[A2k] Microsoft's Brief on KSR vs. Teleflex

[Josh Sarnoff]

Two of the most significant sentences in the Court's KSR decision are:

"For over a half century, the Court has held that a 'patent for a
combination which only unites old elements with no change in their
respective functions . . . obviously withdraws what is already known
into the field of its monopoly and diminishes the resources available to
skillful men.' Great Atlantic & Pacific Tea Co. v. Supermarket Equipment
Corp., 340 U. S. 147, 152 (1950). This is a principal reason for
declining to allow patents for what is obvious."  Slip op. at 11-12.

The amicus brief on the merits of various Economists and Legal
Historians (disclosure alert -- I was Counsel of Record) not only
recited this language (see page 10) but also cited to earlier precedents
such as Atlantic Works v. Brady, 107 U.S. 192, 200 (1883), which
discussed inventions that "would naturally and spontaneously occur."
The brief also encouraged the Court to be more explicit about the level
of creativity required for a patent.  Although the Court largely
declined to do so in this case, the Court's decision (and particularly
its approval of the "combination" precedents) makes an invaluable
contribution to protecting the public domain and should result in
dramatic changes to the obviousness standards being applied.  For those
interested, the brief is at http://www.wcl.american.edu/pijip/ksr.cfm.

Josh

Joshua D. Sarnoff
Assistant Director
Glushko-Samuelson Intellectual Property Law Clinic
Washington College of Law
American University
Room 446A
4801 Massachusetts Avenue, NW
Washington, DC 20016, U.S.A.
011.202.274.4165 phone
011.202.274.0659 fax
jsarnoff@wcl.american.edu email

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-----Original Message-----
From: a2k-admin@lists.essential.org
[mailto:a2k-admin@lists.essential.org] On Behalf Of Benjamin Krohmal
Sent: Wednesday, May 02, 2007 12:01 PM
To: IP-Health; a2k@lists.essential.org
Subject: [A2k] Microsoft's Brief on KSR vs. Teleflex

In making its decision this week in the KSR v. Teleflex case, the U.S.
Supreme Court considered an amicus brief filed jointly Microsoft, Cisco,
and three other companies.

Readers of this list may be especially interested in the following
excerpt which highlights the reasons these companies support higher
standards of patentability.

[snip]

Thomas Jefferson expressed
his concern for this bargain between the inventor and the
public when he wrote:
[I]f a new application of our old machines be a ground
of monopoly, the patent law will take from us much
more good than it will give. Perhaps it may mean
another thing, that while every one has a right to the
distinct and separate use of the buckets, the screw, the
hopper-boy, in their old forms, the patent gives you the
exclusive right to combine their uses on the same object.
9 But if we have a right to use three things separately, I
see nothing in reason, or in the patent law, which forbids
our using them all together. A man has a right to use a
saw, an axe, a plane, separately; may he not combine
their uses on the same piece of wood? He has a right to
use his knife to cut his meat, a fork to hold it; may a
patentee take from him the right to combine their use on
the same subject? Such a law, instead of enlarging our
conveniences, as was intended, would most fearfully
abridge them, and crowd us by monopolies out of the
use of the things we have.

Thomas Jefferson, Letter to Oliver Evans (Jan 16, 1814), in
14 Writings of Thomas Jefferson 66 (Andrew A. Lipscomb &
Albert E. Bergh eds., 1903).