High Court Tackles The Not-So-Obvious

The United States Supreme Court will talk gas pedals today in a case the technology industry hopes the justices will find all too obvious.

The issue at hand is decidedly low tech: gas pedals. The outcome, though, could be a landmark decision that redefines how patents are issued.

In KSR International v. Teleflex, two makers of automobile gas pedals are locked in a long-running patent dispute over an adjustable gas-pedal system. The Canadian-based KSR combined what it claims is the “obvious” previous technology to produce a hybrid gas pedal for General Motors’ vehicles.

The Limerick, Pa.-based Teleflex sued KSR in 2002 claiming patent infringement. A lower court ruled for KSR while the appeals court backed Teleflex, which argues the obviousness of its patent became apparent only in hindsight.

The Supreme Court must now determine what is and is not obvious about the claims of KSR and Teleflex when combing two known technologies to create a new invention, including what is the standard for obviousness.

High tech is foursquare behind KSR. Microsoft and Cisco, for instance, joined a consortium of other companies to file a friend-of-the-court brief supporting KSR’s position that Teleflex’s patent should be invalidated because of its obviousness.

“Cisco has found that the proliferation of large numbers of obvious patents has increased greatly the potential for inadvertent infringement, requiring it to take defensive measures,” the brief states.

The brief claims that Cisco has been forced to obtain “hundreds of patents for defensive purposes in technology areas in which it develops products.”

The brief argues if the test for patentability becomes too lenient and allows for routine variation on prior patented inventions, companies are forced into costly litigation.

Microsoft claims in the brief that is particularly true when it comes to obtaining a software patent.

“Microsoft has been sued for allegedly infringing dozens of questionable patents in the software field,” the brief states. “The lack of access to software prior art, the inability to find the prior art that does exist and the limited resources of the Patent Office, make searching by the Patent Office particularly ineffective.”

Given those difficulties, Microsoft contends that proving a software patent is invalid is “exceedingly difficult.”

The Progress and Freedom Foundation’s (PFF) Jim DeLong, who co-wrote a brief urging the Supreme Court to hear the case, told internetnews.com that granting patents for obvious inventions “cheapens the patent system” and brings on mountains of litigation.

DeLong argues that under a stricter standard of obviousness, eBay and Blackberry patents might not have been granted because “they were so obvious.”

DeLong said it’s been more than 25 years since the Supreme Court visited the issue of obviousness in patents.

“Meanwhile, technological change has transformed the economy and the importance of property rights in creativity has grown as intellectual capital replaces physical capital as the great engine of economic productivity,” DeLong wrote in his brief.

DeLong added that the heart of the case before the Supreme Court Tuesday morning is what is obvious or “nonobvious” to a person with “ordinary skill in the art.”

“Too loose a standard discourages innovation by denying rewards to inventors,” DeLong wrote. “But too lax a standard triggers a gold rush after every significant advance, to improve on it in some trivial yet patentable way.”

The end result, DeLong claims, is misdirected innovation.

“Immense transaction costs are imposed on the economy as businesses try to negotiate their way out of patent thickets,” he wrote.

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