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Supreme Court To Rule On "Obvious" Patents
Posted by
CowboyNeal
on Thu Nov 30, 2006 07:11 PM
from the return-to-common-sense dept.
from the return-to-common-sense dept.
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.'"
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Supreme Court Continues to Address Patent Concerns 78 comments
The Supreme Court has taken on another possibly landscape-changing patent case that will determine if patent holders are able to sue everyone up and down the food chain for a patent infringement. "This case, officially between LG and Quanta, really concerns the question of how many times patent holders can get a cut of any component found violating a patent. Currently, patent holders will often sue up and down the food chain. So, if you happen to have a patent on a component within a motor that is used in automobile wipers, you could sue the motor maker, the wiper maker and the auto manufacturer -- and get all three to pay, even though the same product is used throughout the supply chain. This case will look at whether or not it makes sense to allow for that type of double, triple or quadruple dipping."
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Yeah for the raccoons (Score:5, Insightful)
Re:Yeah for the raccoons (Score:5, Insightful)
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.
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Re:Yeah for the raccoons (Score:5, Insightful)
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?
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Re:Yeah for the raccoons (Score:5, Insightful)
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...).
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Re:Yeah for the raccoons (Score:4, Insightful)
Just curious, why do you believe 99% of of patents should not be valid?
How do you propose to perform your test? If others "skilled in the art" already know that there is a solution, then you are injecting hindsight into the equation, and EVERYTHING is obvious once you have hindsight.
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.
The purpose of patents, as is oft repeated, is to advance the useful arts (whether it does a good job or not is not really the point here, though!). A patent, for better or worse, at least makes public the invention, so others can see it, benefit from it, and build upon it -- maybe not immediately, but eventually. If you don't bother to tell anyone about your inventions, or don't bother to publish papers or put up a webpage or whatever, then the public is not benefiting from your invention, so you are not entitled to a patent (under current law). Someone else who comes up with the idea, dilligently works to develop it, and then gives the knowledge up to the public IS entitled to a patent.
But just because you claim to have thought of something first doesn't make another's invention obvious. How do you prove that you came up with it first? Is the patent office or the courts just supposed to take your word for it?
If you really want to keep others from patenting something you invented "first," put up a webpage, publish a paper, let the world know about your "obvious" invention -- that's how you can do this. Coming back 10 years later when someone else is successful and sitting back and complaining that it was "obvious" because you invented it "first" doesn't do any good at all.
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Re: (Score:3, Insightful)
The test is not as difficult as you seem to think. Stating that "everything is obvious in hindsight" is a largely meaningless handwave that tars all subjects with one brush, as both the obvious AND non-obvious fit the description. In these cases, hindsight actually helps. For example, the Post-It
Re:Yeah for the raccoons (Score:4, Insightful)
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.
As noted in another post, the first NTP patent was filed in 1991 -- was a portable device for email "bloody fucking obvious" in 1991?
(BTW, just for the sake of disclosure, I have no love for NTP, and actually wrote a brief in support of RIM at the CAFC, and think RIM got fucked -- but not because of NTP's patents being obvious, but for other reasons, specifically the extraterritorial application of U.S. patent laws.)
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Re:Yeah for the raccoons (Score:4, Interesting)
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.
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Re:Yeah for the raccoons (Score:5, Insightful)
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Re:Yeah for the raccoons (Score:4, Insightful)
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Re:Yeah for the raccoons (Score:5, Insightful)
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.
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Re:Yeah for the raccoons (Score:5, Informative)
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Re:Yeah for the raccoons (Score:4, Insightful)
How do you propose to perform your test? If others "skilled in the art" already know that there is a solution, then you are injecting hindsight into the equation, and EVERYTHING is obvious once you have hindsight."
99% is a made up number that any reasonably thinking individual can assume means "nearly every patent" when used in that context. However, you have established where he got the idea with the second paragraph. I trust that nobody is foolish enough to think that there are no exceptions where something is NOT obvious in hindsight, so you yourself surely must have meant 'almost everything'.
If something is obvious in hindsight then it is just a progressive step built upon the existing state of invention. Progressive steps are not truely innovative things that are worthy of patents. The reason is that sooner or later someone else would have made that step. Granting patents on things that would be discovered and become available to the industry without patents hinders forward progress rather than helping.
The standard for a patent should not be whether or not effort went into coming up with a solution. The standard for a patent should be whether or not any other human being would have ever come up with that solution withen the length of the patent. Patents are a government granted monopoly and should not be granted on a daily basis!
There are probably only a couple dozen patents that should have been granted this century.
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Re:Yeah for the raccoons (Score:4, Insightful)
Because they didn't have a reason to think of it?
Or it uses new technology didn't exist when they last encountered the problem?
For example, good, free database software has recently become available, making it feasible for many people to apply databases to problems who didn't have that option before.
So does that mean the first person in any industry to become aware of database software should be able to get a patent on "Using a database to solve this problem"? No. And letting the first person to realize this obvious application of databases to patent it is BAD for EVERYONE.
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Re:Yeah for the raccoons (Score:5, Insightful)
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.
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Re:Yeah for the raccoons (Score:5, Insightful)
Because I wasn't being paid to design one.
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Re:Yeah for the raccoons (Score:4, Informative)
Because whether or not I "thought of it" has nothing to do with whether or not it's obvious.
If I walked up to ten random people and said "When it rains, water floods the ditch where I keep my TV and ruins it, what should I do to keep the TV safe?" How many of them do you think will say "move it somewhere else!" Does the fact that they never had to save a TV that was in the middle of a ditch or had their TV short out in the rain make the answer any less obvious?
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Re:Yeah for the raccoons (Score:4, Insightful)
Isn't the whole point here that KSR did think of it, and they just thought it was too obvious to patent?
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Re:Yeah for the raccoons (Score:5, Insightful)
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?
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Re:Because of Submarine patent trolls (Score:5, Insightful)
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.
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Re: (Score:3, Insightful)
Re:Because of Submarine patent trolls (Score:4, Interesting)
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?"
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Re: (Score:3, Insightful)
http://en.wikipedia.org/wiki/Patent_troll [wikipedia.org]
http://en.wikipedia.org/wiki/Submarine_patent [wikipedia.org]
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.
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 [cnn.com] on
Re: (Score:3, Interesting)
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 o
Re:Yeah for the raccoons (Score:4, Insightful)
It's too late for those patents that have made it out of the gate already, but I have long held that there should be a small pool of engineers -- you could probably even find people do do it on a non-paid volunteer basis -- who were involved in the patent process in a very specific, blinded fashion. The way it would work is: as part of the review process, the patent reviewer would state the problem the patent was trying to solve as an unsolved problem. This problem would then be sent to one or more of these engineers. The engineers would consider the problem, and have a short period of time to submit one or more potential solutions that solve the problem. If any of the potential solutions substantially replicates the claims of the patent under review, it would be rejected as obvious.
Sadly, this makes *way* too much sense, so I doubt it would ever be seriously considered by the USPTO.
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Re: (Score:3, Insightful)
Re: (Score:3, Insightful)
Patents theoretically promote innovation by encouraging people and companies to invest significant resources into solving problems. At 0.1% of the engineering population, you're pretty much guaranteed that, once the problem comes to light, the fact that tens of thousands of people would be able to solve the problem means t
Re:Yeah for the raccoons (Score:4, Funny)
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Re:Yeah for the raccoons (Score:5, Funny)
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Re: (Score:3, Interesting)
Actually, it is a somewhat ambiguous sentence:
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 int
Re:Yeah for the raccoons (Score:5, Funny)
In related news, a Supreme Court Justice is being sued for patent infringement by DoorCo, a manufacturer of garage doors and door sensors...
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Re:Yeah for the raccoons (Score:5, Funny)
We finally got a judge that was smarter than a racoon.
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Everything is obvious to someone. Most don't care. (Score:3, Insightful)
Just because someone patents a "non-obvious" idea, doesn't mean that it is new. It may have been thought of before, but not thought important enough to patent.
I think geeks in particular like to cry "That's obvious", because it is... but since geeks aren't "sleezy marketers", they don't rush out and patent things. (Hey, don't knock marketers, we need them to sell crap. I don't want to sell crap. I want to m
Depends on how they write the rule. (Score:4, Insightful)
A cotton gin is an invention, and should be patentable. Mechanically removing seeds from cotton is a problem, and shouldn't be patentable.
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Slashdot patents (Score:5, Funny)
Re: (Score:3, Informative)
It's not really a dupe. You see, last time the "news" was that news.com was running a story about the case. This time, the "news" is that embedded.com is running a story about the case. The case itself is hardly news -- it's been around since April of 2005. Well, the real case is still older, but that's when they appealed to the Supreme Court.
Next week, it'll be news again -- and with a lot of luck they might find a link that's actually informative [typepad.com]. The
Patented already (Score:5, Funny)
Too late dude, I already patented that.
obvious (Score:5, Funny)
Who makes the new laws? (Score:3, Interesting)
Re: (Score:3, Interesting)
I'm not convinced that our congresscritters would be able to come up with
It May Be Re-Iterate Not Re-Write (Score:5, Informative)
* (( 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'.))
He didn't do it on a computer (Score:3, Insightful)
Ahh, this is quite obvious, but what about putting it on the upper hinge USING A COMPUTER? Doing any mundane thing is magically nonobvious when you're using a computer or doing it on the Internet.
It's looking good that the CAFC will be reigned in (Score:3, Insightful)
The the definitive previous case by the SCOTUS on the interpretation of obviousness [cornell.edu] is GRAHAM v. JOHN DEERE CO. [findlaw.com] in which the Court basically concluded that the 1952 enactment of section 103 of the patent statute was basically a codification of a line of judicial opinions going back into the 19th century (with the exception of a 1941 Supreme Court opinion that appeared to introduce a "flash of genius" test that the new law seemed to overrule in the last sentence of section 103). The "test" that this article mentions is the "suggestion" and "motivation" showings that the Court of Appeals for the Federal Circuit (CAFC) and its predecessor, the Court of Customs and Patent Appeals (CCPA) developed since the Graham decision was handed down in 1969.
The CCPA only controlled appeals from the PTO, which, of course, affected what claims would be allowed. When the issued patents were challenged by accused infringers, the appeals were decided by the regular Federal Circuit courts, which didn't follow the CCPA. In 1982, responding to complaints from patentees that the law was not uniformly applied the CAFC was formed by merging the CCPA with another court and was given exclusive appellate jurisdiction for all patent appeals, and they took their view of obviousness with them.
Now, usually the SCOTUS is pursuaded to review areas of law where there is a diversion of opinions on the law among the various federal circuits; here, there is, by the exclusive CAFC jurisdiction only one, yet the case was selected for review. I haven't seen a transcript of the hearing; it is still possible that the CAFC's "suggestion/motivation" test will survive and this case will be decided narrowly on the facts of the case, but it looks like, even if they do survive it will be in a less severe form than has been.
However, even if they strike down the CAFC's standard I don't think there will be a big impact on the quality of patents being issued, other factors being equal, since the main problem is the often that the prior art made of record is inadequate. Nevertheless, it would be easier to make sustainable rejections, since more prior art references will be available.
Summary (Score:4, Informative)
Correct me if I'm wrong.
There are several ways to invalidate a patent in court.
Anticipation
One way is to show that a prior art reference (patent or printed publication) "anticipates" the patent you want to invalidate. But you only get to use ONE reference. This ONE reference must have ALL the elements of the contested patent.
Obviousness
Obviousness lets you combine MORE THAN ONE reference to invalidate a patent. Say the patent you want to invalidate has two elements: A & B. You can take old Patent A with Element A, and old publication B with Element B, and show that it would have been OBVIOUS to combine the two. But the catch is, you have to show that these references contain a "reason, suggestion or motivation" to combine the two.
This is the current law.
Apparently, the Supreme Court is considering removing the requirement that there be a "reason, suggestion, or motivation" to combine within the prior art. This would make it easier to invalidate patents on Obviousness grounds.
The issue at hand. (Score:3, Informative)
Apparently, an old patent existed for adjustible gas pedals, such that the pedal could be moved to suit the size of the driver. Additionally a second patent existed for a gas pedal which was linked to an Electronically Controlled Throttle (ECT). Teleflex then apparently patented a brake pedal which used a combination of the two technologies, which is, I think, about as obvious as it gets, and then sued KSR Int'l for infringement.
I also found this NYT article [nytimes.com] on the subject, which explains the case, and how such idiotic patents are allowed to stand.
Re:I'm confused... (Score:5, Informative)
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.
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Re: (Score:3, Interesting)
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 loo
Re: (Score:3, Interesting)
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 da
Wrong complaint (Score:3, Insightful)
Shameless plug (Score:3, Insightful)
Taxonomy of Obvious Ideas
http://tooi.org/ [tooi.org]
Similar idea to what you suggested, except that it doesn't restrict the repository to patented ideas. My goal is to help propel "ideas" -- and combinations thereof -- into the public domain or some free licensing scheme. If such a thing were done right & had significant mindshare 10 years ago, I doubt there would be a One-Click patent, or