TQ Delta Reminds Me: May We Dispense with the Puzzle Simile?

“Using a puzzle to explain the concept of obviousness is a bit like using the sun to explain the concept of refrigeration. But that is just the start of the problems with the analogy.”

https://depositphotos.com/255224620/stock-photo-puzzle-pieces-red-paragraph.htmlIn KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the United States Supreme Court discussed legal principles of obviousness in the patent context. Justice Anthony Kennedy wrote for the Court:

Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.

This simile, comparing obviousness analysis to the fitting together of pieces of a puzzle, has been referenced and quoted by a number of trial and appellate courts. Expert witnesses have used it in their testimonies. It also appears twice in the current Manual of Patent Examining Procedure (MPEP).

With due respect to former Justice Kennedy, may we dispense with this terrible analogy? Although it has at least one redeeming aspect, the puzzle simile does more to confuse than to enlighten.

What Kind of Puzzle Are We Talking About?

There are many kinds of puzzles, and Justice Kennedy did not say specifically what kind he was talking about. His words suggest that he was not talking about crossword puzzles (which have no pieces), nor Rubik’s cube puzzles (which have pieces, but the pieces do not need to be assembled), nor bent wire puzzles (which have pieces, but usually the object is to take them apart rather than put them together). Nor could he be referring to a conundrum, that is, a bewildering puzzle that has no known solution.

The most natural assumption is that Justice Kennedy was analogizing to jigsaw puzzles. This would not be surprising, for the love that many trial lawyers have for jigsaw puzzles is well known. (Is there any trial lawyer out there who has not heard, or even used, a jigsaw puzzle analogy to explain the purpose of an opening statement to a jury? In case you haven’t heard it, the pitch goes something like this: “The purpose of the opening statement is to give you a big picture of what the evidence will show. The opening statement is like the picture on the box of a jigsaw puzzle, and it is intended to help you see where the individual pieces of evidence belong, so you can put them together.”)

Analogizing to a jigsaw puzzle would also be in line with an earlier patent case, where Justice Robert Jackson used a jigsaw puzzle to explain a principle of now-outdated patent law:

Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention.

Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945).

So, let’s assume that Justice Kennedy was referring to a jigsaw puzzle. But even if he had a different kind of puzzle in mind——a 3-D wood block puzzle, say——the puzzle analogy is still awful.

Wait, What’s Wrong with It?

Let’s start with a basic flaw in the analogy. Justice Kennedy refers to a puzzle to explain legal obviousness (which, as I’ve explained in a previous essay, is more difficult to establish than colloquial obviousness). And yet, the whole point of something being a puzzle is that it is not obvious (either in the legal sense or the colloquial sense) to solve.

Using a puzzle to explain the concept of obviousness is a bit like using the sun to explain the concept of refrigeration. But that is just the start of the problems with the analogy.

The analogy simply does not make sense within its own sentence. Jigsaw puzzle pieces do not have “obvious uses beyond their primary purposes.”  Who has ever picked up a stray jigsaw puzzle piece and promptly thought it could be used for purposes other than as a jigsaw puzzle piece?

More to the point, legal obviousness usually involves combining features from two or more references. Jigsaw puzzle pieces are closed sets, so solvers typically do not mix and match jigsaw puzzle pieces from two or more puzzles, because doing so would be a foolish waste of time. It sometimes does happen, however, that a single jigsaw pattern will be used to produce puzzle pieces having identical piece shapes but forming different pictures. In those cases, the pieces from two or more puzzles can be mixed and matched, but the end results can be indicative of a sharp, creative mind, rather than a non-inventive automaton.

Furthermore, it can be difficult to reconcile the puzzle analogy with what Justice Kennedy said elsewhere in KSR:

[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements 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.

With a jigsaw puzzle, it is unnecessary to identify the reason for combining the pieces. The whole point of working with a jigsaw puzzle, of course, is to put the pieces together, to solve the puzzle, and see the finished picture. And if the jigsaw puzzle is assembled correctly, there will never be any new combination of elements to discover.

Some Problems with the Analogy Have Been Recognized

Already, some problems with this sorry analogy have surfaced.

In ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214 (Fed. Cir. 2016), it was argued that KSR required that elements being combined must have no change in their functions, and that the pieces being combined must fit together precisely. In other words, the pieces had to fit like jigsaw puzzle pieces. The Federal Circuit dismissed that argument:

The rationale of KSR does not support ClassCo’s theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B. To the contrary, KSR instructs that the obviousness inquiry requires a flexible approach.

And so, we glimpse yet another problem with the analogy. With jigsaw puzzles, there is no such thing as a “flexible approach.”  The pieces have to fit exactly, or the attempted fitting is wrong. Indeed, the opinion of Justice Robert Jackson (remember him?) in Communications Assn. v. Douds, 339 U.S. 382 (1950), uses the jigsaw puzzle as illustrative of rigidity, not flexibility:

If any single characteristic distinguishes our democracy from Communism it is our recognition of the individual as a personality rather than as a soulless part in the jigsaw puzzle that is the collectivist state.

Problems have also arisen when expert witnesses decided to use the jigsaw puzzle analogy in their testimonies. In the case of InTouch Tech., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir. 2014), an expert apparently relied on Justice Kennedy’s analogy, and the Federal Circuit was not pleased:

While [the expert] opined that the references were like separate pieces of a simple jigsaw puzzle, she did not explain what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together.

Perhaps the expert “reasoned” that the existence of a jigsaw puzzle itself presumes, with no need for any additional evidence, that there is a solution and that there a motivation for putting the pieces together, namely, to find that particular solution. Nope, said the Federal Circuit. Legal obviousness does not presume motivation; motivation must be proven.

Most recently, the jigsaw puzzle analogy popped up in the Federal Circuit last November, and once again, it was cited to illustrate how unhelpful the analogy is. In TQ Delta, LLC v. Cisco Sys., Inc., Nos. 2018-1766 et al., slip op. (Fed. Cir. Nov. 22, 2019), the Federal Circuit quoted and discussed InTouch, noting that the expert’s jigsaw puzzle analogy was based upon hindsight, and that “the expert appeared to have improperly ‘relied on the [challenged] patent itself as her roadmap for putting what she referred to as pieces of a “jigsaw puzzle” together.'”

So, may we stop using this poor analogy altogether?

Or, should I say, almost altogether?

One Redeeming Feature

The jigsaw puzzle analogy is out of place in obviousness analysis, but it has one redeeming feature. There is one aspect of obviousness law that the jigsaw puzzle analogy illustrates rather nicely.

And that aspect of obviousness law is this:  A missing piece is a missing piece. If there is a missing piece to a jigsaw puzzle, it does not matter that the missing piece is similar to another piece that is present, since one piece may not fit simultaneously in two different places.

So it is with legal obviousness. An obviousness analysis involves mapping: each claim element should be mapped to a comparable element shown in the prior art. A single element in the prior art may not be mapped to two distinct claim elements even if the two distinct claim elements are nearly identical. In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) (cited art did not disclose “third fastening means,” and that deficiency was fatal to anticipation and obviousness challenges).

But is this redeeming aspect really enough to save Justice Kennedy’s puzzling obiter dictum? I think not. Let’s all just discard it.

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Copyright: limbi007 


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Join the Discussion

15 comments so far.

  • [Avatar for Scott L Hertzog]
    Scott L Hertzog
    January 10, 2020 01:30 pm

    angry dude @14

    Yes, there is surely a place in patent law for being found to be a ‘vexatious litigant’!

  • [Avatar for angry dude]
    angry dude
    January 8, 2020 10:27 am

    ScottHz @13

    Single-reference obviousness rejection ? That sounds real sweat

    How about ad-hoc combination of 4, 5 (maybe even 6 or more) references to argue obviousness – 15 years after patent is issued
    And if that combination is not good enough then rinse and repeat – combine another 5 or more references … until patent applicant or patent holder is out of money/patience/existence
    This is USPTO’s modus operandi today

  • [Avatar for ScottHz]
    January 7, 2020 11:16 pm

    angry dude@12

    I’m not discussing novelty at all, and was not referring to a single reference rejection. I’m referring to when a newly discovered piece of prior art discloses something that renders a claim obvious. E.g., examiner did not find any teaching that grommets prevented wires from chafing when passed through a firewall, but an accused infringer is able to find such prior art to show that it would have been obvious to modify a prior art reference that taught passing wires through a firewall, but was silent as to grommets being necessary.

    The number of references in a rejection does not determine whether 102 or 103 is applied – claims have been found obvious in view of single references and anticipated by multiple references (where additional references describe what is inherent in the primary reference).

    (Multiple Reference 35 U.S.C. 102 Rejections [R-11.2013] https://www.uspto.gov/web/offices/pac/mpep/s2131.html )

    see Dan Hanson January 24, 2019 10:01 am

    Some single-reference obviousness cases:

    In those instances in which an Examiner bases an obviousness rejection upon a single reference, there must ordinarily be evidence of some reason to modify that reference. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). The reason or motivation need not be the same motivation as the inventor had. See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012).

    It is also permissible for an examiner to combine (some say “mix and match”) features from different embodiments within a single reference. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (the reference’s description and figures indicated the features could be combined); see also In Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd., 870 F.3d 1376 (Fed. Cir. 2017).


  • [Avatar for angry dude]
    angry dude
    January 7, 2020 01:32 pm


    You are mixing obviousness with novelty
    If just one prior art reference contains all of the teachings or suggestions on how to achieve desired result – that’s novelty not obviousness
    Obviousness determination has to come from at least two unrelated prior art references combined

  • [Avatar for ScottHz]
    January 7, 2020 12:16 pm

    @angry dude

    I think it is fine for a patent to be found obvious after issue IF new prior art teaching is discovered (that the examiner was not aware of) that directly suggests modifying references, for the intended result, to achieve known effects, without undue experimentation.

    The examiner, while (hopefully) an expert in their field, will almost necessarily not have access to all pertinent prior art teachings. When working in a USPTO tech info center, an examiner came in looking for a teaching that multiple operations of semiconductor manufacture should be done without breaking the vacuum of the manufacturing device. It had been the practice in the art for so long, no patents or articles in the past few decades bothered to mention it as being preferred. We eventually found the teaching in an encyclopedia of semiconductor manufacturing (probably something like Encyclopedia of Materials: Science and Technology).

    If the examiner had not found this reference and had allowed the application, an alleged infringer should be able to invalidate based on this type of art when presented in a post-allowance venue (Reexam, IPR, District Court, etc.).

  • [Avatar for ScottHz]
    January 7, 2020 09:32 am

    KSR may have been an appropriate decision of obviousness for the given claims (as I recall, using a grommet to avoid chafing of wires when passing them through a firewall), because a grommet was used *for its intended purpose* and *with the expected results* and *without undue experimentation*. The problem in attempting to use KSR in other areas (e.g. chemical reactions, etc.) is that these key features are not often applicable to the fact situation.

  • [Avatar for Concerned]
    January 7, 2020 05:30 am


    And what Alice did not swallow, the lower courts did.

    Where in Alice does it state computer implemented inventions have to improve computer hardware? Where did this illogical statement originate? I think Trading Tech is asking SCOTUS for cert on this question. On the surface, just the fact cert is being asked should tell SCOTUS how amplified their decisions have become.

    The examiner argued in my appeal that the generic computer only automated a manual process. We countered “what manual process? There was no manual process beforehand to automate or expedite.” The preceding observation testifying that if a computer is used, that will be the examiner’s laser focus regardless of the computer’s role vs. the concrete process that actually delivers the solution.

    Of course, and to your point regarding the majority of issues are now eligibility, amplification of SCOTUS court cases conveniently expedites the matter to s101. So would renumbering s102 to s101a, s103 to be renumbered 101b and s112 renumbered s101c. Let’s cut to the chase if we must be disingenuous.

  • [Avatar for Concerned]
    January 7, 2020 05:08 am

    Angry Dude:

    Agree 100%.

    I placed documents into the official record from every Medicaid authority in the nation, plus documents from the Administrating Agency, during my prosecution.

    I did not want someone stating 10 years from now that they did this, or they knew to do that. I read one inventor that lost in court on those kinds of arguments and it was practically impossible for the inventor to dispute.

    Which leads to a rhetorical observation: Why did it seem the burden of proof was on the inventor after the patent grant to prove who was during what 10 years ago?

  • [Avatar for angry dude]
    angry dude
    January 7, 2020 12:08 am

    Those dudes in black robes destroyed 230 year old US Patent System with their idiotic decisions

    I’ve always said that obviousness cannot and should not be decided 10-20 years after patent is granted.

    The new generation of scientists, engineers, examiners (or even some judges) look at patent claims from 15-20 years ago with completely different mindset and say: “Ah, this looks so obvious”


    Obviousness has to be decided (by the PTO expert examiners in their respective technical fields, not judges) right at the get go – no later than 1-2 years after patent is published. Period.

    After that – only novelty and enablement can be argued

  • [Avatar for Ternary]
    January 6, 2020 09:51 pm

    In over 90% of all obviousness rejections, no PHOSITA when given all cited references in a 103 rejection, would come to the claimed invention. And even when provided with the title of the patent application, still very few people of ordinary skill would come up with the correct claimed invention.

    Many inventions are placed in a category as “common engineering work.” (“I could have done that, or come up with that” are common observations, even on this site) But even when a PHOSITA would be handed a central issue of the problem that is considered by the inventor, and combined with the 103 references, then still in response a very different solution may, can and will be provided. It is too easy to consider the inventor’s problem as a test question at the end of a chapter of a textbook. It really is not. That is not how the mind of at least an independent inventor works. We generally do not get instructions to solve a problem. (“Go solve this puzzle!”)

    In many cases, PHOSITAs are not even aware of a problem, let alone able to articulate it. I am generally not impressed with Examiners’ reasoning in a 103 rejection. Often it does not go beyond a “dictionary” approach wherein they found similar terms from a claim in a reference in related art.

    Anyway, It is great to read an article again on (what I believe) is a critical issue on patentability. Unfortunately Alice has really swallowed “all of patent law” as the majority of discussions are now necessarily focused on eligibility. It reminds me of better times in the past (go figure).

  • [Avatar for Anon]
    January 6, 2020 05:44 pm

    Actually MaxDrei, that “cold/would” is meaningful OUTSIDE of the PSA that your system has.

    My beef is NOT that such is not meaningful, but rather, that the meaningfulness of it is so often disregarded (and a royal pain to battle). This does not mean that the distinction is meaningless, but merely the courts have messed up (yet another) patent law concept.

  • [Avatar for MaxDrei]
    January 6, 2020 04:48 pm

    Reminds me of the admonition within the established case law of the Boards of Appeal of the EPO, that what the skilled person “could” have done is of no relevance to the obviousness determination. The only thing that counts is what that hypothetical person “would” have done.

    Of course, the “could/would” test is meaningful only within the confines of the ultra-strict and prescriptive “Problem-Solution Approach” to obviousness invented in the EPO and by now, in its rigour and maturity, unassailable.

  • [Avatar for Anon]
    January 6, 2020 12:28 pm

    AAA JJ

    Hear hear – which also reminds me that “motivation” of something in and of itself is NOT the same thing as a motivation to combine.

    Just because some things CAN be put together does not impute the legal notion of obviousness (albeit, the colloquial obviousness may well be a different notion) – and thus, this too falls into the “mess” created by a Court that does not appear to want to note that innovation – and terms of art for innovation – should be applied only after critical thinking (and certainly not in a hurry to arrive at a predetermined Ends).

  • [Avatar for AAA JJ]
    AAA JJ
    January 6, 2020 10:19 am

    That passage from J. Kennedy (or more likely the law clerk who wrote it for him) is the epitome of hindsight reconstruction. If you gave a reference, or two or three or four or five, to an examiner, an APJ, a USDC J, a CAFC J, and told them to fit them together to arrive at what is claimed what are the odds that any of them, without having seen the application, could do it? (Hint: I’m thinking of a big round number.)

  • [Avatar for Anon]
    January 6, 2020 09:48 am

    An enjoyable read — thank you!