[Ip-health] A person of ordinary skill not an automaton: The US Supreme court in KSR

[James Packard Love]

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http://www.keionline.org/index.php?option=3Dcom_content&task=3Dview&id=3D45

A person of ordinary skill not an automaton: The US Supreme court in KSR

Some excepts from the U.S. Supreme Court's decision in KSR International
KSR INTERNATIONAL CO. v. TELEFLEX INC. ET AL.  No. 04=961350. Argued
November 28, 2006=97Decided April 30, 2007  (On the web here: http://
www.supremecourtus.gov/opinions/06pdf/04-1350.pdf)

The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
over emphasis on the importance of published articles and the
explicit content of issued patents. The diversity of inventive
pursuits and of modern technology counsels against limiting the
analysis in this way. In many fields it may be that there is little
discussion of obvious techniques or combinations, and it often may be
the case that market demand, rather than scientific literature, will
drive design trends. Granting patent protection to advances that
would occur in the ordinary course without real innovation retards
progress and may, in the case of patents combining previously known
elements, deprive prior inventions of their value or utility. [page 15]

The second error of the Court of Appeals lay in its assumption that a
person of ordinary skill attempting to solve a problem will be led
only to those elements of prior art designed to solve the same
problem.  [page 16]

Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together
like pieces of a  puzzle.  [page 16-17]

A person of ordinary skill is also a person of ordinary creativity,
not an automaton. [page 17]

The same constricted analysis led the Court of Appeals to conclude,
in error, that a patent claim cannot be proved obvious merely by
showing that the combination of elements was =93obvious to try.=94 Id.,
at 289 (internal quotation marks omitted). When there is a design
need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known options withinhis or her
technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common
sense. In that instance the fact that a combination was obvious to
try might show that it was obvious under =A7103.  [page 17]

The Court of Appeals, finally, drew the wrong conclusionfrom the risk
of courts and patent examiners falling preyto hindsight bias. A
factfinder should be aware, of course, of the distortion caused by
hindsight bias and must becautious of arguments reliant upon ex post
reasoning. See Graham, 383 U. S., at 36 (warning against a
=93temptationto read into the prior art the teachings of the invention
in issue=94 and instructing courts to =93=91guard against slipping into the
use of hindsight=92=94 (quoting Monroe Auto Equip-ment Co. v. Heckethorn
Mfg. & Supply Co., 332 F. 2d 406, 412 (CA6 1964))). Rigid
preventative rules that deny factfinders recourse to common sense,
however, are nei-ther necessary under our case law nor consistent
with it.  [page17]

We build and create by bringing to the tangible and palpable reality
around us new works based on instinct, simple logic, ordinary
inferences, extraordinary ideas, and sometimes even genius. These
advances, once part of our shared knowledge, define a new threshold
from which innovation starts once more. And as progress beginning
from higher levels of achievement is expected in the normal course,
the results of ordinary innovation are not the subject of exclusive
rights under the patent laws. Were it otherwise patents might stifle,
rather than promote, the progress of useful arts. See U. S. Const.,
Art. I, =A78, cl. 8. These premises led to the bar on patents claiming
obvious subject matter established in Hotchkiss and codified in =A7103.
Application of the bar must not be confined within a test or
formulation too constrained to serve its purpose.  [page 23-24]

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James Packard Love
Knowledge Ecology International
http://www.keionline.org
james.love@keionline.org
Washington, DC +1.202.332.2670

"If everyone thinks the same: No one thinks." Bill Walton"