April 30, 2007 10:11 AM PDT

Supreme Court loosens patent 'obviousness' test

A unanimous U.S. Supreme Court ruling Monday backed away from a decades-old legal test that high-tech firms argue has sparked an abundance of obvious patents.

In a hotly anticipated decision that could make it easier to challenge patents of questionable quality, the justices called for loosening the current approach set by the nation's dedicated patent appeals court for deciding when a combination of existing elements deserves patent protection.

"Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility," the court wrote in a majority opinion (PDF) penned by Justice Anthony Kennedy.

The court heard oral arguments in November in the closely watched case, which is rooted in an obscure dispute between KSR International and Teleflex over vehicle gas pedal designs.

Technology companies were quick to praise the decision. Several Silicon Valley heavyweights, including Intel and Cisco Systems, had submitted supporting briefs urging the Supreme Court to revise the lower court ruling.

"There will be a better opportunity for examiners to weed out patents or applications that are not worthy of getting patents, and it will go a long way toward re-establishing patent quality," said Emery Simon, counselor to the Business Software Alliance, whose members include Adobe Systems, Cisco Systems and Microsoft.

"What we don't know is how far the judges want the decision to go. We don't know the answer to what the new rule is yet."
--Todd Goldstein, attorney

Others were wary of the decision's broader economic implications on patent holders and voiced concern that the decision will throw the patent system into a state of confusion.

"I think it's very fair to say that it's going to be harder, more costly and more time-consuming for inventors to obtain U.S. patents in all areas of technology, and particularly in areas with predictable art, as we call them, such as mechanical inventions and software and methods of doing business," Robert Greene Sterne, founding director of the patent law firm Sterne Kessler Goldstein & Fox, said in a conference call with reporters. He added that "existing patent portfolios will need to be looked at, and existing relationships will need to be evaluated."

Federal law dictates that an invention cannot be patented if a person of "ordinary skill" in the same field could have come up with it. But because it's easy to claim that an invention is obvious in hindsight, the U.S. Court of Appeals for the Federal Circuit in 1982 concocted a legal test designed to lead to a more objective conclusion.

That standard requires that for an invention to be declared obvious, some "teaching, suggestion or motivation" must exist to show that a person of ordinary skill would have thought to combine certain elements.

Critics have argued that in practice, written evidence is required to pass that test, which has made it harder to overturn allegedly obvious patents and rendered it easier to obtain them from the U.S. Patent and Trademark Office in the first place. Technology companies say that's especially hard for them to prove because of the speedy rate at which they tend to develop new products and ideas.

"It's not written down, it's not published, it's not the subject of scholarly discussion, and that's where the Federal Circuit was basically looking," Ed Black, president of the Computer and Communications Industry Association, whose members include Google, Oracle, Red Hat and Verizon, said in an interview with CNET News.com on Monday.

The justices were sympathetic to those criticisms. "The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way," they wrote. "In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends."

Hardware and software makers have also argued that they're especially threatened by the standard because they would like to be able to rearrange at will the thousands of pre-existing components that compose their products. Some say the lax rules have sparked a stampede of so-called patent "trolls" who make a living off predicting those incremental changes to existing high-tech inventions, landing patents, and then going after companies for infringement.

Supporters of the Federal Circuit's test had argued that any changes would dilute the value of their patents by erasing the "predictability" they currently expect of the system. A number of large, patent-reliant companies like General Electric, 3M, Johnson & Johnson and Procter & Gamble said they believed the current test has been working well and is critical for protecting and encouraging innovation.

Rather than throwing out the so-called "teaching, suggestion or motivation" test entirely, the justices said they expected a number of other factors to be considered as well, namely "the inferences and creative steps that a person of ordinary skill in the art would employ."

As a result of the ruling, "now I can just say, common sense, and a person who was skilled in the particular area, would have known that you could solve this problem using this technique," said Philip Swain, a patent attorney with the firm Foley Hoag in Boston. "You don't have to have a written suggestion or other evidence to suggest the combination; you can just say the person would have inherently known to use that solution."

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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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