KSR in litigation: Summary judgment of obviousness granted post-KSR after denial pre-KSR
July 31, 2007

The Wall Street Journal today is reporting about a patent infringement case in the Northern District of California that is believed to be the first instance where a district court has changed its opinion regarding the validity of a patent as a result of KSR. The court found two principles from KSR to "guide" the obviousness analysis:

First, "[w]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Second, "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product . . . of ordinary skill and common sense."

Based on these principles, the court found the claimed invention obvious. According to the court, it was a combination of known elements with no change in their respective functions, and thus obviousness was mandated by KSR. The invention at issue combined various components known in software to produce an integrated product that solved the problem of users having to use multiple programs to find, organize, and play back media files on their computers or over the internet. Even the patentee's evidence that the alleged infringer copied the invention after the patentee proposed a cooperative effort was insufficient, as a secondary consideration of nonobviousness, for the patentee to avoid summary judgment of obviousness.

Between cases like this applying KSR, the recent trilogy of Board of Patent Appeals and Interferences cases on obviousness, the Patent Reform Act of 2007, and the upcoming continuation rules, times are looking tough for innovators seeking to protect their inventions.

The Wall Street Journal Law Blog has more here, and the Patent Prosepector weighs in here.

Click here for a copy of the summary judgment decision, and here for the hearing transcript where the judge grapples with what to do in light of KSR.

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