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; and 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), they 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], too.

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.

Broken link fixed and typo corrected 20140402

Claim Construction and the Burden of Proof

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.