Implied Obviousness: Reevaluating the Jury’s Role in Nonobviousness after Kinetic Concepts

Michael Silliman · 16 Vand. J. Ent. & Tech. 669


Nonobviousness is a central patentability requirement, requiring that a person with ordinary skill would not have found the patented subject matter obvious. Due to its flexibility, obviousness is the most commonly litigated requirement. It is thus crucial that the US judicial system determine obviousness uniformly, predictably, and accurately. However, because nonobviousness is a mixed question of law and fact, it is often unclear how much control the judge and jury have over the ultimate conclusion. In Kinetic Concepts v. Smith & Nephew, the United States Court of Appeals for the Federal Circuit increased the jury’s role in the obviousness determination, arguably introducing more uncertainty and inaccuracy. By applying the Supreme Court’s framework from Markman v. Westview Instruments, this Note investigates the prudence of this expansion of the jury’s influence. Ultimately, this Note proposes that the Federal Circuit require a prescribed special-verdict form that asks the jury to determine the underlying factual questions in the obviousness question while leaving the ultimate legal conclusion to the judge. Such a form addresses many of the concerns with Kinetic Concepts raised under the Markman framework.