November 27, 2006 4:00 AM PST

Supreme Court to examine 'obviousness' of patents

Software and hardware makers have long complained that a glut of so-called junk patents threatens to disrupt the way they do business.

One key gripe about the patent process is expected to take center stage before the U.S. Supreme Court on Tuesday morning. In their third major patent case this year, the justices are scheduled to hear arguments about what courts should consider when deciding whether an invention is too "obvious" to warrant protection.

"You have some people in industry who say, oh, come on, you've got to be kidding me. This is something we wouldn't ever bother to write down because it's obvious and we're in a fast-moving field."
--Timothy Teter, intellectual property lawyer

The case has its roots in an obscure patent spat about vehicle gas pedal designs involving two companies without mainstream name recognition: the Canadian company KSR International and Limerick, Penn.-based Teleflex. (Teleflex had sued KSR for infringement of its patent on a gas pedal design that KSR contends is no more than an obvious melding of two existing inventions.)

But the facts of the case are far less important than the potential ripple effects of the high court's eventual ruling.

High-tech companies say there's much at stake for them in the court's ruling. For example, when a tiny start-up called Eolas Technologies said that Microsoft's Internet Explorer infringed on a patent claimed to cover browser plug-ins and applets, one of the arguments lodged by the software giant and Web technologists was that the existence of old technology showed the Eolas idea was a no-brainer to anyone knowledgeable in the field. Seven years later, the saga continues to wend its way through the courts.

Several Silicon Valley heavyweights, including Intel and Cisco Systems, have submitted supporting briefs that urge the Supreme Court to revise an earlier ruling. That ruling, they claim, has helped make it easier to obtain patents on seemingly "obvious" combinations of pre-existing inventions.

If the tech outfits get what they want, "you will have more real investment in our research and development, you will have more confident innovators, and you won't have companies worrying about potentially infringing a patent they know is bogus in the first place," argued Will Rodger, director of public policy for the Computer and Communications Industry Association. CCIA's members include Google, Microsoft, Red Hat and Oracle.

Unless the court raises the bar for obviousness, high-tech companies, whose products often depend on combinations of thousands of patents, fear they can count on many more years of costly litigation against ideas they believe never deserved protection in the first place.

Deep-pocketed corporations aren't the only ones worried. The open-source and free-software communities are concerned that the practice of publishing their code and commentary publicly makes them an easy target for questionable patents purporting to cover their systems. Because software writers don't typically have a high tolerance for legal fees--or royalties to patent holders--the open-source system, too, could face grave setbacks, critics of the current standard argue.

Whether the high court upholds the controversial test for obviousness, constructs a new one or falls somewhere in between, the case is certain to make waves in the patent world, industry observers said.

After all, "the vast majority of all work in the Patent Office is deciding whether a claim is obvious or nonobvious," said Gerald Mossinghoff, a former assistant secretary of commerce and commissioner of patents and trademarks. He is now a senior counsel with the law firm Oblon, Spivak, McClelland, Maier & Neustadt in Alexandria, Va.

An obvious idea?
To land a patent, an invention is not supposed to be obvious to a person of "ordinary skill" in the same field.

Making that distinction, however, has proven tricky in cases where pre-existing inventions are combined to create ostensibly new ones. Studies have shown that most people aren't capable of throwing hindsight out the window when deciding whether an idea is too obvious to warrant protection, particularly when well-known elements are put together. That bias creates the risk that legitimate inventions get shut out of patent protection.

For example, after World War II, there was a widespread problem with leaky flashlight batteries, so someone devised a metal wrapping to curb the problem.

"A lot of people would think people have the capability to wrap things in metal, but the Federal Circuit says that's a real problematic situation," said Thomas Goldstein, the attorney slated to argue Teleflex's side before the Supreme Court justices. "You're going to invalidate a lot of patents that need protection."

So in 1982, the U.S. Court of Appeals for the Federal Circuit, newly enshrined as the nation's dedicated patent appeals venue, established what it thought would be a more objective test. It decided that so-called combination patents are perfectly valid, unless some implicit or explicit "teaching, suggestion or motivation" that the elements at hand be combined predates the patent.

And so opened the floodgates for a slew of obvious patents, critics of the system maintain. Many tech companies claim the rule has proven crippling because it effectively requires their engineers to keep a written record of plans to meld particular technologies if they have any hope of proving that a patent was too obvious to be granted. That requirement is more than a little ironic, they argue.

"You have some people in industry who say, 'Oh, come on--you've got to be kidding me," said Timothy Teter, a partner in the intellectual property practice at the firm Cooley Godward Kronish in Palo Alto, Calif. "This is something we wouldn't ever bother to write down because it's obvious, and we're in a fast-moving field."

CONTINUED: The rise of patent speculators…
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