Thursday, August 24, 2006

ComputerWorld on EFF brief on obviousness (KSR v. Teleflex)

Relevant to KSR v. Teleflex pending before the Supreme Court, ComputerWorld notes that the Electronic Frontier Foundation [EFF] filed a brief asking the Supreme Court to shoot down the so-called "suggestion test," a method the U.S. Court of Appeals for the Federal Circuit [CAFC] has used to determine whether an invention should be obvious to others, and therefore, not patentable.

IPBiz notes: The test of the CAFC requires that there be a finding of motivation to go from various references which have elements of a later-proposed claim to combine in order to reach the invention of the later-proposed claim. The test is used in order to avoid the problem of hindsight reconstruction. Therein, someone challenging the patent claim could find the various elements of the later claim in several different earlier references and say "See, it was all there." Of course, it may or may not have been obvious at the time to combine all those references in order to reach the invention of the claim.

A different variant of this is in PubPat's challenge to Thomson's stem cell patents. Basically, PubPat says that a recipe for making mouse stem cells renders a later recipe for making human stem cells "obvious."

Grant Gross did not mention a dramatically different view of the hindsight problem in obviousness, available on SSRN. His failure to look through all the evidence is an interesting in view of his text:

The suggestion test "has forced litigants to search through haystack upon haystack of technical knowledge for the exact needle in which someone, somewhere, bothers to state the obvious," the EFF continued.

Help me, I've fallen and I can't get up.


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