MY UNPUBLISHED WORKS

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

2011-11-06T11:47:00.000-08:00

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:

They allow the writer to be sloppy and lazy.
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.

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

2011-08-20T15:18:00.000-07:00

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)

2011-08-20T15:13:00.000-07:00

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)

2011-08-20T15:10:00.000-07:00

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 aboveto 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

2011-08-20T13:32:00.000-07:00

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

Advice to a Young Would-Be Patent Law Scholar - 01

2011-08-20T12:11:00.000-07:00

A while ago a law student asked me to look over a draft law review article ne had written. Nis draft was about 50 pages. My comments were about 25 pages. I liked ner very much or I wouldn't have bothered. Ne was intelligent and eager to do things to the best of nis substantial ability.

More recently, ne asked me to look at another paper. I wasn't able to spend another forty-odd hours writing comments, so I just sent ner these reminders:

1. Remember what a paragraph is, and remember to police yourself on your paragraphing, from the first draft on, in EVERY revision!

2. Remember to use words accurately. (I write UWA in the margins of many a student exam, and think it regularly as I read novels and news articles.) If you can't think of the right word, NEVER EVER write down something you know is not quite right. Instead, ALWAYS write _____. That will remind you to find the right word before you are done.

3. Remember never to write anything you're not 100% sure of. If you have any doubt, check it out! If you can't manage to wrestle the thing to the ground, either omit it, change what you say about it, or come up with a hedge.

4. Have an outline VISIBLE at the top of your paper, from the very first draft. Read it every time you do a revision, and revise it every time you change a heading in your paper. (A good paper, by the way, should have at least one heading every two pages in standard format. This makes it skimmable for the reader, and reminds the writer what nis purpose is.) Keep the outline as
current as your thinking.

5. TALK FIRST, write second. If you can't talk what you want to say, you will write it poorly. You will not have thought it through. If you can't think without writing (I sometimes have this problem), write until you think you know what you want to say. Do this in SMALL sections, not the whole paper. Then TALK IT. Then throw out what you wrote before you talked it out, and write what you talked. (Stay tuned for more about the TALK METHOD in a future posting.)

6. The theory behind instructions 1 through 5 is that an article on patent law should be written with the same scrupulous honesty and thoroughness as a brief for a patent savvy judge in a lawsuit where opposing counsel has outstanding depth and breadth of experience in patent
law. That is, imagine that your article will be read by a lawyer who will find your every error and weakness, one who has done prosecution, counseling, pre-trial, trial, and appellate work, and has an encyclopedic memory of 40 years of experience, as well as everything ne learned from nis mentors, and who, you can be sure, will use your errors and omissions to win nis case.

Too many people write articles as if the truth is not important. As if a clear organization to the writing is something nobody would miss. As if thinking thoroughly is not a requirement. 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 they know that there is little danger that student law review editors will know enough to recognize mistakes.) These authors 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 and might just notice the poor quality work.

Unfortunately, too, many academic authors have not themselves had much training by top litigators or legal writers who demand the highest standards. When a young scholar gives them a draft, they may try to catch the basic idea, but not otherwise give ner instructive comments. Often, their own law practice has been limited to a couple of years in a large firm. Working on research memos and document production is not the best training for becoming an excellent writer. 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 judicial writing. Law professors may also lack the time, if not the inclination, to train young scholars to write right. It is a time-consuming undertaking.

If, however, you learn to hold yourself to a high standard, you will soar to the top. Your readers, whether practitioners or academics, will notice the difference between you and the rest of the pack.

The Standard Application Metric (SAM) - some more data - PTO Reform Ideas 04

2011-04-26T10:46:00.000-07:00

Here is a restatement and update of data included in PTO Reform Ideas 03, March 07, 2011.
It is in table form, and includes Claims, Figures and Sheets data for the following patent ranges:

3,999,000 to 3,999,999 ( 1000 issued)

   (12/1976)
6,000,000 to 6,019,999 (19938 issued)

   (12/1999 to 02/2000)
6,999,000 to 6,999,999 (  990 issued)
   (02/2006) 

Microsoft v i4i - Tables of Contents of ALL the Briefs

2011-04-15T11:21:00.000-07:00

To get a quick handle on ALL the briefs in 10-290, Microsoft v. i4i, since the grant of certiorari, from Microsoft's Opening Merits Briefs to Microsoft's Reply Brief, and all the amicus briefs in between, please see my pdf compendium of all the coversheets and tables of contents of all the briefs. I put in bookmarks for each brief's coversheet, but if you don't want to open the whole pdf and just want to see a list of all the briefs, click here for a table of contents to the tables of contents.

For an alphabetical list of all the entities represented in briefs in support of Microsoft, see my 2/11/11 post.

The briefs in support of neither party came from

AIPLA
The DC Bar Association
IBM
Federation Internationale, and
the owner of this very blog, Roberta J. Morris, Esq., Ph.D. (pdf, or TOC only.)

For a list (by brief) of all the entities represented in briefs in support of i4i, see i4i's court papers site.

Note: This post is an update of my 2/10/11 post, which only included Microsoft's opening briefs and the briefs in support of

Patent Fees and Counts and the Standard Application Metric - PTO Reform Ideas 03

2011-03-07T16:12:00.000-08:00

Both the fee structure and the examiner count system should be based, not on the unit of the filed application, but instead on a metric that compares the actual application to a standard application. The comparison would be based on such parameters as numbers of: specification columns in standard format, figures and reference characters in the figures, independent and total claims, and IDS references and the sum of the individual references' pages (or word counts, figures, etc.).

This way fees and counts would be appropriately tailored to the complexity of the task of examination. Today's one size fits all system prevents such tailoring. (Excess claim and page fees do not address complexity adequately and may not affect the count system at all.)

Patent prosecution professionals know that the more complex the case the more time is needed to do a proper job, and their fees, whether by the hour or by prearrangement, reflect this. R&D expenditures are also related to the complexity of the technology, as are the pay scales in different fields. Likewise, revenues from commercialization are often proportional to complexity because the price per unit, the margins and the volume of sales are often higher for more complicated and sophisticated technology.

Why do PTO fees and examiner counts essentially ignore complexity? Answer: "Because they always have." That answer is not good enough any more.

Employing a standard-application metric (SAM) for the count system and fee structure acknowledges the reality that all applications are NOT created equal. Examiners can be given twice the time to examine an application that is twice as complex. This means that they will have enough time to understand complex technology, read a lengthy specification, consider voluminous information disclosures, and examine numerous, highly nuanced claims. The system will also encourage applicants interested in cheaper and faster examination to be more succinct and direct.

Who will devise this metric? Answer: The PTO. Director Kapos, and management, and the examining corps, all know what the measurables of patent applications are and how those measurables affect examination time.

The public, too, can consider the definition of the standard application. Publicly available databases and the PTO's $200 DVD of patent statistics are helpful. For example, the CLAIMS.TXT data on the DVD permits calculation of the median, mid 50%ile and average for three aspects of complexity of issued patents: numbers of claims, figures and drawing sheets. Unfortunately, the number of specification columns and IDS references -- useful information for our SAM -- are not as easily found, nor are data for applications as opposed to issued patents. That information can be compiled without too much difficulty, however.

To begin working toward the SAM solution, I have looked at some numbers. For simplicity and speed,* I have segregated out two groups of ~1000 patents from the DVD, representing past and current complexity levels:

For the 1000 patents numbered 3,999,000 to 3,999,999, issued in 1976:

Claims: median 8, mid50 4 to 12, average 9.2,

Figures: median 5, mid50 3 to 9, average 6.9, and

Drawing Sheets: median 2, mid50 1 to 3, average 2.8.

For the 990 patents numbered 6,999,000 to 6,999,999 (ten patents were withdrawn prior to issuance), issued about thirty years later in 2006:

Claims: median 15, mid50 9 to 21, average 19.6,

Figures: median 8, mid50 5 to 13, average 13.3, and

Drawing Sheets: median 6, mid50 4 to 9, average 9.5.

It is undeniable that serious thought and hard work will be needed to determine

(1) the parameters to use,

(2) the standard application values,

(3) the weights to apply to those parameters, and

(4) the structure -- linear? step function with how many steps? -- by which to calculate the fees and counts for actual applications compared to the standard.

Consideration should also be given to how often the definition of the standard application should be adjusted. It might be when the median actual application goes above 1.5 SAMs, for example.

The PTO can do this. And should. And the time to do it -- while Microsoft v. i4i is pending before the Supreme Court, patent reform legislation is before Congress, and public attention is being given to the quality of examination and in particular to the problem of inadequate examination time and resources -- is now.

* I used batches of 1000 patent numbers rather than a larger or more random sample. Consecutive patents, all issued on the same date or a week apart, may all have been granted by a small subset of examiners or art units and thus may not necessarily represent the whole.

Microsoft v i4i - List of Amicus Filers

2011-02-11T09:57:00.000-08:00

List of Entities Filing Amicus Briefs TO DATE (in order of docketing, within designations as supporting
petitioner or neither party; briefs by respondent i4i and in support of respondent will be added when filed)

For a combined pdf with all the cover sheets and tables of contents of all the briefs, including the parties' briefs, see http://stanford.edu/~rjmorris/10-290%20combined%20tocs.pdf. For the complete individual briefs, see http://www.i4ilp.com/papers.php

Key (in case you re-sort the list alphatically)
*MS = supporting Microsoft (per cover of brief; may also say supporting reversal or supporting vacation or nothing, but filing date/contents indicate support of Microsoft)
*NP = supporting Neither Party (per cover of brief)

SUPPORTING MICROSOFT

Hollaar, Prof. Lee A., Pro Se *MS
Synerx Pharma, LLC *MS
Electronic Frontier Foundation ("EFF") *MS
Public Knowledge (with EFF) *MS
Apache Software Foundation (with EFF) *MS
Public Patent Foundation *MS
Internet Retailers *MS
Security Industry and Financial Markets Association ("Sec Ind") *MS
The Clearing House Association (with Sec Ind) *MS
EMC Corporation *MS
Apotex, Inc. *MS
CTIA - The Wireless Association *MS
Business Software Alliance *MS
Hercules Open-Source Project *MS
Apple Inc ("Apple") *MS
Intel Corporation (with Apple) *MS
Google Inc. ("Google") *MS
Verizon Communications Inc. (with Google) *MS
Consumer Electronics Association (with Google) *MS
Comcast Corp. (with Google) *MS
Dell Computer Corp. (with Google) *MS
Hewlett-Packard Co. (with Google) *MS
HTC Corp. (with Google) *MS
Intuit Inc. (with Google) *MS
L-3 Communications Corp. (with Google) *MS
LinkedIn Corp. (with Google) *MS
Lockheed Martin Corp. (with Google) *MS
Mastercard Worldwide (with Google) *MS
The New York Times Company (with Google) *MS
Rackspace Hosting Inc (with Google) *MS
Red Hat, Inc. (with Google) *MS
Shutterfly, Inc. (with Google) *MS
Software & Information Industry Association (with Google) *MS
Time Warner Inc. (with Google) *MS
Walmart Stores, Inc. (with Google) *MS
Zynga Inc. (with Google) *MS
SAP America, Inc. ("SAP") *MS
Acushnet Company (with SAP) *MS
Facebook, Inc. (with SAP) *MS
General Motors LLC (with SAP) *MS
Pregis Corporation (with SAP) *MS
Symantec Corporation (with SAP) *MS
Terex Corporation (with SAP) *MS
Yahoo! Inc. (with SAP) *MS
Computer & Communications Industry Association *MS
Teva Pharmaceuticals USA, Inc. *MS
Cisco Systems, Inc. ("Cisco") *MS
eBay Inc. (with Cisco) *MS
Netflix Inc. (with Cisco) *MS
Office Depot, Inc. (with Cisco) *MS
Toyota Motor Corporation (with Cisco) *MS
Trimble Navigation Limited (with Cisco) *MS
37 Law, Business and Economics Professors *MS
Timex Group USA, Inc. ("Timex") *MS
Macdermid, Inc. (with Timex) *MS
Gem Manufacturing, Inc. (with Timex) *MS
Perfect 10 Antenna Company, Inc. (with Timex) *MS
Carson Optical, Inc. (with Timex) *MS

SUPPORTING NEITHER PARTY
American Intellectual Property Association *NP
Association of the District of Columbia Patent, Trademark and Copyright Section *NP
International Business Machines Corporation *NP
Federation Internationale Des Conseils en Propriete Industrielle *NP
Morris, Roberta J. Pro Se *NP

Microsoft v. i4i - Quick Guide to all the Briefs - Everyone's Table of Contents

2011-02-11T07:49:00.000-08:00

If, like me, you would like a quick guide to the basic ideas of all the briefs in Microsoft v. i4i (Docket No. 10-290) filed since the petition for certiorari was granted, you may find helpful my composite pdf of each cover page and Table of Contents (TOCs). The pdf is bookmarked for each filer. The table of contents to that combined TOCs file is also listed below.

If anything intrigues you in the combined TOCs (for example, my Thought Experiment on the reversal rate for invalidity, see my brief, actual/pdf page 24/36), you can find the complete pdfs of all the briefs on i4i's court papers page.

If you only have time to read one brief in full, I certainly recommend mine (pdf). That it has some different and refreshing ideas should be apparent from its Table of Contents (separately available at docx = brief pdf pages 2-3).

The combined TOC file will grow to include covers and TOCs from i4i's Opposition brief, the amicus briefs in support of i4i, and Microsoft's Reply, as they become available.

Happy reading.

PS Please let me know of any errors or omissions in the combined TOCs.

Cover Pages and Tables of Contents of
All Briefs Filed in Microsoft v. i4i

United States Supreme Court

10-290

Oral Argument Set for 4/18/2011

Note: The individual brief cover/Tocs are bookmarked in the combined pdf file.
Within each amicus category, briefs are listed in order of docketing.

1 Merits Brief of Petitioner Microsoft

Amicus Briefs in Support of Petitioner

4 Prof. Lee Hollaar

7 Synerx

9 EFF+2

12 Pub.Pat.Fdn

14 Internet Retailers

17 SecInd&FinMkts+1

21 EMC

24 Apotex

27 CTIA

29 Bus.Software

31 Hercules Open-Source

33 Apple+Intel

36 Google+19

39 SAP+7

42 Computer&CommIndAss’n

45 Teva

48 Cisco+5

51 37 Profs

54 Timex+4

Amicus Briefs in Support of Neither Party

58 AIPLA

61 DC Bar

63 IBM

66 Fed.Internationale

69 Roberta J Morris

rjm 2/10/2011 rev 0

Great Quotes 01 - Dicta in the Federal Circuit

2010-04-12T12:35:00.000-07:00

Judge Lourie's comment about the binding nature of Supreme Court dicta in Ariad v. Eli Lilly (Fed. Cir. 3/22/2010)(in banc):

"As a subordinate federal court, we may not so easily dismiss such [Supreme Court] statements as dicta but are bound to follow them." (at *29)

may be contrasted with the concerns of Senior Judge Nichols in a concurrence in a 1984 Federal Circuit decision, admittedly about Federal Circuit dicta, but relevant nevertheless:

"In future cases parts of this opinion will be cited, and the response will be made that the words referred to are dicta. Future judges of this court may be struck by our wisdom and wish to follow our words, or they may perceive they are confronted with a problem we did not foresee, and find our words an embarrassment. In the latter event, it cannot now be predicted whether they will profess themselves bound by our statements, or reject them as nonbinding dicta. The future utility or subsequent career of a dictum is wholly unpredictable, and that is why judges over centuries have avoided dicta, or at least said they were doing so. When a judicial exposition relates to a concrete issue to be decided, the record facts add meaning to the words, and safeguards exist against their being read out of context. With a dictum this is not so, and it may well end up having an effect the judicial author never intended."

Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1523-24 (Fed. Cir. 1984) (MARKEY, Friedman, Nichols) (Nichols, J. concurring).

The Start of Several Series

2010-04-06T14:31:00.000-07:00

I plan to post a number of pieces that share a general subject. I've described my intentions in the companion blog myunpublishedworks2. Please stay tuned!

Thanks.

RJM

April 6, 2010

PTO Reform Ideas - 02: Examining Patentable Subject Matter

2010-03-12T13:21:00.000-08:00

At the February 26, 2010 Stanford Technology Law Review Symposium on PTO Reform Arti K. Rai, Administrator for External Affairs at the USPTO, and the Elvin R. Latty Professor of Law at Duke University, gave the Opening Remarks. Among other things, she summarized some ideas for internal reforms that the PTO is implementing.

One reform will give examiners more time and credit for EARLY evaluation of Patentable Subject Matter (35 USC 101). When Prof. Rai spoke about this, I was happy until the word "EARLY." Yes, give examiners more time and credit for doing their jobs. But please, NOT for an EARLY analysis of Patentable Subject Matter (PSM).

As I said in October 2009 in An Urgent Letter and Time Sensitive Proposal to David Kappos, as well as in my amicus brief to the Federal Circuit in In re Bilski, only claims IN CONDITION FOR ALLOWANCE should be analyzed for PSM.

EFFICIENCY AND ECONOMY
A primary reason to defer PSM analysis is that many apparent PSM problems will disappear when claims are amended or abandoned in response to rejections based on prior art or lack of enablement. By postponing PSM analysis until the claims are allowable, both the PTO and the applicants will save time and money.

NO DATA YET? GET SOME!
If PTO management doubts my efficiency / conservation of resources argument, it better collect some data. How many claims survive intact from application through allowance? Let us call this the allowed-without-amendment rate (AWOA), where both the numerator and the denominator are based on ONLY the claims submitted at filing.

Of course, that's not the total number of claims the PTO may have to examine before the case closes, because often additional claims are proposed during prosecution. The PTO should also know that statistic -- the number of claims at filing divided by the total number of claims considered, the inflation rate, as it were -- but I have never seen it reported. Since, however, the subject of the moment is early PSM analysis, the PTO can ignore all claims other than those submitted at filing, and perhaps should care most about the AWOA rate for independent claims.

Any AWOA rate will be hard for an ordinary person to calculate, but the PTO should be able to do it. The Index of Claims from the back of the file wrapper, nowadays available on PAIR in the Image File Wrapper (sometimes) in a document called Index of Claims (FWCLM) is the key.

The PTO should evaluate aggregate data as well as data for those classifications that have the highest rate of PSM rejections. (Does the PTO have data of PSM rejection rates by class? It needs that information, too.)

OTHER DATA, WHILE YOU'RE AT IT
The AWOA percentage rate may show some dependence on other factors: the number of applications in the chain, the total number of proposed claims during the life of the application, the years of experience of the examiner, the calendar date of the notice of allowance, etc. Perhaps the PTO has a statistician who can do some serious regression analysis.

GUESSING THE AWOA RATE
I do not know the percentage of claims submitted at filing that are allowed without amendment (whether independent claims only, or both independent and dependent), but I have my suspicions. It's not likely to be much higher than 10%, averaging over all applications, including those that are abandoned (in which case the rate is 0%).

If you are an experienced prosecutor, I would love to know your educated guess.

WHAT I CAN DO IN THE MEANTIME
I propose to make a quick survey of 100 published applications that have Image File Wrappers and a final result. I’ll use a random number generator to select my sample. I should be able to obtain a ballpark estimate on how many claims survive intact to allowance as a percentage of claims originally filed. I'm curious about the average of the percentages for each application in the survey, as well as the average for all applications taken together, and also about how different those numbers may be if I consider only independent claims or all claims. More on the survey will appear in this blog.

WHAT THE PTO CAN DO IN THE MEANTIME
Meanwhile, PTO management should reconsider the early-PSM initiative. I appreciate that the PTO's failure to moot Bilski v. Kappos while it had a chance to do so (see October 2009 Urgent Letter post mentioned above) complicates things. It is quite possible that the Supreme Court decision will mandate such early analysis. If that happens, the PTO should run to Congress for a repeal.

Of course, the PTO will need to be armed with the data I mentioned above, and its spokesperson must be someone who understands that, as the PTO’s own publicity states, the essence of a sensible and trustworthy patent system is that it compares each inventor's claims to the prior art. (See the PTO 2008 Annual Report, page 22, referenced as n.3 in the Urgent Letter.)

RESTATEMENT OF [MY VIEW OF] THE LAW
I also appreciate that the foolish rush to evaluate claims for PSM before they have been determined to be valid over the prior art goes back at least to the "threshold inquiry" language in In re Comiskey which in turn dates from a remark in Parker v. Flook. In my Urgent Letter, under the heading CLEARING UP THE "THRESHOLD INQUIRY" MISUNDERSTANDING, I addressed the posture of Flook and the lack of authority (or thought or analysis or understanding of the patent system) behind the Supreme Court's statement that PSM -- "what TYPE of discovery is sought to be patented" (emphasis mine -- "must precede" examination on the merits.

I won't go through it all again, but it is still true. Read Flook for yourself. Also think about how the purposes of a patent system are, or are not, served, by evaluating PSM without regard to whether or not the claims are enabled or read on the prior art.

Last rev 3/12/2010 9:20 pm

PTO Reform Ideas (thoughts inspired by the 2010 STLR Symposium): Part 01 - Introduction

2010-03-12T10:54:00.000-08:00

On Friday, February 26, 2010, the students of the Stanford Technology Law Review held a symposium on PTO reform. The organizers, Connor Williams and Tim Saulsbury, with help from Tim's co-Editor-in-Chief Vinita Kailasanath and SLATA President Laura Zapiain, did a stellar job. If I should mention anyone else, please tell me.

I was privileged to be a commentator for the presentation by Ron Katznelson, and I attended almost all the other sessions and talked with many attendees during the breaks. Everyone -- speakers, commentators, and audience -- gave me many things to think about.

The experience has motivated me to write a series of blog posts under the title "PTO Reform Ideas 2010."

The Opening Remarks for the Symposium were given by Arti K. Rai, Administrator for External Affairs at the USPTO, and the Elvin R. Latty Professor of Law at Duke University. I will therefore begin the series by commenting on some of the PTO's proposals for internal reform that Prof. Rai mentioned in her talk.

An Urgent Letter and a Time-Sensitive Proposal to David Kappos

2009-10-27T23:17:00.000-07:00

AN URGENT LETTER AND A TIME-SENSITIVE PROPOSAL TO:
DAVID KAPPOS, Director, United States Patent and Trademark Office

Everyone writes Open Letters and Modest Proposals. My letter and proposal, by contrast, are URGENT and TIME-SENSITIVE, respectively.

TO:
David Kappos,
Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office (USPTO)
P.O. Box 1450
Alexandria, VA 22313-1450

Dear Director Kappos:

As you know, Supreme Court oral argument in Bilski v. Kappos (n.1), is scheduled to take place on November 9.

I urge you, however, to ask that the case be dismissed as moot. You will moot it by withdrawing the rejection under 35 USC 101 against the Bilski application so that the application can be returned to the examiner for complete examination. If any Bilski claims survive, amended or not, as patentable over the prior art and supported by enabling disclosure, then, and only then, should anyone evaluate them for patentable subject matter ("PSM").

If you do that, you will truly demonstrate that the Patent Office is UNDER NEW MANAGEMENT.

Deciding whether there is patentable subject matter in claims that may never issue -- because, unless amended, they are invalid as anticipated, obvious or not enabled -- is akin to rendering an advisory opinion (something federal courts are not at liberty to do). It is both inefficient and illogical.

Until claims are in condition for allowance, grappling with whether they would confer exclusive rights to "unpatentable subject matter" is a diversion from the real business of the Patent Office, a misapprehension of the role of claims, a confession of ignorance of the salubrious and time-honored concepts of substantive patent law (anticipation, obviousness and enablement), and a betrayal of the Constitutional idea that progress is promoted when inventors receive temporary exclusivities. With your years of experience in practical patent law, I know I'm not telling you anything new.

The Patent Office hires examiners (n.2)with education in the areas of endeavor that patent applicants address. Examiners are not expected to be philosphers. Their primary job is to find prior art. See, e.g., the 2008 Patent Office Report at page 13 (n.3).

Last month, you quoted Mark Twain (n.4) about the need for a good patent system and good patent laws, and you and he are right: Good patents promote progress, and good patents are what patent offices issue after good prior art searches.

PROPOSAL CONCERNING ADMINISTRATIVE STRATEGY

Please then, pull the plug on Bilski. Then send a directive to the entire examining corps to restrict their rejections to 102, 103 and 112. Compliance with those statutory requirements is, after all, the stated purpose of 101: it says that people may obtain patents on new and useful inventions "subject to the conditions and requirements of this title."

Next, create a special 101 group, staffed by philosophers, whose job will be to make sure that claims in condition for allowance meet the latest judicial pronouncements about "patentable subject matter."

Will this run afoul of Supreme Court law? No. See below concerning the "threshold inquiry" misunderstanding.

Will applicants complain that their claims are getting too good a prior art search, and that in the bad old days, if they could overcome a 101 rejection, the examiners would allow their claims regardless of the prior art? I don't think so. Will third parties sue you for spending too much of your resources on searching the prior art? Again, I don't think so. Will the Federal Circuit fault you for caring about prior art, first and foremost? That one's doubtful, too.

PRECEDENT FOR WAITING UNTIL CLAIMS ARE IN CONDITION FOR ALLOWANCE

There is precedent within the Office for leaving certain thorny issues until claims are in condition for allowance. Two examples under current practice are provisional double patenting rejections and restriction requirements(n.5).

There is also a historical example: the short-lived experiment of having the Patent Office investigate allegations of violations of the duty of candor, the so-called "Fraud Squad" (n.6). Underlying that idea were concepts directly applicable to PSM investigations by the Patent Office:
1. Expertise
2. Efficiency
3. Ripeness

Expertise: Like inequitable conduct, the question of whether subject matter is patentable is something that ordinary examiners should not have to address during ordinary examination. It is outside their technical expertise.

Efficiency: The Patent Office should deal with thorny yet non-technological matters by having a small group of special employees who can develop expertise in this sort of analysis. Also, allowable claims are fewer in number and often narrower than original claims, and they reside in far fewer applications than the totality of all applications filed. The time and effort needed to evaluate PSM questions will be reduced if the analysis is deferred until after examination under 35 USC Sections 102, 103 and 112.

Ripeness: The public is not at risk from patent claims that never issue. A patent that never issues confers no right to exclude anyone from doing anything. Only issued claims have legal effect. See, e.g. Aro (Supreme Court 1961)(n.7) and quotations collected in Johnson & Johnston (Fed. Cir. 2002) (en banc) (n.8). Thus until the claims are deemed to be in condition for allowance, the question of whether or not they cover "patentable subject matter" is unripe.

Historically, the claims that have come under appellate scrutiny for PSM have been broader than the enabling disclosure, or have seemed to be - or even had previously been found to be, or are subsequently found to be - obvious. By waiting until the claims have been thoroughly examined for obviousness, and perhaps amended or abandoned as a result, the number of claim that have real PSM defects will very likely be reduced substantially.

REINSTATE A COMMITMENT TO "COMPACT PROSECUTION"

The patent office's own rules (the Manual of Patenting Procedure (MPEP)) require examiners FIRST to do a prior art search. Examiners must also include ALL grounds for rejection in the first Office Action. This practice, called "compact prosecution," is described in MPEP 2106 (n.9). and discussed by Judge Newman in her dissent (n.10) in In re Bilski (Fed. Cir. 2008) (en banc)(n.11). I also discussed it in my amicus brief to the Federal Circuit(n.12).

BAD APPLICATION, GOOD PRIOR ART

An application with no allowable claims that is then abandoned by the applicant is nevertheless beneficial to the system: when the application is published (and most applications are), its disclosure is good prior art against the applications of other people who seek the same claims or obvious variants of them.

PROPOSAL CONCERNING LITIGATION STRATEGY

Once you have freed your examiners to focus on the prior art without pressure to analyze claims for PSM, you can work on ensuring that the next time a court considers this issue, it has the Patent Office's public declaration of the reasons that the PSM question should only be considered with respect to claims fully vetted for compliance with the substantive statutory requirements.

Personally, I think that if the Patent Office makes sure that claims meet the "requirements of this title" as 101 says, it will never have to reach the 101 PSM inquiry. (Show me a claim that someone without much familiarity with patent law thinks covers "unpatentable subject matter" and I'll show you a claim that is either invalid over the prior art or not enabled.) But let the Patent
Office do the experiment. You will get plenty of help from creative applicants, whether they love or hate the patent system, I am sure.

THE PATENT OFFICE HAS TO EDUCATE THE COURTS AND THE PUBLIC ABOUT ENABLEMENT

Another good reason to get Bilski v. Kappos (n.1) off the Supreme Court's docket is that your brief to the Supreme Court (n.13) is incomplete. It has zero occurrences of "enabl!". Yet surely you, Director Kappos, when you first read O'Reilly v. Morse (n.14), Parker v. Flook (n.15), and many another case decided on PSM grounds, noticed that what the Court did not like about the claim at issue was that it was not enabled. The Court just lacked the sophistication to identify this as the problem, and instead took refuge in the seemingly more accessible concept of unpatentable subject matter. Multiple amici may point this out, but only the Patent Office has the credibility, the moral authority and -- most importantly -- the responsibility to teach the Justices that enablement is the mechanism in the statute that invalidates claims that cover more than the applicant teaches.

THE BEST YOU CAN HOPE FOR OUT OF BILSKI V. KAPPOS IS NOT GOOD ENOUGH

The best you can hope for in Bilski v. Kappos is affirmance of the Federal Circuit decision. But that decision saddles you with a continued burden on your entire examining corps to make 101 rejections. It also repeats the "threshold inquiry" misunderstanding (see below). In re Bilski at 950.

Your risks are even greater if the decision below is not affirmed. The Supreme Court could adopt something like Judge Mayer's dissent, overruling State Street (n.16) and AT&T (n.17). Or it could follow the concurrence of Judge Dyk joined by Judge Linn, who argue that the Founders used the term "useful Arts" with the intention of discriminating among inventors to deny patents to those whose inventions "organize human activity." Or the Supreme Court could formulate a different test, one that would affect even more applications, would be even harder to understand and apply, and would force your examining corps to spend even more time on 101 and even less time on substance.

DODGE THIS BULLET, AND NEXT TIME BE PETITIONER, NOT RESPONDENT

As respondent, your position is not ideal. In the 101 cases of the past, Benson (n.18), Flook (n.15) and Diehr (n.19) regarding computer technology, and Chakrabarty (n.20) regarding biotechnology, the Patent Office was the petitioner. Misguided as your predecessors may have been in wanting to use 101 to hold back progress, at least they went to the Court on 101 as petitioners. They therefore framed the question presented and had a better chance to control the debate.

WHAT TO DO IF PSM COMES UP IN INFRINGEMENT LITIGATION

Granted, you do not have any control over accused infringers raising 101 and appealing adverse decisions. You do, however, have the power sua sponte to find prior art that invalidates those patents, and can put them into reexamination. Or you can appear as an amicus if you think that this is the one in a zillion patents whose claims fully comply with the requirements of 102, 103 and 112 and yet ought to be ruled unpatentable.

I am optimistic, though, that infringement defendants may rely less on 101 once the Patent Office announces its policy that PRIOR ART comes first. 101 has always had the whiff of the last refuge of scoundrels. (Or maybe it is the opening bid of someone trying to avoid the hard stuff. Accused infringer Excel, in the AT&T v. Excel litigation lost under 101, but went on to invalidate AT&T's patent for obviousness (n.21). With hindsight, the parties, as well as the courts and the Patent Office, would have been better off if Excel had pursued the 103 defense first.)

CLEARING UP THE "THRESHOLD INQUIRY" MISUNDERSTANDING

Someone out there may say, "Wait. 101 is the 'threshold inquiry' according to Flook and Federal Circuit precedent. The Patent Office should reject claims under 101 before it begins to look at prior art or enablement." And they would probably quote from In re Comiskey (n.22):

As the Supreme Court stated in Parker v. Flook,
"[t]he _obligation_ to determine what type of discovery is sought to be patented [so as to determine whether it is "the kind of 'discoveries' that the statute was enacted to protect"] _must precede_ the determination of whether that discovery is, in fact, new or obvious." 437 U.S. 584, 593, 98 S. Ct. 2522, 57 L. Ed. 2d 451 (1978) (emphases added).

554 F.3d at 973.

There are many things wrong-headed about the Flook quote, but the good news is that you do not have to take it as law. It is not. First, the court in Flook cited no authority whatsoever for this statement. Second, the Court did not have to opine on the correct order of examination: nobody had challenged the rule that examiners must state all grounds for rejection at once ("compact prosecution, see discussed in text accompanying n.9). And remember, the petitioner was the Patent Office. Third, only the 101 rejection was in the record. Fourth, the Justices were ignorant of any other prosecution events, and specifically stated that

"For the purpose of our analysis, we assume that respondent's formula is novel and useful and that he discovered it."

Flook, n.15 above, at 588 (boldface mine). Thus the statement that a determination of patentable subject matter "must precede" examination comparing the claims to the prior art was both unsupported and dicta (n.23).

The fact that 101 is a smaller number than 102, 103 and 112 does not mean that Congress intended its requirements to be considered first. Nor can it justify consideration of PSM to the exclusion of the other "conditions and requirements of this title" which 101 expressly invokes. Fortunately, neither the Supreme Court nor the Federal Circuit has relied on numerology yet.

PATENT QUALITY

Using 101 so as not to have to issue patents, and to discourage people from applying for patents, will not improve patent quality. A patent office that issues no patents does not have good quality. It has no quality. Only by examining patents carefully and completely to make sure the requirements of 102, 103 and 112 are met can the Patent Office ensure good quality. Better searching of the prior art is the key to quality, as you have said, and protecting your examiners from the distraction of needless consideration of "patentable subject matter" is one sure way to improve searching.

ANGELS DANCING ON THE HEAD OF A PIN

The "patentable subject matter" inquiry always reminds me of the question that concerned philosophers of the Middle Ages: How many angels can dance on the head of a pin? (The late Columbia University physics professor Gerald Feinberg had a brilliant answer to this question (n.24), although not one that illuminates 101.)

Any practical person would answer, "Well, let's get an angel or two, place them on the head of a pin, invite them to dance, and see if they fit. If they do, we can add more angels." What practical people would never do is engage in a debate about floor space for angelic ballets until they had observed at least one dancing angel.

So, too, with 101. Until I see an otherwise allowable claim -- that is, a nonobvious, fully enabled claim -- that recites only a "law of nature, natural phenomena or abstract idea," I will be skeptical that any exists. (Bilski's claims apparently have never been subjected to examination for validity over the prior art. The claims in Comiskey (n.22) were rejected under 103 and the Board of Patent Appeals affirmed that rejection, yet the Federal Circuit refused to review the 103 decision because it was so eager to consider 101.) I suspect that a claim that is unpatentable ONLY because of 101 is today's equivalent of angels dancing on the head of a pin: it is not a problem real people in the real world ever encounter.

Please, Mr. Kappos, let your examining corps, in the limited time they are given to examine an application, do what they are supposed to do, what their training is supposed to make them qualified to do, and what the public relies on them to do: examine the claims to see if they are allowable over the prior art and adequately supported by the specification. Hire some philosophers to consider whether otherwise allowable claims are so broad as to claim - only - a "law of nature, natural phenomena, [or] abstract idea." Better patent quality may yet be achievable.

REFERENCES

n1. Bilski v. Kappos, No. 08-964, Supreme Court of the United States, oral argument scheduled for November 9, 2009.

n.2 Morris, Roberta J., Brief of Amicus Curiae in In re Bilski, 2007 US Fed Cir Briefs 1130 (2008 WL 1842256, 2008 U.S. Fed. Cir. Briefs LEXIS 27) examiner qualifications: quoting from "Patent Examiner Positions," Part 3. Qualification Requirements, available at http://www.uspto.gov/web/offices/pac/exam.htm (visited April 3, 2008), at *6-7 and *25-27.

n.3 United States Patent and Trademark Office Performance and Accountability Report, Fiscal Year
2008, available at http://www.uspto.gov/about/stratplan/ar/2008/2008annualreport.pdf

n.4 Kappos Speech: Delivered at the IPO annual conference on Sept. 14, 2009. Twain quote, and Twain's experience as a venture capitalist, discussed at http://myunpublishedworks.blogspot.com/2009/09/more-from-mark-twain-about-patents-and.html

n.5 See current Manual of Patenting Procedure, 8th ed rev 7 (July 2008), e.g., sections 706, 804, 806, 809, and 821.04.

n.6 Fraud Squad: Proposed changes to Rule 56 were set forth in 47 FR 21746 (1982); the proposed changes were subsequently abandoned, see PTO Notice Regarding Implementation of 37 C.F.R. Sec. 221.56, 1095 Off. Gaz. Pat. Off. 16 (Sept. 8, 1988). See also Manbeck, Harry, "Evolution and Future of New Rule 56 and the Duty of Candor: The Evolution and Issue of New Rule 56," 20 AIPLA Q.J. 136 (1992), text accompanying n8.

n.7 Aro Mfg. v. Convertible Top Replacement Co., 365 U.S. 336, 339 (1961)

n.8 Johnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046, 1052 (Fed. Cir. 2002)(en banc)

n.9 Manual of Patent Examining Procedure, 8th ed. rev. 7 (July 2008) Sec. 2106

n.10 In re Bilski (n.11 below), 545 F.3d 943, 996-7 (Fed. Cir. 2008) (en banc) (Newman, J. dissenting)

n.11 In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc)

n.12 Morris, Roberta J., Brief of Amicus Curiae in In re Bilski, 2007 US Fed Cir Briefs 1130 (2008 WL 1842256, 2008 U.S. Fed. Cir. Briefs LEXIS 27), discussing MPEP 2106 (n.9 above), at *7

n.13 Bilski v. Kappos, Brief for the Respondent, 2008 U.S. Briefs 964

n.14 O'Reilly v. Morse, 56 U.S. 62 (1853)

n.15 Parker v. Flook, 437 U.S. 584 (1978)

n.16 State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998)

n.17 AT&T Corp. v. Excel Communications, Inc. , 172 F.3d 1352 (Fed. Cir. 1999), cert. denied, 528 U.S. 946 (1999)

n.18 Gottschalk v. Benson, 409 U.S. 63 (1972)

n.19 Diamond v. Diehr, 450 U.S. 175 (1981)

n.20 Diamond v. Chakrabarty, 444 U.S. 1028 (1980)

n.21 AT&T Corp. v. Excel Communications, Inc. , 52 USPQ2d 1865 (D.Del. 1999) (103 decision)

n.22 In re Comiskey, 499 F.3d 1365, 1371 (Fed. Cir. 2007), vacated and on rehearing adhered to and amended, 554 F.3d 967, 973 (2009)

n.23 The flook in Flook: The observation that this sentence in Flook (full citation at n.15 above),

The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious.

is unsupported dicta may have escaped the attention of courts, attorneys and scholars. (An AIPLA brief from a 1979 case called Diamond v. Franklin avoids the issue by following the quote with the statement that "It is not with this premise with which we take issue.") But you can read Flook yourself, and so can your solicitors. You won't find the sentence followed by a citation to any case or statute. You won't find any justification for performing a 101 analysis on claims that are not yet in condition for allowance. You won't find any acknowledgment that applicants faced with rejections under 102, 103 and 112 will often narrow their claims or abandon them. And you won't find that the controversy before the Court required it to make any determination about the chronology or prioritization of Patent Office examination. What you will find, though, is that ever since Flook, people repeat the sentence -- with the added characterication that "what type of discovery is sought to be patented, i.e. PSM, is a "threshold inquiry" -- as if it made total sense. It might make total sense, I suppose, to someone with limited exposure to patent practice, only the foggiest idea of what the words anticipation, obviousness and enablement mean, and only superficial knowledge of what the Patent Office does. To someone of your breadth and depth of patent law experience, Mr. Kappos, the best that can be said for the sentence is that it makes sense only if it does not mean what it seems to say.

n.24 Prof. Feinberg and the Dancing Angels: The day I was to take my physics qualifying exam at Columbia, I ran into Prof. Gerald Feinberg (now deceased). He asked if I was ready for the test, and I replied that I was even ready to answer how many angels could dance on the head of a pin. Without missing a beat, Prof. Feinberg said, "That's easy. It just depends if they are fermions or bosons."

Federico's Commentary should be posted on uspto.gov

2009-10-03T19:07:00.000-07:00

Today I sent a message to the Patent Office's webmaster asking that the website post Federico's Commentary to the 1952 Patent Act. Federico's Commentary (sometimes "Commentaries") is mentioned, but without a link to the text itself, in a 2007 document from the Official Gazette: http://www.uspto.gov/web/offices/com/sol/og/2007/week37/patchng.htm (the notorious final rules for continuing applications, the subject of the litigation brought by Tafas and GlaxoSmithKline against the Patent Office).

The Commentary, which provides important historical information about the drafting of the Patent Act of 1952, used to be included by West Publishing in the front of the printed volume of 35 USCA (back in the days when lawyers looked for statutes in books). At some point after West stopped doing this, the Journal of the Patent and Trademark Office Society (JPTOS) reprinted Federico's Commentary at 75 JPTOS 161 (1993). This is the citation in the 2007 Official Gazette article. Later JPTOS published a small booklet with both the Commentary and a speech by Judge Rich that also addressed the history of the 1952 Act. I own a copy of this booklet, but I believe it went out of print long ago.

As far as I can tell, Federico's text is not available from Lexis or Westlaw. Only HeinOnline has 75 JPTOS 161. A publicly available, word-searchable copy of Federico's Commentary ought to be on uspto.gov.

If you agree, please write the webmaster, too.

If you don't know what Federico's Commentaries are, or who P J Federico was, here is some information:

P J Federico was Examiner-in-Chief at the Patent Office at the time he helped draft the Patent Act of 1952 and when he wrote the Commentary.
The 2007 Official Gazette document (linked above) described the Commentary as follows:
Following enactment, Federico gave a series of lectures to teach the patent bar about the new law. Federico's lectures were transcribed, consolidated, and reprinted for many years in title 35, United States Code Annotated. See 35 U.S.C.A. sections 1 to 110 (1954). The Federal Circuit has considered Federico's Commentary to be "an invaluable insight into the intentions of the drafters of the Act." Symbol I [Symbol Techs., Inc. v. Lemelson Med., 277 F.3d 1361, 161 U.S.P.Q.2d 1515(Fed. Cir. 2002)] , 277 F.3d at 1366, 61 U.S.P.Q.2d at 1519.

Federico is barely mentioned on upsto.gov. His title, Examiner-in-Chief, has also disappeared. It had been a statutory Patent Office position mentioned in 35 USC 3 and 7 and associated with the Board of Appeals (later the Board of Patent Appeals and Interferences). It was eliminated in 1999 with the enactment of PL 106-113 which changed, among so many other things, the titles of positions at the PTO.

Besides the 2007 Official Gazette document above, uspto.gov provided a few other hits for "Federico's Commentaries", "P J Federico", and "Federico Examiner":

A reference to the Commentaries in Hal Wegner's 2005 Testimony concerning the interim rules for the CREATE Act;
A reference in In re Nuijten to Federico's 1936 JPOS article about the Patent Act of 1793;
A reference to Federico in then Acting Commissioner Q. Todd Dickinson's remarks at the Memorial Service for Judge Giles Rich
Most interestingly, a reference to 'Federico, "Commentary on the New Patent Act," 35 USCA at 30 (1954)' cited in a ruling on a challenge to the grading of the October 1990 Patent Bar Exam, specifically a question concerning 35 USC 119, and case law under its predecessor RS 4887.

PS Federico also is cited in, e.g., Graham v. Deere, 383 US 1, 7 (1966), for that 1936 Journal of the Patent Office Society (18 JPOS 237) article about the Patent Act of 1790. I have seen that article and my recollection is that Federico did not yet have the title Examiner-in-Chief. I believe I have also seen his obituary but was unable to find it today. I will post any additional information when I find it, unless, of course, uspto.gov gets to it first.

Mark Twain on Patents and Inventions

2009-09-21T16:50:00.000-07:00

On September 14, 2009, David Kappos, new Director of the United States Patent and Trademark Office, spoke at the annual conference of Intellectual Property Owners Association ("IPO"). See
http://www.uspto.gov/main/homepagenews/2009sep14_kappos_ipo_speech.htm. In his conclusion, he quoted from Mark Twain's A Connecticut Yankee in King Arthur's Court:

“A country without a patent office and good patent laws is just a crab and can’t travel anyway but sideways or backwards.”

When that quote first came to my attention back in December 2001
(It was on the USPTO homepage. Perhaps that's where Kappos first saw it, too? Or maybe Kappos himself sent it to the USPTO?)
I grabbed my copy of The Autobiography of Mark Twain by Samuel Clemens (New York 1959, original copyright 1917), to look for references to patents. Sure enough, chapter 45 was right on point. Here is my slightly abridged transcription:

"An old and particular friend of mine unloaded a patent on me, price fifteen thousand dollars. It was worthless and he had been losing money on it a year or two, but I did not know those particulars because he neglected to mention them. He said that if I would buy the patent he would do the manufacturing and selling for me. So I took him up. Then began a cash outgo of five hundred dollars a month. ....

"At last, when I had lost forty-two thousand dollars on that patent I gave it away to a man whom I had long detested and whose family I desired to ruin. Then I looked around for other adventures. That same friend was ready with another patent. I spent ten thousand dollar in eight months. Then I tried to give that patent to the man whose family I was after. He was very grateful but he was also experienced by this time and was getting suspicious of benefactors. He wouldn't take it and I had to let it lapse.

"Meanwhile, another old friend arrived with a wonderful invention. ...

"Finally, when I had spent five thousand on this enterprise the machine was finished, but it wouldn't go. .... I took some stock in a Hartford company which proposed to make and sell and revolutionize everything with a new kind of steam pulley. The steam pulley pulled thirty-two thousand dollars out of my pocket in sixteen months, then went to pieces and I was alone in the world again, without an occupation.

"But I found one. I invented a scrapbook -- and if I do say it myself, it was the only rational scrapbook the world has ever seen. I patented it and put it in the hands of that old particular friend of mine who had originally interested me in patents and he made a good deal of money out of it. ...

[Another speculation -- not involving a patent this time -- leaves Twain out by $23,000, but ultimately he is repaid. This amount is in the check in his pocket in the next paragraph.]

"... General Hawley sent for me to come to the Courant office. I went there with my check in my pocket. There was a young fellow there [who] was with Graham Bell and was agent for a new invention called the telephone. He believed there was great fortune in store for it and wanted me to take some stock. I declined. I said I didn't want anything more to do with wildcat speculation. Then he offered the stock to me at twenty-five. I said I didn't want it at any price. [The price kept coming down until the man] said I could have a whole hatful for five hundred dollars. But I was the burnt child and I resisted all these temptations, resisted them easily, went off with my check intact, and next day lent five thousand of it on an unendorsed note to my friend who was going to go bankrupt three days later.

"About the end of the year (or possibly in the beginning of 1878) I put up a telephone wire from my house down to the Courant office, the only telephone wire in town and the first one that was ever used in a private house in the world. {emphasis Twain's}

"The young man couldn't sell me any stock but he sold a few hatfuls of it to an old dry-goods clerk in Hartford for five thousand dollars. That was that clerk's whole fortune. He had been half a lifetime saving it. It is strange how foolish people can be and what ruinous risks they can take....

"We sailed for Europe on the 10th of April, 1878. We were gone fourteen months and when we got back one of the first things we saw was that clerk driving around in a sumptuous barouche with liveried servants all over it -- and his telephone stock was emptying greenbacks into his premises at such a rate that he had to handle them with a shovel. It is strange the way the ignorant and inexperienced so often and so undeservedly succeed when the informed and the experienced fail."

Notes

US Patent No. 140,245, "Improvement in Scrap-books," was issued to Samuel L. Clemens on June 24, 1873.

Corporations Can't Vote! Comment on Citizens United v. FEC oral argument

2009-09-10T10:49:00.000-07:00

Today on NPR Nina Totenberg gave her usual excellent report on a hearing before the Supreme Court. This one was in Citizens United v FEC. One of the colloquys she mentioned was between petitioner's counsel Ted Olson (Theodore F) and the Justices concerning whether corporate 'persons' should have the same rights as natural persons. As far as I could tell, *nobody* - not current Solicitor General Kagan, not any of the other Justices - pointed out that corporations do NOT have the right to VOTE. The right to vote is definitely a right reserved only to natural persons. It makes sense, then, to restrict to natural persons the right to contribute to the campaigns of the candidates for whom only natural persons can vote.

I checked the briefs very quickly, and it looked like this key fact was not made explicit by any of the amici, either, although the League of Woman Voters did mention the "bedrock equality principle of one person, one vote." Which does not apply to corporate "persons."

APPLICATION FOR PTO DIRECTOR

2009-02-25T14:55:00.000-08:00

Soon the Obama administration will pick the next director of the United States Patent and Trademark Office. If I were in charge, I would want anyone who wished to be considered for this important position to fill out an application something like this.

Claim Construction and the Burden of Proof

2009-02-02T11:32:00.000-08:00

In today's decision in Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc., (February 2, 2009, No. 2007-1340), Judges Prost and Bryson split with Dyk on the issue of construing the word "wound" in KCI's patents, a term whose meaning was disputed in connection with Blue Sky's obviousness arguments.

Neither the majority nor the dissent alluded to the burden of proof (BOP) on the issue which gave rise to the claim construction. Since I am currently working on an article about claim construction, and how the burden of proof is an excellent and underused tool for resolving close questions as to the meaning of claim language, I responded to a report on Kinetic Concepts by Hal Wegner in his excellent newsletter as follows:

Dear Hal,

You write:

> Indeed, it is difficult without an intensive study
> of the record to determine whether the majority
> or the dissent has properly construed the claims
> under Federal Circuit precedent: Indeed, it is
> possible that both constructions are acceptable.

I'm 100% with you: I have long (LONG! since Cybor in 1996 or before!) believed that criticizing the Federal Circuit for reversals and splits on claim construction failed to take into account that, if the parties appeal a case to the Federal Circuit, the chances are VERY high that the question has no clear answer. If someone had a strong winning argument, the case would settle. Patent litigation is very expensive, in time and money and energy, and prolonging it only keeps real parties from their real business. Reasonably prudent people know that. (Patent holding companies change the equation, but that's a subject for another day.)

But then you conclude:

> Kinetic Concepts thus once again points to the
> continued imperative of statutory claim
> construction reform.

And that's where you lose me. What nobody (and absolutely not the court) seems to realize is that BURDENS OF PROOF (BOPs) help decide these questions. Of course, to take into consideration the BOP, the court has to understand enough OUTSIDE the patent and its file history and cited prior art to know whether the reason that the parties dispute the meaning of words in a claim is for INFRINGEMENT or VALIDITY. But armed with that understanding, the law is in fact clear on how to handle 50-50 cases. If infringement is the ultimate issue for which claim construction is being argued, then the accused infringer should win: the patent owner has the burden of proof on infringement. If validity is the ultimate issue, then the patent owner should win.

In _Kinetic Concepts_ my fast reading tells me that the disputed construction of the word "wound" related to obviousness. ["Defendants argue that the district court erred by vacating its construction of "wound" when the term's meaning was *critical to the obviousness inquiry*" (page *9, emphasis mine).] That means the patent owner should win. Since it had won below, the federal circuit majority (Prost and Bryson) was correct and the dissent (Dyk) was wrong.

***

If the trial and appellate courts would remember to consider the burden of proof (and higher quantum of proof on validity) on the issue for which claim construction is required, they could deal with 50-50 cases more easily, and I submit, more fairly and predictably. Maybe statutory changes would not be
needed.

Thanks as always for your newsletter.
RJM

A quick review of articles, court decisions and the web suggests that neither lawyers nor judges have taken advantage of the assistance that BURDENS OF PROOF provide in resolving close questions of claim constructions. Factoring in the burden of proof helps resolve motions for summary judgment (cf. Celotex Corp. v. Cattrett, 477 US 317, 322 (1986)) and preliminary injunctions, so why not claim construction?

I am working on a much longer footnoted piece on this subject, but meanwhile, when the intrinsic evidence (the patent and its file history and the cited prior art) and the extrinsic evidence -- uncited art, dictionaries, etc. -- do not make one side's interpretation of words in the claim of a patent any more plausible than the other side's interpretation, the burden of proof on the issue to which the claim construction relates provides a reasonable method of decision.

My Amicus Brief in Bilski

2008-04-07T12:53:00.001-07:00

Here is a link to the pdf version of my amicus brief in In re Bilski.

The Missing V-Word in KSR v. Teleflex : VACATED

2007-05-04T09:43:00.000-07:00

Everyone is writing about the Supreme Court's decision in KSR v. Teleflex. I have already written a little about it, in anticipation of the decision (IPToday, April 2007, pp. 29-31), and I am not going to jump in again to decide whether the sky has fallen now, or not. (My first entry into blogdom wondered about the falling sky after MedImmune, so perhaps that will be a theme of myunpublishedworks, the blog.)

No, what I want to mention is that what the Federal Circuit did in Teleflex was to VACATE the summary judgment of obviousness, and remand for FINDINGS. It absolutely did NOT reverse. It absolutely did NOT find the patent in suit to be nonobvious.

Who is misleading us?

Among others, the Supreme Court itself. The word "vacat!" is absent entirely from the opinion. In fact, the appeals court decision is affirmatively characterized as a REVERSAL, rather than a VACATING. (See REFERENCES below for supporting quotations.)

I am pretty sure I learned in law school that VACATING was not the same as REVERSING, and I am pretty sure that when I have practiced law, everyone acted like those two words were different, at least for the parties to the suit. But maybe everyone on the Court is so far removed from either law school or practice that they see things differently?

Who is helping keep us misled?

The BNA PTCJ, among others. Its HIGHLIGHTS summary of the cases says: "Reversing and remanding a ruling of patent invalidity, the high court ...." (emphasis mine) No, there was no ruling from the Federal Circuit "of patent invalidity." There was not even a ruling of patent pro-validity. The only thing available for reversal by the Supreme Court was a vacating of a district court's ruling of invalidity. It's complicated, but not impossible.

Another surprising perpetrator is Hal Wegner, whose excellent newsleter had this parenthetical remark,

"(It would have been truly astounding for the Court to have affirmed a holding of 103 nonobviousness on the merits, something the Court the Court has never done in the entire history of this section of the statute.)"

I wrote him about how truly astounding it would be for the Court to affirm something not before it. He thanked me, and then issued a correction about other things in that news item, but not the implication that the Federal Circuit had made a HOLDING OF NONOBVIOUSNESS. I remain astonished.

I have not checked the blogosphere enough yet, but I can confirm that, since the Supreme Court decision was announced, the words VACATED or VACATING and KSR have not yet appeared in the excellent blog of Dennis Crouch's www.patentlyo.com Or at least I could not find those words using wordsearch and google.

I start to wonder whether my copy of the Federal Circuit's decision is different from everyone else's.

Those INFAMOUS "gas pedal" patents: another shooting star in the (falling) sky?

Many (including Wegner) are pushing hard on all those "gas pedal" patents out there. But how many belong to KSR itself? (Answer: 15, on a search today of uspto.gov, looking for 'pedal' and assignee=ksr.) KSR's big victory in the Supreme Court makes its investment in those patents, if not also the research and development that led to them, look like a poor use of corporate time and money.

Will a whole new class of class action suits come out of KSR: stockholders claiming that their money is being misspent on acquiring big patent portfolios -- so often on minor improvements in crowded arts (where the arts may be crowded because of that very company's own efforts)? All that money on patent attorney fees and fees to the PTO, all that researchers' time wasted meeting with patent counsel, etc., etc., spent getting patents that are of no value does not sound like intelligent management. (The defense bar, with the patent bar to serve as experts, may be thrilled.)

Perhaps, though, the foreign counterpart patents are worth something in other countries, ones with a more pro-patent climate? And perhaps the US patents could be worth something again when the pendulum swings back, if the patents have not yet expired, and if their maintenance fees have been paid?

But maybe I exaggerate.

REFERENCES

Cases:

KSR Int'l Co. v. Teleflex Inc., 2007 U.S. LEXIS 4745 (U.S. 2007): The Supreme Court thinks that it was reviewing a reversal of invalidity:

At slip op. 29: "...The District Court granted summary judgment for KSR. [new paragarph] With principal reliance on the TSM test, the Court of Appeals *reversed.*" (emphasis mine -RJM)

Teleflex, Inc. v. KSR Int'l Co., 119 Fed. Appx. 282 (Fed. Cir. 2005) , http://www.fedcir.gov/opinions/04-1152.pdf. Proof that the appeals court VACATED, rather than reversed:

At 283: "[W]e _vacate_ the grant of summary judgment and remand the case to the district court for further proceedings." (underlining by Federal Circuit)

At 286: "We agree with Teleflex that the district court did not apply the correct teaching-suggestion-motivation test. We also agree that, under that test, genuine issues of material fact exist, so as to render summary judgment of obviousness improper. For these reasons, we vacate the decision of the district court and remand for further proceedings consistent with this opinion." (underlining of the word "vacate" in the last sentence appears only the LEXIS version of the decision, but on on the Federal Circuit's pdf.)

At 290: "(3) We consequently _vacate_ the decision of the district court and remand the case for further proceedings on the issue of obviousness, and, if necessary, proceedings on the issues of infringement and damages." (underlining by Federal Circuit)

Other References

Roberta J. Morris, "Thoughts on Patent-Bashing, Obviously," _Intellectual Property Today_, April 2007, at 29-31. Discussion of KSR is on 30-31.

Forum Shopping and MedImmune, SanDisk, and patent DJs

2007-03-30T09:17:00.000-07:00

Where is the F word in MedImmune and SanDisk?

I mean forum as in forum shopping and choice of forum. The word FORUM does not appear in MedImmune and it does not appear in SanDisk. Why? Would the judiciary deny that expanded declaratory judgment (DJ) jurisdiction may be an incentive to forum shop and forum race?

The Supreme Court's decision, and the Federal Circuit's view of immediately-famous footnote 11, may effectively transfer from patent owners (POs) to accused infringers (AIs) the right to choose the forum and the right to choose the time when patent infringement suits begin.

If the facts of MedImmune or SanDisk had been a final exam question (before the Supreme Court had ruled), any student who failed to mention forum shopping would have gotten an F from me. Now that the Supreme Court has ruled, I think the Justices get an F. All of them: even dissenting Justice Thomas. He omitted the F word, too.

Respondent/PO Genentech did mention forum shopping once, in n32 of its brief (not exactly up front and center), but the MedImmune amici were remarkably timid about it. If you wordsearch among the briefs, you get only one hit about forum shopping. It is from University of Akron IP professors Jay Dratler, Jr., A. Samuel Oddi, and Jeffrey M. Samuels. They side with MedImmune, which may explain why they mention forum shopping and then explain that Article III is not about fairness but about separation of powers. I don't think the two are mutually exclusive. I rather thought the Constitution was based on principles of fairness and rightness throughout. Isn't the idea behind "case or controversy" that people should be able to seek redress when they need it, and that other people should not be unnecessarily hounded by people seeking redress who do not need it? Then, too, declaratory judgment actions sound in equity, to use an antique turn of phrase. Equity is definitely about fairness.

MedImmune represents a triumph of the patent bashers and the defense bar mentality to a degree that even patent defendants may come to dislike (the clients, not the lawyers: we lawyers will be enjoying full employment). Most patent defendants have a portfolio of patents of their own. (A quick search today shows that MedImmune is assignee on more than 60 patents, SanDisk on more than 600.) Now their licensees and maybe potential licensees and possibly even people who look at one of their patents and think it's interesting, will all have MedImmunity to start a lawsuit whenever they want, wherever they want.

(Am I overstating? Probably. But imagine you are thinking about making a new product and you find a prior art patent that might cover what you want to do. You study up and find a plausible invalidity argument. The US system does not have an opposition proceeding, and you think reexamination is too pro-patentee or time consuming or otherwise undesirable, so you ask the patent owner for a license. If you are offered anything less than a sweetheart deal, you sign up and then file a MedImmune suit. Farfetched? Or is it happening as I write? And are patent owners now sweetening the sweetheart deals even more, trying to make an upfront payment of what economists call rent, the rent that MedImmune has bestowed on licensees?)

THE BLOGOSPHERE DOES NOT LIKE THE F WORD, EITHER

The blogosphere seems not to have mentioned forum shopping and MedImmune in the same breath yet, either. Please correct me if I'm wrong. The hits I get by searching the web for the two words - forum MedImmune - do not lead to anything relevant of recent date. Old posts have the two words somewhere, but not tied together.

I did find a good paper from Skadden that was written before the Supreme Court had ruled. It mentions that a PO who is the second to sue may be able to get dismissal or transfer of an AI's first-filed DJ. But after MedImmune, what equities favor the second-to-file PO?

OTHER MISSING CONCEPTS: THE SANCTITY OF CONTRACTS, BARRIERS TO ENTRY, and RECIPROCITY OF SUIT

These recent decisions attack the sanctity of contracts, in particular patent licenses, but don't admit it. Upholding contracts was important in Lear v. Adkins, but had to make way for "the important public interest in permitting full and free competition in the use of ideas which are in reality a part of the public domain." In MedImmune, the public interest was not invoked at all.

Lear was also concerned with that perhaps-old-fashioned antitrust concept, the "barrier to entry." (395 U.S. 653, 669 n.16). Patent licensees have the benefit of the patent as a barrier to entry, even while they attack the patent in court. Perhaps potential new entrants, knowing of the suit, find the patent to be no barrier at all? But maybe they just see it as a sinking barrier, not yet sunk and possibly buoyant. In that case, the theory goes, the patent helps the licensee-plaintiff's competitive position while the suit is wending its way to a conclusion. We can never run the experiment both ways to learn about what would happen with and without the lawsuit, but I wonder if some economist or law-economist has compiled any historical data on licensed patents, comparing the level of new entry into a market where patents are later invalidated with the level where the patents are not challenged, or are upheld or subject to settlement. There probably is no such study, because if there were, some brief would have mentioned it and there would have been a footnote about it somewhere.

RECIPROCITY

In post-MedImmune licensing negotiations, a licensee has more liberty to start a suit than the licensor-PO, who must await a colorable breach. Licenses of the future may RECITE that initiating a DJ is a breach, but at that point the horse is stolen: the forum and the timing have been chosen by the AI.

The Supreme Court did not answer the question whether Genentech, having received the royalty payment from MedImmune, albeit under protest, could sue. What it said was:

"Assuming (without deciding) that respondents here could not claim an anticipatory breach and repudiate the license, the continuation of royalty payments makes what would otherwise be an imminent threat at least remote, if not nonexistent. As long as those payments are made, there is no risk that respondents will seek to enjoin petitioner's sales. Petitioner's own acts, in other words, eliminate the imminent threat of harm. The question before us is whether this causes the dispute no longer to be a case or controversy within the meaning of Article III."

(127 S.Ct. at 772, internal footnote n8 omitted, emphasis mine). It then proceeded to answer that question "NO."

If Genentech did sue, then MedImmune could have the suit dismissed on the basis that it was licensed and had done nothing to breach. Is there anything to stop it from the next day starting a suit in a forum of its choice? What could Genentech do then: could it get the suit back to the forum it had preferred earlier?

The fact that all district court appeals are heard by the Federal Circuit (except for Vornado actions) does not eliminate forum shopping. District courts differ in their patent intelligence, the general crowdedness of their dockets, the sympathies of their jurors, etc. etc. and in fact MOST patent lawsuits never reach the Federal Circuit. The District Court is the main event in patent cases, as Judge Rader said it should be in Cybor, but that is a subject for another blog.

MedImmune, by keeping the license alive, deprived Genentech of a basis for suit, yet it has - per the Supreme Court - a right itself to choose the time and place of suit. Maybe that resolution is a great boon to society, but it would be nice to have been told why.

THE SKY IS FALLING

Every big patent decision is met by members of the bar saying that this will end life as we know it. Usually, however, life goes on pretty much as before. Is this the exception?

If ever a decision was designed to encourage litigation and to discourage the peaceful, intelligent and lower-cost method of contracting to resolve disputes, it strikes me that MedImmune is it.

The only good news for patent owners is that now they get to be defendants, a more favored class in patent cases these days.

References

Cybor: Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1474 (Fed. Cir. 1998) (Rader, J., concurring in the judgment)

Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002)

Lear: Lear, Inc. v. Adkins, 395 U.S. 653 (U.S. 1969)

MedImmune: MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (U.S. 2007).

MedImmune Briefs:
- Genentech: Brief for Respondent Genentech, Inc., (No. 05-608), July 26, 2006, 2006 U.S. S. Ct. Briefs LEXIS 1676, 2006 WL 2190748, at page *44.
- University of Akron Professors' Brief to the Supreme Court: Brief of Three Intellectual Property Professors as Amici Curiae in Support of the Petitioner (No. 05-608) , 2006 U.S. S. Ct. Briefs LEXIS 419, 2006 WL 1355595, at *13.

SanDisk: SanDisk Corp. v. STMicroelectronics, Inc. (Fed. Cir., March 26, 2007)

Skadden paper: http://www.skadden.com/content/Publications/Publications1219_0.pdf
(see page 5, point 5)