State of Innovation

Patents and Innovation Economics

KSR: Supreme Ignorance by Supreme Court

Under the KSR decision (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)) by the Supreme Court nothing is patentable under the sun, unless you believe in black magic.  The Supreme Court in the Bilski ( oral arguments proved that the justices do not have the competence of a first year patent law associate.  KSR shows that the justices do not understand basic physics. 

See if you can spot the errors in physics in the following statements.  “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).  “A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 417.  While the Supreme Court’s writing is not the model of clarity, the Court thinks these statements are equivalent.  The Court is saying that a patent for an invention made of known elements (prior art elements, familiar elements) and connections (according to known methods) is likely to not be patentable. 

Every real invention is a combination of known elements, unless you can violate the conservation of matter and energy – black magic.  The fact that the Supreme Court does not know this basic application of the laws of physics demonstrates that it is incompetent to rule on patent matters.  Another flaw in their logic is that if an inventor filed for a patent with an element that was completely new, then the Patent Office would reject the application, appropriately, as failing to clearly and distinctly claim their invention under 35 USC 112, second paragraph.  The fact that the Supreme Court does not understand the legal contradictions of their opinion, demonstrates that they do not understand the basics of patent law. 

The Supreme Court attempts to ameliorate their ignorance by suggesting that if your invention of known elements either yields an unexpected result or one of the elements does not perform its established function, then you might be deserving of a patent.  To a physicist no element in an invention ever performs in a way that violates physics, so it performs its established function.  Once again, the Supreme Court’s analysis leads us to the conclusion that only inventions that violate the laws of physics are patentable.  Similarly, to physicists an invention always yields an expected result in that it never violates the laws of physics.  Thus, that glimmer of hope that the Supreme Court left open was a phantom.  The Supreme Court’s  “logic is the fallacious logic which leads to the conclusion that since each of the words in Lincoln’s ‘Gettysburg Address’ were individually old and well known at the time he used them, it would have been obvious for anyone of ordinary skill with a dictionary before him, to have written it.”  In re Dailey and Eilers, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).

Sadly, this was not the end of the Supreme Court’s idiotic statements.  The Supreme Court states, “In many fields there may be little discussion of obvious techniques or combinations, and market demand, rather than scientific literature, may often drive design trends.  Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.” Id. At  419.  Almost all inventions are driven by market demand.  Despite the silly discussion in economics about whether technological innovation is endogenous or exogenous, it is clear that inventions are driven by market demand and this was clearly shown by Jacob Schmookler[1], an economist, over fifty years ago.  So market demand almost always drives design trends.  The clear implication of the Supreme Court’s statements is that inventions driven by market demand will happen all by themselves and therefore are not worthy of patent protection.  Inventions are created in response to the expectation of market returns, which I assume meets the Supreme Court’s definition of market demand.  If not, the Supreme Court’s statement is just nonsense, since there cannot be market demand for an invention that does not exist. 

Based on the Supreme Court’s logic nothing is patentable under the sun.  As an example, we will examine the invention of the laser.  The first laser was a ruby rod laser, it was a combination of a ruby rod, a flash lamp, a pair of mirrors (Fabry Perot Interferometer).  Ruby was known before the laser was invented, flash lamps were known and mirrors and Fabry Perot interferometers were known.  The laser is a combination of known elements.  Before the LASER was invented, a MASER (Microwave Amplification by Stimulated Emission of Radiation) was invented and microwaves are light, just not in the visible light frequency.  There was clear motivation to invent a laser after the maser was invented.  Each element of the laser acted in accordance with the laws of physics, so they performed their established functions and the results were not unpredictable since it conformed with the laws of physics.  The inventors’ of the laser saw a market need for a laser or they would not have spent the money on a patent and not spent millions of dollars and almost twenty years fighting over who was the inventor of the laser.  Clearly, the US Patent Office made a mistake when they issued a patent for the laser according to the Supreme Court’s KSR’s decision. 

The second part of the Supreme Court’s statement is that “advances that would occur in the ordinary course” are not deserving of patent protection.  The questions are whether any inventions will “occur in the ordinary course” and why are they not deserving of patent protection?  There is nowhere in the patent statutes or in the Constitution where it says anything about inventions that “would occur in the ordinary course” being excluded from patent coverage.  Should books, movies, or plays not receive copyright protection because they would occur in the ordinary course since they are driven by market demand?  Since the copyright and patent laws are derived from the same clause of the Constitution, what is the Supreme Court’s justification for this difference.  This is just judicial activism run amok.

Would any inventions occur in the ordinary course of things or because of market demand?  Without patent laws what inventions would be made?  Patent law is a relatively recent development in history.  The first modern patent laws were developed around 1800 or the beginning of the industrial revolution.  Historians have shown that technological innovation occurred before the first modern patent laws and even before the first patent law in Venice around 1474.  However, the rate of technological change was so slow before modern patent laws that people lived in a Malthusian economy, where the average person lived on the edge of starvation.  Countries that have weak or non-existent patent laws still live in a Malthusian economy.  Countries with the strongest patent laws live in a world where there is too much food and type 2 diabetes is a major health concern. 

The Supreme Court is clearly incompetent when it comes to the basic laws of physics and patent law.  We need legislative reform that overturns the KSR decision.  Specifically we need a statute that:

1) States all inventions are combinations of known elements, therefore the patentability of an invention cannot be determined by whether it is a combination of known elements;

2) Either repeals the non-obviousness requirement or creates an objective non-obviousness requirement.  If we have a non-obviousness requirement, it should either be based on the objective teaching suggestion motivation test of the CAFC or the test I suggest in the post, Obviousness Flow Chart (

3) Everything made by man is patentable subject matter, the practice of an invention must be objective and repeatable (35 USC 112).

[1] Schmookler, Jacob, Invention and Economic Growth, Harvard University Press, Cambridge Massachusetts, 1966.

January 19, 2010 - Posted by dbhalling | -Law, Patents, Uncategorized | , , , , ,

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  1. While the frustration with KSR is understandable, I don’t think the SCt meant for the word “predictable” to be taken in that way. There is a very specific fact pattern laid out in KSR as it applies to the automotive industry and alleged trends in that industry to convert mechanical controls into electronic controls.

    It’s time to ‘step back’ and re-read KSR very slowly and very carefully.

    Comment by step back | January 19, 2010 | Reply

  2. Stepback, what exactly did the Supreme Court mean then? A specific fact pattern is not a model on which to determine obviousness.

    In my opinion, whether they meant it that way or not it is how KSR will be interpreted. Since the Supreme Court’s writing is not the model of clarity it will result in patent law being a system of people instead of a system of law. Making patent law a crap shoot.

    The supposedly specific fact pattern is the one that met Supreme Court’s predetermined conclusion.

    Comment by dbhalling | January 19, 2010 | Reply

  3. First in posting stuff on the net, it is a good idea to provide a link for those who read but do not comment:

    Comment by step back | January 19, 2010 | Reply

  4. footnote no. 3 in the above gives the KSR opinion in PDF format

    Let’s pick out some of the specific facts in the case:

    1. Syllabus: “To control a conventional automobile’s speed, the driver depresses or releases the gas pedal, which interacts with the throttle via a cable or other mechanical link”

    2. Syllabus: “This prompted inventors to design and patent pedals that could be adjusted to change their locations.”

    3. Syllabus: “In newer cars, computer-controlled throttles do not operate through force transferred from the pedal by a mechanical link, but open and close valves in response to electronic signals.”

    4. Syllabus: “To make the ’976 pedal compatible with the [General Motors Corporation] trucks, KSR added a modular sensor to its design.”

    5. Syllabus: “The District Court granted KSR summary judgment. … Asano [reference] taught everything contained in the claim except using a [modular] sensor to detect the pedal’s position and transmit it to a computer controlling the throttle. That additional aspect was revealed in, e.g., the ’068 patent and Chevrolet’s sensors. … The [District] court .. reasoning [included understanding that: ](1) the **state of the industry** would **lead inevitably** to combinations of electronic sensors and adjustable pedals”

    6. Syllabus: “Engelgau sought to provide a **simpler**, smaller, cheaper adjustable electronic pedal.”

    Comment by step back | January 19, 2010 | Reply

  5. More from the KSR syllabus:

    7. “(b) The District Court correctly concluded that when Engelgau designed the claim 4 subject matter, it was obvious to a person of ordinary skill in the art to combine Asano with a pivot-mounted pedal position sensor. **There then was a marketplace creating a strong incentive** to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for doing so. The Federal Circuit considered the issue too narrowly … The proper question was whether a pedal designer of ordinary skill in the art, facing the wide range of **needs created by developments in the field**, would have seen an obvious benefit to upgrading Asano with a sensor. … the designer would know to **place the sensor on a nonmoving part** of the pedal structure. The most obvious such point is a pivot point. The designer, accordingly, would follow Smith in mounting the sensor there. ”

    KENNEDY, J., delivered the opinion for a unanimous Court.

    Comment by step back | January 19, 2010 | Reply

  6. Stepback,

    Even if I grant you all the “facts” in the syllabus, it still does not prove the Supreme Court’s point. It is just as logical to ask, why if it was obvious didn’t someone else invent this device? There is no logical way to decide between the two.

    Almost all inventions are market driven, see Jacob Schmookler’s book Inventions and the Economy. Schmookler was one of the first economist to undertake an econometric study of inventions.

    I really don’t buy all the facts in the syllabus, it was written by the district court attempting to prove their point. For instance, “This prompted inventors to design and patent pedals that could be adjusted to change their locations.” What prompted them?

    Logically, something that is novel cannot be obvious. The obviousness standard is arbitrary, especially after KSR. I can make a convincing argument that the LASER was obvious, that Edison’s light bulb was obvious.

    Comment by dbhalling | January 20, 2010 | Reply

  7. DB,

    I never said I “agree” with the SCt holding in this case or with their notion of allowing examiners to rely on “common sense” and “ordinary creativity”.

    What I am saying is that the term “predictable”, as used in the full context of the KSR fact pattern requires several factors including a showing of strong market forces that “inevitably” compel artisans towards that one design.

    BTW, KSR did independently “invent” the same thing, only second in time; which is why they got sued by the first in time inventor.

    p.s. The idea that “necessity” is the mother of invention is mostly all BS. None of the major advances we have today were “necessary” at the time of their conception: telegraph, telephone, transistor, internet. The pony express did just fine. And it provided employment for a lot of men and horses. ;-)

    Comment by step back | January 20, 2010 | Reply

  8. Stepback, all good points – thanks for you comments

    Comment by dbhalling | January 20, 2010 | Reply

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