Thursday, June 21, 2007

Beth Noveck makes significant error in prior art analysis

In a previous post about Jaffe and Lerner's "Innovation and Its Discontents," IPBiz had drawn attention to two different texts which had referred to a discussion which appeared on page 144 of Innovation and Its Discontents.

One of these was a law review article by Ethan Katsh and Beth Noveck in 99 Law Libr. J. 365 (2007) which includes the text:

P8 In their recent book, Innovation and Its Discontents, 5 Adam Jaffe and Josh Lerner document many patents that are anything but novel and nonobvious, such as patent number 6,368,227 for "Method of Swinging on a Swing" awarded to a five-year-old boy (subsequently cancelled). 6 Or patent number 6,574,645, a patent on a method for drafting a patent. 7

with footnote 7 stating

U.S. Patent No. 6,574,645 (issued June 3, 2003) ("Machine for Drafting a Patent Application and Process for Doing Same"), noted in JAFFE & LERNER, supra note 5, at 144.

IPBiz notes that there are several things wrong with the statement by Katsh and Noveck:

1. Most directly, if one goes to page 144 of Jaffe and Lerner's Innovation and Its Discontents, one won't find a discussion of US 6,574,645. Right away, one is a little concerned that Katsh and Noveck wrote a "phantom citation," which phantom sailed right through the folks at Law Libr. J., who obviously didn't bother to check whether US 6,574,645 was discussed on page 144 of Innovation and Its Discontents.

2. There is a discussion by Jaffe and Lerner on page 144 of a prior art issue with US 6,049,811, a patent different from the '645 patent.

3. IPBiz has previously noted that Jaffe and Lerner's argument that prior art was missed in the evaluation of the '811 patent, specifically prior art published in JPTOS [74 JPTOS 315] , was in error.

4. In fact, IPBiz noted that a paper by J. Steven Rutt in 2 Nanotechnology L. & Bus. 111 (2005) had pointed out the error in prior art evaluation by Jaffe and Lerner that appears on page 144 of Innovation and Its Discontents. Although the Rutt paper appeared more than a year before the paper of Katsh and Noveck AND is highly relevant to what Katsh and Noveck are saying in P8, Katsh and Noveck didn't cite the Rutt paper.

In short, Katsh and Noveck got their own citation to an example in Jaffe and Lerner's Innovation and Its Discontents wrong, and, separately, ignored pertinent (unfavorable) prior art to the argument they were making.

Is that what peer-to-patent is all about?

IPBiz noted of the Rutt paper: Rutt does make a point relevant to the likely success of peer-to-patent and and Kappos' arbitrage: highly intelligent and highly technically trained people with advanced degrees, believe that some set of prior art somehow "knocks out" a patent claim. Upon inspection of the details, however, the patent claim may in fact legitimately be patentable.

In the 2007 paper by Katsh and Noveck, all one sees is a parrot-like repetition of someone else's errors.

For an earlier citation error, recall that the USPTO's arguments for limiting continuing applications cited to the wrong page of the Lemley/Moore law review article "Ending Abuse..." in BULR.



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