Supreme Court points its finger at obvious patents

A recent ruling by the U.S. Supreme Court on a patent case could have implications for the solid-state lighting industry.

From the May/June issue of LEDs Magazine.

A recent ruling by the U.S. Supreme Court on a patent case relating to car-accelerator pedals could have implications for the solid-state lighting industry. The court said that the combination of two existing technologies in the case in question was not sufficiently non-obvious to deserve a patent.

The basic requirements for an invention to be patentable are that it should be novel, useful and non-obvious to a person skilled in the art. In recent years, the US Patent & Trademark Office (USPTO) has tended not to reject patent applications on the grounds of obviousness, when a patent claim involves combining two known technologies.

The test applied by the USPTO has been that there should be some evidence of "teaching, suggestion or motivation" that would cause a person skilled in the art to combine the technologies. If that evidence exists, the claim is obvious (and is rejected).

In practice, this would normally require some specific (preferably written) documentation that would prompt a skilled person to combine the technologies. Without such documentation, a claim could pass the non-obvious test even when common sense suggests otherwise.

The Court has now rejected a rigid analysis according to the "teaching, suggestion or motivation" test, although it stated that an apparent reason for combining the known technologies should be made clear. This would involve looking at the interrelated teachings of multiple patents, the demand from the design community or the marketplace, and the background knowledge of a person with ordinary skill in the art.

So how does this affect the LED industry? A former commissioner of the USPTO was quoted in The Economist newspaper as saying that "nearly every patent in force today is prospectively open to challenge." Following the ruling, companies may start to look at their competitor's patents in a different light.

This could apply in particular to Color Kinetics, which has been accused (in and out of court) of filing a series of core patents that apparently combine known technology elements (for example DMX control and LED lighting). Detractors have claimed that some of the patent claims should not have passed a non-obvious test, and this Supreme Court ruling might provide more ammunition.

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