Sunday, October 09, 2011

Mark Lemley strikes back

In a post on IPWatchdog [ Lemley Responds: Defending the Myth of the Sole Inventor ], Mark Lemley strikes back at John Howells and Ron Katznelson who had criticized Lemley's paper The Myth of the Sole Inventor.

Lemley makes three points directed to

** the suggestion his view of invention is naive (within this Lemley conflates invention and innovation)

** the lack of coverage of all 33 inventions addressed by Lemley in his initial paper

** the absence of actual claims in the Boulton-Watt patent

Lemley references an earlier post by Howells and Katznelson on IPWatchdog, which in turn links to a lengthier article at bepress, which contains 88 footnotes. Lemley's paper is on SSRN.

**As to the point about claims in the Boulton-Watt patent, the following is text from the Howells/Katznelson paper on bepress:

Lemley begins by asserting that―JamesWattisfamousastheinventorofthesteamengine‖.60 This is the naïve notion of ―invention.‖ The precise notion under patent law, however, is that Watt‘s inventive contribution was the separate condenser, an improvement on the Newcomen steam engine. This can be read in the second of Watt‘s patent claims in British patent No. 913, granted April 1769:61 ―the steam is to be condensed in vessells distinct from the steam vessells or cylinders.‖ The significance of Watt‘s invention was that it enabled the main steam vessel to remain at high temperature and so saved much fuel otherwise used to reheat it. Lemley does not cite the patent or itsclaimsbutneverthelessassertsthatWatt―patentedtheengine...:‖62 thenLemleyflipstoamore precise notion of the invention, ―What Watt and his co-inventor Boulton in fact contributed was not the concept of the steam engine, but a particular implementation of that engine‖.63 There is still no mention of the actual invention or patent.

Lemley contends that ―[i]n fact, however, Watt is not the first one to have come up with the idea‖;64 he cites a historical source by Miller as evidence for the existence of ―one very similar patent cited against Watt, in particular‖.65 Lemley provides neither information on the patent at issue nor on the litigation history, where we should expect the validity of the Watt patent to be put to the test. The fact that a ―similar patent‖ was cited against Watt is far from a proof of a ―simultaneous invention‖ of the same thing. Dickinson and Jenkins (1927) review the outcome of the two actions for infringement brought under the Watt patent that established its validity; ―...the juries in both trials gave verdicts in favor of the patentees. They found that Watt was the inventor, that the invention was new and useful, had been infringed and that the specification was of itself sufficient to enable a mechanic acquainted with the fire-engines previously in use to construct fire-engines producing the effect of lessening the consumption of fuel and steam upon the principle invented by Watt‖.66 Lemley is silent about the English courts‘ decision contradicting his contention of ―near- simultaneous invention‖ alongside Watt.

It might seem that the point about claims is a "red herring" to evade the central technical issue of whether or not Boulton-Watt had come up with a significant advance over the prior art. Lemley does not address this point.


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