Top U.S. Court Clears Way for More Patent Challenges (Update1)
By Greg Stohr
April 30 (Bloomberg) -- The U.S. Supreme Court made it
easier to challenge patents for failing to introduce genuine
innovations, siding with Intel Corp. and Cisco Systems Inc. and
dealing a setback to the drug and biotechnology industries.
The justices today unanimously overturned a decades-old test
used by the lower court that handles patent appeals, saying the
lower court went too far to shield patents from legal attack. The
ruling threw out a Teleflex Inc. lawsuit that accuses KSR
International Inc. of using a patented invention for adjustable
The decision extends a Supreme Court trend that has put new
limits on patent rights. In today's case, the justices heeded
arguments from large computer companies and automakers that the
lower court test, which centered on the requirement that an
invention be ``non-obvious,'' had given too much power to
developers of trivial technological improvements.
``Granting patent protection to advances that would occur in
the ordinary course without real innovation retards progress,''
Justice Anthony Kennedy wrote for the court.
In a second ruling today, the court gave software makers new
protections from patent lawsuits on exports, ruling that
Microsoft Corp. doesn't owe damages to AT&T Inc. for copies of
the Windows operating system installed on computers overseas.
The gas-pedal case concerned claims that a patent was
invalid because it simply combined prior inventions. The U.S.
Court of Appeals for the Federal Circuit had required challengers
to show a ``teaching, suggestion or motivation'' -- typically in
writing -- to put the earlier inventions together.
Companies that are frequent targets of patent-infringement
claims urged the Supreme Court to overturn the Federal Circuit
test. The group included Intel, Cisco, Microsoft, Time Warner
Inc., Viacom Inc., Micron Technology Inc. and automakers General
Motors Corp., Ford Motor Co. and DaimlerChrysler AG.
Other companies, more concerned about protecting their own
patents, took the opposite side in the case. General Electric
Co., 3M Co., Procter & Gamble Co., DuPont Co., Johnson & Johnson
and trade groups for the brand-name drug and biotech industries
signed briefs backing Teleflex in the case.
The disputed Teleflex patent covers an electronic sensor
combined with gas, brake or clutch pedals that adjust to the
height of the driver. Teleflex says its method took less space
than previous combinations.
KSR, based in Ridgetown, Ontario, makes adjustable pedals
for GM's Chevrolet and GMC trucks and sport-utility vehicles.
A federal judge in Detroit ruled the technology was too
obvious to qualify for a patent. The Federal Circuit in
Washington revived the suit, ordering the judge to reconsider
whether the patent was valid.
Teleflex argued that the Federal Circuit standard avoided
the problem of ``perfect hindsight'' by requiring proof that an
innovation was obvious at the time it was created.
Teleflex, based in Limerick, Pennsylvania, sold its auto-
pedal business in August 2005 to DriveSol Worldwide, an affiliate
of Sun Capital Partners Inc., a private investment firm based in
Boca Raton, Florida. Sun Capital has taken over the case.
The case is KSR International v. Teleflex, 04-1350.
To contact the reporter on this story:
Greg Stohr in Washington at
Last Updated: April 30, 2007 11:07 EDT