I have just finished my first-ever reading of a decision by the Supreme Court, and it was fascinating! The case was "KSR International Company v. Teleflex Inc.", which tells you nothing, but it dealt with patent law. More specifically, it dealt with what constitutes an "obvious" invention.
First, some case background. The accelerator pedals in cars used to be connected to the engine by means of a cable, and there was a spring that made the cable retract when you "let off the gas". In recent years, that cable has been replaced by a wire, with a sensor on the pedal that detects its movement and sends it to an actuator on the engine that regulates the flow of fuel.
There is no shortage of patents on such pedals and sensors, one of which says that you should mount the sensor on the "fixed structure" of the pedal to reduce wire chafing. (By the way, the fact that you still push on a pedal and feel resistance is entirely due to familiarity. You could just as well have a dial on your armrest and accomplish the same thing with regard to controlling the speed of the car.)
But we don't have dials; we still have pedals. And in the never-ending search for the perfect driving environment, the adjustable pedal was invented to accommodate people with longer or shorter legs than average. There is also no shortage of patents on mechanisms for this adjustment, one of which covers how to provide a fixed resistance through the entire range of pedal travel, the so-called "constant ratio" problem.
The problem at hand came about when the engineers at KSR and GMC added a sensor to the fixed part of the adjustable pedal. Teleflex had a patent that had claimed such an arrangement, and sued in District Court, where they lost. KSR successfully argued that putting a sensor on the fixed part was an obvious combination of the "prior art", so the patent claim was invalid. So far, so good (for KSR and for reason.)
But Teleflex appealed to the Court of Appeals for the Federal Circuit, which hears all patent cases.
Patents are interesting things. The Constitution of the United States provides for an inventor to retain the exclusive right to an invention for a limited time "in order to promote the useful arts". Subsequent law grants a patent for an invention that is useful; novel; and (here's the tricky part) "non-obvious to one of ordinary skill in the art." Whew!
Fortunately, in this case, the District Court had defined "ordinary skill" as "an undergraduate degree in mechanical engineering (or an equivalent amount of industry experience) [and] familiarity with pedal control systems for vehicles." Again, this sounds reasonable.
The CAFC, however, reversed the district court, applying the "Teaching, Suggestion and Motivation" test in a very narrow way that held that since the earlier patents didn't apply to adjustable pedals, then it was not obvious for the engineers to put the sensor on the fixed part of the adjustable pedal.
The Court of Appeals seems to have a pretty dim view of the ordinary skill level of engineers if they thought that the combination of these two earlier concepts wasn't obvious.
So KSR appealed to the Supreme Court, which overturned the decision. Justice Kennedy wrote the opinion for the unanimous court. As one with an engineering background, and a few patents, too, I think that this is a great decision.
Some say that broadening the definition of "obvious" will stifle innovation. I disagree. It may lead to fewer patents issuing, but that isn't necessarily a bad thing. I've long felt that there are too many trivial (OK, obvious) things that receive patents.
The vast majority of innovation is "incremental", in that it makes small improvements to solutions to existing problems. Very, very few inventions are truly "radical" or "disruptive" (to use two words common in innovation theory). Incremental inventions, especially combinations of existing technology, that behave in predictable and expected ways should be considered obvious.
In the syllabus of the case appears this quote:
"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 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."
Just because you were clever doesn't mean you have an invention. Not every advance is worthy of a monopoly right to exclude everyone from the product of your cleverness. That said, many advances are worthy of that right, which is what a patent grants. This case effectively raises the bar for which advances do qualify for the right to be covered by a patent.
I believe this ruling will have profound impacts on a number of fronts.
First will be a flurry of actions seeking to overturn patents on the basis that they are obvious. These actions will likely be brought by companies licensing the rights to patents from the patent holders.
Second will be a large increase in the number of patents rejected by the US Patent and Trademark Office, particularly in software, business methods, genetics, and pharmaceuticals.
Third will be an increase in the number of products with incremental innovations at lower prices by more companies.
I think this decision sets forth a reasonable definition of innovation and skill, and differentiates between ordinary creativity and true invention. It seems like a positive step forward for American industry and American consumers. (It also seems to raise the profile of engineers by increasing the definition of "ordinary skill"!)
I'd like to conclude with some words from Justice Kennedy's opinion:
"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 the their value and utility."
"A person of ordinary skill is also a person of ordinary creativity, not an automaton."
"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. The 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 useful arts."
