Supreme Court Weighs Obviousness Standard in Patent Case
The U.S. Supreme Court struggled over whether and how to change patent standards in a case relevant to telecom and tech industry attempts to protect intellectual property. In amicus briefs, Microsoft, Intel, Cisco and other tech companies, as well as industry groups like the Business Software Alliance, demanded the Court halt frivolous and “obvious” patents by overturning a lower court verdict (WID Aug 30 p2).
Sign up for a free preview to unlock the rest of this article
Timely, relevant coverage of court proceedings and agency rulings involving tariffs, classification, valuation, origin and antidumping and countervailing duties. Each day, Trade Law Daily subscribers receive a daily headline email, in-depth PDF edition and access to all relevant documents via our trade law source document library and website.
In oral argument Tues., justices seemed to lean toward reversing a circuit court decision upholding a patent on a Teleflex pedal control system that included elements of KSR’s system. But justices’ questions don’t telegraph their votes.
The U.S. Appeals Court, Federal Circuit decision said KSR didn’t prove “obviousness” or show preexisting technology gave Teleflex a “teaching, suggestion or motivation” (TSM) for its system.
Justices seemed to struggle with their decision’s import for the patent approval process, and the likelihood that a new precedent could see use to challenge existing patents. The Federal Circuit applied “controlling significance” to the “presence or absence of motivation,” when motivation should have been “at best a factor,” KSR attorney James Dabney told the court.
A TSM requirement is “contrary to the Patent Act and a bad policy” that “asks the wrong question and produces the wrong answer,” Deputy U.S. Solicitor Gen. Thomas Hungar said, supporting KSR. “It’s an open secret” that the Federal Circuit court decision was “inconsistent” with Supreme Court precedent, he said. The court should supplement TSM with “sufficient innovation,” he said. “That’s the state of the law: The test is inclusive, not exclusive… It’s not necessary to add some new test,” said Teleflex attorney Thomas Goldstein. The sides tried to define “motivation,” prompting Justice Antonin Scalia to dismiss the discussion as “gobbledygook.”
Several justices asked variations on the question “what happens if we tinker with standards of obviousness,” said patent attorney Steve Maebius on a conference call after the argument. Justices wondered “what’s going to happen to all the patents out there -- are we pulling the rug out from under them?” The justices seemed to be saying that the lower court “placed too much emphasis on motivation,” he said: “There was some displeasure at the elevation of the status of motivation… There was clearly a concern about patents getting out of hand.”
Flexibility is needed and a motivation requirement may be too rigid a legal standard, said Chief Justice John Roberts.
Justices raised the “notion that are too many bad patents and that the Patent & Trademark Office doesn’t have proper resources… and therefore bad patents are getting out,” patent attorney Sharon Barner said: “All indications are that the Supreme Court will overturn” and remand the case to the federal circuit court for reconsideration under a more flexible standard.