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."

Comments

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

[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

[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

[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 clamoring for patent reform can be solved by loosening standards that maintain entrenched patents. One way that can be achieved is to open up the definition of obviousness, thus allowing some patents to be more easily overturned. There are hundreds of standards that can be lowered, or opened if you prefer, allowing for more entrenched patents to be overturned.

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]

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?

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.

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

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?

[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.

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.

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: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.

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

#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).

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: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: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 available to it, get invalidated, or else more resources need to be given during the examination process (such as better search tools, and more time to gather and interpret the prior art) which boils down to a costlier PTO (they have a goal of reaching 4,000 examiners when I can recall a period during the Carter administration when there were less than 1,000). Part of a functioning patent system in a real world must include some degree of administrative convenience in setting standards like this as opposed to some theoretical perfect world.