Supreme Court Debates the Obvious

By Mark Hoerrner

Supreme Court Justice Antonin Scalia was in fine form recently as the Court debated the issue of a federal test for determining patent obviousness. Using choice words like "gobbledygook" and "meaningless," Justice Scalia pulled no punches with the test which seeks some design of former "teaching, suggestion or motivation" that would render a patent or invention as obvious.

Chief Justice John Roberts echoed Scalia’s sentiments.

"It's worse than meaningless because it complicates the question rather than focusing on the statute," Roberts said.

The debate over the obvious has its roots in a legal dispute over gas pedal designs in which one company, KSR International, combined two separate elements into a single pedal and called the creation an "obvious" design.

"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," said Justice Stephen Breyer.

However, the scope of the decision by the Supreme Court on this relatively benign case has caught the attention of many technology firms because it targets a key portion of patent law.

In fact, a previous complaint in the industry surfaced when one company chose to try to patent the combination of browser applets and plug-ins, something that the software development community said was a "no-brainer" when it came to popular application.

In truth, the decision by the Court could have far-reaching implications, both for the corporate community and for the expediency of patent grants.

"If the high court decides to rewrite the legal standard of patent "obviousness" to make it more restrictive," C-Net News.com’s Anne Broache wrote, "it could have wide-ranging effects by reshaping U.S. intellectual property law and reducing the number of marginal patents."

The Federal Courts sought to address this issue in 1982 by creating the "teaching, suggestion or motivation" test. However, it sets up criteria that is often hard to adjudicate properly. Software firms – including much of the open source fan base – don’t regularly provide documented updates on innovations and improvements which is an implied practice under the test.

Justice Breyer noted that guessing an inventor’s motivation was a quagmire that the government should probably not be getting into and suggested that the test was an oversimplification of what needed to be researched on the matter.

Teleflex attorneys, however, cautioned the Court to not be hasty in a decision to toss out the test, based on suggestions from the KSR side which pointed to using what a reasonable person was capable of creating might be a better yardstick than the current system. Teleflex countered by pointing out that the Court should err on the side of invention itself which they called the core decision of how parts are assembled.

Chief Justice Roberts was not without his own Scalia-style quips during the proceedings, especially when addressing the Teleflex legal team.

"Who do y you get to be an expert to tell us something's not obvious," he asked, then answered his own question, "The least insightful person you can find?"

If the Court chooses to scrap the test, however, the potential for an immediate lawsuit glut is considerable. Justice Scalia pointed out that if the Court tossed the test, then most of the patents issued during the past two decades would likely be found to be erroneously issued and need to be reconsidered.

A decision will likely be handed down in mid-2007.