The Layers of Obviousness in Patent Law

" The Layers of Obviousness in Patent Law ," 22 Harvard Journal of Law & Technology 75 (2008)

"The Layers of Obviousness in Patent Law," 22 *Harvard Journal of Law & Technology* 75 (2008)

Jeanne C. Fromer, The Layers of Obviousness in Patent Law, 22 Harv. J.L. & Tech. 75 (2008)

Patent law has been missing the obvious. Tasked with advancing innovation by awarding an exclusive right to make or use certain inventions in exchange for their creation and disclosure to the public, 1 patent law has installed certain threshold conditions as gatekeepers to ensure that the valuable patent right is granted only to worthy inventions. When it began to appear that the traditional gatekeepers of novelty 2 and utility 3 were insufficient to prevent patents from being awarded to trifling inventions, a new condition of patentability was enacted, that of the invention's nonobviousness. 4 Scholars have described nonobviousness as the "ultimate condition of patentability" 5 76 Harvard Journal of Law & Technology [Vol. 22 because it requires that an invention represent a significant technological or scientific breakthrough compared to what is already known or doable. However, until now, and despite considerable recent attention to nonobviousness by the Supreme Court and scholars, a vital component of every obviousness inquiry has neither been satisfactorily addressed nor resolved: the object of the inquiry. In what has been called "the most important patent case of the last 20 years, and perhaps since the passage of the 1952 Patent Act," 6 the Supreme Court in 2007 clarified the contours of nonobviousness in KSR International Co. v. Teleflex Inc. 7 In establishing the framework to answer "whether a patent claiming the combination of elements of prior art is obvious," 8 the Court emphasized that a proper analysis of nonobviousness must be "expansive and flexible." 9 KSR thus emphasized the need to articulate the nonobviousness criterion with enough flexibility to guarantee that patents issue only to inventions constituting a sufficient advance in the state of the art, thereby encouragingrather than stifling -innovation. 10 Despite this overarching purpose highlighted in KSR, neither courts nor scholars have analyzed or settled on the obviousness inquiry's object, that is, the thing which must be nonobvious. Some courts have implied that the object that must be nonobvious is the concept of the invention (the complete idea as articulated in the patent's claims). 11 Other courts have hinted that it might be some combination of the concept and the reduction to practice of a working model. 12 As troubling as these irreconcilable judicial intimations are, they have been made by courts without any reflective analysis. And both before and in the wake of the sea change wrought by KSR, scholars have instead been focusing on other issues, 13 such as concern 6. Posting of Peter Lattman to WSJ.com Law Blog, KSR v. Teleflex: The Supreme Court's Big Patent Ruling, http://blogs.wsj.com/law/2007/05/01/ksr-v-teleflex-the-supreme-courts-big-patent-ruling/ (May 1, 2007, 08:07 EDT) (quoting Michael Barclay). 7. 127 S. Ct. 1727 (2007). 8. Id. at 1740. "Prior art" is " [k]nowledge that is publicly known, used by others, or available on the date of invention to a person of ordinary skill in an art, including what would be obvious from that knowledge." BLACK'S LAW DICTIONARY 119 (8th ed. 2004). 9. KSR, 127 S. Ct. at 1739. 10. See id. at 1746 ("We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. As progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts."). 13. The one exception is Gregory N. Mandel, The Non-Obvious Problem: How the Indeterminate Non-Obvious Standard Produces Excessive Patent Grants, 42 U.C. DAVIS L. REV. 57 (2008), which criticizes the nonobviousness standard for being too indeterminate in The Layers of Obviousness in Patent Law 77 about hindsight bias in evaluating the obviousness of an invention after it already exists, 14 whether presumptions ought to be employed in determining obviousness, 15 the economic ramifications of the obviousness doctrine, 16 and the general shape of the obviousness inquiry. 17 It is essential to the coherence and health of the nonobviousness doctrine that the object of the inquiry be clearly and properly identified. The nonobviousness criterion, like the patent system as a whole, aims to offer an incentive to create those inventions deemed to be beneficial to society that otherwise would not exist. 18 When the wrong object is scrutinized for nonobviousness, patents are under-or overissued. Crucial inventions may be wrongly denied patent protection because their nonobvious aspects are overlooked, just as inconsequential inventions may receive protection in spite of obvious aspects that were similarly not evaluated. Therefore, the particular calibration the patent system aims to achieve is destabilized, leading to an overpromotion of insignificant innovation, an under-promotion of important innovation, or both. This Article suggests that the correct object to be analyzed for obviousness is the union of two different aspects of invention important to patent law: (1) the concept of the invention; and (2) the reduction to practice of a working model. Requiring an assessment of obviousness at each of these layers is more faithful to the nonobviousness doctrine and the policies underlying patent law than the cura number of ways, id. at 62-80, including the fact that inventions can be nonobvious for various reasons, id. at 111-13. 14. Because the proper object of inquiry is not addressed, the patent system does not, in the context of nonobviousness, assess the relative values to innovation of conception and reduction to practice. This issue is a crucial one, and this Article's exploration of the layers of invention through the lens of obviousness has wide-reaching implications in patent law well beyond obviousness. Many areas of patent law elevate the inventive role of conception over that of actual reduction to practice, be it with regard to what must be accomplished to secure a patent, 19 what must be contributed to an invention to be recognized as a joint inventor, 20 or the on-sale bar. 21 In other contexts in patent law, such as the availability of injunctive relief for patent infringement, however, the relative importance of reduction to practice is acknowledged. 22 This Article suggests that it is due time to question whether reduction to practice deserves an elevated role in patent law generally by demonstrating that it can be just as important as conception in the context of obviousness. Part II examines the contours and motivating factors of the nonobviousness doctrine and then describes and analyzes the courts' unsettled approach to the object of the obviousness inquiry. Part III proposes that the courts must settle on an object of inquiry and recommends a layered approach looking to concept and reduction to practice. Part IV shows how this refinement of the obviousness doctrine would improve the accuracy of obviousness determinations in a variety of technological areas. This Article concludes with some thoughts on the broader implications of a layered understanding of invention. The nonobviousness doctrine seeks to ensure that patents are granted only for technologically significant advances to foster the patent system's goal of stimulating useful innovation. Section A explores the development of nonobviousness as a condition for patentability and how the doctrine promotes underlying policies. Section B sets out the unresolved analysis as to the proper object of the obviousness inquiry and identifies a doctrinal state of confusion in need of resolution. Before 1952, the statutory requirements for a patent were only that an applicant demonstrate that his invention was novel, 23 useful, 24 and adequately disclosed. 25 Over time, however, the courts grafted on an additional requirement of showing that there was sufficient inventiveness beyond mere novelty. 26 In 1850, the Supreme Court prominently held in Hotchkiss v. Greenwood 27 that there could be no patentable invention unless the novel invention also possessed a sufficient "degree of skill and ingenuity." 28 This formulation led to almost 100 years of confusion, even at the Supreme Court, as to whether a patentable invention had to "reveal the flash of creative genius, not merely the skill of the calling," 29 merely "acquir[e] new functions and useful properties," 30 or something else altogether. 31 Confronted by this doctrinal confusion, 32 in 1952, Congress redirected all of these tests into a requirement that inventions be nonobvious to be patentable. Section 103 of the Patent Act states: 192, 200 (1883) (holding that a patent could not be obtained for a "trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures"). 32. See Giles S. Rich, Why and How Section 103 Came To Be, in NONOBVIOUSNESS, supra note 5, at 1:201, 1:203-08. [A patent] may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 33 This section effectively overruled the flash-of-creative-genius test previously enunciated by the Supreme Court, stating that "[p]atentability shall not be negatived by the manner in which the invention was made." 34 That is, obviousness does not concern how quick or laborious it was to invent but instead how straightforward the invention was in light of the prior art. It is thought that granting patents only for technologically significant -i.e., nonobvious -advances is important to furthering the patent system's goal of stimulating useful innovation in at least two ways. First, without a nonobviousness requirement, patents may be granted to inventions that are technologically trivial in light of the existing store of knowledge. Such inventions may not be economically trivial, however, and a patent grant in these cases will raise the costs of using the invention and of follow-up innovation to the benefit of the person who was fortuitously -rather than through a significant inventive leap -the first to generate the idea. 35 These grants undermine innovation associated with such inventions. An example is George B. Selden's 1895 patent on the automobile, 36 which merely combined the already-developed internal combustion gasoline engine with a chassis. The patent claimed a profitable and useful invention but was not a technologically significant leap past the engine development itself. 37 Because Selden arguably had an adequate economic incentive to invent the automobile without the possibility of a patent grant and because the patent grant significantly raised the social cost of using the automobile when others likely would have invented it nearly simultaneously, Selden should not have received the patent. 38 Second, without a nonobviousness requirement, a profusion of technologically trivial patents might be obtained in any one field. Collectively, this patent thicket will decrease innovation and increase social costs both by imposing significant licensing fees upon anyone work- The Layers of Obviousness in Patent Law 81 ing in the field and by potentially generating expensive litigation based on accidental infringement. 39 Approximately ten years after the enactment of the nonobviousness requirement, the Supreme Court, in Graham v. John Deere Co., 40 assessed the new statutory provision as a codification of the Hotchkiss standard of inventiveness. 41 The Graham Court articulated an objective three-part analysis for assessing whether an invention is obvious: (1) ascertain the scope and content of prior art; (2) determine the differences between the prior art and the patent's claims; and (3) gauge the level of ordinary skill in the relevant art, after which the obviousness can be determined. 42 The Supreme Court also indicated that secondary considerations, such as an invention's commercial success or the failure of others to make the invention, could be relevant in assessing the invention's obviousness. 43 In fact, the Federal Circuit has since mandated the consideration of secondary factors in nonobviousness inquiries. 44 Following more than forty years of relative silence on the topic, 45 in 2007 the Supreme Court returned to the nonobviousness doctrine in KSR International Co. v. Teleflex Inc. 46 After letting the Federal Circuit develop nonobviousness law within the Graham framework, the KSR Court stepped in to insist that the Federal Circuit was not finding obviousness often enough. For years, the Federal Circuit had employed the teaching-suggestion-motivation test as its sole substantive test for assessing obviousness. Pursuant to that test, "a patent claim is only proved obvious if some motivation or suggestion to combine the prior art teachings can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art." 47 The KSR Court feared that "[g]ranting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility." 48 Therefore, the Supreme Court held that "[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of [Vol. 22 published articles and the explicit content of issued patents." 49 KSR thus expanded the inquiry to "take account of the inferences and creative steps that a person of ordinary skill in the art would employ," even if not identified or implied in the prior art. 50 In sum, the nonobviousness doctrine emphasizes that trivial inventions are not patentable for the good reason that patenting such inventions hinders innovation. Moreover, courts have emphasized that the nonobviousness doctrine must remain flexible to accommodate wide variations in inventions, technologies, industries, and creative conditions. Having outlined the contours of the nonobviousness doctrine, this Article now turns to the state of the law on the object of the inquiry. The courts have neither sufficiently nor expressly analyzed the object of the obviousness inquiry in light of the legislation and the policies underlying nonobviousness. Rather, most courts take up the object of the obviousness inquiry only implicitly when they discuss other aspects of the obviousness doctrine. These implicit conclusions are in tension with one another. As discussed herein, the Supreme Court in Graham implied that the object of the obviousness inquiry is the conception of the invention. 51 Conception is typically understood as "the formation in the mind of the inventor[] of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice." 52 A patent's claims embody the conception. 53 The Federal Circuit -and later, the Supreme Court in KSRambiguously implied either that the object of inquiry is only conception, or that it is some unexplained combination of conception and reduction to practice. Reduction to practice means the making of a working model, i.e., an embodiment, of the claimed conception that functions for its intended purpose. 54 Reduction to practice can be actual or constructive. Constructive reduction to practice is accomplished through an enabling disclosure and compliance with the other requirements of 35 U.S.C. § 112. 55 The Supreme Court's first in-depth look at the meaning of nonobviousness in § 103 occurred in Graham. Although the Court did not expressly address the object of the obviousness inquiry, it did implic- The Layers of Obviousness in Patent Law 83 itly characterize the object in the second part of its three-part framework, which requires that "differences between the prior art and the claims at issue . . . be ascertained." 56 By assessing the inventive leap based on this difference, the Court seemed to designate conception as the object of the obviousness inquiry: the claims describe the idea of the invention -in its full scope -by setting out the necessary and sufficient elements that the invention must possess. 57 This characterization diverts attention from any particular embodiment of the invention. 58 In fact, the Federal Circuit has interpreted Graham in this way twice. 59 But case law in the wake of Graham is unclear as to whether the focus of the obviousness inquiry is on conception or on both conception and reduction to practice. To flesh out Graham's three-part framework, the Federal Circuit formulated a standard for obviousness that required a person having ordinary skill in the art ("PHOSITA") both to have had good reason to create the invention in light of the prior art and to have had a reasonable expectation of success in doing so. 60 With some minor variations, the Supreme Court adopted this two-part formulation last year in KSR. 61 By inquiring into creation in conjunction with a reasonable expectation of success, the focus seems to be on the obviousness of what a PHOSITA would be thinking at the moment of conception of the invention. In fact, the Federal Circuit has recognized as much by reasoning: Obviousness does not require absolute predictability of success. Indeed, for many inventions that seem quite obvious, there is no absolute predictability of success until the invention is reduced to practice. There is always at least a possibility of unexpected results, that would then provide an objective basis for showing that the invention, although apparently obvious, was in law nonobvious. 62 56. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). 57. See 1 ANTHONY W. DELLER, PATENT CLAIMS § 5 (2d ed. 1971). 58. Nonetheless, a patent's claims are linked to the possible embodiments in the sense that the patent specification must enable a person having ordinary skill in the art to make or use the claimed invention without undue experimentation. On one reading, this formulation seems to focus on the obviousness of the conception over anything else. As an alternative, one may focus on the obviousness of both the conception and creation of a possible embodiment at the time of conception, before reduction to practice. Unfortunately, the courts have never clarified the precise object of the inquiry in light of the Federal Circuit's ambiguous formulation. In 2007, the Federal Circuit highlighted the invention's function as another potential object of the obviousness inquiry in In re Comiskey. 63 In Comiskey, the patent applicant sought protection for "a method and system for mandatory arbitration involving legal documents." 64 The patent examiner had rejected the claims as obvious. On appeal, the Federal Circuit discussed the obviousness of certain claims that were limited to computer application of these methods for the examiner to consider upon remand. 65 The court saw some of these claims as "at most merely add[ing] a modern general purpose computer to an otherwise unpatentable mental process" and others as "merely add[ing] modern communication devices." 66 The Federal Circuit then reasoned more broadly that "[t]he routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness." 67 The Federal Circuit essentially said that the automation of a known mental process would almost always be obvious and therefore unpatentable. The Federal Circuit's statement about the obviousness of automating mental processes gets at neither conception nor reduction to practice precisely. Rather, it addresses a third potential object of inquiry: the obviousness of the invention's function. The Federal Circuit in Comiskey equated obviousness of business-method inventions with the obviousness of a task that humans already perform. With the invention at issue in Comiskey, the object of inquiry is the function of mandatory arbitration of legal documents, regardless of automation. Although one may seize upon function as another possible object of the obviousness inquiry, the typical understanding of a reduction to practice is that it has an asserted function, 68 that is, the specific utility it implements. Thus, function is already part of the analysis of reduction to practice, and there is no need to examine it separately. Moreover, very few inventions have a nonobvious function, 69 In sum, the courts have never clarified what the all-important object of the obviousness inquiry is. In fact, they have confused the issue by offering analyses implying that the object is the invention's conception or a combination of conception and reduction to practice. The next Part aims to clear up this confusion. This Part proposes that the proper object of the obviousness inquiry is the combination of the two key elements of invention: conception and reduction to practice. Section A makes the case, through analysis of both the nonobviousness doctrine and policy, for this bilayered analysis despite dicta in other spheres of patent doctrine. Section B suggests how to apply this layered approach by combining the obviousness resolution at each layer to yield an ultimate determination of obviousness. Beginning with the language of § 103, obviousness is to be found when "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 71 The statute points out, then, that it is the subject matter sought to be patented which must be obvious for patentability to fail. What does "subject matter" mean? It is not a well-understood term in patent law, despite its being frequently invoked in the patent statute. 72 One might reasonably think that it means the inventive concept defined by the patent's claims, or it might also include the various embodiments of the concept. The best statutory clue as to the meaning of "subject matter" comes from the disclosure requirements of the patent system. Section 112 requires a patent applicant to claim "the subject matter which the applicant regards as his invention," 73 thereby equating "subject matter" with "invention." Given that § 103 and § 112 are in pari materia in that they relate to the same subject (and there is no reason to dissociate them), it is appropriate to construe "subject matter" in § 103 in light of its usage in § 112. 74 "Invention" is a much better understood term in patent law. In typical contexts in patent law -including the doctrines of anticipation 75 and priority 76 -the invention is the conception and reduction to practice. 77 A layered understanding of invention suggests that in assessing an invention's obviousness, we ought to be concerned with the obviousness of both the conception and the reduction to practice, two quite different aspects of the invention. The obviousness of the conception addresses how apparent the idea of the invention would have been to a PHOSITA in light of the relevant prior art. For example, how obvious was the idea of one-click shopping, the ability to purchase items on the Internet with one mouse click in conjunction with stored billing and shipping information about the user? Many commentators reasonably think that this idea, patented by Amazon.com, 78 is obvious. 79 What about the idea of software to recall or erase email messages after they have been sent, should they contain mistakes or lead to regret? A reasonable person might find the conception of this idea obvious as well. Now consider, on the other hand, the obviousness of the reduction to practice, which concerns how obvious the embodiment of the invention would have been to a PHOSITA in light of the relevant prior art. To return to Amazon.com's one-click patent, how obvious was it to encode one-click shopping in software? Programmers would likely find this straightforward encoding obvious. 80 The task of programming software to recall email messages is surely significantly less the view that the invention was obvious because "many companies had already implemented similar systems at the time of Amazon's filing"); cf. Philip Greenspun, Software Engineering for Internet Applications (6.171), http://philip.greenspun.com/ teaching/one-term-web (last visited Dec. 19, 2008) (describing a one-semester course at the Massachusetts Institute of Technology aiming to teach anyone who has completed the course "to be able to build amazon.com, eBay, or photo.net by him or herself"). The Layers of Obviousness in Patent Law 87 straightforward conceptually 81 than programming one-click shopping, even after the inventor has mapped out the concept. These examples seem to suggest that there can be obviousness at both layers of invention, at only one, or at neither. The timing of the obviousness inquiry also suggests that courts should be assessing the obviousness of both the conception and the reduction to practice. By statute, obviousness is assessed "at the time the invention was made." 82 As such, courts adjudge what a PHOSITA would have known as of the time that reduction to practice (actual or constructive) was complete. 83 Although the courts have not further explained their rationale, this timing makes little sense unless the objects of the obviousness inquiry are both the obviousness of the conception and the reduction to practice. If the concern was just the obviousness of the conception, the inquiry's timing should be set to the timing of the invention's conception rather than the possibly later date encompassing the reduction to practice. Although the Supreme Court did not address the object of the obviousness inquiry in KSR, its reasoning also supports the layered approach in light of the preceding discussion. KSR emphasized that the correct answer on obviousness can be obtained only by evaluating all crucial aspects of the inventive process. KSR rejected the Federal Circuit's teaching-suggestion-motivation test as being too artificial and inflexible. 84 The Court held that a PHOSITA, as a person of ordinary creativity, knows more than what is contained in the printed prior art, and therefore relies on that wealth of knowledge in inventing. 85 By analogy to the object of the obviousness inquiry, it would be overly rigid and formalistic to focus exclusively on any one proposed layer at the expense of the other. Both are crucial aspects of invention. Although KSR considered the problem in a different context, the Supreme Court recognized the need for a flexible obviousness analysis by highlighting that "[t]he diversity of inventive pursuits and of modern technology counsels against limiting the analysis" of obviousness in inflexible ways. 86 Investigating obviousness in a layered fashion therefore makes sense doctrinally, and it also is justified from a policy perspective. Incentive theory suggests that the patent system ought to stimulate innovation by encouraging scientists and other potential inventors to develop nonobvious ideas that they otherwise might not. As discussed 81. The ease of the task is measured conceptually rather than in terms of the time to encode, recalling the directive of § 103 that "[p]atentability shall not be negatived by the manner in which the invention was made in Part II, the nonobviousness requirement seeks to exclude from patentability inventions that are not significant technological advances to avoid rewarding the inventor when no patent inducement was needed in the first place. 87 The momentous scientific developments that the patent system ought to encourage can conceivably take place at the layer of conception or at the layer of reduction to practice. There is no reason to ignore either of these layers, as they are both integral to the innovation that patent law seeks to promote. The following well-known inventions illustrate the possibility of nonobviousness at the layer of conception, the layer of reduction to practice, or both. First, consider the McCormick reaper, 88 an invention containing a wonderful conceptual insight but involving a relatively straightforward reduction to practice. Cyrus McCormick solved a difficulty plaguing previous reapers with his concept of "using a revolving reel to hold grain against the reciprocating cutter blades," 89 something not beyond the ken of a PHOSITA to reduce to practice. Second, consider the iPhone, 90 involving a complicated reduction to practice. The iPhone has, among other features, a touch-screen interface that permits the user to control all of its software capabilities by finger. 91 Many other common devices, such as an ATM, employ touch screens, and thus the concept of including one in the iPhone may have been obvious. However, the implementation -the conjunction of touch screen, firmware, and software -is far from straightforward. 92 Finally, the steam engine made by James Watt 93 is an example of an invention that involved significant ingenuity both in concept and in reduction to practice. Although neither the idea of using steam to produce motive power nor its implementation was new, 94 Watt sought to improve upon an existing engine when he observed how much steam would be lost during operation due to alternate reheating and cooling of the engine's cylinder. 95 Watt elegantly solved this problem with his concept of adding to the engine a separate condenser to be kept cool, The Layers of Obviousness in Patent Law 89 allowing the cylinder to be kept hot. 96 Once he conceived the solution, it took many years to reduce a workable engine to practice because there was a great deal of leakage around the pistons in the cylinder, a problem common to all steam engines at the time. 97 It was only when Watt partnered with an iron founder, John Wilkinson, who devised a machine for boring cast iron cylinders, that Watt solved this difficulty in reduction to practice. 98 These three examples illustrate that inventive ingenuity can occur at either or both of the two layers. In light of the reality of the inventive process and the policies underlying the nonobviousness requirement, the obviousness analysis ought to examine obviousness at the two layers of invention. Underscoring the desirability of a layered obviousness analysis is the recognition that the patent system in general cares a great deal about these two layers. To secure a patent, an inventor must have conceived the invention. 99 Although patent law does not require an applicant actually to have reduced the invention to practice by creating a working model, 100 it still immensely values reduction to practice. At the very least, even if there is not actual reduction to practice, patent law compels a constructive reduction in the patent application 101 with the disclosure satisfying the statutory requirements of enablement, 102 written description, 103 and best mode 104 so that others can rely on the disclosure to actually reduce the invention to practice. 105 Moreover, by granting an exclusive right, the patent makes it economically viable for a patentee or licensee to commercialize the patented inven- (Fed. Cir. 2006). A patent is a right to exclude others from making, using, or selling the invention. 35 U.S.C. § 154(a)(1). In fact, because there might be another patent blocking the free use of the patented invention, it might not be possible to actually reduce to practice without a license. tion, thereby actually reducing the invention to practice. 106 Other encouragement to innovate inheres in the fact that valuable injunctive relief against infringers is more likely to be granted if the invention has been commercialized 107 and a patent's presumption of validity further encourages entrepreneurs to assume the risk of commercializing an invention. 108 Because a patented invention is likely to be reduced to practice during the patent term or at the very latest after the term has expired based on the patentee's contribution of a constructive reduction to practice, the innovation value to society of an invention's reduction to practice must not be ignored in calibrating the extent of the patent reward. The layered understanding of invention is in tension with the Supreme Court's analysis in Pfaff v. Wells Electronics, Inc. 109 of patent law's on-sale bar. 110 The Court stated in that context that "[t]he primary meaning of the word 'invention' in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea." 111 The Court's view rested on both the statutory definition of "invention" as "invention or discovery" 112 and patent law's lack of a requirement that there be an actual reduction to practice as a prerequisite for patentability 113 or at any point during the patent term. The Pfaff Court's analysis is mistakenly simplistic. The circular statutory definition of "invention" suggests only that a patentable invention may be the product of an inventor's labor in either creating or discovering something new. The definition is neutral as to whether the inventor actually or constructively reduced the invention or discovery to practice. Moreover, the Pfaff Court acknowledged that there must be a reduction to practice -either actual or constructive -for there to be a patentable invention. 114 Its statements may have made sense in the specific context of the patent system's on-sale bar requiring a de- 113. Id. Following this reasoning, the Court concluded that the on-sale bar applies when the invention is "the subject of a commercial offer for sale" and is "ready for patenting," even if not actually reduced to practice. Id. at 67. 114. See id. at 61-62 (explaining that a patent may be granted even before actual reduction to practice so long as there was constructive reduction to practice through the enabling disclosure of the application). The Layers of Obviousness in Patent Law 91 termination of how much reduction to practice there needs to be for an invention to be on sale. 115 The Pfaff Court was misguided, however, in broadly asserting that conception was the only relevant aspect of invention in the patent system. 116 Furthermore, because Pfaff dealt only with the meaning of invention in the context of the on-sale bar, its holding should not carry weight outside of that context. The on-sale bar is not the only aspect of patent doctrine that may elevate conception over reduction to practice. At first glance, the decision of who qualifies as an inventor under patent law also seems to do so. Section 116 provides that "[w]hen an invention is made by two or more persons jointly, they shall apply for patent jointly." 117 The Federal Circuit has often understood this provision to mean that "a person is a joint inventor only if he contributes to the conception of the claimed invention." 118 That said, for deciding joint inventorship, the Federal Circuit sometimes seems to employ a broader definition of "conception" that includes significant aspects of reduction to practice. For a chemical substance, the Federal Circuit stated that "[c]onception . . . requires knowledge of both the specific chemical structure of the compound and an operative method of making it." 119 The Federal Circuit employed that definition in one case in a way that would permit a contributor to reduction to practice to be considered a joint inventor. 120 Not infrequently, the Federal Circuit has also stated that "[a]ll that is required of a joint inventor is that he or she . . . contribute in some significant manner to the conception or reduction to practice of the invention." 121 Thus, there is confusion in the Federal Circuit's case law on joint inventorship. As one commentator points out, there is a good chance that the view of only conceptual contributions as inventorship reads the statute too narrowly and ought to include contributions to reduction to practice, as "an invention is not 'made' until it is both conceived and reduced to practice." 122 Although resolving this conflict is beyond this Article's scope, it is important to note that at least some of the Federal Circuit judges recognize that reduction to practice could be of sufficiently significant value to constitute inventorship. Other areas of the law are clear in their appreciation of both conception and reduction to practice. For example, when two different inventors come up with the same invention, a patent can be granted to only one, the first to invent. The law of priority dictates who gets the patent in that case: the first inventor to reduce to practice (actually or constructively) gets the patent unless the other inventor was the first to conceive and was also diligent in attempting to reduce the invention to practice. 123 One reading of this rule would suggest that reduction to practice is critical, at least as much as conception, as the first to reduce to practice usually wins priority. Another reading would suggest that conception is more valued because the first conceiver wins priority if he was diligent in later reducing the invention to practice. Both readings, however, acknowledge that it is not conception alone that carries the day; rather, it is conception coupled with reasonably diligent attempts to reduce to practice. There has, in fact, been a longstanding general debate in varying contexts as to whether conception or reduction to practice is more important to invention: Does the patentable advance in innovation come from the existence of the knowledge encompassing the advance or from the existence of a practical exploitation of the knowledge? 124 The reasonable answer as to the relative value of conception and reduction to practice is the nuanced one. The degree of importance of each depends on the circumstances of the technology at issue or the industry with which it is concerned. For example, in many areas of biotechnology, such as those involving inventions related to DNA, the concept of the invention is of little use without the reduction to practice, i.e., the sequencing or physical characterization of the DNA, as the Federal Circuit has recognized. 125 For some mechanical inventions, such as eyeglass frames, however, the innovative payoff is principally in the conception rather than the execution. 126 Given this differentiation, the Pfaff Court's overly simplistic doctrinal analysis elevating the importance of conception over reduction to practice is nonsensical in light of the overarching policies of the patent system and their application to the nonobviousness doctrine. As discussed in the next section, assessing the obviousness of conception and reduction to practice leaves room for weighing the obviousness of each depending on the technology and industry at issue. A layered analysis defers an a priori choice as to the relative importance of conception and reduction to practice until there is a particular set of facts in sight, pursuant to which one can more easily make this nuanced determination. 127 In fixing the object of the obviousness inquiry to be the layers of conception and reduction to practice, it is necessary to consider how the two layers should be weaved together to determine whether the invention is obvious. There are two ways in which this assessment can be done. First, an invention might be considered nonobvious should it pass the "double-hurdle test" of a sufficient set quantum or quality of nonobviousness at each of the two layers. That is, there would have to be a certain degree of each of nonobviousness of conception and nonobviousness of reduction to practice. Only then would the invention be found to be nonobvious. A second possibility is to assess nonobviousness based on a "tipping-point test," as a whole in light of the varying degrees of nonobviousness of each of the two layers. For example, nonobviousness might be found should a sufficient degree of nonobviousness be found at one layer, e.g., reduction to practice, 125. See Fiers v. Revel, 984 F.2d 1164, 1168-69 (Fed. Cir. 1993); infra Part IV.B (discussing obviousness analysis for biotechnology inventions pursuant to a layered analysis). The Federal Circuit characterizes this situation as simultaneous conception and reduction to practice. See Fiers, 984 F.2d at 1169. The court tries to shoehorn the reduction to practice into the concept of conception -perhaps for some doctrinal consistency -thereby expanding the understanding of conception well beyond its otherwise well-settled borders. See supra text accompanying note 52 (defining conception). The better understanding of the Federal Circuit's approach is that conception without a method of reducing to practice and an actual reduction to practice is not sufficiently valuable in this technological area to merit protection. 126. See U.S. Patent No. 4,707,089 (filed May 31, 1985) (describing the "spectacles formed of a frame and a saddle bridge" as being "easy to reduce to practice"); infra Part IV.C (discussing obviousness analysis for mechanical and other traditional inventions pursuant to a layered analysis). 127. Cf. Burk & Lemley, supra note 39, at 1675 (asserting that because of the heterogeneous nature of inventions across industries, courts properly tailor patent law to the specific factors of each industry and technology). [Vol. 22 thereby offsetting a lower degree of nonobviousness at the other layer, e.g., conception. 128 The double-hurdle test is more rigid in assessing the worth of innovation because it will not permit, for instance, a sufficiently nonobvious conception to counterbalance an obvious reduction to practice. However, it will likely serve to decrease the number of issued patents because of the two independent obviousness gatekeepers through which a patent application must pass, should that exploding number 129 be a concern. By contrast, the tipping-point test might result in some more patent applications being granted by virtue of the two layers of obviousness that can contribute to tip the scales toward nonobviousness. The tipping-point test is preferable, however, in permitting decision-makers to evaluate obviousness in the context of the unique particulars of the technology and industry at issue. 130 This test fits better with the view that -aside from the ultimate question of obviousness being legal -the underlying factors bearing on obviousness are factual 131 and ought to be flexibly tested. 132 The tipping-point test also jibes well with the notion of a layered analysis because it assesses the relative importance of innovation at the respective layers of conception and reduction to practice in light of the particular invention at issue rather than abstractly. 133 Given much of the case law's predisposition to view the object of the obviousness inquiry as conception, 134 analysis of the obviousness of the conception will probably look relatively similar to current standards of analyzing the obviousness of the conception as expressed in the patent claims. As for obviousness of reduction to practice, more must be said. As discussed in the previous section, a patentee maybut need not actually -reduce the patented invention to practice so long as the patentee has constructively reduced the invention to practice in the patent disclosure. 135 Evaluating obviousness of reduction to practice, then, is not necessarily about whether the patentee's particular reduction to practice was obvious. Rather, like much of the objective inquiry to ascertain obviousness, the test should concern whether 128. Gregory Mandel suggests that we ought to understand invention as being wherever the nonobvious step occurred. Mandel, supra note 13, at 113-16. Mandel focuses on obviousness of function, which he labels conception, and reduction to practice, but overlooks obviousness of conception. The Layers of Obviousness in Patent Law 95 creating any one complete working model of the claimed inventionas opposed to every single one or the particular one that the patentee made -would have been obvious to a PHOSITA. This assessment aligns with the idea behind the obviousness requirement: if it were so technically straightforward for a PHOSITA to create some working model of the invention, then the patent reward should be granted only in the presence of significant ingenuity at the layer of conception. As under current law, secondary considerations, such as long-felt need for the invention and the failure of others, would help complete the inquiry into obviousness. This Part explores the implications that a layered analysis would have for patentability in a sample of important technological areas. The analysis indicates that with respect to two of the most prominent contemporary technologies, software and biotechnology, the layered obviousness inquiry is more appropriate than the current approach because it accounts for the inherent complexity in reducing to practice complete concepts. Sections A and B explore the implications for patentability of software and biotechnology, respectively, concluding that the layered approach would expand what we understand to be nonobvious in relation to the current law. Section C explores the minor patentability implications for more traditional technologies. In the context of software patents, an analysis of the layers of obviousness -conception and reduction to practice -in the Patent and Trademark Office and the courts will allow a more nuanced yet accurate picture of patentability. Recalling the examples above of obviousness of conception for one-click shopping and email recall, 136 many think that under current standards, a significant number of software patents are obvious. 137 By contrast, pursuant to a layered tipping-point inquiry, more software inventions would pass the nonobviousness hurdle. The Federal Circuit seems to think that it is nearly always straightforward to reduce to practice particular software once conception has occurred. In one case, it asserted that "[t]he conversion of a complete thought (as expressed in English and mathematics, i.e., the known input, the desired output, the mathematical expressions needed and the methods of using those expressions) into the language a machine understands is necessarily a mere clerical function to a skilled programmer." 138 The Federal Circuit's view is severely misguided. Much of the ingenuity of software lies in the reduction to practice, leaving software more likely to be nonobvious in reduction to practice than at the layer of conception. Confirming the popular belief that the software we all use is laden with bugs, 139 it is very complicated to translate a concept for particular software into a working software program. 140 In a rare instance, the Federal Circuit itself recognized the difficulty of reducing to practice compiler software that translates programming language into machine-readable instructions, a component of a patented numerical-control system for a machine tool. 141 Experts on software engineering explain the typical difficulty and delay in accurately reducing software concepts to practice by reference to the inherent and essential complexity of "the specification, design, and testing of [a] conceptual construct." 142 For instance, software is thought to be unlike mechanical devices or even computer hardware as "[s]oftware entities are more complex for their size than perhaps any other human construct because no two parts are alike." 143 In fact, the complexity of reducing software to practice based on a mappedout concept is thought to be intrinsic and inescapable. 144 Therefore, consideration of the layer of reduction to practice in a balancing test should render more software nonobvious and therefore patentable. Although a layered tipping-point analysis might yield more patents, a prospect that might frighten those who think there are already too many obvious inventions gaining patents, 145 these would be desir- The Layers of Obviousness in Patent Law 97 able patents of nonobvious inventions. There are worries that when there are too many patents in an industry, patent thickets develop, harming innovation. Even with more patents passing muster under a layered approach, however, society should benefit and avoid the costly problems often associated with thickets. 146 When a patent issues for software that was sufficiently nonobvious to reduce to practice or to conceive, a truly enabling patent disclosure should be useful because at least one inventive layer was not previously obvious to PHOSITAs. In addition, society benefits by getting to use the invention certainly after the patent term expires and perhaps during the patent term as well. Stereotypical patent trolls, 147 which have generated significant concern in the area of software, 148 are probably less likely to be rewarded with patents under a layered obviousness analysis. The reason is that the most nefarious of patent trolls will seek to patent inventions that are obvious at both layers, including the reduction-topractice stage, a stage that will often rescue the less reprehensible from a finding of obviousness. However, if a non-practicing entity's patent nonetheless passes the layered test and is deemed to be nonobvious, there arises a grave concern that the patent disclosure does not sufficiently enable a PHOSITA to make or use the invention, as required by 35 U.S.C. § 112. That is, if the patentee did not actually reduce to practice and it is not obvious to reduce to practice, the socalled "constructive reduction to practice" in the patent itself is more likely to gloss over the significant complexities inherent in reducing to practice. 149 If that is the case, then the patent is likely to be invalid for insufficient disclosure. A layered analysis therefore forces courts and the Patent and Trademark Office to focus on reduction to practice, as it relates to obviousness and disclosure, with severe risk to the validity of the patents of the worst trolls. The layered analysis ought to give little, if any, weight to the obviousness of a software invention's function, despite the Federal Circuit's recent decision in In re Comiskey, 150 which suggested that the function ought to be the focus of the obviousness inquiry at the expense of conception and reduction to practice. 151 The Comiskey court [Vol. 22 is probably right to suggest that it is typically obvious to have the idea of automating known mental processes; that is, there is obviousness of function for most software. But that is just the tip of the obviousness iceberg. Take, for example, the field of computational linguistics. For decades, thousands upon thousands of computer scientists have sought to encode in software and hardware a program that can comprehend and generate natural language like English. 152 This enterprise has not come close to full success alone or collectively. 153 Despite how known and widespread the mental process of language is, it is clear that both the conception and reduction to practice of an automated English speaker (and comprehender) is not obvious. Under Comiskey's narrow suggested test of obviousness of function, however, such an invention would be obvious. According to Comiskey's test, because people speak and comprehend English flawlessly, automation through software of a natural language processor is obvious and would not be patentable. This result cannot be right, and it should not take analysis of secondary considerations to reach the correct result. The same point is true for software more generally. We should not presume because people can accomplish some function manually or mentally that implementing it on a computer is obvious. Much that was just said of software is true of biotechnology as well because both share a complexity that manifests during the reduction to practice of a concept. The Federal Circuit has recognized this complexity in at least two areas of patent law. First, the Federal Circuit has held that to count as conception of an invention relating to DNA for purposes of priority, the DNA must first be sequenced or physically characterized. 154 By expanding the notion of conception so broadly to include what would ordinarily be thought of separately as a reduction to practice, the Federal Circuit has implicitly acknowledged that reduction to practice is significantly complex and important to DNA inventions. 155 Second, this priority rule ultimately served as an analogue for the Federal Circuit's biotechnology-specific rules for the adequacy of the patent's written description for purposes of disclosure 156 In that case, the patentee had claimed recombinant DNA technology that could produce human insulin. 157 The patent disclosed recombinant technology that could produce rat insulin, and included a general example of how to get the claimed technology to produce human insulin based on the example with rat insulin, but did not specifically disclose the recombinant technology that could produce human insulin. 158 As a result, the Federal Circuit struck down the relevant patent claims as extending beyond the patent's written description of the invention. 159 Whether right or wrong in the context of written description, 160 this reasoning emphasizes that the complexity and innovation of many biotechnological inventions lies in their reduction to practice, which is why the court wanted details of a working model in the patent disclosure. 161 In fact, the Federal Circuit has sometimes implicitly recognized this in the context of obviousness as well. For instance, in 1995, the Federal Circuit noted that "[a] prior art disclosure of the amino acid sequence of a protein does not necessarily render particular DNA molecules encoding the protein obvious because the redundancy of the genetic code permits one to hypothesize an enormous number of DNA sequences coding for the protein." 162 Therefore, it is to be expected that a layered tipping-point analysis would count as nonobvious many biotechnological inventions whose nonobviousness lies principally in their reduction to practice, a beneficial result for the same reasons as with software. 163 156. 119 F.3d 1559 (Fed. Cir. 1997). 157. Id. at 1562. 158. Id. at 1567. 159. Id. 160. The written-description requirement seeks merely to ensure that the inventor is in possession of the invention when a patent is sought. See supra note 103. It says nothing about the requisite degree of innovation that must occur for an invention to be rendered nonobvious. If, for example, patent law were to require great detail about the conception and actual reduction to practice of all biotechnological inventions to fulfill the writtendescription requirement, a separate test of nonobviousness would still have to be administered to ensure a sufficient leap forward in the state of the art. 161. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1206 (Fed. Cir. 1991). In accordance with Amgen, the PTO has increasingly been requesting working examples from applicants for biotechnology patents. See U.S. PATENT & TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE § 2164.02 (8th ed., rev. 6 2007) ("Lack of a working example . . . is a factor to be considered, especially in a case involving an unpredictable and undeveloped art."); Jenny J. Yeh et al., Patent Prosecution Strategies for Stem Cell-Related Applications, 88 J. PAT. & TRADEMARK OFF. SOC 'Y 73, 78 (2006). Alternatively, patentees can satisfy the written-description requirement in this area by depositing the relevant biological material in a depository accessible to the public and referenced in the patent specification. Enzo Biochem., Inc. v. Gen-Probe Inc., 323 F.3d 956, 965 (Fed. Cir. 2002). 162. In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995). But cf. Ex parte Kubin, 83 U.S.P.Q.2d 1410 (BNA) (B.P.A.I. 2007) (casting doubt on the viability of Deuel after KSR, at least to the extent it rejected an obvious-to-try test and the state of the art has evolved significantly so that reduction to practice is simpler). In contrast to software and biotechnological inventions, mechanical and other traditional inventions (such as the McCormick reaper) tend to be less complex. 164 In practice, that means that the innovation in these inventions usually lies in the concept rather than in the reduction to practice. For these inventions, the layered inquiry will lead to the same result as an inquiry focused only on the obviousness of the concept (likely the current approach 165 ). The reason for the same result will be that there is typically an obvious reduction to practice, leaving the obviousness of conception as the sole determinant of nonobviousness under a layered tipping-point test. The equivalence of the current and the layered inquiries for most traditional inventions indicates that the analysis for these inventions would not be complicated in any significant way by the introduction of a layered inquiry. In KSR, the Supreme Court recently highlighted the importance of nonobviousness as a criterion of patentability, underscoring the need for a flexible assessment of the obviousness of an invention. That opinion, its predecessors, and scholarly work on obviousness have nonetheless been missing the obvious by failing to recognize that the valuable innovation that the patent system seeks to reward can occur at the layer of conception, reduction to practice, or some combination of the two. Recognition that the object of the obviousness inquiry ought to be a layered combination of conception and reduction to practice properly emphasizes the goals of nonobviousness as a condition of patentability in the first instance. Application of the layered approach has significant implications for inherently complex technologies, like software and biotechnology. With such technologies, the reduction to practice is not always obvious, indicating that some of these inventions ought to be considered nonobvious more often than current law would otherwise indicate. By demonstrating that obviousness ought to be investigated at an invention's two layers of conception and reduction to practice, this Article provokes a broader question of the relative importance of conception and reduction to practice in the patent system's understanding of invention. This question has been woefully underexplored. However, it has tremendous implications for multiple areas of patent law The Layers of Obviousness in Patent Law 101 and, even more broadly, for how to think about the patent system. For instance, deciding which of two inventors was the first to invent and deserves to receive the patent requires an assessment of what must have been done to complete invention, whether just conception or both conception and reduction to practice. 166 The question also implicates whether patent law is right in not requiring patentees actually to reduce their concepts to practice, permitting them to sidestep that requirement with a constructive reduction to practice in patent applications. 167 Moreover, resolving who qualifies as a joint inventor also necessitates an inquiry into whether both those who conceive and those who reduce to practice ought to make the grade. 168 For an invention to be considered on sale, 169 need it have been both conceived and reduced to practice? 170 All of these questions feed into the larger concern about whether the patent system, tasked with stimulating innovation, ought to encourage conception, reduction to practice, or both, and in what varying degrees. As the discussion in this Article indicates, what is "innovative" is sometimes the conception, sometimes the reduction to practice, and sometimes both. 171 Even when the conception is all that is innovative, how much should the patent system occupy itself with encouraging an actual reduction to practice? Studying these issues broadly can help guide the most appropriate shaping of patent law to stimulate desired innovation. This Article's discussion is limited to the context of obviousness, but it is only an initial exploration into the valuation of conception and reduction to practice as the layers of invention. Its recognition of the weighty importance of reduction to practice in certain contextsin contrast to the current undervaluation of reduction to practice in comparison with conception -may or may not be confined to obviousness. This Article seeks to spark the further study of the fundamental question of the role of the different stages, or layers, of invention in shaping patent law and thus societal advances in innovation. 166. See 35 U.S.C. § 102(g)(1) (2006) (discussing the rule of priority); Brown v. Barbacid, 276 F.3d 1327, 1337 (Fed. Cir. 2002) (setting out the current rule for determining priority); supra text accompanying note 123 (analyzing how the current rules of priority might or might not support an understanding that reduction to practice can be just as important as conception). See, e.g., Gregory N. Mandel, Patently Non-Obvious: 74. 75. See z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1354 (Fed. Cir. 2007), cert. dismissed, 128 S. Ct. 2107 (2008). 76. See Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003) (referring to "[p]riority of invention and its constituent issues of conception and reduction to practice"). 77. See 2 DONALD S. CHISUM, CHISUM ON PATENTS § 5.03[2][a] (2005) (defining '

A. The Contours of the Nonobviousness Doctrine

C. Mechanical and Other Traditional Inventions


" The Legal Imitation Game: Generative AI’s Incompatibility with Clinical Legal Education ," 92 Fordham L. Rev. 1867 (2024) (with Jake Karr)

"The Legal Imitation Game: Generative AI’s Incompatibility with Clinical Legal Education," 92 *Fordham L. Rev.* 1867 (2024) (with Jake Karr)

Jake Karr & Jason M. Schultz, The Legal Imitation Game: Generative AI’s Incompatibility with Clinical Legal Education, 92 Fordham L. Rev. 1867 (2024)

Legal practitioners are currently in the midst of a technological maelstrom. Generative artificial intelligence ("GenAI"), and specifically large language models (LLMs), are taking the legal world by storm, and GenAI evangelists and skeptics are furiously debating the potential impacts of the technology. Will the introduction of GenAI turn lawyers into "prompt engineers"? 1 Will it entirely eliminate the need for human lawyers, at least for certain repetitive legal tasks and work product? 2 Or are we living through yet another "Big Tech" hype cycle? 3 Legal educators are engaged in a similar debate. 4 Many in the legal academy-in particular, clinicians and skills instructors who straddle both practice and pedagogy-are asking whether they should teach GenAI tools to law students, how they should teach these tools, and whether to allow students to use the technology in client casework or coursework. 5 These questions are further complicated by the rapid development and deployment of GenAI tools, which have created an atmosphere of not only overwhelming urgency but also perceived inevitability. 6 Legal educators are left between a rock and a hard place. On the one hand, legal employers are racing to embrace GenAI, putting pressure on educators to prepare students for any number of possible AI futures. 7 On the other hand, the technology is novel, uncertain, and risky. 8 Educators must choose between either speeding up to incorporate GenAI tools into their curricula without sufficient evidence and reasons to do so or slowing down to thoroughly understand, assess, and test these tools at the risk of undermining their students' employability in an unforgiving job market. All the while, technology vendors and platform providers are attempting to integrate GenAI into everything, including legal research, writing, and practice tools. 9 They are directly marketing these products to students, 10 often, in our experience, with little consultation with the legal academy and without an agreed-upon framework for evaluating risk or utility. So how should those of us in the field of legal education proceed? To answer this question, we must examine the tangible student learning opportunities that we are hoping to create and evaluate whether, where, and how integrating GenAI into law school curricula might help or hinder those opportunities. In this Essay, we briefly describe key aspects of the technology that are particularly relevant to, and raise particular risks for, its potential use by lawyers and law students. We then identify three foundational goals of clinical legal education that provide useful frameworks for evaluating technological tools like GenAI: (1) practice readiness, (2) justice readiness, and (3) client-centered lawyering. First is "practice readiness," which is about ensuring that students have the baseline abilities, knowledge, and skills to practice law upon graduation. 11 Second is "justice readiness," a concept proposed by Professor Jane Aiken, which is about teaching law students to critically assess the social and political implications of legal work and the legal system, as well as making space for students to confront systemic injustices and the role of lawyers in perpetuating them. 12 Third is "client-centered lawyering," which at its root is about client empowerment and autonomy, teaching students to recognize the power imbalances present in the attorney-client relationship and the importance of ensuring client agency in decision-making. 13 Although these are by no means the only goals of clinical education, they provide key perspectives and criteria for GenAI assessment. Finally, we examine whether GenAI is pedagogically compatible with each of these three goals. We conclude that although GenAI does present some de minimis learning opportunities for practice readiness, it is largely incompatible with justice readiness and client-centered lawyering, especially when considering the serious concerns that the development, deployment, and use of GenAI raise for those clinical programs with public interest missions. [Vol. 92 In 1950, iconic computer scientist Alan Turing first proposed a test to determine whether a computer could imitate human behavior with sufficient "intelligence" to deceive a discerning human judge who asked it questions. 14 The goal of the test was not for the computer to provide the correct answers but rather for its answers merely to resemble human answers-to imitate the appearance of human thinking rather than to produce actual thinking. 15 Turing therefore called his test "The Imitation Game." 16 Today, as explained below, the legal profession is playing a similar game with GenAI, raising two significant pedagogical and ethical risks: (1) the risk that AI outputs will appear to imitate competent and ethical human lawyering but ultimately fall short of the real thing and (2) the risk that AI users will suffer from automation bias-the presumption that AI outputs are by nature accurate. As to the risk of imitation, it is important to recognize that GenAI systems like ChatGPT or CoCounsel have a single objective: recognizing patterns in data to simulate human language and interaction. 17 The key here is simulation-the imitation of a thing as opposed to the thing itself: accurate and competent legal outputs. 18 In his groundbreaking 1950 paper describing The Imitation Game, Turing noted that this preference for imitation over accuracy is a feature of AI and not a bug, as one of the challenges in convincing humans that machines can think is that their answers to human questions may be too accurate: It is claimed that the interrogator could distinguish the machine from the man simply by setting them a number of problems in arithmetic. The machine would be unmasked because of its deadly accuracy. The reply to this is simple. The machine (programmed for playing the game) would not attempt to give the right answers to the arithmetic problems. It would deliberately introduce mistakes in a manner calculated to confuse the interrogator. 19 In other words, producing errors becomes a tactical mechanism for AI to "sound" more human. 20 Or as the science fiction writer Ted Chiang noted in his New Yorker essay on the subject, this means that our interactions with such tools provide, at best, a blurry or distorted reflection of "reality" that is both fascinating and entertaining without necessarily being accurate, ethical, or useful. 21 Much like lawyers who feel compelled or pressured to agree with their clients and/or downplay unfavorable analyses, these systems are purposely built to provide responses that please us by imitating the responses we are most likely to believe. 22 Even if those responses are speculative or wrong, GenAI neural network architecture may calculate that wrong answers are more likely to pass as human conversation than correct ones. 23 This, in part, is the reason why they produce "hallucinated" citations. 24 Lawyers are often desperately searching for the "perfect" case to defeat an opponent or reassure their client. That desperation drives their prompts, in turn driving GenAI's responses. 25 To the system, a hallucinated answer is better than no answer at all. Unlike most other legal research or educational tools, GenAI is not optimized to help humans become better lawyers-it is optimized to imitate how a human lawyer, good or bad, might respond. 26 Its goal is to feign intelligence and convince as many users as possible that it knows and understands things. 27 Although it sometimes uses accurate and insightful language, that accuracy and insight is a mere side product employed toward the ultimate goal: successful performance. 28 This is similar to the goal of many magicians-to convince us that they can bend the rules of physics and perform amazing feats, despite our knowledge that they cannot. To do so, magicians often will demonstrate that the laws of physics still exist by inviting an audience member up to the stage to test their equipment in order to lower our skepticism and encourage us to believe in the subsequent illusion. GenAI is designed to push us to accept that it has capacities and authorities beyond our knowledge and understanding-and that is exactly why it is so risky to use. In addition, GenAI leverages automation bias to convince audiences that these programs understand complex concepts and contain knowledge, when in fact they rarely have the capacity to do either. 29 Automation bias is part of a long history of the Human Computer Interaction (HCI) field in computer science and concerns situations in which human audiences are convinced to believe the outputs of automated systems because those systems appear to be more objective and lacking the biases of humans. 30 In reality, they were created by the very humans who have the biases the audience seeks to avoid. 31 A famous case of this was when Professor Joseph Weizenbaum, an early AI pioneer, created "ELIZA," the first chatbot, in 1964. 32 ELIZA shocked Professor Weizenbaum himself when he saw how quickly many users would believe that ELIZA really was a remote psychologist providing them with qualified mental health information via a text interface, even though it was merely scripted code designed to mirror user responses. 33 We see similar "automation bias" problems with misinformation online and automated decision-making in areas such as criminal justice, health care, education, and employment. 34 So, what does this mean in terms of legal education? It means that law students who seek answers to legal problems from GenAI may very well ask legal questions in their prompts and believe, due to automation bias, that they are receiving high-quality responses. 35 But the truth is that we can never know. Although law students and lawyers can verify the text of a specific case or statute, there is no existing mechanism for auditing or interrogating the logic behind GenAI responses. 36 Much like the magician, they never reveal their secrets. AI today is no closer to understanding lawyering than Professor Weizenbaum's ELIZA was to understanding human psychology in 1964. Yet, like ELIZA, it might well pretend to engage with legal issues to convince law students and practicing lawyers that it can. Thus, GenAI tools may imitate some basic forms of human lawyering, but they provide only surface-level learning experiences for students while raising serious ethical concerns. 37 As we discuss below, this leaves GenAI tools generally incompatible with the goals of clinical and, more broadly, legal education. 30. See id. at 616. 31. See id. ("We find that the mix of human biases and seemingly coherent language heightens the potential for automation bias, deliberate misuse, and amplification of a hegemonic worldview."). 32. See JOSEPH WEIZENBAUM, COMPUTER POWER AND HUMAN REASON: FROM JUDGMENT TO CALCULATION 2-3 (1976) Practice readiness is often considered the traditional goal of clinical legal education, and perhaps the one most commonly recognized outside of the legal academy. 38 Scholars have traced the notion of practice readiness to the clinical legal movement of the 1960s and 1970s. 39 In opposition to the perception that law schools historically failed their graduates by offering little in the way of practical training, practice readiness came to prominence as a call to provide law students with the experiences and skills that they need to adequately and ethically serve their clients when they graduate. 40 Despite its longstanding and widespread use in clinical literature, law school promotional materials, and bar association debates, 41 practice readiness is largely undefined in its particulars, sometimes criticized as "more slogan than idea." 42 Nevertheless, some high-level benchmarks have emerged for evaluating the types of experiences and skills that help train practice-ready graduates. The American Bar Association (ABA), for example, outlines expected learning outcomes for law students in its Standards and Rules of Procedure for Approval of Law Schools, Standard 302: (c) Exercise of proper professional and ethical responsibilities to clients and the legal system; and (d) Other professional skills needed for competent and ethical participation as a member of the legal profession. 43 More specifically, in its interpretation of the standard, the ABA states that "professional skills" may include "interviewing, counseling, negotiation, fact development and analysis, trial practice, document drafting, conflict resolution, organization and management of legal work, collaboration, cultural competency, and self-evaluation." 44 In another recent prominent effort to define and refine practice readiness, the Institute for the Advancement of the American Legal System (IAALS) conducted fifty focus groups of new lawyers and supervisors of new lawyers "to gather data about the knowledge and skills new lawyers need to practice competently." 45 The study suggested that "minimum competence consists of 12 interlocking components-or 'building blocks'" 46 : [1] The ability to act professionally and in accordance with the rules of professional conduct; [2] An understanding of legal processes and sources of law; [3] An understanding of threshold concepts in many subjects; [5] The ability to interact effectively with clients; [9] The ability to see the "big picture" of client matters; [10] The ability to manage a law-related workload responsibly; [11] The ability to cope with the stresses of legal practice; and [12] The ability to pursue self-directed learning. 47 Against this backdrop, scholars have debated how emerging legal technologies impact what it means to be practice ready. There is growing recognition that practice readiness today includes some level of technical training in, or at least an understanding of, the technologies that attorneys use to serve their clients. 48 The ABA and multiple states have now explicitly incorporated an expanded duty of technological competence into their rules of professional conduct, advising lawyers to "keep abreast of changes in the GenAI raises new questions as to what it means for law students to be practice ready and what that means in turn for clinicians committed to the goal of practice readiness. Although the technology is fast evolving and its impact on legal practice remains uncertain, current GenAI tools do not appear to have much to offer in the way of practice readiness. Evangelists may argue that GenAI "prompt engineering" 50 is the future of legal practice and thus should be recognized as a new skill that law students need to learn to be practice ready. 51 There are obvious reasons to believe that GenAI will lead to further automation of certain segments of the legal profession and certain legal services-processes that have been ongoing for quite some time 52 -and this will require legal practitioners to continue adapting to best serve their clients. If GenAI tools as they presently operate become a routine aspect of legal practice, perhaps prompt engineering becomes a skill that many lawyers feel as though they must learn in order to compete in the legal market or competently represent their clients. 53 Yet this possibility does not on its own demand a reimagining of a clinical curriculum committed to training practice-ready graduates. There are plenty of experiences and skills that clinical programs do not emphasize or prioritize and many useful or popular technologies that are widely employed in legal practice but are not systematically taught in law schools. 54 54. The ABA explicitly acknowledges that law schools should "determine[]" for themselves which "professional skills" to teach their students. AM. BAR ASS'N, STANDARDS AND RULES OF PROCEDURE FOR APPROVAL OF LAW SCHOOLS 2023-2024, Interpretation 302-1 (2023). [Vol. 92 them independently or receive training in them later in their careers. 55 Moreover, there are already signs that prompt engineering is headed for obsolescence. 56 All of this leads us to conclude that the teaching of prompt engineering for prompt engineering's sake may very well be a waste of the limited time that clinicians have with their students. The question still remains, however, whether the use of current GenAI tools can significantly assist students in learning other important skills or knowledge that are considered minimum baselines for legal practice. At the moment, we do not believe so. These authors have not seen compelling evidence, for example, that learning engineer "good" prompts and review GenAI outputs translates to material gains in the traditional domains of practice readiness, whether they be any of the "professional skills" contemplated by the ABA 57 or the twelve "building blocks" proposed by the IAALS. 58 Evangelists are excited by GenAI's potential to improve the speed of everyday tasks like legal research and writing and to produce simulacra of legal work product. 59 But helping law students learn to become more efficient does not automatically help them learn to become-or how to belawyers. Even if students can use GenAI tools to produce quality and quick outputs that outwardly meet the standards of legal competence, it is not clear what students can genuinely learn about practicing law through the process of using them. A student who passively prompts a GenAI tool to output a legal brief does not necessarily learn the "legal analysis and reasoning," "problem-solving," or written communication skills that go into producing such a brief, let alone the lessons to be drawn from iteratively drafting and discussing it with colleagues. 60 They are not honing their "ability to interpret legal materials" or "identify legal issues." 61 From this perspective, GenAI use may in fact stifle a student's intellectual and professional growth rather than foster it. To be sure, many students have started turning to GenAI tools as study or research aids in seemingly productive ways. Prompting a GenAI tool for a case summary or restatement of law arguably can deepen students' "knowledge and understanding of substantive and procedural law," 62 their "understanding of legal processes and sources of law," 63 and their "understanding of threshold concepts in many subjects." 64 In doing so, though, they are using GenAI tools just as they would any other reference material at their disposal, from casebooks and hornbooks to Westlaw and Wikipedia. This limited pedagogical compatibility between GenAI and practice readiness does not suggest to us that the technology merits special attention or consideration from law school clinics. The concept of justice readiness seeks to expand the goals of clinical pedagogy beyond the value-neutral skills instruction of practice readiness, at least as traditionally conceived. 65 Aiken writes forcefully against the ways in which legal education inculcates the "'hired gun' approach to what it means to be a lawyer." 66 "Clinics must teach skills," of course, "but they should also challenge the conception of law inculcated by law schools. . . [and] work toward inspiring students to bring about a more just society with their legal skills." 67 A clinician committed to justice readiness is a "provocateur for justice" who "actively imbues her students with a lifelong learning about justice, prompts them to name injustice, to recognize the role they may play in the perpetuation of injustice and to work toward a legal solution to that injustice." 68 Preparing students to be justice ready can be particularly helpful in providing them with a foundation to engage in various modes of lawyering focused on "empowering those without power and fighting for justice and equality," including political lawyering, rebellious lawyering, community lawyering, and movement lawyering. 69 Justice readiness encourages clinicians to "pull[] back the curtain and dethrone[] neutrality" by teaching students "how to reflect on their experience, place it in a social justice context, glimpse the strong relationship between knowledge, culture and power, and recognize the role they play in either unearthing hierarchical and oppressive systems of power or challenging such structures." 70 To do this, according to Aiken, clinicians must first engage students in effective critical thinking that transcends "the idea that there is a right and wrong answer to every legal problem." 71 Lifting this veil reveals "the role values play in the justice system." 72 Rather than allow students to "feel powerless" or incapacitated by law's inherent uncertainty, 73 however, clinicians should inspire students to seize upon that uncertainty, "assert [their] own values," and "become proactive in shaping legal disputes with an eye toward social justice." 74 Clinicians committed to justice readiness should "communicate the importance of social justice, the opportunity to make a difference that [a] law degree creates, and the responsibility that [students] bear as lawyers for the delivery of justice in our society." 75 As Professor Deborah Archer notes, "[t]he primary tool" that Aiken "promotes to help students achieve justice readiness is 'disorienting moments' where students have experiences that surprise them because the experience challenges the student's established way of viewing the world." 76 Clinicians must create the conditions that allow for students to experience these disorienting moments: "To find these disorienting moments, clinical professors must engage students in a moral and ethical discourse about the choices they make during . . . representation, and help them become more able to identify injustice." 77 Moments of disorientation and critical reflection can manifest in a variety of contexts. As an example, Aiken suggests selecting "cases that require creative solutions to clients' problems"-cases in which "there is no 'outside authority' from which to draw a remedy" and thus "may force the student to draw from her own knowledge base and to draw connections based on context." 78 Through such critical reflection, students can begin to learn how they may be able to act as "agents of change," rather than "agents of stasis." 79 GenAI triggers acute cultural, ethical, political, and social concerns that appear wholly incompatible with the clinical mission of justice readiness. On one level, legal GenAI tools pose risks to our justice system, including worsening the already unequal access to legal information and services. 80 Public interest lawyers and scholars have long fought to break down barriers to access. 81 Evangelists now argue that the expediency of GenAI tools can help democratize the availability of legal information and increase the scale of legal services. 82 In reality, GenAI will likely undermine these efforts. 83 The capital investment needed to develop GenAI systems, which ranges into the billions of dollars, 84 means that only a handful of powerful and wealthy corporations will be able to provide GenAI tools for legal uses, all of which are also proprietary as to the data sources used to train or fine-tune their models. There are no low-cost or transparent alternatives. Nor is there likely to be one any time soon. To the extent that we teach our students to use and rely on GenAI tools, we further concentrate legal information in the hands of a select few gatekeepers, replicating the legal information asymmetries wrought by previous advances in technology. that each AI-driven interaction uses more than ten times the energy used in a traditional web search. 93 Another found that ChatGPT costs the energy equivalent of 33,000 U.S. households per day. 94 As one study argued, the total electricity demand of our computational infrastructures could reach 20 percent of global electrical demand by 2030, from 1.5 percent today. 95 GenAI systems similarly require enormous amounts of freshwater to cool their energy-intensive, heat-producing graphics processing units. 96 One study made a rough calculation that every exchange with ChatGPT of twenty-five to fifty questions is the equivalent of pouring out a half-liter of freshwater on the ground. 97 Google and Microsoft have also reported major spikes in their water usage-increases of 20 percent and 34 percent respectively in just one year. 98 Unjust labor practices further serve to prop up GenAI systems. Recently, it was reported that OpenAI had hired Kenyan "click" workers for approximately one dollar an hour to remove toxic results from ChatGPT, such as sexually graphic materials and other explicit scenes. 99 The University of Oxford's Fairwork project, which studies the labor conditions for "cloudwork" platforms that support AI providers, has given many scores of less than three out of ten for fairness. 100 Thus, LLMs are by their very nature "soldiers for the status quo." 101 In their accelerating and widespread development and deployment across the legal system and elsewhere, they could potentially reinforce existing economic and power structures as well as the resulting injustices. In their outputs, far from being "vehicle[s] for justice," GenAI tools are stare decisis machines. 102 They consume, replicate, and make predictions based on existing data and depictions of the world, using data as precedent to produce endless variations of nothing more than what has come before. 103 In short, GenAI development and deployment may exacerbate existing injustices because their outputs may reflect them. If justice readiness requires us to "deviate from system-reinforcing behaviors," 104 discouraging the teaching and use of legal GenAI tools may seem eminently reasonable, if not ethically and pedagogically imperative. At the same time, justice readiness requires confronting the harsh realities of the law and legal practice, not shying away from them. With good reason, many clinicians may now wish to confront GenAI in a similar fashion and incorporate it into curricula in ways that are at least consistent with this pedagogical goal. Clinicians committed to justice readiness could press students to interrogate how these tools are built and operate, 105 to "pull[] back the curtain and dethrone[] [their] neutrality," 106 to investigate the wide-ranging ethical implications that they pose for the justice system and society, and to recognize the role that lawyers who use these tools may play in causing or reinforcing harm-especially in situations in which they might consider using GenAI to be in a client's best interest. By prompting students "to tease out or hunt down assumptions" 107 that underlie GenAI and to engage in critical reflection and dialogue around its potential uses in legal practice, clinicians may even help lead students into disorienting moments around technology, power, and justice. Indeed, clinicians so committed should not stand by as their students resign themselves to the inevitability of any particular GenAI future for the legal profession. We should help our students make informed, value-based, and justice-ready decisions about the technology and their own use of it. this work, and the learning opportunities that may flow from it, are achievable simply by teaching students about these tools. Integrating GenAI conversations and critique into justice-ready coursework does not necessarily require integrating GenAI use into client casework. It is not clear what more could be learned about justice readiness in contemporary legal practice by formally teaching students how to use GenAI tools as well. Thus, we believe that using GenAI tools in law school clinics would do little to serve the goal of training justice-ready graduates. Following its inception in the 1970s, client-centered lawyering (CCL) has become a centerpiece of law school clinical education. 109 CCL arose in response to perceived flaws in the traditional lawyer-client relationship, which typically involved arms-length interactions, with clients remaining relatively passive after stating their ultimate goals. 110 CCL instead focuses on dynamically engaging with clients and offering them more autonomy and agency as a partner in the legal decision-making process. 111 To do so, CCL requires "a commitment to looking at problems from clients' perspectives, of seeing the diverse nature of the problems, and of making clients true partners in the resolution of their problems." 112 Scholars have since debated and strengthened the concept of CCL by addressing perceived tensions within it. 113 For example, in her influential essay, Am I My Client?: The Role Confusion of a Lawyer Activist, Professor Nancy Polikoff explores what it means to work as a client-centered lawyer for political activists and members of vulnerable populations while also identifying with those movements and populations herself. 114 As part of this exploration, she discusses many of the issues that arise with these identifications, both positive and negative, such as the "insider/outsider" dilemma. 115 As someone who is familiar with the values of a movement, Polikoff discusses how she is able to build trust with clients who share those values (being an "insider"). 116 At the same time, as a lawyer who is expected to conform to the norms and rules of the legal profession, she has been forced into situations in which the disobedient actions and decisions of her clients pose a threat to her professional credibility, even though they align with her political objectives (being an "outsider"). 117 Ultimately, Polikoff concludes that resolving such tensions requires explicitly recognizing and integrating them into her CCL approach. 118 Critiques of bias and discrimination have also been instructive for improving the use of CCL in legal education. As Professor Michelle Jacobs argues, well-intentioned "race neutral" applications of CCL can often disserve clients of color by failing to adequately consider their culturally specific needs, especially when their lawyers do not share the same lived experience with the legal system. 119 This has helped highlight the importance of incorporating discussions of bias and discrimination into clinical education through mechanisms like cross-cultural training within the CCL framework. 120 As noted above, CCL requires a commitment from lawyers to see problems from clients' perspectives, including the diverse nature of the problems, and to make clients true partners in the resolution of their matter. 121 It also requires considering a range of socioeconomic contexts for client work, including bias, discrimination, and the connection between legal advocacy and greater movements for social change. 122 Although human lawyers and law students may never perfect these approaches, they can at least conceptualize them and aspire to learn how to pursue them as pedagogical goals. In other words, in our opinion, they can approach experiential education from a client-centered perspective by planning their approach, acting on it, and then reflecting on the results through the CCL lens. This can be done through a range of learning opportunities, skills, and experiences centered around listening, dialog, empathy, and other human relational skills and traits. 123 GenAI systems, on the other hand, teach away from CCL-oriented pedagogy. Rather than following the CCL model of dynamically engaging with clients as partners, in our experience using such tools, they instead imitate the traditional arm's length attorney-client relationship that CCL rejects. For example, when students prompt GenAI for the answer to a legal question, they remain relatively passive beyond stating the prompt. Conversely, we have seen that GenAI outputs are not dynamic interactions; rather they are static responses to each query without inquiry, dialog, feedback, or reflection. In our experience, GenAI systems make no attempt to ask the prompter for more information on how to see the problem from the client's point of view, how to understand the complex nature of the problem, or how to partner with the client on decisions or next steps. Nor do they provide any suggestions for how a lawyer or student attorney might do so. The prompter is also prohibited from gaining any insights into how GenAI systems determine what response to give, including any of the ideologies, logics, data, or sources of authority that the system relied on in doing so. 124 Like the black box of traditional lawyering, experience shows us that GenAI outputs and explanations are given didactically and often dogmatically with zero transparency. Authority is assumed. Certainty and confidence are projected. This is the opposite of the CCL approach. 125 Moreover, as noted above, GenAI systems are optimized to simulate the appearance of human lawyering over the accuracy or adeptness of their outputs. 126 Thus, if a GenAI system calculates that a more traditional lawyering approach (one that frames clients as passive or uninvolved in legal decision-making) sounds more "human" than CCL-driven ones, it will take that approach in framing its output. 127 GenAI systems also fail to engage with issues of subjectivity or systemic bias, such as those raised by Polikoff and Jacobs. Polikoff identifies tensions inherent to human social relationships, identities, and experiences. 128 GenAI systems are incapable of relating to these human experiences or the quandaries that they present. 129 Jacobs' concerns over racial bias are even more problematic for AI systems, which numerous scholars have shown contain inherent and problematic data based on myriad forms of discrimination that no amount of cross-cultural training can correct. 130 Simply put, concepts such as seeing a problem from a certain perspective, understanding the diverse nature of a problem, or creating a true partnership are beyond the model of any GenAI system, making them incompatible with CCL. Law schools are not meant to train students to imitate lawyers-they are meant to train students to become lawyers. Although GenAI tools may be able to help students imitate some forms of human lawyering, it is unlikely that they can serve the educational goals of law schools and especially those of law school clinics. Unless and until GenAI evangelists can prove the pedagogical value and ethical integrity of these technologies, we will remain skeptical. . 33. See id. at 3-7. 34. See, e.g., Kathleen L. Mosier, Linda J. Skitka & Susan T. Heers, 37. See infra Parts II.B, III.B.

B. GenAI Is Minimally Compatible with Practice Readiness

B. GenAI Is Largely Incompatible with Justice Readiness

A. The Goal of Client-Centered Lawyering

B. GenAI Is Pedagogically Incompatible with Client-Centered Lawyering