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

[flyingsquid]

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

In related news, a Supreme Court Justice is being sued for patent infringement by DoorCo, a manufacturer of garage doors and door sensors...

Re:Yeah for the raccoons

[Harmonious Botch]

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

We finally got a judge that was smarter than a racoon.

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

[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

[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

[RajivSLK]

Umm, I think raccoons ate your reading comprehension.

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

[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

[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]

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.

Slashdot patents

[Anonymous Coward]

Uh no.. Will Slashdot lose its patent on dupes?

Patented already

[IWannaBeAnAC]

'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.'

Too late dude, I already patented that.

obvious

[Rudisaurus]

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.'"

Ah -- the old "raccoons eating the hinges" analogy.

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: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.

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'.))