Microsoft and Cisco file friends-of-the-court brief

Who would have thought that a fight over a patent on an adjustable gas pedal could result in a shake-up to the entire software industry? But such is the case -- pardon the pun -- as the Supreme Court readies to hear oral arguments in KSR International v Teleflex on Nov. 28.

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The litigation in question is between two automotive suppliers. In 2002 Teleflex sued KSR for patent infringement of its adjustable gas pedal, which combined electronically controlled pedal positions with the adjustable assembly.

In response, KSR filed a “writ of certiorari” saying Teleflex had no right to the patent as it “comprises nothing more than a pre-existing adjustable pedal assembly combined with a pre-existing electronic control.” And if you doubt the importance of what appears to be simply an automotive case, ask yourself why Microsoft and Cisco have filed amicus curiae (friends of the court) briefs on behalf of KSR. It is not what you think.

But first, understanding something about how patents are awarded is in order, so bear with me. I enlisted the help of two patent attorneys, John Dauer from Pitney Hardin and Steve Saunders from Bromberg & Sunstein.

Normally you can receive a patent if you meet one of two criteria. One if it is novel, the world’s first of something. In the second criteria, an invention -- and that includes software code and business methods -- must answer the question: Would it have been obvious to someone of ordinary skill in this area to combine the relevant “art” and come up with this device? This is called the Obviousness Doctrine and much of patent law rests on its interpretation by patent examiners and the courts.

The Supreme Court must decide whether or not it would have been obvious to take these two technologies and come up with Teleflex’s invention. Or, instead, is it a synergy that one wouldn’t have expected?

The Federal Circuit Court, which hears most patent cases, says there must be some kind of “motivation or suggestion” in the prior art that suggests the combination, otherwise a patent will be awarded. For your information this is informally called the “teaching, suggestion, or motivation” test.

Until now the test has been interpreted quite liberally, meaning patents have been awarded in most cases because the Circuit Court made the burden to establish “motivation in the prior art to combine” tough to prove.

Enter Microsoft and Cisco as amicus (or “amici” if you prefer the plural). If KSR wins, both attorneys I spoke with expect the Supreme Court to tighten the “teaching, suggestion, or motivation” test or come up with one of their own.

Either way the Supreme Court will make it easier to prove obviousness and harder to receive a patent for a product or for a business method that combines current technology.

Saunders believes companies like Microsoft and Cisco are willing to give up some of their patent protection and rely instead on their market clout in order to reduce the number of patent infringement cases they must address each year.

My conclusion is that Microsoft and Cisco have forgotten their roots. Now that they are the giants of the industry they want to make it harder for the “little guy” -- aka small ISVs (which they once were) and software developers -- to obtain patents and to protect themselves from the big guys.

After all, Microsoft doesn’t want another Google to contend with, does it?