However one may agree or disagree with Lemley, he has done his homework, and his stated positions are logical, if springing from flawed assumptions.
This is the same Mark Lemley who proclaimed Gary Boone to be the inventor of the integrated circuit [IC] in the Stanford Law Review, who reversed himself (in the presence of no additional information) on Robert Clarke's analysis of patent grant rate, and who asserted that the inventors of the transistor thought it only good for hearing aids, based on a non-existent article in the New York Times. Done his homework??? Lemley is an academic hip-shooter.
But, of course, there's more to this.
Lemley's flawed assumption with damages is that the current damages regime is insufficient in consideration of what constitutes reasonable royalty. Lemley harps on an "entire market value rule" which does not exist. That makes Lemley's arguments, likely Lemley himself, academic, i.e., as the dictionary defines the word, "without practical or useful significance."
Separately, one observes that Lemley's published prepared testimony comprises two parts, the second part of which is "all about damages", while the first part is mostly directed to everything else (but note page 6). One notes the first part is a bit different from times past.
More on that at a later time.
The PatentHawk blog had a comment on patent reform 2009 itself -->
You are missing the whole point of patent 'reform.' The point of patent reform is NOT to improve the patent system. The point of patent reform is to save M$/Google/Ci$co a few bucks (the US economy be damned! Enforcement of IP rights in China be damned!) and to make a few bucks (i.e. $10,000 per plate dinner) for Leahy and the other bought senators. It doesnt even save THAT much money for the IP Goliaths - Intel spends more $$$ on anti-trust litigation than on defending patent suits.
A few years ago Chisum had on article on patent reform in JMRIPL which addressed the same points, but in a more polite way. One notes that it was Lemley, not Chisum, who appeared before the Senate.
***The "executive summary" of Lemley's prepared testimony includes text plumping Lemley's forthcoming publication in the UPenn Law Review that concludes the majority of the most-litigated patents are owned by entities that do not produce any product. Note that this is a normalization to patents that are litigated, not to litigations. Lemley did not cite to the Ball/Kesan study already on SSRN that wrote: We find that the licensing firms in our cohort of cases - all of which would have classified as small firms as of 2002 - are a very small percentage of all plaintiffs.. Is PatentHawk correct in saying Lemley did his homework?
Although Lemley wrote in the first paragraph of the executive summary that the number of patent litigations in 2007-2008 remained roughly constant, he wrote in the second paragraph of "the growth in patent lawsuits." In the claim drafting business, one calls this an antecedent basis problem.
Lemley favors post-grant opposition proceedings, including the controversial second window. Ironically, while Lemley has elsewhere criticized patentees for filing continuation applications with claims that capture the commercial products of competitors, his reasoning for the second window is to give generic pharma companies time to recognize which drugs are commercially useful, so that the underlying patents may be challenged during the second window. What was that PatentHawk was saying about logical? Lemley is still talking about submarine patents, as he did in Ending Abuse, even though that problem was addressed by Congress over ten years ago. [One notes that the opposition section does not discuss the "patent quality" problem.]
Beneath all this is Lemley's fundamental misunderstanding of "why" we have patents: to disclose, to the public, useful information. That's why they are called "patents," instead of "latents", Lemley speaks of defendants who were not on notice of a patent when it issued. The whole point of the system is to put everyone on notice, and give everyone knowledge. Lemley speaks of "patents once they are brought to a company's attention." Lemley speaks of those "who could not have reasonably found the patent." Who are those people? Issued patents are on the USPTO database; they are in repositories.
In the first 12 pages of the published Lemley testimony, there are no footnotes. At page 13, one has a paper about damages, and the footnotes begin. Footnote 6 (page 14) is Id. at ____. Keeping in mind that this is testimony given on March 10, 2009, one marvels at footnote 25 _____ Stan. L. R. ____ (forthcoming 2007). Lemley debates a SSRN paper by Lichtman in footnote 27, even though he otherwise omits reference to the Kesan SSRN paper. Footnote 43 asserts that patentees lose 3/4 of patent cases. [17 of the 30 total pages involve the paper on damages.]
Of litigations, although Mark Lemley wrote in the first paragraph of the executive summary of his testimony to Congress that the number of patent litigations in 2007-2008 remained roughly constant, he wrote in the second paragraph of "the growth in patent lawsuits." In the claim drafting business, one calls this an antecedent basis problem. Also, Lemley's forthcoming publication in the UPenn Law Review concludes the majority of the most-litigated patents are owned by entities that do not produce any product. Combining Lemley, Kesan, and Bloom, one might infer that the majority of the "most litigated patents" are not litigated to judgment. There's a lot of tricky wording here.
***On patent litigation databases
Stanford Law School Announces Launch of Patent Litigation Database [18 Dec 08]:
Last week, the Law, Science & Technology Program at Stanford Law School announced the launch of the Stanford IP Litigation Clearinghouse (IPLC) Patent Litigation Module, a database of more than 23,000 cases filed in U.S. district courts since 2000. According to the school's release, the publicly available, online database "will enable scholars, policymakers, lawyers, judges, and journalists to review real-time data about IP legal disputes that have been filed across the country, and ultimately to analyze the efficacy of the system that regulates patents, copyrights, trademarks, antitrust, and trade secrets." The Patent Litigation Module is the first part of the project to be released, with other modules to follow.
Among these supporters are: Cisco Systems Inc.; Cornerstone Research; Fenwick & West LLP; Genentech, Inc.; Intel Corporation; the Ewing Marion Kauffman Foundation; Oracle; Orrick, Herrington & Sutcliffe LLP; Qualcomm Inc.; SAP; and Winston & Strawn LLP.
Operated by Stanford Law School, in concert with leading experts from around the country, the IP Litigation Clearinghouse aims to be a comprehensive online information source on IP litigation. We seek to enhance the quantity, quality, and art of IP analytics for the benefit of the public.
Access to Stanford IPLC requires an account. If you are new to the website, please email email@example.com to request access.