In a recent case, Elekta Limited v. Zap Surgical Systems, Inc., the Federal Circuit upheld a PTAB decision that declared some of the claims of a patent owned by Elekta Limited (“Elekta”) to be unpatentable. This decision is notable, as the PTAB did not expressly address the expectation of success for the proposed obviousness combination in their decision. The details of the case can be found at JD Supra.
The case number is No. 2021-1985, with the decision announced on September 21, 2023. The verdict reaffirmed that, while the expectation of success should not be discounted in the evaluation of obviousness, it is not a separate requirement for each combination of elements. The issue of an expectation of success is typically analyzed in conjunction with the motivation to combine elements, not as a standalone factor. This confirms that an evaluation of obviousness relies not only on whether there is an expectation of success when combining certain elements, but also on whether there is sufficient motivation to make such a combination.
Notably, the Federal Circuit underscored its stance with reference to the Supreme Court decision KSR Int’l Co. v. Teleflex Inc., indicating the necessity of applying an “expansive and flexible approach” when it comes to evaluating the obviousness of a patent. The court explained that a rigid adherence to an ‘expectation of success’ analysis could potentially limit the flexibility that is integral to the analysis, and in turn, contravene the principles set forth by the Supreme Court.
As major law firms and corporations review the implications of this decision on their patent strategies and litigation tactics, it’s clear that this case underscores the importance of understanding the integrality of the ‘expectation of success’ in the overall analysis of patent obviousness.