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ThomasHouFirstPaper 5 - 27 Oct 2011 - Main.ThomasHou
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Note: I have finished up my research and am starting to write my draft, which will be finished and ready for your edits by Thursday, October 27. Any suggestions or insights on what I should focus on or change are welcome. | | | Section II: The Continued Viability of Nonobviousness to Bar Trivial Computer Software Patents | |
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< | Before computer software patentees get too excited, they should remember the Supreme Court's counsel that eligible subject matter is a mere floor and claimed inventions must also be "novel, nonobvious, and fully and particularly described. These limitations serve a critical role . . . ." The nonobviousness requirement under Section 103 of the Patent Act has long been the gateway for patentability and the hardest for patentees to satisfy. The Supreme Court laid out the standard test in its _Graham v. John Deere Co._ decision. In the early case of _Dann v. Johnston_, the Court applied the Graham factors and held a computer software program to help bank customers invalid for obviousness. However, the Court's most recent case on nonobviousness is illustrative and key for testing this requirement against claimed computer software. | >
> | Before computer software patentees get too excited, they should remember the Supreme Court's counsel that eligible subject matter is a mere floor and claimed inventions must also be "novel, nonobvious, and fully and particularly described. These limitations serve a critical role . . . ." The nonobviousness requirement under Section 103 of the Patent Act has long been the gateway for patentability and the hardest for patentees to satisfy. The Supreme Court laid out the standard test in its _Graham v. John Deere Co._ decision. In the early case of _Dann v. Johnston_, the Court applied the Graham factors and held a computer software program to help bank customers invalid for obviousness. Even so, the Court's most recent case on nonobviousness is illustrative and key for testing this requirement against claimed computer software. | | | | |
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< | In _KSR Int'l Co. v. Teleflex Inc._, the Supreme Court | >
> | In _KSR Int'l Co. v. Teleflex Inc._, the Supreme Court considered the nonobviousness of a patent for an adjustable electronic pedal with a fixed pivot point used for vehicle control. The Court emphasized that its precedent called for a flexible and functional approach and rejected the FedCir? 's exclusive reliance on its teaching, suggestion or motivation test. For patents claiming combinations of prior art elements, courts should be cautious and look at "interrelated teachings of multiple patents; the effects of demands . . . in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art." The Court recognized that market demand will often drive design trends: "When there is a design need or market pressure to solve a problem . . . a person of ordinary skill has good reason to pursue known options within his or her technical grasp." The Court held the patent at issue obvious and cautioned courts not to stifle the progress of the useful arts by applying rigid and narrow tests for obviousness.
Through KSR, the Supreme Court maintained the traditional threshold Graham factors test for nonobviousness for the FedCir? to follow. Having a high threshold is important for assessing the patentability of computer software, for nonobviousness limits the granting of exclusive rights to software whose inventiveness is trivial and which would have been obvious to the ordinary-skilled software inventor (whose skill would be quite high these days). The field of software is broad and its prior art reaches beyond computer programs to that of the electrical arts and other fields. In _Muniauction, Inc. v. Thomson Corp._, the FedCir? considered the nonobviousness of a software system for auctioning and bidding for municipal bonds using a web browser. Finding little difference between the systems in the prior art and the use of a web browser well-known, the FedCir? invalidated the patent. Furthermore, the FedCir? has traditionally relied on secondary considerations such as commercial success, long-felt but unsolved need, and failure of others when nonobviousness is at a balance. With software production increasingly having a marginal cost approaching zero, the importance of those secondary considerations should be reconsidered for determining the nonobviousness of software. | | |
Section III: What Free Software users should consider when confronted with a patent infringement claim |
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