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MS and Cisco back resistance to controversial patent law

Obviousness, obviously

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The US Supreme Court is to rule on one of the most controversial aspects of patent law, "obviousness".

Though the case involves car accelerator pedal technology, Microsoft and Cisco are backing one side of the case, which could set a vital precedent.

US firm Teleflex has accused KSR International of infringing its pedal technology, but KSR has argued that Teleflex's patent claims are invalid because the inventions are "obvious". That argument was initially supported by the courts, then reversed on appeal. The Supreme Court will now make a further judgment on the contentious issue of "obviousness".

Patents are vital to technology companies, and Microsoft and Cisco are backing KSR's case that patents are sometimes granted too leniently. The companies have filed a brief with the court in support of KSR.

"If the test for patentability becomes too lenient and allows routine variations on prior inventions to be patented anew, the public's free use of information in the public domain is clouded by a new monopoly," the brief says. "Moreover, the public receives no value in the disclosure of minor variations of inventions already known and disclosed in the prior art."

KSR has argued that the Federal Circuit Court has been misinterpreting the law of what "obvious" means for many years, and hopes for a precedent-setting reinterpretation. A 1952 patent law states that an invention does not qualify for a patent if a "person having ordinary skill in the art" would consider it obvious.

KSR is arguing that the technology it used was previously available, and that all it did was combine them in a way which it argued was "obvious".

"Claims of obviousness are often the most successful way to defend patent infringement actions," said Deborah Bould, a partner at Pinsent Masons, the law firm behind OUT-LAW. "If the invention was obvious to an uninventive skilled technician in that sector, then the patent is invalid and will be revoked by the court."

"KSR argued that all the integers of the claim were disclosed previously in various sources and that the skilled person would have combined those sources. When that was done, the invention was obvious," said Bould. "This is known in Europe as mosaicing – combining pieces of prior art. It is generally not allowed unless the sources cross refer to each other or it would have been obvious to the skilled person to combine them."

The Court of Appeals in the US upheld the patent because it said there must be "teaching, suggestion or motivation" that would lead the skilled person to combine the features to reach the invention, and that this was absent in the KSR case.

Microsoft and Cisco argue against the motivation test in their court filing.

"The Federal Circuit’s motivation test establishes too lenient a standard for patentability, and it has had a stifling effect on true innovation because it encumbers ideas well beyond the limits imposed by Congress for patentable inventions, and effectively precludes courts from exercising their authority to decide ultimate questions of patent validity," the document says.

"It seems unlikely that the Supreme Court is going to relax the 'teaching, suggestion or motivation' test, which is well established, as this will open up more patents to challenge," Bould said. "The Supreme Court is generally perceived as supporting technology and patents. However, companies such as Microsoft and Cisco are arguing hard to open up the obviousness test."

Copyright © 2006, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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