Forbes on KSR v. Teleflex (obviousness)
With MedImmune disposed of, can KSR v. Teleflex be far behind? In an article An Obvious Patent Law Fix? Forbes talks about KSR in terms of "burden of proof" issues, even though the case is about the motivation component of the obviousness inquiry:
If the burden of proof for obviousness were lower, it would be easier to invalidate the glut of so-called junk patents that software, hardware and other technology companies view as threatening to the way they do business.
Not noting that this was a nonprecedential decision which made no "new" law, Forbes also wrote:
The U.S. Court of Appeals overturned that decision because KSR failed to establish that some "'suggestion, teaching or motivation'" would have led a person of ordinary skill" in the field of automotive pedal technology to combine a sensor and a pedal to create Teleflex's device.
Forbes mixed obviousness with burden of proof:
Under current precedent, the law works like this: An existing patent may be invalidated for being obvious only if there is clear and convincing proof that some "teaching, suggestion or motivation" exists that would lead a person "of ordinary skill in that art to combine art and create new invention."
The "burden of proof" is clear and convincing evidence for ANY grounds of invalidity, whether it is anticipation, obviousness, or indefiniteness. The KSR case is about obviousness, not about the burden of proof for invalidity.
Obviousness requires a similarity between the cited art and invention AND a motivation to go from the elements found in the cited art to the elements in the invention as claimed. One can't arbitrarily combine many references to say a later "combination" invention is obvious AND one can't cite the science fiction novels of Verne or Clarke to invalidate later real inventions that embody their predictions. The problem with the KSR case was that the patent challenger did not bother to write down ANY BASIS FOR MOTIVATION AT ALL. It was the failure to do anything as to motivation, not the failure to provide clear and convincing evidence, that was the challenger's downfall.
A "letter to the editor" of Forbes:
Obviousness in patent law requires a similarity between the cited art and invention AND a motivation to go from the elements found in the cited art to the elements in the invention as claimed. One can't arbitrarily combine many references to say a later "combination" invention is obvious AND one can't cite the science fiction novels of Verne or Clarke to invalidate later real inventions that embody their predictions. The problem with the KSR case was that the patent challenger did not bother to write down ANY BASIS FOR MOTIVATION AT ALL. It was the failure to address the motivation component, not the failure to provide clear and convincing evidence, that was the challenger's downfall. Once a patent has been granted by the Patent Office, is it too much to ask the challenger to document the grounds for invalidity?
If the burden of proof for obviousness were lower, it would be easier to invalidate the glut of so-called junk patents that software, hardware and other technology companies view as threatening to the way they do business.
Not noting that this was a nonprecedential decision which made no "new" law, Forbes also wrote:
The U.S. Court of Appeals overturned that decision because KSR failed to establish that some "'suggestion, teaching or motivation'" would have led a person of ordinary skill" in the field of automotive pedal technology to combine a sensor and a pedal to create Teleflex's device.
Forbes mixed obviousness with burden of proof:
Under current precedent, the law works like this: An existing patent may be invalidated for being obvious only if there is clear and convincing proof that some "teaching, suggestion or motivation" exists that would lead a person "of ordinary skill in that art to combine art and create new invention."
The "burden of proof" is clear and convincing evidence for ANY grounds of invalidity, whether it is anticipation, obviousness, or indefiniteness. The KSR case is about obviousness, not about the burden of proof for invalidity.
Obviousness requires a similarity between the cited art and invention AND a motivation to go from the elements found in the cited art to the elements in the invention as claimed. One can't arbitrarily combine many references to say a later "combination" invention is obvious AND one can't cite the science fiction novels of Verne or Clarke to invalidate later real inventions that embody their predictions. The problem with the KSR case was that the patent challenger did not bother to write down ANY BASIS FOR MOTIVATION AT ALL. It was the failure to do anything as to motivation, not the failure to provide clear and convincing evidence, that was the challenger's downfall.
A "letter to the editor" of Forbes:
Obviousness in patent law requires a similarity between the cited art and invention AND a motivation to go from the elements found in the cited art to the elements in the invention as claimed. One can't arbitrarily combine many references to say a later "combination" invention is obvious AND one can't cite the science fiction novels of Verne or Clarke to invalidate later real inventions that embody their predictions. The problem with the KSR case was that the patent challenger did not bother to write down ANY BASIS FOR MOTIVATION AT ALL. It was the failure to address the motivation component, not the failure to provide clear and convincing evidence, that was the challenger's downfall. Once a patent has been granted by the Patent Office, is it too much to ask the challenger to document the grounds for invalidity?
posted by Lawrence B. Ebert at 5:07 AM
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