be ignored. The plausibility test requires that the effect must be
made plausible in the application for subsequent evidence to be considered and
seeks to safeguard against this form of hindsight bias.
Richard Arnold (Judge, Patents Court, UK) explained that
English law is clear – hindsight bias must be avoided when assessing
obviousness. Moulton LJ, in British
Westinghouse Co v Braulik (1910) 27 RPC 209, 230, states “I confess that I
view with suspicion arguments to the effect that a new combination, bringing
with it new and important consequences in the shape of practical machines, is
not an invention, because, when it has once been established, it is easy to
show how it might be arrived at by starting from something known, and taking a
series of apparently easy steps. This ex post facto analysis of invention is
unfair to the inventors and, in my opinion, it is not countenanced by English
Patent Law.”
In Mölnlycke AB v Procter & Gamble Ltd
[1994] RPC 49, 113 Sir Donald Nicholls VC emphasized the importance of
considering secondary (contemporary) evidence to avoid hindsight bias: “What
with hindsight seems plain and obvious often was not so seen at the time. It is
for this reason that contemporary events can be of evidential assistance when
testing the experts’ primary evidence. … Secondary evidence of this type has
its place and the importance, or weight, to be attached to it will vary from
case to case.”
Technip France SA’s Patent [2004] RPC 46 at [15] reminds
everybody that the reasons an expert gives for obviousness, not his or her
conclusions, are most important.
Similarly, SmithKline Beecham plc
v Apotex Europe Ltd [2005] FSR 23 at [53] teaches that not sympathy towards
the expert, but the fundamental reasons for their opinions should determine the
credibility of experts.
MedImune Ltd v Novartis Pharmaceuticals UK Ltd [2011] EWHC 1669 (Pat) at [118] teaches
that “sequential unmasking” should be used in the instruction of experts.
First, the expert should only consider the prior art, then the priority
documents and only finally the patent(s). HTC
Corp v Gemalto SA [2014] RPC 9 at [274] cautions that this is not always
possible and not required by law.
In Schlumberger Holdings Ltd v Electromagnetic
Geoservices AS [2010] RPC 33 at [77], [79] Jacob LJ exhorts the benefits of
secondary evidence: “It generally only comes into play when one is considering
the question ‘if it was obvious, why was it not done before?’ That question
itself can have many answers showing it was nothing to do with the invention, …
. But once all other reasons have been discounted and the problem is shown to
have been long-standing and solved by the invention, secondary evidence can and
often does, play an important role. If a useful development was, in hindsight,
seemingly obvious for years and the apparently straightforward technical step
from the prior art simply was not taken, then there is likely to have been an
invention. … “
The attacker
may rely on any prior art, even completely obscure references. This is
hindsight, but not bias. The law allows this kind of hindsight for sound policy
reasons.
 |
| Ritscher, Brändle, Stauder |
Dariusz Szleper (Attorney, Paris, France) explains that
hindsight bias is only explicitly addressed in French judgments since about 15
years ago under the influence of the PSA. He points out that the wording of
Article 56 EPC in French is not precisely the same as in English (“ne découle
pas d'une manière évidente” versus “is not obvious”).
It is not
clear whether judges discuss the problem of hindsight bias in chambers, because
French judgments are very concise, making it difficult to assess the underlying
reasoning. Assessment of inventive step is considered a question of fact,
outside the scope of appellate review, so appellate courts hardly ever, if at
all, address the issue. Dariusz cannot find traces of the problem in the
written opinions. During legal conferences, it is emphasized that the PSA is
applied in France and whether the skilled person “would” find the solution, not
whether he or she “could”, is relevant. While the reasoning may be opaque, the
final outcome of French cases is often similar to those in other jurisdictions.
Dariusz
concluded by adding that motivational biases such as the French “egalitarian
mood”, which considers patentees to be asking for too much, may disfavour
patentees.
Kathrin Klett (Presiding Judge, 2nd Civil
Chamber, Federal Supreme Court, Switzerland) reminded everybody that hindsight
bias is a general problem, not limited to patent cases. It plays an important
role in liability cases in the assessment of negligence (foreseeability of
damage).
The Swiss
Federal Supreme Court has not developed specific methods or approaches to avoid
hindsight in patent law. It has always been aware, however, of the saying that
knowledge after the event is always easy and problems solved present no
difficulties. An invention involves inventive step when the solution is beyond
the the zone situated in between the state of the art and what a person skilled
in the art on the basis of his knowledge and skills would have found with only
minimal mental effort. The formula differs from the legal practice of the EPO,
but is designed to mean essentially the same.
The choice
of the starting point for the assessment of inventive step should be
irrelevant, as the invention must be inventive starting from any reference.
Therefore, an appeal based on the argument that the lower court chose the wrong
starting point will be unsuccessful. It is the definition of the person or the
team skilled in the art, their knowledge and specific technical skills at the
priority date which are crucial for the decision whether the claimed technical
solution was obvious or not. This seems to Kathrin Klett not so much a question
of law, but of the expert knowledge guided by the appropriate questions.
Xiang Yu (Professor, Huazhong University of Sience
& Technology, Wuhan, China) explained that under Chinese law, inventive
step requires that compared to the prior art, the invention has prominent
substantive features and provides notable progress. The assessment of inventive
step is a three-step test. First, the prior art has to be determined. It must
be from the same or similar technical field, which is defined increasingly
narrow. Secondly, the distinguishing features must be identified. There was a
risk that the examiner fails to look at the solution as a whole and misses the
gist of the invention. Thirdly, it must be assessed whether the solution as
such, not the distinguishing features alone, are obvious to the skilled person.
Chinese knows
a figure of speech for hindsight bias – “Zhuge Liang after the fact” (“事后诸葛亮”), Zhuge Liang being a famous prime
minister of ancient China known for his great wisdom and resourcefulness. To
avoid hindsight bias, market success may be considered as secondary evidence
for lack of obviousness.
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