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

I'm confused...

[Anonymous Coward]

The article says:

Most major technology vendors would like to see the test done away with as they believe it would make it easier for them to fend off lawsuits from claimants accusing them of patent violations. Microsoft, IBM, and Cisco Systems are among the tech companies that have submitted briefs to the Supreme Court supporting KSR.

Here I believe "the test" refers to the one mentioned earlier: "accepted test for showing that the plaintiff [patenter?]'s invention would have been obvious to an individual of reasonable skill." I'm not quite sure what the article means by seeing the test "done away with":

• Making it no longer necessary for patents to be non-obvious? If so, they badly misunderstood the major tech companys' arguments...they want more patents to be struck down as obvious. The next paragraph characterizes their argument better - they want to avoid the situation in which someone patents something obvious and uses it to sue a real innovator.
• 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...
• 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?' "

I think the article is crap. Legal arguments are quite nuanced, and it seems like the writer has removed too much context to really understand what the Supreme Court Justices are saying in these quotes.

Re:I'm confused...

[Jerry Coffin]

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.

IMO, this is one of the real sticking points: right now, when somebody applies for a patent, they have to declare that they think it's novel. The patent examiner then looks to see if it look obvious (to them). The standard, at this point, however is only that the patent applicant has to show that the "preponderance of the evidence" is in their favor. Oh, and patent examiners virtually never look at anything except older patents and applications.

When a patent is challenged, however, that changes: the challenger now has to show "clear and convincing evidence" that the patent is really obvious after all. This means, from a legal viewpoint, that the patent is supposed to be considered valid, even if there's a fairly strong reason to believe otherwise.

To add to that, nearly every patent office (definitely including the US PTO) gets part or all of its funding from patents that it issues. Worse still, examiners are rated (partly) in terms of the number of applications they examine. Neither of these really encourages patent examiners to do be as thorough as possible and reject all patent applications that really should be (though, in fairness, given their workload, I'm frequently impressed at how good of a job patent examiners do anyway).

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 motivation to combine must be a bit more than "motivation" as most people would think of it. Most of us would think of things like "it saves money" or "it makes the product smaller/lighter/more dependable" -- but when you're trying prove a patent is obvious, you're typically looking at something like combining two research articles, and the motivation to combine needs to be either a direct reference from one article to the other, or a third article that references both the ones you're looking at.

The standard for measurement of many things in patents is the "person of ordinary skill in the art" (POSITA). It seems to me that the POSITA has been reduced to something that bears essentially no resemblance to any real person at all. Instead, it's an almost purely mythical construct, with total awareness of all existing products and publications, and the ability to understand them, but essentially no ability to do any thinking at all. In particular, they can't draw even the most obvious conclusions unless something has been published to "suggest" (i.e. state) that conclusion for them. Even though they're theoretically aware of all papers, they're not able to put any two of them together without specific bibliographic references.

I know of at least one professor from Stanford who argued that putting a current limiting resistor in line with an LED was beyond the abilities of a person of ordinary skill in the art! If memory serves, he even won the case...

Re:I'm confused...

[Jerry Coffin]

Well, there is the affirmative duty for the patentee to disclose anything that might be material to patentability.

Not quite. They're obliged to disclose anything of which they're aware -- but they're not required to do any searching to find anything of which they weren't already aware. At least from what I've seen, most cite things they can't reasonably avoid (e.g. their own earlier patents, papers they've written, etc.) but darned little else. I've seen an "inventor" claim that he'd never read the data sheet for a part he used (he was just such a genius, he knew the pinout without looking...). The data sheet referenced an app note that almost directly disclosed his "invention"...

but considering the penalties for not disclosing material art (loss of the patent, maybe loss of a job to the patent agent/attorney is the Office of Enrollement and Discipline finds their failure to disclose egregious enough), I think that most patentees to a better than average job of disclosure.

They can only lose much of anything if it can be shown that they really were aware of the material. If most do a better job than average, either there's a lot of skew in that average, or else you're using "average" a bit differently than I learned it in statistics class (or maybe my memory's going bad after all these years -- though I still very clearly remember a girl who always showed up in some of the tightest jeans I've ever seen...)

What would YOU do if someone was paying you $300 or $400 per hour to say something like that!

Having previously been an expert witness, and having declined the umm...honor in at least one other case, I think I can say with reasonable certainty that I'd decline in a case like that. Come to think of it, nobody's asked me to be an expert witness for a while though...

Who makes the new laws?

[gravesb]

Hopefully, the court won't go so far as to create a new standard, just rule that the current one is not Constitutional. That would force Congress to write a new patent standard, which is who should be deciding the issue. Patents haven't become high viz enough to be a campaign issue, but I'd love to see an advisory panel of both industry and academic representatives formed to create a better system, and then have Congress vote on that.

Re:Who makes the new laws?

[Macadamizer]

Hopefully, the court won't go so far as to create a new standard, just rule that the current one is not Constitutional. That would force Congress to write a new patent standard, which is who should be deciding the issue. Patents haven't become high viz enough to be a campaign issue, but I'd love to see an advisory panel of both industry and academic representatives formed to create a better system, and then have Congress vote on that.

I'm not convinced that our congresscritters would be able to come up with any more competant test for obviousness than the one we already have!

However, there is a patent reform act making the rounds through congress right now. I haven't looked at it recently, but I remember when it was first floated, there were a few eye-openers in the act, including (if I remember correctly) a shift from U.S. style "first to invent" to a European-style "first to file" -- I don't remember if a switch to "absolute novelty" was also included. Also, a very strict limitation on continuation and divisional practices, a limit on the number of claims, and a requirement that all patent applications be made public 18 months after filing (current is generally only patents that are also being filed in foreign countries are published after 18 months).

Re:Because of Submarine patent trolls

[Macadamizer]

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.

What is a "submarine patent troll?" The 1995 Amendments to the patent laws pretty much ended the endless continuation practice that Lemelson, the original "submarine patent guy" used to his advantage.

BTW, patents are public record -- they are all publicly available on the USPTO website. Should a patent holder have to go out and notify any potential infringers before they begin developing a product?

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.

How do you propose we sort out the "true" infringers who are "stealing" an idea from those who came up with the idea independently? What test to you propose to determine what independent development is? How far "back" in the development stream do you need to go to show "independence?"

Re:Yeah for the raccoons

[eric76]

Actually, it is a somewhat ambiguous sentence:

'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.'"

So you can interpret it to mean that the raccoons are eating the sensor. You can interpret it to mean that the raccoons are eating the lower hinge. Or you can even interpret that to mean that the raccoons are eating the garage door.

Since it is ambiguous, we can interpret it as we wish. I choose to interpret "it" as referring to the hinge. The sensor attracks them to the hinge. Move the sensor to the top hinge and the raccoons will have more trouble reaching the hinge.

Re:Because of Submarine patent trolls

[Macadamizer]

Yes they both have extensive articles on Wiki. Although I may have taken the liberty to combine the two termns, but if you really don't know... Read the articles.

I know exactly what both are. Submarine trolls may have been an issue at one point (see my earlier post), but are really not an issue any more. Even the wikipedia article is clear on that. My point was basically that submarine patents aren't really an issue any more (if they ever really were), and certainly aren't a reason now to mess with the obviousness standard.

The point is that Patent system doesn't require you to actually make an invention, but rather have a description on what these invention does. These things can often be very vague and people have been known to patent the wheel on occasion shows a big flaw in the Patent system.

You do realize that the wheel patent was in Australia, right?

Yes, sometimes weird things do get through the patent office. But consider this -- there are many thousands of patents filed every week with the patent office. The patent office is a profit center -- they bring in far more money than they have a budget -- but congress siphons off most of the patent's office revenues for other projects, and leaves the patent office with far less staff and resources than they would have if congress left the patent office to support itself. Generally speaking, the patent office does a pretty good job with what it has.

As far as the requirements for a patent go, a patent must make an "enabling disclosure" -- in other words, one of "ordinary skill" in the relevant art must be able to take the patent and, without "undue experimentation," practice the patent. What is sufficient to provide an "enabling disclosure" is different from art area to art area, and different from invention to invention -- but it is not generally true that a vague and hand-wavy disclosure is sufficient to result in an issued patent. It may happen sometimes, but it doesn't seem to happen very often.

And when it does, such patents can be successfully challenged in court.

Re:Yeah for the raccoons

[alexjohnc3]

What you said is misleading. Hurting the fewest number of people as possible isn't necessarily fairness. If ten people are using my ideas that I've patented (assuming the patents aren't "obvious" ones) in their products and I want compensation for this, then it's fair for me to get this compensation even if more than one person gets hurt, right?

Re:Yeah for the raccoons

[topham]

A method of reliably transfering data using a protocol intended for a radio link should be patentable.

Using said radio link to transfer email should not; it should be tied to the original e-mail patent, or not at all.

A menuing system, like that on Apple's iPod should not be patentable; anyone designing a device with a screen the size of Apples has a significant chance to stumbling on the same design.

The problem as I see it is 'obviousness' is being determined by people who aren't actually familiar with the process of design. Instead they assume that if they haven't read about it in research material it must therefor not be obvious.

I wrote a program on the Commodore 64 which implemented Bresenham's line algorithm; I didn't even know about it, I did it based on what I learned in mathematics in grade 5. I don't think I'm brilliant, hence, I don't think software and algorithm should generally be patentable.

Re:I invented cheesy mashed potatoes.

[Anonymous Coward]

I have the ultimte test of patentability.

If it takes more time to fill out and file the patent application than it did to invent the new work the patent should be thrown out and never spoken of again.

Now if you'll excuse me I have some jiffy pop to microwave.