Judge Plager takes on Nard and Duffy: easier to critique than to be original
One has the following:
Our first quarrel with the authors' position is their untested hypothesis that more decisionmakers will produce better decisions and better decisional rules, rather than just different ones.
The authors acknowledge that there is no empirical support for the claimed advantages of a multi-circuit model vis-a-vis a singular tribunal
IPBiz got a chuckle from the line:
How are the judges to make this assessment? Read newspaper and law review articles? And think Gary Boone invented the integrated circuit? Not likely!
The article gets into the issue of an activist court:
This discussion highlights our major area of disagreement with the authors' thesis. Their assumption throughout the article is that the court in deciding patent cases should play a significant, if not dominant, policymaking role
With regard to the issue of nonobviousness, the authors decry the Supreme Court's recent undertaking in KSR as an example of a failure in the way the patent system works, and in particular the judicial decisionmaking process. Their remedy for that failure is again the same - more "peer" courts deciding patent cases, and therefore presumably showing the way
Of details on obviousness:
Second, and again contrary to the authors' characterization, the Supreme Court's KSR decision was not a repudiation of the Federal Circuit's efforts to avoid hindsight in the test for obviousness. Though the Court rejected a rigid application of the teaching-suggestion-motivation test, it acknowledged the importance of identifying "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." n71 Such a showing provides a "helpful insight" in determining whether claimed subject matter would have been obvious under 35 U.S.C. § 103. n72
Judge Plager addressed the perceived low level of cites to law review literature in CAFC decisions:
One complaint that the authors raise about Federal Circuit opinions that raises specific issues related to their thesis and our general critique is the absence of citation to the secondary literature.
The next sentence is interesting:
Admittedly there is a certain amount of self-interest in any complaint by the academic community that their work is being largely ignored, though as a former academic Judge Plager can empathize with that view.
The conclusion notes:
In our view, Professors Nard and Duffy have not been able to meet that burden with adequate proof
We recognize that it is always easier to critique someone else's work than to be original in one's own thinking. (...) The fact that, in our view, the authors' particular solution fails to address the problem in a useful way does not detract from the contribution they make in exploring these issues, and relating the academic and legal literature to the needs of the patent system.
In passing, LBE got cited in footnote 34 at page 1742 [For an interesting perspective on the balance from the businessman's viewpoint, see Lawrence B. Ebert, On Patent Quality and Patent Reform, 88 J. Pat. & Trademark Off. Soc'y 1068, 1069, 1076 (2006) ("Businessmen are more concerned with innovation than with invention... . Patent law is concerned with invention, not innovation."). ]
[Lemley, Jaffe, and Lerner don't appear.]
Of Judge Plager's noting the absence of empirical support [in 2007], note also the BIO report on patent reform in 2008.
Note IPBiz, discussing Lemley, was cited in a book.