Supreme Court to Rule On 'Obvious' Patents

vocaro writes "The U.S. Supreme Court appears ready to rewrite the standard of what makes a patent 'obvious.' In a case before the court, brake manufacturer Teleflex is accusing a rival, KSR International, of violating its patent on a brake assembly. Large patent holders, including Microsoft, IBM, and Cisco, have submitted briefs supporting KSR, saying that true innovators can have a patent held up against them that reflects nothing more than an obvious combination of preexisting elements, then be told they have to leave the market or pay royalties. The court appears to be on KSR's side, saying that Teleflex's invention would have been obvious to an individual of reasonable skill. During oral arguments, Justice Breyer observed, 'It looks to me at about the same level as I have a sensor on my garage door at the lower hinge ... and the raccoons are eating it. So I think of the brainstorm of putting it on the upper hinge.'"

Comments

Re:I'm confused...

[Macadamizer]

Perceptive post.

Making it no longer necessary for patents to be non-obvious?

Since there is already a statute that requires patents to be nonobvious -- 35 U.S.C. 103 -- it's unlikey that the courts are going to go in this direction.

Shifting the burden of proof so that the patenter (not the alleged infringer) has to prove that the patent is non-obvious? I thought this was legally the status quo, though the quality of some patents would suggest practice differs for software...

Once a patent is issued, it is presumed valid -- which means, it is presumed to be patentable subject matter (35 U.S.C. 101), novel (35 U.S.C. 102), nonobvious (35 U.S.C. 103), and enabled (35 U.S.C. 112). It is up to the person challenging the validity to show why a patent isn't patentable, isn't novel, is obvious, or is not enabled.

I guess they could be trying to move away from the presumption of validity, in which case a patent owner would need to prove that the patent WAS valid in order to assert the patent (the opposite of what we have now). Maybe that's the way we want to go, to a European-style patent system. Personally I don't think it's the right way to go, but what do I know.

Replacing the test with one that better accomplishes the same goal? (Somewhere there must be details of how this is tested, and they're not good?) I guess this seems most likely, given this quote: "I would say its [the lower court's?] test is meaningless," said Scalia. "It doesn't add anything to the question, 'Would a person of ordinary skill in this field have conceived of this idea?' "

To show that an invention is "obvious," you need essentially need to show one or more pieces of prior art that, in combination, "anticipate" or disclose the invention seeking to be patented, and you must show some "motivation to combine" the art into a single invention. The criticisms typically focus either on the fact that the art must meet the standards for prior art -- which usually means a written record -- or that the motivation to combine factor is too nebulous.

It is a tricky test; however, the test is an attempt to balance "hindsight" against wha is truely obvious. The problem is, almost every invention is "obvious" in hindsight -- the current obviousness test is an attempt to weed out hindsight.

Re:Yeah for the raccoons

[Qzukk]

when claiming something is obvious, it begs the question "how come you didn't think of it then?"

Because whether or not I "thought of it" has nothing to do with whether or not it's obvious.

If I walked up to ten random people and said "When it rains, water floods the ditch where I keep my TV and ruins it, what should I do to keep the TV safe?" How many of them do you think will say "move it somewhere else!" Does the fact that they never had to save a TV that was in the middle of a ditch or had their TV short out in the rain make the answer any less obvious?

It May Be Re-Iterate Not Re-Write

[darkonc]

In the arguments, it was pointed out that there are already SCOTUS decisions that indicate that there is more to sustaining a patent than just proving that it is novel*. The problem is that the federal (patent) circuit hasn't been paying attention to these rulings -- part of the fight is whether or not it would be distruptive to simply force the courts and patent examiners to pay attention to the existing SCOTUS authorities that they've been studiously ignoring for the last 20 years.

* (( in my mind, the current test, is really just a reformulation of the 'novel' test, because if you can prove that it isn't novel (new), then it won't pass the current 'obvious' test, and if you can prove it doesn't pass the 'obvious' test, then you've just proved that it's not 'novel'.))

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Re:Yeah for the raccoons

[Dun Malg]

Putting the sticky stuff on paper is obvious, figureing out how to make it stick repeatedly is not obvious.

The adhesive used on Post-Its was invented in 1968. After an initial attempt to use it to create a "sticky bulletin board" (a failure), it was set aside until Arthur Fry came up with the idea of creating sticky, reusable bookmarks in 1974. Post-Its weren't waiting for the glue. They were waiting for Arthur Fry.