The ‘Captain Obvious’ Approach: What the Nielsen Decision Reveals About the U.S. Obviousness Inquiry

Captain Obvious

About 20 years ago, Hotels.com had a series of commercials starring a character called “Captain Obvious.” This character would make observations that were funny because they were apparent to all. And that is what non-patent lawyers think of when it comes to something that is obvious.

That is also the approach taken in a recent U.S. Court of Appeals for the Federal Circuit (CAFC) cases, i.e. the “Captain Obvious” approach. Specifically, the recent Nielsen (The Nielsen Co. (US), LLC, v. TVision Insights, Inc., — F.4th. —, case no. 25-1371 (Fed. Cir. Aug. 14, 2026)), is an appeal from an underlying U.S. Patent and Trademark Office (USPTO) proceeding (inter partes reviews or IPRs). That proceeding pieced together multiple references to form an obviousness combination. Relevant here, the Board paid little-to-no attention as to whether one in the relevant profession (“people of skill in the art” or POSITA) would have actually put together the proffered combination of references. Instead, the Board analyzed whether (1) each reference qualified as prior art, (2) each reference was generally about the subject matter of the target patent, and (3) there would be some recognizable benefit by combining the references. E.g. TVision Insights, Inc. v. The Nielsen Co. (US), LLC, IPR no. 2023-1014 at 47-50 (P.T.A.B. Jan. 26, 2025); see also Align Tech. Inc. v. Dental Monitoring SAS, IPR no. 2023-1369 at 52, (P.T.A.B. Mar. 3, 2025) (another recent IPR that cobbled together “reasonable pertinent” multiple references using the “Captain Obvious” obviousness approach).

The Nielsen Decision

For example, in Nielsen, the Federal Circuit validated a combination and demonstrated its unwillingness to second guess the USPTO’s conclusion that a person of ordinary skill would have, however artificially, combined two references at the time of the invention. Nielsen, 2025-2752 at 9-10 (“If a reference disclosure and the claimed invention have a same purpose, the reference relates to the same problem, which supports an obviousness rejection.” Quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016)). That combination, presumably carefully chosen by the petitioner’s outside counsel, is an example of the “Captain Obvious” obviousness approach.

As concisely stated in this 2016 Federal Circuit decision, that approach elevates the artificial post hoc combination over whether someone at the time of the invention would actually combine those references:

“Too often the obviousness analysis is framed as an inquiry into whether a person of skill, with two (and only two) references sitting on the table in front of him, would have been motivated to combine the references in a way that renders the claimed invention obvious. The real question is whether that skilled artisan would have plucked one reference out of the sea of prior art and combined it with conventional elements to address some need present in the field.”

WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1337 (Fed. Cir. 2016)

A Better Way

Obviousness analysis does not need to be this way. In fact, it is not that way in the rest of the world. The patent process in the United States uses the phrasing “obviousness”; the rest of the world, specifically nations that are signatories to the Patent Cooperation Treaty (PCT), uses the phrase “inventive step.”  Patent Cooperation Treaty Art. 33.

“Inventive Step” is supposed to mimic the obviousness analysis in the U.S. Id. at 33(3) (“[A] claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art”). But rather than incentivizing finding matching language in a hypothetical combination of prior art references, the inventive step inquiry is meant to help separate an inventor from a skilled mechanic.

It also begs the question whether the PCT wording (“inventive step”) is better suited to get at that fundamental inquiry than “obviousness.” That inquiry is often also a thin line: when does a skilled repair job become an invention, particularly an invention that is worthy of a limited-time property protection through a government grant?

The original 18th-19th century inquiry surrounding patent law was largely concerned with that question. For example, in Hotchkiss v. Greenwood (52 U.S. (11 How.)248 (1851)), the Court drew a distinction about what the patent law was supposed to protect: the work of a skilled mechanic or an inventor. Id. at 267 (“[T]he improvement is the work of the skillful mechanic, not that of the inventor.”)

Assessing patent invalidity using the word “obviousness” necessarily begs the question as to what that term means. What is obviousness? Obvious to whom? Obvious when? And if it was obvious, then why is there a fight over a patent? All of which is to say that the word “obvious” is less helpful than the phrase “inventive step.”  The “inventive step” phrase focuses the inquiry on whether or not the change was made at the time of the invention. That phrase invites a discussion around facts that could be relevant in determining whether an invention rises to the level of deserving property protection.

With that backdrop, invariably an engineer will review the patented invention and he/she will comment that the invention was “obvious.”  In an interview, the engineer is using the dictionary-definition, “Captain Obvious” sense of “obvious” (i.e., a synonym of “apparent” or “evident”).

But that is neither helpful from a legal sense or a practical, story-telling sense. Legally, “obviousness,” the word itself, invites the kind of hindsight bias that patent law tries very hard to remove. From a practical standpoint, “obviousness,” again the word itself, will naturally lead an engineer down a path to a conclusion about a product as it exists today, especially if we are talking about a feature that predates the engineer working on that product. (Perhaps ironically, lay juries, who are charged with finding facts that might lead to an obviousness conclusion, are usually adept at making those distinctions and skeptically examining post hoc rationales for combining multiple references that would lead to an obviousness finding).

And once the engineer goes down that path, it is very hard for an engineer to ask the relevant question: whether a solution would have been obvious at the time to a person of skill in the art at the time of the invention.

The current obviousness exercise often turns into the “Captain Obvious” analysis. Attorneys and vendors and investors and others piece together pieces of patents and patent publications and other internet-searchable printed matter to render an obviousness combination, whether or not that combination would actually be possible or was actually available.

That leads to an inquiry that is often too broad and too narrow. Too broad in the sense that current law gives legal effect to what might be an artificial combination of references, a. nd too narrow in the sense that the inventor/skilled mechanic inquiry may not be resolved by an artificial combination that happens to match up with the target patent’s claim language.

What You Can Do Now

Congress is not likely going to revise title 35 of the U.S. Code to remove “obviousness” and replace it with “inventive step.” But when normal people think of “obviousness”, they need not be reminded of the Captain Obvious commercials. Captain Obvious combinations are NOT the legal test. Perhaps we might use the “inventive step” phrase to remind ourselves what the obviousness inquiry is supposed to be about and stop giving credence to “Captain Obvious” combinations that do not actually get at the underlying inquiry: separating an inventor from a skilled mechanic. In the meantime, judges and lawyers in the United States can place a higher premium on tying together individual references in a combination and demand that there be some evidence that a person having ordinary skill in the art would actually make the putative combination.