US firm Teleflex has accused KSR International of infringing its
pedal technology, but KSR has argued that Teleflex's patent claims
are invalid because the inventions are 'obvious'. That argument was
initially supported by the courts, then reversed on appeal. The
Supreme Court will now make a further judgment on the contentious
issue of 'obviousness'.
Patents are vital to technology companies, and Microsoft and
Cisco are backing KSR's case that patents are sometimes granted too
leniently. The companies have filed a brief with the court in
support of KSR.
"If the test for patentability becomes too lenient and allows
routine variations on prior inventions to be patented anew, the
public’s free use of information in the public domain is clouded by
a new monopoly," says the brief. "Moreover, the public receives no
value in the disclosure of minor variations of inventions already
known and disclosed in the prior art."
KSR has argued that the Federal Circuit Court has been
misinterpreting the law of what 'obvious' means for many years, and
hopes for a precedent-setting reinterpretation. A 1952 patent law
states that an invention does not qualify for a patent if a "person
having ordinary skill in the art" would consider it obvious.
KSR is arguing that the technology it used was previously
available, and that all it did was combine them in a way which it
argued was 'obvious'.
"Claims of obviousness are often the most successful way to
defend patent infringement actions," said Deborah Bould, a partner
at Pinsent Masons, the law firm behind OUT-LAW. "If the invention
was obvious to an uninventive skilled technician in that sector,
then the patent is invalid and will be revoked by the court."
"KSR argued that all the integers of the claim were disclosed
previously in various sources and that the skilled person would
have combined those sources. When that was done, the
invention was obvious," said Bould. "This is known in Europe as
mosaicing – combining pieces of prior art. It is
generally not allowed unless the sources cross refer to each other
or it would have been obvious to the skilled person to combine
them."
The Court of Appeals in the US upheld the patent because it said
that there must be "teaching, suggestion or motivation" that would
lead the skilled person to combine the features to reach the
invention, and that this was absent in the KSR case.
Microsoft and Cisco argue against the motivation test in their
court filing. "The Federal Circuit’s motivation test establishes
too lenient a standard for patentability, and it has had a stifling
effect on true innovation because it encumbers ideas well beyond
the limits imposed by Congress for patentable inventions, and
effectively precludes courts from exercising their authority to
decide ultimate questions of patent validity," says the
document.
"It seems unlikely that the Supreme Court is going to relax
the 'teaching, suggestion or motivation' test, which is well
established, as this will open up more patents to challenge," said
Bould. "The Supreme Court is generally perceived as supporting
technology and patents. However, companies such as Microsoft
and Cisco are arguing hard to open up the obviousness test."
