1) The Supreme Court heard a case that could change the standards for validating existing patents and granting new ones, making it harder to get patents and easier to challenge their validity. 2) Major tech companies want narrower patent standards to limit patents only to true innovations, while other companies want to maintain more flexible standards that better protect existing technologies. 3) The case focuses on the legal concept of "obviousness" and whether simply combining common technologies already in use should merit a patent. The Supreme Court justices seemed critical of the current obviousness standard.

1. Supreme Court Case Could Alter Patent Law
By Daniel Del’Re
29 November 2006
Attorneys for some major tech firms attended a U.S. Supreme Court hearing on
Tuesday in a case that -- based on comments from several justices -- has a good
chance of changing the standards for validating existing patents and granting new ones.
Heavyweights with billions of dollars of intellectual property at stake have filed briefs
with the court in the hope of influencing the outcome. A ruling is expected within several
months.
Microsoft, Cisco Systems, Intel, the Business Software Alliance and others want a
narrower standard for judging patents so they can challenge patent validity when
defending infringement claims. They say this would limit patents to true innovations and
deter frivolous infringement suits.
The other side is led by old economy companies such as General Electric, though tech
firms Qualcomm and Tessera are also in that camp. They want the court to retain the
flexible standard, which is more protective of patents based on existing technology.
At issue is a dispute between auto parts makers KSR International and Teleflex. KSR is
contesting Teleflex's patent for an auto accelerator pedal. The pedal adjusts to a driver's
height and uses electronic sensors to accelerate a car. KSR says the pedal simply
combines technologies that were "ubiquitous" in the marketplace at the time the patent
was granted. KSR says these technologies were clearly intended to be combined.
Patent Validity At Issue
A federal circuit court rejected KSR's claims. It then appealed to the Supreme Court.
The court's decision could well provide guidance on how future patent validity cases will
be judged.
"The issue for the industry is what methodology the Patent and Trademark Office and
the courts are going to apply in determining whether a patent should be granted and if
an existing patent is valid," said David Cavanaugh, a partner at law firm WilmerHale
who attended the opening arguments.
Neither he nor his firm is involved in this case.

2. The focus is on the concept of "obviousness." This holds that combining technologies
that are common knowledge among professionals in an industry does not merit patent
protection. The obviousness standard also states that a combination of existing
technologies warrants patent protection only if no industry professional explicitly
suggested the combination. Explicit suggestions include references in technical
documents, white papers or trade publications.
In a brief supporting Teleflex, the American Bar Association said changing the explicit
suggestion requirement "would significantly weaken the patent system by creating a
less objective and less predictable methodology for determining patentability."
The United Inventors Association filed a separate brief that sides with the ABA, saying
that changing the suggestion requirement could "result in existing patents readily being
challenged by adversaries armed with hindsight."
Attorney Cavanaugh says the justices were critical of the existing obviousness standard
and seem likely to change the status quo.
Scalia Sees "Gobbledygook'
Chief Justice John Roberts said the current standard is "worse than meaningless."
Justice Antonin Scalia referred to the current standard as "gobbledygook."
A change would suit the interests of most technology companies, whose products often
build on past achievements. Those supporting KSR say today's requirement of explicit
suggestions lets companies get patents for obvious technology widely in use in the
public domain.
"Once clear standards for obviousness have been set, the quality of patents granted will
increase, and those holding dubious patents won't attempt to enforce them against true
innovators," said Mark Chandler, general counsel of Cisco Systems. "The court should
use this opportunity to ensure that patents are granted only for true innovations and that
the lower courts feel empowered to closely review the legitimacy of patents that have
been granted."
Chandler says Cisco faces new infringement claims every week. A claim can cost $2
million to $10 million to litigate, he says.
Tech firms see this case as part of their broader effort to reform patent litigation
standards.
"We're seeing a lot of patent litigation cases filed against new economy companies,"
Roger Kennedy, lead patent counsel at Oracle, said in an interview. "Many of these we
consider abusive."

3. Kennedy points to companies that acquire patents solely to sue for infringement rather
than to develop products. Technology companies feel that these "patent trolls" wield a
sword of Damocles because courts have set a low bar for establishing willful
infringement and allow for high punitive damages, says Kennedy, who spoke on behalf
of a tech industry group called the Coalition for Patent Fairness.