In this case, [the alleged infringer] contends claims [ ] of the [XXX] patent are invalid as obvious. A patent claim is invalid if the claimed invention would have been obvious to a person of ordinary skill in the field of the invention [at the time the application was filed] [as of [insert date]]. This means that even if all the requirements of the claim cannot be found in a single prior art reference that would anticipate the claim or constitute a statutory bar to that claim, a person of ordinary skill in the field of the invention who knew about all of the prior art would have come up with the claimed invention.
But a patent claim composed of several requirements is not proved obvious merely by demonstrating that each of its requirements was independently known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of known requirements according to their established functions to produce a predictable result, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the requirements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. Accordingly, you may evaluate whether there was some teaching, suggestion, or motivation to arrive at the claimed invention before the time of the claimed invention, although proof of this is not a requirement to prove obviousness. Teachings, suggestions, and motivations may be found in written references including the prior art itself. However, teachings, suggestions, and motivations may also be found within the knowledge of a person with ordinary skill in the art including inferences and creative steps that a person of ordinary skill in the art would employ. Additionally, teachings, suggestions, and motivations may be found in the nature of the problem solved by the claimed invention, or any need or problem known in the field of the invention at the time of and addressed by the invention.
Therefore, in evaluating whether such a claim would have been obvious, you should consider a variety of factors:
- Whether [the alleged infringer] has identified a reason that would have prompted a person of ordinary skill in the field of the invention to combine the requirements or concepts from the prior art in the same way as in the claimed invention. There is no single way to define the line between true inventiveness on one hand (which is patentable) and the application of common sense and ordinary skill to solve a problem on the other hand (which is not patentable). For example, market forces or other design incentives may be what produced a change, rather than true inventiveness.
- Whether the claimed invention applies a known technique that had been used to improve a similar device or method in a similar way.
- Whether the claimed invention would have been obvious to try, meaning that the claimed innovation was one of a relatively small number of possible approaches to the problem with a reasonable expectation of success by those skilled in the art.
But you must be careful not to determine obviousness using hindsight; many true inventions can seem obvious after the fact. You should put yourself in the position of a person of ordinary skill in the field of the invention at the time the claimed invention was made, and you should not consider what is known today or what is learned from the teaching of the patent.
The ultimate conclusion of whether a claim is obvious should be based on your determination of several factual issues:
- You must decide the level of ordinary skill in the field of the invention that someone would have had at the time the claimed invention was made.
- You must decide the scope and content of the prior art. In determining the scope and content of the prior art, you must decide whether a reference is pertinent, or analogous, to the claimed invention. Pertinent, or analogous, prior art includes prior art in the same field of endeavor as the claimed invention, regardless of the problems addressed by the reference, and prior art from different fields reasonably pertinent to the particular problem with which the claimed invention is concerned. Remember that prior art is not limited to patents and published materials, but includes the general knowledge that would have been available to one of ordinary skill in the field of the invention.
- You must decide what difference, if any, existed between the claimed invention and the prior art.
Finally, you should consider any of the following factors that you find have been shown by the evidence:
A. Factors tending to show nonobviousness:
[1. commercial success of a product due to the merits of the claimed invention];
[2. a long-felt, but unsolved, need for the solution provided by the claimed invention];
[3. unsuccessful attempts by others to find the solution provided by the claimed invention];
[4. copying of the claimed invention by others];
[5. unexpected and superior results from the claimed invention];
[6. acceptance by others of the claimed invention as shown by praise from others in the field of the invention or from the licensing of the claimed invention]; and
[7. disclosures in the prior art that criticize, discredit, or otherwise discourage the claimed invention and would therefore tend to show that the invention was not obvious.]
[8. other evidence tending to show nonobviousness].
B. Factors tending to show obviousness
[1. independent invention of the claimed invention by others before or at about the same time as the named inventor thought of it]; and
[2. other evidence tending to show obviousness].
[You may consider the presence of any of the [list factors A.1-8 as appropriate] as an indication that the claimed invention would not have been obvious at the time the claimed invention was made. And you may consider the presence of the [list factors B.1-2 as appropriate] as an indication that the claimed invention would have been obvious at such time. Although you should consider any evidence of these factors, the relevance and importance of any of them to your decision on whether the claimed invention would have been obvious is up to you.]
[The alleged infringer] must prove that it is highly probable that a claimed invention was obvious. If you find that a claimed invention was obvious as explained above, you must find that claim invalid.
Alternative Instruction Reserving for the Court the Determination of Obviousness. The Committee has been unable to reach a consensus on an instruction and a verdict form for those cases where obviousness is an issue and one or more of the parties seeks to have the jury make specific underlying factual determinations but have the ultimate legal question of obviousness made by the court. One complication the Committee has considered is that there is no existing case law that provides guidance on how to implement the burdens of proof a party has with regard to either the statutory factors or the secondary considerations. For example, in the alternative Instruction 5.10, we tell the jury “you must decide what difference, if any, existed between the claimed invention and the prior art.” We find it difficult to translate that instruction into a finding an alleged infringer must establish is “highly probable” and then into a question or questions a jury answers on a verdict form. Similarly, in this alternative instruction we identify “commercial success” as a secondary consideration. We have not been able to agree on the patent owner’s burden of proof in establishing commercial success or agree on a form which the jury reports its finding on commercial success.
The model verdict form attached as an appendix requires the jury to make underlying factual determinations and make the ultimate determination on the obviousness question. The court can then accept the jury’s verdict on the ultimate issue of obviousness or consider it as advisory only. In any event, we suggest that the parties and the court develop an instruction and verdict form in the context of the fact pattern in the specific case.
Applying the Burden of Proof to Underlying Factual Findings. It has been suggested that the burden of proof applies only to underlying factual findings, but not to claims and defenses as a whole. While there might be some support for this suggestion, see, e.g., Colorado v. New Mexico, 467 U.S. 310, 316 (1984); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1360 n.5 (Fed. Cir. 2007) (quoting Colorado, 467 U.S. at 316), the Committee has not adopted it for the following reasons. The relied upon cases describe the “clear and convincing” burden as applying to “factual conclusions.” This language appears to be the source of the issue. Interpreting Colorado as rejecting the idea that burdens can apply to claims or defenses, however, is questionable in light of Colorado’s reliance on In re Winship, 397 U.S. 358, 370 (1970), and Addington v. Texas, 441 U.S. 418, 423 (1979). In those cases, the “factual conclusions” discussed were determinative facts of the “guilt of a criminal charge,” e.g., In re Winship, 397 U.S. 358, 361, 370, 374, and not underlying evidentiary facts. As Colorado itself states, the burden of proof allocates the risk of an erroneous “ultimate decision,” Colorado, 467 U.S. at 315-16, which may not be determined by specific underlying findings.
In the context of obviousness specifically, it has similarly been suggested that the burden of proof applies only to underlying factual findings, and not to the ultimate conclusion of obviousness. There again appears to be some support for this suggestion. See, e.g., Washburn & Moen Mfg. Co. v. Beat ‘Em All Barbed-Wire Co., 143 U.S. 275 (1892); SSIH Equipment S.A. v. U.S. Intern. Trade Comm., 718 F.2d 365, 375 (Fed. Cir. 1983); Newell Cos. v. Kenney Mfg., 864 F.2d 757, 767 (Fed. Cir. 1988). However, a jury instruction applying a highly probable burden to factual findings underlying obviousness would raise a number of practical complications. As an example, the patentee bears a burden of production with respect to almost all secondary considerations of obviousness. See, e.g., Demaco Corp. v. F. von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (patentee bears a burden to produce evidence establishing a nexus between commercial success and the patented invention). Instructing the jury that the alleged infringer must prove that it is highly probable that the patented invention was not commercially successful would be impractical and ignore the patentee’s burden on that issue. As another example, the level of ordinary skill in the art must be determined during claim construction, during an infringement analysis under the doctrine of equivalents, and during an analysis of obviousness. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (claim construction); Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 36-37 (1997) (doctrine of equivalents). Applying a burden of proof to the level of ordinary skill in the art raises the possibility of inconsistent findings on that issue depending on which analysis is being performed.
In light of the standard practice of applying the burden of proof to obviousness as a whole, the impracticality of applying the burden of proof to underlying factual findings, and the questionable nature of case law offered to support a contrary position, the Committee has applied the burden of proof to claims and defenses as a whole in these instructions.
 KSR Intern. Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
 35 U.S.C. § 103; KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 425-28 (2007); Graham v. John Deere Co., 383 U.S. 1 (1966); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); Ruiz v. A.B. Chance Co., 234 F.3d 654 (Fed. Cir. 2000); Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 957 (Fed. Cir. 1997); Lamb-Weston, Inc. v. McCain Foods, Ltd., 78 F.3d 540, 545 (Fed. Cir. 1996); Ryco Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed. Cir. 1991); Windsurfing Int’l, Inc. v. AMF, Inc., 782 F.2d 995, 1000 (Fed. Cir. 1986); Pentec. Inc. v. Graphic Controls Corp., 776 F.2d 309, 313 (Fed. Cir. 1985); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).