…written record of plans to meld particular technologies if they have any hope of proving that a patent was too obvious to be granted. That requirement is more than a little ironic, they argue.
"You have some people in industry who say, 'Oh, come on — you've got to be kidding me," said Timothy Teter, a partner in the intellectual property practice at the firm Cooley Godward Kronish in Palo Alto, California. "This is something we wouldn't ever bother to write down because it's obvious, and we're in a fast-moving field."
Or, as the Electronic Frontier Foundation put it in its friend-of-the-court brief on behalf of free and open-source software makers: "The suggestion test is particularly damaging to industries, like the software industry, that depend on incremental innovation and tend to be inhabited by practitioners who have neither the time nor the inclination to publicly document their actual work, let alone all the obvious suggestions for next steps they might ponder."
As a result, the Federal Circuit's test has granted patents to inventors "claiming nothing more than the straightforward combination" of existing technologies, attorneys for Intel and Micron Technology wrote in a joint brief supporting KSR.
Some hardware and software makers have argued they're especially threatened by the standard because their products frequently include thousands of pre-existing components that they would like to be able to rearrange at will. Some say the lax rules have fuelled the rise of patent speculators — disparagingly known as "patent trolls" — who make a living by predicting those incremental changes to existing high-tech inventions, landing patents and then going after companies for infringement.
"I think that many people are gaming the system," said Jim DeLong, a senior fellow at the Progress and Freedom Foundation. "This results in a diversion of creative energy away from solving problems and into calculations of planting landmines that other companies might step on in the future."
Because of the current rules, "the level of innovativeness necessary to patent technology today has been, as practical matter, reduced to a vanishing point," said attorney James Dabney, who plans to argue KSR's side before the Supreme Court.
The US Government, too, has sided with KSR — and by extension, the many hardware and software makers — in this case. In its brief with the Supreme Court, it suggested that the Federal Circuit test was the wrong way to go, and that the high court should focus instead on whether the new combination of elements displays an "extraordinary level of innovation".
Backers of current test
Naturally, not everyone sees it that way. A number of large, heavily patent-dependent companies such as General Electric, 3M, Johnson & Johnson and Procter & Gamble said they believed the current test has been working well and is critical for protecting and encouraging innovation. So did a number of smaller companies that happen to have large patent portfolios, as well as organisations representing intellectual property lawyers and independent inventors.
They argued that anything different from the Federal Circuit's test would erase the "predictability" they have come to expect in the patent application process and would inject too much subjectivity into deciding what is obvious.
"Changes to such settled rules of law involve numerous policy considerations, which should be left to Congress rather than the courts," attorneys for 3M, General Electric, Procter & Gamble, DuPont and Johnson & Johnson wrote in their brief.
The companies' views reflect a broader split on patent reform. Compared with high-tech outfits, pharmaceutical companies have generally been more inclined to keep the status quo.
Although many technology companies have spoken out against the "teaching, suggestion or motivation" test, the industry's response to the case has not been uniform. For instance, IBM, which owns a massive patent portfolio, sided with neither KSR's nor Teleflex's position, characterising each side's views as too extreme.
Predicting what course the Supreme Court will take is never an easy task. But the court this year has already shown its inclination to roll back one Federal Circuit decision. In a landmark ruling, stemming from a patent spat between eBay and MercExchange, a majority of the judges rebuffed the appeals court. They rejected the earlier finding, which critics argued had made it easier for patent holders to force shut-offs — or injunctions — of products that allegedly infringed on their property rights.
During oral arguments for that case in March, at least one Supreme Court justice seemed to be implying that the patent at the heart of the case, which purported to cover eBay's "Buy It Now" feature, was perhaps too obvious to be taken seriously. Judge Stephen Breyer suggested that if that process, which allows shoppers to skip the auction process and purchase items at a fixed price, could be patented, "then maybe A&P could patent its process for a supermarket".
Still, some attorneys monitoring the case predicted that the Supreme Court would shy away from making any extreme changes this time around. In this case, if the judges turned the Federal Circuit's obviousness standard completely upside down, the validity of hundreds of thousands of patents issued in the last quarter-century could be jeopardised.
"I don't think US industry is going to stand for a huge cloud being placed on their valuable patent portfolio," said Mossinghoff, the former patent commissioner.
