Summary Judgment Motion Brief
(Obviousness)

Summary

This template may be used to prepare a brief in support of a motion for summary judgment on the ground of patent invalidity, specifically obviousness, under 35 U.S.C. § 103. The template includes practical guidance and drafting notes. Adapt this template to the obviousness issues and facts in your case and to any required format for briefs under local rules or local patent rules. In a summary judgment motion on obviousness, the movant must comply with Fed. R. Civ. P. 56 and show that there is no genuine issue of material fact that would preclude summary judgment that the claims at issue are invalid for obviousness. For a discussion of summary judgment motion procedure, see Summary Judgment: Making the Motion (Federal). The arguments in the brief should be supported by an accompanying expert declaration. The expert declaration should explain the technology at issue, the patent and its prosecution history, and the teachings of the prior art. The expert declaration should analyze obviousness in detail and demonstrate that a person of ordinary skill in the art would have modified or combined prior art references, with a reasonable expectation of success, to arrive at the claimed invention. Since local rules typically provide a strict page limit for briefs (e.g., 25 pages), the statements of law and facts in the brief need to be succinct. The brief should refer to the relevant paragraphs of the accompanying expert declaration for additional detailed analysis. Evidence such as excerpts from the prosecution history of the patent and the prior art on which the expert relies should be attached as exhibits to an accompanying attorney declaration. If the status of a reference as prior art is in dispute, a declaration should be submitted attesting that the reference was publicly available before the effective filing date and otherwise qualifies as prior art. See Prior Art Fundamentals for a discussion of what qualifies as prior art. Check local rules and local patent rules for other documents that must be included in the summary judgment motion filing (e.g., a motion, a notice of motion, a statement of undisputed facts, and a proposed order). Since under 35 U.S.C. § 282(a), a patent is presumed to be valid, a party challenging patent validity in district court proceedings must prove invalidity by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). In deciding whether there is a genuine issue of material fact that would preclude summary judgment, the court views the evidence in the light most favorable to the non-moving party and draw all justifiable inferences in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Obviousness is a question of law based on the following underlying factual determinations: • The scope and content of the prior art • The differences between the claimed invention and the prior art • The level of ordinary skill in the art at the relevant time • Any objective evidence of non-obviousness (also called secondary considerations or secondary indicia of non-obviousness), such as commercial success of the claimed invention or long-felt need for a solution to the problem addressed by the claimed invention See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). These four factual inquiries are called the Graham factors. The first three Graham factors are the elements necessary to show a prima facie case of obviousness. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling United States, Inc., 699 F.3d 1340, 1348–49 (Fed. Cir. 2012). You may reorder the sequence of the Graham inquiries depending on the facts. See KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 407 (2007). Although obviousness is based on multiple factual issues, it is common for parties to move for summary judgment on obviousness, arguing that there are no genuine issues of material fact. Summary judgment may be appropriate when the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors. KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). Before deciding to move for summary judgment on obviousness, ensure that you have complied with any local rules and local patent rules requiring prior disclosure of your obviousness contentions and the prior art references on which your expert relies. Also, carefully consider the pros and cons of filing the motion. Factors that may weigh in favor of moving for summary judgment include: • The court's claim construction ruling strongly supports your position on obviousness • Summary judgment on obviousness would resolve the case on all patent claims at issue or likely lead to settlement of the remaining issues • You have a technically complex but strong argument on obviousness and want to avoid the risk that the jury will not fully understand your case Factors that may weigh against moving for summary judgment on obviousness include: • You have stronger grounds for summary judgment on other potentially case-dispositive issues • You have a technically weak case on obviousness but an overarching jury-friendly narrative • Your adversary will likely move for summary judgment on obviousness, and you want to preserve the ability to argue that there are genuine underlying issues of fact that preclude the grant of summary judgment to your adversary To win a motion for summary judgment on obviousness, you must provide one or more convincing and well-supported reasons that a person of ordinary skill in the art would modify or combine the prior art references to arrive at the claimed invention. This is often the most challenging part of an obviousness argument. In particular, have your expert look for any of the following reasons for combining or modifying the prior art exist: • The invention combined known elements in known ways to produce an expected result. • The invention substituted one known element for another to obtain predictable results. • The invention used techniques known to improve similar devices, methods, or products in a known way. • The combination was obvious to try because it solved a known problem by choosing one of a finite number of identified solutions that could be predictably combined to solve the problem in a known way. • The invention relied on known work in another field that a person of ordinary skill in the art the patent would have recognized as useful to solve a similar problem in a predictable way in the field of art of the patent. • The prior art itself provided a teaching, suggestion, or motivation to combine the prior art to arrive at the claimed invention. See KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 416–17 (2007). This template assumes that claim construction issues have already been briefed and that the court has ruled on claim construction. If claim construction issues have not been separately briefed and resolved by the court, you may need to address claim construction issues relevant to obviousness in your brief. See Claim Construction Opening Brief (Markman Hearing) for a starting point. This template also assumes that the party challenging the validity of the patent is a defendant who has been accused of infringement. If the party challenging the patent is a declaratory judgment plaintiff, the template should be adapted accordingly. For more on obviousness, see Obviousness in Patent Litigation. For an in-depth obviousness discussion, see Chisum on Patents § 5.02. This template includes selected statements of obviousness principles with case citations. For additional statements of law on obviousness, see Obviousness Statements of Law. Also, see Patent Statements of Law § 12[3].