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

[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

[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

[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

[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

[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

[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.

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 of the thing.

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

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.)

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.

[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.

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: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!)

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:"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...)

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

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.

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.

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.

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 ...