As noted in my previous post, the case KSR International v. Teleflex was an important patent case pending before the Supreme Court. The question involved whether it should be more difficult to obtain a patent for a claimed invention in a patent application. I was hopeful the Court would decide to narrow or drop the TSM (teaching, suggestion, or motivation) test, wich makes it harder to overturn patents that were too obvious to have been granted. And, today, the Supremes decided, in a unanimous opinion, to do the right thing. (Opinion)
Interesting to me, as I noted before, was that the companies who were on the “right side” of this issue included tech companies such as Intel, Microsoft, Cisco, and GM, worried that liberally granted patents cost them too much to defend; and while while those on the “bad side” included pharmaceutical and biotechnology research-based companies such as GE, Johnson & Johnson, 3M, DuPont, who were worried that tightening up the obviousness standard might damage their patent holdings and make it more difficult to stop generic pharmaceuticals from competing with them.
The end result is that it will now be slightly more difficult to get a patent, and slightly easier to challenge an issued patent in court. A mild improvement in general—and sure to generate more work for patent lawyers, since, although the Court basically expanded the ways in which a patent may be found to be “obvious,” the standards for these tests remain very non-objective. The ruling does, perhaps, provide a glimmer of hope for Vonage. As the articled first linked above notes, the new standard “may be good news for Vonage in its appeal of a court’s decision that its VoIP service infringes on three Verizon patents. Our analysis of the patents indicates that they, too, may fail the obviousness test.”In another patent case decided today, Microsoft v. AT&T, the Supremes, in a 7-1 decision, restricted the global reach of US patent law. As a general rule, no infringement of a US patent occurs when a patented product is made and sold in another country. One exception to this rules is provided in Section 271(f) of the Patent Act, adopted in 1984, which provides that infringement does occur when one “suppl[ies] from the United States,” for “combination” abroad, a patented invention’s “components.” The question was whether software sent from the US for installation on foreign computers is a “component”. The Court decided that Microsoft was not liable since the software sent overseas “is never installed on any of the foreign-made computers in question. Instead, copies made abroad are used for installation.” It is those copies, made overseas from the master copy sent from the US, that becomes a component. But the component itself is not exported from the US; rather, a master file which is used to create the component (software copied onto the foreign PC) is what is exported, which is not covered by that provision.
As I previously noted,
it’s somewhat ironic to see Microsoft arguing that the intangibility of its software makes it different from normal, physical property for purposes of a US patent law provision that makes an exporter of technology liable for patent infringement if the thing exported is combined outside the US with a computer to result in a device covered by a US patent. In other words, Microsoft wants to have it both ways: software ought to be covered by copyright, even though software is not tangible. Yet, because it’s not tangible, it should not be counted like a tangible component would for purposes of the patent-export law.
Looks like Microsoft gets to have it both ways.
