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11/29/2006
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Supreme Court Appears To Favor Abolition Of Key Patent Standard

Some justices appear to be taking a skeptical view of lower court decisions that have worked to safeguard patented products from claims that their invention was obvious and not worthy of legal protection.

Hearing a case that could have profound implications for the technology industry, U.S. Supreme Court justices appeared to be taking a skeptical view of lower court decisions that have worked to safeguard patented products from claims that their invention was obvious and not worthy of legal protection.

The case arose when a brake manufacturer that was sued for patent infringement appealed to the Supreme Court a lower court's ruling that it failed to pass the accepted test for showing that the plaintiff's invention would have been obvious to an individual of reasonable skill.

During oral arguments Tuesday, several justices questioned the validity of that test. Justice Antonin Scalia went so far as to ask if it "made any sense to presume that patents are valid which have been issued under an erroneous test for the past 20 years?"

The Court of Appeals for the Federal Circuit previously ruled that the brake manufacturer, KSR International, failed to prove that rival Teleflex, which is accusing KSR of infringing on its patent for a type of brake assembly, did not encounter "teaching, suggestion, or motivation" in developing the product. The presence of those factors, in the federal court's view, work against claims that an invention is obvious.

In a sign that the Supreme Court may be moving toward easing or eliminating that standard, Justice Stephen Breyer said the test is so vague it is meaningless. "I just don't know what is meant by the term motivation," said Justice Breyer, despite the fact that he said he had read the federal court's decision "15 or 20 times now."

Most major technology vendors would like to see the test done away with as they believe it would make it easier for them to fend off lawsuits from claimants accusing them of patent violations. Microsoft, IBM, and Cisco Systems are among the tech companies that have submitted briefs to the Supreme Court supporting KSR.

"True innovators can have a patent held up against them that reflects nothing more than an obvious combination of preexisting elements; and then be told they have to leave the market or pay royalties," says Mark Chandler, general counsel at Cisco. Patent lawsuits have increased by 250% in the past 15 years in part because previous court rulings "have reduced the ability by those accused of infringing to point out weaknesses in the patents they're accused of violating," Chandler says.

Justice Breyer's comments suggest he shares those views, as he appeared to question whether Teleflex's patent represents a true innovation. "It looks to me at about the same level as I have a sensor on my garage door at the lower hinge ... and the raccoons are eating it. So I think of the brainstorm of putting it on the upper hinge."

Justice Scalia questioned the basis on which the federal court ruled in favor of Teleflex. "I would say its test is meaningless," said Scalia. "It doesn't add anything to the question, 'Would a person of ordinary skill in this field have conceived of this idea?' "

Still, it may be too early for the tech industry to count on a victory in the case. At least one justice implied that he felt the existing standards are needed to ensure that innovators are rewarded for their efforts. "In hindsight everybody says, 'I could've thought of that,' " said Chief Justice John Roberts.

The court is expected to render a decision on the case, KSR v. Teleflex, in July.

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