Intellectual Property Law

When the Reese's Peanut Butter Cups Principle Doesn't Apply

By Michael Kwun

When I was a kid, it seemed that every third commercial I saw was for Reese's Peanut Butter Cups. In these commercials, a chocoholic would collide with a peanut butter lover, quickly followed by the memorable exchange of "you got peanut butter in my chocolate" and "you got chocolate in my peanut butter." But then something amazing happened. Each of them sampled the combined treats, and their faces lit up with delight as they unexpectedly discovered "two great tastes that taste great together."

The converse is also true: When you combine previously known concepts and the result is utterly mundane, that's not a new invention. Moving peanut butter from glass jars to plastic tubs, for instance; it may be a new combination (peanut butter and plastic, hooray!) but it?s not a novel end product. A year ago, in the case KSR International Co. v. Teleflex Inc., the Supreme Court reminded everyone of just this fact. As the Court explained, "The combination of familiar elements according to known methods is likely to be obvious [and thus unpatentable] when it does no more than yield predictable results." At the time, a lot of people wondered whether this spelled the end for many lame patents that did little more than claim well-known business models recast as novel inventions by requiring that they be done on the Internet.

Less than two weeks after the KSR decision, the Federal Circuit picked up on the Supreme Court's hint in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. [PDF], invalidating as obvious a patent that simply applied modern electronics to old fashioned devices.

Earlier this month, the Federal Circuit directly applied this principle to the Internet. In Muniauction, Inc. v. Thompson Corporation [PDF], the court invalidated as obvious several claims of a patent describing a particular method of auctioning certain financial instruments on the Internet. These patent claims added nothing new to the prior art except that the patent claims required the use of a web browser, while an earlier system had used a proprietary computer network with specially designed client software.

The Federal Circuit noted that web browers long predated the patent application's filing in 1998, and indeed that using web browsers in online auctions was well-known at the time. Recalling its prior reasoning in the Leapfrog case, the court concluded that "adapting existing electronic processes to incorporate modern internet and web browser technology" has been obvious for a long time.

The notion that one can obtain a patent on simply doing on the Internet what many did before without the Internet has seemed silly to many for a long time. Thankfully, the Federal Circuit agrees. Anyone want to celebrate with a Reeses?

Full post as published by Electronic Freedom Foundation - Deep Links on July 25, 2008 (boomark / email).