Colby Springer, of counsel to the well-respected Silicon Valley law firm Carr & Ferrell LLPs IP & litigation practice groups, expanded on this point. Springer doesnt "think KSR will increase or necessarily decrease litigation at the end of the day. [However,] the reality is that any time you assert a patent, you run the inherent risk of it being invalidated. That is just part of the game. "What will change," he said, "is the role that obviousness will play in that invalidation defense. In arguing invalidity, you always like to go in arguing anticipation. That is, one reference (e.g., a patent or an old white paper, etc.) that teaches each and every element of the asserted patent claim. I wont go so far as to say obviousness was an also ran but if your best invalidity argument was based on obviousness, then you may have had an uphill battle to fight. I think that will change in that the importance of the obviousness defense will become a bit more prominent in that the Supreme Court has loosened the reins so to speak with its application."Still, "The reality is, however, that obviousness never has been a bright-line rule as much as some people might want one. So, in another sense, KSR didnt really change anything. At the end of the day, obviousness still is a subjective standard in that you look to common sense of one skilled in the art to potentially allege the obviousness of a combination." The result, Springer believes, is that "youll see a greater role of expert witnesses in patent litigation in that they purport to be one ordinarily skilled in the art and what they contend to be a common sense combination versus another. But at the end of the day, youll still have two sets of experts saying the exact opposite of one another: the plaintiffs and the defendants." Unlike Fontana though, Springer thinks the KSR decision will stop at least some bad patents from being granted. "I think you will see more pushback from the patent office and not necessarily with respect to just software patents but patents in general," he said. "This common sense approach gives the examiner a little bit more flexibility in rendering obviousness rejections in that before they had one hand tied behind their back with respect to having to find two references that purportedly made the claimed invention obvious while, at the same time, finding a suggestion to combine those references in the prior art as well. Now that they have a certain degree of common sense at their disposal, I think youll start to see a lot more obviousness rejections and pushback from the examiners." So, "will this stop bad patents? No. Will it help? Yes," concluded Springer. Check out eWEEK.coms for the latest news, views and analysis on servers, switches and networking protocols for the enterprise and small businesses.
What this may mean in practice, Springer said, is that "whereas before one had to look to the teachings of the prior art to suggest or motivate one to combine two different references, common sense (or what I like to refer to as the duh factor) now plays a greater import in alleging that a particular patent claim is obvious."