Professor Mark Lemley's article Without Preamble (2019-2020) relates to the topic of claim construction, which can determine the outcome of patent litigation.
As background, a US patent claim has three parts: (1) a preamble, which states what the invention is or its environment, (2) a transitional term (e.g., comprising), and (3) a body that lists the steps of a method or the structure of a system. Generally, courts hold a preamble is a claim limitation "if it gives life, meaning and vitality" to the claim or recites essential structure or steps. Yes, it's a case by case determination. Perhaps a more practical test is whether the preamble is referenced repeatedly in the body. If so, the preamble is a claim limitation, i.e., for purpose of determining validity and infringement. See Mueller, Patent Law (2020).
Turning to Professor Lemley's Abstract:
"The Federal Circuit is ignoring a significant share of the words of patent claims. That's a bad idea as a matter of policy. It is virtually impossible to tell when the court is going to do it. And it’s inconsistent with the idea that the claims define the scope of the invention, and with how the Supreme Court thinks about claim construction and its closest analogies, statutory interpretation and construing contracts.
The culprit is a labyrinthine set of rules the Federal Circuit uses to decide whether or not to include the 'preamble' to a patent claim as a part of the claim. The words of the preamble, which can sometimes amount to more than half of the whole claim, might or might not be treated as part of the invention depending on a complex of factors, including whether the claim reads as a complete sentence without it, whether the same words are used in both the preamble and the body of the claim, whether the body of the claim includes the magic word 'said,' whether the preamble merely claims a use, benefit, or environment for the claim, and whether the preamble 'is necessary to breathe life and meaning into the claim.'
In Part I I discuss the bizarre body of law around patent claim preambles and how the law got to its current confused state. In Part II I suggest that the rule serves no useful purpose, and that if and when the Supreme Court gets such a case it should and will sweep the rule away. Patent applicants should be drafting patents with that fact in mind, and the rest of us should be interpreting claims with one eye on the fact that this is a doctrine whose days are numbered."
In short, this article asks courts drop the case by case determination test we use today on whether the preamble is a part of the claim just as much as the body of the claim. Saying the preamble always counts as proposed removes uncertainty, but means more patent claims will be held to not infringe. Further, this helps defendants rather than patent owners since a non-infringement defense is preferred to proving invalidity in court.
Copyright © 2020 Robert Moll. All rights reserved.
Showing posts with label academic papers. Show all posts
Showing posts with label academic papers. Show all posts
Tuesday, May 26, 2020
Wednesday, February 6, 2019
BigPatent Data - Research Tools for Smarter Patent Prosecution
This BigPatent Data website and blog promises "tools for smarter patent prosecution." How can I object to that much less the chutzpah to illustrate two cases each having four ex parte appeals with a dung beetle pushing "it" up the hill?
Copyright © 2019 Robert Moll. All rights reserved.
Copyright © 2019 Robert Moll. All rights reserved.
Monday, January 28, 2019
Harvard Business School Working Paper - Some Facts of High-Tech Patenting
Michael Webb, Nick Short, Nicolas Bloom, Nicholas and Josh Lerner's Harvard Business School (HBS) Entrepreneurial Management Working Paper No. 19-014 and HBS Finance Working Paper No. 19-014 Some Facts of High-Tech Patenting (July 2018) provides an overview on technologies people are seeking to patent. See the charts on pages 5-7.
From the abstract: "Patenting in software, cloud computing, and artificial intelligence has grown rapidly in recent years. Such patents are acquired primarily by large US technology firms such as IBM, Microsoft, Google, and HP, as well as by Japanese multinationals such as Sony, Canon, and Fujitsu. Chinese patenting in the US is small but growing rapidly, and world-leading for drone technology. Patenting in machine learning has seen exponential growth since 2010, although patenting in neural networks saw a strong burst of activity in the 1990s that has only recently been surpassed. In all technological fields, the number of patents per inventor has declined near-monotonically, except for large increases in inventor productivity in software and semiconductors in the late 1990s. In most high-tech fields, Japan is the only country outside the US with significant US patenting activity; however, whereas Japan played an important role in the burst of neural network patenting in the 1990s, it has not been involved in the current acceleration. Comparing the periods 1970-89 and 2000-15, patenting in the current period has been primarily by entrant assignees, with the exception of neural networks."
The article notes "the growth of software patents increased sharply after 2000, particularly when patent applications are considered. The number of software patent applications grew by 168.6% between 2000 and 2013. This growth mirrors that of patents more generally: patent applications overall grew by 122.6% over the same period. As we move into more recent technologies, such as cloud, drones, machine learning, and self-driving cars, the growth is far more dramatic. Meanwhile, the number of issued awards in internal combustion engines and pharmaceuticals, included for the sake of comparison, has been nearly flat."
Copyright © 2019 Robert Moll. All rights reserved.
From the abstract: "Patenting in software, cloud computing, and artificial intelligence has grown rapidly in recent years. Such patents are acquired primarily by large US technology firms such as IBM, Microsoft, Google, and HP, as well as by Japanese multinationals such as Sony, Canon, and Fujitsu. Chinese patenting in the US is small but growing rapidly, and world-leading for drone technology. Patenting in machine learning has seen exponential growth since 2010, although patenting in neural networks saw a strong burst of activity in the 1990s that has only recently been surpassed. In all technological fields, the number of patents per inventor has declined near-monotonically, except for large increases in inventor productivity in software and semiconductors in the late 1990s. In most high-tech fields, Japan is the only country outside the US with significant US patenting activity; however, whereas Japan played an important role in the burst of neural network patenting in the 1990s, it has not been involved in the current acceleration. Comparing the periods 1970-89 and 2000-15, patenting in the current period has been primarily by entrant assignees, with the exception of neural networks."
The article notes "the growth of software patents increased sharply after 2000, particularly when patent applications are considered. The number of software patent applications grew by 168.6% between 2000 and 2013. This growth mirrors that of patents more generally: patent applications overall grew by 122.6% over the same period. As we move into more recent technologies, such as cloud, drones, machine learning, and self-driving cars, the growth is far more dramatic. Meanwhile, the number of issued awards in internal combustion engines and pharmaceuticals, included for the sake of comparison, has been nearly flat."
Copyright © 2019 Robert Moll. All rights reserved.
Saturday, January 19, 2019
IP Watchdog - Sherry Knowles Scrutinizes an Activist Supreme Court and its Unconstitutional Approach to Patent Eligibility
Here's a fresh analysis of patent eligibility law. See IP Watchdog: Sherry Knowles Scrutinizes an Activist Supreme Court and its Unconstitutional Approach to Patent Eligibility for an interesting interview and article.
From the abstract of the article: "A or B” is inconsistent with “A not B.” This describes why the application of 35 U.S.C. § 101 by the U.S. Supreme Court is inconsistent with the U.S. Constitution, and thus unconstitutional. This article tracks the legislative history of patent eligibility from 1790 to 2011, and the parallel but inconsistent U.S. Supreme Court case law during this period. In following its own case law, the Court has shown extraordinary judicial activism, has penciled out two words of the federal statute (“or discovers”), and has penciled a word out of the U.S. Constitution (“discoveries”)."
Copyright © 2019 Robert Moll. All rights reserved.
From the abstract of the article: "A or B” is inconsistent with “A not B.” This describes why the application of 35 U.S.C. § 101 by the U.S. Supreme Court is inconsistent with the U.S. Constitution, and thus unconstitutional. This article tracks the legislative history of patent eligibility from 1790 to 2011, and the parallel but inconsistent U.S. Supreme Court case law during this period. In following its own case law, the Court has shown extraordinary judicial activism, has penciled out two words of the federal statute (“or discovers”), and has penciled a word out of the U.S. Constitution (“discoveries”)."
Copyright © 2019 Robert Moll. All rights reserved.
Friday, April 13, 2018
Harvard Journal of Law & Technology - Special Issue - Software Interface Copyright
The Harvard Journal of Law & Technology published a Special Issue - Software Interface Copyright worth reading if you are interested what certain academics think regarding copyright's role with respect to application programming interfaces (APIs). It also discusses fair use and relates to Oracle v. Google.
Copyright © 2018 Robert Moll. All rights reserved.
Copyright © 2018 Robert Moll. All rights reserved.
Sunday, December 31, 2017
Professor Janicke - Patent Venue: Half Christmas Pie, And Half Crow
Professor Janicke's Patent Venue: Half Christmas Pie, And Half Crow gives a nice summary of how patent venue works after the US Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands.
Copyright © 2017 Robert Moll. All rights reserved.
Copyright © 2017 Robert Moll. All rights reserved.
Thursday, October 13, 2016
Supreme Court - Apple v. Samsung - SCOTUS Blog - Justices cautious about resolving Samsung-Apple dispute over design of cell phones
Professor Ronald Mann's blog post Justices cautious about resolving Samsung-Apple dispute over design of cell phones indicates the Supreme Court was unsettled at the oral hearing on the legal standard to apply to the $400 million damages awarded for Samsung's infringement of Apple's design patents.
The case turns on the proper interpretation of 35 USC 289 stating: "whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design ... to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit ...."
As Professor Mann stated: "The issue is whether the 'article of manufacture' to which the infringing design feature has been applied is the cell phone itself (as the court of appeals concluded) or some difficult-to-specify subsidiary portion of the phone, perhaps the case or exterior."
The Federal Circuit previously decided the article of manufacture is Samsung's phone, but all at the Supreme court hearing seem to agree it's too much to conclude "the article of manufacture" for calculating profits is the entire phone. We have the infringement of design patents that show the exterior screen and case. Should that infringement include the value of thousand of features in the software/hardware inside? I don't think so but it is also important to consider what drove the sale. I think just talking about how much physical structure is shown in the design patent misses this. Whatever way you come out, I think design patent damages is important to fairly resolve in an environment where injunctive relief is not awarded even when a competitor appears to have applied design patent to its product.
Copyright © 2016 Robert Moll. All rights reserved.
The case turns on the proper interpretation of 35 USC 289 stating: "whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design ... to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit ...."
As Professor Mann stated: "The issue is whether the 'article of manufacture' to which the infringing design feature has been applied is the cell phone itself (as the court of appeals concluded) or some difficult-to-specify subsidiary portion of the phone, perhaps the case or exterior."
The Federal Circuit previously decided the article of manufacture is Samsung's phone, but all at the Supreme court hearing seem to agree it's too much to conclude "the article of manufacture" for calculating profits is the entire phone. We have the infringement of design patents that show the exterior screen and case. Should that infringement include the value of thousand of features in the software/hardware inside? I don't think so but it is also important to consider what drove the sale. I think just talking about how much physical structure is shown in the design patent misses this. Whatever way you come out, I think design patent damages is important to fairly resolve in an environment where injunctive relief is not awarded even when a competitor appears to have applied design patent to its product.
Copyright © 2016 Robert Moll. All rights reserved.
Wednesday, August 17, 2016
Berkeley Center for Law & Technology - Patent Case Management Judicial Guide Updated
The Berkeley Center for Law & Technology (BCLT) recently published the third edition of the Patent Case Management Judicial Guide (treatise).
As stated in the abstract: "This treatise updates and expands upon the second edition of the Patent Case Management Judicial Guide (2012). Since that time, patent litigation has continued to increase in complexity. This edition encompasses implementation of the America Invents Act (“AIA”), the emergence of review proceedings at the Patent Trial and Appeal Board (“PTAB”), the Supreme Court’s many recent patent decisions (patent eligibility, claim construction, claim indefiniteness, infringement analysis (rejecting “joint infringement”), the intent requirement for induced infringement liability (rejecting a defense of good faith belief of a patent’s invalidity), and attorney fees), and the Federal Circuit’s damages jurisprudence (including damage awards for standard essential patents (SEP) licensed pursuant to fair, reasonable, and nondiscriminatory (FRAND) terms. It also includes case management checklists, model case management orders, and other materials developed by district judges and advisory bodies for streamlining patent case management. Finally, this volume adds a chapter on patent litigation at the Court of Federal Claims."
Today, BCLT emailed a notice that a hard copy of the Guide is available for purchase or can be downloaded for free: "The third edition of the Patent Case Management Judicial Guide (PCMJG3d), written by BCLT faculty director Peter Menell and a team comprised of some of the nation's leading patent litigators, is now available for purchase in hardcopy or for free electronically. The PCMJG, constructed around the stages of patent litigation, is designed for federal judges and their law clerks, but, for that very reason, is also highly valuable to litigators. The Federal Judicial Center publishes the PCMJG for judges. Patent practitioners may purchase copies though Clause 8 Publishing at very modest cost. Moreover, recipients of this email can use discount code "HM978SBZ" to obtain 15% off at the Clause 8 eStore. In addition, Clause 8 Publishing offers a 20% discount and free shipping for bulk orders (10 sets or more). Please have your law firm or in-house librarian contact Professor Peter Menell at pmenell@law.berkeley.edu to place a bulk order.
The PCMJG3d (all 1214 pages!) can also be downloaded for free from SSRN at this link."
No I don't work for BCLT, but this is an amazing thing in a world where nearly all things of such value have a cost.
Copyright © 2016 Robert Moll. All rights reserved.
As stated in the abstract: "This treatise updates and expands upon the second edition of the Patent Case Management Judicial Guide (2012). Since that time, patent litigation has continued to increase in complexity. This edition encompasses implementation of the America Invents Act (“AIA”), the emergence of review proceedings at the Patent Trial and Appeal Board (“PTAB”), the Supreme Court’s many recent patent decisions (patent eligibility, claim construction, claim indefiniteness, infringement analysis (rejecting “joint infringement”), the intent requirement for induced infringement liability (rejecting a defense of good faith belief of a patent’s invalidity), and attorney fees), and the Federal Circuit’s damages jurisprudence (including damage awards for standard essential patents (SEP) licensed pursuant to fair, reasonable, and nondiscriminatory (FRAND) terms. It also includes case management checklists, model case management orders, and other materials developed by district judges and advisory bodies for streamlining patent case management. Finally, this volume adds a chapter on patent litigation at the Court of Federal Claims."
Today, BCLT emailed a notice that a hard copy of the Guide is available for purchase or can be downloaded for free: "The third edition of the Patent Case Management Judicial Guide (PCMJG3d), written by BCLT faculty director Peter Menell and a team comprised of some of the nation's leading patent litigators, is now available for purchase in hardcopy or for free electronically. The PCMJG, constructed around the stages of patent litigation, is designed for federal judges and their law clerks, but, for that very reason, is also highly valuable to litigators. The Federal Judicial Center publishes the PCMJG for judges. Patent practitioners may purchase copies though Clause 8 Publishing at very modest cost. Moreover, recipients of this email can use discount code "HM978SBZ" to obtain 15% off at the Clause 8 eStore. In addition, Clause 8 Publishing offers a 20% discount and free shipping for bulk orders (10 sets or more). Please have your law firm or in-house librarian contact Professor Peter Menell at pmenell@law.berkeley.edu to place a bulk order.
The PCMJG3d (all 1214 pages!) can also be downloaded for free from SSRN at this link."
No I don't work for BCLT, but this is an amazing thing in a world where nearly all things of such value have a cost.
Copyright © 2016 Robert Moll. All rights reserved.
Monday, August 15, 2016
Berkeley Center for Law & Technology - Patent Damages
Today, the Berkeley Center for Law & Technology emailed a notice and a paper on patent damages:
"On March 3, 2016, the Berkeley Center for Law & Technology hosted a day-long workshop on patent damages, one of the most important and contentious topics in patent law and policy. Organized by Professors Stuart Graham (Georgia Tech, Scheller College of Business), Peter Menell (BCLT Director and Berkeley Law), Carl Shapiro (Haas Business School at UC Berkeley), and Tim Simcoe (Boston University Questrom School of Business), the workshop brought together in-house counsel, litigators (from both the assertion and defense sides), patent licensing professionals, testifying expert witnesses, and academics (both law professors and economists).
Today, Profs. Graham, Menell, Shapiro and Simcoe issued a paper summarizing the workshop discussion, key findings, and ramifications for patent case management. The paper includes a background memo summarizing patent damages law prepared by Professors Thomas Cotter (Univ. of Minnesota Law School) and John Golden (Texas Law). The organizers welcome your feedback on this report and hope to continue a conversation with all interested parties regarding patent damages."
Copyright © 2016 Robert Moll. All rights reserved.
"On March 3, 2016, the Berkeley Center for Law & Technology hosted a day-long workshop on patent damages, one of the most important and contentious topics in patent law and policy. Organized by Professors Stuart Graham (Georgia Tech, Scheller College of Business), Peter Menell (BCLT Director and Berkeley Law), Carl Shapiro (Haas Business School at UC Berkeley), and Tim Simcoe (Boston University Questrom School of Business), the workshop brought together in-house counsel, litigators (from both the assertion and defense sides), patent licensing professionals, testifying expert witnesses, and academics (both law professors and economists).
Today, Profs. Graham, Menell, Shapiro and Simcoe issued a paper summarizing the workshop discussion, key findings, and ramifications for patent case management. The paper includes a background memo summarizing patent damages law prepared by Professors Thomas Cotter (Univ. of Minnesota Law School) and John Golden (Texas Law). The organizers welcome your feedback on this report and hope to continue a conversation with all interested parties regarding patent damages."
Copyright © 2016 Robert Moll. All rights reserved.
Saturday, April 26, 2014
Expediting Examination of U.S. Design Patent Applications - Capturing the Value at the Front of the Patent Term
Applicants are seeking U.S. design patents at record rates, but it is important to understand that design patents may be valuable for only a short time. I am not speaking of the 14-year design patent term, but the fact the world may initially "love" a design than view it as "out of date" just a few years later. For example, each new version of the iPhone somehow makes prior versions look out of date.
Thus, when the design relates to rapidly evolving technology, expediting examination may be important to quickly capture that commercial value and prevent infringement. Although the PTO examines design applications faster than utility applications, expediting examination of design applications may be worth it in certain cases.
Thus, 37 CFR § 1.155(a), effective since September 8, 2000, established a procedure for applicants who conducted a preliminary examination search and request expedited examination along with the 37 CFR 1.17(k) fee:
(a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination:
(1) The application must include drawings in compliance with § 1.84;
(2) The applicant must have conducted a preexamination search;
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k);
(ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98.
(b) The Office will not examine an application that is not in condition for examination (e.g, missing basic filing fee) even if the applicant files a request for expedited examination under this section.
Another mundane patent procedure? Maybe, but it could increase the chance a design patent will be granted before the world moves on to something new!
Copyright © 2014 Robert Moll. All rights reserved.
Thus, when the design relates to rapidly evolving technology, expediting examination may be important to quickly capture that commercial value and prevent infringement. Although the PTO examines design applications faster than utility applications, expediting examination of design applications may be worth it in certain cases.
Thus, 37 CFR § 1.155(a), effective since September 8, 2000, established a procedure for applicants who conducted a preliminary examination search and request expedited examination along with the 37 CFR 1.17(k) fee:
(a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination:
(1) The application must include drawings in compliance with § 1.84;
(2) The applicant must have conducted a preexamination search;
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k);
(ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98.
(b) The Office will not examine an application that is not in condition for examination (e.g, missing basic filing fee) even if the applicant files a request for expedited examination under this section.
Another mundane patent procedure? Maybe, but it could increase the chance a design patent will be granted before the world moves on to something new!
Copyright © 2014 Robert Moll. All rights reserved.
Sunday, April 6, 2014
UC Berkeley Professor Suzanne Scotchmer: 1950 - 2014
UC Berkeley Professor Suzanne Scotchmer, a leading economist on intellectual property law and policy and innovation, passed away after a bout with cancer on January 30, 2014.
We probably have different stories about how we discovered Professor Scotchmer's writing. I was searching for "something else" on the Web and I stumbled across her articles on intellectual property: each article was unique and brilliant, which compelled me to read more. If you are not familiar, you might start with Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, which elegantly describes patent incentives we should attribute to cumulative innovation.
If you are interested, UC Berkeley Center for Law & Technology is hosting a program to honor Professor Scotchmer on May 1, 2014.
Copyright © 2014 Robert Moll. All rights reserved.
We probably have different stories about how we discovered Professor Scotchmer's writing. I was searching for "something else" on the Web and I stumbled across her articles on intellectual property: each article was unique and brilliant, which compelled me to read more. If you are not familiar, you might start with Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, which elegantly describes patent incentives we should attribute to cumulative innovation.
If you are interested, UC Berkeley Center for Law & Technology is hosting a program to honor Professor Scotchmer on May 1, 2014.
Copyright © 2014 Robert Moll. All rights reserved.
Saturday, March 22, 2014
Professor Sichelman - The Vonage Triology: A Case Study in "Patent Bullying"
University of San Diego Law Professor Ted Sichelman published an interesting article The Vonage Trilogy: A Case Study in "Patent Bullying" on February 18, 2014.
Professor Sichelman tells us "patent bullies are large, established operating companies that threaten or institute costly patent infringement actions of dubious merit against smaller companies, usually in order to suppress competition or garner licensing fees."
Professor Sichelman states "patent bullies have scarcely been discussed in the academic literature or popular press, especially in recent years."
Professor Sichelman examines Sprint, Verizon and AT&T patent infringement suits against Vonage, a startup providing Internet telephone services. Yes, whatever happened to Vonage? The article says the patent infringement suits sank Vonage. How many startups are hampered not by patent trolls but by the incumbents' patents? We should figure this out, because incumbents patent portfolios may not just capture innovation, but generate a patent thicket for startups seeking to enter the marketplace. Congress should take a look at patent bullying -- is Vonage an isolated instance or an all too frequent occurrence?
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, December 10, 2013
Donald Chisum's Article - Patents on Computer-Implemented Methods and Systems
Donald Chisum is a patent scholar who taught for many years as a professor at the University of Washington and Santa Clara University Law Schools. He is also the author of the well regarded Chisum on Patents. This 33-volume treatise is the most cited patent law treatise in American history. It stretches on for thousands of pages. On many legal issues, Chisum on Patents and Chisum's Patent Digest are great places to start for a summary of the law and for citations to cases. When I read the cases, I am impressed how accurately Donald Chisum had summarized U.S. patent law.
Today, Donald Chisum published an article Patents on Computer-Implemented Methods and Systems: The Supreme Court Grants Review (CLS Bank) Background Developments and Comments that states the need for the Supreme Court to clarify the test for patent eligibility of computer-implemented methods and systems.
Here's a passage from the article:
"On December 6, 2013, the Supreme Court granted a petition for certiorari,filed by a patent owner, which presented the following question:
Whether claims to computer-implemented inventions–includingclaims to systems and machines, processes, and items ofmanufacture–are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court. AliceCorporation Pty. Ltd. v. CLS Bank International.
That this question warrants Supreme Court deliberation in 2013 is startling and disgraceful. How can such uncertainty exist in the 21st century about so basic a question as the patentability of computer software? Computers, software, anddisputes about intellectual property protection for programming have been around since the 1960s. The statute at issue (Section 101) is unchanged since 1952.
The responsibility lies squarely at the feet of the Supreme Court. Its confusing statements about the patenting of "abstract ideas" have trickled down tothe lower courts, understandably causing disagreements among judges. Regrettably, the result is one of the most serious diseases that can infect the legal system: similar cases are decided differently based solely on the identities of the judges.
A review of recent case law developments beginning primarily with theSupreme Court's 2010 Bilski decision on the patent-eligibility of businessmethods, together with the details of the subject CLS Bank case, shows how dire the situation has become."
It is well worth consideration by the patent community; if someone with intimate familiarity with US patent law says the Federal Circuits fragmented test is so confusing no one knows how to apply it, it is time for the Supreme Court to speak. After all the concept of the current test for patentability of software related inventions appears to hinge on whether a particular judge or set of judges think it is an abstract idea (after ignoring various claim limitations) without any guidance what remains in or out of the claim. Justice Douglas' legacy is to place a cloud over all software related inventions with the abstract idea exception. It works perfectly if you think patents are suspect monopolies and don't understand computers.
Copyright © 2013 Robert Moll. All rights reserved.
Today, Donald Chisum published an article Patents on Computer-Implemented Methods and Systems: The Supreme Court Grants Review (CLS Bank) Background Developments and Comments that states the need for the Supreme Court to clarify the test for patent eligibility of computer-implemented methods and systems.
Here's a passage from the article:
"On December 6, 2013, the Supreme Court granted a petition for certiorari,filed by a patent owner, which presented the following question:
Whether claims to computer-implemented inventions–includingclaims to systems and machines, processes, and items ofmanufacture–are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court. AliceCorporation Pty. Ltd. v. CLS Bank International.
That this question warrants Supreme Court deliberation in 2013 is startling and disgraceful. How can such uncertainty exist in the 21st century about so basic a question as the patentability of computer software? Computers, software, anddisputes about intellectual property protection for programming have been around since the 1960s. The statute at issue (Section 101) is unchanged since 1952.
The responsibility lies squarely at the feet of the Supreme Court. Its confusing statements about the patenting of "abstract ideas" have trickled down tothe lower courts, understandably causing disagreements among judges. Regrettably, the result is one of the most serious diseases that can infect the legal system: similar cases are decided differently based solely on the identities of the judges.
A review of recent case law developments beginning primarily with theSupreme Court's 2010 Bilski decision on the patent-eligibility of businessmethods, together with the details of the subject CLS Bank case, shows how dire the situation has become."
It is well worth consideration by the patent community; if someone with intimate familiarity with US patent law says the Federal Circuits fragmented test is so confusing no one knows how to apply it, it is time for the Supreme Court to speak. After all the concept of the current test for patentability of software related inventions appears to hinge on whether a particular judge or set of judges think it is an abstract idea (after ignoring various claim limitations) without any guidance what remains in or out of the claim. Justice Douglas' legacy is to place a cloud over all software related inventions with the abstract idea exception. It works perfectly if you think patents are suspect monopolies and don't understand computers.
Copyright © 2013 Robert Moll. All rights reserved.
Monday, December 9, 2013
Stanford Technology Law Review - Design Patents in the Modern World
The Stanford Technology Law Review appears to have joined Berkeley Technology Law Journal as a leader in law review coverage on emerging intellectual property topics.
One emerging topic in US patent law is design patents. The huge damage awards for infringement of design patents in Apple v. Samsung raised the importance of seeking design patents. It also highlighted the need to better understand the law surrounding the patentability, infringement, and remedies of design patents.
Today, Ms. Anna Sallstrom, Editor in Chief, Stanford Technology Law Review, sent me an email noting that STLR is publishing the presentations given in Design Patents in the Modern World conference held at Stanford Law School in 2013. Specifically, the following eight articles by leading scholars will be available online at http://stlr.stanford.edu this winter:
A Response to the Standard Criticisms of Design Patents
by Sarah Burstein
Rights, Remedies, and the Doctrine of Election
by Laura Heymann
Virtual Designs
by Mark Janis & Jason Du Mont
A Rational System of Design Patent Remedies
by Mark Lemley
Functionality and Graphical User Interface Design Patents
by Michael Risch
Progress and Competition in Design
by Katherine Strandburg & Mark McKenna
Law Without Design
by Madhavi Sunder & Peter Lee
(R)evolution in Design Patentable Subject Matter: The Shifting Meaning of “Article of Manufacture”
by Andrew Torrance & William Seymour
Copyright © 2013 Robert Moll. All rights reserved.
One emerging topic in US patent law is design patents. The huge damage awards for infringement of design patents in Apple v. Samsung raised the importance of seeking design patents. It also highlighted the need to better understand the law surrounding the patentability, infringement, and remedies of design patents.
Today, Ms. Anna Sallstrom, Editor in Chief, Stanford Technology Law Review, sent me an email noting that STLR is publishing the presentations given in Design Patents in the Modern World conference held at Stanford Law School in 2013. Specifically, the following eight articles by leading scholars will be available online at http://stlr.stanford.edu this winter:
A Response to the Standard Criticisms of Design Patents
by Sarah Burstein
Rights, Remedies, and the Doctrine of Election
by Laura Heymann
Virtual Designs
by Mark Janis & Jason Du Mont
A Rational System of Design Patent Remedies
by Mark Lemley
Functionality and Graphical User Interface Design Patents
by Michael Risch
Progress and Competition in Design
by Katherine Strandburg & Mark McKenna
Law Without Design
by Madhavi Sunder & Peter Lee
(R)evolution in Design Patentable Subject Matter: The Shifting Meaning of “Article of Manufacture”
by Andrew Torrance & William Seymour
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, October 22, 2013
Patent Trolls or Patent Monetizer - Goodlatte's Innovation Act of 2013
The news media has barraged the public with the evil of patent trolls: they harm our business and create nothing of value. Yes, patent litigation abuse needs to be curbed, but how?
Goodlatte's Innovation Act of 2013 proposes to change things. The Act limits legal estoppel to issues actually raised in post-grant proceedings and increases transparency on patent ownership, which should help, but also proposes to radically change decades of US patent law by introducing fee shifting perhaps in many if not all cases. This is more than "modernizing" 35 USC 285 folks this is giving up the American rule. We have this rule to encourage small entities to be able to protect their rights against large interests. If passed, large company defendants will have an incentive to overspend on legal fees, resulting in a win (how could they not win if they spent an order of magnitude more?), then hand the losing patent owner a very large legal bill. We are talking millions in legal fees. This will soon deter a small entity from enforcing a patent against any large company that decides infringement makes sense. The Act also heightens an infringement complaint to essentially require the patent owner submit a claim chart showing infringement with the complaint, and do it all before any discovery! Is this how we want it to work, establish infringement without discovery? Such a provision should be carefully considered by the patent community, because it only benefits large companies.
Beside carefully considering the impact of the laws, we need to drop the pejorative labels. Many acknowledge we shouldn't use the term "patent troll." Instead, we should refer to "patent assertion entities," but months later it is back to calling non-practicing patent owners patent trolls in the press, which preconditions the debate. Consider if you were accused of bullying others. Let's assume we don't know yet if you are. What if we each time we cross paths I ask, "So Mr. Bully, what have you been doing today?"
Congress appears to be introducing patent reform based on PR, media, and lobbyists. Many arguments raised against "patent trolls" might be raised against any patent licensing. Is it evil for someone to seek to obtain income from patent licensing and/or litigating rather than provide a service or make a product? IBM, Microsoft, Texas Instruments, HP, Intel, and SanDisk have all licensed patents beyond what is in their products, but that is left out of the media barrage, because these companies make valuable products and services (even if not related to a patent) and therefore are not "patent trolls."
We must delve into the facts to understand how to reduce patent litigation abuse. The FTC recently launched an investigation into patent monetizer. Some academics have done a great job of investigating into the facts. In The AIA 500 Expanded: Effects of Patent Monetization Entities, Professor Robin Feldman investigated almost 13,000 cases and 30,000 patents in lawsuits filed in 2007-2008 and 2011-2012 and draws interesting conclusions about how patent monetizers are reacting to changes of the patent law in the America Invents Act (AIA). This fact investigation with reasonable conclusions is a step in the right direction and should continue. Some of the findings of Professor Feldman's article:
Goodlatte's Innovation Act of 2013 proposes to change things. The Act limits legal estoppel to issues actually raised in post-grant proceedings and increases transparency on patent ownership, which should help, but also proposes to radically change decades of US patent law by introducing fee shifting perhaps in many if not all cases. This is more than "modernizing" 35 USC 285 folks this is giving up the American rule. We have this rule to encourage small entities to be able to protect their rights against large interests. If passed, large company defendants will have an incentive to overspend on legal fees, resulting in a win (how could they not win if they spent an order of magnitude more?), then hand the losing patent owner a very large legal bill. We are talking millions in legal fees. This will soon deter a small entity from enforcing a patent against any large company that decides infringement makes sense. The Act also heightens an infringement complaint to essentially require the patent owner submit a claim chart showing infringement with the complaint, and do it all before any discovery! Is this how we want it to work, establish infringement without discovery? Such a provision should be carefully considered by the patent community, because it only benefits large companies.
Beside carefully considering the impact of the laws, we need to drop the pejorative labels. Many acknowledge we shouldn't use the term "patent troll." Instead, we should refer to "patent assertion entities," but months later it is back to calling non-practicing patent owners patent trolls in the press, which preconditions the debate. Consider if you were accused of bullying others. Let's assume we don't know yet if you are. What if we each time we cross paths I ask, "So Mr. Bully, what have you been doing today?"
Congress appears to be introducing patent reform based on PR, media, and lobbyists. Many arguments raised against "patent trolls" might be raised against any patent licensing. Is it evil for someone to seek to obtain income from patent licensing and/or litigating rather than provide a service or make a product? IBM, Microsoft, Texas Instruments, HP, Intel, and SanDisk have all licensed patents beyond what is in their products, but that is left out of the media barrage, because these companies make valuable products and services (even if not related to a patent) and therefore are not "patent trolls."
We must delve into the facts to understand how to reduce patent litigation abuse. The FTC recently launched an investigation into patent monetizer. Some academics have done a great job of investigating into the facts. In The AIA 500 Expanded: Effects of Patent Monetization Entities, Professor Robin Feldman investigated almost 13,000 cases and 30,000 patents in lawsuits filed in 2007-2008 and 2011-2012 and draws interesting conclusions about how patent monetizers are reacting to changes of the patent law in the America Invents Act (AIA). This fact investigation with reasonable conclusions is a step in the right direction and should continue. Some of the findings of Professor Feldman's article:
- In 2012, patent monetizers filed 58.7% of all patent lawsuits filed in the USA. In contrast, patent monetizers filed only 24.6% of US patent lawsuits.
- The recently issued US patents are most frequently litigated, which might mean people are applying for patents with the plan to file lawsuits.
- Current mechanisms to notify the public when a patent is asserted in lawsuit did not operate 2/3 of the time.
- Month-by-month data show a massive spike in monetizer activity the month prior to the joinder provisions of America Invents Act became effective then the lawsuits began to rise again in the last part of 2012. I thinks she gets it right in noting, "The data demonstrate that the increase in activity by monetizers in recent years is not an artifact of the changes in the America Invents Act, but represents a true rise in the level of litigation activity."
I am not saying let's give any patent monetizer a free pass, but let's stop labeling them patent trolls and let the FTC investigation take its course. It should help identify conduct that needs to be stopped before we rush to change laws. Otherwise, Congress' efforts to change the law may bar legitimate patent enforcement and licensing activity.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, October 4, 2013
Professor Robin Feldman - Prolific Patent Scholar
If you follow this blog, you know I like to read and post late at night. One of my "late night discoveries" after I started blogging was Professor Robin Feldman. I had met her husband Boris Feldman, a partner WSGR, as an associate in 1993 -1998. Boris had all of our respect (despite the toys in the office) because of his brilliance in fending off opportunistic SEC claims. A typical result for Boris? Case dismissed. No discovery, just dismissed. Someone mentioning his wife was a law professor at UC Hastings, but that's all I remembered ... I was too busy.
So when I stumbled across The Giants Among Us on the rise of patent aggregators and saw one of the authors was a UC Hastings law professor Robin Feldman ... I thought wait is this Boris' wife? As I read Giants, I was stunned. It was a tour de force and gave many fresh details regarding Intellectual Ventures, a firm that has been shrouded in secrecy. The fact research was excellent. It followed she had graduated second in her class at Stanford Law school.
Tonight, when I saw UC Hastings law school had an article Robin Feldman: Shaping Patent Policy Through Scholarship noting her influential law review articles in recent years, I was not surprised. I appreciate her scholarship and hope it continues well into the future. She strikes me as someone who is relentlessly investigating and reporting on the challenges of US patent law, something we need before Congress passes "helpful" bills for the sake of the US economy. Thus, reading her articles is much a better starting point to understanding today's challenges than the agenda set forth by corporate lobbyists.
Copyright © 2013 Robert Moll. All rights reserved.
So when I stumbled across The Giants Among Us on the rise of patent aggregators and saw one of the authors was a UC Hastings law professor Robin Feldman ... I thought wait is this Boris' wife? As I read Giants, I was stunned. It was a tour de force and gave many fresh details regarding Intellectual Ventures, a firm that has been shrouded in secrecy. The fact research was excellent. It followed she had graduated second in her class at Stanford Law school.
Tonight, when I saw UC Hastings law school had an article Robin Feldman: Shaping Patent Policy Through Scholarship noting her influential law review articles in recent years, I was not surprised. I appreciate her scholarship and hope it continues well into the future. She strikes me as someone who is relentlessly investigating and reporting on the challenges of US patent law, something we need before Congress passes "helpful" bills for the sake of the US economy. Thus, reading her articles is much a better starting point to understanding today's challenges than the agenda set forth by corporate lobbyists.
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, May 14, 2013
Yale Law School - Patent Troll Panel April 2013
Today, Lisa Larrimore Ouellette's article on Patently-O: Patent Troll Panel at Yale Law School raises some interesting points that came up at Yale Law School. I appreciated whether you refer to patent-assertion entities (PAEs), non-practicing entities (NPEs), or patent trolls, we must focus on bad behavior and a patent system that sometimes issues patents that enable bad behavior not on whether the patent owner practices the invention.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, January 17, 2013
Solutions to the Software Patent Problem - Conference Materials
On November 16, 2012, Santa Clara University staged a conference Solutions to the Software Patent Problem. After attending I posted: Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012.
Today, SCU emailed the conference materials:
View the videos
Where applicable, we’ve posted the speakers’ slides as separately downloadable files. Videos synced with presentation slides and just videos (for those that do not use Microsoft products)
Speaker essays. Also check out the related series of essays published in Wired.com Opinion
Media coverage of the event
Results of the audience polls about which solutions they liked best
Other conference resources
The conference page provides a one-stop inventory of all of these resources.
View High Tech Law Institute blog: http://law.scu.edu/blog/hightech/
Copyright © 2013 Robert Moll. All rights reserved.
Today, SCU emailed the conference materials:
View the videos
Where applicable, we’ve posted the speakers’ slides as separately downloadable files. Videos synced with presentation slides and just videos (for those that do not use Microsoft products)
Speaker essays. Also check out the related series of essays published in Wired.com Opinion
Media coverage of the event
Results of the audience polls about which solutions they liked best
Other conference resources
The conference page provides a one-stop inventory of all of these resources.
View High Tech Law Institute blog: http://law.scu.edu/blog/hightech/
Copyright © 2013 Robert Moll. All rights reserved.
Sunday, December 2, 2012
Jeruss - Effects of Patent Monetization Entities on US Litigation
In The America Invents Act 500: Effects of Patent Monetization Entities on US Litigation Sara Jeruss of Lex Machina Inc., Robin Cooper Feldman of University of California Hastings College of the Law, Joshua H. Walker of Simpson Thacher & Bartlett LLP, Stanford Law School wrote an interesting paper that will be published in Duke Law & Technology Review.
The article explores non-practicing entities (NPE) or patent trolls or what they call patent monetizers affect on U.S. patent litigation. Although Professor Feldman is not the lead author, it bears her signature in terms of meticulous research, transparent assumptions, and careful conclusions.
The article flowed out of Congress' mandate for the Government Accountability Office (GAO) to study the effects of non-practicing entities on patent litigation. Using Lex Machina's database they collected and coded a set of patent lawsuits filed over the past five years then analyzed what it meant.
Key findings? Patent monetizers' lawsuits increased from 22% to nearly 40% of the cases in the last five years. Universities are not that big of a player, accounting for only 0.2% of the lawsuits. Patent monetizers tend to settle prior to a summary judgment decision, which points to what may be involved. Even though it calls NPE's "modern villains" of the system, it doesn't resolve for me whether patent monetizers are bad or good for the US, but does confirm their rising participation in patent litigation.
Copyright © 2012 Robert Moll. All rights reserved.
The article explores non-practicing entities (NPE) or patent trolls or what they call patent monetizers affect on U.S. patent litigation. Although Professor Feldman is not the lead author, it bears her signature in terms of meticulous research, transparent assumptions, and careful conclusions.
The article flowed out of Congress' mandate for the Government Accountability Office (GAO) to study the effects of non-practicing entities on patent litigation. Using Lex Machina's database they collected and coded a set of patent lawsuits filed over the past five years then analyzed what it meant.
Key findings? Patent monetizers' lawsuits increased from 22% to nearly 40% of the cases in the last five years. Universities are not that big of a player, accounting for only 0.2% of the lawsuits. Patent monetizers tend to settle prior to a summary judgment decision, which points to what may be involved. Even though it calls NPE's "modern villains" of the system, it doesn't resolve for me whether patent monetizers are bad or good for the US, but does confirm their rising participation in patent litigation.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, November 22, 2012
Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012
I signed up for the Santa Clara University Law School conference Solutions to the Software Patent Problem then nearly decided to skip it. I didn't need the MCLE and I didn't want to take the day off. It sounded like rain, traffic, etc. Further, I didn't feel like listening to proposals all day long to eliminate or reduce the value of software patents. I didn't expect a warm welcome as a software patent attorney either. Maybe I would be viewed as part of the problem! Yet I felt compelled to attend to hear how others might eliminate my job fixing the "software patent problem."
Despite these misgivings, it was a good conference with 34 presentations! The caliber of the speakers made it interesting and each had ten minutes to propose a solution to the software patent problem.
Of course part of any good conference is meeting people and seeing old friends at the breaks. I talked with my colleague and friend Michael Barclay about his hobby of learning difficult guitar pieces, Eric Clapton's habit of self-recording before he joined John Mayall, the book Guitar Zero about a NYU professor's sabbatical learning the guitar and to check out Eric Clapton's isolated track of "While my guitar gentle weeps" on Youtube.
I didn't convince Joe Mullin, the prolific journalist at ars technica, that Apple's damage award against Samsung is needed to address the free riding problem. Joe said all of the similarities between the Samsung products and Apples patents were just the result of competition.
I met Richard Stallman, founder of the Free Software movement, and fabulous hacker of Emacs and GNU used with the Linux OS. He convinced me that the latest revision of his book was worth getting and gave me "GNU and Linux - the Dynamic Duo" stickers for my kids. We have to convince the kids, right? I had an interesting talk with a patent damages expert, Elvir Causevic of Ocean Tumo, and met SCU law students such as Michael Quinn and William Jacobs, and others. No one seemed to cared if you were an academic, an executive, a public interest advocate, a businessman, an entrepreneur, or even a software patent attorney.
It is too late tonight to summarize all the proposed solutions but if you are interested, I would start by reviewing Santa Clara Law School's conference resources page. Note the conference was both streamed (except for Richard Stallman's talk - he did not want to use any Microsoft product) and videotaped.
Most speakers proposed various changes to US patent law, PTO rules, and/or how they are implemented today. For example, Professor Love argued patent trolls often assert patents near the end of the term so we could cut that problem off by increasing the cost or frequency of maintenance fees. Professor Arti Rai argued the PTO needed to rigorously apply the written description requirement. Professor Lemley argued that we need to eliminate functional claiming. Claims should not be interpreted to cover all implementations of a given function, but just the structures and equivalents described in the specification that perform the function. Some of the solutions were thought provoking, but as the day wore on, some speakers noted there would be no silver bullet.
Professor John Duffy of University of Virginia Law School proposed we must raise the nonobvious requirement. It seemed persuasive and likely to be adopted in practice. He had read some speech recognition patents and saw the value in patent protection of such complex computer software related inventions. He said patents are needed to induce these types of inventions. To Professor Duffy "worse than a patented technology that burdens the public is not having a technology at all."
Professor Duffy seemed to be building upon his paper with Professor Abramowicz's The Inducement Standard of Patentability, Yale Law Journal, 2010 that noted in Graham v. Deere the Supreme Court held the nonobviousness requirement was intended to limit patents to only those inventions which would not be disclosed or devised but for the inducement of a patent.
During the Q&A following Professor Duffy's presentation, Professor Duffy suggested something that could be taken as criticism of Richard Stallman's proposal. Richard raced from the back of the room to the front and was handed a microphone. He shouted "So many stupid insults—and mistakes! I proposed a way to solve the problem! It's elegant, and it gets right to the point. Your criticisms are completely wrong." His proposal? Deem all computer related patents not infringed. For details see: Stallman, Let's Limit the Effect of Software Patents, Since We Can't Eliminate Them
As to the need to induce inventions? Mr. Stallman's response: Consider the MP3 patent that caused a lot of harm. It's not trivial, it came from a research institute. But we can fund research institutes in other ways. Okay, but before we abolish software patent protection tell me exactly what are the other ways and how do we know it will be better? Will falling back to a trade secret regime be better?
Professor John Duffy seemed to be taken aback by Mr. Stallman's heart felt comments, but noted he respected Mr. Stallman's views to which Mr. Stallman responded don't give me your irrelevant flattery. I like Mr. Stallman's bracing honesty and he is a very smart guy, but Professor Duffy's proposal seemed more likely to be adopted than Richard Stallman's.
Given this type of exchange, the money involved, I don't expect the software patent controversy to end. We have debated solutions, and the PTO, federal courts, the CAFC, and even the Supreme Court have given inconsistent and confusing guidance on software patents for 40 years. I hear we don't even agree on the definition of a software patent. This conference was worthwhile, but mainly gave notice the software patent debate is not likely to end soon.
Updated Nov. 27, 2012: Professor Risch does a great job of articulating the software patent debate in his article today: Two Software Worlds
Copyright © 2012 Robert Moll. All rights reserved.
Despite these misgivings, it was a good conference with 34 presentations! The caliber of the speakers made it interesting and each had ten minutes to propose a solution to the software patent problem.
Of course part of any good conference is meeting people and seeing old friends at the breaks. I talked with my colleague and friend Michael Barclay about his hobby of learning difficult guitar pieces, Eric Clapton's habit of self-recording before he joined John Mayall, the book Guitar Zero about a NYU professor's sabbatical learning the guitar and to check out Eric Clapton's isolated track of "While my guitar gentle weeps" on Youtube.
I didn't convince Joe Mullin, the prolific journalist at ars technica, that Apple's damage award against Samsung is needed to address the free riding problem. Joe said all of the similarities between the Samsung products and Apples patents were just the result of competition.
I met Richard Stallman, founder of the Free Software movement, and fabulous hacker of Emacs and GNU used with the Linux OS. He convinced me that the latest revision of his book was worth getting and gave me "GNU and Linux - the Dynamic Duo" stickers for my kids. We have to convince the kids, right? I had an interesting talk with a patent damages expert, Elvir Causevic of Ocean Tumo, and met SCU law students such as Michael Quinn and William Jacobs, and others. No one seemed to cared if you were an academic, an executive, a public interest advocate, a businessman, an entrepreneur, or even a software patent attorney.
It is too late tonight to summarize all the proposed solutions but if you are interested, I would start by reviewing Santa Clara Law School's conference resources page. Note the conference was both streamed (except for Richard Stallman's talk - he did not want to use any Microsoft product) and videotaped.
Most speakers proposed various changes to US patent law, PTO rules, and/or how they are implemented today. For example, Professor Love argued patent trolls often assert patents near the end of the term so we could cut that problem off by increasing the cost or frequency of maintenance fees. Professor Arti Rai argued the PTO needed to rigorously apply the written description requirement. Professor Lemley argued that we need to eliminate functional claiming. Claims should not be interpreted to cover all implementations of a given function, but just the structures and equivalents described in the specification that perform the function. Some of the solutions were thought provoking, but as the day wore on, some speakers noted there would be no silver bullet.
Professor John Duffy of University of Virginia Law School proposed we must raise the nonobvious requirement. It seemed persuasive and likely to be adopted in practice. He had read some speech recognition patents and saw the value in patent protection of such complex computer software related inventions. He said patents are needed to induce these types of inventions. To Professor Duffy "worse than a patented technology that burdens the public is not having a technology at all."
Professor Duffy seemed to be building upon his paper with Professor Abramowicz's The Inducement Standard of Patentability, Yale Law Journal, 2010 that noted in Graham v. Deere the Supreme Court held the nonobviousness requirement was intended to limit patents to only those inventions which would not be disclosed or devised but for the inducement of a patent.
During the Q&A following Professor Duffy's presentation, Professor Duffy suggested something that could be taken as criticism of Richard Stallman's proposal. Richard raced from the back of the room to the front and was handed a microphone. He shouted "So many stupid insults—and mistakes! I proposed a way to solve the problem! It's elegant, and it gets right to the point. Your criticisms are completely wrong." His proposal? Deem all computer related patents not infringed. For details see: Stallman, Let's Limit the Effect of Software Patents, Since We Can't Eliminate Them
As to the need to induce inventions? Mr. Stallman's response: Consider the MP3 patent that caused a lot of harm. It's not trivial, it came from a research institute. But we can fund research institutes in other ways. Okay, but before we abolish software patent protection tell me exactly what are the other ways and how do we know it will be better? Will falling back to a trade secret regime be better?
Professor John Duffy seemed to be taken aback by Mr. Stallman's heart felt comments, but noted he respected Mr. Stallman's views to which Mr. Stallman responded don't give me your irrelevant flattery. I like Mr. Stallman's bracing honesty and he is a very smart guy, but Professor Duffy's proposal seemed more likely to be adopted than Richard Stallman's.
Given this type of exchange, the money involved, I don't expect the software patent controversy to end. We have debated solutions, and the PTO, federal courts, the CAFC, and even the Supreme Court have given inconsistent and confusing guidance on software patents for 40 years. I hear we don't even agree on the definition of a software patent. This conference was worthwhile, but mainly gave notice the software patent debate is not likely to end soon.
Updated Nov. 27, 2012: Professor Risch does a great job of articulating the software patent debate in his article today: Two Software Worlds
Copyright © 2012 Robert Moll. All rights reserved.
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