Real Network Inc.

The grant of a patent depends upon three fundamental parameters which the invention has to satisfy. These are:

• The test of Novelty;
• The test of Utility &
• The test of Obviousness

The most important out of the abovementioned parameters is the test of obviousness. The word 'obvious' must be construed in its literal sense. It means something which is open to the eye or mind and which is evident to a person thinking on the subject. Obviousness and inventiveness are anti thesis, as what is obvious cannot be inventive.

In a recent case, Friskit Inc. v/s RealNetworks, a federal judge in San Francisco dismissed a suit filed by Friskit Inc., a patent licensing company alleging RealNetworks infringed on patents related to technology used for organizing and playing video and audio files. While dismissing the case, Judge Schwarzer cited the Supreme Court's ruling in KSR v. Teleflex and concluded that Frisket's "idea of integrating these different components was not novel."

RealNetworks is the first high-profile beneficiary of a new standard established in April when the Supreme Court issued its ruling in the case of KSR International v. Teleflex Inc. At the core of the Court's decision was the notion of "obviousness," a fundamental component of patent law. In its ruling, the High Court said the current "rigid" application of existing tests for determining obviousnesss that courts have used since 1851 should be changed to allow for a more "expansive and flexible approach" that gives judges more latitude to apply commonsense to these lawsuits. This fundamental shift in determining obviousness means technology companies with legitimate patents will have a much easier time defending themselves from expensive and occasionally frivolous patent-infringement lawsuits. Companies that have simply tied together obvious combinations of existing products -- for example adding an eraser to the tip of pencil -- will have a much harder time making their case in court. The KSR decision provides courts more flexibility in determining whether a patented invention is obvious in view of the prior art.

Conclusion:

The Supreme Court, in the KSR decision, based on the facts in this case, found that the Federal Circuit's Teaching, Suggestion, or Motivation (TSM) test transformed the general principles of the obviousness analysis into a rigid rule. The TSM Test - A patent claim is prima facie obvious if "some motivation or suggestion to combine the prior art teachings" can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. In view of the guidance provided by the Supreme Court in KSR, an examiner must continue to articulate a reason or rationale to support an obviousness rejection under 35 U.S.C. 5 103. When formulating an obviousness rejection, an examiner should expect that a person of ordinary skill in the art would exercise ordinary creativity, common sense and logic. Examiners should ensure that the written record includes findings of fact concerning the teachings of the applied references and when necessary, the general state of the art.