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That’s Obvious!

A patent case pending before the United States Supreme Court could return (some) sanity back to the patent system.

Perhaps the single most important patent case still pending before the United States Supreme Court is the case of KSR International v Teleflex. It’s one in a string of cases where the Supreme Court is being asked to return patent law and its interpretation to the rules in place prior to the establishment of the Circuit Court of Appeals for the Federal Circuit and its reign of activist reinterpretation in the 1980s and ’90s. KSR addresses the issue of obviousness in determining whether subject matter is patentable.

The long-standing rule on obviousness is set forth in the Patent Act. Specifically, the Patent Act questions if the proposed invention was obvious to a person having ordinary skill in the art at the time the invention was made. Verbatim, the language is:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

The proper application of this rule is particularly critical where the alleged inventor has done nothing more than combine two, previously existing inventions that, in the purported new invention, are simply used for their common purpose. For example, if bicycles and bells both already exist independently, is it a new invention to place a bell on a bicycle to serve as a warning device?

The long-standing rule of obviousness, as stated in the case of Anderson’s-Black Rock, Inc. v Pavement Salvage Co. was that patent protection is precluded where “a claimed ‘invention’ consists of ‘a combination[ that] only unites old elements with no change in their respective functions.’” That is, “‘a person having ordinary skill in the art’ is deemed capable of assembling or rearranging ‘old elements with each performing the same function it had been known to perform.’”

For whatever reason, the Federal Circuit, the same, fine judicial body that’s allowed software patents, business method patents, and the now-reversed rule that injunctive relief is mandatory where infringement has been founded, saw fit to issue a new rule on obviousness in 1985. That rule set forth the so-called “teaching-suggestion-motivation test” (Ashland Oil, Inc. v Delta Resins&Refractories, Inc.).

The effect of this rule has been to place an unreasonable burden on both the United States Patent Office (USPTO) and any challenging party to substantiate that an invention merely involving the combination of pre-existing art rendered the purported new invention obvious. Under the Federal Circuit test, such an invention could only be shown to be obvious where published evidence suggested, taught, or motivated the inventor to make the combination. In other words, unless the USPTO or a challenging party could, for example, point to an article published at least a year before the patent filing date that suggested the combination of the art, the combination was considered non-obvious and patentable.

Such a rule has two effects. First, it establishes a threshold for prior art that is both inconsistent with the Patent Act and that is unreasonably high. The second, resulting from the first, is that in the intervening period since 1985, patent after patent has been issued that by all reasonable standards and earlier Supreme Court interpretations of obviousness should never have issued. This has had a profound impact on the software industry, with thousands of “obvious” inventions issuing.

The KSR case deals specifically with the combination of adjustable automobile gas pedals (gas pedals that could be adjusted to the driver’s seating position) and electronically-actuated fuel systems. The combination of such adjustable pedals and cable-actuated fuel systems existed in automobiles for years prior to the onset of electronic-actuated fuel systems. In the mid-1990s automobile manufacturers began turning to electronic-actuated fuel systems, but with fixed gas pedal positions. Teleflex did not file for its patent on the combination of adjustable pedals and electronic-actuated fuel systems until 2000. Both items of prior art were used in the combination in the same manner that they had been used previously. In other words, there appears to be no inventive step other than the combination of these two features.

The KSR case has been fully briefed by the parties, and a substantial number of amicus briefs have been filed in support of KSR’s challenge to the Federal Circuit test, representing the interests of parties as diverse as Microsoft, the Business Software Alliance, the Electronic Frontier Foundation, and the Computer and Communications Industry Association. All of the recent studies on the operation of the U.S. patent system that call for reform specifically call for restoring the standard of obviousness to its pre-Federal Circuit days.

Hopefully, the Supreme Court hears this case in its next term and moves the U.S. patent system back to the path of rationality.

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