Verizon vs Vonage Update 04/30/07

Today, The US Supreme Court made it easier for companies accused of infringing a patent to get it thrown out for failing to introduce a genuine innovation.

The decision in
KSR International vs Teleflex overturned both the Circuit and Appeals court.

This decision should clear the way for the Circuit courts broad misinterpretations regarding Verizon's bogus patents in Verizon vs Vonage.

Today's ruling concerning patent validity which overturned a decades old test used by the lower court that handles all patent appeals.

The case centered on the requirement that an invention be "non obvious" and not simply combine prior inventions.

The justices unanimously said the federal appeals court that handles patent cases had given too much power to developers of trivial technological improvements.

Key excerpts follow...

"
Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress."

"In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.

What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103.

One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims."

"The Circuit first erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve.

Under the correct analysis, any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed."

"Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem.

Common sense teaches, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."

"The court also erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was obvious to try.

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 in the art 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."

"Finally, the (appellate) court drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias.

Rigid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law
."

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