Middle Market Deals and how to buy, sell and raise capital from $5 to $500 million

Michael Krieger is a member of Kirton & McConkie's Intellectual Property Practice Section. His practice focuses on international intellectual property law, including both foreign and domestic patents, trademarks, copyrights, trade secrets, unfair competition law, computer law, and licensing.  He graciously agreed to provide his "take" on yesterday's supreme court ruling in KSR Int'l v. Teleflex, Inc:

In a unanimous decision, the Supreme Court recently ruled that the analysis used by the lower courts for the last dozen years to determine whether an invention was "obvious" is too formalistic.  Their ruling will not automatically invalidate entire portfolios of patents, but it will likely cause "obviousness" to be raised in litigation when those patents are enforced against infringers.   In order for a patent to be granted by the Patent Office, the claimed invention must be new, useful and not obvious...

The statute says that  a patent shall not issue if "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.  Most of us feel competent to decide if an invention is "useful," and "newness" is determined by looking at one printed reference and comparing it to the elements of the claimed invention, but "obviousness" is harder to determine.  Several tests have been developed over the years to determine to whom something should be obvious, whether hindsight makes something look obvious that really is not, and whether a combination of known elements can ever be combined to make a non-obvious invention.  Add to the confusion that obviousness can be shown by combining several documents and it is easy to understand why the courts are constantly trying to find an objective formula for measuring obviousness.  Underlying the prohibition against patenting obvious inventions is the understanding that patents inherently stifle commerce.  Society is willing to allow an inventor a monopoly for a limited time in exchange for that inventor sharing his or her knowledge with the public instead of the even more stifling alternative of hiding knowledge as a trade secret.  But this lesser of two evils approach has always led to the question as to whether a concept contributes enough to society to warrant this monopoly grant.  Combinations of known elements may be combined using "common sense" a term used by the Supreme Court, but which is equally difficult to quantify.  The problem with common sense is that every jury member will feel eminently qualified to address whether a combination makes common sense.  I think we can look forward to wrestling with this one for a few more rounds.