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Patently Obvious

The good news for KSR International Co. came in the middle of 2000 when General Motors tapped it to provide gas, brake and clutch pedal assemblies for its Chevrolet and GMC light truck lines. The contract was to commence with the 2003 model year.

It was a short-lived celebration at KSR. In Spring 2001 the Canadian company received a letter from rival parts manufacturer, Teleflex Inc. The Pennsylvania-based company claimed it owned a patent on the type of gas pedal that GM had hired KSR to supply. About a year later, Teleflex sued KSR for patent infringement.

That's why the Federal Circuit limits the use of hindsight. The court will find a combination of existing inventions to be obvious only if there was some reason for people at the time to combine those inventions. More specifically, there must be some contemporaneous "teaching, suggestion, or motivation" to combine the existing inventions.

A Bad Rule

The ruling also may help researchers, many of whom are hampered by the need to obtain a multiplicity of patent licenses to do their work.

"For instance, a lot of genetic knowledge has been discovered through robotic techniques, and these genes have been patented," Dreyfuss says. "If there was a higher standard of obviousness, so that a robot discovering something wasn't patentable, it would be very good for biological and medical research."


Steven Seidenberg

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