U.S. Supreme Court case could change patent law

Microsoft and Cisco are among those seeking a change

The U.S. Supreme Court heard arguments today in a case that could make it harder to obtain patents, with technology giants Microsoft Corp. and Cisco Systems Inc. supporting a change.

The case, which involves a patent on gas pedals for vehicles, has the Supreme Court examining how lower courts arrive at a decision that an invention was obvious and therefore not patentable. In the case, Teleflex Inc. and Technology Holding Co., holders of the electronic gas pedal patent, sued KSR International Co. for patent infringement, but the defendant argued that the courts should invalidate the gas pedal invention for obviousness.

After oral arguments Tuesday, some patent lawyers said they expected the Supreme Court to overturn a four-decade-old approach to deciding obviousness. That approach is often called the teaching-suggestion-motivation test. The U.S. Court of Appeals for the Federal Circuit has used this test, saying that there must be some proven teaching, suggestion or motivation to lead a person of ordinary skill to combine "prior art" products into a new invention in order for that invention to be declared obvious.

Other patent lawyers said they expect little movement from the Supreme Court, although any change would have a huge impact on patent holders. If the Supreme Court throws out the motivation test, all current patents could be suspect, said Paul Andre, an intellectual property lawyer with Perkins Coie LLP, in an interview.

A change in the motivation test could mean fewer patent infringement cases brought by patent holders, because they would fear that courts would rule their patents invalid, Andre said. "The alleged infringer would have an easier time challenging a patent," he added.

But most patent lawyers seem to believe that the Supreme Court won't change the law, with the court last acting on the obviousness standard in a 1966 ruling, Andre said. "If the Supreme Court wanted to do it, they'd have changed it by now," he noted.

Even so, justices asked several questions about the obviousness standard, with Chief Justice John Roberts suggesting courts needed more flexibility to determine obviousness. The court will likely require the Federal Circuit to come up with a new standard, said Sharon Barner, an intellectual property lawyer with Foley and Lardner LLP, in an interview apart from the court hearing.

Cisco and Microsoft, joined by three other companies, filed a brief in the case saying that the motivation standard makes it too hard to prove obviousness, leading to bad patents.

Microsoft and Cisco have been sued for "allegedly infringing dozens of questionable patents," wrote their attorney, Peter Sullivan of Hughes, Hubbard and Reed LLP.

The 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," Sullivan wrote in his brief.

But a group of patent lawyers filed a brief opposing a change in the law, saying modifications to the obviousness standard could make it difficult to get a patent on any invention that combines old products. The current standard is established and well thought-out, wrote lawyers for the American Intellectual Property Law Association.

Without the motivation test, there's no standard to determine obviousness, said Ronald Riley, president of the Professional Inventors Alliance, in an interview. "Things are often obvious in hindsight, when they weren't that obvious," he said. "Big un-innovative [companies] are trying to make the invention game a king's sport because they hate having to compensate inventors." 

Copyright © 2006 IDG Communications, Inc.

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