Wednesday, May 25, 2005

Chisum: reforming patent law reform

Donald S. Chisum, Reforming Patent Law Reform, 4 J. Marshall Rev. Intell. Prop. L. 336 (2005).

Chisum suggests that Congress should reform the system for the better of all using neutral principles.

The paper is recent and at page 338 mentions a case reported "last week," which bears a date in footnote 15 of April 23, 2005. The paper includes references through April 2005, and footnote 6 mentions a site last visited May 19, 2005.

At page 339, there is mention of Smucker's patent US 6,004,596. Chisum rhetorically asks how the PTO could issue such a thing. However, Chisum does not mention that the claims of the '596 have been rejected in re-exam, or that the claims of two continuing applications were rejected by the PTO, with the rejection affirmed by the CAFC. [At page 342, Chisum makes a distinction between jam and jelly, seemingly overlooking the point that claim 1 covers either jam or jelly; the claim is directed to a sealed, crustless sandwich with a crimped edge, with at least one filling of an edible food. The specifics of this debate are somewhat academic, as the '596 is apt to be toast.]

At page 340, Chisum discusses patent trolls. He notes: "Faced with a competitor, the company could assert its own patent portfolio and reach a reasonable cross-licensing agreement. But a troll does not need a cross-license and therefore is uninterested in cross-licensing." Going back to the Wright Brothers, one recalls they were not interested in cross-licensing with Glenn Curtiss. They wanted to shut him down. Although the Wrights did make a product, they wanted royalties from their competitors, not deals. Further, third parties did play definitional games with what the product was [e.g., the Wright's did not win a Scientific American race, because their aircraft had "rails" rather than the required wheels; the Army later required pull propellors rather than the Wright's push.] One recalls the early days of radio. Several competitors each owned a piece of the technology of voice transmission through ac, but they never did come to a "reasonable cross-licensing agreement."

At page 341, Chisum introduces his first principle for reform: simplicity. Does the proposed change make the system simpler in operation? [Parenthetically, one notes oppositions do not; Chisum's paper does not appear to discuss oppositions/post-grant review.]

The second principle is zero-based budgeting.

The third principle is cost sensitivity.

The fourth principle is completeness and generality. Chisum faults the proposed Patent Bill for lack of completeness for not having a provision on a research exemption. He notes that some groups who have patents on research tools oppose such an exemption. Ironically, a group that holds patents on research tools is universities. In fact, a group of universities (headed by WARF) aligned with the patentee Integra, and against the "researcher" Merck, in Merck v. Integra, concerning the scope of 271(e)(1). No university group filed a brief on behalf of Merck. Furthermore, a research exemption is likely to be tricky in a Bayh-Dole world, wherein university groups are aligned with workers in the private sphere.

At page 344 and following, Chisum gets into some specific examples.


In September 2006, after patent reform has been stalled, we have a paper on "differential impact" by Sag (DePaul) and Rohde (Northwestern). The abstract seems to toss around the terms "good" and "bad" freely:

Congressional efforts to address the crisis of confidence in the U.S. patent system have failed up to the present day. If Congress is to have any hope of passing much needed legislative reform to the Patent Act, the supporters of patent reform will have to unite behind a streamlined set of proposals that directly address the most pressing and unambiguous defects of the current patent system. To that end, we have proposed applying a test of differential impact to enable Congress to prioritize those reforms which will discourage the acquisition and assertion of bad patents without unduly prejudicing the interests of the holders of good patents.

Is the Eolas/Berkeley patent good or bad? Is the Harvard/MIT patent asserted against Eli Lilly good or bad?

** In passing,

The patent reform conference at Berkeley in April 2004 began with remarks from Dean Designate Chris Edley: Boalt Hall School of Law, Mark Myers, NAS & Xerox Corporation
and Commissioner Mozelle Thompson, FTC

An industry panel included:

- Gary Griswold: AIPLA
- Robert Barr: CISCO
- Bart Eppenauer: Microsoft
- Sean Johnston: Genentech
- Jeffrey Kushan: Sidley Austin Brown & Wood & BIO
- Jay Monahan: eBay
- Ron Myrick: Finnegan, Henderson, Farabow, Garrett & Dunner
- Kulpreet Rana: Google
- Robert Sacoff: Pattishall, McAuliffe & ABA IP Section
- Michael Schallop: Symantec Corporation
- David Simon: Intel Corporation
- Herb Wamsley: Intellectual Property Owners


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