Perfect 10 v. Google and Amazon : Copyrights : Transformative Fair Use : In-Line Linking : Framing : Vicarious and Contributory Infringement

Warning: some of the links here – or links from linked pages – may take you to pages with adult content. Caveat emptor (enter at your own risk).

Opinion in the consolidated case

Perfect 10 v. Google and Amazon (A9.com)
(9th Cir. May 16, 2007)
at the 9th Circuit Website

The opinion is also available online at Stanford Cyberlaw
and at LawGeek (Jason Schulz)

The copyright infringement case discussed in this posting and just decided in the 9th Circuit of the United States Court of Appeals really has it all. It is clearly a “10” in my book, or, viewing it from the side of the opposite sex, you might call it a recipe for “perfect copyright cake”:

Recipe: Take Los Angeles, Beverly Hills and Hollywood. Then add an adjunct professor, computer expert, money manager and championship poker player (Norm Zada), who, first irked inter alia by the Playboy rejection of a friend, then publishes a rival magazine, Perfect 10. Stir in copyrighted commercial photographs of “Perfect 10’s” topless and nude women, as posted to other Internet websites by unauthorized third parties. Bake under intense scrutiny on the Internet in a form using thumbnails generated by the Google search engine, with search results in-linking to such unauthorized photographs. Remove those search thumbnails from that digital oven at the bidding of the copyright owner of the photographs … or else?

Presto: Perfect Copyright Cake, or,
as the lawyers might say, “the result is a very interesting copyright case”.

What is a “Perfect 10? The underlying rating concept derived from a film:

“The 1979 romantic comedy film 10, directed by Blake Edwards and starring Bo Derek, Dudley Moore and Julie Andrews … [derived its title of “10”] from a rating system used by people to rank members of the opposite sex based upon beauty, with a 10 being the epitome of attractiveness. It came into common usage as a result of this film….”

What Is the History of “Perfect 10”, the publisher?

“Perfect 10 was created by Edward Rasen, the original executive editor of SPIN magazine and creator of SPIN Radio. Perfect 10 Video was launched during 1992 and Julie Kruis, a noted swimsuit model (Miss Swimwear Illustrated, etc.) was the original spokesmodel. Initially, Mr. Rasen published a newsletter and then a magazine until May 1998 when he sold the magazine, web address and video line name but not library to Norman Zadeh [now Norman Zada], a former Stanford University computer science professor and hedge fund manager. Mr. Rasen’s version of Perfect 10 did not include pictures of naked females.”

What is the case about?”

Frederick Lane at the NewsFactor Network summarizes the case as follows (May 17, 2007):

“Last year, a U.S. District Court in California issued an injunction against Google and Amazon.com (which operates the A9 search engine), barring them from including thumbnails of photographs from the magazine and Web site Perfect 10 in their image search results.

On Wednesday, the U.S. Court of Appeals for the Ninth Circuit (which includes California) overturned that decision and sent the case back down to the District Court for further proceedings. Writing for the unanimous three-judge panel, Judge Sandra S. Ikuta said that “[w]e conclude that Perfect 10 is unlikely to be able to overcome Google’s fair use defense and, accordingly, we vacate the preliminary injunction regarding Google’s use of thumbnail images.”

TRANSFORMATIVE FAIR USE
and a Logical PARALLEL to KSR Teleflex & Patents

In the opinion of LawPundit, the most important element of Judge Ikuta’s written opinion is the holding on the issue of transformative fair use, previously commented on LawPundit. Judge Ikuta writes:

“We conclude that the significantly transformative nature of Google’s search engine, particularly in light of its public benefit, outweighs Google’s superseding and commercial uses of the thumbnails in this case. In reaching this conclusion, we note the importance of analyzing fair use flexibly in light of new circumstances. Sony, 464 U.S. at 431-32; id. at 448 n.31 (“ ‘[Section 107] endorses the purpose and general scope of the judicial doctrine of fair use, but there is no disposition to freeze the doctrine in the statute, especially during a period of rapid technological change.’ ”) (quoting H.R. Rep. No. 94-1476, p. 65-66 (1976), U.S. Code Cong. & Admin. News 1976, p. 5680)). We are also mindful of the Supreme Court’s direction that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Campbell, 510 U.S. at 579.”

This modern line of reasoning – in emphasizing “rapid technological change” and “new circumstances” – mirrors the trend of logic found in US Supreme Court Justice Kennedy’s opinion in KSR v. Teleflex, where “modern technology … market demand … [and] design trends” are to be given more attention in the future than in the past in making the obviousness test for patents. Similarly, the scope AND limits of copyrights must be formulated to suit the modern age – rather than the long gone Gutenberg era.

Who bears the economic costs of protecting copyrights and patents?

One of the problems with patents and copyrights is that patent and copyright holders generally see only their “rights” and “profits”, without any obligations. They see neither the “costs” that protection of their copyrights and patents engenders, nor who is to pay for those costs. The US Constitution does not provide that copyright and patent holders enjoy their monopolies free of costs. They are to be free to exploit their works and inventions but there is no clause which provides that others are to pay the bill for policing their private rights. There is also the ancillary issue of licensing costs, which should bear some sensible relationship to the actual benefit that a copyright or patent provides to society, otherwise the copyright or patent is – as a matter of simple economics – not worth protecting.

In The Two Faces Of Perfect 10 v. Google, by Anthony Falzone, Executive Director, Fair Use Project, Center for Internet and Society (Law, Science and Technology Program), Stanford University Law School, May 16, 2007, Falzone points out that the issue of secondary liability is an especially troublesome one in the case of Perfect 10 v. Google and Amazon as follows:

“The Ninth Circuit … announced [that] there “is no dispute that Google substantially assists websites to distribute their infringing copies to a worldwide market and assists a worldwide audience of users to to access infringing materials.” Accordingly, it held Google could be liable for contributory infringement if Perfect 10 can show Google (i) “had knowledge that infringing . . . images were available using its search engine,” (ii) “could take simple measures to prevent further damage to Perfect 10’s copyrighted works,” and (iii) “failed to take such steps.”

In other words, it held that Google could be held liable for providing search results that lead a user to a site with infringing content, so long as Google knew infringing content was available and could have done something “simple” to stop it.”

Jon Healey’s BIT PLAYER in Google and fair use at the Los Angeles Times states that:

“The 9th Circuit Court of Appeals’ ruling today in Perfect 10 vs. Google and Amazon is a clear victory for search engines and tech companies — and a clear defeat for copyright holders — on a couple of fronts. But it also includes some language that could conceivably spell trouble for YouTube, MySpace and other user-generated content sites in their legal battles with the entertainment industry….

[T]he 9th Circuit said [District Judge] Matz was wrong to reject Perfect 10’s claim that Google contributed to the infringements done by other Web sites. The panel sent the case back to him, saying he should apply this test:

Accordingly, we hold that a computer system operator can be held contributorily liable if it “has actual knowledge that specific infringing material is available using its system,” Napster, 239 F.3d at 1022, and can “take simple measures to prevent further damage” to copyrighted works, Netcom, 907 F. Supp. at 1375, yet continues to provide access to infringing works.

The “take simple measures” has typically been interpreted to mean that a site removes infringing material when asked by the copyright holder. And the 1998 Digital Millennium Copyright Act, which Congress passed partly in reaction to the Netcom case, provides a strong defense against copyright infringement claims for Internet services that comply with its notice and take down provisions. Still, Mark Lemley, a law professor at Stanford University and an expert in copyrights, said the 9th Circuit’s decision could open the door to later rulings that require Internet services to do more to protect copyrights because new technology made it easy to do so. That’s a slippery slope, he said, that could put the courts in the uncomfortable position of mediating technical disputes between Internet companies and content providers over how Web-based services are designed.”

In “Google thumbnails are fair use, says Court of Appeals
at Outlaw-Com on May 18, 2007:


“A US court ruled this week that Google’s creation and display of thumbnail images does not infringe copyright. It also said that Google was not responsible for the copyright violations of other sites which it frames and links to….

[T]he Ninth Circuit overturned a preliminary injunction that was imposed against Google in March. But it left some significant questions open, and sent them back to the lower court….

The issue of Google’s knowledge of the infringements was vital. Though it formed a part of both hearings, it remains unresolved and the Court of Appeal has asked the District Court to look at it again.

A crucial issue in copyright disputes is how a company deals with an infringement once it has been notified of it. In this case there was some dispute about whether or not Perfect 10’s notifications were specific enough for Google to be expected to act on them.

“The district court did not resolve the factual disputes over the adequacy of Perfect 10’s notices to Google and Google’s responses to these notices,” said the Court.

“Moreover, there are factual disputes over whether there are reasonable and feasible means for Google to refrain from providing access to infringing images. Therefore, we must remand this claim to the district court for further consideration whether Perfect 10 would likely succeed in establishing that Google was contributorily liable for in-line linking to full-size infringing images under the test enunciated today.”

Judge Ikuta said that Google could not be held liable for vicarious infringement because it had no power over the third party infringing websites and could not tell them to stop hosting Perfect 10’s images.”

Nice applause for the developing savvy of the federal courts in technological matters is found from Cynthia Brumfield at IP & Democracy.

See also John Ottaviani in Summary of Perfect 10 decision at Eric Goldman’s Technology & Marketing Law Blog:

See also The Rub from Wendy Seltzer

EU International Agreements & European Union Founding Treaties

Via the EU Law Blog:

Two useful links to EU international agreements and EU founding treaties:

Database of EU international agreements and treaties

European Union Founding Treaties

And see also

The Legal System of the European Union (EU Online Sources)

European Law Monitor

New Institute and Blog for Law and Politics at Minnesota Law School

The University of Minnesota Law School has established an Institute for Law and Politics having the following goals:

“The Institute for Law and Politics is designed to be a national research center for studying issues at the intersection of politics and the law. The Institute’s goals of non-partisan civic engagement and sound public policy guide its work as a source of information and analysis for issues such as election law, voting rights, government relations and lobbying, judicial politics, separation of powers and executive privilege, and international elections and democratization. The Institute for Law and Politics focuses on these issues by conducting interdisciplinary research, hosting conferences and CLEs, writing an online blog and other communications, and serving as a national source for analysis and commentary.”

In addition, the Institute has launched The Law and Politics Blog “to provide news, analysis and other interesting content dealing with issues of law and politics.”

We have added LawPundit links to both the Law & Politics Institute as well as the Law & Politics Blog, as this combination of subject matter is bound to gather interest in the Internet legal and political community.

KSR Teleflex Obviousness Standard Applied by the Federal Circuit in Leapfrog v. Fisher-Price & Mattel

The barely one-week old landmark US Supreme Court decision in KSR v. Teleflex has been applied for the first time by the Federal Circuit in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. and Mattel, Inc., No. 06-1402 (Fed. Cir. May 9, 2007) in invalidating for obviousness a patent relating to an electronic learning device to help young children read phonetically. The Federal Court writes:

“An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 2007 WL 1237837, at *12 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)….

Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. See KSR, 2007 WL 1237837, at *15. Nor does Leapfrog present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art. Our conclusion is further reinforced by testimony from the sole inventor at trial that he did not have a technical background, could not have actually built the prototype himself, and relied on the assistance of an electrical engineer and Sandia National Laboratory to build a prototype of his invention.”

See in this regard also Blawgletter.

There is no question that KSR will become one of the most-cited decisions in law generally and that it will have a tremendous impact on patent law and litigation.

In the context of the above quotation we are reminded of the Microsoft-Eolas browser embedding patent case in which the actual implementation of the alleged invention by Eolas is nowhere to be found, i.e. the alleged inventor had himself apparently been unable to build a working browser prototype for a combination of elements quite obvious to this observer.

We wrote at Law Pundit in January of 2004 as follows under the title, A Call to Legal Vigilance against Overly Broad Patents being issued by the USPTO for Mechanical Juggling of Prior Art:

“Lawyers, legislators and judges around the world had better start paying closer attention to the crazy things that are going on at the United States Patent Office and in the courts in applying the patent laws to new technologies – and unless the current state of things is changed soon by rational legislation or by sensible judicial interpretation of patent laws relating to the internet as also for genetic research – the legal world will have increasingly to do with companies specialized not in making any inventions per se, but specialized in filing patents which mechanically juggle prior art in the hope of patenting broad methodology for which it is already obviously foreseeable that it will ultimately be adopted by commercial enterprises in the future.

This is a whole new game and a whole new way of making money: using the inadequacies of the patent laws and/or erroneous patent law interpretation by judges in dealing with the technological and internet age to fill “patent-application company” pockets.”

We are thus particularly gratified that the KSR decision now finally begins to put patent law on the right road from which it had sorely detoured under the ineffectual and often “do nothing” Rehnquist Court. The KSR decision is a sign that the Roberts Court is starting to do its job properly by addressing pressing legal issues rather than ignoring them.

The KSR Case in Blogs and in the News

Some thoughts about KSR v. Teleflex: The “Marketplace” Test for Obviousness

by Michael Barclay of Wilson Sonsini Goodrich & Rosati (posted by Gretchen Sund).

“This decision makes it far easier to invalidate patents based on obviousness. Thus, this is the most important patent case of the last 20 years, and perhaps since the passage of the 1952 Patent Act. Virtually every litigated patent case includes an assertion of obviousness – and ones that might not have included that defense up until now are more likely to do so. The PTO examines every patent application for obviousness. KSR v. Teleflex will thus have an enormous impact on both the prosecution and litigation aspects of patent practice….

Having abolished the TSM test, the Court had to figure out what to replace TSM with. The replacement test can be summarized as a “marketplace” test – Justice Kennedy’s well-written opinion uses phrases such as “marketplace,” “market forces,” “market demand” and “market pressure” no less than five times in describing replacement formulations….”

SCOTUSblog, KSR v. Teleflex: Workmanlike, Yet Frustrating by Solveig Singleton

“The Court reached the right result, and the case is on the right track in paving the road for a more informed and somewhat higher standard of non-obviousness. But what exactly that will be, will again be left to the lower courts in a long drawn-out process that many observers think is broken.”

Sarnoff Discusses KSR v. Teleflex (slip opinion) – at Patently-O

As the Court noted, “as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts.” …

[T]the Supreme Court concluded that the Court of Appeals erred generally by adopting a “rigid rule” in its TSM test, by failing to acknowledge that a “person of ordinary skill in the art is also a person of ordinary creativity, not an automaton,” and by adopting “[r]igid preventative rules that deny factfinders recourse to common sense” in its efforts to avoid “hindsight bias.” The Court noted that “[w]hat matters is the objective reach of the claim,” and whether there was at the time of the invention “an obvious solution” for a “known problem.”

Peter Zura’s 271 Patent Blog
KSR v. Teleflex – Has “Inventive Step” Made its Appearance in U.S. Patent Law?

Chicago IP Litigation Blog – R. David Donoghue
Obviousness Redux: Arm-chair Quarterbacking KSR v. Teleflex

“A unanimous Supreme Court rolled back the Federal Circuit’s teaching, suggestion or motivation obviousness test in favor of the Court’s prior, and substantially broader, test as set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Justice Kennedy delivered the Court’s opinion and called the Supreme Court’s approach to obviousness “broad and flexible.”

Patent Docs, BIO’s Reaction to KSR v. Teleflex by Christopher P. Singer

Golem.de IT-News für Profis
Urteil: Triviales soll nicht patentiert werden
Oberstes Gericht der USA setzt Patentinflation weitere Grenzen


“Der US-Supreme-Court hat am Montag in zwei grundlegenden Entscheidungen der Patentinflation in den USA Grenzen gesetzt. Im Fall KSR gegen Teleflex wurde entschieden, dass die simple Kombination vorhandener Technologien in der Regel nicht ausreichend innovativ ist, um auf das Resultat ein Patent erhalten zu können. Im zweiten Fall, Microsoft gegen AT&T, schwächte das Gericht die Möglichkeit zur Klage gegen im Ausland begangene Patentverletzungen ab.”

Luis Villa’s Blog

“Specifically, the Supreme Court found that when you have invention A, and invention B, and combine them to make invention C, the court should be very careful to ensure that the combination of A and B isn’t obvious.”

Patently-O, KSR v. Teleflex: Supreme Court on Obviousness

Wall Street Journal Law Blog
KSR v. Teleflex: The Supreme Court’s Big Patent Ruling by Peter Lattman

“Yesterday, in a decision many are calling its furthest-reaching patent ruling in decades, the Supreme Court sided with critics who argued that the Federal Circuit — the federal appeals court specializing in patent law — was potentially stifling innovation by giving patent holders more power than Congress intended. The ruling in KSR v. Teleflex will make it harder to get new patents and to defend existing ones. The decision involves an arcane but vital area of patent law dealing with how to determine whether an invention is “obvious” and hence not patentable”
Quoting Peter Sullivan:
“Now, all knowledge in the relevant field — technical knowledge, changes in implementing technologies, consumer demand — will be available to show whether the invention was truly innovating or just the product of connecting the dots in the prior art.”

Christopher G. Wolfe, K&L Gates, The USPTO’s Initial Response
The descriptions below indicate that the USPTO still does not get it, even after KSR.

“In a May 3, 2007 Memorandum to its examiners, the USPTO gave a first indication of how it will apply the KSR decision On its face, this initial response does not appear to call for a major departure from current examining procedure. The USPTO indicated, however, that it is continuing to analyze the KSR decision and will issue additional guidelines in the near future.

Substantively, the Memorandum makes it clear that examiners must continue to support obviousness rejections under section 103 with explicit analysis establishing a reason why a person of ordinary skill in the art would have combined prior art references to arrive at the claimed subject matter. No precise guidelines for performing this analysis are provided. However, the USPTO does note the continuing viability of the Graham factors as well as several additional factors recited in the KSR decision, including marketplace demands. In addition, the USPTO notes that the TSM test is still available, though not in its previous rigid form. In what could be a telling comment, the USPTO characterizes the KSR decision as relating to situations, “when the claim recites a combination of elements of the prior art.” It is still unclear what effect, if any, the case will have on patent claims that recite at least one element that is not in the prior art.””

Lawrence P. Ebert, IPBiz

“Here’s what the USPTO said after the Supreme Court decision in KSR:

Therefore, in formulating a rejection under 35 U.S.C. 5 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.”

What is wrong with the USPTO? Is the problem their lack of accountability to anyone? Why is President Bush not on top of this dusty organization to get its act together? The fact that the USPTO still does not get it, even after KSR, is all the more surprising, since the head of the USPTO, John Dudas, apparently recognizes that the law of obviousness is a key component in the decision process to grant patents. Someone should start shaking the management execs at the USPTO and start shouting “WAKE UP!”

What we expected, however, and did not get – but what is required – is a directive from Bush viz. from Dudas to his patent examiners that the standards set forth in KSR be fully implemented by them immediately. We also expect the immediate implementation of continuing education seminars for patent examiners to instruct them as to how to apply the KSR guidelines properly in their examinations.

There should also be a retroactive examination of all technology patents granted in the last 20 years and a special authority, independent of the US Patent Office, made up of attorneys, should be created, with the power to invalidate any patent granted by the USPTO within the last 20 years, to thus keep the courts from being swamped with patent litigation about invalid patents.

The Fire of Genius – Joseph Scott Miller

Fried Frank – KSR Litigation Papers

Fedcirc.us, KSR International v. Teleflex Inc. by J. Matthew Buchanan

More Blog Discussion of KSR at Law.com links

Supreme Court Redefines Obviousness in Patent Law : KSR is a Landmark Case

KSR International Co. vs. Teleflex, Inc. (No. 04-1350, slip opinion) is a landmark case in patent law involving a modernly revised definition of the concept of obviousness in patent law, as handed down by the United States Supreme Court on April 30, 2007 in the case of a patent claim for “a position-adjustable pedal assembly with an electronic pedal position sensor attached to the support member of the pedal assembly.” The patent claim involved a COMBINATION of pedal elements found in prior art, but not that precise particular combination.

In an opinion written by Justice Kennedy for a unanimous Supreme Court, the U.S. Supreme Court Justices rejected the previously existing “strict” TSM (“teaching, suggestion, or motivation”) test for obviousness and replaced it with a modern “expansive and flexible approach”.

What is obviousness under patent law?

Section 103 of the Patent Act, 35 U. S. C. §103, as Kennedy writes:

“[F]orbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’ “

Under the previously existing standard of the TSM test, the Federal Circuit had reversed a District Court decision which, on the basis of that same test, had granted KSR summary judgment because of the obviousness of the USPTO patented Teleflex invention.

Kennedy relates the history of the case as follows:

“With principal reliance on the TSM test, the Court of Appeals reversed. It ruled the District Court had not been strict enough in applying the test…. Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if ‘some motivation or suggestion to combine the prior art teachings’ can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.”

In KSR, the Supreme Court relied on the precedent in the Sakraida case regarding the issue of obviousness in cases of combinations or arrangements of prior art. Kennedy writes:

“[I]n Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282.

The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”

Moreover, Kennedy includes a panoply of factors which are to be brought to bear on the finding of obviousness, specifically rejecting the previous standard that “precise teachings directed to the specific subject matter of the challenged claim” are required. Kennedy expounds further:

“Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit…. As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

Kennedy hammers the new standard home with a clear rejection of the formalistic conceptions attaching to the previous “helpful insights” of the TSM test:

“Helpful insights … need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. 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.”

What that new standard means is that many “combinatorial” patents which have been issued in the past 20 years are simply invalid. A good example here, in our opinion, is the Eolas embedding patent in the Microsoft-Eolas case, which in our opinion falls fully into the realm of obviousness as now redefined by the United States Supreme Court. To put it more specifically, Kennedy explains:

“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.”

You could not describe the Eolas embedding patent better than that.

Kennedy writes also concerning the role in the finding of obviousness of a significant “need or problem known in the field of endeavor at the time of invention“:

“The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”

Furthermore, writes Kennedy, what is “obvious to try” may also be obvious under patent law:

“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 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. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.”

Lastly, the Supreme Court waters down the presumption that a patent issued by the USPTO is valid by suggesting that failures of disclosure may void that presumption:

“We need not reach the question whether the failure to disclose Asano during the prosecution of Engelgau voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption—that the PTO, in its expertise, has approved the claim—seems much diminished here.”

This is a great decision and much needed in patent law.
It gives attorneys much needed firepower to counter the patent trolls and we predict it will be a strong and major force in future patent litigation, for the benefit of the public good.

Hat tip to Philip Brooks’ Patent Infringement Updates
by way of Pepper Hamilton’s Intellectual Property Alert