The Supreme Court Weighs In
The long awaited decision is here. It is not often the Supreme Court weighs in on patent issues. The Supreme Court has now weighed in on what constitutes "obviousness" for the purpose of obtaining a patent. For years the Court of Appeals for the Federal Circuit has used a "teaching, suggestion, motivation" test to determine if a claim is patentable. Is there a motivation or suggestion to combine the teachings of the prior art?
In KSR International Co. v. Teleflex, Inc., the Supreme Court rejected the Court of Appeals "rigid" application of the teaching, suggestion, motivation test,finding that it was inconsistent with the requirements of Graham v. John Deere, the last Supreme Court case to address the issue. Applying its looser test, the Supreme Court found a claim invalid, which the Court of Appeals had found valid and infringed.
Unfortunately the Supreme Court decision gives little guidance as to how to apply the test for obviousness. Graham v. John Deere provides little specific guidance about the test for obviousness. The Supreme Court's new decision weakens the Court of Appeals' attempt to provide some consistent methodology at determining when a claim is patentable over the prior art. Thus, whether a claim is patentable becomes much more subjective. It makes it all the easier to engage in "hindsight reconstruction." In other words, provide me some decent prior art and I will always be able to find some reason why it would be obvious to combine the references. The favorite trick of patent examiners is to use the advantages that the patentee has shown for his invention as the motivation to combine prior art.
The Supreme Court's decision will likely encourage more forum shopping as patent owners look for jurisdictions which tend to be patent friendly and accused infringers seek out jurisdictions that tend to be hostile to patents. As the predictability decreases, the only ones to win will be the lawyers. Sure glad I'm a lawyer.
In KSR International Co. v. Teleflex, Inc., the Supreme Court rejected the Court of Appeals "rigid" application of the teaching, suggestion, motivation test,finding that it was inconsistent with the requirements of Graham v. John Deere, the last Supreme Court case to address the issue. Applying its looser test, the Supreme Court found a claim invalid, which the Court of Appeals had found valid and infringed.
Unfortunately the Supreme Court decision gives little guidance as to how to apply the test for obviousness. Graham v. John Deere provides little specific guidance about the test for obviousness. The Supreme Court's new decision weakens the Court of Appeals' attempt to provide some consistent methodology at determining when a claim is patentable over the prior art. Thus, whether a claim is patentable becomes much more subjective. It makes it all the easier to engage in "hindsight reconstruction." In other words, provide me some decent prior art and I will always be able to find some reason why it would be obvious to combine the references. The favorite trick of patent examiners is to use the advantages that the patentee has shown for his invention as the motivation to combine prior art.
The Supreme Court's decision will likely encourage more forum shopping as patent owners look for jurisdictions which tend to be patent friendly and accused infringers seek out jurisdictions that tend to be hostile to patents. As the predictability decreases, the only ones to win will be the lawyers. Sure glad I'm a lawyer.
Rand,
Thanks for this post. I think we'll look back at this issue as being huge in retrospect. Don't you think this has the potential to stifle innovation if invested capital can't be protected by patents?
ddt
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Absolutely. The Supreme Court provides virtually no guidance for what is "obvious". As it attempts to get rid of seemingly lesser patents it will take out many of the real breakthroughs. Many of the most significant inventions appear mundane in retrospect. Creating a simple solution to a problem can save millions, but it does not look as "inventive" as a complex solution that is not as effective.
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