Supreme Court Smacks Down Federal Circuit

by on April 30, 2007 · 6 comments

The Supreme Court handed down both of the big patent cases today, smacking the Federal Circuit down in each of them. Here is the court’s 9-0 decision in Teleflex that “The Federal Circuit addressed the obviousness question in a narrow, rigid manner that is inconsistent with §103 and this Court’s precedents.” And here is the court’s 7-1 holding in Microsoft v. AT&T that “A copy of Windows, not Windows in the abstract, qualifies as a“component” under §271(f).”

As I predicted, the court did not take the opportunity to rule that software is unpatentable. However, in footnote 13, the majority carefully reserved judgment on whether software could be a component of a patented invention:

We need not address whether software in the abstract, or any other intangible, can ever be a component under §271(f). If an intangible method or process, for instance, qualifies as a “patented invention”under §271(f) (a question as to which we express no opinion), the combinable components of that invention might be intangible as well. The invention before us, however, AT&T’s speech-processing computer, is a tangible thing.

This suggests that the court may be leaving the door open to a direct challenge to the patentability of software in a future case.

Update: Having read the decision more carefully, I think the above isn’t quite right. Footnote 13 was discussing whether software could be a component of an invention for purposes of §271(f), which is a separate question from whether software can be patentable subject matter in the first place. Software could theoretically be patentable in general but not a component of an invention for purposes of §271(f).

  • http://www2.blogger.com/profile/14380731108416527657 Steve R.

    While this decision is a step in the right direction, I still believe that we haven’t gotten down to the fundamental issue. The fundamental issue is that concepts cannot be patented.

    What Teleflex could have patented was a device that could read the position of a gas peddle. However, KSR – if it independently developed its own device – would not infringe on Teleflex’s patent since the concept and design of using remote sensing has been around for a long long time. For KSR to infringe, they would have had to have used the design drawings of Teleflex.

  • http://www2.blogger.com/profile/14380731108416527657 Steve R.

    While this decision is a step in the right direction, I still believe that we haven’t gotten down to the fundamental issue. The fundamental issue is that concepts cannot be patented.

    What Teleflex could have patented was a device that could read the position of a gas peddle. However, KSR – if it independently developed its own device – would not infringe on Teleflex’s patent since the concept and design of using remote sensing has been around for a long long time. For KSR to infringe, they would have had to have used the design drawings of Teleflex.

  • Lawrence B. Ebert

    Of the above comment, KSR did not patent a concept, AND, separately, the issue that the CAFC worried about (and the Supreme Court did not worry about) was where the sensor was mounted.

    For a comparison of what the CAFC and Supreme Court were talking about, see IPFrontline.

  • Lawrence B. Ebert

    Claim 4 of US Patent 6,237,565 to Teleflex (not KSR, please note error in above post) reads:

    A vehicle control pedal apparatus (12) comprising:

    a support (18) adapted to be mounted to a vehicle structure (20);

    an adjustable pedal assembly (22) having a pedal arm (14) moveable
    in
    force [sic] and aft directions with respect to said support (18);

    a pivot (24) for pivotally supporting said adjustable pedal
    assembly
    (22) with respect to said support (18) and defining a pivot
    axis (26); and

    an electronic control (28) attached to said support (18) for
    controlling a vehicle system;

    said apparatus (12) characterized by said electronic control (28)
    being responsive to said pivot (24) for providing a signal (32)
    that
    corresponds to pedal arm position as said pedal arm (14) pivots
    about
    said pivot axis (26) between rest and applied positions wherein
    the
    position of said pivot (24) remains constant while said pedal arm
    (14)
    moves in fore and aft directions with respect to said pivot (24).

    The CAFC was making a big deal about the absence of motivation for –electronic control (28) attached to said support–.

    In a NONPRECEDENTIAL opinion, the CAFC wrote: Claim 4 specifically provides for an assembly
    wherein the electronic control is mounted to the support bracket of the assembly. This configuration avoids movement of the electronic control during adjustment of the
    pedal’s position on the assembly.

    The Supreme Court considered putting the electronic control on the support “obvious to try,” but the CAFC had required “obvious to try with a reasonable expectation of success.” Roughly speaking, that’s what changed.

    The comments about “nature of the problem” were a bit bogus, because the CAFC was reviewing how the district court had analyzed the problem. The “nature of the problem” was NEVER the only way to establish motivation.

    See also
    KSR: an overemphasis on the importance of published articles[?]

    and, for a situation in which the new test will likely play out badly,

    KSR v. Teleflex: it’s not bedtime for Bongso

  • Lawrence B. Ebert

    Of the above comment, KSR did not patent a concept, AND, separately, the issue that the CAFC worried about (and the Supreme Court did not worry about) was where the sensor was mounted.

    For a comparison of what the CAFC and Supreme Court were talking about, see IPFrontline.

  • Lawrence B. Ebert

    Claim 4 of US Patent 6,237,565 to Teleflex (not KSR, please note error in above post) reads:

    A vehicle control pedal apparatus (12) comprising:

    a support (18) adapted to be mounted to a vehicle structure (20);

    an adjustable pedal assembly (22) having a pedal arm (14) moveable
    in
    force [sic] and aft directions with respect to said support (18);

    a pivot (24) for pivotally supporting said adjustable pedal
    assembly
    (22) with respect to said support (18) and defining a pivot
    axis (26); and

    an electronic control (28) attached to said support (18) for
    controlling a vehicle system;

    said apparatus (12) characterized by said electronic control (28)
    being responsive to said pivot (24) for providing a signal (32)
    that
    corresponds to pedal arm position as said pedal arm (14) pivots
    about
    said pivot axis (26) between rest and applied positions wherein
    the
    position of said pivot (24) remains constant while said pedal arm
    (14)
    moves in fore and aft directions with respect to said pivot (24).

    The CAFC was making a big deal about the absence of motivation for –electronic control (28) attached to said support–.

    In a NONPRECEDENTIAL opinion, the CAFC wrote: Claim 4 specifically provides for an assembly
    wherein the electronic control is mounted to the support bracket of the assembly. This configuration avoids movement of the electronic control during adjustment of the
    pedal’s position on the assembly.

    The Supreme Court considered putting the electronic control on the support “obvious to try,” but the CAFC had required “obvious to try with a reasonable expectation of success.” Roughly speaking, that’s what changed.

    The comments about “nature of the problem” were a bit bogus, because the CAFC was reviewing how the district court had analyzed the problem. The “nature of the problem” was NEVER the only way to establish motivation.

    See also
    KSR: an overemphasis on the importance of published articles[?]

    and, for a situation in which the new test will likely play out badly,

    KSR v. Teleflex: it’s not bedtime for Bongso

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