Thursday, June 21, 2007

Problems of Jaffe and Lerner with the concept of prior art

On the subject of problems with Jaffe/Lerner's Innovation and Its Discontents, we have at page 144 of Innovation and Its Discontents, the text:

Consider Patent No. 6,049,811, which is for a “Machine for Drafting a Patent Application and Process for Doing So.” Describes a computer that poses a series of questions to a potential patentee, asking him to describe his invention. The application for this patent cited as relevant prior art just one other patent and two published articles.

Greg Aharonian pointed out, a line of research at Hitachi anticipated this event by many years (165)

In 1992 JPTOS published an article by two of the managers of Hitachi ’s Intellectual Property Division, describing in detail their development of a new system to automate the patent application process (166). Apparently the examiner also missed this publication in his search of prior art. [74 JPTOS 315-334 (1992)]

One notes that the idea of the missed reference apparently comes from Greg Aharonian, not from Jaffe and Lerner. One does not see that Jaffe and Lerner investigated 74 JPTOS 315 to prove that this reference does anticipate the claims of US 6,049,811. In fact, the subject matter of 74 JPTOS 315 has nothing to with the claims of US US 6,049,811. One gets a hint that 74 JPTOS 315 is about something entirely different than the '811 patent at page 320: which states "The distributed patent offices convert the application documents and specifications (prepared on word processors) to electronic application format." The "advance" disclosed in the JPTOS article is that "the inventor prepares the patent specification manuscript on a word processor." Of course, the inventor has already written down everything (in no particular sequence) on paper, as Figure 5, on page 321 shows. There is NO TEACHING in the JPTOS article of what is in claim 1 of the '811 patent.

See also the IPBiz post Patent Reform: Jaffe/Lerner and Kappos.

In passing, note the 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 The patent awarded to Smucker's for the crustless peanut butter and jelly sandwich is, by now, legendary. 8 Jaffe and Lerner describe a patent sought for expirationless options thirty years
after economists won the Nobel Prize for the same idea. 9

n5 ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS: HOW OUR BROKEN PATENT SYSTEM IS ENDANGERING INNOVATION AND PROGRESS, AND WHAT TO DO ABOUT IT (2004), reviewed by Rochelle Cooper Dreyfuss, Pathological Patenting: The PTO as Cause or Cure, 104 MICH. L. REV. 1559 (2006) (book review).

n7 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.

From Stuart Minor Benjamin and Arti K. Rai, 95 Geo. L.J. 269 (January 2007):

However, concerns about bias and tunnel vision are also quite salient in the context of legal and policy determinations. Because of specialization, the possibility of bias is greater for the Federal Circuit than for the regional United States Courts of Appeals. Just as agencies can suffer from bias, so too can specialized courts. 236 In particular, unlike generalist courts of appeals, the Federal Circuit is closely connected with a particular bar, the patent bar. Although the patent bar has members who represent both plaintiffs and defendants in patent cases, patent lawyers generally have an interest in a patent system that is relatively robust. 237 Thus, the Federal Circuit is not likely to hear many arguments that raise fundamental legal and policy questions about the system. Notably, various empirical studies indicate that the Federal Circuit is substantially less likely to find patents invalid than its predecessor regional courts of appeals. 238 While this is hardly definitive evidence of capture--the regional courts of appeals may well have been too demanding in their validity standards, and some empirical studies also suggest that the Federal Circuit may be more likely than its predecessors to read patents narrowly and hence find them not infringed 239 it is suggestive of capture.

Footnote 237 is to Jaffe and Lerner, and includes the text: (noting that the proliferation of patents has led to a proliferation of patent litigation, rendering lawyers the "key players" in patent struggles).


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