U.S. Supreme Court to weigh standards for patent "obviousness"

The U.S. Supreme Court on Monday agreed to take up a case involving one of the thornier questions in patent law: What makes an invention "obvious"--and therefore unworthy of a patent?

The case at issue involves patents covering "gas pedal" technology for cars and light trucks. It was accepted on appeal by a company called KSR International, Inc., which had been accused of patent infringement by a firm called Teleflex. Last January, the U.S. Court of Appeals for the Federal Circuit reversed an earlier court decision that had found patents held by Teleflex were "obvious" and therefore invalid.

But Silicon Valley firms, such as Microsoft and Cisco, have also taken an interest in the situation, which would have implications for patents across a wide range of industries.

In challenging the finding in its own case, KSR argued that the Federal Circuit has been improperly interpreting patent law for years when it comes to deciding whether an invention is "obvious."

That court has ruled, for instance, that even "a combination of preexisting, off-the-shelf components in which each component performs exactly the same function that it had been known and was designed to perform," could be patentable, KSR wrote in its petition for review by the Supreme Court (click for PDF).

Such an interpretation, KSR argued, isn't consistent with a provision of federal patent law that dates to 1952, which stipulates that an invention is not eligible for a patent if a "person having ordinary skill in the art" would consider it "obvious."

In a brief supporting KSR's arguments (click for PDF), Microsoft and Cisco charged that the current test applied by the Federal Circuit "hurts innovation" because it establishes "far too lenient a standard for patentability." Cisco has even built up a portfolio of patents for "defensive purposes," simply to "neutralize" a proliferation of trivial patents, the brief said.