Supreme Court Retracts Patent Protection

KSR v. Teleflex, 550 U. S. ____ (2007): In a unanimous opinion authored by Justice Kennedy, the Supreme Court held that the Federal Circuit's "narrow" & "rigid" TSM test is not the proper application of the nonobviousness doctrine of Section 103(a) of the Patent Act.

"To facilitate review, [the obviousness] analysis should be made explicit. But it need not seek out precise teachings directed to the challenged claim's specific subject matter, for a court can consider the inferences and creative steps a person of ordinary skill in the art would employ."

"A patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art."

"There is no necessary inconsistency between the [TSM] test and the Graham analysis. But a court errs where, as here, it transforms general principle into a rigid rule limiting the obviousness inquiry."

Microsoft v. AT&T: With a 7-1 majority, the Supreme Court has ruled in favor of Microsoft in its extended fight againt extraterritorial application of US Patent Law -- holding that Section 271(f) of the Patent Act does not extend to cover foreign duplication of software. Justice Stevens dissented.

Opinions:

144 thoughts on “Supreme Court Retracts Patent Protection

  1. I am particularly concerned with the summary judgment aspect of this case. Not only did the Court loosen up the obviousness standard but it did so while affirming a holding on summary judgment. What does this mean for patent owners? What defendant does not go in with a motion for summary judgment for obviousness in this environment. District court judges who hate time consuming patent cases are going to jump at the chance to get rid of those cases on summary judgment. What will be interesting to see is how the Federal Circuit deals with these cases on appeal. If all the facts have been considered in a light most favorable to the non-movant, what does the Federal Circuit do?

  2. “So, what happens to a case that was allowed solely in light of a formalistic TSM argument?”

    One of my first thoughts when reading the opinion was the amendments I’ve drafted or reviewed that made TSM arguments (successfully, it turned out), lacking arguments as to analogous art, teaching-away, and the other saving grounds.

  3. “…so, as a matter of law, is there now no presumption of validity for those cases?”

    My dear friend,

    there is no presumption of anything after recent SCOTUS decisions…

    In other words, “American justice is the best justice in the world money can buy”

  4. So, what happens to a case that was allowed solely in light of a formalistic TSM argument? This case suggests that would be clear unrebuttable error — so, as a matter of law, is there now no presumption of validity for those cases?

  5. “This is the most chilling passage in the Supreme’s KSR opinion:

    ‘As a result our decision, most (if not all) patents are now very likely to be obvious and invalid. We urge businesses to file lawsuits and quickly rid the nation of these patents in due course. Rather than innovate, we believe that the United States economy is best served by imitation, as exemplified by our friends in Asia.’

    That’s probably dicta, but it is worth noting.”

    I might not agree with your view of obviousness, but I actually thought this was pretty funny.

    However, given that the Court said “inventions in most, if not all,instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known,” and given the remainder of the opinion, your first sentence has a ring of truth to it.

  6. Malcolm,

    I think I did mistake you for somebody else. I was responding to the 2:21 post, which appears to be posted by you, but may be incorrect.

    I’m not worried about being out on the street. I’m just fine.

    I agree with your insights.

    Thanks for the newsflash. Don’t have to be an attorney to prosecute, but it helps. Particularly if your clients want patents that are worth the time and effort.

  7. “P.S. I’m curious to know why you think KSR is going to put me, or any other career patent prosecutor, out of work.”

    John, you have me mistaken for someone else.

    “Are you one of those patent “litigators” who doesnt’think patent prosecutors are “real” lawyers?”

    News flash: you don’t need to be a lawyer to prosecute patents. That’s not what I think. That’s what I know. I enjoy both practices.

  8. John Darling wrote

    “when all of us patent attorneys are out of a job, what are you going to be doing for a living?”

    I dunno, John. Seems like you lost it momentarily with your scary stories about being out on the street.

    My “insight” is that KSR will have little effect on filing in the short term and zero noticeable effect on the employment of patent attorneys. But it will affect the rate of issuance and the validity of crap patents. That will take some time to trickle down to the folks who presently file applications on whatever they think they “need” to have pending.

  9. Malcolm,

    P.S. I’m curious to know why you think KSR is going to put me, or any other career patent prosecutor, out of work. Are you one of those patent “litigators” who doesnt’think patent prosecutors are “real” lawyers?

  10. Malcolm,

    P.S. I’m curious to know why you think KSR is going to put me, or any other career patent prosecutor, out of work. Are you one of those patent “litigators” who doesnt’think patent prosecutors are “real” lawyers?

  11. Malcolm,

    I’m not flipping out. Or crapping my pants. Just can’t understand the mindset of the examiners who want to see less patent applications filed. If I was an examiner, and I was for awhile, I’d want people to file as many applications as they could possibly afford. More job security. But as I haven’t yet been able to figure out the thought process of PTO lifers, I guess I never will understand. Not that I need to understand it to get my clients’ applications allowed. I understand the PTO production system, and as far as I’m concerned, that’s pretty much all one needs to know.

    As a career patent prosecutor, I’d love to hear your theory. Just keep in mind that I’m one of those who doesn’t think the decision is all that impactful. My mascara’s not running, and my supply of Kleenex is still pretty full. Feel free to enlighten me, and everybody else, with your keen insights.

  12. Not true Nathanael. The fundamental and underlying purpose of our patent system is to encourage innovation by granting to inventors a limited exclusive right. While disclosure is an obvious benefit of our patent system, it is not the fundamental purpose set forth in the Constitution. Indeed, there is nothing in the Constitution which even requires disclosure as part of a patenting system enacted by Congress. Nevertheless, “the means adopted by Congress of promoting the progress of science and the arts is the limited grant of the patent monopoly in return for the full disclosure of the patented invention and its dedication to the public on the expiration of the patent.” Scott Paper v. Marcalus Mfg. Co. “The patent system, which is rooted in the United States Constitution, serves a very positive function in our system of competition, i.e., the encouragement of investment based risk.” Loctite Corp. v. Ultraseal Ltd. (Fed. Cir. 1985).

    Disclosure has also been characterized as the “consideration” which an inventor “pays” in order to receive the benefit of patent protection. And let’s not forget that disclosure itself serves two purposes: making advancements known to the public and informing others what your patent actually covers.

    Perhaps one of the best commentaries on the goal of promoting progress by ensuring a strong, pro-inventor patent system is from Justice Story:

    “The Constitution of the United States, in giving authority to Congress to grant such patents for a limited period, declares the object to be to promote the progress of science and useful arts, an object as truly national, and meritorious, and well founded in public policy, as any which can possibly be within the scope of national protection. Hence it has always been the course of the American courts, (and it has latterly become that of the English courts also,) to construe these patents fairly and liberally, and not to subject them to any over-nice and critical refinements. The object is to ascertain, what, from the fair sense of the words of the specification, is the nature and extent of the invention claimed by the party; and when the nature and extent of that claim are apparent, not to fritter away his rights upon formal or subtle objections of a purely technical character.” Ames v. Howard (1833)

    By no means am I discounting the disclosure benefit implicit in our patent system (albeit, a benefit which is of far less import today than in the past). But, it is incorrect to suggest that the Constitutional goal of promoting progress was largely based on promoting disclosure of inventions.

  13. “I’m not quite ready to start looking for another job though. Question for you, genius: when all of us patent attorneys are out of a job”

    Correction: when *you* are out of a job. KSR isn’t going to cause me to lose my job.

    It’s rather bizarre that people flip out like this. I saw the same thing with Festo. It’s mostly career prosecutor types who crap their pants. I have a theory for why that is but I have learned from experience that very few people here are interested in that theory. They’d rather soak their kleenexes and imagine that every other case represents the “death” of their livelihoods.

    Pretty sad.

  14. Alun Palmer wrote:
    “Silly me, I always thought the purpose of patents was to protect innovation, but apparently not.”

    Um, it never was. Read the U.S. Constitution. The purpose was to “promote the progress of [science and] the useful arts”. Largely by promoting public disclosure of inventions.

  15. I think that arguments based on TSM are history. It wasn’t something I used in the majority of applications, but it was a test designed to ensure that rejections were based on evidence. It does seem likely that arguments based directly on the substantial evidence standard will become more common. When I have used such arguments in the past they have not fared well, perhaps because the PTO doesn’t see itself as bound by the AAPA for some reason?

    Declarations will certainly become more common, but often prosecution is too early a stage to prove up secondary considerations.

    It also seems that obvious to try has been given the green light.

    It was not a surprise that the Supreme Court made TSM optional, and hence completely redundant and useless, but is a great dissapointment that they failed to replace it with anything workable. If we are not quite thrown back to 1950, we have fared little better. Apparently ‘ordinary innovation’ is not enough. Silly me, I always thought the purpose of patents was to protect innovation, but apparently not.

  16. Someone wrote:
    “You’re just a special interest group, that’s all, and you just want to jigger the system so your personal needs are being served and nevermind anything about what’s good or right for the county or innovation or anything else. You want yours. You got yours. Now those damn Supremes are going to make it harder for you to get yours!”

    Actually, the SC just made me a lot of money. More cases that will need to be appealed. More Reexams to be filed. More litigation challenges.

    Once they kill the continuation rules and introduce an opposition system, it’ll be even more work for me.

    Geez, I’ll probably be up to 50 or 60k a month when they’re done. And that’s profit, not just receipts.

    But I don’t support most of the changes. I am concerned with the little guy most.

    Oh, in terms of who’s worth what – I turn away clients, because I’m that good and I’m that much of a bargain. I’m worth more than I charge, but I keep my rates relatively low because it makes for an extremely loyal clientelle and zero hassles.

    But think what you want about what I’m worth. If the clients could go down the street and get the same or better service for a better price, they would. But they can’t.

    Here’s one of my rules – no clients with newbs in house – only grey hairs.

    Why? Because the newbs have no idea what things cost, so they don’t recognize good value. I give em at least 10 years to get raped by Big Law and then I consider them.

  17. “I really don’t think that position prevailing on the Bush Court is surprising to anybody.”

    Well, I’m not so sure about the SCOTUS, but the Congress is now controlled by the democrats.
    In the previous 2 Congresses controlled by republicans Patent “deform” was a no-go, not because of their sympathy for a little guy, of course, but because their close affilication with big pharma. We, small inventors, just happen to be on the same side of the fence with big pharma, as far as patents are concerned…

    Now, democrats come to power and here we go: patent deform of 2007…
    We already have EBay, now they want damage apportionement to finish us all..
    (damage apportionement = no contingency litigation)
    And I used to think that democrats have a little more compassion for us, little guys…
    Now I see that they are all the same… I am not voting for either of them in any upcoming elections

  18. What’s really going on with the recent decisions is just this: a transfer of wealth from the have-not’s to the haves.

    A patent is one way for a small player to protect himself or herself from immediately being knocked off and eventually run out of the market by a bigger player that has more name recognition, established shelf space, etc.

    By removing the threat of injunction, making patents easier to overturn, etc., the Court has basically said, “We want that wealth to stay in the pockets of the wealthy rather than give challengers an opportunity.”

    I really don’t think that position prevailing on the Bush Court is surprising to anybody.

  19. Let’s not forget the facts of KSR. Based on the perception of the SCt regarding positioning of the sensor, the “rigid formalism” of the TSM test appeared to obfuscate the obviousness of mere placement taught by several references. As a patent prosecutor, I do not think things really change at all with this decision. The sky is not falling.

    Most claims will still face the same types of rejections, and the same arguments which were reliably successful will continue to be so. I have never had an Examiner give much weight to a TSM argument anyway. They are always more impressed with teaching away, missing elements, incompatible references, expert opinion, etc. Sure, litigation will sometimes end up with dualing experts – but is this really anything new? We should just calm down and realize that we are lawyers and are perfectly capable of tweaking are arguments to fit the “new” standards. Obviousness always was, and always will be, an amorphous concept. “Inventive step” is really no different – just different nomenclature. The particular facts of each case are always controlling here – “common sense” really does solve the question in the vast majority of cases.

  20. THE Examiner wrote, “You try your deplorable tactics of overloading us and we will now respond accordingly. Give us 100 claims of the most insignificant variation, we will limit you. Prolonging the prosecution over insignificant limitations, we will give you one more chance.”

    Given that continuing applications and hundreds of claims are expensive, why do you think applicants file those claims and applications? The deplorable purpose of overloading you?

    Try reading a few Federal Circuit cases.

    After you’ve read infringement decisions turning on the meaning of innocuous limitations (such as “or,” “at,” “above” and the like), you realize that limitations and variations that appear “insignficant” today can make the difference between infringement and non-infringement in litigation. After you’ve read decisions discussing direct infringement, contributory infringement and inducement, you realize that you’ll want a variety of different claim sets to cover each type of infringer. After you’ve read decisions discussing damages, you realize that you’ll want a variety of claims to increase damages. Whining about the volume of claims merely demonstrates ignorance of (or indifference towards) the issues that patentees will face when they seek to enforce their patents.

    Why not let market forces determine whether additional applications and claims are filed? For more important inventions, more applications and fees will be filed. For less important inventions, fewer will be filed. Either way, the applicants (who are in the best situation to judge the value of their inventions) can weigh the costs and benefits of continuing prosecution.

  21. Well gideon, you put your finger on the problem.

    A system has been created that rewards some players far in excess of any real contribution they make.

    We all know what happens under those systems- those sucking at the nation’s teat will scream fight hiss and spit to not be separated from their manna. They’re like addicts; they don’t CARE about the good of society or the country or any other godd*mn abstraction- they want to go on getting theirs and their addicted brains will generate ANY thought pattern they need to, deny any reality, and tell you the sky is green if it means that they’re not disturbed from their positions.

    You’re just a special interest group, that’s all, and you just want to jigger the system so your personal needs are being served and nevermind anything about what’s good or right for the county or innovation or anything else. You want yours. You got yours. Now those damn Supremes are going to make it harder for you to get yours! They’re all idiots, that’s the REAL problem! It’s an outrage ! It’s the End Of Everything !!!

    Special interest group…. who can afford to fund lawyers… OOPS! I forgot! You ARE lawyers.

    my God, am I going ad hominem? I have to review the state of my soul….

  22. Phew! The Supreme Court ruled that only a court can consider the inferences and creative steps a person of ordinary skill in the art would employ, not a patent examiner. Otherwise, a patent examiner need only demonstrate that each element of a claim was, independently, known in the prior art and then “consider” the creative steps that examiner would have employed to combine those elements. With 6,000,000+ US patents, every element of a claim can be found. Combine that with an examiner’s unchecked “considerastion” and you got a 103 for just about all claims at the examiner level.

  23. The Examiner wrote: “It’s interesting to see all the spins being generated by the attorneys to console themselves about this ruling. Sooner or later, we will all have to face the fact that the pendulum has shifted — for the better.”

    Console myself about this ruling?

    I know that many practitioners get satisfaction out of allowances.

    I, on the other hand, recognize that the whole prosecution system is rigged by arbitrary “count” requirements and limits on the number of allowable applications that can be produced by each Examiner.

    So I get my satisfaction out of doing the best I can with what I got.

    Oh yeah. And I also get my satisfaction by knowing that I made 40 grand last month doing the best I can.

    How about you Examiner? How’d you do?

  24. Pretty funny post from THE examiner. I’m not quite ready to start looking for another job though. Question for you, genius: when all of us patent attorneys are out of a job, what are you going to be doing for a living? You’ve probably given that about as much thought as you did your last “A in view of B” combination.

  25. It’s interesting to see all the spins being generated by the attorneys to console themselves about this ruling. Sooner or later, we will all have to face the fact that the pendulum has shifted — for the better.

    But this is only the start. With the rules change expected to be implemented around July, we will have the classical pincer movement almost completed. You try your deplorable tactics of overloading us and we will now respond accordingly. Give us 100 claims of the most insignificant variation, we will limit you. Prolonging the prosecution over insignificant limitations, we will give you one more chance. Argue about motivation because you just don’t understand the technology, time for you to look for another line of work.

  26. Well, I am sure that many examiners think that KSR gives them the upper hand.

    BUT – examiners had the upper hand for the last few years, with their general disregard of TSM. In general, I see fabricated statements from examiners about the purported TSM in the references.

    So If I now receive 103 rejections with fabrications of\
    “common sense”
    “the ordinary course without real innovation”
    “ordinary innovation”
    “obvious to try”
    “predictable variation”

    How will that change the result of the application process? Not much in my estimation. Examiners have had the last word now for quite some time, and they will continue to have the last word.

    Michael Smith

  27. “Smart people in America actually finished dinner long ago – now we are having a beer.”

    Enjoy! ;)

    The sun hasn’t yet set on the left coast …

  28. Malcolm, I must once again disagree with you. Smart people in America actually finished dinner long ago – now we are having a beer.

  29. “My ancestors fled Europe for America because they couldn’t take oppression in the name of the state. Guess what smart people in America are doing now…”

    Eating dinner?

  30. this a woo-hoo! for me ! Screw the American market.. EU here I come !!”

    Why do you say that?

    I said that because that means I don’t have to jaunt up to Canada every time I want to write a line of code to avoid prosecution of the sort that befell Vonage.
    link to blog.biginternetmall.com

    I can write code here, ship it to the EU and sell it there without reprisal. That way, it will be easier to move there, where developers are still free to develop software.

    Of course, I can’t safely sell code here, since the US patents ideas and concepts, but that’s OK. I figure in 15 or 20 years time, after the IP-everywhere true believers and fanatics have turned the US into a monopoly-issued, crap-ware desert of non-innovation, the stark difference between software choices and quality between the US and the EU, you can’t patents mere ideas, will have driven everyone with an original idea or vision or creative talent overseas anyway to escape Microsoft et. al. and I’ll have a jump on the process.
    link to networkworld.com

    Face it America, your special interests will reduce you to the land of the slave-holders , er I mean patent wielding multinational CEOs and the enslaved, er, I mean H1Bs who come here to escape the lawlessness of whatever 3rd world shithole they’re from and don’t care if the best they can hope to aspire to is perpetual servitude.
    link to blogs.zdnet.com

    Don’t worry. You’ll enjoy living in the Soviet-style Corptocracy with Microsoft rolling out another year’s version of their overpriced crashware enforced by government-backed monopolies. It will be a slave-holder’s paradise- no competition, no dissenters.
    link to gizmodo.com
    link to slashdot.org

    My ancestors fled Europe for America because they couldn’t take oppression in the name of the state. Guess what smart people in America are doing now…

  31. “Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

    What kind of idiot wrote this ?

    That’s precisely why vast majority of patents are filed – to protect an innovative solution to address some known need at the time of invention, to solve some existing problem…

    As far as I remember the EPO has a very reasonable approach to patentability, something like “problem-solution” analysis

    Why don’t those idiots try to learn from EPO practices, instead of turning the whole field upside down ?

  32. Malcolm, I don’t think you need to brush up on “… insults before I dare compete with this veritable Don Rickles of the Internets.” You seem to excell in that area, is that is your long suit?

  33. The decision is not as bad as I thought it was going to be. It certainly provides accused infringers, and examiners, with more ammunition, but it’s not an Alamo situation for patent prosecutors and plaintiff’s counsel. Unfortunately, J. Kennedy’s multiple uses of “can” and “could” only serve to confirm what I already knew: judges don’t actually read the statutes they are interpreting. 103(a) clearly requires that the differences between the claimed subject and the prior art would have been obvious.

    I must say examineranon’s glee is downright amusing. I get the sense from his/her posts that he/she simply doesn’t understand the decision. Examiners, and accused infringers, still have to provide a convincing line of reasoning to combine references. (I don’t think that section of the MPEP is getting edited out.) So it’s not called motivation anymore, you still have to put something in the OA that convinces the applicant, and the Board, and the court, that one of ordinary skill in the art would have combined the references.

    To answer examineranon’s question, no, I won’t be arguing no motivation to combine. It was never my favorite, or most useful, argument anyway. I only had to use it occasionally. Most of the time (90+%) the examiner hasn’t even found all of the claim elements. Usually what I see from examiners is along the lines of “Ref. A discloses a whatchamacallit substantially/essentially as claimed.” After reading the (entire) reference (which no examiner actually does), my suspicions are usually confirmed: Ref. A doesn’t disclose any such thing. So no my response will be: The examiner has failed to correctly determine the scope and content of the prior art, and by implication, has also failed to correctly determine the differences between the claimed invention and the prior art. That way, I don’t even have to respond to the “reason” for combining that’s (at least hopefully) supplied. (Examineranon, please do supply it, we patent attorneys do have senses of humor and need a laugh once in a while.)

    I must say I am looking forward to the seeing some of the reasons for combining that J. Kennedy is now requiring examiners to provide. Somehow, though, I don’t think that the old tried and true “design choice” is going to walk off into the sunset.

    I’ve always been a fan of the non-analogous art argument. I think it’s going to make a big comeback in response to this decision. Of course, the typical examiner response will be “Applicant’s field of endeavor is inventing, therefore the reference is analogous.” You have to admire their “creativity.”

  34. “Just doing a public service. you deserve to know how you come across.”

    Sounds more like a personal service than a public service. Is it a two-way street? Do let me know. I’ll need to brush up on the latest trends in personal insults before I dare compete with this veritable Don Rickles of the Internets.

  35. Its unlikely that the examiners will follow this. They will know that most of them have to be fired if this judgement is correct.

    Just wonder if any one likes it? The patent prosecuters, the examiners, the companies which file for patent?

    Cannot say any one of them!

    I believe that it is not good for anyone when innovation is not encouraged and such an high standard is applied to be inventive (Einstein?).

  36. “Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

    Why would even file a patent unless you were addressing a need? If noone wanted (or you percieved they did not) you would never file!!!! This could make all patents invalid if applied broadly. The only thing patentable is something that includes something noone ever thought of before!!! Wow, we might be back to the light bulb over the head test!

    Good thing is, that interpretation disagrees with other statemnts in KSR and In Re Kahn.

  37. PDS-

    Great point, and this is why the framers behind this just made billions while complaining to Congress and PTO about others making millions. Patents are not worthless, but alot less valuable.

  38. “Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

    The problem with this standard is the 99% of inventions address a known need, thus with this standard the Examiner can say anything and reject the claim. This is exactly why the Fed Cir went with a strict standard and led to this whole thing. This is an inventation to uneven examination.

  39. Just doing a public service. you deserve to know how you come across.

    Back on point – I still think the Supremes followed the recent Fed Cir decisions and didn’t completely overturn the apple cart. If the new rules leave RCE’s (but more expenive ones) and don’t make you file all divisionals at the same time they might be something we can deal with. This of course assumes that 10 claim limitation and the “similar filing” limitation leaves.

    Dennis – if they only submitted part of the rules would they need to place it in the Fed Register again? Not my area of law, but I don’t think so. If they only submitted half the rules they posted originally we might be OK.

    We survived KSR, IMO.

  40. Malcolm said: “So called “factfinders” do this in the context of determining the motivation to combine elements found in disparate prior art references. KSR is about the motivation prong and how explicit the description of the motivation in the art needs to be, as a per se matter. The answer is: “not very.” The rigid TSM test — used occasionally to uphold the validity of a patent — is no more. It has ceased to be. This is a good thing.”

    I respectfully disagree, at least if we follow the KSR Court’s mantra of remaining faithful to Graham. In Graham, the Court said:

    “While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, at 155, the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. See Note, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964).”

    I remain unconvinced that the concept of a “motivation” to combine references is properly placed in the realm of the factfinder. As for whether or not KSR still relies on the concept of a motivation to combine references, I think Malcolm is correct – although “motivation” might be too strong of a term. In KSR, for example, the Court said:

    “Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

    Thus, the Court is still requiring some reason why one skilled in the art would have combined the teachings of two or more references. KSR does not permit the invalidation of a claim simply by finding each and every limitation in the prior art – but the rational basis for the combination is clearly less than it was under a strict application of TSM.

  41. Question for the board.

    Any estimates/guesstimates on the value of US issued patents world-wide prior to this decision?

    Any estimates/guesstimates on the reduction in value of those patents on the basis of this decision? For example, a patent owner may not have their patent invalidated, but they may not take as much in licensing fees if they think their patent is vulnerable as a result of KSR.

    MM free

  42. “You must be a bachelor’s degree holder in over you head.”

    “your head is even bigger than it comes across online.”

    You forgot to mention my mom’s combat boots.

  43. “conflate chem and bio” You must be a bachelor’s degree holder in over you head.

    As to you other point Malcolm – if you think Examiner’s trust you, your head is even bigger than it comes across online.

  44. “The SC in KSR made very clear that the the standard for obviousness is NOT dependent on motivation. PERIOD.”

    Really? I missed that. Can you cite the passage?

  45. “Presto, you get out of representing the client and there is no-malpractice liability.”

    Hmmm. Is that your legal opinion? ;)

  46. Mr. Examineranon:
    I wouldn’t count my blessings just yet. According to this opinion you have to articulate the reasoning behind the combination. That means you better start boning-up on the undue experimentation analysis, because it won’t do to simply state that a person of ordinary skill in the art can do so and so. You will say something akin to common sense dictates and WHAM! you are snared. As soon as you say that I respond that I cannot figure out how to combine the art and make a request purusant to MPEP 2144 that you must satsify the explanation of combining by satisfying the enablement criteria for purposes of a person of less than ordinary skill in the art. In other words I will force you to enable the combined disclosures or your combination is no good. Mind you that you won’t be able to rely on the mythical person of ordinary skill in the art. He he he he

  47. L Hurtz wrote:
    “This decision does not eliminate the necessity of a motivation to combine at all…. The Examiner still cannot simply state that that Reference A teaches X and Reference B teaches Y and therefore it would be obvious to combine them to get XY.”

    I think you’re entirely wrong. The SC in KSR made very clear that the the standard for obviousness is NOT dependent on motivation. PERIOD.

    So I don’t know how anybody could reasonably conclude that “no motivation to combine” is a winning argument.

    The response from the Examiner will be, “no motivation required – see KSR”. And s/he will be right.

    So, again, it’s really very clear where we’re at.

    The Examiner must to the “Graham” analysis. That’s it. If he/she has done that and concluded “obvious”, your choices are amend or appeal. Arguing “no motivation to combine” is about as useful as arguing “blue jays don’t live in China”.

    And to state it again, the Graham analysis is:

    1. Review art scope.
    2. Check for differences in claims compared to art.
    3. Determine level of skill of POSITA.

    Implied is – “determine if it’s obvious”.

    That’s it. It’s really chilling in a way. It’s all just a judgement call now.

    Oh well.

    More money for me.

  48. Yawn:
    Let’s just look at the numbers. The Federal Circuit can ram their law down the USPTO throat 1,000 times for every time the Supreme Court can reverse the Federal Circuit. Let’s face it, the Federal Circuit is, and always will be, the defacto Supreme Court of patents. Look at how they handled the substantial evidence rule when reviewing of Appeal Board opinions. They said, you’re right, it is a substantial evidence test that must be used. So now they use the words “substantial evidence” and then go about the same analysis as always. Same thing here. In fact, the Supremes already cited with approval the new bag of language used by the Federal Circuit. So will the over all anaylsis change-No! It is just another set of lexicography that the Federal Circuit will recite and come about the same result in each case. We will be back to the same old analysis. The only real change is that patent attorneys can now say to a client. hey, the law changed, it’s not my fault they won’t allow the patent now. Blame the Supreme Court. Presto, you get out of representing the client and there is no-malpractice liability. It really is a cool situation in that regard.

  49. “There are good examiners that will listen and you can work with, but far too many seem to have dealt with you and hate all attorneys.”

    I’m sorry to hear that you are having these difficulties. The Examiners I deal with are very helpful.

    “What planet do you live on? Biotech examiners are no better then chem examiners”

    I apologize for the vagueness. I tend to conflate chem and biotech and was mainly thinking about examination in those groups versus, say, the board game art unit.

  50. Malcolm -

    What planet do you live on? Biotech examiners are no better then chem examiners…and probably worse. Malcolm, please call when you get your bar number.

    I am a Ph.D (in genetics), inventor, agent and now attorney – you certainly are not dealing with the 1600 I deal with. There are good examiners that will listen and you can work with, but far too many seem to have dealt with you and hate all attorneys.

  51. “Examiner’s better supply some reason for the combination other than they can.”

    In biotech, most (but not all) Examiners provide very good reasons for the combinations. I’m sure it is different in different art groups. We can ask whether this is due to the prevalence of Ph.D.s in the biotech group versus other disciplines. Or we can pretend that such differences do not exist. I would hate to offend any of the sensibilities around here by probing into such delicate areas.

  52. “The KSR Court clearly states that the factfinder should be permitted to use their common sense, but where do factfinders do this within the framework of the obviousness analysis?”

    So called “factfinders” do this in the context of determining the motivation to combine elements found in disparate prior art references. KSR is about the motivation prong and how explicit the description of the motivation in the art needs to be, as a per se matter. The answer is: “not very.” The rigid TSM test — used occasionally to uphold the validity of a patent — is no more. It has ceased to be. This is a good thing.

    Let’s consider that population of “innovators” who monitor the news for signficant developing trends and events. On day zero, the news reports that a newly identified virus which afflicts some people may be transmitted by pet geckos. Our inventors excitedly begin typing up their applications for using [insert method] for identifying the virus in geckos, making a database of the location of infected geckos, testing imported geckos in pet stores, exterminating infected geckos, and treating infected geckos.

    Does the “prior” art teach any of these gecko-related claims? Nope — not expressly. Our population of “innovators” would argue strenuously in the pre-KSR world that any attempt to render such claims invalid by reference to the express teaching of NON-gecko methods would be “hindsight.” And sometimes — not often, but sometimes — a patent would squeak through. And if the gecko virus turns out to be a major problem, one of these dice-tossing “innovators” will have struck patent gold!!! God Bless America, etc.

    The Supremes wisely endeavored to put a stop to this nonsense. A patentable innovation is more than something that nobody else had taken the time to explicitly write down. In reality, we assume that our patent examiners are rational human beings. In the absence of evidence to the contrary, a **rational argument** that a novel “solution” is in fact simply doing what any skilled artisan would do under the circumstances will suffice to tank a patent drawn to that solution, unless the applicant can demonstrate why the argument is, in FACT, false.

    Again: nothing revolutionary here and, as has been pointed out, it is in fact a tried and true method of tanking patents. In its KSR decision, the Federal Circuit appeared to close the door on that method. Nine boots just kicked the door down.

  53. So how does this change your day Examiners? I mean, seriously (i’m only half trolling, half truly curious) – are you going to use that “I don’t have to show a motivation to combine argument” in your next office action, picking and choosing among unrelated prior art? I’m guessing that you will, but only for lack of a better rejection.

  54. Lionel says:

    “To make a prima facie case, the Examiner could state, for example, that Reference A teaches X and Reference B teaches Y and that the two references are from analagous art groups and that the combination of X and Y produce results entirely predictable to one skilled in the art.

    The Examiner still cannot simply state that that Reference A teaches X and Reference B teaches Y and therefore it would be obvious to combine them to get XY.”

    Let me be honest. (As if you didn’t already know.) In my art of communications, most applications are (or had been up to this point) allowable. It always comes down to the point where I have a dozen references that solve the same problem of the inventor’s application (yes, I do search invention), but there is nothing in reference B that says, “the use of this particular type of filter is great because…”

    IMO, the Graham factors are easy street. Analogous art, even strictly analogous art, is a dime a dozen. It’s that darn “reason to combine” that keeps me from meeting my production goals. Examiner’s are torn between what seems like it should not be a patentable difference among a combination of so many strictly analogous references, and the fact that there is no explicit teaching.

    Heck, I’ll take just the Graham factors any day…

  55. So, how does this change the remainder of your day, fellas. I mean, seriously, (i’m only half trolling, half truly curious) – Are you going to use that “no motivation to combine argument” in your next response or not? I’m guessing that you’ll still use it, but only for lack of a better argument.

  56. examineranon wrote, “I’m starting a list of reasons that motivation is not required and why my reasons to combine are legally sufficient. Let the fun begin!! Time to hit up the water cooler and spread the joy!!”

    It’s good to see your approval of this Court’s KSR decision. Given the Court’s reaffirmation of the Graham decision, are you going to provide a detailed analysis of each of the Graham factors in your office actions? … I didn’t think so.

  57. examineranon wrote “Right, except that a prima facie case of obviousness no longer includes a rigid teaching, suggestion, or motivation”

    Examiner’s better supply some reason for the combination other than they can. This decision does not eliminate the necessity of a motivation to combine at all. You do understand that?

    It simply overruled the rigid TSM test applied by the CAFC.

    To make a prima facie case, the Examiner could state, for example, that Reference A teaches X and Reference B teaches Y and that the two references are from analagous art groups and that the combination of X and Y produce results entirely predictable to one skilled in the art.

    The Examiner still cannot simply state that that Reference A teaches X and Reference B teaches Y and therefore it would be obvious to combine them to get XY.

  58. Chris McGeehan wrote “However, Examiners are subject to the Administrative Procedure Act, which requires that agency decisions be supported by substantial evidence. In order to meet this burden, continued reference to objective evidence for each element of a prima facie case of obviousness will probably still be required.”

    This presumes they do that now, which they often don’t.

  59. “In order to meet this burden, continued reference to objective evidence for each element of a prima facie case of obviousness will probably still be required.”

    What prima facie case? There’s no mention of that in the SC case. Given that they just upended the FedCir rule, why do you think that the Examiner still has a burden of doing anything more than what Graham says?

    i.e. . . . Review art. Find differences between art and your claims. Note skill of ordinary artisan. Issue 103a rejection.

  60. pds, thanks for the response and good comments, but one thing, the phrase is “couldn’t agree more,” not “could agree more.” I see it somewhat commonly and it is a pet peeve of mine.

    Joe

  61. Right, except that a prima facie case of obviousness no longer includes a rigid teaching, suggestion, or motivation….

  62. I think that it will be easier for an accused infringer to prove obviousness in the district court than for an examiner in the USPTO. As I understand it, as long as an argument in favor of obviousness can survive a Daubert/Rule 702 challenge, it will be admitted in district court and can be considered.

    However, Examiners are subject to the Administrative Procedure Act, which requires that agency decisions be supported by substantial evidence. In order to meet this burden, continued reference to objective evidence for each element of a prima facie case of obviousness will probably still be required.

  63. “The Court of Appeals, finally, drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. … Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” p. 17

    The above passage is curious. The mantra of avoiding “hindsight bias” has, in general, been directed to the analysis of the ultimate question of obviousness – which as everyone knows is a question of law, not fact. The KSR Court noted that Graham itself warned against a “temptation to read into the prior art the teachings of the invention in issue.” And the TSM test was intended to prevent the use of “hindsight bias.” But, there seems to be a disconnect here.

    On the one hand, Graham talks about how the so-called “secondary considerations” of nonobviousness help to avoid the use of hindsight, and “to resist the temptation to read into the prior art the teachings of the invention in issue.” But, it seems to me that there are two different issues involved here. When the Graham court refers to avoiding the use of hindsight, it seems to me that they were referring to the use of hindsight in deciding the ultimate legal question of obviousness. The part about not reading the teachings of the invention into the prior art goes to an earlier step in the process – determining the scope and content of the prior art (which is a factual, not legal, undertaking). The improper use of hindsight is usually not an issue during that step of the analysis.

    As for the TSM test, its purpose was to prevent the use of hindsight bias during the final step of the obviousness analysis – determining, as a matter of law, the ultimate question of obviousness based upon the earlier factual determinations. But, the question of what a particular reference taught or suggested was still viewed by the Federal Circuit (at least so they said) as a factual determination to be made by the factfinder.

    So, if a strict application of TSM is no longer permitted, where is the line drawn between the obligations of the factfinder and those of the court? The KSR Court talks about how rigid application of TSM will “deny factfinders recourse to common sense.” But, how does the factfinder exercise their “common sense” on the issue of obviousness without crossing the line into the realm of determining the ultimate LEGAL issue of obviousness? The KSR Court clearly states that the factfinder should be permitted to use their common sense, but where do factfinders do this within the framework of the obviousness analysis?

  64. FOr more info, go to:
    link to videonewswire.com

    This is a 30 minute audio of prestigious litigators (remember, I’m just an agent) pontificating about KSR/Teleflex.

    But I warn you … that’s 30 minutes of unbillable time.

    DENNIS – please post this link to the ‘home page’ of patently O.

  65. Lionel:

    You write: “My biggest concern is how the PTO will interpret this and if Examiners try to make crazy 103 rejections because they miss the point.”

    Good point. The application of the law, as it is written, doesn’t concern me so much. Personally, I think that KSR could have been overturned based upon strict application of TSM and a better factual inquiry. Someone wrote earlier that “bad facts lead to bad law,” and I could agree more.

    The problem I have is the application of KSR by examiners. Although the Supremes required that an “analysis” be provided, I doubt that will stop many examiners from writing something to the effect:

    Ref A has feature X (X performs such-and-such function), but doesn’t disclose feature Y.
    Ref B has feature Y (Y performs this-and-that function).

    Thus, since Y could be readily incorporated into X as part of the normal design process, then common sense leads to the conclusion that the claimed invention is obvious in view of A and B.

    Basically, “obvious to try” will be the defacto standard that will be employed by all examiners although the smarter ones will couch it in different terms.

    An anecdote: today I had yet another bogus 101 rejection. What was particularly frustrating was that one of the independent claims specifically recited a processor and a memory storage device. If I’m continuing to get 101 rejections on straight-forward device claims, I am really not looking forward to see what I will get with the new/old 103 standard.

    MM free

  66. As an examiner, this just made my job SOOO much more interesting. Can’t wait to reply to your “no motivation to combine” arguments.

    I’m starting a list of reasons that motivation is not required and why my reasons to combine are legally sufficient. Let the fun begin!! Time to hit up the water cooler and spread the joy!!

  67. The KSR reaction I’m reading here is surprising. The case is a pretty light touch, by my reading. No one thought there was any chance whatsoever that SCOTUS was going to uphold the patent at issue… could they possibly have done less to disturb the law and still invalidate the patent? I think they did a decent job. They barely strayed outside the corners of Anderson’s Blackrock and Sakraida!

  68. Sorry MM. I won’t play your games anymore. I’ve asked you dozens of questions in the past and have gotten very few answers, so don’t ever expect me to answer your questions or respond to your requests, no matter how benign.

    Go take your snark and annoy somebody else.

    At the time of my posting, it is my conclusion, based upon common sense analysis of the facts presented over the past year on this board, that the concept of MM obviously being the most annoying member of this message board is well within the grasp of an ordinary person.

    Henceforth, I will declare that any and all future posts of mine will be “MM free” as an indication that I am not engaging in useless banter with a message board troll.

    MM free

  69. I can’t believe all the strong reactions here. I have not read the MS case yet. Maybe that’s the one causing problems. However, it seems like people are reacting to KSR.

    Removal of the bright line aspects of TSM is great news for everyone. The SC did not trash TSM, just its rigid application. I (and I am sure plenty of others) have said for years that the CAFC’s primary goal appears to be eliminating judgment from their job duties.

    Ultimately, KSR is not that significant. My biggest concern is how the PTO will interpret this and if Examiners try to make crazy 103 rejections because they miss the point.

  70. Wow, KSR Int’l Co. v. Teleflex Inc. (unanimous court) :

    (page 11) the need for caution in granting a patent based on the combination of elements found in the prior art

    (page 13) When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary kill can implement a predictable variation, section 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

    (page 15) In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scienfitic literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.

    (page 17) A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.

    (page 24) And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.

    Head shot!

  71. Corprotocracies abhor a patent.

    MS and other big companies don’t get a net benefit from patents. Ergo, they are inclined to move the law toward a system that disfavors patents.

    With all due respect, baloney.

    As the counsel for a small (less than four years ago.

    I’m not saying the decision is perfect – still reading the meat of it myself – but to anybody who thinks it’s big-corporate-ocentric, I say, “Nuh-UH.”

    M

  72. AnonExaminer:
    “(I) – This ruling is directly solely at combinations of known elements where those elements perform a known function and the combination does not lead to any unexpected results.”
    You are correct as to the direct holding, but there is dicta going much farther than this (e.g., relating to “real innovation”).

  73. “MM — you are who you are, and you know exactly who you are. You are a message board troll … plain and simple. ”

    Oh, pds, please grab a kleenex. Your mascara is running.

    “If someone says “up,” you say “down.” If some says “right,” you say “left.”"

    Care to back this up with some of your beloved “facts,” pds? To the best of my recollection, I’ve posted scores of comments here agreeing with other commenters, including you. What would compel you to claim otherwise, I wonder?

    “To me, it just isn’t worth it trying to decipher your comments, and I skip over much of what you have to write already.”

    That’s nice.

    I’m still waiting for you tell me where I was “trying not to make sense,” pds. Seems the cat got your tongue. What’s up with that?

  74. Well the posts in here are rather humorous, primarily because I’m more insulated from negative effects of this ruling perhaps.

    I’m happy to be proved wrong, but by my interpretation:

    (I) – This ruling is directly solely at combinations of known elements where those elements perform a known function and the combination does not lead to any unexpected results.

    (II) – After showing that the claims fall under the condition of part I, the subsequent combination requires a lower burden of examination. Specifically, that known elements both could have been combined and that such a combination would be obvious to try. The former being overcome by “teaching away” while the latter requiring only a minimal statement of factual inference to establish reasoning.

    (III) – For evidence to establish the factual inference of combination or motivation to combine, examiners may turn to all available sources as well as their own knowledge of the art, general understanding of market movement, and the market desire to combine old elements.

    (IV) – Examiners are free, although I thought we already were, to examine the structure independent of the applicant’s claimed problem to be solved. Instead, all possible problems recognized in the art (or common sense) that might be addressed by the combination are open to serve as reasoning for their combination. (Again, I don’t think this is anything new).

    I’m actually not opposed to this ruling. I think the distinction of part I above is important. I think, when known parts are combined and do not yield a combination that is unique from the known advantageous of the subcomponents, the bar should be high for patentability. There seems to be a belief that all useful combinations should be patentable. I don’t agree. Combinations of known items that perform only those known functions, do not sufficiently enhance the knowledge of the public to warrant monopoly ownership. These modifications will still be sufficiently encouraged by the market place and their worth as a disclosure is likely outweighed by their burden as a patent.

    That does nothing to diminish innovation. We certainly would still have patents for the Cotton Gin, Light bulb, Blue LED, and Indigo Watch Face. The function of these combined elements far exceeded the sum of their parts. What this change might actually affect is to encourage inventors to describe and focus their inventions on areas where some additional good exceeds the sum of the known prior art parts. That, I certainly welcome.
    -M

  75. “How are examiners supposed to intelligently apply a general subjective “obviousness” rule?”

    My sense is that the PTO will consider every invention obvious where each of the limitations can be found somewhere in the prior art, no matter how silly the combination of references. And they will find such a combination of references for practically every invention. It will be up to the applicant to positively demonstrate non-obviousness by declarations, etc. The problem is, apart from the standard secondary indicia or teaching-away, there are no guidelines as to what to declare. For example, how do I have a declarant state that a particular combination was not, contrary to the Examiner’s assertion, “common sense” or “common knowledge” at the time of filing?

  76. MM — you are who you are, and you know exactly who you are. You are a message board troll … plain and simple. I’ve been on countless boards over countless years, and I have seen dozens of the likes of you. If someone says “up,” you say “down.” If some says “right,” you say “left.” You are very predictable.

    BTW: Don’t cry us a river about “ad hominem attacks” because you are likely the biggest offender on this board.

    If this message board had an ignore function … I would put you on ignore as quickly as possible (and would have done so many months ago if I had a chance). I find you add very little of value (unless you are talking about biotech issues, which appears to be your area of technical expertise) to the discussions on this board. In fact, I have made this very suggestion (i.e., to add an ignore feature) to Dennis when he asked for suggestions as to how to improve this board. Unfortunately, the host Dennis uses doesn’t have that capability.

    Anyway … go ahead and snark all you want. Nobody is going to stop you.

    Truthfully, I would put up with the snarkiness if you your “analysis” provided some useful insight. However, if there is any insight in your comments, it is so slathered with snarkiness that it is impossible to see. To me, it just isn’t worth it trying to decipher your comments, and I skip over much of what you have to write already. The only reason I responded to your earlier posts is that you specifically referred to me.

    Regardless … have wonderful day!!!!!!!!!!!

  77. On Nov 29, 2006, Dennis wrote:

    “The new key to avoiding invalidity will be secondary indicia of nonobviousness. Look for a 9–0 decision …”

    and it bears remembering and repeating.

  78. The Supreme Court doesn’t like the shortcut tests that the Fed. Circuit creates. KSR is simply the latest example of the SC telling the FC that their shortcut test, which had become the rule, is not the actual rule.

    General rules work fine in the context of litigation, since there is time and budget to argue and weigh all of the factors that could possibly feed into the application of the general rule.

    Prosecution is another story. Examiners need simple, bright-line rules. They don’t have any clue as to what would naturally have been developed in a particular market (ordinary innovation), and what represents extraordinary innovation. How are examiners supposed to intelligently apply a general subjective “obviousness” rule? How are applicants supposed to intelligently counter their obviousness assertions? Will we need affidavits and expert testimony?

  79. Corprotocracies abhor a patent.

    MS and other big companies don’t get a net benefit from patents. Ergo, they are inclined to move the law toward a system that disfavors patents.

    This decision does exactly what everyone should have expected it to do . . .

    It ends the use of TSM as a stand alone test for obviousness.

    We are now back to Graham. Which is to say we are now back to this standard of obviousness:

    “Because I said so.”

    I read in KSR that the SC thinks that the test in Graham is “objective”!! Man, that is the stupidest thing I have read in a very long time.

    So the net effect to prosecution practice?

    I think that “the gloves are off” is the best approach. Forget about citing law or using the TSM tes. What the SC has said is that things are obvious when they’re obvious. So get out there and explain why it would not have been obvious.

    That’s it, as simple and stupid as it sounds.

    Gone are the days when you could argue that there would have been no motivation to combine two references.

    Here are the days when the obviousness rejection will be: “Random Patent A discloses X and random patent B discloses Y, and it would have been obvious to combine X and Y to get to your claimed invention XY because the properties of X would have been useful in Y.

    Ouch.

    The most damaging quotes from the opinon:

    1. Page 2 – “If . . . a patent examiner . . . conducts [a Graham] analysis and concludes the claimed subject matter was obvious, the claim is invalid . . . .”

    Wow. So all the Examiner has to do is . . . determine the “scope and content” of the prior art, differences between that art and claims, level of ordinary skill, and say, “would have been obvious.” Bang!

    In other words, it’s entirely, 100%, lock up the guns and put the kids to bed, a subjective decision. I mean, seriously, determining the “scope and content” of the prior art is called “a search”. Determining the “differences between” the art and the claims is called “reading the claims”, and determining the level of ord. skill in the art means saying, “a dude with a BS in the relevant field and/or equivalent experience.”

    Then, after this “analysis,” all they have to do is say, “obvious”. That’s it.

    I predicted there would be a new test at the SC level that amounted to a “because I said so” test. I missed that the same result could be acheived by striking TSM as a unitary test and reverting to Graham and “other common sense” type things.

    The absolute A-bomb in bikini atoll, however, is the following(page 16):

    “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

    Shazam@!! In other words, if there is a need in the art and you satisfy that need by combining elements from the art, your “invention” is obvious!!

    Wow, that is huge when you consider that nobody is out there combining elements that do NOT satisfy a need in the art.

    But hey, look at the upside – if you combine elements that don’t satisfy ANY need in the art, you might be able to get it allowed.

    Other notes – Some dumb ass called this a “Bush” court decision? Get ahold of yourself. There’s nothing more annoying than a Dem or a Pub making an assinine partisan comment about something that is so obviously a bipartisan brain cramp. This was a unanimous decision.

    Somebody said they read the Syllabus. Why? It’s almost 1/2 as long as the opinion. Just read the opinion.

    Somebody commented on the cite to the U.S. Constitution – very very good pickup on the implication. I agree, and I’m impressed that you picked that up so quickly after promulgation.

    Anyway, I don’t see KSR changing the # of patent filings. I don’t see it changing the level of innovation.

    I do see the number of allowed patents decreasing.

    I don’t consider that a bad thing. I’d just have preferred to get to it via a different route.

  80. Somebody up there posted that the purpose of patents “in an ideal world” is to advance progress. When is the last time an engineer said “Hmmm, how can I make this work? I know, I’ll go look up the patent of the invention and see how THEY did it and that will give me a clue as to how to do it myself.” The answer is around 1983. Patents are all about money and product these days and do LITTLE to push innovation for innovation’s sake. Sure, you get some things disclosed that might otherwise stay “secret”, but for the most part, nearly all patents filed these days are worthless from a “progress” standpoint.

  81. KSR…

    Hotchkiss, Graham, Andersen’s, and Sakraida are still the law.

    I would never have guessed this (…NOT). What I am still waiting for is for the articulation of a real test, and not a host of weasel words that have no real meaning.

    Having fully read the opinion I am convinced that its primary import will be the publication of journal articles hanging on every one of these totally meaningless words.

    In the final analysis the CAFC will continue doing what the CAFC has discovered over time tends to work. Of course, its analysis will now be couched in terms of “TSM, TSM+, and whatever it was that KSR added to the mix”.

    As a humorous aside, I find it interesting that patent law continues to be defined by a doorknob, a plow shank, a paver, and a manure cleanser.

    MS…

    All those pages and words saying no more than “Congress, write better statutes.”

  82. ” Were you trying not to make sense? If so, you are doing a great job.”

    Thank you, pds. Someone needed to start launching the ad hominem attacks and it might as well be you.

    Do you care to expound? You see, I make mistakes, occasionally, and I’m happy to correct them when they’re pointed out.

  83. First, this most significantly impacts inventions that essentially combine two things with known function and purpose into something that essentially uses them for those purposes and does not really contribute anything new.

    Now, that said, this might have interesting effects to methods patents that essentially take known processes and adds a computer. That should quell much dissent from the slashdot.org crowd.

    Beyond that, the court does not seem to do away entirely with the TSM rather it refers to them as “helpful insights”. Slip. Op. at 15. Instead, the Court just do away with the rigidity with which it is applied. Slip. Op. at 11.

    There are some interesting things that suggest, perhaps, that this opinion will creep up in other contexts:
    “One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Slip. Op. at 16.

    “Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Slip. Op. at 16.

    “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Slip. Op. at 17.

    This sounds a lot like the tests in Europe and Japan, but that remains to be seen.

  84. “I’m sure the boys/gals at the USPTO will be chomping at the bit to cite KSR.”

    Hell, I’m chomping at the bit to cite it myself.

    One of my clients’ competitors filed a lawsuit a few years back, then put it back into re-exam to “strengthen it.” The PTO basically rubber-stamped the competitor’s garbage.

    Now that the competitors have returned to earth from fantasy-land, they have discovered that the landscape has changed. Ooops.

  85. MM … Were you trying not to make sense? If so, you are doing a great job. If not, then forget my question, its not important. It just means that you are being your normal self.

  86. “Things that were formerly done by hand but are now automated, things that were mechanical but now are electrical, things that were done before in any context but are now performed on the internet, etc. — they would all seem to fit within this description … there would never have really been any doubt that the pieces would work together, it just [may be] that no one had ever [done it] THOUGHT ABOUT FILING FOR A PATENT ON IT before.”

    My revision of the quote gets to the heart of the problem the Supreme’s were trying to address.

    “Did the Supreme Court just revive the obvious to try doctrine?”

    No. They just reiterated the basic point that, absent any convincing reason why one skilled in the art would not have expected or known how to implement, e.g., a computer to automate old function X, such a trivial “advance” is obvious. It’s obvious to try for the obvious benefit of automation, AND it’s obvious that it would work. So: no patent, regardless of whether nobody in the prior art ever wrote expressly that “a computer could be used to automate function X”.

  87. “Things that were formerly done by hand but are now automated, things that were mechanical but now are electrical, things that were done before in any context but are now performed on the internet, etc. — they would all seem to fit within this description.”

    Things that were formerly powered by horse and now by engine, formerly dictated to a stenographer and now spoken to a computer, formerly typed on a typewriter and now on a Blackberry, etc.? All seem pretty obvious to me in light of the progression of technology.

    At least new mousetraps are still generally mechanical–thus, non-obvious? ;)

  88. KSR is a very modest step by the Supreme Court and really represents the minimum the court could do with out renouncing its own jurisprudence. The Court of Appeal’s death bed conversion in DyStar probably had a lot to do with the Supreme Court pulling back from making a more sweeping decision which would necessarily have been much more critical of the CAFC.

  89. pds admits

    “I’m unclear as to how common sense plays a part in determining what is fact and what is not.”

    Ah, then you have somehow avoided being subjected to the post-modernist world promoted by religious fundamentalists, among others, in this country.

    After all, pds: what is a “fact”? What is a “fact” to you may be not be a “fact” to me if your “fact” contradicts my inerrant “holy book.”

    Common sense is logic in light of the shared experience of human beings. When it suddenly becomes popular to flit through the ether in your personal flying machine, I am not “innovating” by filing a patent on “This and that cell phone technology, wherein said this and said that is incorporated into a personal flying machine.”

    It may be the case that there is no prior art talking about the specific combination I mentioned. In KSR, the Supremes are telling people that circumstantial evidence can be clear and convincing in the context of determining patent validity. That’s shocking? No. Patents on methods of swinging side-to-side are shocking.

    The likelihood is high that those who whine loudest about this case are those whose “innovations” require crutches in order to stand up in the patent world.

  90. “Patent rights are to protect investment in creating products and markets..”

    That’s an F grade for your understanding of patents

    Patents were established to provide incentive for inventors to invent new and unobvious things AND to publicly disclose then, thus promoting a progress in the long run.
    Patents have nothing to do with products or markets, rather, they have to do with “discoveries”
    Products and markets come as a secondary consideration, at least this is how it should be in an ideal world.
    US Constitution doesn’t say a word about products or markets, only about “promoting the progress”
    Hell, it’s all about money nowdays… Who cares about promoting the progress ?

  91. I don’t think it’s wise to downplay the significance of this decision. The CAFC is all over the map on a variety of the specific issues raised, and in the past you could always find a helpful sound-bite from the CAFC on obviousness issues regardless of which side of the case you were arguing.

    Now however, the USSC has used very strong language, stronger than I was expecting frankly (employing frequent dicta), to dismantle the CAFC’s restrictions on 103 — e.g., “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”

    Things that were formerly done by hand but are now automated, things that were mechanical but now are electrical, things that were done before in any context but are now performed on the internet, etc. — they would all seem to fit within this description … there would never have really been any doubt that the pieces would work together, it just [may be] that no one had ever done it before. This interpretation seems consistent with the particular facts of this case (“Technological developments made it clear that engines using computer-controlled throttles would become standard” and hence the claim was obvious).

  92. “the results of ordinary innovation are not the
    subject of exclusive rights under the patent laws.”

    Back to “flash of genius”?

  93. “The same constricted analysis led the Court of Appeals
    to conclude, in error, that a patent claim cannot be proved
    obvious merely by showing that the combination of elements
    was “obvious to try.” Id., at 289 (internal quotation
    marks omitted). When there is a design need or market
    pressure to solve a problem and there are a finite number
    of identified, predictable solutions, a person of ordinary
    skill has good reason to pursue the known options within
    his or her technical grasp. If this leads to the anticipated
    success, it is likely the product not of innovation but of
    ordinary skill and common sense. In that instance the fact
    that a combination was obvious to try might show that it
    was obvious under §103.”

    Did the Supreme Court just revive the obvious to try doctrine?

  94. There is a level of misunderstanding here of the economics of patents that is shocking.

    “Rather this — any suggestion that the eBay and KSR rulings won’t stifle American innovation is either:
    (i) naïve, or, alliteratively speaking,
    (ii) prejudicial to patentees & a prayer of a piece with and part and parcel of the patent pirate population.”

    Overprotection with patents for claims that do not represent an inventive step is economically disasterous in the long term: it creates significant dead weight loss and huge barriers to entry for non-incumbents. It also created a free ride for those who get patents on known concepts with no investment of time, money or effort.

    Rather than harming small businesses by making it harder for them to obtain patents, it will actually make it easier for small businesses to actually compete; instead of being crushed by patents from every side, there is more emphasis on creating product rather than creating patent rights.

    Patent rights are to protect investment in creating products and markets; instead, over the last few years, ideas for products and markets have been used to create patent rights with no plan for actual development: anyone who thinks that this type of business model contributes to a long term economic boom is naive.

  95. This is where I got my “obvious to try statement:

    When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. . . In that instance the fact that a combination was obvious to try might show that it was obvious under 103. Page 17, first full paragraph.

  96. ***Good luck entering an already crowded field, pds. Don’t you remember: it’s the crap patents that led to the litigation which led to the press releases which led to the decision you see today.***

    Crowded field?????? You are still living in the world pre-4/30/07. What you don’t realize is that the target market just got exponentially bigger.

    I believe that after this decision, a LOT more companies will be willing to take “crap patents” into reexamination. All you need is a little common sense and a couple close pieces of prior art. I’m sure the boys/gals at the USPTO will be chomping at the bit to cite KSR.

  97. Wow – from reading these posts one would think the sky is falling.

    Actually, this is not a bad outcome, and certainly the best that could be hoped for. The Supreme Court focused its decision quite narrowly on this case, and actually noted with approval the TSM test (albeit by giving credit to the CCPA for coming up with it). The Court did not say the standard was synergy, or “flash of genius,” and their approval of Sakraida and A&P and Hotchkiss isn’t surprising in this context. What I glean from the language is that this is a very narrow opinion, and anyone using it to try to topple the TSM test will have a very tough time.

    As for “obvious to try,” the Court limits this to instances where:

    “[when there is a design need or market pressure to solve a problem, and there are a finate number of identified, predicable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”

    Really, is this that different (if at all) from the CAFC’s holding in In re O’Farrell?

    The more curious statement (fortunately in dicta) is that “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” Not how I would have stated it.

  98. “Don’t you remember: it’s the crap patents that led to the litigation which led to the press releases which led to the decision you see today.”

    And who can afford to file thousands upon thousands of crap patents each year ?

    Small garage inventors, evil patent trolls ?

    Nope, it’s the likes of MS, Intel, IBM, HP etc. etc.

    Go figure, they whine all the time about “bad” patents but continue to file their own junk patents at the increasing rate…

  99. So far I’ve only read the syllabus, and I’m going to do something very foolish, and comment without reading the whole opition. Ask me again tomorrow.

    The most striking paragraph so far is 1(c), spanning pages 5-6 of the slip opinion [my romanette insertions]:

    (c) The flaws in the Federal Circuit’s analysis … [i] The Circuit first erred in holding that courts and patent examiners should look only to the problem the patenteewas trying to solve. Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed. [ii] Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem. The court wrongly concluded that because Asano’s primary purpose was … It is common sense that familiar items may have obvious uses beyond their primary purposes… Regardless of Asano’s primary purpose… [iii] Third, the court erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a *finite number of identified, predictable solutions,* [that's the crucial phrase] a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. [iv] Finally, the court drew thew wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. Rigid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law.

    The Federal Circuit can take great comfort in this decision – it’s almost a case of “We told you so.” [i] [ii] and [iii] are not disagreements between the Supremes and the Federal Circuit – the Supremes exactly restate principles that have been the law for at least 10 years. By paragraph [iv], I hope, the Court meant that “common sense” can be relied on, as long as there is *evidence* that it would have been “common sense” *”at the time the invention was made,”* as required by statute. The “common sense” of *today* is simply irrelevant to an inquiry that is placed in time by statute. Unless the Court meant to cut patent law off as a separate species of law exempt from the normal requirements for evidence, and meant to carve out words from the statute, there is no change in the law.

    This paragraph of the Syllabus is “gobbledygook,” it’s “worse than meaningless because it complicates the inquiry rather than focusing on the statute.” But of course it’s only Syllabus, and I preemptively spank myself for relying on it, so you don’t have to.

  100. “anybody interested in starting a practice to invalidate patents?”

    Good luck entering an already crowded field, pds. Don’t you remember: it’s the crap patents that led to the litigation which led to the press releases which led to the decision you see today.

    The right decision.

  101. Big guys get screwed:
    Page 16. The first error of the COurt of Appeals in this case was to foreclose this reasong by hoding that the courts and patent examiners should look only to the proble the patentee was trying to solve.

    This is opposite to the Inventive Step analysis. Therefore, the Big Guys will have to continue using U.S. attorneys even if Best Mode is vitiated by statute.

    Exminers need to watch their English (translation, if no speeky English get out of the USPTO). The Supremes have been watching you.

    Page 14

    To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F. 3d 977, 988 (CA Fed. 2006)(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasonign with some rational underpinning to support the legal conclusion of bviousness”).

    And the best one of all: teaching way is still the winning argument and has been expanded. (If you can’t amend claims to develop a teaching away argument-what are you doin’ in the biz!).

    Page 22 after a paragraph of discussion: “Accordingly, Teleflex has not shown anything in the prior art that taught away from the use of Asano.”

    Under the rigid TSM analysis we were stuck with what the reference taught, See In re Gordon (citations omitted-do your own legal reserach). Now I can look at the whole sh’bang.

  102. “Better just to wait until one of your competitors produces a product that is the result of “ordinary innovation”, copy it, and knock their patent out on obviousness grounds if a lawsuit is filed.”

    This is the most chilling passage in the Supreme’s KSR opinion:

    “As a result our decision, most (if not all) patents are now very likely to be obvious and invalid. We urge businesses to file lawsuits and quickly rid the nation of these patents in due course. Rather than innovate, we believe that the United States economy is best served by imitation, as exemplified by our friends in Asia.”

    That’s probably dicta, but it is worth noting.

  103. Some of my favorite passages:

    Page 15:
    “Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.”

    I wish the Supremes gave us a definition as to what constitutes “real innovation.”

    Page 17 (while discussing hindsight bias — probably my favorite paragraph):
    Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.

    Don’t “factfinders” act to find facts? I’m unclear as to how common sense plays a part in determining what is fact and what is not.

    Page 24:
    KSR provided convincing evidence that mounting a modular sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art.

    “Well within the grasp”?

    Let’s see, by using common sense, which negates impermissible hindsight, so long as the applicant/patentee cannot prove “real innovation” and the modification was well within the grasp of a person of ordinary skill in the relevant art, an application/patent can be rejected/invalidated for obviousness.

    Why fight the system … anybody interested in starting a practice to invalidate patents?

    PS: Another addition from page 17:
    “In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”

  104. BK: I hope you are right about Congress, but I don’t think you are. In fact, as others have suggested, the KSR decision will be used by some as a reason in support of cancellation proceedings and the like. Some will argue that we need an effective mechanism for getting rid of all the patents which are now invalid in light of KSR. While I agree that there is little chance that the current legislation goes through, I suspect that we will see some reforms this year.

  105. Yes, they just limited the TSM test so it is no longer the definitive, narrow test for obviousness. Now obviousness can be determined based on anything under the sun conceived by man. ;)

  106. After the KSR decision, why bother to innovate? Especially for smaller companies, the entire innovating/patenting progression seems less and less economically feasible. Beter just to wait until one of your competitors produces a product that is the result of “ordinary innovation”, copy it, and knock their patent out on obviousness grounds if a lawsuit is filed. If I’m the larger company, why would I spend as much on innovation or creating incremental improvements to existing products if such improvements are the result of “ordinary innovation” and thus obvious and not patentable, when my rivals could just copy my new design and knock out my patent if I sued? Assuming, of course, I could still get a patent.

    The KSR decision can ONLY dampen innovation.

  107. “1. Obvious to try – now an acceptable rational for establishing obviousness.”

    I’m not so sure they fully embraced “obvious to try” as defeating patentability:

    “When there is a design need or market
    pressure to solve a problem and there are a finite number
    of identified, predictable solutions, a person of ordinary
    skill has good reason to pursue the known options within
    his or her technical grasp.”

    *finite* *identified* *predictable*
    Many times obvious to try refers to variation of parameters with infinite possible permutations, and that seems to still be non-obvious (not finite). Further, the identified and predictable language is no different than the CAFC’s current reasonable expectation of success. The recent Pfizer v. Apotex case would have the same result under this “new” obvious to try test.

  108. I wonder if this case will end up demonstrating the old adage of how “bad facts make bad law.” My initial read of the KSR decision suggests this adage may apply.

  109. Now, Dennis, don’t you think the headline is a bit sensationalist? The Supremes so elegantly split the difference in their ruling that a combination is patentable if it produces a surprising or nonobvious result. This was the most modest ruling one could write that still kills the clearly obvious patent under question.

    Patent attorneys, you should be writing thank-you notes to the Supremes, because they just saved you from potentially draconian legislation from Congress. Expect last week’s patent reform act to die by the end of this week.

  110. Three comments (I am just an agent – I’d love to see what you lawyers have to say about my comments – especially PDS and ‘Points_to_Ponder’)

    a) about KSR it seems that SCOTUS did not throw out the TSM and did not suggest a new test as MANY had predicted. They just ‘tweeked’ TSM in the direction that the CAFC had been doing anyhow (yes, I agree that this direction was not ‘pro-strong patent rights’). I do not see how this SCOTUS opinion changes anything from what existed befoe the CAFC themselves retreated from the ‘pure’ form of TSM – i.e. the ‘damage’ had already been done by CAFC and NOBODY was predicting that SCOTUS would use this to strengthen presumptions of non-obviousness. Yes, it seems that the SCOTUS is ‘shifting the pendulum’ away from strong patent rights but incrementally and not in the revolutionary manner that many predicted. It does not seem like the sky is falling (yet).

    b) In the MSFT vs. ATT case the SCOTUS did NOT take the opportunity to say that software is not patentable. In fact, their opinion seems consistent with the notion that the SCOTUS believes that software (when embedded in some ‘physical medium’) is patentable. Thus, it seems to me that the SCOTUS had the CHANCE to declare software not patentable and did NOT do this. This seems ‘pro-SW patent.’

    c) Alan McDonald wrote : “Get ready for the next bombshell – overturning a patent in litigation by a preponderence of the evidence instead of clear and convincing evidence.”

    This is a scary thought – on what basis do you make this prediction ??

  111. I’m out of this whole invention “business”

    Looks like filing for a patent nowdays is a sure recipe to get screwed, if you are a small guy

    No injunctions already after EBay for guys like me, and now they can challenge any patent again and again based on “obviousness” (read: bury you in legal fees).
    The only remaining step to do is to enact damage apportionment portion of the
    “patent deform” and voila – patents become worthless sheets of paper.
    I’m holding one in my hand right now – it’ not even good to be used as a toilet paper, too hard on your ass, maybe they should start using a softer paper to print US patents ? And put the photos of the smiling SCOTUS judges and other prominent political players on the front page…

  112. I love the next-to-last paragraph:

    “And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws.”

    So only extra-ordinary inventions are patentable now. Back to the “flash of genius” test! Wait a sec, didn’t the 1952 Act over-rule the “flash of genius” test? I guess the over-rule wasn’t explicit enough, eh?

  113. “The Age of Enlightenment has passed us by. Welcome to Dark Times.”

    Too funny. I bet if the Supreme Court held that teaching “intelligent design” in public school science classrooms was constitutional, a lot of the regular commenters here wouldn’t bat an eye.

  114. The way I read KSR, the TSM test is still here, it’s just that it isn’t supposed to be applied in a formalistic way. The Federal Circuit was moving in this direction anyway with its recent cases. You still need to show TSM–see the citation to In re Kahn and associated discussion. It’s just that you can be more flexible with TSM. To me, the most helpful part of the KSR opinion was the one describing the flaws in the Federal Circuit application of TSM. The TSM test is still here, with these flaws fixed.

  115. “Get ready for the next bombshell – overturning a patent in litigation by a preponderence of the evidence instead of clear and convincing evidence.”

    Yeah, that will be a HUGE change.

    Right.

  116. Three quick observations from my first read of KSR:

    1. Obvious to try – now an acceptable rational for establishing obviousness.

    2. The CAFC’s recent backtracking from slavish TSM didn’t fool the Supremes.

    3. The Supremes aren’t happy with the presumption of validity if an undisclosed reference turns up in litigation. Get ready for the next bombshell – overturning a patent in litigation by a preponderence of the evidence instead of clear and convincing evidence.

  117. Oh, this is even better than Festo. Look at all the chicken littles running around here!!! “Cluck, cluck, cluck, the sky is falling! the sky is falling!” “Welcome to the Soviet States of America, where nothing will ever be invented again!”

    Blah, blah, blah, blah.

    It would be amusing to go back and revisit the earlier threads on KSR and Microsoft and see who predicted the results and who didn’t.

    So are any of the chicken littles willing to bet that the rate of new patent application filings remains at least constant (if not higher) when measured in the “wake” of this devastating case? Say in the next two years?

    I mean, that’s the simple prediction right, if innovation is killed in this country. Right?

    “Once the initial shock passes, I predict that the patent bar will quickly realize this was the right decision in both cases.”

    What shock? Many of us in the patent bar predicted this result and looked forward to it.

  118. Go figure . . . Stevens – the only one that got it right. Obvious to try – fair game, market demand – hey there ya go, see it was commercially sucessful , ordinary innovation (ergo extra-ordinary innovation?) – What’s the stock ticker for best capilitzed generic. Forget the EU – go to china.

  119. “… rather than fostering innovation, it actually worked to stifle innovation …”

    Rather this — any suggestion that the eBay and KSR rulings won’t stifle American innovation is either:
    (i) naïve, or, alliteratively speaking,
    (ii) prejudicial to patentees & a prayer of a piece with and part and parcel of the patent pirate population.

  120. H.G. WELLS WOULD BE PROUD. I have never seening a more glaring reversal of time in my entire life. The Supreme Court appears to have jumped into H.G. Wells time machine and set to clock to 1950. Go helps us when they review Brown v. Board of Education. Who knows, maybe the President will now place all of industry under Federal Control to advance the war in Iraq. If this opinion is any indication of the time warp going on in the minds of the Justices I believe the Steel Seizure cases can be revisited and this time come out in favor of the President.

  121. “Once the initial shock passes, I predict that the patent bar will quickly realize this was the right decision in both cases. ”

    I have only read KSR closely to this point, but I would have to agree. The Supreme’s got it right – we need to give a tip to Fed Cir though as the Supremes seem to be following In Re Kahn and the rest in the KSR decision.

    There seeme to be some confusion in this string as two important cases were decided today. KSR and Microsoft.

  122. The first thought that comes to mind is that I need to call my broker – it is time to move some money into generic drug companies

  123. After a once-through fast read of KSR, the folk saying that comes to mind is:

    Fools rush in where the wise and brave dare not go.

    The Age of Enlightenment has passed us by. Welcome to Dark Times. Welcome to the Age of Darth Patent-Evader.

  124. Once the initial shock passes, I predict that the patent bar will quickly realize this was the right decision in both cases.

    Its really economically inefficient to have patent obviousness controlled by a strict TSM test where many trivial changes in software are patented; rather than fostering innovation, it actually worked to stifle innovation and move creative work and software development out of the united states. i expect that you’ll see an increase in innovative software development in the US after these decisions, not less.

  125. I wonder if any company or individual with deep pockets will change the word “obvious” in the patent statues as being unconstitutional due to vagueness?

  126. Oops — no one responed in time to this post on April 14th:

    WILL SOMEONE PLEASE INVENT AN
    IMPROVED SYSTEM, METHOD OR APPARATUS
    TO MEASURE “OBVIOUSNESS”?, and then send it to the Supremes
    before they weigh in with some more Wonderland foolishness.

    I’ve said it before, and I’ll say it again:
    MEASURING OBVIOUSNESS IS LIKE MEASURING A CLOUD.

    Is invention a process?, or a spark?, or both?
    How are creativity, inventiveness, obviousness and ordinary-skill-in-the-art, related?

    Some highly educated skilled in the art people can’t create themselves out of a paper bag. This gives rise to an essential patentability question: Does ordinary skill in the art mean: (i) a creative person skilled in the art?, or (ii) merely an educated person skilled in the art?

    Does simple equal obvious?
    What bearing does the perception of an invention being Complex or Simple have? Of course, everything that is simple is not obvious and vice versa. No one suggested simple and obvious were the same, but neither this subject nor any similar notion, which you’d think would of course be an integral part of any serious discussion of obviousness, ever entered the KSR Raccoon-Hearing transcript:
    link to supremecourtus.gov

    What is invention? Invention is what makes the non-obvious obvious: everything is obvious after it has been invented.
    Another problem when testing for obviousness for patentability has to do with the Observer Effect, defined as: “In science, the observer effect refers to changes that the act of observing has on the phenomenon being observed.”
    I.e., Before and After observation: Before observation, Is, is what it is, but after observation, what Was no longer is — before’s Is is gone forever After observation.

    It is, of course, impossible to tell if an invention is obvious before it has been invented — it has not yet been discovered, and thus it does not (yet) exist. And after it has been invented, at least to the extent that invention is what makes the non-obvious obvious, you can no longer tell if an invention was obvious.

    That is why Measuring Obviousness is like measuring a cloud.

    The CAFC’s pragmatic obviousness test, “Teaching, Suggestion, Motivation,” or TSM, is a test that is determined by the presence of some evidence, or the lack of evidence. Of course, there will be on-the-fence cases, and some silly stuff may slip through, but that’s life, and that’s what court’s are for.

    Teaching, Suggestion, Motivation works because TSM is in essence based on some form of identifiable evidence — patentability cannot be likened to measuring a cloud.
    TSM!, because nothing else works!

  127. This decision is really great–now that the Supreme Court That George Bush Built has rendered patents effectively defunct, attorneys can now turn their steely knives toward their clients’ ex-employees, since a retreat to trade secrets would not be unexpected.

    Oh it’ll be grand, hiring legions of dueling “experts” at patent trials rather than wasting a lot of time and energy applying law to fact. PhD’s everywhere today have reason to rejoice. And in prosecution practice, this makes things much simpler, since affidavits of “unexpected results” and “long-felt need” will return to prominence, neatly bypassing all that mucking about with 35 USC.

    A grand day indeed!

  128. “the results of ordinary innovation are not the
    subject of exclusive rights under the patent laws. Were it
    otherwise patents might stifle, rather than promote, the
    progress of useful arts. See U. S. Const., Art. I, §8, cl. 8.”

    read: Congress, don’t try to supersede this case by statute

Leave a Reply

Your email address will not be published. Required fields are marked *

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>