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

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in line with an earlier patent case, where Justice Robert Jackson used a jigsaw puzzle to explain a principle of now-outdated patent law: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