Supreme Court to Rule on 'Obvious' Patents

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."

Very narrow ruling

[ryants]

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.

Re:Very narrow ruling

[happyemoticon]

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.

Re:Very narrow ruling

[anagama]

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

Re:Very narrow ruling

[darkmeridian]

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.

Re:Very narrow ruling

[onemorechip]

he Supreme Court last visited patents when it decided Markman in 1997.

Aren't you a little out of date [cornell.edu]?

Precent

[EmbeddedJanitor]

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.

Re:Very narrow ruling

[mattmacf]

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.

Re:Very narrow ruling

[Ohreally_factor]

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

Re:Very narrow ruling

[norton_I]

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

Re:Very narrow ruling

[Ohreally_factor]

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.

Re:Very narrow ruling

[mrchaotica]

...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:Very narrow ruling

['nother poster]

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.

Re:Very narrow ruling

[mrchaotica]

Exactly how does "science and useful arts" not include Intellectual Property?

You're entirely misunderstanding the thing. You seem to be trying to directly substitute the two phrases, and read it as "To Promote the Progress of [Intellectual Property]." Well, that's wrong.

First, the term "Intellectual Property" did not exist when the Constitution was written. It didn't even enter their minds that ideas could be considered property in the same way that land or objects were; they thought of copyrights and patents as "monopolies." So you can't make that word substitution to begin with.

Second, the important part is "promoting progress," and the rest of the clause only exists to clarify that they mean progress in terms of increase of human knowledge and culture, as opposed to some other kind of progress. It does not mean "promoting property."

"Science and the useful arts" refers to the ideas themselves, not any other issue attached to them.

In other words, you could rewrite this:

To promote the progress of science and useful arts,

to this:

"We want to encourage growth in scientific knowledge and culture,"

and this:

...by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;

to this:

"...and this is the method by which we'll try to achieve that goal: by inventing temporary monopolies to people that create new works and ideas so that they'll be encouraged to create even more."

As you can see, the stated goal is progress, not monopoly rights and compensation. Those are only a means to the end and side effect.

Get it now?

Re:Very narrow ruling

[Anonymous Coward]

All the Supremes can do is rule on this particular case

Meanwhile, Diana Ross, Smokey Robinson, and the Miracles all dissented.

Re:Very narrow ruling

[Russ Nelson]

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.

Re:Very narrow ruling

[Kr3m3Puff]

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

Re:Very narrow ruling

[IconBasedIdea]

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."

Re:Very narrow ruling

[Internet Ronin]

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

Re:Very narrow ruling

[ajs318]

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.

Re:Very narrow ruling

[Arker]

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:Very narrow ruling

[ajs318]

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!

Re:Very narrow ruling

[bytesex]

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.

Re:Very narrow ruling

[MarkGriz]

"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?

Re:Very narrow ruling

[ChrisA90278]

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.

Re:Very narrow ruling

[stubear]

that should read, "The Supreme Court does not...".

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[account_deleted]

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What?

[Aqua_boy17]

Um, IANAL either but I have to take issue with the second example you cite.

In that case, the court ruled in favor of a local government stating that it was within its rights to confiscate a piece of private property and offer it for sale to private developers. That is a much less passive picture than the one you are painting and has led to a conservative backlash. Remember this story? [slashdot.org]

I have followed this issue closely as my own city government (Hollywood, Florida) was one of the first to report nationally that it would sieze private properties in our downtown area and turn them over to developers. So far, the city has lost a couple of court challenges but they have not lost sight of their greed^H^H^H^H^H^H^H^goal to sieze this property and give it to developers at a bargain price. Apparently the Supine Court (as my Father is fond of calling it) has ruled that one of the basic tenants of a free society, the right to own private property, no longer applies when the owner is in the way of a local government's pet project.

Re:What?

[Ravensfire]

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

Re:Very narrow ruling

[Alsee]

I agree the Eminnent Domain case is widely missunderstood, and I think you're still missunderstanding it... or at least explaining it poorly.

As I understand it, the issue is that the Constitution permits the government taking of property (with just compensation) for "public use". The case at hand was the taking (with just compensation) of private property for the public purpose of economic stimulous and development, and the turning over of that property for private use in commerce.

So the question was, does the Constitution's "public use" clause narrowly mean public usage such as roads and parks, or does "public use" encompass "public purpose", which may ultimately result in private usage of that property.

My initial reaction on hearing the superficial case in the news was outraged opposition, on reading the ruling I am reluctantly forced to agree that the neccessary and historical application of the clause does indeed include "public purpose". That rejecting such an interpretation would bar too many legitimate and vital applications of the Eminent Domain clause.

One of the most important (and oft overlooked) aspects of this case that alleviates my concerns is that it was not in fact a case of taking property from person A in order to turn it over to favored private party B. It was a taking of property from party A to the government itself, and an economic development zone plan to sell it to some unknown unspecified party B.

Had some company gone to the government and said "I want that person's land", and the government tried to seize that land to force that sale, that would have been a Very Very Bad Thing. That would have been Unacceptable. But this really was a case of the government taking the land to itself for a public purpose, without being for the benefit of any identifiable predetermined private party. While the case still makes me uncomfortable, I think that key point makes it an acceptable and correct ruling.

-

Re:Very narrow ruling

[bigpat]

Had some company gone to the government and said "I want that person's land", and the government tried to seize that land to force that sale, that would have been a Very Very Bad Thing. That would have been Unacceptable. But this really was a case of the government taking the land to itself for a public purpose, without being for the benefit of any identifiable predetermined private party. While the case still makes me uncomfortable, I think that key point makes it an acceptable and correct ruling.

What? You

Re:Very narrow ruling

[Alsee]

Isn't that laundering, just applied to land instead of money?

I'm not certain I accurately understand what you mean by "laundering", but if you mean what I think you mean then the answer is No. An unconstitutional government purpose is unconstitutional and no amount of "laundering" or deception can remove that taint.

A government council may establish a variety of regulations reguarding school districts and student bussing. For example they may establish a regulation for saftey purposes that school districts

Re:Very narrow ruling

[Alsee]

Akk, this post got too long. Several parts need a solid trimming. To quote some famous writer or another, sorry but I didn't have the time to make it shorter. Hehe. Oh well.

"Public use" means just that--public use.

It is extremely easy and common to decide which way you think a case should go based on the immediate case at hand. In fact my initial reaction was exactly the same as yours. However in law - esecially in Constitutional law - you must rule upon the exact underlying legal mechanisms involved, and r

Re:Very narrow ruling

[Comatose51]

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:Very narrow ruling

[Vengie]

Please start your posts with IANAL instead of ending it with IANAL. That way, those of us that actually went to law school don't have to get angry when you miss the mark. Thanks. It's not your fault, but in all honesty, I don't pretend to understand things I dont understand the finer mechanics of. SCOTUS rules on major issues all the times, and regularly re-interprets precedent.

Re:Very narrow ruling

[Anonymous Coward]

Please start your posts with IANAL instead of ending it with IANAL.

And please start your posts with "I am anal" so we know we can avoid trolling.

Re:Very narrow ruling

[DrSkwid]

Dude, this is /. it is best to assume NO-ONE is a lawyer, even if they say they are !

FYI. I went to comprehensive school.

Re:

[account_deleted]

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Re:Very narrow ruling

[mikiN]

I asume that every posting starts with IANA*

Of course every posting starts with IANA. How else would your computer know what parameters to pass in the various protocols it uses when posting to Slashdot? Who else makes sure the '.org' TLD isn't taken over by the porn industry or Scientology? Who else assigns the IP ranges to the Regional Internet Registries that Slashdot's ISP uses?

Yep, cheers to IANA for keeping all that organized.

SCOTUS?

[OldManAndTheC++]

Ugh. What a horrible acronym. It sounds like some nasty disease:

Doctor: So, what seems to be the problem?
Patient: Well, I have this persistent burning sensation, um, "down there".
Doctor: I see. Do you also feel as if a hundred tiny spiders are crawling up your anus?
Patient: Wtf!? How did you know that!?
Doctor: Uh-huh. Sounds like SCOTUS. You'd better drop your pants. I'll get the probe ...

Even more SCOTUS?

[Jesus_666]

I think it sounds more like some kind of ammunition.

"I don't care whether they have the bigger guns. We're using APDU rounds; I want to see them try to trump that!"
"Well, sir, they're using SCOTUS rounds."
"Okay, we're fucked, then."


Alternatively, SCO might have decided to go international and call their main branch the Santa Cruz Operation of The United States.

Re:SCOTUS?

[Robmonster]

Well it was in the subject line. What more do you want?

Re:Very narrow ruling

[kf6auf]

The other reason Reagan created a federal circuit specifically for intellectual property issues is so he could appoint all the judges since they liberal judges weren't helping his policy much. Everything else just helped him sell the idea to everyone else.

Re:RTFA Very Carefully, It's poorly worded

[norton_I]

I believe (without much in the way of of evidence to back this up) that the costs of running the patent office are greater than the application fees -- therefore might be to their financial advantage to have fewer applications. Given the current backlog, any reduction in applications will take 5-10 years to show up in reduced personel, so likely would not require firing people, but merely not replacing examiners who retire or quit over that time frame.

It really is disgraceful the way the patent office is forced to operate -- they are given too little time to examine patents, the cost of rejecting them is even more time that they don't have, and they are unable to turn applications around in a timely fashion. I don't know how to calculate the cost to our economy of this, but I suspect it is high.

Re:RTFA Very Carefully, It's poorly worded

[Alsee]

I believe (without much in the way of of evidence to back this up) that the costs of running the patent office are greater than the application fees... It really is disgraceful the way the patent office is forced to operate

Actually you have it backwards, and it's even more disgraceful then you thought.

The patent office is run as a patent mill with minimal review and minimal expenditures. The applications fees are not being used to fully review (and reject) applications. The fees are being diverted to fund c

Goddman it

[Gleenie]

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?

Re:Goddman it

[x2A]

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

[plover]

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

[Bostik]

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 :)

Re:Goddman it

[Captain_Chaos]

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.

Re:

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Re:Goddman it

[AusIV]

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

[Digital Vomit]

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

Re:Goddman it

[Tablizer]

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

[Quirk]

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

[a_n_d_e_r_s]

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

Re:Goddman it

[mlush]

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

Re:Goddman it

[Reverend528]

I don't get it. He was trying to patent the egg?

Unsurprising.

[porkchop_d_clown]

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.

Re:Unsurprising.

[at_slashdot]

"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.

Re:Unsurprising.

[x2A]

"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 ;-)

Re:Unsurprising.

[DoctorPepper]

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

Re:Unsurprising.

[1ucius]

I think you are misreading the patent-market. . . Big IT is the victim of crappy patents. Who to you think the patent trolls go after? It's not the one man IT shop with $450 in its bank account. It's Microsoft with $40 billion in cash.

Re:Unsurprising.

[Arker]

I think you are misreading the patent-market. . . Big IT is the victim of crappy patents. Who to you think the patent trolls go after? It's not the one man IT shop with $450 in its bank account. It's Microsoft with $40 billion in cash.

Actually, both get smacked on occasion. But clearly, the deep pockets are the obvious target for the patent trolls. The smaller guys mostly get hit when they're competing with someone else... like the guy that makes free software to control model trains. His proprietary competitor apparently lurked on his mailing list awhile, then ran off to patent a bunch of stuff discussed there, then sent a cease-and-desist order. I have a feeling we'll be seeing a lot more of that in the future too.

Re:Unsurprising.

[TCM]

like the guy that makes free software to control model trains. His proprietary competitor apparently lurked on his mailing list awhile, then ran off to patent a bunch of stuff discussed there, then sent a cease-and-desist order.

How can this possibly work? If that's not prior art, then what is?

Re:Unsurprising.

[acroyear]

The point being that the guy making the free software can't afford the defense. Yeah its "obvious" he's in the right and has the prior art (theoretically in the form of the mailing list archives), but he's still got to hire the lawyer and (being a civil suit) deal with at least 2 rounds of appeals.

For someone making something that makes no money, shelling out $100,000 in legal fees to protect it doesn't seem all that smart.

(consider THAT, Mr. Gates... ;-) ).

Re:Unsurprising.

[Alsee]

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:Unsurprising.

[sadtrev]

Big IT is the victim of crappy patents.

Yes indeed. From the petition :
Microsoft has been sued for allegedly infringing dozens of questionable patents in the software field. The lack of access to software prior art, the inability to find the prior art that does exist, and the limited resources of the Patent Office, make searching by the Patent Office particularly ineffective. Given the difficulty inherent in finding software prior art, proving a software patent invalid by clear and convincing evidence, es

Re:Unsurprising.

[pyros]

In fact the large companies stand to lose a lot if obvious patents are struck down.

I'm guessing Microsoft would have preferred that the USPTO declined the Eolas patent for broswer plugins, since that petant cost Microsoft ~0.5 billion dollars. Large companies will lose a number of patents, but so will the IP companies who use the sue-rich-companies-for-infringing-absurdly-broad-a nd-obvious-patents business plan. So it evens out with the effect that all companies, large and small, don't have to worry about

Clogged Dockets

[adageable]

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.

Re:Clogged Dockets

[x2A]

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?

[CodeBuster]

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?

[RowboatRobot]

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?

[kozumik]

> 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?

[Mikkeles]

'.... 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

[kozumik]

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...

[kcbrown]

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.

Re:My prediction...

[Tablizer]

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).
     

Re:My prediction...

[Anonymous Coward]

I'm beginning to understand why people hate lawyers.

I'll be blunt here...

[Firehed]

About fucking time.

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

Finally I can think about releasing my software

[dino213b]

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

Amazon's 1-click buy

[punkguitarist]

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).

Re:Amazon's 1-click buy

[punkguitarist]

I didn't know that, but I'm happy that they too must have realised how outragous this patent is. If they're no longer sueing over it, why have it? "Amazon has got a number of other menacing patents since then, but has not as yet used them for aggression" This statement means that they are still obtaining patents, but not showing aggression towards any infringers of the patent? If I am correct in assuming so, then it is useless to them, and goes straight back to our argument of getting rid of these kinds o

Re:Amazon's 1-click buy

[jnf]

This basically means, 'dont piss us off because we have the patent, but so long as you are not terribly important to us we will remain indifferent'. It's not useless to them, its future ammo.

Waste of time

[rucs_hack]

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.

Re:Waste of time

[DanTheLewis]

The rule is obvious to a skilled practitioner, not obvious to a patent examiner.

Re:Waste of time

[DanTheLewis]

That's the sue-ee's argument all right, that the obviousness rule has not been applied well.

It's hard to say that this one thing would just fix the problem, though. Applying the obviousness test fairly means that the invention has to be pretty explicitly anticipated in the technical literature prior to the patent filing; this eliminates arbitrary guesswork where the court sees a discovery and says "but that's so obvious now that I see how it works." It's unfair to the inventor that actually comes up with a

Re:Waste of time

[cpt kangarooski]

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

[lspd]

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.

like the definition of porno, maybe?

[DanTheLewis]

Except obvious means you don't know it when you've seen it, you know it when you've foreseen it.

Re:Obvious

[mavenguy]

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.

Re:Obvious

[mavenguy]

That's a fair point to make, since, ideally, the law should set a standard from the point of view that considers only the respective positions of the patentee and everyone else (potential accused infringers, not to mention society as a whole). However it is a mistake to ignore the practial impact such a standard imposes on the function of the PTO in establishing the patent grant in the first place. Using a High standard results in either a flood of patents that, in the long run and with more resources avail

Check out the Peer Patent Project

[thbb]

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

Actually followed this...

[thebdj]

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.

Re:Actually followed this...

[Sangui5]

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.

I can't believe no one posted this yet

[deblau]

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.

Re:"Not surprisingly"

[plasmacutter]

huh?

theyre comming in on the side of the defense.. which is being attacked by plaintiffs who have obvious patents..

Oo.. I believe you misinterpreted?

Re:"Not surprisingly"

[Anonymous Coward]

Surprise! You're wrong! The IT firms are against patenting of "obvious" ideas.

Re:"Not surprisingly"

[Daneboy]

No, actually he's right and you're mistaken. It's clear both from TFA and from the posted summary that (a) the DEFENSE is saying that obvious patents should be thrown out, and (b) some big IT firms including Cisco are supporting the DEFENSE in this case.

This isn't really all that surprising, if you think about it. I mean, products like Cisco routers or Microsoft Windows do have a huge number of really obvious features -- And I'm sure the savings would be considerable if they didn't have to hire an army of lawyers to check if every single feature was unpatented (thus freeing up said lawyers to pursue anti-piracy litigation against their users...)

Re:"Not surprisingly"

[zippthorne]

How is being against patenting the obvious different from supporting the entity arguing for not patenting the obvious?

Re:"Not surprisingly"

[bradkittenbrink]

HOLY SHIT! Someone correctly parsed both the article summary and the post they were replying to! This is a red letter day for slashdot.