Thursday, May 03, 2007

KSR v. Teleflex: surge in patent litigation writes: Thomas Goldstein, a lawyer for Teleflex, said the decision would affect trillions of dollars in investments in intellectual property.

"There will be a surge in patent fights during the struggle to decide exactly how tough the justices intend to be on securing a patent," Goldstein predicted.

LBE had written on scotusblog on May 1:

Bravin, and others, have recognized that the change in the obviousness standard will likely increase the amount of patent litigation (Bravin: “With challengers emboldened to resist infringement claims, more disputes could head to court.” The Washington Post, quoting Professor John R. Thomas, said that the court's ruling makes many existing patents vulnerable to court challenge because they were issued according to a standard the justices have now rejected.) Thus, the near-term impact of the KSR decision will be to enhance uncertainty.

LBE had written on May 2:

There is no doubt that the Supreme Court decision lowered the burden for challenging a patent claim through obviousness under 35 USC 103. Although the TSM inquiry was not removed from the obviousness analysis, it can now be satisfied more easily. Furthermore, the resolution of this particular case suggests that obviousness challenges through summary judgment procedures will be more successful.

The Jerusalem Post has an interesting discussion:

To long-time observers of patent law, the conclusion, which absolved the KSR company of infringing Teleflex's patent on a gas pedal with an electronic sensor, was itself obvious. The revised criteria outlined by the court will undoubtedly nullify many patents, and a lawyer for Microsoft, a frequent target of infringement lawsuits, estimates that it will reduce the software company's exposure to liability by as much as 60 percent.

Not long ago, I had a discussion with a professor, an expert in semantics, about the word "obvious." People often disagree whether something is true, but is it really meaningful to argue whether something is "obviously true" or whether on the contrary it is indeed true, but not obvious? He mentioned a famous folk story about a math professor who, when asked a question, screwed up his face, furiously scribbled equations on the blackboard for a half-hour and then replied, "It's obvious."


A problem with this test [the TSM test of the CAFC], as many commentators have pointed out, is that some ideas are so obvious that people don't even bother to publish them. In this way, the most obvious ideas may be the easiest to patent! Computer scientist and expert witness Jeffrey Ullman mentions a case of a patent granted in the 1980s for a technique he learned from his high school math teacher in the 1950s. His math teacher, and perhaps hundreds of others, never thought that this technique was worthy of publication, beyond demonstrating it as a neat trick to students. (Eventually, the patent was disqualified for an unrelated reason.) The Court wrote: "In many fields, there may be little discussion of obvious techniques or combinations."

Another problem is that something non-obvious later may become quite obvious due to processes unrelated to the patent itself. In a research study I undertook on gene patents, I learned that isolating a new gene required at one time immense skill and ingenuity, and courts concluded that genes could be patented. However, as time went on the process of isolating genes became far more automated, almost routine. Yet patents continued to be granted and enforced.

The article concludes:

One reason for the explosion of patenting in recent years is that there truly has been an immense increase in the degree of innovation and progress. The men and women who devote their 1% of inspiration and 99% of perspiration to creating innovative products and processes deserve legal protection to enable them to profit from their efforts. But a parallel process has been a dumbing-down of the criteria for obtaining patents in the US, and the latest decision will help correct this distortion.

IPBiz notes that the article considered the invention in the KSR v. Teleflex matter to be adding a sensor:

Decades ago, electronic sensors were arcane devices unfamiliar to the average auto engineer, but today they are an off-the-shelf product familiar even to tinkerers.

The problem here is that the writer has NOT explored the implications of changing from "obvious to try with a reasonable expectation of success" to simply "obvious to try."


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