Dan’s blog

There is coverage all over the place of the general sentiment of the supreme court decisions in
Microsoft v. AT&T and KSR v. Teleflex, but i’ll just give you the important points.
First, KSR v. Teleflex.

As usual, the Federal Circuit made decisions that seem to be based on what they believe the law should say, policy wise, instead of what it actually says. They generally make decisions that they can provide a sound basis in policy for, even if it means seriously stretching the meaning of the underlying laws. I usually disagree with these decisions as a matter of policy, but in any case, stretching the law to fit the often idealistic view they have of how patents support innovation is the wrong thing to do. This is one reason that they are so often the subject of harsh criticism. There was *never* anything in the patent act to support their test of obviousness. It was simply made out of thin air and their view of what risks arise when considering obviousness. These risks are not codified as factors to consider when judging obviousness, and as a result, any test rigidly based on them (as the Teaching-Suggestion-Motivation test was) was bound to be smacked down.
For KSR v. Teleflex, the court eviscerated the TSM test for this very reason.

In particular, the court said:

• a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

  The Federal Circuit previously held there is no presumption that it would be more likely to be obvious.

• Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed.

  The Federal Circuit had previously held the that only the problem the particular patent was trying to solve should be looked at. I.E. A person would only look only at those prior art designed to solve the same problem.

• It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.

  The Federal Circuit had previously required explicit teachings of this, rather than allowing common sense (at least, most panels. There is a one-off decision here that said otherwise, but has not been followed).

• a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

  This is more or less the court’s way of saying that people are creative, and ordinary creativity that combines prior art should not be mistaken for true innovation. Patents are intended to protect novel things, not things ordinary creativity and skill would come up with. This is a rebuke of the Federal’s Circuit constant claim that patents can not be made obvious by showing they are “obvious to try”.

• The court noted the one off Federal Circuit decisions that appeared to try to modify the TSM test to avoid being overruled by the Supreme Court, saying
  

  Those decisions, of course, are not now before us and do not correct the errors of law made by the Court of Appeals in this case. The extent to which they may describe an analysis more consistent with our earlier precedents and our decision here is a matter for the Court of Appeals to consider in its future cases. What we hold is that the fundamental misunderstandings identified above led the Court of Appeals in this case to apply a test inconsistent with our patent law decisions.

• Just to show the court gets it, they said:
  

  And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the
  progress of useful arts. See U. S. Const., Art. I, ß8, cl. 8.

  Some of the Federal Circuit judges may take this to heart, but a few seem to believe the correct policy is to let people patent anything, and let licensing fees sort out the winners and losers.

This entry was posted on Monday, April 30th, 2007 at 5:57 pm and is filed under . You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.