via Slashdot. The U.S. Supreme Court - about which we have often been critical on this blog - came through in a big way today. The Circuit Court - which is notorious for its lax standards in determining whether a patent is valid - had the test it uses for "obviousness" overruled.

"Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress," Justice Anthony Kennedy wrote for the court.

A brief account can be found here. Note that the companies arguing against the Circuit court are the ones that innovate; those arguing with the Circuit court are those that don't. This alone should say something about the state of patent law. Hopefully the ruling will cut down on the vast number of frivolous and/or blackmail patent lawsuits. The article doesn't mention this, but the ruling was unanimous, which is good news as well.

There was also a useful but unrelated ruling cutting down on the use of lawsuits on exports.

KSR Int'l Co. v. Teleflex Inc. (unanimous court) :

(page 11) the need for caution in granting a patent based on the combination of elements found in the prior art

(page 13) When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary kill can implement a predictable variation, section 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

(page 15) In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scienfitic literature, will drive design trends. 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 their value or utility.

(page 24) 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 progress of useful arts.

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That's just silly. Let's see--Microsoft was against the circuit court, so they innovate, right? I'm sure that's a position you've taken before, and I look forward to seeing you take it again. Hallmark was against the circuit court, so I guess they're an innovative company. I know you think nothing but ill of them, but some would argue that the pharma companies that were for the circuit court engage in innovation--more than Hallmark does, anyway. Now it also happens that 3M, General Electric, Proctor and Gamble, DuPont, a bunch of IP societies, a group of chemistry and bioengineering professors and Qualcomm, among many others, supported the circuit court. And we all know that none of those groups innovate in the least.

More sensible, perhaps, would be to recognize that this is a tough issue, with smart and well-meaning (and, of course, also self-interested) people on both sides. There were two groups of law professors, for example, one on each side, each equally prominent (you might even have to give the edge to the supporters fo the circuit court, as that group included Mark Lemley. You probably don't think he's a hack or pharma shill, do you?

But I understand--you're not a lawyer, you have an axe to grind, it's not your goal to be informative and accurate, but rather to score rhetorical hits in the service of your larger goal. But just try not to be ridiculous in doing so--it hurts your cause.

Point taken: I was over hasty in characterizing those for weakening "obviousness" as innovative and those against as not. As you say, it is a mixed bag. I retract the comment.

Geoff - You got David to retract one of his comments. Fair enough. But you have to get off this ridiculous kick that arguments can be evaluated based on whether or not somebody is a lawyer. As your own exchange with David illustartes, arguments can be conducted based on their objective worth and logic - regardless of their source. A good argument is a good argument. Period. You don't need to be a lawyer to make one.

Justin: I wasn't suggesting the arguments be evaluated based on whether the arguer is a lawyer--in both cases, I was just suggesting that the fact that the arguer was not a lawyer might help to explain some apparent lacunae in the comment. It was shorthand for "a lawyer, concerned with explaining the case on the merits and describing the facts, would probably know better." Thus, perhaps David's not being a lawyer helps to explain why he missed the identities of many of the amicus authors. It certianly helps to put the gap into context: He is a policy advocate trying to score points, not a lawyer, trying accurately to describe the briefs in the case. But you're right, of course--one could do that well even if one weren't a lawyer, and lawyers can and do do it poorly all the time. Call it a not-quite necessary and cetainly not sufficient condition for getting it right. But I wasn't trying to suggest otherwise--I was just providing context. My arguments were intended to rise or fall on their merits, not on the fact that the person making them is a lawyer (a fact about me you would not necessarily have any reason to know, nor I about you).

I wouldn't describe myself as "policy advocate trying to score points" but rather a scientist trying to seek the truth - and finding myself rather frustrated by a system that seems designed to retard rather than promote innovation. Was Adam Smith a "policy advocate trying to score points" for pointing out that monopoly doesn't work very well? It is true at this point I've seen so much evidence that the system doesn't work that I would take some persuading to change my view - but I don't think that makes me a "policy advocate trying to score points." I'm sure if I were a lawyer arguing the case I could think of some justication for my hasty words - but since I'm not, I didn't :-)