April 30, 2007 10:11 AM PDT

Supreme Court loosens patent 'obviousness' test

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But some attorneys watching the case argued that the court failed to give enough direction on how the obviousness test should now be met. Some also suggested that the decision paves the way for the validity of previously issued patents to be called into question, likely leading to more litigation--or at the very least, a lengthy transition period as the Patent Office and the courts try to make sense of the Supreme Court's opinion.

Todd Goldstein, the attorney who argued Teleflex's case before the high court, said the economic consequences of changing the obviousness requirement "run into the trillions of dollars" because of the uncertainty the decision has created. Although there's no doubt the court intended to tighten the standard for issuing and upholding patents, "what we don't know is how far the judges want the decision to go," he said in a conference call with reporters. "We don't know the answer to what the new rule is yet."

It's not the Supreme Court's job to prescribe a detailed new test, and the justices were right to leave that decision with the lower courts, said David Kappos, IBM's assistant general counsel for intellectual property law. He also argued that the patent system will not encounter new chaos and that just the opposite will occur.

"What we have had is an era of extreme uncertainty caused by the issuance of many trivial and marginal patents under the old test," he said in a telephone interview. "What we're going to see now is actually more certainty because those trivial and marginal patents aren't going to get issued."

The ruling marks the latest in a string of patent cases that have prompted the Supreme Court to scale back decisions made by the patent appeals court. By the tech industry's description, the high court has so far behaved in a manner that begins to restore some of the balance to a patent system that critics say has been too often tipped in the favor of patent holders.

In a high-profile case last year involving eBay, the high court sided with the auction giant in making it more difficult for patent holders to obtain injunctions against the use of their inventions when infringement has occurred.

Separately on Monday, the justices knocked down a different Federal Circuit decision involving an ongoing patent spat between Microsoft and AT&T. The court ruled 7-1 that Microsoft is not liable for patent infringement that occurs when the "abstract software code" it supplies to foreign manufacturers is subsequently copied onto machines there.

The ruling also comes as Congress has begun a new foray into rewriting patent law. The latest bill attempts to prevent bad patents from being exploited by allowing third parties to submit evidence that a patent is not novel or is obvious, and by setting up a post-grant opposition process in which people could challenge just-issued patents outside of court.

Although technology companies were generally upbeat about the Supreme Court's latest ruling, its immediate effects aren't entirely clear.

"This may make the holders of some lousy patents a little less interested in going the litigation route because it may well be they realize that their chances of winning are lower," said CCIA's Black. "I have to mitigate that comment unfortunately a little bit by saying that an awful lot of litigation goes on here that isn't expected to go to trial; it's for extortion purposes."

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17 comments

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Lets see how this pans out.
On the surface at least, this looks to be a small step in the right direction.

I have never seen a software patent that was not obvious or based on prior art.

Hopefully this will help invalidate a lot of them.

The correct step, which hopefully happens in the next few years is that patents for software goes away entirely.

Copyright is more then enough protection for software.

Anyone think that congress with ever stand up to Disney and stop abusing the spirit of copyright in the name of corporate profits? Me neither.
Posted by MSSlayer (1074 comments )
Reply Link Flag
Copyright is not enough
see my other reply to your other comment
Posted by zboot (168 comments )
Link Flag
Common misconception
"I have never seen a software patent that was not obvious or based on prior art."

That's probably because you are not properly trained to interpret patent scope. Just like one needs training to properly read and write code, one also needs training (many years) to properly interpret claim scope.
Posted by J0ebl0 (6 comments )
Link Flag
So a code writer can't invent?
The message I get is that one won't be able to patent code, only copywrite. So what if someone else converts the code to another language? Is the copywrite still valid, even to the other code? How would you prove it? What exactly is "obvious"?
Posted by suyts (824 comments )
Reply Link Flag
copyright
How is that different then if I took a currently copyrighted book and translated it to Russian and tried to sell it?

This is no different and protected under copyright.

What this will help stop is stupid stuff like patenting an array or pointers, or the oh so innovative idea of storing and retrieving data from a database.
Posted by MSSlayer (1074 comments )
Link Flag
Show me
Show me something you have done in code (an invention you called it) and I will show where you stole or used someone elses idea in your invention. By the way I hold a patent on for loops and if thens so let me know if you are using those anywhere so I may be compensated.
Posted by TomboSlicko (23 comments )
Link Flag
Time to take out the garbage!
Of course I'm no lawyer, and even farther from being a patent
attorney, but I can read computer science papers from the 70s
and 80s and patent claims from the 90s and oughts, and there
are a lot of patents where the claims are one to one with
software design feaures described in those old papers. I read
something that Donald Knuth wrote about software patents in
1994. He wrote a series of texts called "The Art of Computer
Programming" a couple of decades ago, and also is the author of
the TeX scientific text processor. He wrote that if the software
patent situation had existed at the time he wrote TeX, he would
never have bothered writing it because he would surely have
infringed on numerous patents. He also wrote that most of the
software patents he had seen at the time involved solutions he
expected his computer science students to come up with when
doing the homework he assigned. Thus, the subject line above.
Posted by billmosby (536 comments )
Reply Link Flag
Something in-between
I have read all the comments to date and there seems to be an (obvious) overall theme of distaste for software patents, and yet, confusion as to the limits of software protection (at law).

I agree that the notion of protecting software via patent law has the potential (if not the presence) of becoming an epidemic, obstructive device facing innovation. The idea here, as a prior comment indicated, is that developers will be discouraged from creating new software, fearing a patent infringement suit from somebody, somewhere. As so many have mentioned, software is highly derivative. There is a good chance, especially when considering the need for compatibility, that a piece of code will infringe a frivolous patent (that probably should not have been granted to its owner on the basis of obviousness to those skilled in software development). It's quite impossible to be aware of all the patents out there. Therefore, it's equally impossible to know what software is off-limits. And, paying licensing fees (which could be exorbitant, depending on the licensor) is just inconvenient to a developer, especially since it immediately eats away at any profit that may result from the end product.

With respect to copyright (please note the spelling as many have misspelt it), software code is automatically protected with respect to its form/expression (i.e. the exact way it's written). However, translations are covered under some IP regimes. The extent to which this would apply to software is undetermined, as far as I know. But, a case could be made that code (substantially) identically changed from one language to another would constitute copyright infringement. The important point about software protection under copyright is that the basic idea behind the code is not protected. This was somewhat expressed in previous comments.

Equally important is that where form and idea merge, such that the idea cannot really be coded any other way, copyright will not apply or at least will not be enforced. To do so would be to grant that piece of code patent-like status. However, this would only apply to those subsections of code, and mostly likely, not to an entire program.

I hope this helps clarify things.
Posted by kudos2006 (1 comment )
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