"Ordinary Innovation," Feature Article, September 2007

'ordinary innovation'

The phrase may put everyday inventiveness outside the protection of patents.

by Kirk Teska

the U.S. Supreme Court, making one of its rare forays into patent law, in late April decided a case that will raise the bar for inventors. After the High Court's decision, there is now something called "ordinary innovation" that is not patentable: the combination, uniting, or arrangement of known elements, techniques, items, or devices where, in the combination, everything performs the functions they were designed to perform. The bottom line? Ordinary engineering that engineers perform in the course of their usual day-to-day activities may not be patentable.

Since 1952, the patent statute has forbidden patenting subject matter when the differences between the subject matter sought to be patented and the state of the art is obvious to "one skilled in the art." Understandably, this subjective standard led to unpredictable results. Especially in hindsight, many patent-worthy inventions can be easy to deem obvious. In response, the Court of Appeals for the Federal Circuit (which decides nearly all important questions of patentability, since the Supreme Court rarely agrees to hear patent cases) established a formula to be used by the Patent Office and the lower courts in deciding whether something is obvious and thus not worthy of a patent.

A combination is not obvious, said the Federal Circuit in 1999, unless there is some prior teaching, suggestion, or motivation to make the combination. In the opinion of many people, this overly rigid test resulted in many patents for products and ideas that were, well, blatantly obvious. The patent bar had been lowered to the point where you could practically step over it. Until now.

Recognizing that skilled engineers regularly piece together prior devices to meet market demand and solve known problems using obvious solutions, the Supreme Court held that even if there is no teaching, suggestion, or motivation to make the combination, the combination may still be obvious. Engineers possess common sense, said the court: "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." Engineers, in the eyes of the Supreme Court, know that changing one component in a system often requires others to be modified as well and that familiar items may have obvious uses beyond their primary purposes. Such may be the stuff of improvement and "ordinary innovation," but not of patents.

The Supreme Court handed down its decision in a case between KSR International and Teleflex Inc. The technology at issue was the combination of an adjustable gas pedal and an electronic sensor that senses and transmits to the vehicle's throttle computer the position of the pedal.

The Teleflex patent shows the gas pedal in two positions. The electronic throttle control that provides a signal corresponding to the position of arm 14 is labeled 28.

Teleflex held a patent, No. 6,237,565, for a device of that sort, and sued after General Motors chose KSR as a supplier of adjustable pedal systems for Chevrolet and GMC light trucks, whose engines included computer-controlled throttles. At trial, a court ruled in favor of KSR and found the Teleflex patent obvious. On appeal, the Federal Circuit ruled in favor of Teleflex.

Adjustable gas pedals designed to accommodate drivers of different sizes were well-known at the time the patent application was filed for the "adjustable pedal assembly with electronic throttle control." So, too, were sensors for computer-controlled throttles and even sensors located on the pedal assembly rather than in the engine compartment.

Was the combination of an adjustable gas pedal with a sensor on the pedal obvious? No, said the Patent Office and the Federal Circuit. Yes, said the Supreme Court: A mechanical engineer familiar with pedal control systems for vehicles would have seen the benefit of an adjustable gas pedal with its own sensor.

The patent bar has surely been raised; the real question is how high. The Court recognized that most, if not all, patentable inventions rely on known building blocks and combinations of what, in some sense, is already known. So, what is still patentable other than brand-new, never-before-seen, or disruptive technologies? When the consensus is that a known thing won't work very well in a new environment, its inclusion in a combination is patentable, especially when the result is unexpected. And, it's still the case that commercial success, addressing a long felt but unsolved need, and finding a solution to a problem others failed to solve, points to non-obviousness.

For a real but simple example, consider as an exercise a patent for a plastic leaf bag tailored to look like a jack-o-lantern when stuffed full of leaves. The prior art included undecorated plastic leaf bags and a teacher's manual that detailed how to decorate a stuffed paper bag to look like a jack-o-lantern.

At one level of abstraction, a plastic leaf bag tailored to look like a pumpkin is blatantly obvious: It's a combination of a known plastic leaf bag designed to hold leaves and teaching that stuffed paper bags can be decorated to look like a jack-o-lantern. The Federal Circuit previously found the combination patentable, however, since there was no explicit teaching, suggestion, or motivation to extrapolate what was known about decorating paper bags to larger plastic leaf bags. Under the Supreme Court's new ruling, though, that's not the correct test. So, the patented leaf pumpkin bag is obvious.

At another level of abstraction, however, plastic leaf bags were available for many years and yet no one else came up with the idea of decorating them to look like jack-o-lanterns. The result achieved commercial success, turned plastic leaf bags into a dual purpose product, and at least some people thought the idea was fairly nifty. So, the leaf pumpkin bag is not obvious.

These dueling contrary positions regarding yet-to-be-filed, pending, and already issued patents will play out at the Patent Office and in the courts until the Supreme Court rules again and sets an upper limit to the obviousness bar to patents.

In the meantime, how high the bar really is may be reflected in whether the number of patent awards decreases and if there is a downward trend in patent filings.

Kirk Teska is an adjunct law professor at Suffolk University Law School in Boston, and is the managing partner of Iandiorio & Teska, an intellectual property law firm in Waltham, Mass. His book, Patent Savvy, is scheduled to be published in the fall by Nolo Press.