Appropriate use:
The case of Perfect Web Technologies vs InfoUSA provides an example in which the Federal Circuit held that a claimed method for managing bulk e-mail distribution was obvious on the basis of an obvious to try argument. Perfect Web sued InfoUSA for infringing on its patent for managing bulk email distribution. The patent consisted of steps (A) through (D) that described the sequence of the email distribution process, of which steps (A) through (C) came from prior art. The obvious to try doctrine thus becomes valid in this case since the prior art does not clearly indicate the possibility of the invention and the addition of step (D) can be further analyzed with the doctrine.
The Federal Circuit Court ruled that the patent was invalid because step (D) was considered obvious to try after experts identified a total of 3 potential solutions to the problem the patent was intended to solve. Hence, step (D) was considered obvious to try given the invention was created among a finite number of identified and predictable solutions, each with likelihood of success. Overall, the court appropriately applied the obvious to try doctrine to this case by first recognizing its applicability through the prior art and identifying the finite number of solutions to determine its obviousness.
Misuse:
An example of a misuse of the obvious to try doctrine was the Supreme Court decision in KSR vs Teleflex. The doctrine was irrelevant in KSR because there was no uncertainty regarding whether attachment of a sensor to a support member of a pedal would remain in a fixed position.
Ultimately, the holding of obviousness in KSR was based on a traditional § 103 analysis, i.e., motivation to solve a problem in combination with the presence of “a finite number of identified, predictable solutions that are within the technical grasp of a person of ordinary skill”. Therefore, "mention of the obvious to try doctrine in KSR constituted nothing more than a harmless distraction".
Sources:
http://www.uspto.gov/web/offices/pac/mpep/s2143.html
http://www.hoffmanbaron.com/releases/HB%20Article%20Reprint_fnl.pdf
In the first case that you mentioned, the patent was determined invalid due to the fact that step D achieves a solution that could be solved by multiple methods. This approach to shoot down a patent is very interesting. In describing that the solution to the problem can be a achieved by different is definitely a way for the the court to determine that it is obvious. Yet I think it is always important to note that some methods to achieve the solution may be faster or more effective than others, which should allow it to be patentable. I will keep this in mind as I observe new inventions in the future!
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