Patently Obvious

The Furminator and Syscan examples indicate that the U.S. Patent Office is willing to deem technology patentable that was developed by one company and then put to use in another company’s product. If, after looking at the Furminator and Syscan patents, you think that’s a bad idea, remember that many patents, maybe most of them, cover systems made up of subsystems and components engineered by others. Nothing wrong there: Thomas Edison didn’t invent glass, the idea of a vacuum, or the filament, but combining those things in a new way led to something that has become the very icon of innovation: the lightbulb.

What have the courts been saying about the patentability of new twists on old ideas? In 2002, the U.S. Court of Appeals for the Federal Circuit--the usual court of last resort for these cases, as the Supreme Court rarely hears patent matters--set out a hypothetical case that goes like this:

Suppose inventor A invents a shoe ­polish and receives a patent for the ­composition of the polish. Then suppose inventor B discovers that inventor A’s ­polish repels water when rubbed on shoes. That’s not patentable, the court said, ”because repelling water is inherent to the normal use of the polish to shine shoes.” Next, though, suppose inventor C discovers that inventor A’s polish grows hair when rubbed on the scalp. That, the court said, is patentable, because it’s a new use of a known composition. Funny example, but all too real. In 2000, the Federal Circuit Court of Appeals allowed a patent for the idea of using Bag Balm--an ointment normally used to soothe irritated cow udders--to treat human baldness (Patent No. 6033676).

Clearly, there can be a fine line between building on existing technology and merely incorporating it, between unobvious and obvious. To locate that line, the Circuit Court uses a standard that requires proof of some prior ”suggestion, teaching, or motivation” to combine the components in order to hold the combination obvious.

Which brings us to the case before the Supreme Court--which is certain to go to the heart of the standard. Teleflex, of Limerick, Pa., owns a patent that includes the combination of two well-known components--a gas pedal that can be adjusted relative to the driver’s seating position and an electronic (as opposed to a mechanical) throttle control (Patent No. 6237565). Teleflex sued its competitor, KSR Inter­national, of Ridgetown, Ont., Canada, for supplying General Motors with adjustable gas pedals for use with electronic throttle controls. The Supreme Court is to decide whether a combination of preexisting components, wherein those components individually do nothing more than what they were designed to do, is patentable.

KSR is petitioning to have the Supreme Court throw out the Circuit Court’s requirement that an innovation can be ruled ­obvious--and so unpatentable--only if ­evidence is presented of some public discussion that the existing components should be combined in the manner in ­question. Instead, KSR wants the courts to be able to ­invalidate a patent should they conclude that anyone with a working knowledge of the technology would find a given combination of existing components obvious. Compared with the Circuit Court’s narrow standard, that would raise the bar for innovators who are trying to show that their innovations are unobvious and therefore qualify for patent protection.

What happens if the Supreme Court rejects KSR’s position and leaves the standard alone? Every time a new product is engineered, the patent holder may have to publicly explain all the product’s possible uses in order to thwart later patents that would simply incorporate the product.

On the other hand, if KSR’s petition is adopted, and the Supreme Court raises the unobviousness bar, we can expect that many existing patents will be challenged in the courts. Some innovators may be unpleasantly surprised when a judge or jury--who weren’t present during the struggles over the design, manufacturability studies, and quality control headaches of a product’s development--decide to invalidate a patent on the basis that, actually, pretty much anyone could have put the innovator’s new product together.