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October 21, 2007


A flaw of temporal displacement, but very human: in hindsight, most everything appears obvious. Prior to the Supreme Court KSR ruling, patentable inventions correlated to real-world invention: incremental, and combinatorial. As Thomas Jefferson, the first patent board director, observed, new inventions spring from previously unthought combinations. Until KSR, concern about hindsight reasoning rendered courts circumspect for a metric that grappled with this subtle and pernicious tendency. No more.

[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.

A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.

Homage to precedent - Yes, KSR paid lip service to avoiding hindsight reasoning. Yes, KSR paid lip service to elucidating a rationale for combining prior art references.

More than anything, KSR rendered "ordinary" extraordinary.

A person of ordinary skill is also a person of ordinary creativity, not an automaton.

[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

[A] person of ordinary skill has good reason to pursue the known options within his 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 §103.

The upshot is that classes of technologies, once soundly patentable, are no longer so. Mechanical contraptions and electronic circuits advance in the state of the art by combining known functional components in new ways. But this is no more true of any discipline than software, of all stripes.

Most software technologies were conceptualized by the 1970s. Object oriented programming, for example, only gained popularity in the early 1990s, though its antecedent dated to the late 1960s. The 1960s Apranet begat the Internet. The inventions, and they have been true inventions, in the Jeffersonian sense, have been incremental. Post-KSR, that no longer cuts ice.

SCOTUS in KSR revived the 1950 Great Atlantic Tea ruling:

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).

Combinations patents of previously known functionalities are now readily eviscerated. But there is now a domino effect for incremental invention.

Adding an incremental bit to the state of the art has been the norm for patenting. Prior art search comprises finding the incremental bits up to the target patent. Prior to KSR, even with the flexible TSM test, there was no significant gap that could be breached in anticipation. That gap was breached in KSR.

As our precedents make clear, however, the analysis need not seek out precise teachings directed to 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 aptly-name CAFC Leapfrog ruling, shortly after KSR, punctuated how incremental innovation was no longer patentable invention.

There was a distinct unspoken bias in KSR. Chemical combinations are often KSR-obvious too, but, particularly in pharmaceuticals, new, unexpected behaviors arise with previously untested combinations. The life sciences industry, most reliant upon patent protection, went relatively unscathed by KSR.

The most politically charged sector, computers, was most affected. New software processes are still being discovered. New circuits combine with different functionalities. But now, as often as not, inability to invalidate computer-related patents represents failure to perform a thorough prior art search and apply thinly-veiled hindsight reasoning to poison the target patent. Many times the art is practically provided; already cited. Most patents have closely related prior art; the antecedent neighbors live close by. With the standard so radically changed for evaluating obviousness, the puzzle pieces are already there for damning reassessment.

Patent Hawk, whose §102 invalidations run to 60% of patents assigned, estimates that over 90% of software and business method patents granted pre-KSR could be rendered obvious post-KSR. The issue becomes, more starkly than ever, attorney competence: the craft of prior art search combined with the art of storytelling.

More important than ever for inventors is a good patentability search, and a wily patent attorney.

There has been much case law tumult in patent law in the past couple year, in the issues of: declaratory judgment, willfulness, injunctive relief, extra-territoriality, exemption for genetic experimentation, but none more seismic than obviousness.

It has always been true that a patent visiting the courthouse is a relatively rare event. Most patents sit on the shelf collecting dust; quiet title. A majority are neglected to death by failure to pay maintenance fees. Many of those asserted are repeat visitors, the technology adoption widespread.

The effects of KSR are a slow creep: patents rendered invalid one by one, assertion by assertion. Entire families, the bulk of some companies patent portfolios, unenforceable; quiet title, the sleep of the dead. Of that there can be no doubt, nor redoubt. That much is obvious.

Posted by Patent Hawk at October 21, 2007 12:32 PM | Prior Art


Patent Hawk, wasn't KSR's holding just the natural and foreseeable reaction for a world that has gotten sick of the great majority of patents issued by the USPTO?

The USPTO tells the world its error rate is 3.5%, and anyone with half-a-brain can see that more than 3.5% of the patents issued by the USPTO are (at least in part) "worthless" and of no aid to society. The only logical conclusion then (reached by the court in KSR, apparently from those two premises) must be that the standard for obviousness is too "lax", and that something needs to be done to curb the issuance of such non-beneficial patents by changing that standard.

You see, the USPTO is asleep at the switch, and so it issues bad patents. And so the court reinterprets the laws to try rectify the problem of bad patents, without waking the USPTO.

Q.E.D. Trainwreck.

Posted by: NIPRA anonymous at October 22, 2007 5:50 AM

"The most politically charged sector, computers, was most affected. New software processes are still being discovered"

Still being discovered ???

We are really just in the very beginning of a computer age...
As Billy Gates once said: "The best is yet to come"
Computers still can't talk to you like a real person, can't drive you to work etc. etc. etc.
They can't do your work for you, Patent Hawk, like do a semi-intelligent search for patent prior art...
Killing all incentives to be creative in this field (by making patents legally worthless) is not just dumb - it is a direct threat to American economic prosperity and military might.
America will become a third-rate country if those idiots fail to understand that most brilliant ideas are dreamed up by a small number of creative individuals, not huge multi-national corporations, and those individuals want to be rewarded
No reward = no incentive to publicly disclose your breakthrough ideas.
Back to trade secrets, which in case of computer-implemented inventions means keeping all the key algorithmic functionality hidden in a huge chunk of intentionally obfuscated compiled code, or better yet, on the server side, so nobody can understand how it really works
It this what they want ?

Posted by: small inventor at October 22, 2007 6:56 AM