Friday, May 23, 2008

Lemley as a big thinker...

In discussing the Transatlantic Information Law Symposium, Lawgarithms refers to the symposium as "featuring such big thinkers as Mark Lemley and Stefan Bechtold."

Expresiounius writes:

A few years ago Mark Lemley, at the time an Intellectual Property professor, made this exact metaphorical statement when he left "BerkeleyLaw" for Stanford.

He did so at a very inopportune time, just as Boalt was struggling to keep its IP program tops in the country, and was losing steam in the U.S. News rankings, which are irrelevant but incredibly important.

Now, Lemley also works for the famed litigation boutique Keker & Van Nest.

And karma, as they say, is a bitch. Somehow, he got stuck working on a patents case for the adult film industry. And the specific patent relates to -- and I couldn't make this up -- "teledildonics."

This is the same Mark Lemley who proclaimed Gary Boone the inventor of the integrated circuit, leaving Noyce and Kilby in the dustbin of "Lemley history." One notes separately that Lemley is not a registered patent attorney. The only jibe expresiounius missed was that, in leaving Boalt, Lemley increased the faculty IQ at Boalt and Stanford.

In August 2007 the patenthawk blog noted:

Mark Lemley, professor at Stanford Law School, "widely recognized as a preeminent scholar of intellectual property law," toots of the new rules for examination limits: "The idea that this would be any sort of significant restriction on patent owners is ludicrous to me. It will affect 10 applications a year, maybe 50, out of 450,000."

New 37 CFR §1.75(b)(1), known as the 5/25 rule, limits applications to five independent and 25 total claims without an odious examination support document (ESD). An ESD, covered under 37 CFR §1.265, comprises claim charts mapping claims, limitation by limitation, to the most relevant prior art references found; based upon a compulsive prior art search for which inequitable conduct liability is attached. An ESD also includes patentability claims charts: for each independent claim, citing specification support, limitation by limitation. 37 CFR §1.75(b)(4), soon to be known as the 5/25-totality rule, puts all applications in the same family, combined, under the 5/25 rule; where a family is for a set of claims that are "patentably indistinct," which is normal continuation practice. For all patents in a family, you only get five independent and 25 total claims without submitting detailed claim charts. This is a severe stricture.

One may reasonably observe as understatement that Mr. Lemley's long suit is not likely to be statistical prediction, probabilistically speaking, of course.

Elsewhere, Patent Docs, in discussing the work of Bessen and Meurer wrote:

The work has been lauded by patent academia: Professor Dennis Crouch excerpted it extensively on his Patently-O blog prior to publication, and the published work carries glowing accolades from the darling of patent academia, Professor Mark Lemley of Stanford University. While the approval of the academic patent intelligentsia is one thing, more worrisome is that Patent Failure thesis, the familiar "the patent system is broken," is gaining traction among policymakers.

See also:

Is Lemley right about Bell and Gray?


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