Rulings Weaken Patents' Power

By Robert Barnes and Alan Sipress
Washington Post Staff Writers
Tuesday, May 1, 2007

The Supreme Court concluded a series of cases yesterday that weaken the protection given to patent holders, making it more difficult to get a patent and easier to challenge existing ones.

Patent experts said one of two cases decided yesterday -- KSR International v. Teleflex-- is the court's furthest-reaching ruling in the field for decades. The decision sends a clear message that the U.S. Patent and Trademark Office and lower courts must be more open in considering whether inventions are "obvious," a common ground for denying an application.

"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," Justice Anthony M. Kennedy wrote for a unanimous court.

In a separate case, the court ruled yesterday that Microsoft did not violate an AT&T patent when its Windows software was installed on computers manufactured overseas.

"The presumption that United State law governs domestically but does not rule the world applies with particular force in patent law," Justice Ruth Bader Ginsburg wrote in the 7 to 1 decision. Justice John Paul Stevens dissented, and Chief Justice John G. Roberts Jr. recused himself from the case.

Although the cases -- along with the earlier-decided MedImmune v. Genentech-- concerned different aspects of the law, experts said the cases collectively show a Supreme Court united in its belief that patent holders have received too much protection in the past.

"We now have a string of decisions that say the Supreme Court thinks we have too many patents and it's too hard to invalidate them," said Thomas C. Goldstein, a lawyer for Teleflex. "It's hard to miss that message."

The KSR and MedImmune cases together mean much less certainty for holders of thousands of existing patents, said John R. Thomas, a Georgetown University law professor who specializes in intellectual property. "The bottom-line effect is that interested parties have a greater ability to challenge patents and a greater possibility of prevailing."

The disputed patent in the KSR case was held by Teleflex and involved an adjustable gas pedal that combined two established elements, the pedal and an electronic sensor. KSR, a Canadian company, challenged the patent, and a lower court agreed.

But the U.S. Court of Appeals for the Federal Circuit, which was established to specialize in patent cases, said the combination was not obvious under its test that looked at whether some "teaching, suggestion or motivation" had anticipated it.

Kennedy said the appeals court's test was helpful but too rigidly applied.

Thomas said the court's ruling makes many existing patents vulnerable to court challenge because they were issued according to a standard the justices have now rejected. The KSR and MedImmune cases, which allowed companies that license technology to challenge the validity of the underlying patent, mean far more uncertainty for patent holders.

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