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Evan Schuman: Supreme Court on obvious patents: Common sense isn't so horrible

Evan Schuman | June 25, 2014
Unanimous decision won't shut down patent trolls, but it will curb worst abuses.

Here's some of that delicious non-answer. What the decision tried to do was to define what attributes an invention worthy of a patent should have. The Court needed to give federal judges something more concrete than the oft-quoted obscenity definition from Justice Potter Stewart in 1964: "I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description ('hard-core pornography') and perhaps I could never succeed in intelligibly doing so. But I know it when I see it and the motion picture involved in this case is not that."

But how to define an invention worthy of patent protection, other than "I know it when I see it"? From last week's decision: "The Court must distinguish patents that claim the building blocks of human ingenuity, which are ineligible for patent protection, from those that integrate the building blocks into something more, thereby transforming them into a patent-eligible invention."

I'm not so sure about that. It seems if a federal judge believes that a patent application truly shows building blocks of human ingenuity — or any true ingenuity at all — that's a pretty good start. Back to the decision.

The Court was clear on the point that a claim that is obvious and not especially clever doesn't suddenly become brilliant because it's been automated via software. "Stating an abstract idea while adding the words 'apply it with a computer' simply combines those two steps, with the same deficient result," the Court said.

The Court did give a solid hint to federal judges by saying that a claimed patent must add something of substance to whatever was already known and used by businesses. In other words, simply writing down and filing a process already widely used in business isn't enough for a patent.

"We must examine the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application," the decision said. "A claim that recites an abstract idea must include additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea."

"The same is true with respect to the use of a computer to obtain data, adjust account balances and issue automated instructions. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. Because petitioner's system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible."

This strikes at the very definition of an invention. It must be a substantially new way to do something, a way that would not be obvious to the average user of such a system. Amazon's one-click patent is the classic example. Was that a clever invention, or did Amazon simply try to lock down the most logical next step, something that it's reasonable to assume almost every other e-commerce firm would have done on its own?


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