[Ip-health] Supreme Court to hear case on obviousness standard for patents

[Benjamin Krohmal]

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[ Picked text/plain from multipart/alternative ]
Quote:
"The case [KSR International v. Teleflex] essentially tests how to
determine when an invention is truly new and different, and should
receive a patent that entitles its inventor to the exclusive right to
make, use and sell the item . . .  The court's resolution could
affect the development of drugs and other therapies for disease,
according to advocates on both sides. The Biotechnology Industry
Organization, emphasizing patent protection for various stages of
drug development, is backing KSR. AARP, the largest U.S. seniors
group, is with Teleflex. The group says improper drug patents delay
the entry of generics into the market."

Full text:
http://www.usatoday.com/news/washington/2006-11-21-scotus-patent-
case_x.htm?csp=34

What's new? Justices may help define standard in patent case
Posted 11/21/2006 By Joan Biskupic, USA TODAY

Call it the case of the gas pedal, prescription drug and gift bow.
The variations and costs of those and many other items could be
affected by a Supreme Court patent case that could be one of the most
important intellectual-property disputes to ever come before the
justices.

With abortion, affirmative action and other high-profile issues
before the court this term, a patent case normally would be a yawner.
However, KSR International v. Teleflex, a dispute between competing
makers of adjustable gas pedal systems in vehicles, arises as the
justices have shown increasing interest in U.S. law protecting
inventions.

The case essentially tests how to determine when an invention is
truly new and different, and should receive a patent that entitles
its inventor to the exclusive right to make, use and sell the item.
That standard can make a difference in how people and companies spend
time and money on inventions. If it is too easy to get a patent for a
small variation on a previous invention, there is more of a chance
that competitors could infringe on it, so companies might acquire
patents solely for defensive reasons. If it is too difficult to get a
patent for a small but unique adaptation of an item, it could
discourage research and development.

The question in the oral arguments scheduled for Tuesday focuses on
how to determine when an invention is "obvious," and therefore not
worthy of protection. At issue is whether a standard used by the U.S.
appeals court that hears patent cases allows patents for changes too
small to matter.

The dispute is being watched closely by manufacturers, from the tire-
maker Michelin to gift-packaging producer Hallmark.

"The issue in this case is one that strikes at the very heart of the
patent field," says lawyer Peter Sullivan, who represents a group of
manufacturers backing KSR.

Last year, the U.S. Patent and Trademark Office granted 183,187
patents, a number fairly typical of recent years, says Patent Office
spokeswoman Brigid Quinn. (One product can involve many patents.)
Meanwhile, applications are up. Last year, 443,652 requests were
received, more than twice the total from 1995.

Trespassing on intellectual property?

The KSR case involves an adjustable gas pedal system that was
developed for use by short drivers in large vehicles. Teleflex says
its pedal assembly, patented in 2001, has a distinctive electronic
throttle control and pivot that stays in place.

KSR devised a pedal system that drew a patent-infringement lawsuit
from Teleflex, alleging that the KSR system used a feature of
Teleflex's system. KSR countered that the Teleflex patent was invalid
because it was an "obvious" combination of existing works. A trial
court agreed.

The U.S. Court of Appeals for the Federal Circuit, to which patent
disputes are appealed, ruled that KSR did not make a sufficient case
for "obviousness." It said KSR did not show that prior technology
offered a "teaching, suggestion or motivation" for their system.

KSR's attorney, James Dabney, urges the justices to reject the
"teaching, suggestion or motivation" standard. He says the test
should be whether someone in the field would have been capable of
adapting existing technology to achieve the new result, not whether
the motivation was there.

Dabney says current rules make it difficult to challenge patents for
trivial adaptations.

Teleflex lawyer Thomas Goldstein says the appeals court got it right.

"Because inventions are so often evolutionary rather than
revolutionary," he says, "an obviousness standard that merely
compares an invention to the prior (work) will often produce the
mistaken conclusion that the former was obvious."

Goldstein says the "teaching, suggestion or motivation" standard
minimizes "hindsight" by focusing the test on how a person would have
combined the elements of an invention from existing works.

In a court brief, the American Intellectual Property Law Association,
siding with Teleflex, says the difficulty of deciding what is new and
how hindsight can distort assessments of whether a variation of an
invention is patent-worthy.

The effect on the drug industry

The court's resolution could affect the development of drugs and
other therapies for disease, according to advocates on both sides.
The Biotechnology Industry Organization, emphasizing patent
protection for various stages of drug development, is backing KSR.
AARP, the largest U.S. seniors group, is with Teleflex. The group
says improper drug patents delay the entry of generics into the market.

Sullivan, who represents several companies siding with KSR, notes
that one of them, Hallmark, was sued for patent infringement over a
machine it devised to curl ribbons for decorative bows. The Federal
Circuit court rejected Hallmark's claim that the competitor's patents
were "obvious," based on prior inventions.

Like KSR, he says patents too often are granted to routine variations
on existing creations.

But what might seem routine may really be new.

The Intellectual Property Law Association contends that what counts
is how old things are put together in new ways. It warns that many
things look obvious only in hindsight, and the group recalls movie
director Billy Wilder's famous line: Hindsight "is always 20/20."



Benjamin Krohmal
Medical Innovation Fund Project Director
Consumer Project on Technology
Tel: +1-202-332-2670 ex. 14
Fax: +1-202-332-2673
ben.krohmal@cptech.org