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    Highlights of the ICANNWatch Archive
    (June 1999 - March 2001)

    This discussion has been archived. No new comments can be posted.
    The Patents Are Coming | Log in/Create an Account | Top | 37 comments | Search Discussion
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    by jberryhill on Monday May 12 2003, @07:39PM (#11604)
    User #3013 Info
    Obviousness is a question of fact under 35 U.S.C. 103. Nothing is obvious in a vacuum. In this instance, you are going to have to produce a piece of prior art, such as a printed publication or evidence of use or sale from one year prior to the application date, which shows the invention substantially as claimed. Then, you are going to have to show that any differences between the prior art and the claimed method are modifications that would be made by one of ordinary skill in the pertinent art, in accordance with a known motivation to make such modifications. Proving obviousness is more than a matter of having two parties asserting "tis" and "tis not".
    [ Reply to This | Parent ]
    by michael (froomkin@lawUNSPAM.tm) on Tuesday May 13 2003, @06:48AM (#11610)
    User #4 Info | http://www.discourse.net/
    Yes. But.
    While only a limited number of appellate decisions discuss obviousness in the context of software patents, there is some reason to believe that the court is imposing a rather strict standard. The first case involving the obviousness of a software-implemented invention is, perhaps surprisingly, a Supreme Court case from the 1970s. In Dann v. Johnston, [FN48] the Court held a patent on a 'machine system for automatic record-keeping of bank checks and deposits ' invalid for obviousness. [FN49] The Court took a rather broad view of obviousness in the computer industry, focusing on whether systems analogous to the patentee's had been implemented in computers before, rather than analyzing the precise differences between the patentee's program and the prior art programs. [FN50] The clear implication of the opinion is that if a reasonably skilled programmer could produce a program analogous to the patented one, and if there was motivation in the prior art to do so when the program was written, the patented program is obvious and thus not patentable.


    The Federal Circuit has found software patents invalid for obviousness in two recent cases, Lockwood v. American Airlines [FN51] and Amazon.com v. Barnes & Noble. [FN52] Neither case opined directly on the ease with which computer programs could be produced, but both viewed obviousness as a rather substantial hurdle to patenting software. [FN53] In Lockwood, the question was whether the defendant's own system made the patented claims obvious. The system had been in public use, but American Airlines had kept the workings of the system secret. Nonetheless, because Lockwood's patent was claimed in broad functional terms, the court found that similarly broad functional disclosures in the prior art were sufficient to render the patent obvious. While Lockwood argued that the information provided was not sufficient for one skilled in the art to make and use the system, the court pointed out that it was as detailed as the information Lockwood's own patent provided. [FN54] Thus, the patent's meager disclosure of technical details indirectly contributed to the court's finding of obviousness. In Amazon.com, the court found Amazon's 'one-click' shopping feature to be obvious in view of certain references describing the desirability or feasibility of such a system in general terms, and one prior system that delivered data online in response to a mouse click. The court rejected arguments that the one-click feature was technically difficult to implement, relying on the fact that the prior art generally described such a system as both desirable and feasible. The court also gave surprisingly short shrift to Amazon's evidence of secondary considerations of nonobviousness. [FN55]

    The likely result of the Federal Circuit's focus on high-level functionality is that improvements in programming techniques will be found obvious and thus not patentable in view of prior art that solved the same basic problem in a somewhat different way. This was arguably the result in both Dann and Lockwood, [FN56] and it seems to follow from the court's view in the section 112 cases that programmers are an extremely skilled bunch needing little or no guidance from the prior art in order to implement a new idea in software. While disclosure is a minimal hurdle for software patents, then, obviousness can be a rather tough one. [FN57]

    Dan L. Burk and Mark A. Lemley, IS PATENT LAW TECHNOLOGY-SPECIFIC?, 17 Berkeley Tech. L.J. 1155, 1167-68 (2002)
    [ Reply to This | Parent ]
    by Anonymous on Thursday May 15 2003, @03:00PM (#11649)
    John (Hi, John), the principle behind the requirement for non-obviousness is to avoid having non-inventable things being patented. That language was put in there specifically to avoid having things which "everyone" knew about get patented. Specifically, the English patent system had a problem whereby it allowed someone to patent the crank. Nobody had patented it before! Of course, the crank was something that every engineer knew about, and yet once patented, royalties were due. Under the English system. With no requirement for non-obviousness. We Americans weren't that stupid, so we required that patents be non-obvious, and something that not "everyone" knew. And yet we have somehow arrived back at the English system where anything which is not already patented is prime facie patentable. How did this happen?
    [ Reply to This | Parent ]
    by Anonymous on Thursday May 15 2003, @03:14PM (#11652)
    Obviousness is obvious when one party asserts "tis", and everyone else of ordinary skill in the pertinent art says "tis not, you jerk, everybody knows that in order to check in multiple places you ... check in multiple places, well duh!".

    That said, I believe that S. Rob Austein wrote a domain name completion program which would do the same type of searching that is now patented. We could ask him if he published it anywhere.
    [ Reply to This | Parent ]

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