How the Supreme Court could strengthen the patent system

Last month, the U.S. House Subcommittee on Courts, Intellectual Property and the Internet held a hearing titled “The Impact of Bad Patents on American Businesses,” an important topic that Congress has held multiple hearings on over the past few months. While it’s encouraging to see many in Congress pushing for a stronger patent system, we must not forget that there are two high profile cases between Apple and Samsung working their way through the courts that will have a profound impact on patent quality and innovation for years to come.

After six long years, the high stakes legal battle between Apple and Samsung recently culminated in a unanimous ruling of the U.S. Supreme Court – a ruling that effectively kicked off the next chapter in the Apple vs. Samsung design patent infringement case. This highly watched case was remanded back to the Northern District Court of California for further proceedings that should include a new trial and set new boundaries on what will truly constitute a cause for infringement.

The remand to the district court was a big step towards finally bringing some sanity, certainty, and clarity to the underlying questions of the case: How should design patent remedies be calculated since the Supreme Court ruled that total profits is not an appropriate remedy? Innovators and designers alike should hope that the lower court creates a fairer and more appropriate standard for determining remedies in the modern digital world.

{mosads}I have my own opinions on the matter, but regardless of what happens with this case, it’s premature to think that the smartphone wars will come to an end anytime soon as the outcome of a second case between the two companies will also have major consequences on the future innovation ecosystem.

Samsung recently filed a new petition for writ of certiorari, requesting Supreme Court review of a parallel Apple v. Samsung case after an unorthodox ruling from the full federal circuit – which overturned an earlier unanimous panel decision without any briefings or arguments. As with the first case, patent quality and interpretation are core issues this time around, and seemingly even more central to the case. One of the patents in question is the now well-known “slide to unlock” GUI (graphical user interface) feature.

I mentioned patent quality is at the core of this case. As a former U.S. patent examiner that’s an issue I feel very strongly about. After all, if not for low-quality patents (it’s not just my opinion, the U.S. appeals court that originally found some of Apple’s controversial patents to be invalid would likely agree), we would not even be having this discussion right now.

The Supreme Court should hear this case and seize the opportunity to defend higher patent quality for a number of reasons – an issue that the USPTO has for years attempted to address, and made great strides in assuring. And in what some view as a positive step towards review, on Monday, the Court asked the acting U.S. Solicitor General to weigh in on the case.

The federal circuit’s decision finding infringement failed to recognize prior art solutions across technologies, based on the belief that Samsung’s artwork did not adequately demonstrate the obviousness of the “slide to lock” feature.

Weakening the obviousness standard would apply well beyond the Apple v. Samsung case. It would allow patentees to avoid invalidity challenges by narrowly defining the relevant technology and bring infringement claims based on weak patents that never should have been issued in the first place.

A proliferation of low-quality patents leads to higher costs for innovation, industries, and particularly entrepreneurs whom now have to calculate risk of suit as they build businesses here in America forward. According to a 2012 Boston University School of Law study, patent troll lawsuits “are associated with half a trillion dollars of lost wealth to defendants from 1990 through 2010. … These lawsuits substantially reduce their incentives to innovate.” Clearly, the assertion of low-quality patents has chilling effects on technology companies as well as their ability to bring innovative products to market.

Quality patents prevent frivolous assertion by creating barriers to entry through allowing patent examiners to reject patents for inventions that are truly obvious or un-new. We need to take meaningful steps toward making sure this critical component of the patent application process is protected.

As the Internet Association and Software and Information Industry Association noted in their amicus curiae brief, the court “has not adjudicated obviousness in the context of the computer and software industry since 1976, even though that industry has since changed dramatically and contributes hundreds of billions of dollars to the nation’s economy.” 

The opportunity to address these critical issues lies in the Supreme Court’s hands. I, for one, hope cert review is granted in this case, opening the door for a much-needed review and possible reversal of earlier decisions by lower courts. Doing so is a necessary step toward preventing further weakening of the US patent system, and enable a smarter standard that other countries can adopt accordingly.

Nagesh Rao (@GNageshRao) is a former U.S. patent examiner and senior policy advisor with the Department of Commerce-U.S. Patent and Trademark Office and Office of Innovation and Entrepreneurship. He represents the United States as an Eisenhower Fellow and advisor to the American Association for the Advancement of Science (AAAS) Lemelson Invention Ambassadors Program.

The views expressed by contributors are their own and are not the views of The Hill.