Slashdot Mirror
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."
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.
Clear, Dark Skies
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.
A NYC lawyer blogs. http://www.chuangblog.com/
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...)
/* "Specialization is for insects." -Heinlein */
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?
John
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."
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 of patents. Maybe there are extremily innovative things that require patents (though I'm not convinced), but things like this, certainly do not fit into that catagory.
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 said to be possible only on "the vernal and autumnal equinox, when the sun crosses the equator, making night and day equal on all parts of the earth."
"Academicians are more likely to share each other's toothbrush than each other's nomenclature."
Cohen
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.
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.
> 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 the possibility of frivilous patents and must bog down the courts and place a great burden on the industry.
While not over-optimistic on its capability to solve the problem, the Peer to patent project 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 examiner.
This seems a nice balance to me between ease of implementation (very few changes to the law and practice of the patent office are required to implement this initiative) and likelyhood of improving the situation.
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 Asia."
http://en.wikipedia.org/wiki/Gordian_knot
Just saying it like it are.
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 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) 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.
"Some days you just can't get rid of a bomb."
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?
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.
What if the Hokey Pokey really is what it's all about?
IIRC, before Newton, the belief was that there were two forces, one that caused objects to move straight down (like the apple), and one that caused objects to move in orbits (like the moon moving about the earth or earth around sun). Newton showed that only one force was needed.
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.
-
- - You can't take something off the Internet! That's like trying to take pee out of a swimming pool.
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.
I know this may seem crazy, but I am going to actually discuss the contents of the article . So far, only about 3 posts have been on topic. A new low.
The court is being asked to interpret "obviousness" as it applies to COMBINATIONS of EXISTING DEVICES/TECHNOLOGIES (Specifically, off the shelf products).
So, 10 years ago, people started selling TVs with Built in VCRs. Both underlying products (TVs and VCRs) are effectively public domain (in concept, some implementation details may not be -- not that it matters for this case), but by assembling them into one package have I created a new and patentable invention?
I personally feel the answer is NO. I think most Slashdot readers would agree. The Software companies are on the GOOD side of this one. Software, perhaps more than any other industry, is all about adding and combining existing tech.
The Drug Companies are against this sort of thing because it reduces their ability to maintain patents. They like being able to patent new methods of delivery existing drugs, for example.
To me, a patent should protect an underlying technology that was difficult to develop/invent. Combining two things, even if combining them ISN'T obvious, doesn't (IMHO) warrant protection because there was no technological risk, no R&D, etc...
- 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.
- 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 for why we want to do this.
- The person who is analyzing the differences is a person having ordinary skill in the art (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.
This post expresses my opinion, not that of my employer. And yes, IAAL.
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 rulings must be based on a constistant application of legal reasoning. Applying a certain legal basis in one case to reach what seems like the "right" result can easily turn disasterous when consistancy requires you to apply the same rule of law in ALL cases. It can be especially problematical when you are reversing prior rule of law in order to reach the "right" result in teh current case, and you are faced with consistanly applying that reversal of law to all cases.
Have you read the actual ruling, and the several precedents cited demonstrating "public purpose" as falling under "public use"? If you want to exclude "public purpose" from "public use" then you must be aware that you are actually reversing the standing understanding of the Constitution, and that you are erecting a bar to prohibit the IMO) very legitimate and important examples cited in the ruling.
If you don't feel like digging through the ruling itself, at least read the bottom half of my post over here where I describe the Hawaii Eminent Domain example. An example which would be barred as unconstitutionall under your more narrow interpretation. In order to interpret the Consitituion as barring the current case, you are interpreting the consitition in a way that would bar the Hawaii example.
Whether or not "Party B" is "unknown" or "unspecified"
I'm not sure if I was clear enough on the signifigance of that point... or maybe I'm just being redundant here... if if redundant I appologize...
but the reason I see that point as signifigant is that it rules out the (clearly unconstitutional) concern that the government might have been acting for the purpose of enriching a private entity. The government's purpose and intent here truely was public in nature.
enrich a private entity
You are not enriching a buyer if the land is put for competitive sale on the market. A company can already buy an office site at market value in New Jeresy or Pennsylvania or anywhere else. Buyers are not meaningfully encriched merely by having one additional location up for sale on the market.
There really isn't any enrichment issue here.
expense of another private entity
I agree that a signifigant inconvienence is put upon the affected entity - that is inherent in of any application of Eminent Domain. However the Constitution requires that Eminent Domain may only be an abrigment of choice (an abridgment of the choice not to sell on the market), that it may not be a taking of value from one party to any other or from one party to the government.
An intrusion, yes. A singifigant inconvience, yes. An abrigment of market choice, yes. All inherent in any case of Eminent Domain. But this case was not an enrichment of one at the expence of another. It was not government coercion to transfer of wealth.
declare an "economic development zone" and provide suitable incentives for those who desire to develop that zone to purchase the property in question on the open market at the going market value.
Your suggestion, while far more attractive than using Eminent Domain, is unfortuantly unworkable. You wind up with a swiss-cheese of unusable land. You have individual owners hoping to strike it rich by obstucting devlopment and running up prices far enough to kill any project, and you end up with stubborn owners refusing to sell and creating swiss cheese holes killing the project
- - You can't take something off the Internet! That's like trying to take pee out of a swimming pool.