SCOTUS Reins In Patent Law

The U.S. Supreme Court made two important rulings on patent law today.

In Microsoft Corp. v. AT&T (05-1056) it held 7-1 that U.S. patent law doesn't apply to software copied abroad and not repatriated.

Of broader importantance was the court's unanimous decision in KSR International v. Teleflex (04-1350), where it broadened the definition of "obviousness" for patent law purposes beyond the narrow test previously applied by the U.S. Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over most patent law cases.

The SCOTUS analysis in KSR holds that patents must be reviewed to see if the proposed solution is obvious to solve any problem, not just the problem identified in the patent. It holds that "prior art" includes not just prior efforts at solving the problem identified in the patent, but also prior efforts to solve similar problems in other fields. And, finally, it ruled than when there are only so many ways to solve a problem which a skilled person in the field might have considered, that all of those possibilities are obvious, because that solution would have been "obvious to try" for a skilled person in the field, even though a skill person in the field would not have known just which solution would work best until a little experimentation was conducted.

It will be hard to tell precisely how this new standard for obviousness plays out in practice, but given that patent law is an area of law dominated by a small number of specialists who work together under the supervision, for the most part, of a single court and a single government agency, the effect could be swift and dramatic. We could see the number of patents denied on obviousness grounds surge -- greatly increasing the size of the public domain of ideas.

Of course, the news is not good for many participants in the system, so it may be met with resistance, something that drove the Federal Circuit to establish precedents narrower than the relevant U.S. Supreme Court precedents in the first place. For patent examiners, it means that while it is easier to dispose of a patent, that the relevant prior art which must be examined is much more expansive. For patent applicants (who represent the bulk of the people represented by members of the patent bar) it will mean more work on the part of their lawyers to establish in a much broader area of inquiry that there is no prior art which makes the invention obvious, and no lawyer for a patent applicant wants to have to tell a client that their invention is too obvious to be protected by a patent. For judges in patent cases, it means granting fewer motions for summary judgment, which means a larger trial docket.

But, continued efforts by lawyers for inventors fighting claims of patent infringement, a part of the patent world growing dramatically in clout in recent years, may have enough clout to really realize the implications of KSR. For them, this case is a huge litigation edge, and it flows from first principles that a man on the street should be able to understand. Why should a guy who comes up with an obvious idea (and more and more patents seem obvious these days, at least in hindsight), be able to prevent other people from using it?