Friday, January 27, 2006

Gross error in the eBay brief to Supreme Court in MercExchange case

In November 2005, there was a post on IPBiz strongly questioning the accuracy of a footnote (and related main text) in the law review article by Gideon Parchomovsky and R. Polk Wagner, 154 U. Pa. L. Rev. 1 (Nov. 2005):

Incredibly, footnote 76 is to the first Quillen/Webster paper: See, e.g., Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1, 3 (2001) (indicating that once continuing applications are included, the patent approval rate is 95%). Quillen and Webster conclude that the PTO might ultimately approve as many as 97% of all patent applications. Id. at 13.

Fast forward to January 2006, and we have in the Brief of petitioner, eBay, at the Supreme Court [by (among others) Jeffrey G. Randall (Skadden Arps), Carter G. Phillips (Sidley Austin) ] at p. 40:

Generally, when reexamination occurs, one recent article states that nearly 74% of the time finds the patent invalid or restricts its claims. (…) This result is unsurprising given that an overworked PTO can spend a mere 18 hours on average to review a patent application before initial issuance. [citing to Parchomovsky (but not mentioning co-author Polk Wagner), 154 U Penn L Rev 1 and then citing to Cecil Quillen (but not mentioning co-author Webster), specifically the FIRST Quillen/Webster paper, 11 Fed. Cir. B J 1 (estimating the rate of patent approvals by the PTO to be 97%).

Please note that the 97% number is not correct. It was modified EVEN BY Quillen and Webster in the second Quillen/Webster paper. The first paper by Quillen and Webster was strongly criticized by Clarke in JPTOS and the second paper was strongly criticized by me in JPTOS. Yet, the 97% number has now ended up in a brief to the US Supreme Court.

It appears that the authors of the eBay brief may have looked only to the Parchomovsky/Wagner paper without examining the work of Quillen/Webster or the numerous criticisms of Quillen/Webster. In the end, it is sloppy scholarship by Parchomovsky/Wagner and the cite checkers at the University of Pennsylvania Law Review that facilitated this error, now sent to the US Supreme Court.

NOTE: Dennis Crouch at Patently O observed the presence of the 97% number in the eBay brief and forwarded a copy of the brief to me.

For those interested in an analysis of the errors (both numerical and legal) in the approach of Quillen and Webster, one can refer to papers published in
2004 and in 2005.


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