The U.S. Supreme Court heard arguments Tuesday in a case that could make it harder to obtain patents, with technology giants Microsoft and Cisco Systems supporting a change.
The case, involving a patent on gas pedals for vehicles, has the Supreme Court examining how lower courts arrive at a decision that an invention was obvious, and therefore not patentable. In the case, Teleflex and Technology Holding, holders of the electronic gas pedal patent, sued KSR International for patent infringement, but the defendant argued the courts should invalidate the gas pedal invention for obviousness.
After oral arguments Tuesday, some patent lawyers said they expected the Supreme Court to overturn a 4-decade-old approach to deciding obviousness often called the teaching-suggestion-motivation test. The U.S. Court of Appeals for the Federal Circuit has used this test, saying that there must be some proven teaching, suggestion or motivation to lead a person of ordinary skill to combine "prior art" products into a new invention for that invention to be declared obvious.
Other patent lawyers said they expect little movement from the Supreme Court, although any change would have a huge impact on patent holders. If the Supreme Court throws out the motivation test, all current patents could be suspect, said Paul Andre, an intellectual property lawyer with Perkins Coie, in an interview.
A change in the motivation test could mean fewer patent infringement cases brought by patent holders, because they would fear that courts would rule their patents invalid, he said. "The alleged infringer would have an easier time challenging a patent," he added.
But most patent lawyers seem to believe the Supreme Court won't change the law, with the court last acting on the obvious standard in a 1966 ruling, he said. "If the Supreme Court wanted to do it, they'd have changed it by now," he said.
But justices asked several questions about the obviousness standard, with Chief Justice John Roberts suggesting courts needed more flexibility to determine obviousness. The court will likely require the Federal Circuit to come up with a new standard, said Sharon Barner, an intellectual property lawyer with Foley and Lardner, in an interview apart from the court hearing.
Cisco and Microsoft, joined by three other companies, filed a brief in the case saying the motivation standard makes it too hard to prove obviousness, leading to bad patents.
Microsoft and Cisco have been sued for "allegedly infringing dozens of questionable patents," wrote their attorney Peter Sullivan, of Hughes, Hubbard and Reed.
The motivation test "establishes too lenient a standard for patentability, and it has had a stifling effect on true innovation because it encumbers ideas well beyond the limits imposed by Congress for patentable inventions," Sullivan wrote in his brief to the Supreme Court.
But a group of patent lawyers filed a brief opposing a change in the law, saying a change in the obviousness standard could make it difficult to get a patent on any invention that combines old products. The current standard is established and well-thought, wrote lawyers for the American Intellectual Property Law Association.
Without the motivation test, there's no standard to determine obviousness, said Ronald Riley, president of the Professional Inventors Alliance, in an interview. "Things are often obvious in hindsight when they weren't that obvious," he said. "Big un-innovative ... are trying to make the invention game a king's sport because they hate having to compensate inventors."