GuestPost: Holistic approaches in patent obviousness: US and EU perspectives

In his Guestpost below, Konstantin Voropaev (Elbert, Nazaretsky, Rakov & Co) explores how two recent decisions from opposite sides of the Atlantic, the US Federal Circuit decision in Janssen Pharmaceuticals v. Teva and the UPC decision in 10x Genomics, signal a potential convergence in patent obviousness analysis. Konstantin argues that both courts appear to be moving towards a more contextual evaluation of prior art, departing from traditional rigid frameworks. Over to Konstantin:

"Introduction

The 2024 decisions in Janssen Pharmaceuticals v. Teva and 10x Genomics mark remarkable moments in patent law for both the United States and the European Union. These cases highlight a shift towards a more holistic approach in assessing patent obviousness, moving slightly away from rigid frameworks that have long dominated patent jurisprudence.

Holistic patent analysis, now with feline approval.

Historically, both US and EU patent laws have grappled with balancing innovation with competition. In the US, the landmark decision in Graham v. John Deere Co established the foundation for determining obviousness. It emphasized a factual inquiry that considers the scope and content of prior art, differences between prior art and claims, and the level of ordinary skill in the pertinent art. Similarly, in the EU, cases like AgrEvo (T 939/92) framed a structured approach to evaluating inventive steps by assessing prior art collectively. These foundational principles set the stage for the recent shifts seen in Janssen Pharmaceuticals and 10x Genomics.

Judges' Logic and Analysis

In Janssen Pharmaceuticals v. Teva, the US Federal Circuit vacated a non-obviousness finding due to improper analysis. The court criticised the isolated consideration of prior art references. This decision builds on the principles established in KSR International Co. v. Teleflex Inc., where the Supreme Court advocated for a flexible, common-sense approach to obviousness. The Federal Circuit reiterated the need to consider interrelated teachings and the creativity of a person skilled in the art (POSA), highlighting the flaws in evaluating prior art in isolation.

The court underscored the importance of a holistic view, stating that the prior art references must be read in context, considering the combined teachings as they would be understood by a POSA. This perspective reflects the court's alignment with the Supreme Court's guidance in KSR, advocating for an integrated assessment that mirrors real-world innovation processes. The court also highlighted the dynamic and interconnected nature of technological development, noting that innovation rarely occurs in a vacuum but builds on a network of existing knowledge and advancements.

Simultaneously, in 10x Genomics, the Unified Patent Court (UPC) Appeal Court in the EU overturned a preliminary injunction, suggesting the patent was likely invalid for obviousness. The UPC emphasised the cumulative impact of multiple prior art documents, reflecting a broader view of inventive step by considering the overall contributions of prior art rather than adhering strictly to a single closest prior art.

The court emphasised that a holistic view of prior art ensures a more accurate assessment of inventive steps, reflecting the cumulative knowledge in the field. The court further articulated that the patent system should encourage genuine innovation, not merely incremental advancements that would be obvious to a skilled practitioner. By considering the broader context and cumulative teachings of prior art, the court aimed to strike a balance between rewarding true inventiveness and preventing undue monopolies on minor improvements. This alignment with earlier principles reinforces the trend towards holistic evaluation.

Comparison with the EPO

The European Patent Office (EPO) employs a problem-solution framework that aligns with the holistic approach seen in the recent US and EU cases. The EPO's method involves a structured analysis. It begins by identifying the closest prior art and defining the objective technical problem. Then, it assesses whether the claimed invention would have been obvious to a person skilled in the art.

This approach is similar to the holistic view advocated by the US Federal Circuit in Janssen Pharmaceuticals and the Unified Patent Court (UPC) in 10x Genomics. Both necessitate a comprehensive evaluation of prior art. Instead of focusing narrowly on isolated references, they consider the cumulative teachings and their impact on the inventive step. The EPO emphasizes the overall contributions of prior art in shaping inventive steps, mirroring the trend seen in these landmark cases.

A key original insight is the recognition that both the EPO and these courts are converging towards a more integrated view of innovation. Innovation is rarely a product of isolated advancements; it is often the result of numerous interconnected developments. By integrating this perspective, patent law can more accurately reflect the reality of technological progress. This convergence across jurisdictions underscores a shared understanding of the importance of context-sensitive evaluations. It marks a move towards a more nuanced and accurate determination of what constitutes an inventive step.

Conclusion

The 2024 decisions in Janssen Pharmaceuticals v. Teva and 10x Genomics underscore a significant shift towards a holistic and flexible approach in patent obviousness assessments. By integrating interrelated teachings and recognising the creativity of skilled practitioners, both the US and EU courts have moved away from rigid frameworks. This evolution aligns with the EPO's problem-solution approach, ensuring a more accurate and comprehensive evaluation of inventive steps. These trends mark a pivotal moment in patent law, promoting a nuanced understanding of innovation in the context of technological advancements.

The Federal Circuit and UPC's embrace of holistic evaluation methods reflect an acknowledgment of the complexities involved in modern technological advancements. They recognize that innovation is often a cumulative process that builds on previous work. This shift away from rigid frameworks towards more flexible and context-sensitive assessments can lead to more just and equitable outcomes in patent litigation. The courts' decisions also reflect a broader trend in patent law towards more realistic and comprehensive assessments of inventive step, aligning legal principles with the practical realities of technological innovation."