Obviousness is Obvious

In my never ending – often Don Quixote like – quest against absurd software patents, I must pause in the midst of my day and give a standing ovation to Judge William Schwarzer (San Francisco – Federal) for dismissing a lawsuit from Friskit Inc. against RealNetworks citing the Supreme Court’s April ruling in KSR v. Teleflex.

I hope this is the first of tens of thousands of dismissals as a result of KSR v. Teleflex.  For those of you studying along at home, the WSJ summary of the KSR ruling is: “In KSR, the Supreme Court rejected a “rigid” application of existing tests for obviousness in favor of a more “expansive and flexible approach” that would give judges more discretion. If a person of ordinary skill in the relevant subject area would “be able to fit the teaching of multiple patents together like pieces of a puzzle” then the patent is obvious, the Supreme Court ruled.”

I love this description.  I’ve always felt obviousness with regard to software (and software patents) was easy to define, but many lawyers, courtrooms, and owners of obvious patents disagree with me.  Maybe we should simply adopt Supreme Court Justice Stewart’s definition of pornography for non-obvious software patents – “I know it when I see it.” 

  • Yes, there are some junk patents out there, including in software, where the collection of documented prior art isn’t as well-developed as in other fields. (I was a patent lawyer in a prior life and had to defend more than one client against what I regarded as junk software patents.)

    A test of “I know it when I see it” for obviousness certainly sounds tempting. But it would invite something very much akin to Monday-morning quarterbacking.

    Patent examiners and courts always have to wrestle with the fact that hindsight is 20-20. Once the invention is explained to you (which by law the patent application must do), you think, “oh, yeah, I see how that works.” Then it can sometimes be just a short step to, “hell, that’s nothing special, anyone could have thought of that.” Unfortunately, however, inventors don’t have the luxury of that kind of hindsight when they actually come up with inventions.

  • Scott Davis

    Until we actually discover a new math or a new logic, nothing in software can be non-obvious — particularly in retrospect. Pattern-matching is so much significantly lower-order cognitive function than abstracting-to-clarity, one wonders how any software could not be reduced to the combination of multiple irreducably simple concepts.

    I am not taking a position on the merits software patents in general, but I am saying that this framework essentially categorizes all software as outside the domain of patent protection.