Damages and Trolls - a loophole in the marking statute - 01

Questions:  Can it be that there is NO NOTICE REQUIREMENT at all as a limit on damages for
non-practicing entity patent owners (NPE POs aka trolls)? Can it be that patent owners can always collect from the start of infringement as long as they do not practice the patent?  Answer to both:  Under the current law, YES.

In all the anti-troll fervor that pushed for the America Invents Act of 2011 (112 PL 29), did anybody propose to close the loophole?  The answer seems to be NO, but I admit I haven't searched much yet.

Consider the relevant statute, 35 USC § 287(a)(as last amended effective Dec. 16, 2011)).  Section 287, often referred to as the marking statute, is entitled

Limitation on damages and other remedies;
marking and notice."

(Full text provided at bottom of post; numerals have been added before each sentence and the whole passage has been reformatted for ease and speed of comprehension.)

I propose that the provision concerning "Limitation on Damages"  be separated from the provision describing proper marking.   That is, I would leave the first sentence of 287(a) by itself, and replace the second two sentences with a new subsection that focuses on limitation of damages.  Marking and damages are related but different.  The loophole may well have arisen because the motivation to include the limitation on damages was to encourage people to mark their products with patent numbers, rather than to legislate a fair starting date for calculating damages.  A sensible Limitation on Damages provision might say something like this:

In an action for infringement, a patentee is entitled to damages from the date on which it first provided notice of the infringement.  Notice can be actual or constructive.  Marking the patented product in accordance with 35 USC section 287(a) constitutes constructive notice. 

I plan to write another post or two to discuss 

   - the historical cases (Wine Railway (Sup. Ct. 1936), American Standard, Amsted, Texas Digital), 

   - the sub-loophole related to method patents (partially closed by Amsted, a 1994 case I taught when I taught basic patent law), and 

   - the very recent opinion that got me thinking about this problem now (SSI v. TEK, summary judgment decision of 3/7/2013). - RJM

35 USC 287(a) (reformatted, numerals inserted for each sentence)

[1]
Patentees,
and persons
       making,
       offering for sale, or
       selling within the United States
   any patented article for or under them,
       or importing any patented article into the United States,
may give notice to the public that the same is patented,
either
   by fixing thereon the word “patent” or the abbreviation “pat.”,
        together with the number of the patent,
   or by fixing thereon the word “patent” or the abbreviation “pat.”
        together with an address of a posting on the Internet,
        accessible to the public without charge for accessing the address,
        that associates the patented article with the number of the patent,
   or
        when, from the character of the article, this can not be done,
   by fixing to it, or to the package wherein one or more of them is contained,
        a label containing a like notice.
[2]
In the event of failure so to mark,
no damages shall be recovered by the patentee in any action for infringement,
except on proof that
   the infringer was notified of the infringement
   and continued to infringe thereafter,
in which event damages may be recovered
only for infringement occurring after such notice.
[3]
Filing of an action for infringement shall constitute such notice.  

NB:  I see no reason to include sentence [3] in my proposed replacement provision.  If a patentee files an action but does not serve the Complaint, then it has not given notice, it has avoided doing so.  If the patentee serves the Complaint, then it has given actual notice.   Am I missing something?

A Great Idea That's Never Been Tried - The Patent System

I've collected some quotes about great ideas that have never been tried.  None of the quotes was about the patent system but all of them could have been. Click here for the powerpoint or just enjoy the individual screen shots:

I had used the quotes in some recent talks (Oregon Patent Bar 2012, slide 12; Stanford faculty lunch half-talk, slide 22). Today Greg Aharonian's newsletter inspired me to put the quotes together in a separate document and post them here.  Greg wrote about the Federal Reserve economists who are proposing abolition of the patent system. They undoubtedly did it to get attention, and will succeed, and to avoid the real work of determining how to help the economy in ways the Federal Reserve can accomplish.[n1] Like too many employees at _____ [fill in the name of your current employer or other appropriate entity], these economists may have forgotten why they were hired.  Or maybe they never knew.

[n1] A Constitutional amendment would be required to abolish patents [see Art. I, sec. 8, cl. 8], and under the Constitution neither the power to propose amendments nor to ratify them is given to the Federal Reserve [see Art. V].) 

I have long said - well, not exactly in these words -

"Let's let the PTO put all its effort into making sure applications are valid over the prior art. [n2]   That would utilize the examiners' supposed expertise.  And then let's wait,say, 5 years before we decide that the patent system is irretrievably dreadful.  That is, let's TRY having a patent system instead of fussing around with irrelevancies like patentable subject matter."

[n2] A little amplification for those who know something about patent law and the patent system:  What I mean is that examiners should issue rejections *ONLY* on 102 and 103 [35 USC 102 and 103, requiring patents to be valid over the prior art, aka the novelty and obviousness requirements].   OK, for claims to perpetual motion machines for which there is no prior art (ha), then can reject under 112  [35 USC 112, requiring patents to be written so that an ordinary artisan in the field is enabled to make and use them, aka the enablement requirement].

Really, if the PTO does not give a high priority to examining patent claims for validity over the prior art, it should not require a technical background of its examiners.  There are many smart liberal arts majors who would be just as good as engineers, maybe better, at deciding if a claim is drawn to "patentable subject matter," or anyway writing at length about it, especially if they have already considered how many angels can dance on the head of a pin.

For more of my views on the PTO's expertise and the role of prior art, see among other things my In re Bilski amicus brief, Microsoft v i4i amicus brief, blog post about Bilski when it was pending before the Supreme Court (see [n24] and accompanying text for a discussion of angels dancing on the head of a pin), and my comments on the PTO's Interim Guidance after Bilski.

Advice to a Young Would-Be Patent Law Scholar - 06 (MERELY and CLEARLY)

In  Advice 05 - Those NEVER and ALWAYS Rules of Writing, I mentioned my own rule about MERELY and CLEARLY:

Never use merely or clearly more than once in every 25 pages.

I also pointed out that the purpose of a NEVER/ALWAYS rule is not so much to prevent or mandate anything, but to make the writer self-conscious whenever ne starts to violate the rule, which in turn will lead to less and more of the NEVER and ALWAYS behavior, respectively.

The main reasons I do not like words like MERELY and CLEARLY are:

1. They allow the writer to be sloppy and lazy.  
2. They insult the reader.

If the referenced information is so MERE, the author's previous discussion of it in comparison to other factors ought to have demonstrated its mereness.  If the referenced conclusion is so CLEAR, the author's development of the arguments ought to have persuaded us already.

An author who writes MERELY or CLEARLY, either thinks nis readers are stupid or hasn't done nis job (or hopes they are because ne hasn't).

Another reason I dislike such words is that

3.  They are used as code for "I am a member of the club." 

The lawyer's club, in this case, with no disrespect meant to the beautiful dormitories at the University of Michigan.  They are words that ought to be on a law school bingo card.

See bullshitbingo.net if you are unfamiliar with the concept. (Unfortunately that site does not have a lawschool version yet.) Other candidates for the bingo card are paradigm, cabined, conversation, any word formed by combining where or there with a preposition (therefrom, whereby, and so on), and just about anything in Latin (the one I dislike the most is vel non). Want to add to the list? Please write a comment!

When I read or hear those clubby bingo words, I immediately look for other signs of a failure to think things through, to  marshal the facts carefully, or to structure the argument convincingly, and I almost always find them.

Last, but maybe first,

4. or 1.  Using "merely" or "clearly" violates my ALMOST NEVER/ALMOST ALWAYS rule:  Use adjectives and adverbs sparingly.  Instead, color your writing with the nouns and verbs.

Another post, amplifying my reasons to favor  nouns and verbs over adjectives and adverbs is coming soon.

typo in link corrected 11-14-2012

Advice to a Young Would-Be Patent Law Scholar - 05 (NEVER and ALWAYS)

What about all those rules that begin NEVER or ALWAYS?

For example, my own invention is "NEVER use 'clearly' or 'merely' more than once in ever 25 pages."

What does that rule do? It probably does NOT make you count how many pages between your first and second use of MERELY. But it probably DOES make you self-conscious every time you write either of those words. And that is the reason for NEVER and ALWAYS rules. They lie in wait, pouncing on you when you violate them. Maybe you can convince yourself that violating them is OK this once. I manage to do that, from time to time. But every time you read the violating text, your inner voice will say "Really? You just HAD to do that? You couldn't find a way around it?" And sometimes you, or I, reply, "Silence! Yes, violating the rule this once was brilliant. But I won't do it again, I promise. Or anyway, not this year."


By the way, for more on merely/clearly, see MERELY/CLEARLY.

A friend (OK, Terry Kearny, then at Fish & Neave, now at Latham Watkins) once told me he'd been taught NEVER to use Moreover or Furthermore. I use them, but again, I cannot do so without remembering Terry. He, and his teachers, were correct about these words. I appreciate that often they are used because the author has not organized the presentation with enough care, or has not figured out how to marshal those 'more' facts in the most persuasive way.

Advice to a Young Would-Be Patent Law Scholar - 04 (NUMBERS)

Yes, my teachers also taught me ALWAYS to spell out numbers from one to twenty, and to write as numerals the numbers from twenty-one on.

See NEVER for how to cope with the writing rules that begin NEVER or ALWAYS. [ideas in version before crash: hartfield - dates - chronologies - aug 29, 1940 v. 70 years, specific dates if two events in same month, but maybe 'within a week of each other that august' would be fine.

Advice to a Young Would-Be Patent Law Scholar - 03 (PARAGRAPHS)

Item 1 of my Advice to a Young Would-Be Patent Law Scholar - 01, referred to PARAGRAPHS without much explanation. That was for two reasons. First, the basis of the post was a message to a young scholar to whom I had previously written extensively on the subject of paragraphing.  Second, I assumed that readers of this blog would know what a paragraph should be, even if they didn't always apply that knowledge to their own legal writing.

Here, for completeness, is a somewhat revised version of what I had written to that student back when I first gave nerfeedback on nis writing.

1. A paragraph should have one central idea, just one, and that idea should be new to someone reading your paper from the first word to the last. That is how I read. I call people like me "linear readers". We do not skip around and we do not do word search. We place ourselves in the author's hands, trusting ner to have thought through the subject so that it is presented in the best possible way. We do, however, skim -- especially if we begin to feel that our trust is misplaced -- and that is precisely the reason you, as an author, need to use paragraphs properly.

2. If you find that your paragraph has two ideas, break up that paragraph.

Wait, you say. What about a summary or an introductory paragraph? OK. Such paragraphs may list a series of ideas, but then the central idea of the paragraph is to summarize or introduce. The substantive content in the list is not the paragraph's central idea. I should add that I am not a fan of summary or introductory paragraphs with lists. As a linear skimmer, I prefer a table of contents, aka outline, at the top of the article, so that I can see the ideas; in the body of the article, I prefer headings. I think a table of contents and headings are also helpful for non-linear readers, especially word-searchers. But for now, if the one-idea-rule troubles you, please read item 2 to mean "other than an introductory or summary paragraph."

3. If you find that a paragraph repeats an idea that you presented earlier, incorporate whatever is worth saying into the earlier paragraph, or revise what you say in the later paragraph so that it does not seem redundant to the linear reader. And yes, this is harder than it sounds. It takes some deep thinking. You will have to ask yourself why you did not include these ideas earlier, and why you want to have them at this later point. Maybe you will have to do some serious restructuring. Do it. And of course, use the TALK METHOD to decide what you want to say, that is, to WRITE.

4. Begin each paragraph with a topic sentence. My high school English teachers said the topic sentence did not necessarily have to be first; it could be in the middle of the paragraph or even at the end. That may be fine for fiction, but in legal writing, where your serious readers will likely be linear skimmers, never put the topic sentence anywhere but at the beginning.

If you can point to a good paragraph in a law review article that violates this rule, please tell me, and give me the text of that paragraph so I can form my own opinion.

5. Avoid long paragraphs. (See items 1 and 2 above to understand how easy that is when you are writing well.) In law review article format, a page should have 2 or 3 paragraphs. I count paragraphs by where they start. A carryover paragraph does not count as the first paragraph of that page. It is zero.

(See the Advice post about NUMBERS for the reason I chose to write 2 or 3 as numerals in the first sentence of item 5, but then wrote zero as a word zero in the last sentence.  See the Advice post concerning rules for writing that begin "Never" or "Always" for my views about the value of those rules.)

A page without any break, that is, one that has a paragraph that began on a previous page and ends on a subsequent one, is never acceptable. A page with a carryover and then only one new paragraph needs is not, either. More than three paragraphs on a page probably (though not always) means your writing is choppy and you are not synthesizing enough. If you have a good reason for writing short paragraphs or your paragraphs are actually bullet points, that may be fine. Maybe.

***

After you have a first draft, check every page and paragraph to make sure they meet these requirements. Soon, your paragraphs will naturally have the right length, and each one will be unified and will introduce a new idea, if not in your first draft, then in your second or third.

[last rev 9/12/11 - rjm]

Advice to a Young Would-Be Patent Law Scholar - 02

Some Background to My Advice to a Young Would-Be Patent Law Scholar - 01

When I read most law review articles, I wonder if the authors subconsciously believe

• that the truth is not important,
• that good organization of the writing is something nobody wants, and
• that thinking the ideas through thoroughly is not necessary.

That certainly seems to explain the results.  People who are highly intelligent and accomplished are content, even proud, of their legal scholarship despite its poor quality.

These authors think that it is enough to set forth an interesting new idea, no matter whether half-baked or based on misunderstanding.  They assume that nobody will jump down their throats if they make a mistake.  And of course they know that there is little danger that a student law review editor will know enough to recognize mistakes.  (More peer review would help, provided the peers were practitioners with excellent writing skills.  Peer review by other legal academics will not necessarily do very much, for the reasons set forth below.)

Legal academics may have accurately gauged their readership.  Few people read law review articles word for word. Most, whether other scholars, litigators or judges, word search for something specific and read no further.  But for hiring and promotion, someone may read from page one to the end.  For that reader, substandard work could be a problem for the author.

But legal academics, especially younger ones, are hampered by the people to whom they go for help: their own law professors.

Unfortunately, law professors may not have had adequate training in good writing.  Some may have had excellent legal writing courses as 1Ls, wonderful high school English teachers, or a college professor who taught them to write.  But my observation is that most were not so lucky.

In addition, legal academics rarely have the opportunity to learn good legal writing from a great practicing lawyer. Usually their own law practice has been limited to a couple of years in a large firm. Working on research  memos and document production does not make for excellence in writing.  Even a judicial clerkship may not be the best preparation, especially if the former clerk does not view scholarship as requiring the same high standards as nis judge expected .   Then, too, a judicial opinion can borrow from the parties' briefs and has an inherent organization:  there is a question in the motion or appeal that must be answered.  A law review article author must develop nis own structure to present nis new idea in the most persuasive and compelling way.

The best writing training I received was when I wrote drafts of briefs for top litigators who demanded the highest standards.  This group included Eric Woglom, Ken Herman, Bob Morgan, and David J. Lee, all partners at Fish & Neave in the 1980s, and earlier, David Hartfield at White & Case in the 1970s. The other major source of my confidence about writing comes from what I learned from my husband, Phil Bucksbaum, who in turn learned from his Ph.D. adviser, Eugene Commins, whose father, Saxe Commins, had been an editor for such famous writers as Eugene O'Neill and William Faulkner.  Saxe taught Gene taught Phil, and I have always taken Phil's advice to heart.  I know of few academic authors who were as lucky as I in their writing mentors.

Of course, I have also always been a serious reader.  When I read, I hear.  No, I don't read audiobooks.  I mean that when I see words on a page or a screen, they somehow come through my ears rather than my eyes.  I find that people who write poorly do not hear their own writing.  Once they train themselves to do that, their writing improves.  See an upcoming post on the TALK METHOD for good writing, too, because that uses what we instinctively do when we speak to make our writing better.

A law professor given a draft of a student paper or article may try to catch the basic idea, but is not likely to see nis role as instructing on structure, paragraphing, and other basic aspects of writing.  Law professors may also lack the time, if not the inclination, to train  young scholars to write right.  True, it is a very time-consuming undertaking.

That is why I have started this series, Advice to a Young Would-Be Patent Law Scholar.  Now, when someone asks me for comments, at least some of my reply can be in links.

8/20/11 rjm

rev 11/6/11