Last week the US Supreme Court rendered a decision in a patent case that is just starting to get the attention it deserves. In a unanimous opinion authored by Justice Kennedy, KSR International Co. v. Teleflex Inc. et. al, the court reversed a decision by the appeals court that had clearly, if narrowly defined the bar for obviousness in a patent.
Section 103 of the Patent Act of 1952 states a patent may not be obtained
if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.
KSR v. Teleflex addressed the issue of when the combination of two prior inventions would be obvious. The patent at issue concerned the addition of an electronic sensor to an adjustable cars gas pedal. There had been previous patents for adding electronic sensors to gas pedals, and previous patents for making gas pedals adjustable (to allow for varying heights of drivers), but Teleflex held a patent for adding an electronic sensor to an adjustable gas pedal. While this may seem obvious in hindsight, the Appeals Court held that to be considered obvious at the time the patent was granted there would have to be some teaching, suggestion, or motivation (TSM) in the prior art, the problems nature, or in the knowledge of a person having ordinary skill in the art. While the TSM had been applied by the District Court, the appeals court held that the application was not strict enough in that the District Court did not make "findings as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention" to combine the prior art in the way the patent described. In overturning that opinion, the Supreme Court recognized that it is common engineering practice to try existing things in new combinations and therefor held that "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."
The Supreme Court cited some examples of this doctrine:
In United States v. Adams the court considered the obviousness of a battery that contained water instead of acid and used electrodes of magnesium and cuprous chloride instead of zinc and silver chloride. While ordinarily substituting one material for another would have been considered obvious, in this case the prior art warned of the risks involved in the new combination. The fact that it worked was unexpected and thus held not to be obvious.
In Anderson's-Black Rock, Inc. v. Pavement Salvage Co. the Court invalidated a patent involving the addition of a radiant-heat burner to a paving machine, ruling that while the combination was useful it did nothing unexpected.
In Sakraida v. AG Pro, Inc. the Court ruled that when a patent "arranges old elements with each performing the same function it had been known to perform" and yields no more than one would expect, the combination is obvious.
The Supreme Court did go on to say that the analysis of obviousness can be complex and that a court that performs it should made its reasoning explicit, but that it "need not seek out precise teachings directed the the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." The opnion adds that "A person of ordinary skill is also a person of ordinary creativity, not an automaton."
It remains to be seen how this will effect software patents, although some major cases such as Verizon v. Vonage will provide an indication. In general, if this should make it harder to get the kind of patents where the application takes a verb from the dictionary and appends "on the Internet," which would be a good thing.