The justices have agreed to hear two appeals so far on patent laws.
The first, granted earlier this week, will re-examine the standard under which an invention is too obvious to get patent protection. The case involves KSR International Inc., a Canadian maker of gas pedals, and Teleflex Inc. (TFX), an engineering company that claims KSR violated several patents it owned.
The court will also decide whether a company challenging the validity of a patent held by another firm must first refuse to pay royalties before lodging a legal challenge. The case involves a dispute between Genentech Inc. (DNA) and MedImmune Inc. (MEDI) over whether patents licensed to MedImmune for a respiratory infection drug are valid. Federal courts have refused to hear the case because MedImmune continued to pay royalties after it filed suit.
Of the KSR v. Teleflex case on obviousness, infringement defendant KSR makes the the accused infringing brake pedals for General Motors Corp.'s Chevrolet and GMC trucks and sport utility vehicles.
KSR is arguing that the standard for declaring a patent invalid for obviousness should be made more lenient, so that it becomes EASIER TO FIND A PATENT OBVIOUS AND THUS INVALID. The particular aspect they are attacking is the requirement that there be a MOTIVATION TO COMBINE different references, when multiple references are needed to show all aspects of the patent claim. The requirement for motivation has been used to prevent hindsight reconstruction of the patent claim from disparate sources after the invention has been made.
Supporting KSR's position on obviousness are companies including Microsoft, Cisco Systems Inc. and Hallmark Cards Inc. "This is probably the most important case the Supreme Court has taken on patents in the past 25 years," said Frank Porcelli, a patent lawyer with Fish & Richardson in Boston. ``This could mean a major revolutionary change." [See the Boston Globe for the quote, the newspaper that otherwise talks of "charcoal crystals" in discussing the "recent" invention of the capacitor.]
The website outlaw made an analogy to what is termed "mosaic-ing" in Europe:
KSR argued that all the integers of the claim were disclosed previously in various sources and that the skilled person would have combined those sources. When that was done, the invention was obvious," said Bould. "This is known in Europe as mosaicing – combining pieces of prior art. It is generally not allowed unless the sources cross refer to each other or it would have been obvious to the skilled person to combine them."
Although outlaw asserted "Claims of obviousness are often the most successful way to defend patent infringement actions," the study by Lunney has already shown that noninfringement, rather than invalidity, is the most successful path for an accused infringer. Within invalidity, obviousness has not been a particularly easy defense.