08 May 2007

It Really Is Obvious

Some time back, I remarked on the relationship between literature and patents. Last week's Supreme Court decision in KSR just reinforces my conclusion that the "plot patent" is due to be denied.8 The key issue: Prior art.

KSR concerned the so-called "TSM," or "teaching, suggestion, or motivation," test that the Federal Circuit has developed over the last decade or so in an effort to define — as a matter of law — when prior art anticipates part or all of an invention.9 Justice Kennedy, writing for a unanimous court, put it this way:

Following these principles may be more difficult in other cases than it is here because the claimed subject matter may involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement. 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.

KSR Int'l Co. v. Teleflex Inc., No. 04–1350 (U.S. 30 Apr 2007), slip op. at 13–14 (internal citation omitted; emphasis added). He continued:

Helpful insights, however, 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.

Id. at 15.

If your eyes haven't glazed over yet, reread that second paragraph... because that is exactly what the '804 application (and its three siblings) attempts to do. As I noted in detail previously, there is a lot of prior art that contains individual elements "disclosed" in the applications, and a person of even sub-ordinary skill in the art of storytelling knows to combine elements of this nature.

The key distinction is the very nature of expressive work. Once again, we're left with the idea/expression dichotomy. Bluntly, the "plot patents" do not provide sufficient information to even a skilled practitioner to practice the invention in a marketable manner, while ironically and simultaneously asserting that the plot "is" the story, or somehow embodies the story. It's bad literary theory; it's bad writing practice; and it's bad legal analysis.

On general principles, as I explained before, the '804 application cannot stand. KSR just reinforces that conclusion.

  1. The USPTO system does not disclose a current status for either this patent or three succeeding applications filed by Mr Knight.
  2. This is a bit bothersome from a civil procedure standpoint. The analogous question in copyright and trademark acts, and generally in trade secret actions — that is, whether there exists an independent, noninfringing/noninfringed source for the allegedly infringing work — is either a mixed question of law and fact or a pure question of fact. Why patents should treat this as a matter of law escapes me, at least from the standpoint of internal consistency. Admittedly, the statutes are different, and the Patent Act more strongly implies that the issue is a legal question than does the Copyright Act; that observation, however, doesn't make the logic any better.