More Eben, KSR and Patent Reform…

Matt points out an article in today’s WSJ on the impact of the recent KSR ruling on obvious patents.

I’ve written about my own patent experiences and KSR before and feel that the new ‘obviousness’ criteria will help tremendously when it comes to defending against frivolous, obvious patents, and in particular software patents.

I talked with Eben Moglen about the sorry state of our patent system after his OSCON presentation on The Legal Policy of the Free World in the Age of Web 2.0. I asked him what he thought the impact of KSR would be on our patent system.

His response: Zip. Nada. Nothing.

He went on to describe in excruciating detail the backgrounds of each of the Justices and how none of them were particularly qualified to rule on patent cases and that the Court of Appeals for the Federal Circuit is where patents cases are heard and the Supreme Court basically has little to say in the matter.

Federal judges hate patent cases, he added, because they are intricate and complex and are very likely to be overturned on appeal, which reflects poorly on them and their court.

He cited court history and Water Rights cases that were brought to the Supreme Court and the mechanism by which the court decided the case. Basically, there was a single Justice (I forget which) who was knowledgeable on water issues and the entire court deferred to his opinion. That was it. Simple as that. Judges establish areas of expertise and are protective and territorial about them. Judges will (and are expected to) defer to the experts, and for patents that’s the Circuit Court.

He went on further to describe the dwindling caseload of the Supreme Court and that the likelihood of them hearing another patent case in the next several years is next to nil so the Federal Circuit Court will continue to rule as it has and a single ruling by the Supreme Court will mean almost nothing.

He said that if they were to follow up with additional rulings to reaffirm their position regarding patents and obviousness, that would be a different matter, but under their current case load and the wide range of cases that have higher priorities, that’s just not going to happen.

I challenged him on his cynical view of the ruling by reminding how very clear Justice Kennedy was on the obvious to try critera

When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious

I said that Justice Kennedy’s description of obviousness was a little like obscenity in that ‘I’ll know it when I see it.’

Eben agreed that the KSR language could not be more clear, but that did not mean any conclusions could be drawn as to how the Circuit Court would rule going forward.

I’m much more optimistic than this and believe KSR will have a huge impact on our patent system. It might take years, and it might begin with the Patent office raising the bar for issuing new patents.

I found Eben’s cynicism to be a little troubling, but consistent with some other lawyers I’ve worked with in the past: Paranoid, skeptical, distrusting, measured, and often pessimistic. The good ones for sure. That’s what we pay them for.


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