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

[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.

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.