Sunday, March 01, 2009

The convenience of not remembering history when discussing patent reform

In a post "are patents a driver of innovation...?", PatentBaristas discussed Mark Lemley:

Mark Lemley, Professor of Law at Stanford Law School, seems to distinguish universities from trolls on the premise that universities (generally) do not lie in wait until an industry has developed around a technology and then demanding a disproportionate share of royalties based on irreversible investments. Having run a university technology transfer office, I can assure you that these offices generally are not even aware of how a technology is developing. This is not to slight universities, it’s just that universities can have inventions from a thousand different technology areas. No one could keep track of every industry. That’s not to say that universities don’t sue others for patent infringement. [As IPBiz points out, what about the University of Rochester Cox-2 infringement case? Or Columbia University’s co-transformation patent-extending attempt?]

Lemley also points to the fact that most university licenses give the licensee not just protection from lawsuits but also provide valuable know-how. He sums this up as “University patent owners aren’t trolls in my view when they contribute previously unknown technology to society, rather than just imposing costs on others by obtaining and asserting legal rights over inventions independently developed by others.”

Ultimately, Lemley makes the point that it doesn’t matter what the entity is but, instead, we should focus on the bad acts and the laws that make them possible. Universities should use licensing for good instead of evil. Note, however, that university patents are generally for very early stage technology. While universities account for 1% of patents on average across all fields, they account for 12% of all patents in nanotechnology and 18% of all patents in biotechnology. This means that the early creators are critical to the development of new technologies even though they themselves do not make products.

The stupidity of Lemley's text is that the University of Rochester DID lie in wait until an industry had developed around a technology and then demanded a disproportionate share of royalties based on irreversible investments, which is reflected in the "update" which was added on Baristas. [See Remembering URochester and the COX-2 patent litigation]
It's not the only example. One could add Rutgers and OnStar, for a New Jersey touch.

There wasn't any cite in PatentBaristas to what Mark Lemley had written. For reference, one should note: Mark A. Lemley, Are Universities Patent Trolls? 18 Fordham Intellectual Property, Media & Entertainment Law Journal 611 (Spring 2008) / Stanford Public Law Working Paper, No. 980776 (2007).

The law review article by Lemley does mention Rochester, ONCE:

A final reason for industry concern about university patenting is that universities are increasingly enforcing their patents. Recent years have seen high-profile cases litigated to judgment by the University of California, the University of Rochester, Harvard, MIT, Columbia, Stanford, and suits filed by many other universities. One notable example is Eolas Technologies, Inc. v. Microsoft Corp., n25 in which the University of California licensed a software patent to a company that really does look like a patent troll, however you want to define that term, and then shared with that company a jury award of $ 520.6 million against Microsoft. n26

So Lemley singled out UCal-Berkeley/Eolas, not Rochester, as looking like a troll. For real-world insight, the Rochester patent was invalidated on summary judgment. The Eolas patent was NOT found invalid, even after a USPTO-director ordered re-exam. Perhaps Lemley thinks, if you don't write about it, it doesn't exist [?]

There have been various posts on IPBiz on universities as trolls. For example:

As a separate matter, PatentBaristas repeated the "urban legend" about Detkin coining the name troll. Apart from the fact it wasn't actually Detkin at Intel who first used troll at Intel, the real problem is that it wasn't first used at Intel at all. Baristas wrote:

Like the troll of lore who lived under a bridge and extorted money from travelers, the so-called “patent trolls” are patent holders that do not make products but only threaten other companies with patent infringement lawsuits in order to extract money. (Ironically, Peter Detkin, former assistant general counsel at Intel is credited with coining this term and he now works for Intellectual Ventures LLC, a company that has been spending millions to buy up patents for licensing.)

But see

Intel folks did NOT invent the term "patent troll"

The general irony here is that people who purport to write so profoundly on invention don't seem to investigate "prior art" at all. One further notes Lemley wrote in the Stanford Law Review that Gary Boone invented the integrated circuit.

**See also

Is the Patent Office a Rubber Stamp?

Stanford Public Law Working Paper No. 999098
2nd Annual Conference on Empirical Legal Studies Paper