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Monday, October 8, 2007

Patently Obvious

From the October 2007 issue of New York Law Journal Magazine.
Necessity is the mother of invention. And invention, it turns out, is the mother of litigation.

A Supreme Court ruling last Spring sent shockwaves through the already-litigious world of intellectual property by making it easier to challenge the validity of a patent. Patent reform legislation currently making its way through Congress threatens to further upset the apple cart.

Much of the controversy turns on the definition of a single word, and it’s obvious. That is, the word in question is “obvious.”

One of the conditions for a valid patent is that it be “non-obvious.” In other words, the invention being claimed must represent an advance over existing technology which in patent law is known as the prior art.

And when patent lawyers say “prior,” they mean way, way prior. In 1976, the Supreme Court invalidated a patent for a supposedly novel method of using water to flush manure out of dairy barns. The Court held that the patent was “obvious,” citing, among other authorities, the fifth labor of Hercules, in which the superhero used water to clean the Augean stables. So if you were thinking about patenting a method for parting the Red Sea, don’t bother. That one’s obvious too. Cf. Exodus 14:21.

The idea behind the obviousness test is that granting a patent, which amounts to a temporary monopoly to exploit a particular technology, should be limited to true innovations. In last April’s decision in KSR v. Teleflex, the Supreme Court held that a patent for a car gas pedal with an electronic sensor that adjusts to the driver’s height was – duh! – obvious.

Well if that’s obvious, one wonders about the fate of other patents. McDonald’s, for example, has a 55-page application seeking to patent “a method and apparatus for making a sandwich.” The document includes such innovative thoughts as “it is advantageous for sandwiches to be served when freshly made.” The method proposed by McDonald’s involves combining meat, cheese, and garnish within toasted “bread components.” Look out world!

In any event, the definition of obvious has become the key battleground in patent law. Obvious comes from the Latin ob (“in view of” or “towards”) plus via (“way”) – suggesting, metaphorically, something that lies in the way. In everyday English, there are many gradations of obviousness. It’s one thing to say that obvious means “plain as the nose on your face” and it’s another thing to say that it means “evident, if you just gave it a moment’s thought.”

Ultimately, the meaning of obvious comes down to this: obvious to whom? To the man on the street, or to Stephen Hawking? In patent lingo, the answer is, obvious to Mr. or Ms. Phosita – “Phosita” stands for a “Person Having Ordinary Skill In The Art”. Hypothetical persons such as Mr. Phosita often spell trouble for lawyers – think of the Reasonable Man of tort law, who seems so saintly at first, but then is always out riding an omnibus when you really need him.

Courts have long debated what sort of person Mr. Phosita really is. Earlier precedents imagined him as a fairly passive person; therefore, an invention was deemed obvious only if the prior art contained some “teaching, suggestion, or motivation” that would have nudged Mr. Phosita toward making the same discovery.

But in KSR, the Supreme Court gave Mr. Phosita a facelift, describing him as “a person of ordinary creativity, not an automaton.” As a creative person, Mr. Phosita might find a method for combining meat, cheese, and bread to be “obvious” even if he hadn’t read about it in The Sandwich Quarterly.

These competing views of Mr. Phosita are just the latest in a long struggle to come up with a verbal formulation that captures the je ne sais quoi of patentability. In America, the struggle began with the Patent Act of 1793, drafted by Thomas Jefferson, which limited patents to that which is “new and useful.”

In 1850, the Supreme Court struck down a patent for the making of porcelain doorknobs on the ground that it represented “the work of the skilful mechanic, not that of the inventor.” The Court thus created a somewhat arrogant hypothetical “inventor” who sneers at the work of mere mechanics (“You call that prior art? My three-year-old daughter could’ve invented that.”)

In 1880, Supreme Court Justice Noah Swayne urged an even more exacting standard for patentability, saying that a valid patent must reflect “a flash of genius.” In 1950, Justice William Douglas raised the bar higher still, saying that a patent must “push back the frontiers of chemistry, physics and the like . . .” Basically, nothing short of a Buck-Rogers-style ray gun would qualify.

The Patent Act of 1952 replaced the Swayne and Douglas formulations with the current test of non-obviousness “at the time the invention was made.” The patent reform legislation before Congress would shift the goalposts by requiring that the invention must not have been obvious at any time “before the effective filing date of the patent.”

Patent law has other linguistic oddities. “Patent Troll” – a term reportedly coined in 1991 by Peter Detkin, former general counsel of Intel – is a person who obtains patents solely for the purpose of launching infringement suits. A troll is a creature from Scandinavian mythology usually found living under a bridge or in a cave, just waiting to abduct a princess or file a complaint. In 2006, Research in Motion paid $612 million to settle a patent troll lawsuit.

A predecessor of the troll was the “submarine patent.” A submarine patent is one that is filed secretly and then “surfaces” years later, usually in the context of an infringement suit. Before 1995, the period of patent exclusivity began on the day the patent was published, but an inventor could file his or her application and then delay publication for years. Now, however, patent exclusivity begins on the date of the earliest filing, so the modern troll has no incentive to delay publication. Besides, trolls don’t like submarines – they can’t reach the periscope.

Every patent applicant, be they troll or Thomas Edison, must contend with an archaic rule requiring that all patent claims consist of a single sentence, no matter how complicated the subject matter. The “single sentence rule” does not appear in any statute; rather, it has simply been a part of Patent and Trademark Office practice ever since 1836. In 1995, the DC District Court upheld the PTO’s rejection of a patent because the applicant had (horrors!) broken up his claim into nine sentences. Indeed, the court held that the insertion of a period anywhere in a claim, except for abbreviations, would be fatal.

Patent law also has a distinctive set of verbs. A patent does not describe its subject matter; rather, it “reads on” the relevant technology. Actually, thanks to the single sentence rule, it reads on and on and on. Be that as it may, patent lawyers say things like “the ‘123 patent [patents are known by the last three digits of the patent number] reads on gas pedal technology” or – in the case of infringement – that “the ‘123 patent reads on the ‘456 patent.”

When describing the essence of a patent’s invention, the operative verb is “to teach,” as in “the ‘789 patent teaches a method for combining meat, cheese, and bread to make a sandwich.” It’s a much nicer image than trolls or submarines – instead, patents are seen as public servants, each one up at a chalkboard, teaching us an incremental lesson in modern living. It’s just that sometimes patents teach stuff that is, like, so obvious.