Patently Obvious

The rules about what can--and cannot--be patented may soon change

5 min read

Engineers design and build things every day. But where do you cross the line that divides simply combining existing technologies for their obvious purposes and inventing something really new?

Exactly where you stand in a given situation often depends on whether you already have a relevant patent. Patent owners naturally want their patents to cover as much territory as possible, while would-be inventors want to be restricted as little as possible by someone else’s ­patent monopoly.

Generally speaking, in order to be patentable an invention has to be both new and unobvious. Newness is a fairly easy objective determination: Is the patent applicant laying claim to something never before seen? Unobviousness, though, is thorny, since it necessarily involves a subjective determination, not to mention that it is easy to deem something obvious once it has been explained to you.

Exactly what standard should be used to determine obviousness is currently under the microscope in the United States. The U.S. Supreme Court has agreed to hear a case that could have a profound impact on what is ­patentable. Everyone in patent land is weighing in, including Microsoft, a team of law professors, and the federal government, mostly with arguments that the current standard for unobvious­ness is too low and has resulted in a lot of bad patents’ being issued.

Before we get into the Supreme Court case--which is expected to be decided next year--let me present two controversial inventions and their patents, to illustrate some of the issues in play.

The first example is the Furminator pet-grooming tool (U.S. Patent Nos. 6782846 and 7077076). The blade of the Furminator is, as admitted in the patent, an Oster A5 blade, long used in Sunbeam Corp.’s ­electric hair clippers. Pet groomers often used that same blade, taken out of the ­clipper, to remove shed hair, but the blade was difficult to hold by itself. So the Furminator patents cover the clipper blade positioned in an ”elongate handle ­portion.” Should the idea of adding a handle to Sunbeam’s clipper blade really be patentable? We’ll see. Furminator sued three companies in January, including the home-goods retail chain Linens ’n Things, for selling similar pet-grooming tools.

The second example is a little more complex. Document and image scanners have long included a microcontroller that controls the image sensor, the sheet-feed subsystem, and so on. Traditional scanners also had their own independent power supply. The idea of Syscan’s Patent No. 6275309 is to borrow power from a PC in order to operate the scanner, so that the ­scanner does not have to be plugged into a wall outlet. Computing power is borrowed from the PC as well, so no microcontroller is required in the scanner. How are power and control signals from the PC coupled to the scanner? By a PCMCIA card. A related patent, No. 6459506, also belonging to Syscan, covers a scanner powered and controlled via a USB interface.

Syscan didn’t invent the PCMCIA card, USB, or scanners. Instead, the patentee adopted PCMCIA and USB technology for use in scanners. The result was two patents preventing any other scanner manufacturer from using PCMCIA or USB to power or control their products--even though USB was specifically designed to allow peripheral manufacturers to power their devices from electricity supplied by the USB interface and to be controlled using software running on a connected computer. Syscan is in litigation with one original equipment manufacturer (OEM) and four other scanner companies over the two patents.

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.

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

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.

About the Author

KIRK TESKA, adjunct law professor at Suffolk University Law School, Boston, is managing partner of Iandiorio & Teska, an intellectual property law firm in Waltham, Mass. His book Patents for the Too Busy Manager is scheduled to be published in the spring by Nolo Press.

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