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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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  • by Comatose51 (687974) on Tuesday June 27, 2006 @12:17AM (#15610670) Homepage
    Yes it does actually. It has ruled in the past about the meaning of a comma in some sentence of our tax code. That's how narrow it can get. In fact, the SCOTUS tend not to overrule previous rulings but rather distinguish a current case from a previous case. One of the goals of our legal system is for it to be predictable. SCOTUS tries to uphold that as much as possible. Part of the reason the Federal circuit was created specifically for patent laws is to prevent forum shopping which has a tendency to make patent cases unpredictable. IANAL.
  • 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 :)

  • by Anonymous Coward on Tuesday June 27, 2006 @12:53AM (#15610793)
    KSR was accused of patent infringement on an obvious patent by Teleflex for pedals.

    The appeals court ruled that the Teleflex patent stands because even a combination of off the shelf parts used in a novel way is nonobvious.

    KSR Disagrees and is appealing to SCOTUS.

    Cisco and Microsoft are coming in on the side of KSR, they believe "off the shelf in a novel way" is too low of a standard for patents.

    Assuming they make a ruling and don't shove it off to the Congress, a ruling for KSR will have a wide ranging positive impact. Microsoft and Cisco will not have to spend as much patenting the obvious, and dealing with patent litigation, which costs a lot. Additionally it might free up resources for the Patent Office, perhaps allowing them a more thorough interpretation of those that do go to the office. Of course the patent office may not like this, it might decrease the yearly fees they take from prospective patenters.
  • by onemorechip (816444) on Tuesday June 27, 2006 @01:44AM (#15610922)
    he Supreme Court last visited patents when it decided Markman in 1997.


    Aren't you a little out of date [cornell.edu]?

  • 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.
  • by anagama (611277) <obamaisaneocon@nothingchanged.org> on Tuesday June 27, 2006 @02:20AM (#15611016) Homepage
    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." Ruled what? All in all, this whole situation is appalling. Obvious patents are appalling and TFA is appalling.
  • by Arker (91948) on Tuesday June 27, 2006 @02:35AM (#15611046) Homepage

    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.

  • Re:SCOTUS? (Score:3, Informative)

    by Robmonster (158873) <slashdot.journal2.store@neverbox.com> on Tuesday June 27, 2006 @05:46AM (#15611481) Journal
    Well it was in the subject line. What more do you want?
  • 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.
  • by squiggleslash (241428) on Tuesday June 27, 2006 @07:09AM (#15611675) Homepage Journal

    No, the first way was fine, even if it invalidated the second sentence. The Supreme Court does, on occasion, make rulings that really can't be applied to anything.

    The two examples that actualyl spring to mind are, interestingly enough, quite infamous. One was the 2000 election ruling, where the majority ruling included language that made it explicit that their decisions were setting no precedents whatsoever. The other was a recent case where a local government was planning to sieze private land and give it to a developer, where SCOTUS actually said (to much (deliberate?) misunderstandings later), that it, a national body, isn't in a position to judge what is locally in the public interest, and therefore determine whether this particular siezure was constitutional or not.

    In one case SCOTUS was saying "You can't second guess us in future about these issues, we might rule the other way if it happens again, nuh nuh", in the other "How the fuck should we know? Stop asking us these questions, take some responsibility for once."

    BTW, IANAL.

  • 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!

  • Re:Unsurprising. (Score:3, Informative)

    by Alsee (515537) on Tuesday June 27, 2006 @11:25AM (#15612912) Homepage
    shelling out $100,000 in legal fees

    That figure is WAY on the low side, chuckle. Try two million dollars.

    Note that that is two million dollars for each side, four million total, not one million each. Google has many links documenting that figure. [google.com] The original source appears to be an American Intellectual Property Lawyers Association 2003 economic survey report.

    -
  • Re:What? (Score:3, Informative)

    by Ravensfire (209905) on Tuesday June 27, 2006 @12:41PM (#15613482) Homepage
    Take a municipality that's starting to struggle, a large employer or two has left, the median income has dropped, and there's not much hope for a turn-around.

    The community is probably fine, and can provide basic services, but that's about it. No community center. Minimal parks. Fees for trash pickup, leaf pickup, etc.

    A developer comes and presents a plan that would dramatically change the prospects of that city. A strong core of residential and commercial locations; new growth - a chance for the city to be reborn, to be vibrate again.

    Is that worth it? Does the potential justify the taking of private property? (local example - new shopping center has led to a massive improvement in a local community. Did the benefit of 10k+ residents and 100k+ consumers outweigh the costs so 10-20 owners? In this case, yes)

    The Court essentially said that such decisions should be locally made by ruling that there isn't anything federal to restrict those actions. What caught everyone by surprise is that there were minimal local rules about this, and that was a shame. It's been going on for quite some time, but didn't get significant media time. The ruling brought the issue up to mainstream attention where it needed to be.

    You gave the example of non-blighted areas being taken - that goes against my personal views of when ED should be used. The fact that loopholes exist should be blamed entirely on the elected officials that created them.

    There are times when the public benefit from a project should require that private owners sell their property at a fair price. That process needs to be clear, open and fair to all sides. It should only be used when the benefit is significant for that local community, the benefit is needed by that community and the chance of harm or stagnation by the community is likely if the action is not taken.

    -- Ravensfire

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