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Supreme Court to Rule on 'Obvious' Patents 242

Posted by ScuttleMonkey
from the fluent-in-loopholeanese dept.
davidwr writes "News.com reports the U.S. Supreme Court will take up KSR v. Teleflex, a patent case in which the defense is arguing the patent is obvious and should be thrown out. The case hinges on a 1952 provision of patent law. Interestingly, several major IT firms are supporting the defense."
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Supreme Court to Rule on 'Obvious' Patents

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  • Very narrow ruling (Score:5, Insightful)

    by ryants (310088) on Monday June 26, 2006 @11:41PM (#15610536)
    I'm not a Supreme Court expert (I'm not even an American), but I can't imagine a ruling that would allow people to start challenging patents on "obviousness". I imagine the ruling will be very narrowly confined to just the circumstances of this particular case.
    • by happyemoticon (543015) on Monday June 26, 2006 @11:53PM (#15610582) Homepage

      I didn't RTFA, but supreme court rulings can often have very far-reaching implications. For example, the case "Marbury vs Madison" established the tradition of judicial review. In some other legislative systems, all laws are automatically in harmony with the constitution. However, due to that one case and a really ballsy Chief Justice, courts in general and the Supreme Court in particular can essentially say that a law is bogus and strike it from the law. Then there's Brown vs Board of Education, which (after much fighting, ignoring, pain, suffering, and tribulation) paved the way for equal access to education and public services regardless of ethnicity.

      If I had to guess, whatever the outcome, a hard battle is still ahead for those opposed to stupid patents - but depending on how it's worded, this could be a turning point.

      • by anagama (611277)
        Don't bother RTFA. The FA is terribly written and confusing. For example:

        That court has ruled, for instance, that even "a combination of preexisting, off-the-shelf components in which each component performs exactly the same function that it had been known and was designed to perform," KSR wrote in its petition for review by the Supreme Court (click for PDF).

        That's an entire "paragraph" from the article. Notice how the main sentence goes nowhere? Essentially it says "the court has ruled that." Rule

    • by darkmeridian (119044) <william.chuang@gm a i l . com> on Monday June 26, 2006 @11:55PM (#15610591) Homepage
      Nope. The Supreme Court last visited patents when it decided Markman in 1997. The Supreme Court did not take this case along with Metabolite just to rule narrowly on the facts. Indeed, it the fact-specific nature of patent courts that has been one of the largest complaints the patent bar has had with the Federal Circuit. Most notably, the Fed. Circuit's treatment of claim construction has been abysmal. Claim construction is when the judge decides exactly what the patent purports to have patented. Obviously, this is crucial and in many instances result-determining. Markman said it was the judge's job to interpret patent claims. The Federal Circuit then refused to take appeals of claim constructions before the entire trial had concluded. Once the entire 2-3 year trial has ended, the loser can appeal the claim construction to the Federal Circuit. About 40% of the cases on appeal on this point are overruled. So that's 2-3 years of litigation down the drain.

      I'm guessing the US Supreme Court wants to make it easier to beat down patents. Instead of making everything dependent on whether a patent for a three-bladed razor is infringed by a razor with four blades, the question is whether the subject matter is obvious or unpatentable, which is less depdendent on the ultra-fact specific lawyer games everyone plays on what "includes" means in a patent.
    • Precent (Score:5, Insightful)

      by EmbeddedJanitor (597831) on Monday June 26, 2006 @11:56PM (#15610592)
      While the ruling is likely to be narrowly confined, it will establish a current precedent for the interpretation of "obvious". This could have significant implications for future rulings.

      Generally, most recent patent attacks have been prior-art based. This potentially provides a new line of attack.

    • by mattmacf (901678) <(mattmacf) (at) (optonline.net)> on Tuesday June 27, 2006 @12:01AM (#15610608) Homepage
      I can't imagine a ruling that would allow people to start challenging patents on "obviousness"
      Really? I thought that by definition a valid patent must satisfy the requirement of being non-obvious. The problem ATM isn't with the judicial system. Generally the patents that make it into court are ruled on appropriately, but the cost of challenging a meaningless patent in court is much more than having to license the "obvious" patent. What KSR is looking for is a change in the definition of what consitiutes an obvious patent. From the CNET article:
      In a brief supporting KSR's arguments (click for PDF), Microsoft and Cisco charged that the current test applied by the Federal Circuit "hurts innovation" because it establishes "far too lenient a standard for patentability." Cisco has even built up a portfolio of patents for "defensive purposes" in order to "neutralize" a proliferation of trivial patents, the brief said.
      Hopefully the Supreme Court will adjust the definition of "obviousness" and these changes will make their way into the patent system itself. What we really need is a system that will routinely reject patents that are blatantly obvious, negating the patent trolling mess we have now.
      • The changes to the patent system itself that you suggest will only happen thru an act of Congress. While the courts can overturn a patent office decision, they can't impose their will directly on the patent office.

        All the Supremes can do is rule on this particular case, which will give guidance and a precedent for lower courts to follow. Unless the patent office itself were to be brought before the court (somehow), the court cannot dictate to it. That would be infringing on the Executive Branch, which opera
        • I am not sure how this might work in this instance, but when laws are delclared unconstitutional, it is in a lawsuit targeting the executive branch, enjoining them from enforcing a law. While on paper it looks like such a ruling only affect the individual case at hand, precedent dictates that withing the guilelines of the verdict, it applies to all infractions of the struck down law. Presumably, something similar would happen if the verdict of a patent infringment declared that the criteria used by the pa
          • by Ohreally_factor (593551) on Tuesday June 27, 2006 @03:48AM (#15611196) Journal
            That would still send it back to Congress, if a patent law were found unconstitutional. It would be up to Congress to pass a new law that was constitutional. It is possible that it could happen this way, but it's highly improbable, due to the nature of the claim. The appeal itself is fairly narrow, and is not claiming that the law itself is unconstitutional. Rather, the grounds for the appeal are that a lower court did not use a proper test to determine the validity of a patent, i.e., the test for obviousness. In this case, the defendant is claiming that using off the shelf parts to create a brake pedal is an obvious idea to someone in the trade, and therefore not patentable. If they prevail, this will have far reaching implications, to be sure. But it's highly doubtful that the court will rule broadly on this issue, especially because the claim itself is fairly narrow. Don't expect the patent system to be turned on its ear.

            It wouldn't necessarily apply to any patents that we might think of as obvious, unless those patents were the subject of litigation before a court, and it might only apply to patents that involve off the shelf components. Yes, this is important, but even if the defendant wins, it's just one chip out of many we need to reform the patent system. It would be a great victory, but it's effects will still be limited.

            In any case, I believe that the court is going to rule narrowly. Chief Justice Roberts spoke recently on the subject of broad and narrow rulings, and said he preferred narrow rulings. One reason for this was that narrow rulings tend to get greater consensus among the Supremes rather than split decisions. Consensus implies validity while a divided court implies controversy, i.e., the matter isn't settled with finality.
          • by mrchaotica (681592) * on Tuesday June 27, 2006 @09:00AM (#15612057)
            ...the constitutional mandate to protect IP...
            Gah! What are you talking about?! There IS NO Constitutional mandate to protect IP!

            See, this is why we're having so much trouble with patent trolls and DRM: people have a fundamental misunderstanding about what that clause in the Constitution is all about!

            First of all, it does not "mandate" anything; it merely allows it. "The Congress shall have power to" enact copyright and patent law, but it is not obligated to do so.

            Second of all, the clause is explicitly designed "to promote the progress of science and useful arts," not to "protect IP!" Indeed, if it were designed to protect "IP" (a term that did not exist when the Constitution was written; they simply called it a "monopoly") it wouldn't have had a "for limited times" clause!

            • Ok, young man. You just take that logic and go to your room. I don't want to hear any more of that public domain is a good thing talk. Who do you think you are siding with those viscious, heartless monsters who wrote the constitution rather than the warm, loving coprporations who are just trying to scrape out a meager living making a few hundred million with the sweat of their lawyers brows.
        • by Anonymous Coward on Tuesday June 27, 2006 @02:48AM (#15611075)
          All the Supremes can do is rule on this particular case

          Meanwhile, Diana Ross, Smokey Robinson, and the Miracles all dissented.
      • If you read the filing with the court, you'll see that they merely want the Supremes to rule that using two devices together, as the devices were designed, is not an invention. "Obviousness" goes way beyond that. There are many many problems whose solution is obvious once the problem is posed. These solutions ARE inventions, are currently patentable and should not be.
    • Actually it is hard for the Supream Court to ever weigh in on a narrow set of rules. Here they have agreed to take on the question of what is "obvious" and that is what is being argued in front of the court. This ruling will have a large impact on that the implications of the 1952 patent law should consider "obvious".

      The Supream Court always decides the case based on the point of law being argued. They usually never broaden or narrow the scope. Often times you can be "right" but simply not have asked th
    • by IconBasedIdea (838710) on Tuesday June 27, 2006 @12:32AM (#15610726)
      That is not the case with the Roberts court. The Clarence Hill lethal injection case got a very narrow ruling earlier this month, as was the MGM/Grokster ruling. Narrow court rulings are far from rare, and as the Cheif Justice himself points out, narrow rulings are more likely to be unanimous decisions, or close to it. From a speech this month at Georgetown:

      "If it is not necessary to decide more to a case, then in my view it is necessary not to decide more to a case. Division should not be artificially suppressed, but the rule of law benefits from a broader agreement. The broader the agreement among the justices, the more likely it is a decision on the narrowest possible grounds."
    • Obviousness is very strictly constructed. In fact, a patent infringer that obtains personal success from their infringing item makes the patent non-obvious. RIM found this out when they argued obviousness against NTP. They claimed NTP's patents were too obvious to be patented (such so that a person reasonably strong in that field would be able to do it on their own). NTP argued, with supporting precedent, that because the Blackberry Service was so successful the concept was non-obvious.

      Much of the clamo
      • Well ..... obviety is a strange beast. The moment someone mentioned to me that someone had invented {and patented} a refrigerator door that could be opened from either side without needing to be re-hung, I knew how to build one -- even before they had described how it worked. Should I have tried to get the patent struck down for being obvious? {Then again, I always used to know the Countdown Conundrum the instant someone buzzed in, as though the sound of the buzzer rearranged the letters in my head.
    • by Arker (91948) on Tuesday June 27, 2006 @02:35AM (#15611046) Homepage Journal

      I can't imagine a ruling that would allow people to start challenging patents on "obviousness".

      I have a feeling the above post was written specifically to show how ignorant many of the moderators are. Plus 5 "insightful" - hah. Obviousness is and has always been a valid challenge to patents in this country, and to the best of my knowledge all countries. It's a specific requirement that in order to be patented, an invention must be non-obvious, and many court battles have been fought over whether or not a particular patent was obvious and thus invalid. So that's just... a rather bizaare comment, however you look at it.

      The issue in this case is, however, narrow. The federal appeals court that gets ALL patent appeals (and this is a problem in its own right) has set forth a rather narrow and difficult criteria for what constitutes obviousness, resulting in many things that are 'obvious' in the normal meanings of the word being ruled 'non-obvious' legally, and the appelants are trying to get the supremes to over-rule that and impose more sane criteria.

      I wish them luck, but even a good ruling here is unlikely to significantly reduce the burden the patent office is imposing on the general good.

    • I can't imagine a ruling that would allow people to start challenging patents on "obviousness"
      Where have you been living? Obviety is probably the number one reason not to grant a patent!
    • by bytesex (112972)
      I'm not from the US either, but I understand that the power of 'precedent' is very strong in the US legal system (ruled like so-and-so once for this law under these circumstances, must rule like so-and-so forever for this law under comparable circumstances) above a certain level of court. This is not so much the case in countries not based on anglo-saxon common law, where judges are much more free to judge based on the circumstances of a particular case.
    • by MarkGriz (520778) on Tuesday June 27, 2006 @11:14AM (#15612837)
      "I'm not a Supreme Court expert (I'm not even an American)..."

      but you *did* stay in a Holiday Inn Express last night, right?

    • by ChrisA90278 (905188) on Tuesday June 27, 2006 @11:49AM (#15613067)
      I would tend to agree with you except for one thing. The Supreme Court gets to pick the cases it hears. It only picks a slim minority of cases and lets the decisions of lower court stand in most cases. So we have to ask ourselves WHY did the Courst choose to hear this case. Most of the time they select a case where some interrsting point of law needs to be decided and they chose a case that will allow then to settle some point of law. Other times the case itself is importent. This sounds like a case where they want to settle something. Being over narrow would not do that. How ever they might still make a narrow judgment if the court can not agree on a widder one but I'll bet narrow is there their intent going in. I am a total non-ecpert too. I doubt many experts have time to read slashdot.
  • Goddman it (Score:5, Funny)

    by Gleenie (412916) * <simon.c.green @ g m a i l .com> on Monday June 26, 2006 @11:42PM (#15610538)
    I've already patented the use of obvious patents. Does that mean that my fellow cynics can have my patent struck down in an ironic twist of fate?
    • by x2A (858210) on Tuesday June 27, 2006 @12:08AM (#15610643)
      Well I, more cleverly (therefore less obviously), patented unobvious patents, which means that all patents must pay royalties to me, or else be struck down in an moronic twist of fate :-p

    • Re:Goddman it (Score:5, Interesting)

      by plover (150551) * on Tuesday June 27, 2006 @12:20AM (#15610682) Homepage Journal
      I've already patented the use of obvious patents.

      Thomas Edison beat you to this a hundred years ago.

      The story I heard was that he was arguing before the court that some invention was not obvious. He placed a raw egg on the bench in front of the judges, and challenged the judges to make it stand on its pointy end. They tried balancing it, shaking it to break up the yolk, spinning it, and finally declared the task impossible. Mr. Edison took the egg and crushed the pointy end of the eggshell down on the bench, where he easily stood it on its end. One of the judges said "well, that's obvious." Mr. Edison pointed out that, not thirty seconds prior, they had declared the task impossible but now it's obvious. And that's why his patent should stand.

      Of course now that I've typed it up, I can find no reference to the story. Typical me. :-( Can someone help me out?

      • Re:Goddman it (Score:5, Informative)

        by Bostik (92589) on Tuesday June 27, 2006 @12:34AM (#15610735)

        Of course now that I've typed it up, I can find no reference to the story.

        No wonder. You mixed the person. That story is usually associated with Columbus. Hell, there's even a Wikipedia entry [wikipedia.org] of the thing.

        You would need a Reader's Digest anecdote to find something older :)

        • That story is usually associated with Columbus

          In Dutch that's even an expression: "het ei van Columbus" ("Columbus' egg"), meaning a simple solution to a problem which is very obvious in hindsight.

        • So instead of declining the patent for being obvious, they could decline it for previous-art.
      • Re:Goddman it (Score:3, Insightful)

        by AusIV (950840)
        Yes, but just because a judge can't figure out how to make thumbnails on a web page that you can click to see a bigger picture doesn't mean it's not an obvious patent. I think it's hard to say what is an isn't an obvious patent. It would need some kind of definition to hold up consistently.
      • Re:Goddman it (Score:2, Insightful)

        by Digital Vomit (891734)

        Someone has already posted that it was Columbus and not Edison who did this trick, but, used as an argument for the non-obviousness of certain patents, this example is terrible. A more modern variant might be to challenge people to come up with a better compression algorithm, then you presenting your "better" compression algorithm by smashing the HDD flat with a sledgehammer. Outside-the-box thinking!

        It's a clever trick that belongs in a Mind Trap [boardgamegeek.com] game; nothing more. If Edison really had used that egg t

      • by Tablizer (95088) on Tuesday June 27, 2006 @12:49AM (#15610784) Homepage Journal
        Mr. Edison took the egg and crushed the pointy end of the eggshell down on the bench, where he easily stood it on its end.

        My toddler once did that to an entire carton of eggs. Does that make him smarter than the judges? (Although it wasn't quite the tip, but about half the egg.)
               
      • Re:Goddman it (Score:3, Interesting)

        by Quirk (36086)
        The earliest historical rendition of the anecdote I'm familiar with deals withChristopher Columbus [google.ca]. Columbus asked his detractors to stand a hardboiled egg on end, when they failed he cracked the base of the egg and pointed out that all problems seem intractable until a solution is provided.

        The Columbus' anecdote seems to be true but I'm sure somewhere in the dark, dusty toe-stubbing recesses of my memory there is another anecdote of the same content dating back to Roman times. Standing an egg on end was sa

        • Re:Goddman it (Score:3, Interesting)

          by a_n_d_e_r_s (136412)
          A simple solution to an hard problem has been done before Columbus.

          The gordian knot was solved by Alexander the Great:

          "In 333 BC, wintering at Gordium, Alexander attempted to untie the knot. When he could find no end to the knot, to unbind it, he sliced it in half with a stroke of his sword, producing the required ends (the so-called "Alexandrian solution"). Some traditions dispute this, and say that he pulled the knot out of its pole pin, rather than cutting it. Either way, Alexander did go on to conquer A
      • by mlush (620447)

        For some reason that story puts me in mind of the current issue of The Order of the Stick [giantitp.com]

      • I don't get it. He was trying to patent the egg?
  • Unsurprising. (Score:5, Interesting)

    by porkchop_d_clown (39923) <mwheinz@@@me...com> on Monday June 26, 2006 @11:48PM (#15610555) Homepage
    No single company can afford to get off the patent treadmill because they would be vulnerable to attack - but anything that forced the entire industry to "disarm" would be a win for them all.
    • "but anything that forced the entire industry to "disarm" would be a win for them all." ...and a huge loss for lawyers. Just think about it they need to eat too.
      • by x2A (858210) on Tuesday June 27, 2006 @12:17AM (#15610671)
        "they need to eat too"

        You've obviously never properly got to know any lawyers. They only pretend to eat so we believe they're human ;-)

        • Actually they do eat. I've seen them. They slither around on the floor a restaurants and pick up droppings. You know how those bottom-feeders are.

          -----------------
          Q: What's the difference between a catfish and a lawyer?
          A: One's a scum-sucking bottom-feeder, the other one's a fish
  • Clogged Dockets (Score:3, Insightful)

    by adageable (972913) on Monday June 26, 2006 @11:49PM (#15610558)
    Certainly, someone needs to reign in the patents, but won't this lead to just more and more litigation? The real problem, it seems, is that too many patents are being issued! I suppose this helps rescind them, but could lead to a clogged docket, IMHO.
    • Yeah but if you're confident that a patent is obvious enough, means you can just go ahead and use it anyway, knowing that any litigation that comes your way is only ever gonna get as far as the supreme court (jk)

  • Ordinary Skill? (Score:5, Insightful)

    by CodeBuster (516420) on Monday June 26, 2006 @11:54PM (#15610586)
    It was my understanding that United States patent law contains a provision covering the patentability of devices, ideas, methods, or techniques from any body of knowledge that would be generally known to a skilled practitioner of the trade or art in question (i.e. the so called "skilled practitioner" test for obvious patents or prior art). If it is patently obvious then in effect it cannot be patented.

    Person having ordinary skill in the art [wikipedia.org]
    • Re:Ordinary Skill? (Score:5, Insightful)

      by RowboatRobot (899380) on Tuesday June 27, 2006 @12:01AM (#15610614)
      While that is true, the real concern here (as it is in any court case) is how the law is interpreted. By some recent actions of the patent office (especially in the biomedical industry) you'd think obvious clauses were non-existant, yet there are other fields (basic mechanics, for example) in which the patent office has been much more stringent. I'm not sure that in this case the supreme court has the power to do anything. Honestly, what power does it have to make sure the patent office enforces patents the way it sees fit? Have a judge breathing over every patent clerk's shoulder? Even if they overhaul and re-structure the entire department, the issue here is the need for a defined policy for each and every field, which is clearly not going to be laid out by the supreme court alone. Perhaps they could elect a committee to create better patent policy. (Surely more bureaucracy will fix this!)
      • Re:Ordinary Skill? (Score:2, Interesting)

        by kozumik (946298)
        > While that is true, the real concern here (as it is in any court case) is how the law is interpreted.

        Right. I think this is less about a legal principle or fine point, and more about establishing guidelines for a more capable patent office which is better capable of determining the not always obvious enough.

        In cutting edge fields like Biotech there are probably patent officers who award patents when in doubt, which makes sense due to their high value and possibility for appeal later, but still allows t
      • Re:Ordinary Skill? (Score:4, Insightful)

        by Mikkeles (698461) on Tuesday June 27, 2006 @07:19AM (#15611694)
        '.... Have a judge breathing over every patent clerk's shoulder? ....'

        No, have the Patent Office cover the court costs of a successful obviousness challenger.

    • good point (Score:2, Interesting)

      by kozumik (946298)
      I particularly liked your reference to "patently obvious" which is a term many people probably use without considering its meaning.

      The general principles for determining what's "patently obvious" have existed for a long time. One could say that the definition of obviousness isn't itself obvious, but it should by now at least be common knowledge to skilled practitioners of the art i.e. the patent office and courts.
  • My prediction... (Score:5, Insightful)

    by kcbrown (7426) <slashdot@sysexperts.com> on Tuesday June 27, 2006 @12:06AM (#15610629)

    The Supreme Court will rule in such a way that the ruling does absolutely nothing to help with the mess that is now patents. They will claim that it's a problem for Congress.

    There's precedent for this, namely the Eldred case, in which they basically ruled against Eldred on the same basis.

    You can't count on the Supreme Court to rule well (that is, on the side of the People) on anything anymore.

    Sigh.

    • by Tablizer (95088) on Tuesday June 27, 2006 @12:42AM (#15610759) Homepage Journal
      The Supreme Court will rule in such a way that the ruling does absolutely nothing to help with the mess that is now patents. They will claim that it's a problem for Congress.

      It's the courts job to interpret existing laws. The "common practitioner" clause is Congress's own law in writing. I cannot see how they can turn that back on congress, unless perhaps it conflicts with something else Congress enacted (which happens all the time).
           
  • About fucking time.

    (well, unless "obvious" patents are allowed...)

  • by dino213b (949816) on Tuesday June 27, 2006 @12:16AM (#15610668)
    Some reform is desparately needed; I suppose this is as good of a start as any. Software patents can severely diminish small companies and individuals from releasing software without fear and making some money out of it.

    Imagine someone taking a patent out on a device that by means of a spring and plastic somehow disables and enables a machine by use of what is coined in the patent declaration as a "power" switch.

    Talk about absurd! A similar analogy can be drawn from some software patents and as much as I hate to defend the borg, some of the recent Microsoft court loses seemed absurd at first look. Common procedures done in "office" software. Can someone really patent part of a document-database-exchange? See http://yro.slashdot.org/article.pl?sid=06/06/17/06 38233&from=rss [slashdot.org]

    #ifdef angry
    #include <standard_i_am_opinionated_and_ignorant_too_discla imer.h>
    #endif
  • by punkguitarist (962709) on Tuesday June 27, 2006 @12:26AM (#15610703)
    Personally I think they should all together be abolished, but this is a good start - people are finally realising how stupid some of them are. Amazon.com has the "1-click buy" patent... now every other company must sell things in a two-click buy or greater. This is an example of an obvious patent, which should be abolished (amazon also holds a couple more like this).
  • Waste of time (Score:5, Insightful)

    by rucs_hack (784150) on Tuesday June 27, 2006 @12:37AM (#15610740)
    If obvious patents aren't allowed, then IT companies will simply start burying the patent office in such detailed applications that they won't be able to declare them obvious.

    We are talking money here, lots and lots of money. There is no way that IT companies will roll over and stop patenting crap.

    It costs less to get a patent then can be made from hijacking some succesful yet unsuspecting developer several years later (especially if they just roll over and settle). So what if some don't make it through? They'll just turn around and try again after some patent lawyer has worked his expensive magic on it.

    • The rule is obvious to a skilled practitioner, not obvious to a patent examiner.
    • If obvious patents aren't allowed, then IT companies will simply start burying the patent office in such detailed applications that they won't be able to declare them obvious.

      They're not allowed now, they're just getting through.

      And more detail doesn't make it nonobvious. The canonical example of a nonobvious patent is one for a doorknob where the material of the knob is different for no particular reason, e.g. instead of being metal, it's wood. Specifying which wood, and how the wood is selected, etc. does
  • Obvious (Score:5, Informative)

    by lspd (566786) on Tuesday June 27, 2006 @01:57AM (#15610960) Homepage Journal
    The petition for writ of certiorari is an interesting read. From the description at news.com.com.com.com you'd get the impression that this is a clear case of the Federal Circuit court not applying clear standards that the SCOTUS has already laid out, but the petition makes it clear that the Federal Circuit believes the SCOTUS's previous decisions create an unworkable framework for deciding "obviousness".

    The SCOTUS basicly assumes that an invention is obvious when it is an aggregation of preexisting inventions. The holder of such a patent needs to demonstrate that the combination was unforseen or that it creates synergies beyond what would be expected. The Federal Circuit says that this goes against the concept of presuming that issued patents are valid. Every invention is obvious once it is disclosed, so the only way to shift the burden of proof off of the patent holder is to require that the infringer demonstrate clear evidence that the combination was suggested in technical literature prior to the patent issuing. The SCOTUS assumes that a "person having ordinary skill in the art" is capable of solving problems through novel combinations of existing technology. The Federal Circuit assumes that a "person having ordinary skill in the art" isn't capable of creative problem solving.

    Neither one of these standards does justice to the concept of "obvious". It would be nice to see the SCOTUS create a workable framework for deciding obviousness rather than simply reiterating its previous decisions.
    • Except obvious means you don't know it when you've seen it, you know it when you've foreseen it.
    • Re:Obvious (Score:5, Informative)

      by mavenguy (126559) on Tuesday June 27, 2006 @05:47AM (#15611486)
      Disclaimer: IANAL but I am a former patent examiner.

      After reading through a night's worth of comments I think your post most accurately states the principle of patent law that, hopefully, will be given a clear set of guidelines and that these guidelines will result in scaling back what have become, over the many years of Court of Appeals for the Federal Circuit and predecessor Court of Customs and Patent Appeals holdings on interpreting non-obviousness.

      The reason this is critical is that, beyond the obvious effect in being able to strike down issued patents only after lengthy and costly litigation it would enable the PTO to issue narrower claims, or even refuse issue of any claims in the first place. The current CAFC case law has put a too high burden on time-constrained examiners to make good cases against with prior art references that are readily available. Thus, if a reference doesn't explicitly babble about all the kinds of things the stuff it discloses could be used for the applicant will scream that it doesn't "suggest" the use described in the claims at issue. The examiner is then stuck with searching more for a better "golden bullet" reference (Hell, you might just find an anticipating reference that knocks out the claim with no sticky obviousness issues) or finding yet another "glue" reference which will risk complicating the rejection, giving applicant more room to attack the rejection.

      Doing this routinely, however, will take up time, and the examiners must meet their production quotas or else they will be fired, so it's either to throw in the towel and allow the claim (a very easy thing to do with little time consumption) or if the applicant appeals, to write an examiner's answer on appeal and ship the case off to the PTO's Board of Appeals (which takes a lot more work, not to mention that after the appeal is decided with anything reversed, the examiner must issue the application yet gets no more time to handle this work)

      This is why this appeal has the great potential, if the opinion issued by the SCOTUS is clear and in the right direction, of scaling back some of the high barriers erected by the CAFC. On the other hand, if they, in essence, affirm this CAFC case law then we are stuck with the current situation in which case only Congress can change it, the possible results thereof I shudder to even contemplate.
  • While not over-optimistic on its capability to solve the problem, the Peer to patent project [nyls.edu] is an initiative that has good support from the industry, seems able to lobby the USPTO efficiently and could drastically reduce the number of obvious patents actually granted.

    In two words, they propose to use web tools such as wiki and comment areas to let anyone involved in the patent world (inventors, lawyers, competitors...) comment and annotate patent applications before they are reviewed by the patent examine
  • by thebdj (768618) on Tuesday June 27, 2006 @07:36AM (#15611743) Journal
    case for several months and SCOTUS, I think, shocked a lot of people by taking up this case. Many people, mostly those of us who are pessimists, thought that the Supreme Court would brush this off since they have largely not interfered with patentability issues and relegated most of the work to the decisions made by CAFC (Court of Appeals for the Federal Circuit). This current case really drives at the heart of obviousness, something that it seems the court hasn't taken a stand on since the Graham Factors [wikipedia.org] were established in the 1960s.

    The CAFC created the standard requiring a suggestion of obviousness during the 1980s, and this has yet to be tested before the Supreme Court. The argument used should be, and possibly is, that the CAFC basically eliminates the person having ordinary skill in the art. (See here [wikipedia.org]) SCOTUS even rejected a claim that the prior art had no motivation mentioned when they originally ruled in the Graham v. John Deere case.

    Most anyone inside the PTO is going to tell you that the requirement for a suggestion to make a combination of two pieces of prior art for obviousness reasons is a great burden. The supporters of KSR are mostly tech companies, who know that many of the patents that are inhibiting growth of that industry would be ruled obvious if not for the suggestion requirement. I have also heard that companies against it are the drug companies, but then again, they are not getting sued left and right and are simply milking American's dry on patented drugs...some of which would probably lose patent protection if this gets rid of the suggestion requirement.

    There is one potential downside of the Supreme Court ruling in favor of KSR and removing the requirement for suggestion is that the PTO could be swamped with re-examination requests for a lot of patents. Eventhough I no longer have much personal interest in the outcome, I will continue to watch this case since it could turn into the biggest ruling SCOTUS has made in relation to patents in a very long time.
    • by Sangui5 (12317) on Tuesday June 27, 2006 @11:53AM (#15613104)
      some of which would probably lose patent protection if this gets rid of the suggestion requirement.

      Or rather, virtually all. There really aren't that many truly new drugs--mostly just applying a few standard tricks to old drugs to extend the patent protection. The worst (IMHO) are:

      1) Obvious compounding. A good example is pain medication. Acetaminophen (Tylenol) has an unusual method of action which is synergistic with nearly every other analgesic, and rarely interacts with other drugs. So, the drug company will file a patent on their new painkiller, and then (just before the patent is made public/the drug is approved), they'll patent mixing it with acetaminophen. Doctors prefer prescribing the mixture because it has a percieved lower risk of abuse (due to the liver toxicity of acetaminophen), so the generic unmixed version isn't used so much.

      2) Racemic mixtures. Many drugs have left handed and right handed versions. Often, one version or the other is more effective/safer. Especially since the thalidomide incident (anti-nausia drug where one versoin (left?) caused birth defects) testing both versions is standard. Yet the drug companies can get separate patents on the left, right, and mixture versions. Sometimes, the patent on the left or right can be used to control the mixture, especially if it is difficult to make just one version or the other. Regardless, it gives the company a "new" drug to market and to compete with the generics. Prilosec and Nexium are an example of this.

      3) Particle size patents. Hmm, it just so happens that a certian size granule is "better" than others, and the standard manufacturing technique (whose patent is expiring) makes that particle size (or at least contains it)...

      4) Time release/enteric versions. Coating something (with a standard, commonly used coating) to make it time released or gentle on the stomach isn't obvious, for some silly reason.

      Sometimes I wonder if the problems with the high cost of healthcare aren't really caused at all by the healthcare providers or insurance companies, but are almost entirely a regulatory problem--stupid patents on drugs & medical devices driving costs up.
  • For those of you out there who are wondering what the '1952 patent law' really says (you know, so you have some ammunition to argue from), here it is:

    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. 35 U.S.C. 103(a) [cornell.edu] (2000) (emphasis added).
    Some things to note:
    1. Courts look at the differences between the invention as a whole and the prior art. Individual parts and pieces may have been invented before, but the combination may not be obvious. Courts look to things like whether there was some teaching or motivation to combine the ingredients.
    2. The comparison takes place at the time the invention was made, not right now when we have the benefit of hindsight. As has already been linked to, see the story of Columbus' Egg [wikipedia.org] for why we want to do this.
    3. The person who is analyzing the differences is a person having ordinary skill in the art [wikipedia.org] (PHOSITA). The difference between a transistor and a vaccuum tube may be obvious to an electrical engineer, but not to an architect. Lawyers fight over this skill level in litigation.
    Think about a (perhaps not so) hypothetical suit over the peanut butter and jelly sandwich. Peanut butter was known, jelly was known, and bread was known. Was there some published motivation to combine them (or more generally to combine nut spreads with fruit preserves on an edible substrate)? The court would likely look to contemporaneous cookbooks. The fact that it's obvious in hindsight helps make the sandwich such a good idea, but was it obvious at the time (using only the knowledge of cooking at that time)? The defendant will argue that it was, the plaintiff that it wasn't. What's the skill level of the PHOSITA? Probably pretty low -- anyone who cooks likely qualifies.

    These are the sorts of questions courts (and patent examiners) ask when evaluating obviousness.

    Ob comment: applying all this law to TFA, some of the Federal Circuit's possibly strange statements start to make sense. Perhaps even the statement from TFA, that "a combination of preexisting, off-the-shelf components in which each component performs exactly the same function that it had been known and was designed to perform" is not necessarily obvious.

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