Supreme Court Justices Discuss The Obvious Questions On Patent Obviousness

from the hopefully-they-get-it dept

It's taken a while, but today was the day that the Supreme Court finally heard the KSR v. Teleflex case on patent obviousness that many have been hoping would reach the court for years. It's not always easy to tell how the justices really feel from what they say, but News.com has a pretty good summary of some of the quotes from the justices that suggests at least a few of them realize what's at stake. Multiple justices seemed to indicate that the current situation takes common sense out of the equation -- and that's a real problem. Chief justice Roberts noted that with the current situation: "It's worse than meaningless because it complicates the question rather than focusing on the statute." Justice Scalia noted that the current "test" is "gobbledygook" and "meaningless." Justice Breyer noted that it's impossible to set a hard definition for obviousness, and that the current situation doesn't allow for the flexibility that's needed to determine obviousness. This is a key point. Supporters of the current system claim that since obviousness is impossible to determine exactly, that there's simply no way to test for it. That's both false and misleading -- since large parts of our legal system involve "tests" that cannot be proven exactly.

The arguments against adjusting the standard for obviousness seemed to be focused on two things: that obviousness is impossible to determine in hindsight and what a huge mess would be caused if the standard were suddenly changed. The first one is certainly an issue, but, again it's something that more flexibility should make bearable. Someone looking to show obviousness would need to show not prior art, but enough evidence suggesting that others skilled in the field were moving towards the same thing prior to the invention at hand. As for the second point, it may very well cause a mess as it opens up new ways to challenge many patents granted over the last couple of decades. However, that's hardly a reason not to fix the rule. If those patents were granted incorrectly, as many appear to have been, then it only serves the original, Constitutional, purpose of the patent system to correct the error, no matter what mess it creates initially. Update: Tim Lee has some more quotes, including the justices smacking down Teleflex's lawyer for saying that various patent bar associations have filed briefs in support of keeping the status quo. The justices note that of course patent lawyers want to keep things as they are, because it allows for more patents, and that means more money for patent lawyers.


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  1.  
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    acousticiris, Nov 28th, 2006 @ 3:24pm

    Is the mess worse than the current mess?

    I find it ironic that a supporter of the current patent system would argue that changing it would create a "mess".
    I'm not against software patents or patents in general, but one need not read too far into some of the latest patent filings to see that the current system is *far* beyond a "mess".
    Just because you have to make a mess to clean up a mess doesn't mean you shouldn't clean it up. I sincerely doubt that the mess created by fixing it will come close to the mess created by frivolous lawsuits and "extortion-based" business plans that our current patent system invites.

     

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  2.  
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    Susheel Daswani, Nov 28th, 2006 @ 4:14pm

    Changing the Standard

    Yes, I completely agree that the Justices should not fear changing the standard for fear of 'creating a mess'. Probably 90% of patents are not worth asserting/litigating, so the '160K' patents a year cast into question by a changed standard is a red herring.

    This said, I bet the S. Ct. will append, rather than amend, the obviousness test, if they do anything at all. Teaching, suggestion, and motivation in the prior art will be one way to show obviousness, but they'll add an escape hatch. The very hard part is formulating this escape hatch test, as hindsight analysis is a real issue.

    Anyways, a higher obviousness bar will do a lot to improve the ills of the patent system (though I'm sure Mike would just like to get rid of the whole thing :) ).

     

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  3.  
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    arrgster, Nov 28th, 2006 @ 6:54pm

    issue at heart

    I think the issue at heart on this is simply because you invent something do you necessarily deserve the right to be the only one who can make a profit on it. If I invented the wheel yet couldn't think of a good use for it, then someone thought of attaching it to a cart and selling carts. Do I deserve to make a bundle? Also, if I invent a square crappy wheel and attached it to a cart, then someone invented a round one. Do I still deserve to make a bundle? In ether case I'm holding back innovation simply because there is this assumption that I deserve to make some cash. Now the next problem is, would the lack of incentive or the possibility of large powerful entities taking everyones inventions be a hinder to innovation. Kind of hard to say...

     

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  4.  
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    PhysicsGuy, Nov 28th, 2006 @ 7:02pm

    Progression of knowledge...

    Someone looking to show obviousness would need to show not prior art, but enough evidence suggesting that others skilled in the field were moving towards the same thing prior to the invention at hand.

    I fail to see how that shows obviousness. Throughout history the majority of all great concepts were being pursued by individuals or groups in the field of the concept at essentially the same time. It's the natural evolution of knowledge, new concepts are formed with previous knowledge as its foundation. when a new sufficiently significant concept in a branch is developed people skilled in that branch continue on with that as their base for where to go next. As this follows for concepts, concepts give way to inventions therefore you could follow that it's the natural progression for engineers and inventors skilled in a field to design and invent based upon our current concepts and understanding. Given the large amount of people in the world you'd be hard pressed to find any idea that someone else in your area of expertise wasn't already working towards. also, and a more base argument, how can you consider something obvious that requires specialization in a field? to be skilled in a field it's required that you posses expertise and a deeper understand of that field, therefore what's obvious to you may certainly not be obvious to someone with a layman's understanding of the field. ultimately the only way I could see obviousness being rated is by someone who only has a layman's understanding of a specific field. otherwise, if you required the suggestion from the quote above there would be almost zero patents within technical and science based fields.

     

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  5.  
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    Mike (profile), Nov 28th, 2006 @ 8:36pm

    Re: Progression of knowledge...

    It's the natural evolution of knowledge, new concepts are formed with previous knowledge as its foundation. when a new sufficiently significant concept in a branch is developed people skilled in that branch continue on with that as their base for where to go next.

    If that's the case, then it would seem clear that the market is incentive enough to spur on that type of development and no patent is needed. So there's no problem at all with your scenario and it doesn't preclude the much higher standard of obviousness that I'm suggesting.

     

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  6.  
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    Anonymous Coward, Nov 28th, 2006 @ 9:00pm

    Viva La BPJ Sandwich Maker!

    Just as I was hopeing to get my PVJ sandwich maker panted. See its this great "innovention" You take a jar of PB and a jar of Jelly. You microwave both. Then mixe in another large container. Blend up some eveyr healthy white bread and mix in. grab a spoon and some Fluff and dig in. I just know that there is something in there that noone has every done before and i deserve a right to patent it so noone can even draw a picture of my innovation, noone can talk about it and most importantly noone can use it. This is how I feel about.. oh say 65% of all patents granted (excluding medical patents, not because they are worth while, but only because they save lives, and min most cases it really is something that noone has done before). Viva La BPJ Sandwich Maker!

     

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  7.  
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    Joe Smith, Nov 28th, 2006 @ 9:04pm

    Meaningless??

    When the Chief Justice is saying that the legal test promulgated and advocated by the Court of Appeal for the Federal Circuit is "meaningless" you know someone is in for a world of hurt.

    I predict a round of retirements from the CAFC over the next year.

     

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  8.  
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    angry dude, Nov 28th, 2006 @ 9:05pm

    Re: Re: Progression of knowledge...

    Don't you get it, Mike, that in a capitalist society patents and copyright are NECESSARY for moving forward?
    The Founding Fathers were not as clueless as you are after all...

    As far as non-obviousness test is concerned, I am affraid that this SCOTUS will make things even worse by introducing some subjective and arbitrary criteria.
    Looking back at their past decisions in Kelo vs. New London and in MercExchange vs. EBay cases I seriously doubt their judgement.
    At the end, the little guy is always on the loosing side of those decisions...

     

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  9.  
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    Mike (profile), Nov 28th, 2006 @ 9:30pm

    Re: Re: Re: Progression of knowledge...

    Don't you get it, Mike, that in a capitalist society patents and copyright are NECESSARY for moving forward?

    I love this line of argument angry dude. You make some random absolute assertion and back it up with nothing. Even better, you do so after we've presented plenty of evidence that the absolute case (capitalist society needs copyright and patents to move forward) is disproven. In fact, evidence has shown that capitalist societies have sped up their advancement when they did away with patents.

    So, come on, if you're going to make absolutely statements, could you at least pretend to back them up?

    The Founding Fathers were not as clueless as you are after all...

    Hmm. And, yet, the founding fathers seem a lot closer to our position than yours (again, as we've pointed out repeatedly). Both Jefferson and Franklin have made plenty of statements suggesting they're much closer to seeing the harm of the patent system than supporting its current model.

    Looking back at their past decisions in Kelo vs. New London and in MercExchange vs. EBay cases I seriously doubt their judgement.

    What was the problem with MercExchange? That was an entirely reasonable decision. All it said was that injunctive relief doesn't always make sense in patent disputes, which makes a lot of sense. Why should you automatically force all sales to stop if an infringement is just on a tiny part? It's arbitrary and unfair, and goes against the overall purpose of the patent system.

    So come on, angry dude, just once, I'd like to see you actually make an argument rather than some random statement you can't back up. It would actually make you seem like you had an argument, rather than a big chip on your shoulder.

     

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  10.  
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    angry dude, Nov 28th, 2006 @ 9:56pm

    Re: Re: Re: Re: Progression of knowledge...

    "What was the problem with MercExchange? That was an entirely reasonable decision. All it said was that injunctive relief doesn't always make sense in patent disputes, which makes a lot of sense. Why should you automatically force all sales to stop if an infringement is just on a tiny part? It's arbitrary and unfair, and goes against the overall purpose of the patent system."

    This is a lovely argument. Why should some pesky small software company owned by inventor be able to shut down sales of, say, MS Windoze OS incorporating some tiny yet very essential part (like RSA encryption, for example) ? (I am talking about willful patent infringement here, not independent development)
    Or, what can stop a huge company like MS from infringing on all those small inventors' patents by just bundling patented features with their monstrous OS.

    Really, the more patents they infringe the better for them, it makes any individual patent a smaller part of the entire system.
    Hell with all those basement inventors and cash-starved software startups : they cannot produce this marvel of modern technology - Windoze OS.
    Let MS guys infringe any patents they want,.
    Big guys always win, small guys always lose...
    And this is fair according to Mike.

     

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  11.  
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    Mike (profile), Nov 29th, 2006 @ 12:39am

    Re: Re: Re: Re: Re: Progression of knowledge...

    This is a lovely argument. Why should some pesky small software company owned by inventor be able to shut down sales of, say, MS Windoze OS incorporating some tiny yet very essential part

    Repeating the question back sarcastically isn't an argument.

    Really, the more patents they infringe the better for them, it makes any individual patent a smaller part of the entire system.

    I can't believe you call me ignorant when you post crap like that. The argument behind MercExchange has nothing to do with what percentage of the patented invention is in the product -- but whether or not it's reasonable to ban all sales. That doesn't change if there's more infringement. In fact, that makes it much more likely that an injunction will be ordered.

    Big guys always win, small guys always lose...

    Hmm. That's crap and you know it. We actually have bigger issues with companies like Microsoft and IBM that throw their patents around to stop competition.

    This has nothing to do with small or big. It has to do with a system that is seriously broken.

     

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  12.  
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    PhysicsGuy, Nov 29th, 2006 @ 6:00am

    Re: Re: Progression of knowledge

    well i agree, patents aren't really needed... i'm just saying your test for obviousness wouldn't work, regardless what you think, specialized people in a field have no right to judge the obviousness of something they're specialized in... only people with a layman's understanding of the field AND chances are you won't find something in this modern age in which someone ISN'T working on what you are ;) jeeze...

     

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  13.  
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    Monarch, Nov 29th, 2006 @ 8:15am

    Re: Progression of knowledge...

    Physics Guy,

    Ummm, RIM got sued for a patent that essentially stated "Sending email from one device to another device using radio waves"
    Now, in my laymans understanding, well that would be OBVIOUS! I mean come on? Wireless internet and email was not happening hardly at all at the time, because the tech hadn't caught up yet, but EVERYONE with any sort of imagination, knew that eventually in the near future, you would be able to get email wirelessly!
    I think patents themselves should be on specific inventions, not concepts!
    A.G. Bell got his patent for the telephone device itself, not the concept of sending electronic voice transmissions over wire from one device to another.
    That and software patents should not even be a concept. Maybe a software copywrite, but NOT a patent. I mean, you can't pattent how you string words and letters together in a book, but you can copywrite it. So why are people able to string characters from an electronic language together and then patent it?
    The Patent system is beyond BROKEN, and hopefully the Supreme Court will push it, in a direction to fix it!!!

     

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  14.  
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    Joe Smith, Nov 29th, 2006 @ 10:16am

    Re: Re: Re: Re: Re: Progression of knowledge...

    angry dude said

    "(I am talking about willful patent infringement here, not independent development)"

    But under the law independent development is not a defense. In the RIM and NTP case the parties and the Judge all agreed that RIM had independently developed the technology but once they knew about the existence of the NTP patents their continuing to operate was a "wilful infringement" under the law. Giving NTP the power to shut down a large company gave them the power to extort a payment out of all proportion to the merits of their patents.

    The only effect that the eBay decision would have had on RIM might have been to strengthen RIM's argument that there should be no injunction until after the USPTO re-examination process was complete.

    Hopefully, SCOTUS will read obvious in such a way that patents like the NTP patents become a thing of the past.

     

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  15.  
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    Anonymous Coward, Nov 29th, 2006 @ 1:43pm

    Re: Re: Re: Re: Re: Re: Progression of knowledge..

    "Hopefully, SCOTUS will read obvious in such a way that patents like the NTP patents become a thing of the past"

    Right, and 95% of all patents issued to MS and IBM and RIM, of course, deserve the same fate.

    I would welcome any decision allowing to get rid of all the "bad" patents, but in reality, the majority of "bad" patents are produced by the likes of MS, IBM., RIM etc.
    Those companies are working hard to gut patent enforcement by real inventors and to keep their junky patents at the same time.
    I don't expect anything good for a small guy from this SCOTUS.

     

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  16.  
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    Mike (profile), Nov 29th, 2006 @ 2:03pm

    Re: Re: Re: Re: Re: Re: Re: Progression of knowled

    I would welcome any decision allowing to get rid of all the "bad" patents, but in reality, the majority of "bad" patents are produced by the likes of MS, IBM., RIM etc.

    You'll note that these rule changes apply just as much to those guys as it does to individual inventors. So, if they are producing bad patents (and I agree absolutely that they are doing so at a rate far greater than so called patent trolls), it should help stop that practice as well.

     

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  17.  
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    Lloyd Weaver, Dec 1st, 2006 @ 1:00pm

    patent obviousness

    Changing obviousness patent criteria is not obviously necessary. Examiners generally know what is obvious, i.e. few mistakes are made in this area. Unusually it is infringement on one’s really good idea they are building a business around and that nobody else thought of that creates patent lawsuits. Someone wants a free livelihood off the back of the hard work of the creators of the idea and resulting new business or technology. Consider that the law allows anyone to seek a reexamination of a patent. If the examiner still thinks it’s valid, one can also seek court action.

    Perhaps the key point to keep in mind is it won’t pay to upset the apple cart. What do we (in the U.S.) gain by any change in obviousness criteria? Examines will still decide patents based on historical evidence and who invented it first, and will still grant patents with some in error, but because of training and production issues, not the TSM rule per se. But one thing that will likely happen from any significant change in TSM rule is foreign investors will see much of the IP they have invested in questioned. Then they will start to withdraw dollars which could create such a gusher of cash flow out of the U.S. our financial system could face disaster. And for what? Examiners don’t intentionally grant obvious patents, not now nor will they in the future, and no subjective rule change will change that fact.

    It’s highly likely the Court will not appreciable change the TSM rule, i.e. they will essentially take the government’s side. Plus after deliberations are complete, they will understand the TSM rule a lot better also. After all, the rule is an outgrowth of a Court’s decision about 25 years ago. And no matter what rule you try to devise that is better, it’s still subjective. TSM is a perfectly adequate subjective rule to meet our needs today and tomorrow, thus it is highly unlikely the Court will change TSM. Any TSM change by the Supreme Court would be an unnecessary risk to our economy. One has to believe common sense will prevail and that the Court will not take such a risk over a subjective issue best left to the government (patent office) and the lower courts.

     

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  18.  
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    PhysicsGuy, Dec 2nd, 2006 @ 9:35pm

    Re: Monarch

    it's late so i won't flame your intelligence. frankly, that patent should never have been filed. i'm not sure what you think i was trying to say but you essentially showed my point completely. it should be from a layman's perspective that the obviousness of patents is tested... thanks for agreeing with me

     

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