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March 3, 2008

Grasp by Analogy

On the Supreme Court, Justice Antonin Scalia can't resist indulging in sarcasm as modus operandi. Contrast that with the poised maturity of persnickety Justice Ruth Bader Ginsberg, who revels in the devils in the details. Justice Stephen Breyer: "The point is to try to focus on a matter that is worrying me. Sometimes it's easier to do that with an example."

Breyer patent case quotations:

Quanta Computer v. LG Electronics:

Imagine that I want to buy some bicycle pedals, so I go to the bicycle shop. These are fabulous pedals. The inventor has licensed somebody to make them, and he sold them to the shop, make and sell them. He sold them to the shop. I go buy the pedals. I put it in my bicycle. I start pedaling down the road. Now, we don't want 19 patent inspectors chasing me or all of the other companies and there are many doctrines in the law designed to stop that.

I mean, there's a doctrine that you cannot impose equitable servitude's upon chattel.

And I take it here they are using those chips in those mechanisms that the chips are almost exclusively designed for and there isn't much else to use them for. Am I right or wrong?

The given reply to the above question: "the point here is that that's not the relevant distinction."

KSR v. Teleflex:

Now to me, I grant you I'm not an expert, but it looks at about the same level as I have a sensor on my garage door at the lower hinge for when the car is coming in and out, and the raccoons are eating it. So I think of the brainstorm of putting it on the upper hinge, OK? Now I just think that; how could I get a patent for that?

Patents are granted if you "just think that" something novel, Justice Breyer. Though KSR raised the bar for what's novel, it's the same idea; no analogy, nor raccoon, necessary.

Posted by Patent Hawk at March 3, 2008 12:20 AM | Case Law


Just a technicality: KSR raised the bar for what's considered obvious, not novel.

Posted by: Jonathan Ross at March 3, 2008 2:20 AM

J. Breyer is an idiot. So is Scalia.

Posted by: JD at March 3, 2008 9:25 AM

To Jonathan:

Using Breyeresque analogy - Imagine you had a crop of jumping beans, and you wanted to know how good the beans were at jumping, you could measure how high a bean jumped by setting a bar. The higher the bar a bean could jump over, the better the bean. Otherwise, if a bean couldn't jump very high, that would be an obvious bean, like most beans. Patents are like high-jumping beans, so the bar is how good, or novel, a bean has to be to be a patent bean. If it's easier to find a bean obvious, because Supreme beanheads set the bar high, then a bean has to jump really high to be a patent bean, to be novel. So KSR raised the patent bean bar of novelty, leaving the beans out if it, and just speaking of patents, not beans. Am I right or wrong?

Posted by: Patent Hawk at March 3, 2008 11:11 AM

Patent Hawk,

You lost me with your analogy (and since I'm struggling with a Mexican lunch which did not completely agree with me, I'm not going to spend any more time thinking about beans!). But no matter how you try to explain it, KSR was about obviousness. Novelty and obviousness are not the same thing (e.g., burden of proof).

Posted by: Jonathan Ross at March 4, 2008 6:39 AM

Not only are novelty and obviousness "not the same thing" they are conceptually not even similar. Going back to basics, Governments award a 20 year patent monopoly ONLY for exclusively non-obvious matter. The concept of "novelty" isn't needed, for testing whether a claim is patentable over the state of the art known to the PHOSITA at the filing date of the claim. Except......one needs a concept of "novelty" to adjudicate between the members of a bunch of independent filings from different inventors, in which they all filed on subject matter not obvious when measured against the totality of public knowledge on the date they each file. The patent system has to ensure that only the first of them to file, on a specific invention, shall get the prize of the 20 year monopoly. The first filer gets everything novel. The later filers can have what's still novel, after subtraction from their filed content of what the earlier filers enabled. But you would say (I imagine)that a patent statute so screamingly simple is 1)forbidden by your Founding Fathers, 2) unfair to slow to file first inventors, and 3) not conducive to promotion of the progress.

Posted by: MaxDrei at March 5, 2008 5:39 AM