So, about a month ago, we wrote about Amazon's ridiculous new patent on "photography against a white background,"
which got a fair bit of attention. There were debates among photographers, patent lawyers and lots of other people with opinions about just how legitimate (or not) the patent really was (hint: it's not). However, Charles Duan, Public Knowledge's patent expert, has written up a fantastic explanation for how Amazon was able to get the patent
. And the main culprit, in a twist that should surprise no one is... CAFC
. Yes, the Court of Appeals for the Federal Circuit strikes again.
The ethically challenged
court that is at the root of so many
problems in the patent system, often thanks to a too close relationship
with patent lawyers, is the heart of the problem once again. Even with the Supreme Court unanimously reversing
(and even saying that CAFC "fundamentally misunderstands what it means to infringe" a patent), CAFC is still causing all sorts of damage.
The issue here is "obviousness." Now, you may recall that, back in 2007 (back when the Supreme Court was just getting warmed up with its annual bout of CAFC-smacking), the Supreme Court issued an important ruling
in Teleflex v. KSR, saying that the CAFC's "standard" for what counts as "obvious" was way
too strict, and that patent examiners should be allowed to use basic common sense
in rejecting patents that tried to claim obvious things. This resulted in new guidelines
at the US Patent Office, in which examiners actually had some ability to apply common sense. The new rules had an immediate impact
, with courts and patent examiners getting much more aggressive in rejecting bad patents. Unfortunately, in 2010, then USPTO director David Kappos rewrote the rules again
, deleting a bunch of "tests" for obviousness, making it once again harder for examiners to reject patents for obviousness.
More recently, CAFC effectively blessed a new set of very strict rules
for judging obviousness that require any indication of obviousness to be written down somewhere
. In other words, if you can't point to a written explanation that explicitly states that something is obvious, the USPTO won't reject a patent for being obvious. As Duan explains:
Hear-Wear was about a patent on hearing aids. The patent was being reconsidered by the Patent Office, and the independent claims had already been held unpatentable.
But a dependent claim further added an element about a wire coming out of the hearing aid:
Claim 3. The at least partially in-the-canal module for a hearing aid of claim 2 [of the Hear-Wear patent] wherein said insulated wiring portion is terminated by a plurality of prongs that provide a detachable mechanical and electrical connection to an audio processing module.
This is complicated language, so the visual to the right should help you to understand it.
Most people call this a plug: a plurality of prongs (those two things at the end) that provide a detachable mechanical (you can plug and unplug it) and electrical connection (electricity flows across the prongs) to an audio processing module (whatever you plug it into, like your computer).
It is hard to believe that a patent could be granted for adding a multi-pronged plug to a well-known invention. “Every purchaser of electrical devices in the United States for the past 50 years or more is familiar with multipronged electrical connections,” wrote the lone dissenting judge in Hear-Wear. But the two judges in the majority would have none of that. As they said, the Patent Office “cannot accept general conclusions about what is ‘basic knowledge’ or ‘common sense’ as a replacement for documentary evidence for core factual findings in a determination of patentability.” Proving this patent obvious, according to them, required paper documentation.
Even though this latest case is a recent ruling, it shows the kind of situation that CAFC has been creating for ages. It has never appreciated the idea that obviousness
is different than prior art
. A patent is only supposed to be awarded if it's both
non-obvious to a person skilled in the art. But, for reasons that make no sense, many in the patent world seem to think that something is only obvious if it's been first written down somewhere specifically. But, of course, some things are so obvious
that there's no need
to write them down.
And that's the case with this white background patent. As Duan points out, one of the dependent claims adds what may seem like a useless detail to the patent: "The studio arrangement of claim 2, wherein the first distance is about 4.5–5.5 times a height of the top surface of the elevated platform. " That 4.5-5.5 times issue is really nothing special, but because a previous patent on a similar setup doesn't include the number, well, suddenly this patent is "non-obvious."
No one would write an article with that exact distance ratio or file a patent application about it. No one would want to do so. It was too uninteresting a feature to have ever merited any attention. Who knew if Saigo had used that distance ratio—Saigo’s application didn’t say. Who knew how many other photographers had actually used that distance ratio before—it didn’t matter, since it wasn’t on paper before her. Who knew if some college dissertation mentioned the exact numbers—with only a few hours left, and with a stack of other applications to examine, this examiner would not find it.
It was a silly thing to grant a patent on, no? Photography against a white background is obvious, but photography against a white background at a certain distance is nonobvious? The examiner could perceive no reason why that 4.5–5.5 ratio was advantageous, and the text of the application revealed none. If this patent issued, it would not be because the invention was an improvement; it was because this Studio Arrangement claim was different. Not better, just different.
But, the law said, that was enough to grant a patent.
Welcome to the wonderfully insane world of patent law, where common sense has no place. And you can patent just about anything if you're tricky enough.