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

Yeah for the raccoons

[Pharmboy]

Gotta love the analogy with the raccoons. Sounds like a judge finally gets it.

Re:Yeah for the raccoons

[Rodyland]

As with most, inclined to agree, however I like this quote from the article:
In hindsight everybody says, 'I could've thought of that,'...

Strikes me as true, and as always when claiming something is obvious, it begs the question "how come you didn't think of it then?"

I think this exposes a fundamental problem with the system - you have judges and lawyers deciding what is and isn't obvious/patentable. And I think that a swing too far in the opposite direction would be just as harmful as the (current) swing in the direction of extreme patentism (hah, I just made up a word). Of course, it'd be an interesting thing to behold.

Re:Yeah for the raccoons

[Ucklak]

Didn't think of it then because raccoons weren't a problem before.

Why should I pay someone for an idea I had just because they account for raccoons first?

There shouldn't be a patent for any specific pattern of 4 screws on a piece of material yet that is what the case is about.

Microsoft wants us to pay them for double clicking icons. What if a double click is an oops click?

I'll patent the process of unbuckling your seatbelt as you take the keys out of the ignition at the same time as I thought of it before I heard that it is a procedure that UPS mandates their employees use.

Who is right then?

Re:Yeah for the raccoons

[raehl]

Strikes me as true, and as always when claiming something is obvious, it begs the question "how come you didn't think of it then?"

Because they didn't have a reason to think of it?

Or it uses new technology didn't exist when they last encountered the problem?

For example, good, free database software has recently become available, making it feasible for many people to apply databases to problems who didn't have that option before.

So does that mean the first person in any industry to become aware of database software should be able to get a patent on "Using a database to solve this problem"? No. And letting the first person to realize this obvious application of databases to patent it is BAD for EVERYONE.

Re:Yeah for the raccoons

[Pharmboy]

No matter where you "draw the line" in reference to what is obvious and what is not, SOMEONE will always get hurt. Absolute rules, while sometimes necessary, tend to do that.

I believe the goal is to set a rule that hurts as few as possible, and with the same number of people on both sides of the issue. The goal of any judicial system isn't perfection, just fairness.

Re:Yeah for the raccoons

[Harmonious Botch]

...it begs the question "how come you didn't think of it then?"

Because I wasn't being paid to design one.

Re:Yeah for the raccoons

[JourneyExpertApe]

Strikes me as true, and as always when claiming something is obvious, it begs the question "how come you didn't think of it then?"

Isn't the whole point here that KSR did think of it, and they just thought it was too obvious to patent?

Re:Yeah for the raccoons

[raehl]

Strikes me as true, and as always when claiming something is obvious, it begs the question "how come you didn't think of it then?"

Also, what about cases where the whole problem is someone else DID think of it? Or lots of someone elses thought of it?

If you patent something that 10 other people independently start doing, doesn't that kind of demonstrate that it was pretty obvious?

Re:Yeah for the raccoons

[dgatwood]

Indeed, the test of obviousness should be whether someone reasonably skilled at the art would have arrived at a similar solution given the same problem. If the answer is "yes", it is obvious EVEN IF THE PROBLEM ITSELF WAS NOT OBVIOUS OR COMMON. Of course, by this standard, 99% of patents should not be valid. 99% of patents should not be valid.

As for the question of why someone else didn't think of it first, I can't count how many patented designs I've seen and said "I can't believe they got a patent on that. I had that idea [n] years ago, but A. didn't have any financing to develop it, B. felt that the technology hadn't quite matured to the point that it was practical/usable, or C. didn't think there was a big enough market for it. Half the time, I've had somebody suggest the idea TO ME out of the blue, then said "hey, I thought of pretty much the same thing [n] years ago", THEN two or three years later, found out somebody turned it into a product and patented it.

Case in point: a music stand with an LCD panel. The reasons I didn't move forward with that were A. no money, B. no time, C. I thought it would be better to wait until digital paper became more readily available because LCDs were non-optimal for the task, and D. I didn't think I could start a company to manufacture such a product and sell enough to make it worth quitting a job that actually pays me money. It was suggested to me by someone out of the blue in 2001 or 2002. I'd thought of the idea in about 1999. It was obvious then, and even more obvious now, in 2006 when somebody finally built such a product, but I'd be surprised if they didn't have at least one or two patents on that breathtakingly obvious idea.

What they don't have (AFAIK) are the UI ideas I came up with for making it better... which might still be obvious... but... basically use an FFT to try to guess (even in the face of polyphony it should work well enough unless it's some weird 20th century piece with nothing more than a bunch of octave skips on a single tone or something) where you are in the piece and automatically turn pages. Okay, that's been done for solo instruments, but AFAIK, not for piano. Oh, yeah. I want this in a PIANO music rack. Music stands are cute, but a piano music rack would rock.

Anyway, back to what's cool about my version.... As an option, instead of turning the page, if so desired, the pages would slowly slide so that two pages are on screen at once with a third moving on and a fourth moving off. That way, you never lose track of where you are because the page is always almost exactly where it was before you looked up.

Another idea was to make this be wirelessly programmable via 802.11 (I'd probably pick Bluetooth if I were designing it now). Either that or cable it up with a FireWire cable so that a single cable provides power and data. Again, you'd need digital paper for that to be practical....

$10 says that somebody will design one with most or all of these features within five years and will successfully get a patent based on the idea. When it happens, feel free to use this post as proof that the ideas are all obvious (unless I create it, of course...).

Re:Yeah for the raccoons

[Macadamizer]

Indeed, the test of obviousness should be whether someone reasonably skilled at the art would have arrived at a similar solution given the same problem. If the answer is "yes", it is obvious EVEN IF THE PROBLEM ITSELF WAS NOT OBVIOUS OR COMMON. Of course, by this standard, 99% of patents should not be valid. 99% of patents should not be valid.

Just curious, why do you believe 99% of of patents should not be valid?

How do you propose to perform your test? If others "skilled in the art" already know that there is a solution, then you are injecting hindsight into the equation, and EVERYTHING is obvious once you have hindsight.

As for the question of why someone else didn't think of it first, I can't count how many patented designs I've seen and said "I can't believe they got a patent on that. I had that idea [n] years ago, but A. didn't have any financing to develop it, B. felt that the technology hadn't quite matured to the point that it was practical/usable, or C. didn't think there was a big enough market for it. Half the time, I've had somebody suggest the idea TO ME out of the blue, then said "hey, I thought of pretty much the same thing [n] years ago", THEN two or three years later, found out somebody turned it into a product and patented it.

The purpose of patents, as is oft repeated, is to advance the useful arts (whether it does a good job or not is not really the point here, though!). A patent, for better or worse, at least makes public the invention, so others can see it, benefit from it, and build upon it -- maybe not immediately, but eventually. If you don't bother to tell anyone about your inventions, or don't bother to publish papers or put up a webpage or whatever, then the public is not benefiting from your invention, so you are not entitled to a patent (under current law). Someone else who comes up with the idea, dilligently works to develop it, and then gives the knowledge up to the public IS entitled to a patent.

But just because you claim to have thought of something first doesn't make another's invention obvious. How do you prove that you came up with it first? Is the patent office or the courts just supposed to take your word for it?

If you really want to keep others from patenting something you invented "first," put up a webpage, publish a paper, let the world know about your "obvious" invention -- that's how you can do this. Coming back 10 years later when someone else is successful and sitting back and complaining that it was "obvious" because you invented it "first" doesn't do any good at all.

Re:Yeah for the raccoons

[chefmonkey]

I'm way too familiar with patents, and my experience is that the vast, vast majority -- I'm talking two to three sigmas here -- are issued not because someone thought up a novel solution to a problem, but because someone thought up a stunningly obvious solution to a newly emerging problem.

It's too late for those patents that have made it out of the gate already, but I have long held that there should be a small pool of engineers -- you could probably even find people do do it on a non-paid volunteer basis -- who were involved in the patent process in a very specific, blinded fashion. The way it would work is: as part of the review process, the patent reviewer would state the problem the patent was trying to solve as an unsolved problem. This problem would then be sent to one or more of these engineers. The engineers would consider the problem, and have a short period of time to submit one or more potential solutions that solve the problem. If any of the potential solutions substantially replicates the claims of the patent under review, it would be rejected as obvious.

Sadly, this makes *way* too much sense, so I doubt it would ever be seriously considered by the USPTO.

Re:Yeah for the raccoons

[Macadamizer]

On the other hand, you have patents on portable electronic devices for sending and receiving email--- that's bloody fucking obvious, and not just in hindsight. Portable email was not a solution waiting for an insightful genius to discover it, but a solution waiting for technological progress to make it feasible.

If this is your test for obviousness, then NOTHING is patentable, because everything is just "a solution waiting for technological progress to make it feasible." Fortunately (or unfortunately, depending on your position in this matter), our patent system doesn't just look at "ideas," it looks at the idea plus a "reduction to practice" -- in other words, the guy that says "I wish I could take my email with me" doesn't get a patent, but the guy that actually figures out HOW to do it does. We give patents based onthe invention of the "technological progress" that makes the solutions feasible.

As noted in another post, the first NTP patent was filed in 1991 -- was a portable device for email "bloody fucking obvious" in 1991?

(BTW, just for the sake of disclosure, I have no love for NTP, and actually wrote a brief in support of RIM at the CAFC, and think RIM got fucked -- but not because of NTP's patents being obvious, but for other reasons, specifically the extraterritorial application of U.S. patent laws.)

Re:Yeah for the raccoons

[Copid]

If this is your test for obviousness, then NOTHING is patentable, because everything is just "a solution waiting for technological progress to make it feasible." Fortunately (or unfortunately, depending on your position in this matter), our patent system doesn't just look at "ideas," it looks at the idea plus a "reduction to practice" -- in other words, the guy that says "I wish I could take my email with me" doesn't get a patent, but the guy that actually figures out HOW to do it does. We give patents based onthe invention of the "technological progress" that makes the solutions feasible.

If everybody has the same obvious idea and you're the first one to figure out how to implement it, you should get a patent. On the implementation. Example: Everybody wants a portable device that can receive email. No portable network hardware is available. Portable network hardware becomes available from a third party and you're the first slob to crank out an email device with the network hardware in it. Should you get a patent on how you hooked together the parts? Maybe, if it's sufficiently clever. Should you be able to patent the general idea that everybody has been chomping at the bit to implement? I certainly don't think so.

Re:Yeah for the raccoons

[shaitand]

"Just curious, why do you believe 99% of of patents should not be valid?

How do you propose to perform your test? If others "skilled in the art" already know that there is a solution, then you are injecting hindsight into the equation, and EVERYTHING is obvious once you have hindsight."

99% is a made up number that any reasonably thinking individual can assume means "nearly every patent" when used in that context. However, you have established where he got the idea with the second paragraph. I trust that nobody is foolish enough to think that there are no exceptions where something is NOT obvious in hindsight, so you yourself surely must have meant 'almost everything'.

If something is obvious in hindsight then it is just a progressive step built upon the existing state of invention. Progressive steps are not truely innovative things that are worthy of patents. The reason is that sooner or later someone else would have made that step. Granting patents on things that would be discovered and become available to the industry without patents hinders forward progress rather than helping.

The standard for a patent should not be whether or not effort went into coming up with a solution. The standard for a patent should be whether or not any other human being would have ever come up with that solution withen the length of the patent. Patents are a government granted monopoly and should not be granted on a daily basis!

There are probably only a couple dozen patents that should have been granted this century.

Re:Yeah for the raccoons

[Chandon Seldon]

That's actually a really good criteria for patents: If you can duplicate the item without reading the patent, the patent isn't benefiting society. The other important rule would be: If you can't duplicate the item by reading the patent, the patent is fraudulent.

Re:Yeah for the raccoons

[Dun Malg]

If this is your test for obviousness, then NOTHING is patentable, because everything is just "a solution waiting for technological progress to make it feasible."

Bullshit. What technology were Post-Its waiting for? Or better yet, the high pressure McCoy automatic oiler, which used tech no more advanced than the steam engines it served? Steam engine parts were oiled by hand with oil cans for 20 years before the automatic oiler was invented.

As noted in another post, the first NTP patent was filed in 1991 -- was a portable device for email "bloody fucking obvious" in 1991?

Jesus, if anything is bloody fucking obvious, it's the observation of "man, I wish it were possible to make one of these things that was portable." The list is unbelievably long: phones, video cameras, calculators, TVs, radios, DVD players, and yes, even networked computers running a mail reader! Just because it took time for large LCDs, low power CPUs, and high capacity batteries make it possible to finally run that email app on a goddamn 2-way pager does not make it non-obvious before then.

Depends on how they write the rule.

[raehl]

The problem with a lot of these obvious patents isn't whether the invention was obvious or not, but whether the patent is an invention at all.

A cotton gin is an invention, and should be patentable. Mechanically removing seeds from cotton is a problem, and shouldn't be patentable.

Re:Because of Submarine patent trolls

[vertinox]

Strikes me as true, and as always when claiming something is obvious, it begs the question "how come you didn't think of it then?"

Well most of these people actually do think of the solution and actually create a working product, but then a Submarine Patent Troll comes out of the woodwork telling them that their actual invention violates their vague patent that they never bothered to bring to market or tell anyone else about.

That is the key problem here... Not that it is just obvious, but they are going after people who do come up with the idea themselves rather than those who have stolen the idea from them.

Re:Because of Submarine patent trolls

[Rodyland]

I think you have nailed the current problem - the patent trolls who patent things that others have done but didn't think it was patentable/worth patenting. Of course, prior art should invalidate the patent, but that only works if you've got the money to pay for a lawyer, which brings me back to what I said above, and what appears to have been ignored. The problem with the system is the requirement for judges and lawyers to make decisions that they are seemingly not qualified or able to make.

It's looking good that the CAFC will be reigned in

[mavenguy]

Standard disclaimer: I'm not a lawyer, less a Supreme Court expert, but I am a former patent examiner.

The the definitive previous case by the SCOTUS on the interpretation of obviousness is GRAHAM v. JOHN DEERE CO. in which the Court basically concluded that the 1952 enactment of section 103 of the patent statute was basically a codification of a line of judicial opinions going back into the 19th century (with the exception of a 1941 Supreme Court opinion that appeared to introduce a "flash of genius" test that the new law seemed to overrule in the last sentence of section 103). The "test" that this article mentions is the "suggestion" and "motivation" showings that the Court of Appeals for the Federal Circuit (CAFC) and its predecessor, the Court of Customs and Patent Appeals (CCPA) developed since the Graham decision was handed down in 1969.

The CCPA only controlled appeals from the PTO, which, of course, affected what claims would be allowed. When the issued patents were challenged by accused infringers, the appeals were decided by the regular Federal Circuit courts, which didn't follow the CCPA. In 1982, responding to complaints from patentees that the law was not uniformly applied the CAFC was formed by merging the CCPA with another court and was given exclusive appellate jurisdiction for all patent appeals, and they took their view of obviousness with them.

Now, usually the SCOTUS is pursuaded to review areas of law where there is a diversion of opinions on the law among the various federal circuits; here, there is, by the exclusive CAFC jurisdiction only one, yet the case was selected for review. I haven't seen a transcript of the hearing; it is still possible that the CAFC's "suggestion/motivation" test will survive and this case will be decided narrowly on the facts of the case, but it looks like, even if they do survive it will be in a less severe form than has been.

However, even if they strike down the CAFC's standard I don't think there will be a big impact on the quality of patents being issued, other factors being equal, since the main problem is the often that the prior art made of record is inadequate. Nevertheless, it would be easier to make sustainable rejections, since more prior art references will be available.