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Yesterday, the Soliciter General filed a strong amicus brief urging the Supreme Court to grant cert in KSR:
The Federal Circuit has transformed one means of establishing obviousness under that framework—proof that the prior art provided a teaching, suggestion, or motivation for combining separate prior art references—into an inflexible requirement for determining obviousness. As this case demonstrates, the Federal Circuit’s teaching-suggestion-motivation test extends patent protection to non-innovative combinations of familiar elements. The issue is important, because many patent applications rest on the combination of prior art references, and because extension of patent rights to obvious combinations of familiar elements retards, rather than advances, new discoveries. The Supremes do pull surprises sometimes, but if cert for KSR had a slot on Tradesports, it would have jumped yesterday.
The case is particularly relevant to the tech area, especially software; the SG noted:
[A]firmative evidence in the prior art of a teaching, suggestion, or motivation to combine the features . . . may be lacking if the claim arose in a newly emerging technical field or if the combination was so obvious to persons skilled in the art that no one would have had need or incentive to record the trivial extension of the art. Perhaps the voice of Mr. Justice Bradley, quoted in PFF's KSR amicus brief, will once again be heard in the land:
The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts. Such inventors are worthy of all favor. It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith. [Emphasis added.]
-- Atlantic Works v. Brady, 107 U.S. 192, 199-200 (1882).
posted by James DeLong @ 7:16 AM | Patents
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