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Supreme Court Weakens Patents 331

Posted by CmdrTaco
from the any-lawyers-on-the-plane dept.
ajakk writes "The U.S. Supreme Court, in a unanimous opinion, overturned the decades old test for determine whether a patent is obvious. The Court ruled that the Court had looked at obviousness in a "narrow, rigid manner." This should allow patents to be more easily invalidated because they are obvious."
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Supreme Court Weakens Patents

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  • The whole opinion (Score:4, Informative)

    by Anonymous Coward on Monday April 30, 2007 @11:44AM (#18928221)
  • by Anonymous Coward on Monday April 30, 2007 @11:44AM (#18928227)
  • by boxless (35756) on Monday April 30, 2007 @11:59AM (#18928427)
    IANAL, but this ruling seems so clear and unabiguous, I've got to believe it will put a dramatic damper in patent troll activity. The decision (I've only read the summary) seems to be fairly even-handed. The old teaching-suggestion-motivation test might be a reasonable test to use in some cases, but not at the expense of common sense.

    I think the justices 'got it'.

    from the ruling:
    Inventions usually rely upon building blocks long since uncovered, and claimed discoveries almost necessarily will be combinations of what, in some sense, is already known. Helpful insights, however, need not become rigid and mandatory formulas. If it is so applied, the TSM test is incompatiblewith this Court's precedents. The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. In many fields there may be little discussion of obvious techniques or combinations, and market demand, rather than scientific literature, may often drive design trends. Granting patent protection to advances thatwould occur in the ordinary course without real innovation retardsprogress and may, for patents combining previously known elements,deprive prior inventions of their value or utility.
  • Re:Finally... (Score:3, Informative)

    by Harmonious Botch (921977) * on Monday April 30, 2007 @12:01PM (#18928443) Homepage Journal
    Accoding to TFA, MS was one of the companies that filed an amicus brief
    in favor
    of the ruling. They see themselves, apparently, as victims of excess patent litigation.
  • Isn't this exactly what we wanted to happen? What kind of repurcussions is this going to have on patent-crazy companies like Microsoft?

    This is one of the reasons why it's good to RTFA ... Microsoft was actually the appellant in this case -- the losing party who pushed the case to the USSC, and just won -- they were fighting AT&T, who claimed that U.S. patents basically could be enforced extraterritorially.

    The whole issue was whether Microsoft, a U.S. corporation, was responsible for violating AT&T's U.S. patents (which are not, by and large, enforceable elsewhere, for instance in Europe and Asia -- there's no patent equivalent to the Berne Convention on copyright, really) if they only ever violated them in places where AT&T's patents didn't apply (outside the U.S.).

    So if Microsoft went and sold AT&T-patent-encumbered software, but only in Europe, AT&T wanted to sue them for patent infringement here in the U.S. This was obviously a Bad Thing, and would have been a major expansion of patentholder's rights.

    The WSJ article [wsj.com] about it today was pretty good. (I think that link should work, since it has the "googlenews_wsj" in the URL to bypass their 'Free Preview' bullshit.)

    So in this case, Microsoft was actually the good guy.
  • by Etherwalk (681268) on Monday April 30, 2007 @12:02PM (#18928461)
    The major tech companies wanted the patent reform--they tend to be victims of spurious patent cases. Microsoft, CISCO, Intel, Etc... (And Time Warner) are more concerned about protecting themselves from being sued by a patent squatter than they are about most of their own patents. Also, this lets them hijack other people's ideas more easily.

    The major drug companies didn't want the reform, because patents are their life blood. It will get harder for them to patent obvious changes to medicine, such as combining multiple medications in one pill. (Though in some cases they'd still get away with it, I'd imagine, if they can demonstrate that there's some kind of real innovation going on in the time-delay mechanism or something. Or at least they'll argue that...)
  • Re:IANAL (Score:3, Informative)

    by Anonymous Coward on Monday April 30, 2007 @12:09PM (#18928547)
    "I'm not a lawyer, but wouldn't ex post facto prevent this from being used to overturn patents already in place? Or does that only apply to congressional law?"

    No. In a highly technical sense, ex post facto laws as used in the U.S. constitution refer only to laws that affect criminal punishment, either by increasing the punishment for a crime or defining a new crime. There is no per se constitutional prohibition against ex post civil laws, although some retroactive laws might violate due process.

    In a more general sense, the court has not changed the law - the Federal Claims interpretation was always subject to alteration by SCOTUS. In essence, the decision today says that this is what the law has always said, and so is not a change at all.
  • Re:Vonage (Score:2, Informative)

    by maczealot (864883) on Monday April 30, 2007 @12:13PM (#18928593)
    IANAL, but this does seem to suggest that Vonage's lawbots could file something regarding the obviousness of Verizon's patents.

    Here are the patents Verizon has, just a cursory reading makes them seem REALLY obvious imho(but then again I am a Vonage customer):
    Patent Uno [uspto.gov] Patent Dos [uspto.gov] Patent Tres [uspto.gov]
  • by blckbllr (242654) on Monday April 30, 2007 @12:32PM (#18928717)
    Porcupine8,

    I'll try to address the first question, and then return later to address the second question, unless someone finishes the opinion before me.

    KSR International Co. v. Teleflex Inc., isn't so much about "obviousness" per se, but about the "teaching-suggestion-motivation" prong of the obviousness inquiry. According to the Manual of Patent Examination and Procedure, an Examiner can establish a prima facie case of "obviouness" by showing that:

    "First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations." MPEP Section 2143 [uspto.gov].

    To understand the "teaching-suggestion-motivation" to combine prong of the "obviousness" inquiry, I would suggest reading MPEP Section 2143.01 [uspto.gov].

    I've briefly read what the Supreme Court said about the Federal Circuit's decision, but I haven't had time to digest it yet. It seems somewhat amorphous to meet at this point, or in other words, there doesn't seem to be a definitive holding (e.g., "We hold that...") at this point.

    The views expressed herein are in no way associated with any private entity or government organization
  • by Anonymous Coward on Monday April 30, 2007 @01:08PM (#18929167)
    "...it's good to RTFA.. "

    Yes, so why didn't you?

    You are talking about a different case.
  • by optimus2861 (760680) on Monday April 30, 2007 @01:21PM (#18929415)

    This is one of the reasons why it's good to RTFA ... Microsoft was actually the appellant in this case -- the losing party who pushed the case to the USSC, and just won -- they were fighting AT&T, who claimed that U.S. patents basically could be enforced extraterritorially.

    Actually, TFA isn't about the Microsoft/AT&T patent case, it's about another patent case, KSR International v. Teleflex, in which Microsoft came down on the side of KSR, who were challenging a Teleflex patent on adjustable gas pedals as being too obvious. The Microsoft/AT&T decision is briefly mentioned but it's not the focus of the article. I don't know whether to fault the submitter for not pointing out which case was being referred to, or the editor for not catching it, or both.

  • by mfeldstein (119843) on Monday April 30, 2007 @01:28PM (#18929609) Homepage
    According to United States law, you can't patent algorithms for the same reason that you can't patent blueprints, i.e., patents apply to useful inventions, to things that work in the world, as opposed to abstract ideas.

    To get a sense of the distinction, it may be helpful to think about the Supreme Court's *other* big patent ruling today, i.e., Microsoft v. Alcatel-Lucent. In this case, both companies admitted that Windows infringes on Lucent's speech recognition patents. Normally, these patents would not apply to products in other countries, which are governed by their own patent laws. This explicitly includes cases in which somebody sells a blueprint to somebody else in another country, who then uses that blueprint to manufacture a product that infringes on a US patent. The exception in US law is if you ship components of an infringing product overseas and then have them assembled over there. Congress correctly perceived such an act as an attempted end-run around US patent laws and said that, whether or not it is assembled in the US, a product that is manufactured in the United States and infringes on US patents is subject to US patent law.

    Microsoft ships a master DVD overseas, where it is duplicated and installed on computers there. Alcatel-Lucent argued that this is fundamentally similar to assembling a US-manufactured product overseas and that Microsoft should pay damages. (A lower court awarded them $1.5 billion.) Microsoft argued, however, that shipping a master DVD is more like sending a blueprint for products that are then manufactured overseas. The Supreme Court concurred, ruling in favor of Microsoft 8-1.

    Now here's the key twist. In an Amicus brief that was probably not appreciated by Microsoft and apparently not embraced by the court, the SFLC argued that *all* software is like a blueprint or an algorithm, as this weird test case of installing it overseas versus installing it domestically demonstrates (in their view). Therefore, software should be fundamentally unpatentable.
  • by CaptainPatent (1087643) on Monday April 30, 2007 @01:38PM (#18929793) Journal
    It seems that this question was answered, but only with examples in the MPEP which is more legal-speak, and because you "don't have enough background knowledge" I'll put it into plain english for you

    Essentially when rejecting a patent application an examiner could combine two different peices of prior art in the form of patents, PGPubs, Non-patent literature, etc. to come up with a rejection. In order to properly combine these pieces of art properly the examiner had to show exactly why it would be obvious (and generally site prior art for such a motivation) instead of being able to say "yeah... duh!" which gave a lot of loopholes for attorneys saying "you didn't give proper motivation" when the examiner would put a motivation in his own words.

    The change now puts the burden into the attorney's hands to show why a motivation would be improper and giving evidence that the improvement really never had been thought of before. This will make rejection easier for examiners.

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