Sunday, March 13, 2016

Patent jacking, sole inventors, Edison's light bulb and the upcoming patent interference on CRISPR

As noted in an earlier post, IPBiz discussed the term "patent jacking" as used in the "Hounded" episode of the CBS show Elementary. As an almost aside comment in the tv show, Thomas Edison was accused of "patent jacking" because he took ideas from others. There have been suggestions that Edison put his name on patents that may have reflected some inventive contributions from his employees; whether this merits the term "patent jacking" may be questioned.

As noted by Howells/Katznelson in making comments about Lemley's "Myth of the Sole Inventor," (circa 2011) Edison is the only named inventor on the fundamental light bulb patent [ 223,898]. IPBiz has suggested that key contributions to the concept of high resistance/low current which distinguished the Edison light bulb from the prior art were made by others, including by Francis Upton, and separately that, at the time of the application filing for the fundamental light bulb patent, Edison, and his employees, had not tried high resistance bamboo filaments.

This has several implications to the inclusion of Edison/light bulb in a paper on "sole inventors":

1. It was positively silly to include Edison's light bulb invention in a paper with a title on "sole inventor," because in the 1879 time frame Edison had a team of employees working on the project. That only Edison's name appears on the basic patent does not prove that he functioned as a sole inventor.

2. As to Lemley's comment --And in one of the two cases in which they do actually try to challenge my story, Edison’s light bulb, they ignore the evidence of Swan’s simultaneous, competing light bulb. --, Lemley is dead wrong to imply that Swan's light bulb was either simultaneous (as shown in Swan's letter to NATURE, Swan's work was years earlier) or competing (not employing high resistance, it would drew large amounts of current, which made it cost prohibitive). Swan did win a patent fight in England, but that does not prove Swan's work was either simultaneous or competing.

From a 2006 paper by LBE:

The basic claim of Edison read: An electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth. The trial court noted that Edison "was the first to make a carbon of materials and by a process which was especially designed to impart high specific resistance to it; the first to make a carbon in the special form for the special purpose of imparting to it high total resistance; and the first to combine such a burner with the necessary adjuncts of lamp construction to prevent its disintegration and give it sufficiently long life."


In asserting that there was "simultaneous" invention, Lemley ignores what Edison's invention actually was, and why Edison won in the US court over Sawyer and Man.

Of Swan's letter:

On January 1, 1880, the science journal Nature published a letter of Joseph Swan, which included the text: "Fifteen years ago, I used charred paper and card in the construction of an electric lamp on the incandescent principle. I used it, too, in the shape of a horseshoe, precisely, as you say, Mr. Edison is now using it."

3. Of relevance to the upcoming patent interference on CRISPR between Doudna and Zhang, it is worthwhile to recall text from the Edison patent battle:

The trial court also noted, somewhat
cryptically, "There are many adjudicated cases in which it appears that the inventor builded better than he knew; where a patent has been sustained for an invention the full significance of which was not appreciated by the inventor when it was made. In the case of the Bell telephone patent there was great room for doubt whether the speaking telephone had been thought of by Mr. Bell when he filed his application for a patent, but the court said: 'It describes apparatus which was an articulating telephone, whether Bell knew it or not.'"

from: Edison as a Patent Troll, or Where is California Going in Stem Cell Research?

In the case of Edison, at the time of filing the application, Edison had not employed bamboo filaments (burners) which imparted longer life than those filaments of the prior art. Edison did understand the concept of high resistance/low current, which was the key not understood in the prior art (counter to what Professor Lemley said).

The CRISPR aaga will turn on "who" placed the invention into the hands of one of ordinary skill to practice without
undue experimentation.

See also:


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