Monday, January 30, 2006

Believing in the truth as one perceives the truth to be?

About fifteen years ago, a Fortune 50 corporation passed out pens to its employees bearing the corporate logo and the inscription "We believe in the truth as we perceive it to be."

When the Minneapolis Star Tribune snagged inaccuracies in James Frey's book "A Million Little Pieces" (long before Oprah Winfrey selected it for her television book club), Frey responded to the Star Tribune: "I wrote what was true to me."

Now, we have the 2006 eBay brief with its reference to the 97% patent grant rate, about 4 years AFTER the authors of the 97% patent grant rate number had modified it. Is it all right to dissemble to the Supreme Court, but not to Oprah?

[As an aside, inquiries have been made to certain authors of the eBay brief about the accuracy of the 97% reference; no response as of yet.]

to the EagleTribune:

Of Susan Decker's article on the eBay/MercExchange case, several points were not fully covered.

Of the text: "EBay and its supporters say the appeals court decision gives other companies an incentive to buy patents and use the threat of a shutdown order to force payments from businesses that make products covered by the patent," the decision by the Federal Circuit does not represent new law and, on the facts, MercExchange (Woolston) directly obtained its patents.

In a case wherein claims of a patent might cover only part of a system or product, patent owners can't really "extort settlements that vastly exceed the true economic value of their patents and impose enormous social costs, particularly in the computer and Internet industries;" the accused is free to design around as to the patented component. The accused should have read the patent in the first place, and made appropriate assessments and contingency plans, so that the question of a last minute "extortion" would never come up.

The text --Courts should be able to deny such a court order when a patent owner "never built or practiced its invention, exists solely to license its invention and has publicly stated that it is only interested in royalties,"-- pertains to a 1908 decision by the Supreme Court (Continental Paper, 210 U.S. 405), wherein the Supreme Court decided that courts could issue injunctions in cases where the patentee had never built or practised its invention. (see

The Decker did not mention text on page 40 of the eBay brief wherein eBay cited a law review for estimating the rate of patent approvals by the PTO to be 97%. First, the law review only estimated 97% to be an upper bound for grant rate (and in a footnote acknowledged the number was wrong). Second, the authors of the law review corrected the number in 2002, more than three years before the eBay brief. (see

Although many people have strong feelings about the issues in the eBay case, there is no excuse for a hyperbolic suggestion that the Patent Office grants patents on 97% of applications. It does not. It would be a strange world indeed wherein one could pull a fast one on the Supreme Court, but not Oprah Winfrey.

Lawrence B. Ebert
registered patent attorney
January 30, 2006


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