Monday, May 21, 2007

Engineering Dean discusses obviousness in KSR v. Teleflex

Dean Voland of the School of Engineering, Technology and Computer Science at Indiana University-Purdue University Fort Wayne. wrote:

A federal appeals court reversed this decision, arguing that the earlier patents were focused on specific problems that would not necessarily lead an inventor to the combination of elements found in the Engelgau design. This court used the “teaching, suggestion or motivation” test through which a patent claim only can be deemed to be obvious if some motivation or suggestion to combine elements in the prior art exists within that body of work, in the problem to be solved or in the knowledge of an ordinary person in that field.

According to this view, simply combining these elements does not constitute an obvious extension of existing designs. As such, it provides expansive opportunities for designers to build upon the prior art and yet receive patent protection for their work.

The Supreme Court reversed this decision. In issuing its finding, the justices concluded that because the Asano patent provided the concept of an adjustable pedal with a fixed pivot point while other patents recommended that sensors should be located at such non-moving locations, “attaching the sensor where both KSR and Engelgau put it would have been obvious to a person of ordinary skill.” It found that the appellate court had erred primarily in using a limited notion of obviousness.

One notes that it was the defendants (KSR) who limited their search for motivation to the "problem to be solved," even though motivation could arise from other sources. Procedurally, the CAFC did not allow summary judgment on the matter, and never decided the issue of whether Teleflex pedal was in fact obvious.

Voland also noted: And numerous existing patents for apparently obvious extensions of earlier inventions now may be successfully challenged in court.

*** wrote of the TSM test: Thus, the TSM test lay on the battlefield without a clear purpose. We must now anxiously await to see if the Federal Circuit is able (or chooses) to successfully maintain the test in the shadow of KSR.

Note the WSJ's KSR v. Teleflex: The Supreme Court’s Big Patent Ruling


See also

In passing, of another patent struggle, note The story of the basmati rice patent battle concerning US Patent 5,663,484.


Eben Moglen says that Microsoft's attempts to win patent suits against those using the open source OS will come unstuck thanks to the Microsoft's deal with Novell. Earlier this year, Novell paid a wad of cash for 'vouchers' which would indemnify users of its SUSE Linux from action.
Here's the problem. These vouchers have no expiration date on them, meaning they can be used to indemnify a holder tomorrow or next year. But the GPL v3, scheduled to come into action later this year, includes a clause that extends a granted indemnity to one person to everyone else, too. [from The Inquirer.]


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