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How High Is the Patent Bar Now?

Has the Supreme Court's ruling eviscerated the patents for hosts of products--even Apple's iPod?

5 min read

This spring, the U.S. Supreme Court made it harder to patent things by raising a standard known as ­”obviousness.” A lot of people had figured that this bar had fallen so low you could practically step over it. Now some people are talking as if there’s no longer any point in getting a ­patent—but that’s going too far. Still, some existing patents proba­bly will fall by the wayside.

I procure patents much more than I litigate them, but within only a month of the decision, even I found myself in court, using the Supreme Court case as ammunition against a patent. I am not alone: within days of the ruling, Vonage, based in Holmdel, N.J., asked to retry a US $58 million lawsuit it had lost in March for infringing on New York City�based Verizon’s patents. The real question for engineers, though, seems to be this: Just how high is the obviousness bar now?

To answer that question, you have to take a good, hard look at the case that induced the court to redefine the word ”obvious.”

Teleflex of Limerick, Pa., had sued KSR International of Ridgetown, Ont., over the adjustable gas pedals that KSR was supplying to General Motors. The court invalidated Teleflex’s patent because the claimed innovation consisted of a combination of known components—an adjustable gas pedal equipped with an electronic sensor that controlled the throttle—that all functioned just as they were designed to function. That’s ”ordinary innovation,” the court decided on 30 April 2007, the kind anyone schooled in the art could have foreseen without the slightest effort. It is therefore too obvious to be patentable.

This ruling contradicted that of the U. S. Court of Appeals for the Federal Circuit, the usual last chance in patent matters, given that the Supreme Court hears only one or two patent cases a year. The lower court had reasoned that because no one had written out or taught the idea of combining an adjustable gas pedal with a sensor, the combination constituted real innovation. The Supreme Court rejected this legal test, arguing that although the presence of such a ”teaching” would indeed make the combination obvious, the lack of it does not necessarily make a combination unobvious.

Immediately following the Supreme Court’s KSR ruling, the Federal Circuit then added another category of obvious, and thus not patentable, ideas: electronic versions of previously known mechanical devices.

Leapfrog, a retailer of children’s learning toys in Emeryville, Calif., held a patent for an electronic interactive learning device that sounds out the letters in a word as a child selects them. Leapfrog sued Fisher-Price of East Aurora, N.Y., alleging that the latter’s similar PowerTouch product infringed on the Leapfrog patent. The Federal Circuit disagreed, arguing that Leapfrog’s patent was obvious, based on a 1973 patent describing an electromechanical device with a phonograph record actuated by puzzle pieces. Pressing on a puzzle piece imprinted with a letter caused the record to play the sound of that letter in a word. ”Applying modern electronics to older mechanical devices has been commonplace in recent years,” the court held.

Does that mean the first MP3 player is obvious in light of a 1950s-era Wurlitzer jukebox? Not so fast, says the Supreme Court. Recognizing that ”inventions in most, if not all, instances rely on building blocks long since uncovered” and that ”discoveries almost of necessity will be combinations of what, in some sense, is already known,” the Supreme Court said engineering would count as unobvious if it went against the conventional thinking in the field. Also unobvious is any combination of old elements that work together in an unexpected manner.

Prove that a product is commercially successful, that it addresses a long-felt need, that it has been copied by or is licensed to others, and you’ll have an easier time convincing the patent office that you deserve a patent or, if you already have one, that it’s valid. The more unexpected the success of an innovation, the stronger will be the claim of being unobvious.

Most patents will survive the court’s latest ruling, because it leaves several other doctrines regarding unobviousness intact. One such doctrine deals with a solution that appears obvious only after the problem it addresses has been identified. In one old case involving a mixing vial with two compartments separated by a seal, everyone believed that leakage from one compartment into the other occurred around the seal. One inventor discovered that leakage occurred through the seal and won a patent, even though his solution to this problem—using a different material for the seal—was fairly obvious.

Another way to prove unobviousness is by showing that something that seems obvious after a problem has been simplified may well not have been so beforehand. This is best explained through the example of an engineer who found a way to keep all parts of a mold at a set temperature by using a single temperature sensor to control several valves that allowed a cooling or heating medium to enter—a job that prior machines had done by assigning each valve a sensor of its own. The courts ruled that the new simplified system was unobvious.

Still another doctrine holds that something pieced together from prior art is not obvious if the construction of the pieces had to be changed to make them fit. In one old case, a patent for a blood filter put the inlet and outlet on the top, whereas an earlier patent for a fuel filter had them on the bottom. But the court decided that this apparent resemblance didn’t stop the blood-filter patent from being unobvious. Reason: if you turned the fuel filter upside down so that it resembled the blood filter, aspects of its internal construction would have kept it from working. That was difference enough.

That’s not to minimize the importance of the court’s latest ruling. Let’s take a look again at the case of an MP3 player. Imagine a company came along and tried to patent a media player with three key components—a housing that encloses various electrical components that perform computations, a touch pad based on polar coordinates ”including angular input areas for providing input from a swirling finger motion,” and ”a button disposed at a central portion of the touch pad” that provides another kind of input.

Of course, we’re talking about Apple’s iPod.

Separately, all three of these components were known when Apple filed its patent application in 2001, but Apple convinced the patent office that the three components had never before been combined in one product. But don’t each of the components function as expected? And aren’t polar coordinate touch pads designed to process swirling motion input? And aren’t buttons to be pressed so as to provide an input? Would the notion of a central button surrounded by a polar coordinate touch pad have surprised any consumer electronics designer? I doubt it.

What happens if the Apple patent is re-examined under the court’s new standard? Time will tell. At the end of the day, what is obvious is still highly subjective. Following the KSR ruling, for better or worse, obviousness is also a legal question decided by a judge rather than a jury. And that has some patent owners truly worried.

About the Author

KIRK TESKA is an adjunct law professor at Suffolk University Law School, in Boston, and the managing partner of Iandiorio & Teska, an intellectual-property law firm in Waltham, Mass. His book, Patent Savvy , has just been published by Nolo Press of Berkeley, Calif.

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