Nevada Appellate Lawyer & Attorney : Tami D. Cowden : Nevada Supreme Court, Ninth Circuit Court of Appeals

In another patent ruling, the U.S. Supreme Court again reversed the federal circuit, this time in a 7-1 decision, with Roberts not participating.   In  Microsoft v. AT&T,  the Court reversed the Federal Circuit’s reading of 35 U.S.C. Section 271(f), which had held Microsoft's practice of sending its code abroad for placement on foreign computers violated  violation of synthetic speech invention, incorporated in the code.  The Court held the code cannot be a component, and therefore, cannot be a combination holding the invention of another - at least, not until after it is copied into a computer.  The copying of the code occurs abroad, and thus, U.S. law does not reach it.

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In KSR International Co. v. Teleflex Inc,  the Court issued a unanimous ruling, authored by Justice Kennedy, which may make it easier for patents to be denied on the grounds that the innovation is too obvious to warrant patent protection.  

The court rejected the test to determine obviousness developed by the federal circuit, known as the “teaching, suggestion or motivation” test (“TSM”).  Under TSM, a patent is only proved obvious if the prior art, the problem’s nature or the knowledge of a person having ordinary skill in the art reveal some motivation or suggestion to combine prior art teachtings.” During argument, Justice Scalia had called the the Federal Circuit’s test as “gobbledygook,” while Chief Justice John Roberts Jr. referred to it as “worse than meaningless.”   Kennedy’s opinion merely calls TSM narrow and rigid, although its elements  can remain a portion of a more helpful, flexible test that allows a common sense approach to determine whether the innovation was obvious.

The Court’s test focuses on the marketplace, and what design variations might be prompted by market demand. A thoughtful examination of the new test appears at Scotusblog.

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