Part 2- Crimes and Torts, Chapter 8: Intellectual Property and Unfair Competition, Doc 3

Summaries of Key Intellectual Property and Patent Law Cases 1. Bilski v. Kappos (2010) This case centered on whether a method of hedging risk in energy markets, a general business method, was patentable under U.S. patent law (§ 101 of the Patent Act). Bilski’s patent application was denied on the grounds that it sought to patent an abstract idea rather than a specific process or technological invention. • • Key Issues and Court Findings: o Machine-or-Transformation Test: The Court clarified that while the machine-or-transformation test is a useful criterion, it is not the sole test to determine if a process is patentable. o Business Methods: The Court acknowledged that business methods might fall under patentable categories if they met certain criteria, but it rejected any blanket exclusion of business methods. o Abstract Ideas: Ultimately, Bilski’s claim was denied because hedging is a fundamental economic principle and considered an abstract idea, making it unpatentable. Implications: This ruling allows flexibility in patent law by not strictly limiting processes to machine-related or transformative criteria. It also recognizes the potential for some business methods to qualify, although purely abstract ideas cannot be patented. 2. KSR International Co. v. Teleflex, Inc. (2007) This case examined whether an adjustable pedal assembly with an electronic sensor, as patented by Steven Engelgau and licensed to Teleflex, was valid given prior patents on similar technology. Teleflex claimed that KSR’s similar design infringed upon its patent. The District Court initially ruled in KSR’s favor, deeming the Teleflex patent invalid due to obviousness, but the Court of Appeals reversed this decision, applying a strict “Teaching, Suggestion, or Motivation” (TSM) test. • • Key Issues and Court Findings: o Obviousness Standard: The Supreme Court criticized the rigidity of the TSM test. It stated that obviousness should be evaluated with a more flexible approach, emphasizing that combining known elements in predictable ways does not qualify for a patent. o Functional Combination: The Court concluded that simply combining an adjustable pedal with a sensor, both of which were prior art, was an obvious solution to improving car pedal systems. Thus, the Teleflex patent was invalid. Implications: This decision emphasized a more expansive and commonsense approach to obviousness in patent law. It restricts the granting of patents for predictable combinations of known technologies unless they demonstrate unexpected functionality or innovation. Broader Legal Principles and Context: Both cases address important limitations within intellectual property law, particularly patent eligibility and the scope of obviousness. They reinforce that: 1. Abstract Ideas: Purely theoretical or abstract concepts (like economic strategies or mathematical formulas) cannot be patented unless they are applied in a specific, inventive manner within a tangible context. 2. Combination of Known Elements: Patents cannot be granted merely for predictable combinations of existing technologies unless the result is genuinely novel and non-obvious to someone skilled in the relevant field. These cases illustrate the balance the courts seek between encouraging innovation and preventing monopolies on broad, general ideas that restrict public access to established knowledge.