Patently Obvious

Last spring, in a decision regarded as its most significant patent ruling in decades, the United States Supreme Court changed the ground rules that had applied since the 1980s for determining the validity of patents on new products that combine elements of pre-existing inventions. At issue was the question of how to determine whether a new product is a genuine innovation worthy of patent protection or simply an “obvious” application of prior ideas.

The governing statute, enacted by Congress in 1952, says that a patent may not be obtained if the subject matter as a whole would have been obvious at the time the invention was made to a person having “ordinary skill in the art.” That statute remains unchanged as the hurdle an invention must leap. What the Supreme Court said was that the federal courts—and the U.S. Patent and Trademark Office (PTO)—were making it too easy for inventions to clear the bar.

The thrust of the court’s April 30 ruling in KSR International Company vs. Teleflex, Inc., was that it should be simpler for the PTO to deny an application on grounds that an invention is obvious, and simpler for district-court judges to declare existing patents invalid for the same reason.

The effect is that new patents combining prior ideas will become harder to obtain and existing ones will be more difficult to enforce in court against alleged infringement. Because most patents do involve some combination of prior ideas, hundreds of thousands of them potentially are open to question. Many are more likely to be subjected to reexamination by the patent office or shot down in court when their owners try to enforce them.

On the points above, Twin Cities patent attorneys agree. But how much harder will it actually become to obtain or enforce a patent? Was the Supreme Court right to think that its decision will boost innovation and U.S. competitiveness rather than hindering them? Those issues are far less clear.

Gregory Taylor, a patent attorney with Fogg & Powers, a law firm in Minneapolis, helps inventors shepherd applications through the patent office. He predicts that KSR is likely to “stifle innovation” by giving patent examiners more latitude “to reject claims without any particular reasoned argument.”

Kurt Niederluecke, a patent litigator with Minneapolis law firm Fredrikson & Byron, counters that the “biggest practical difference” we’ll see in the wake of KSR will not be a flood of litigation but “an increase in the quality of patents issued.”

Obvious to Whom?

The Supreme Court case concerned a gas pedal for use on cars and trucks with electronic engine controls. KSR International of Ontario, Canada, under contract to General Motors, mounted an electronic sensor on the gas pedal to communicate its position to the car’s computer.

Teleflex, Inc., a rival company based in Limerick, Pennsylvania, demanded royalties on grounds that the device infringed its patent on a sensor-equipped gas pedal. KSR refused to pay, claiming that Teleflex’s patent was invalid because it simply combined existing technologies in an obvious way. The Federal District Court in Detroit ruled in favor of KSR, but the decision was overturned in 2005 by the United States Court of Appeals for the Federal Circuit in Washington, D.C. In a rare move, the Supreme Court overruled the Federal Circuit, declaring Teleflex’s patent invalid.