Tuesday, January 31, 2017

Supreme Court nominee Neil Gorsuch on intellectual property

In SUREFOOT LC v. SURE FOOT CORPORATION, 531 F.3d 1236, 87 U.S.P.Q.2D 1266 (CA10 2008), Judge Gorsuch authored an opinion on a DJ action in a trademark dispute.

Within, he wrote: our job as a federal appellate court is to follow the Supreme Court's directions, not pick and choose among them as if ordering from a menu. See Gaylor v. United States, 74 F.3d 214, 217 (10th Cir. 1996) (we are "bound by Supreme Court dicta almost as firmly as by the Court's outright holdings, particularly when the dicta is recent and not enfeebled by later statements").

Related to intellectual property: Second, Sure Foot ND argues that MedImmune at most invalidated only the reasonable apprehension of suit test in patent cases, while Cardtoons, like this case, involved a trademark issue. But Sure Foot ND offers no persuasive reason why the interpretation of the Declaratory Judgment Act's terms depends on the nature of the intellectual property right at issue, and nothing in MedImmune's analysis suggests one. Indeed, two of the cases the MedImmune Court cited in the process of rejecting the reasonable apprehension of suit test were insurance cases -- themselves well outside the intellectual property, much less patent, context. See MedImmune, 127 S. Ct. at 774 n.11 (citing Maryland Cas., 312 U.S. at 273 (insurance case), and Aetna, 300 U.S. at 239 (same)).

Having concluded that MedImmune displaced the jurisdictional test we announced in Cardtoons, the question remains what test replaces it, in light of MedImmune, and whether Surefoot UT can meet that test in this case. Our starting point naturally lies in MedImmune's language. There, the Court reminded us of the formulations it offered in Aetna and Maryland Casualty and suggested they remain key to our jurisdictional inquiry in declaratory judgment actions.

There is some "down home" language:

In this respect, our case finds a home in the heartland of declaratory judgment cases, closely resembling Aetna. In that case, an insured repeatedly claimed coverage under certain insurance policies for a present disability, but never brought suit against the insurer; meanwhile, the insurer, though believing the insured was not entitled to any payment under the policies, felt compelled to maintain a sum of money in reserve to guard against the contingent liability posed by the insured's claims. See id. at 237-39. Seeking to dispel the cloud that the insured's claims placed over the insurer's business affairs, and unwilling to wait until the insured finally (if ever) filed suit, the insurer sought a declaration of the insured's rights in federal court. See id. The case presented no complicating issues of future contingencies and the Supreme Court readily held that jurisdiction existed, stressing that the "parties had taken adverse positions with respect to their existing obligations," and the dispute concerned "a present right" based upon historical or "established facts." See id. at 242. The very same may be said of the case before us. Indeed, the only perceivable difference between Aetna and our case, on the one hand, and conventional litigation, on the other, is the bare formality that the parties are transposed. See id. at 244; Maryland Cas., 312 U.S. at 273 (HN16Go to this Headnote in the case."It is immaterial that . . . , in the declaratory judgment suit, the positions of the parties in the conventional suit are reversed; the inquiry is the same in either case"). 5

Footnote 6 invoked the CAFC:

We do note, however, that the Federal Circuit, which appears to have addressed this issue more than any other court, has concluded that the mere passage of time does not eviscerate the existence of an actual controversy unless a declaratory defendant has, for example, made a covenant not to sue the declaratory plaintiff, or where the circumstances of the parties have significantly changed, perhaps such as by the withdrawal of one side's product from the marketplace -- neither of which have occurred in this case. See, e.g., Fina Research, S.A. v. Baroid Ltd., 141 F.3d 1479, 1484 (Fed. Cir. 1998).

Footnote 8 goes to a law review:

Along related lines, other commentators have expressed the concern that one of MedImmune's effects might be that a single cease-and-desist letter, if not carefully drafted to avoid making threats of litigation, may more frequently give rise to declaratory judgment jurisdiction. See, e.g., Michael Weinstein, The Fate of the Federal Circuit's "Reasonable Apprehension" Standard in Patent Suits for Declaratory Judgment Following MedImmune, Inc. v. Genentech, Inc., 76 U. Cin. L. Rev. 681, 704-06 (2008); cf. D. Peter Harvey & Seth I. Appel, The Declaratory Judgment Response to a Cease and Desist Letter: "First-to-File" or "Procedural Fencing", 96 Trademark Rep. 639 (2006).

The conclusion

Though we hold that the district court has jurisdiction to entertain this case, the question remains whether, as a discretionary matter, it should do so. As we noted above, see supra Part II, HN19Go to this Headnote in the case.the Declaratory Judgment Act does not demand that a district court decide every declaratory suit brought to it even where the court has the power to do so. Instead, once the court is satisfied that Article III's jurisdictional requirements are met, it must then consider a number of factors, including those previously set out by this court in Mhoon, to determine whether the suit warrants the district court's attention. These factors include:

[1] whether a declaratory action would [**34] settle the controversy; [2] whether it would serve a useful purpose in clarifying the legal relations at issue; [3] whether the declaratory remedy is being used merely for the purpose of "procedural fencing" or "to provide an arena for a race to res judicata"; [4] whether use of a declaratory action would increase friction between our federal and state courts and improperly encroach upon state jurisdiction; and [5] whether there is an alternative remedy which is better or more effective.

Mhoon, 31 F.3d at 983.

In this case, the district court never reached the issue whether it should, as a matter of statutory discretion, consider Surefoot UT's request for declaratory relief because it held that, by failing to present a case or controversy, the suit could not be entertained at all. Now, of course, the discretionary question must be faced and answered. Rather than tackling it ourselves, we believe the appropriate course is to afford the district court the opportunity to evaluate it in the first instance. In this vein, we are guided again by MedImmune where, after holding that Article III jurisdiction existed, the Court explained that "it would be imprudent for us to decide whether the [**35] District Court should, or must, decline to issue the requested declaratory relief," and so held that "[w]e leave the equitable, prudential, and policy arguments in favor of such a discretionary dismissal for the lower courts' consideration on remand." 127 S. Ct. at 776-77. In doing so, the Court echoed its own previous direction in Wilton v. Seven Falls Co., 515 U.S. 277, 289, 115 S. Ct. 2137, 132 L. Ed. 2d 214 (1995), where it said that HN20Go to this Headnote in the case."[w]e believe it more consistent with the statute to vest district courts with discretion in the first instance." So we say here, and further stress that we express no views on what the [***1276] proper outcome of the district court's analysis should be.

* * *

While the district court faithfully applied our precedent, since the time it issued its decision the Supreme Court has undone that precedent. Applying the Court's new direction in MedImmune, we conclude that Article III jurisdiction exists over this controversy and so must reverse the district court's contrary judgment. At the same time, [*1249] acknowledging that discretionary considerations associated with Surefoot UT's invocation of the Declaratory Judgment Act remain to be addressed, we remand this matter for further proceedings not inconsistent [**36] with this opinion.

See also MESHWERKS, INC. v. Toyota, 528 F.3d 1258 (CA10 2008)

If we can't agree on Edison's light bulb in 2017, how can we do patent policy based on conflicting factual understandings?

In "Myth of the Sole Inventor," [110 Mich. L. Rev. 709 (2012) ] Mark Lemley wrote:

Edison didn't invent the lightbulb; he found a bamboo fiber that worked better as a filament in the lightbulb developed by Sawyer and Man, who in turn built on lighting work done by others.
Edison's particular inventive contribution was the discovery of a new filament - a particular species of bamboo - that worked better than Sawyer [*723] and Man's carbonized paper because it had a higher resistance to electricity and so turned more of the power routed through the bulb into light. Higher resistance was a useful contribution, though it is worth noting that Edison's core patent, U.S. Patent No. 223,898, was filed in a rush to beat known competitors to market and included elements like a spiral filament that he himself soon abandoned.

Edison found commercial success with his bamboo filament, which lasted much longer than other carbonized vegetable materials. But bamboo didn't turn out to be the future; subsequent inventors came up with still better filaments in short order, n73 and modern incandescent lightbulbs operate on the high-resistance filament principle and use filaments that none of the inventors would have thought possible or feasible.
What Edison really did well was commercialize the invention. His lightbulbs worked better than Sawyer and Man's, not only because he used a better filament but also because he was better at manufacturing them, creating a vacuum seal that significantly extended the life of a lightbulb and made it a commercial success. And like Bell, he succeeded in the marketplace. There is no doubt that Edison added value. But his contribution to the development of the lightbulb was an incremental one in a long chain of improvements.
Edison's lightbulb was somewhat better than the ones that came before it, but his patents were sufficiently broad that they shut down any further efforts to innovate by others until the core patent expired. n194
Edison was aware of the work of others on the lightbulb, and it is plausible that his knowledge of that other work not only shaped his invention but caused him to move more quickly.
And Aylsworth discovered chemical vapor deposition in the course of trying to design a lightbulb with a noncarbon filament in an effort to avoid Edison's patents.

Sandrik [91 Tul. L. Rev. 99 (2016) ] considers the light bulb an example of simultaneous invention:

Simultaneous invention has long been a part of history. For example, we often learn only about the Italian astronomer Galileo as the one responsible for remarkably observing that there are spots on the sun, yet at least three other astronomers working independently in three different countries made this same observation in the same year. n198 Similar stories of simultaneous invention and improvements can be told about Thomas Edison (light bulb), Alexander Graham Bell (telephone), Orville and Wilbur Wright (airplane), Samuel Morse (telegraph), and Eli Whitney (cotton gin). n199

Yes, footnote 199 is to Lemley's "Myth": See Lemley, Myth of the Sole Inventor, supra note 139, at 710-11.

On the other side of the coin, Howells and Katznelson placed a paper -- A Critique of Mark Lemley’s 'The Myth of the Sole Inventor' -- on SSRN in 2011 (responding to an SSRN placement by Lemley). These authors observed:

We show that Lemley has many of his facts wrong, misstates the holdings of several court cases, and mischaracterizes the commercial realities that surrounded implementation of these technologies. His inferences and conclusions regarding patent law are therefore highly questionable.

These authors pointed to Edison's inventive aspect of "high resistance" filaments:

Edison‘s thin carbon filament of high resistance was a departure from the direction every other inventor was pursuing and had critical advantages in a practical electrical illumination system over the prior art lamps employing thicker low resistance carbon rods such as that of Sawyer & Man. First, the Edison filament‘s relatively small current draw permitted use of small diameter (less costly) powering wires and enabled networks of many lamps to be electrically connected in parallel, making the continuous operation of each lamp independent of the others. Second, a collateral advantage not immediately appreciated by Edison‘s contemporaries, was that the very low current draw by Edison‘s high-resistance filaments placed much less critical demands on the conductive interface and contact integrity of the bond between the carbon filament and the platinum leading-in wires. The practical significance of these advantages were apparently missed by many lamp developers including Sawyer & Man, even years after Edison‘s patent issued, as they persisted in futile attempts to solve problems inherent only to thick carbon incandescent rods of low resistance that drew high currents and incurred high rate of erosion.26 A few years after Edison‘s patent issued Sawyer continued to insist that the resistance of the carbon incandescent rod must be kept as low as possible and so he confined his attention to short, thick carbon rods.27
Lemley is misinformed when he asserts that “modern incandescent light bulbs operate on Sawyer and Man‗s principle‖.31 All incandescent lamps today use Edison‘s high-resistance filament principle; none use Sawyer‘s and Man‘s low resistance spring-loaded carbon rods principle; Lemley appears equally in the dark (pun intended) when he contends that Edison‘s advance was merely the first use of bamboo filaments;32 when he summarily concludes without any support that ―Edison did not invent the light bulb in any meaningful sense‖;33 and that ―Sawyer and Man invented … the incandescent light bulb‖.34

Footnote 32 of the authors observes that the word "bamboo" does not appear in Edison's fundamental '898 patent: Bamboo filaments were nowhere mentioned in Edison‘s pioneer 223,898 patent. Edison‘s first claim to bamboo filaments were made in Pat. No. 251,540, which he filed in August 6, 1880. There is no record of this latter patent having been asserted against any party. LBE had pointed this out in 2005, years before Lemley made the incorrect assertion about bamboo. In fact, at the time of filing of the application for what became the '898 patent, Edison had not even tried a bamboo filament. Separately, LBE has pointed out that there were no Edison light bulbs at the Chicago World's Fair in 1893, which was lit by Westinghouse bulbs.

Link to the critique of Mark Lemley: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2123208

**Bechtold, Buccafusco and Sprigman [91 Ind. L.J. 1251 (2016) ] view Edison's work on the light bulb as pioneering:

Before we discuss the implications of our findings for IP law, we should keep two important points in mind. First, when we think about "creativity," we tend to think about the kinds of ideas that represent substantial advancements from existing knowledge: Edison and the light bulb, Picasso and cubism, Perry and "Firework." This kind of pioneering creativity is obviously important; it is the source of Nobel prizes and MacArthur genius grants. Yet despite all of the attention that it receives, it represents a relatively small percentage of human creative endeavor. n146 At least as important are the innumerable tinkerers and tweakers whose only goal is to refine and adapt existing ideas. n147 Quantitatively, and perhaps qualitatively, this kind of creativity is responsible for at least as much scientific and artistic progress as the pioneering kind. For every Edison, Picasso, and Perry, there are dozens, hundreds, or thousands of others who have continued to develop, interpret, and repurpose their ideas. n148

Lesser [24 Tex. Intell. Prop. L.J. 245 (2016) ] wrote: So was the development of the light bulb invention or mere slogging? The Patent Office in the 1880s clearly saw it as the former.

**An intriguing question arises out of this disagreement about "what" Edison invented. If we can't agree on what it was, and the significance thereof, in 2017, about 140 years after the invention, how can we draw lessons about what patent policy should be?

**See also

More on Edison and the light bulb and ethical norms in intellectual property scholarship

But Edison had not solved the problem, and he hired Francis Upton.

Upton was a physicist who had been to school at Bowdoin and Princeton, and had done patent searches for Edison.

See for example, Randall Stross, "The Wizard of Menlo Park," Crown Publishers, 2007.

Dershowitz on Yates and Warren

Alan Dershowitz once noted that the legal profession involved a culture of copying, as distinct
from other academic areas. In recent comments about AAG Yates, he suggested Yates was not
sufficiently proactive in analyzing a new situation.

In commenting on actions by Acting Attorney General Sally Yates, Dershowitz noted Yates should
have made "a nuanced analysis of what parts of the order are constitutional, what parts are
in violation of the statute, what parts are perfectly lawful."

He also commented on statements by Elizabeth Warren, who
"pointed to a part of the Constitution that says no religious test shall ever be required.
But she didn't read the second part of it: for holding public office under
the United States government. It has nothing to do with visas."





Monday, January 30, 2017

NY Times opinion piece labels patent system a "relic of the feudal guild system"

In a piece titled -- End Patent and Copyright Requirements in Nafta --, Dean Baker writes:

Drugs that would be readily available in a free market can be prohibitively expensive because of patent protection. For example, the Hepatitis C drug Sovaldi has a list price of $84,000 in the United States. A high-quality generic version is sold in India for less than $200.

While companies need an incentive for innovating, there are far more efficient mechanisms than patent monopolies. It doesn’t make sense for a 21st century economy to be dependent on this relic of the feudal guild system for supporting innovation.

Ending the patent and copyright requirements in Nafta would be a good first step.

Baker does not identify the "far more efficient mechanisms."

Sunday, January 29, 2017

IPKat on "quotes" that weren't actually said

IPKat has a post titled
When a quote becomes famous: even if it was never quite said that way
which features the "not quite said" quotations:

“the reports of my death are greatly exaggerated”
"play it again, Sam"

IPKat did not mention the IP relevant fake quote "Everything that can be Invented has been Invented" attributed to Duell.

See the 2010 IPBiz post
Plagiarism of a misquotation?


Things that weren't actually said, but became myths

See also the 2005 IPBiz post
"Wrong expert prediction" site starts with fake quote of Duell




Michael Lindell, pillows, and intellectual property

Michael J Lindell founded MyPillow in 2004. He is the listed inventor
on US US 7461424, filed November 23, 2005, with first claim

An apparatus, comprising:

a case; and
a plurality of polyurethane foam pieces disposed in the case, the plurality including a first plurality of foam pieces of a first average size, a second plurality of foam pieces of a second average size, and a third plurality of foam pieces of a third average size, with the first, second, and third average sizes being different, and with the first, second, and third pluralities of foam pieces disposed in the case in a mix, with the first plurality of foam pieces representing approximately 20 to 30 percent of the plurality of polyurethane foam pieces, and with the second plurality of foam pieces and the third plurality foam pieces constituting the remaining foam disposed in the case, in an approximately equal proportion by volume;
wherein the plurality of a polyurethane foam pieces has a density of from about 1.8 pounds per cubic foot to about 1.9 pounds per cubic foot, and an indent force deflection at 25% of from about 27 to about 35.

The design logo MyPillow is a registered trademark. Lindell used many of his own resources to fund the development of MyPillow.

Wikipedia notes an additional IP issue:

On November 1, 2016, My Pillow agreed to pay $1 million ($995,000 in civil penalties and $100,000 California charities benefiting the homeless and victims of domestic violence) to settle a false advertising lawsuit brought in Alameda County Superior Court by Alameda County and eight other California counties. The lawsuit challenged the company's marketing claims, which asserted without proof that its pillows could treat symptoms of fibromyalgia, restless leg syndrome, sleep apnea, cerebral palsy, acid reflux, and other conditions.

CBS Sunday Morning on January 29, 2017; Pogue on low tech batteries

Jane Pauley introduced the stories for January 29, 2017. First up was David Martin's piece on the new warship, the USS Zumwalt. Tracy Smith does the Sunday Profile on Dennis Quaid. Margaret Brennan on architecture in Palm Springs. Nancy Giles on the movie Moonlight. Serena Alschul on mapmaking. David Pogue on batteries.

The news for January 29 started with Kenneth Craig on rulings by federal judges staying the impact on Trump immigration orders. Protests at JFK and LAX. CBS highlighted a tweet on the topic made by Hillary Clinton. Trump phone conversation with Putin. The weather shows no big storms. Chinese New Year on January 28: the year of the rooster.
The Martin story on the USS Zumwalt noted that the USS Missouri was christened 73 years ago and then stated if Batman had a waship, it would be the Zumwalt. CBS noted the captain of the Zumwalt is James Kirk. A theme of the story was the cost of the Zumwalt: 4 billion dollars. Part of the reason was that the design was being done during the building. An example was the initial plan for the Zumwalt (a destroyer) to support ground troops with shells that could reach targets at a distance of 60 miles. These cost $800K per shell. The crew complement is 147 and the Zumwalt is based in San Diego. The story emphasized the novelty of the design concept but noted the high costs caused the initial plans for 32 ships in the class to drop to 3. The story did discuss Admiral Zumwalt, chief of naval operations in 1970 to 1974, and the famous Z-grams.

The almanac feature touched both on intellectual property and New Jersey. Seeing Eye, Inc. was incorporated on January 29, 1929, with the corporation having trademark rights in "seeing eye." The company is based in Morristown, New Jersey. The company has 500 puppies born every year, with the average work length of seeing eye dogs 8 years.

Serena Alschul talked about ski slope mapmaker James Nayhaus (sp?) . He designs maps by taking photographs, projecting them on a screen and hand painting with water color on the projection. Of note, James said "I can't use a computer." While he may have the best job in the world, one questions "how long" this approach will continue.

CBS noted the death of Barbara Hale of "Perry Mason" fame, who was the last survivor of the major cast.
Nancy Giles did a piece on the movie "Moonlight," which was made in 25 days for less than $5 million.
Margaret Brennan talked about the mid-century architecture of Palm Springs, CA. Mid-century modern aesthetic. Allusions to the tv show "Mad Men."

David Pogue talked about batteries, which will also be discussed in the coming week on Nova. Pogue noted two reasons for cheap batteries: 1. to create load-leveling to balance times of high demand (day) with times of low demand (night). This would be to efficiently use power generated from sources such as fossil fuel, nuclear, or hydroelectric, and not waste what is made at night. 2. to store energy from intermittent sources such as solar and wind. "Batteries" in this context are broadly contemplated. The first example was pumped hydro in Bath County, Virginia, wherein energy from low demand periods is used to pump water up to a higher reservoir, which "high energy" water is then released to a lower reservoir during periods of high demand. Another example was "ice energy" wherein energy from low demand periods is used to freeze water, which ice is later used for air conditioner cooling. A third example was flywheels designed by Amber Kinetics. A line in the story: American inventors are not finished yet.

A press release from Amber, one year ago in January 2016 noted:

Amber Kinetics’ technology offers critical advantages over batteries. Even with unlimited cycling during their 30-year lifespan, the systems have no degradation. Because they are 98% steel by weight, they pose no risk of fire, chemical explosion or hazardous materials release. Most important, because they are manufactured from readily available, abundant raw materials and don’t need replacement at regular intervals, they are significantly more cost effective than batteries.

ThinkProgress.org wrote in 2013:

The Bath County Hydro Pumped Storage Facility is not really a battery in the common sense of the term, but it is the largest pumped storage facility in the world. It stores a lot of energy, which helps 60 million people in 13 states (and DC) served by the regional transmission organization, PJM Interconnection.

Both Rita Braver and Jane Pauley mentioned the influence of Mary Tyler Moore on their lives.

Moment of nature was bighorn sheep in Jackson Hole, Wyoming

**As a footnote to Clinton's tweet, recall the long ago "Avengers" episode "The Bird Who Knew Too Much," which had the character Twitter. Edgar Twitter was the caretaker for "Captain Crusoe," a blue & gold macaw "a king, an emperor among parrots." The macaw could learn any phrase, and mimic the tone and intonation of the person who taught it to him. The last attribute allows the Avengers to identify Cunliffe as the evil doer in the episode. The macaw even does his own thinking; after the bad guys are caught, Captain Crusoe demands political asylum. Apart from the display of various parrots, the episode is notable for Diana Rigg's outfit in the final "joke" scene.

Friday, January 27, 2017

CAFC vacates PTAB's decision in SCHWEICKERT; no motivation to combine

In the non-precedential case -- IN RE: JENNIFER SCHWEICKERT -- [2017 U.S. App. LEXIS 1374 ] involving
a PTAB ex parte re-examination decision unfavorable to the patentee, the CAFC stated:
"we vacate the Board’s decision."

Of the earlier review, the CAFC noted:

The Patent and Trademark Office instituted an ex parte reexamination
of all of the claims of the ?272 Patent. During the reexamination,
a PTO examiner concluded that the patent claims were obvious in light of several,
two-reference combinations. The Board affirmed the examiner's conclusion of obviousness,
relying on only one combination: Birrell and Cunniff. J.A. at 4-7. In doing so,
it explained that there was

no reason why Birrell would not have benefitted
from the advantages of including Cunniff's semaphore mechanism. Cunniff's
semaphore mechanism is readily applicable to Birrell because Birrell plays
data stored in [the] RAM and also copies data from the disk drive to the RAM.
As such, modifying Birrell to include Cunniff's semaphore mechanism would
have been a predictable use of prior art elements according to their
established functions—an obvious improvement.

Of the standard of review of PTAB:

We review the Board’s factual findings for substantial
evidence and its legal conclusions without deference. Flo
Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367,
1375–76 (Fed. Cir. 2012) (citing cases). Substantial
evidence “means such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1337
(Fed. Cir. 2016) (quoting Consol. Edison Co. of N.Y. v.
NLRB, 305 U.S. 197, 217 (1938)).

As a problem for the PTAB decision:

Here, the Board never sufficiently justifies why Cunniff’s
semaphore would provide an “obvious improvement”
to Birrell. J.A. at 5. At oral argument, the PTO argued
that it would have been obvious to substitute Birrell’s
play control logic with Cunniff’s semaphore. See Oral
Argument at 16:00–17:00, http://oralarguments.cafc.

The CAFC cites to KSR on an issue of motivation to combine:

The Board’s decision is deficient in another respect.
Even if the semaphore in Cunniff were readily applicable
to the RAM in Birrell, the Board has not explained why or
how a skilled artisan would further configure or manipulate
Birrell’s RAM such that there would be multiple
lockable buffers as claimed in the ’272 Patent. See ’272
Patent col. 10 ll. 42–563; see also KSR, 550 U.S. at 418
(stressing that it is “important to identify a reason that
would have prompted [a skilled artisan] to combine the
elements in the way the claimed new invention does”
(emphasis added)).

Of a finding not made:

The PTO suggests that a skilled artisan would have
been motivated to combine Cunniff and Birrell despite the
difficulties of doing so because Birrell’s system would be
more cost-effective to manufacture with Cunniff’s semaphore.
See Appellee Br. at 24 (first citing J.A. at 536; and
then citing Cunniff col. 1 ll. 34–38). But the Board never
made this finding. And even if the Board did, the record
does not appear to substantiate it.

697 F.3d 1367; 2012 U.S. App. LEXIS 22081; 104 U.S.P.Q.2D (BNA) 1834,
one recalls this case observed:

It is not proper to import from the patent's written description limitations
that are not found in the claims themselves. Silicon Graphics, Inc. v. ATI Techs., Inc.,
607 F.3d 784, 792 (Fed. Cir. 2010) ("A construing court's reliance
on the specification must not go so far as to import limitations
into the claims from examples or embodiments appearing only in a
patent's written description unless the specification makes clear
that the patentee intends for the claims and the embodiments in the specification to be strictly coextensive.")

One also recalls Judge Plager's "additional views":

The opinion in this case intentionally elides the question
of the standard of review applied by this court to
claim construction decisions of the Board (the Patent Trial and Appeal Board,
formerly the Board of Patent Appeals and Interferences).
The reason is that various of our cases seem to apply
one or the other of two (possibly three—see infra) inconsistent standards,
mostly without acknowledging that the other standard exists.
It is difficult to know which of these standards is the operative one.
In this case, the outcome is the same under whatever standard,
but that may not always be the case, and it is not helpful to the bar
and the parties in appeals to this court to leave the issue unclear.

**Of standards of review, CA7 once wrote:

There is a division within this court over whether
we must or even can establish fine gradations of judicial review.
(See the opinions in United States v. McKinney, 919 F.2d 405 (7th Cir. 1991);
also Haugh v. Jones & Laughlin Steel Corp., 949 F.2d 914,
slip op. at 4 (7th Cir. 1991).)

One school of thought holds that the verbal differences
in standards of judicial review
(arbitrary and capricious, clearly erroneous, substantial evidence,
abuse of discretion, substantial basis, etc.)
mark real differences in the degree of deference that the reviewing court should give the findings and rulings of the tribunal being reviewed.
The other school holds that the verbal differences are for the most part merely semantic,
that there are really only two standards of review -- plenary and deferential --
and that differences in deference in a particular case depend
on factors specific to the case, such as the nature of the issue, and the evidence,
rather than on differences in the !
stated standard of review.

In a trademark case [971 F.2d 6 ], CA7 noted:

Since Abbott offered no credible evidence demonstrating that the name "Ricelyte" actually misleads consumers or pediatricians into believing Ricelyte contains rice and rice carbohydrates, Mead continues, Abbott cannot prevail.

We reject this argument. First, the district court's preliminary finding that "Ricelyte" imparts the express message that Ricelyte contains rice and rice carbohydrates is a finding of fact, entitled to deference unless clearly erroneous. While reasonable minds might differ as to the nature (express or implied) of this message, we hesitate to conclude that the count's reading was clearly erroneous. Accordingly, Abbott need not present evidence of actual confusion to prevail on the merits. PPX Enterprises, 818 F.2d at 272.

Where reasonable minds could not differ, from CA5 (228 F.2d 307; )

therefore these jury findings cannot be set aside unless they are so clearly erroneous that reasonable minds could not differ in reaching a different result. City of Amarillo v. Copeland, 5 Cir., 218 F.2d 49.

And from MD FL ( 2016 U.S. Dist. LEXIS 81193 )

The state court's findings were clearly erroneous, beyond any possibility for reasonable minds to disagree about the factfinding in question.18 See Brumfield, 135 S. Ct. at 2277; Daniel, 2016 U.S. App. LEXIS 8952, 2016 WL 2849481, at *6; Landers, 776 F.3d at 1294.

And from D. South Dakota (196 F. Supp. 2d 960 ):

The ALJ and Appeals Council's findings are clearly erroneous and not supported by evidence that a reasonable mind would accept as being adequate to support the conclusion they reached. See Richardson v. Perales, 402 U.S. 389, 401, 28 L. Ed. 2d 842, 91 S. Ct. 1420 (1971);

Thursday, January 26, 2017

Mylan loses its argument that "FDA invented it"

In Cumberland v. Mylan, 2017 U.S. App. LEXIS 1375, the CAFC
affirmed ND Ill's decision in
Cumberland Pharm., Inc. v. Mylan Institutional LLC,
137 F. Supp. 3d 1108, 1121-22, 1127 (N.D. Ill. 2015).

The outcome at district court level

At the bench trial, Mylan argued that (1) the ’445 patent
had been derived from someone at the FDA, on the
theory that it was someone at the FDA, not Mr. Pavliv,
who first had the idea to remove EDTA from the prior-art
formulation, and (2) the invention would have been obvious
in light of certain prior-art communications from the
FDA. The district court held that (1) Mylan had not
proved that anyone at the FDA conceived of the invention
before Cumberland’s inventor did, Cumberland, 137 F.
Supp. 3d at 1121–22, and (2) there was no reasonable
expectation that a formulation without any chelating
agents would be successful, given the prevailing skilledartisan
view that chelating agents were necessary to
prevent degradation of acetylcysteine, id. at 1127. The
court entered a final judgment of validity and infringement
on November 17, 2015.

As to derivation:

Mylan’s derivation challenge invokes the rule that an
applicant is not entitled to a patent if “he did not himself
invent the subject matter sought to be patented.” 35
U.S.C. § 102(f) (2006).

More specifically, it invokes the
familiar requirement that a challenger asserting this
ground show that there was a “prior conception of the
claimed subject matter and communication of the conception”
to the named inventor. Price, 988 F.2d at 1190; see
Creative Compounds, LLC v. Starmark Labs., 651 F.3d
1303, 1313 (Fed. Cir. 2011); Eaton Corp. v. Rockwell Int’l
Corp., 323 F.3d 1332, 1344 (Fed. Cir. 2003); Gambro
Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573,
1576 (Fed. Cir. 1997) (“To show derivation, the party
asserting invalidity must prove both prior conception of
the invention by another and communication of that
conception to the patentee.”). The conception requirement
of derivation borrows from the conception standard for
prior invention. Creative Compounds, 651 F.3d at 1313
(relying on the conception analysis from a discussion of
priority earlier in the opinion as sufficient in the discussion
of derivation). Conception is keyed to the claimed
invention: “A conception must encompass all limitations
of the claimed invention.” Singh v. Brake, 317 F.3d 1334,
1340 (Fed. Cir. 2003); see Taurus IP, LLC v. DaimlerChrysler
Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013);
Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256,
1263 (Fed. Cir. 2002); Brown v. Barbacid, 276 F.3d 1327,
1336 (Fed. Cir. 2002). Conception requires more than “a
general goal or research plan”; it requires a “definite and
permanent,” “specific, settled idea,” namely, the idea
defined by the claim at issue. Burroughs Wellcome Co. v.
Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994); see
REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954,
962 (Fed. Cir. 2016).

Mylan did not succeed at district court:

In this case, as the derivation issue was litigated, it
suffices to focus on the fact that the required complete
conception had to include the specific idea to remove
EDTA from Acetadote® (or a similar product that met all
the other ’445 claim elements) and not add another chelating
agent. It was that idea which Mylan had to show,
by clear and convincing evidence, was conceived by someone
at the FDA and communicated to Mr. Pavliv. See
Amax Fly Ash Corp., 514 F.2d at 1048.
The district court found that Mylan did not carry that


A request for justification
of the inclusion of EDTA, supported by data, is not the
same as a suggestion to remove it, let alone to remove it
and not replace it with another chelating agent.

Tinnus, CGI and filing objections to a magistrate's order

In Tinnus v. Telebrands, 2017 U.S. App. LEXIS 1198, a preliminary injunction was granted based on a report and recommendation by a Magistrate Judge:

Tinnus filed its patent infringement suit against Telebrands on the day the '066 patent issued and filed a motion for a preliminary injunction nine days later. The Magistrate Judge reviewed the briefing and held a hearing to evaluate evidence on the preliminary injunction factors before recommending that Tinnus's motion be granted.


The Magistrate Judge also concluded that the balance of hardships and public interest factors weighed in Tinnus's favor due to the relative size of the parties and the strong public interest in enforcing valid patents. Because Tinnus established all four factors required for a preliminary injunction, the Magistrate Judge recommended granting Tinnus's motion.

Telebrands timely filed its objections to the Magistrate Judge's R&R, alleging that it erred (1) by failing to provide a claim construction for the "attached," "connecting force," "elastic fastener," and "shaking" limitations; (2) by improperly shifting the burden of proof to Telebrands on infringement and invalidity; and (3) by relying on insufficient evidence to support findings of commercial success and copying.4 Notably, Telebrands did not object to the Magistrate Judge's indefiniteness ruling or its rejection of Telebrands' obviousness arguments. The district court overruled each of the objections, adopted the R&R's findings, and entered a preliminary injunction.

Of the standard of review by the appellate court, the CAFC noted:

Under Fifth Circuit law, where a party fails to object to a magistrate judge's findings of fact, conclusions of law, or recommendation to the district court, plain error review applies to those unobjected-to factual findings and legal conclusions adopted by the district court. Douglass v. United Servs. Auto. Ass'n, 79 F.3d 1415, 1430 (5th Cir. 1996) (en banc), superseded by statute on other grounds, 28 U.S.C. § 636(b)(1) (extending time to file objections from ten to fourteen days). "To prevail under [the plain error] standard, the appellant 'must show (1) that an error occurred; (2) that the error was plain, which means clear or obvious; (3) the plain error must affect substantial rights; and (4) not correcting the error would seriously impact the fairness, integrity, or public reputation of judicial proceedings.'" Ortiz v. City of San Antonio Fire Dep't, 806 F.3d 822, 825-26 (5th Cir. 2015) (quoting Septimus v. Univ. of Hous., 399 F.3d 601, 607 (5th Cir. 2005)). "When the nature of the claimed error is a question of fact, however, the possibility that such a finding could rise to the level of obvious error required to meet part of the standard for plain error is remote." Casas v. Aduddell, 404 F. App'x 879, 881 (5th Cir. 2010).

CA5 in Douglass has a lengthy discussion of "unobjected to" findings/conclusions which includes the text:

As stated, Nettles offered no explanation for changing the appellate waiver rule announced in Lewis to a forfeiture rule applicable only to factual findings. Nor can we perceive any valid reason for distinguishing between proposed factual findings and proposed legal conclusions when parties fail to object to a magistrate judge's report and recommendation. In both instances, the point that should have been stated in an objection is later made for the first time on appeal. There is no basis for excepting such accepted unobjected-to proposed legal conclusions from our longstanding practice of [*1423] refusing to consider issues raised for the first time on appeal, absent plain error. See Calverley, 37 F.3d at 162-64. Pursuant to our new appellate forfeiture rule for accepted unobjected-to proposed findings and conclusions, we no longer will make such an exception for such legal conclusions.

The efficacy of our rule applying to legal, as well as factual issues, is even more so for review of a summary judgment (the subject of this appeal), because a summary judgment involves only legal issues, not findings of fact. 11 The salutary purposes underlying summary judgment, and the procedures used in considering it, see FED. R. CIV. P. 56, are thwarted, if not destroyed, by this aspect of our former rule. Moreover, in the larger scheme of things, this aspect of our former rule flies in the face of FED. R. CIV. P. 1 ("to secure the just, speedy, and inexpensive determination of every action"), and of the growing judicial recognition of the many benefits of summary judgment. See, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 327, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986) ("summary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole"); see also Little v. Liquid Air Corp., 37 F.3d 1069, 1075-76 (5th Cir. 1994) (en banc).

- - - - - - - - - - - - - - Begin Footnote 11- - - - - - - - - - - - - - -
Footnote 11. A summary judgment requires determining not only whether there are material fact issues, but also, if there are none, whether the prevailing party is entitled to judgment as a matter of law. FED. R. CIV. P. 56(c). Both considerations are legal issues (questions of law); neither is a finding of fact. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). "As to materiality, the substantive law will identify which facts are material. Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment. Factual disputes that are irrelevant or unnecessary will not be counted". Id. at 248. A court having decided which facts are material, the next "inquiry performed is the threshold inquiry of determining whether there is the need for a trial -- whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party". Id. at 250. Along this line, it is well to remember that summary judgment is simply another form of judgment as a matter of law, as reflected in the 1991 amendments to FED. R. CIV. P. 50. As the advisory committee's note to Rule 50 explains,

the expressed standard makes clear that action taken under the rule is a performance of the court's duty to assure enforcement of the controlling law and is not an intrusion on any responsibility for factual determinations conferred on the jury by the Seventh Amendment or any other provision of federal law. Because this standard is also used as a reference point for entry of summary judgment under 56(a), it serves to link the two related provisions.

FED. R. CIV. P. 50(a), advisory committee's note (1991).

- - - - - - - - - - - - End Footnote 11- - - - - - - - - - - - - -


The second significant change made today deals with the exception to our new appellate forfeiture rule for accepted unobjected-to proposed findings and conclusions. As quoted earlier, Nettles held that the exception was "upon grounds of plain error or manifest injustice", implying that those two terms have different meanings, but not explaining the difference, if any. 677 F.2d at 410 (emphasis added). However, as also quoted earlier, in Hardin, decided only a month after Nettles, our court, after quoting the preceding language from Nettles, omitted "manifest injustice", stating that the exception to our former rule was "a plain error review". 678 F.2d at 591 (emphasis added). See also Griffini v. Mitchell, 31 F.3d 690, 692 (8th Cir. 1994) (citing Nettles, but reviewing magistrate judge's unobjected-to findings of fact only "for plain error").

END text from Douglass

As the CAFC noted, 28 USC 636(b)(1)(C) was changed after Douglass and currently states:

Within fourteen days after being served with a copy, any party may serve and file written objections to such proposed findings and recommendations as provided by rules of court. A judge of the court shall make a de novo determination of those portions of the report or specified proposed findings or recommendations to which objection is made.

FRCP 72 notes for

nondispositive motions: A party may not assign as error a defect in the order not timely objected to. The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.

dispositive motions: The magistrate judge must enter a recommended disposition, including, if appropriate, proposed findings of fact. (...) The district judge must determine de novo any part of the magistrate judge's disposition that has been properly objected to.

Although the Douglass court stated -- even more so for review of a summary judgment (the subject of this appeal), because a summary judgment involves only legal issues -- , an issue in Tinnus, infringement, is a question of fact.

Of legal matters, the failure to object to the indefiniteness conclusion had consequences. The CAFC noted:

"[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope [*22] of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124, 189 L. Ed. 2d 37 (2014). Because Telebrands did not object to the R&R's indefiniteness determination, we review the district court's determination on indefiniteness for plain error. Douglass, 79 F.3d at 1430.

Telebrands attempts to circumvent this deferential standard of review by arguing that objecting to the R&R's claim construction, or lack thereof, put the Magistrate Judge on notice that it was contesting the definiteness of "substantially filled." We disagree. Nowhere in its objections to the R&R does Telebrands mention the word "indefinite," J.A. 1986-88, and "substantially filled" is not even among the terms flagged by Telebrands—"attached," "connecting force," "elastic fastener," and the "shaking" limitation—as requiring construction. Id. We fail to see how seeking the construction of different, albeit related, claim terms would put the district court on notice of Telebrands' objection to the R&R's conclusion that "substantially filled" was not indefinite.


For these reasons, the district court's conclusion that Telebrands' indefiniteness argument failed to raise a substantial question of validity does not suffer from a "clear or obvious" error, Ortiz, 806 F.3d at 825-26, requiring reversal under plain error review. Because we find no clear or obvious error, we need not address the other plain error factors articulated by the Fifth Circuit in Ortiz

The CAFC did not discuss any specific findings of fact made by the Magistrate. The CAFC's reference to 2015 U.S. Dist. LEXIS 178418 in the CAFC's text --The district court overruled Telebrands' objections to the R&R, adopted the R&R's findings, [*3] and granted Tinnus's motion. Tinnus Enters., LLC v. Telebrands Corp., No. 15-00551, 2015 U.S. Dist. LEXIS 178418, 2015 WL 11089480 (E.D. Tex. Dec. 2, 2015) would seem to be in error. Lexis 178418 concerns a Motion to Dismiss pursuant to the first-to-file rule and a venue motion AND does not concern objections to the R&R. In the order of December 13, 2016, 2016 U.S. Dist. LEXIS 172471 , the magistrate judge presented claim constructions. On January 3, 2017, the district court judge adopted the magistrate's recommendations. 2017 U.S. Dist. LEXIS 390, which includes -- Having considered each of the Retailers' objections, the Court ADOPTS the Report and Recommendation of the Magistrate Judge (Doc. No. 182) as the findings of this Court. All objections are OVERRULED. -- There is no explicit reference to "findings of fact."

In a post titled Federal Circuit Closes the Door on CGI Preliminary Injunction , PatentlyO stated

Following on the heel of the Federal Circuit’s approval of preliminary relief in the water balloon case [Tinnus], the court here [CGI case] has reversed a lower court’s preliminary injunction – finding its claim construction error led the district court to incorrectly conclude that the patentee (CGI) was likely to prevail on the merits.


In their briefs, both parties agreed that the district court relied upon factual evidence in the form of expert testimony (from both sides) for its claim construction conclusions. However, the order apparently does not follow Fed.R.Civ.Pro. 52(a), by separately finding facts and stating conclusions of law butu instead “mingled factual and legal conclusions with no distinction between the two.” (patentee brief).

Contradicting both parties, the Federal Circuit on appeal held that it need not give any deference to any of the district court conclusions since “there is no indication that the district court made any factual findings that underlie its construction.”

Unfortunately, the district court order is under seal and therefore not available. As such, we cannot know who is right in this instance. Update: I found a redacted version of the district court opinion in the appendix filed to the Federal Circuit. [cgi_appendix] In its claim construction, the court repeatedly refers to and relies upon competing expert testimony, but doesn’t appear to make any straight-up factual findings. I have to think about my – conclusion here, but I have crossed-out the “aggressive” undermining from above.

One notes that a "review of findings of fact" is not so clear in the Tinnus case. Moreover, as a general question, how can an appealing party object to "findings of fact" when the magistrate judge issues an order without findings of fact or conclusions of law?

**As a practice pointer, one notes that 14 days is not a long time to perform a comprehensive analysis to make thorough objections to a magistrate's order. If nothing else, the Tinnus case illustrates the later consequences of not making an objection.

**In terms of deadlines, the rule on interlocutory appeal under 1292, as enforced in D.N.J., is even more onerous.

** There was an "analogous art" issue in Tinnus:

A prior art reference is analogous and thus can be used in an obviousness combination if it "is from the same field of endeavor, regardless of the problem addressed" or "is reasonably pertinent to the particular problem with which the inventor is involved," even if it is not within the inventor's field of endeavor. Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1000-01 (Fed. Cir. 2016) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). The particular problem confronting the inventor here was how to rapidly fill multiple containers with fluid. This is far removed from the problems associated with an endoscopic balloon insertion device for treating obesity, and Telebrands has not demonstrated that Lee is reasonably pertinent to the problem addressed in the '066 patent. Therefore, under a plain error review, we cannot say that the district court committed a clear or obvious error when it found insufficient motivation to combine these disparate references. Absent a motivation to combine, Telebrands' remaining obviousness arguments are unavailing.

**The CAFC noted parallel PTAB proceedings:

Operating in parallel to the district court proceeding was Telebrands' [*13] PGR petition seeking to invalidate the '066 patent. The PTAB, relying on the same evidence and arguments before the district court, instituted review on all claims of the '066 patent shortly after the district court granted Tinnus's request for a preliminary injunction.


The PTAB also found that a combination of Cooper, Saggio, and Lee would likely render claim 1 obvious. Id. at *14. According to the PTAB, a POSA would have combined Saggio with Cooper to create a multi-balloon filling assembly by "attach[ing] balloons to the ends of the flexible tubes of Cooper's sprinkler" and would have added Lee's mechanism for clamping and sealing the balloons once filled because it was "reasonably pertinent to a particular problem the inventor of the '066 patent was trying to solve." Id. at *13.


We are aware that the PTAB issued a Final Written Decision on December 30, 2016, concluding that the claims of the '066 patent are indefinite. The PTAB's decision is not binding on this court, and based on the record before us and the applicable standard of review, it does not persuade us that the district court abused its discretion in granting the preliminary injunction. The parties are, of course, free to ask the district court to reconsider its preliminary injunction in light of the PTAB's Decision.

Tuesday, January 24, 2017

CAFC rules on preliminary injunction in Tinnus v. Telebrands

The technical area was a toy for filling water balloons and the outcome was affirmance of a grant of preliminary injunction by ED Texas.

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1410.Opinion.1-19-2017.1.PDF

Are law review authors and editors competent to review technical concepts as they relate to patent law?

As to "myths" which appear in law reviews, some discussion about Mark Lemley's "Myth of the Sole Inventor" [ 105 Mich. L. Rev. 1525 ] appeared in IPBiz

Separately, some commentary from Lisa Larrimore Ouellette related to Lemley's Myth of the Solo Inventor, and "review" of law review articles:

Lemley isn't making any claims about the scope of the patents these inventors received, so whether "bamboo" appears in Edison's patent is irrelevant. Rather, his claim is a historical one: that while society thinks of Edison as stepping into vacuum and independently creating this pioneering invention, he was really building on others' ideas much more than the canonical myth suggests. I don't think Lemley did original research on this - he relied on peer-reviewed articles like this one - and it is possible that the scholars he relies on got the history wrong. But I don't think your post on ezinearticles about whether Edison was a patent troll really addresses this historical claim.

Thanks for citing your article about Lemley's claim that "[t]he transistor was originally conceived primarily as useful in hearing aids" (to make it easier for others reading these comments, here is a link to your article on Hein, and the relevant page is 86). I haven't carefully checked your sources (just as I don't carefully check the sources of articles I blog about, since this is a blog, not a law review), but it looks like you are right that this is as much a myth as the other myths Lemley debunks!

Ethical norms in "intellectual property" scholarship?

**As to the topic of examples of multiple independent discovery, Lemley included both the light bulb and the transistor in his "Myth" law review. Lemley mentioned some earlier work of Samson Vermont [Independent Invention as a Defense to Patent Infringement, 90 J. Pat. & Trademark Off. Soc'y 268 (2008). which theme apparently also appears in Independent Invention as a Defense to Patent Infringement, 105 Mich. L. Rev. 475 (2006)]

As one relevant point, Roger Milgrim questioned the utility of the Vermont work in An Independent Invention Defense to Patent Infringement: The Academy Talking to Itself: Should Anyone Listen?, 90 J. Pat. & Trademark Off. Soc'y 295 (2008) and separately questioned the usefulness of law review articles on technical subjects:

footnote 10: Law review editorial boards, typically made up of third year law students, rarely have sufficient experience with the subject matter of the articles they are charged with editing to function as a meaningful check in this regard.

footnote 12 Vermont is laced with "monopoly" terminology and clearly equates rights as a monopoly. See, e.g., Vermont, 105 MICH L. REV. at 475 (synopsis), 493 ("If the defense is adopted into law, a reinventor could compete with whoever ends up as the patentee, thereby breaking up the patent monopoly into a duopoly.") and 480 (describing shortcomings of monopolies) [90 JPTOS at 268, 285, and 273].

Also, footnote 13 of Milgrim

A database search using the term "patent monopoly" will return over 1,700 federal cases that have used the term," including Illinois Tool Works, Inc. v. Independent Ink, Inc., 547 U.S. 28, 34, 126 S. Ct. 1281, 1286 (2006) (overturning a per se patent tying rule the Court itself had devised, but nonetheless using "monopoly" terminology).

As to the Supreme Court using the word "monopoly" in a patent context, IPBiz notes:

in Cuozzo, 136 S. Ct. 2131; 195 L. Ed. 2d 423

The purpose of inter partes review is not only to resolve patent-related disputes among parties, but also to protect the public's “paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.”

in Teva, 135 S. Ct. 831; 190 L. Ed. 2d 719 :

Because they are governmental dispositions and provide rules that bind the public at large, patent claims resemble statutes. The scope of a patent holder’s monopoly right is defined by claims legally actualized through the procedures established by Congress pursuant to its patent power. Thus, a patent holder’s actual intentions have effect only to the extent that they are expressed in the public record. See Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 279, 24 L. Ed. 344, 1877 Dec. Comm'r Pat. 384 (1877); see also Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 227, 26 L. Ed. 149, 1881 Dec. Comm'r Pat. 131 (1880) (examining “the avowed understanding of the patentee,” but disclaiming any holding that such understanding “c[ould] be allowed to enlarge, diminish, or vary the language of a patent afterwards issued”).

Note FTC vs. Actavis, 133 S. Ct. 2223; 186 L. Ed. 2d 343

in Dastar, 539 U.S. 23; 123 S. Ct. 2041; 156 L. Ed. 2d 18 :

Once a copyright has expired, the right to copy--and to copy without attribution--passes to the public, as does the right to make an article whose patent has expired, which right includes the right to make the article in precisely the shape that the article carried when patented. In general, unless an intellectual property right such as a patent or copyright protects an item, the item will be subject to copying. The rights of a patentee or copyright holder are part of a carefully crafted bargain, under which--once the patent or copyright monopoly has expired--the public may use the invention or work at will and without attribution.


The right to copy, and to copy without attribution, once a copyright has expired, like "the right to make [an article whose patent has expired]--including the right to make it in precisely the shape it carried when patented--passes to the public." Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230, 11 L. Ed. 2d 661, 84 S. Ct. 784, 1964 Dec. Comm'r Pat. 425 (1964)
in KSR, 550 U.S. 398; 127 S. Ct. 1727; 167 L. Ed. 2d 705;
a "patent for a combination  [*416]  which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

**Also on law reviews

From David L. Schwartz and Lee Petherbridge, 26 Berkeley Tech. L.J. 1561 (2011)

However, there are a few important questions concerning institutional constraints on the legal academy that should be confronted: Are most law professors even qualified to make valid and reliable contributions to the topics specially addressed by the Federal Circuit? n99 Is there a greater need for advanced scientific and research training for law professors who might most meaningfully contribute to Federal Circuit decisionmaking? Would the availability of peer review make scholarly offerings more useful to Federal Circuit judges? Assuming they are qualified to do the work, are most law professors able to devote enough time to research to be able to meaningfully contribute to important questions implicated by the areas of law addressed by the Federal Circuit,or do publication frequency requirements, or teaching and service obligations not  [page 1598]  normally felt by research faculty in some other disciplines, significantly interfere with the utility of the scholarship produced? A similar concern is whether the limited research funding available to most law professors prohibits them from successfully executing projects that might be substantially useful to decisionmakers. If law professors are mostly limited to anecdotally-driven normative claims, doctrinal interpretations, and concept-driven empirical guesswork, how much value do such claims and interpretations add to the bodies of law entrusted to the Federal Circuit? These and similar questions are ripe for serious investigation in the context of national circuit courts.


As to the "transistor for hearing aid" story of Lemley, which is based on a "news release" in turn based on a non-existent 1947 article in the New York Times, one sees the myth of the hearing aid is still presented as an example "wildly inaccurate assessment" by inventors:

In the real world, it is extraordinarily difficult to assess ex ante just how valuable a particular piece of technology will be. n280 The history of modern technology is littered with examples of wildly inaccurate assessments. Marconi and Deforest, for example, predicted that radio would be used only for point-to-point communication; neither foresaw commercial broadcasting as a viable application. n281 IBM likewise failed to foresee that there would be [page 440] a commercial market for computers. n282 And the transistor was expected to make a splash primarily in the hearing aid market. n283

from Brian Love, 90 N.C.L. Rev. 379 (2012)

In fact, the New York Times, in 1948 (one day after the public disclosure by Bell Labs), covered three potential applications of the transistor, which turned out to be quite accurate. It is separately true that Bell Labs licensed the relevant patents for a nominal charge, leading to significant development in the consumer area by what became Sony.

The "wild inaccuracies" appear in law reviews! The correct story of the New York Times article appears in 8 JMRIPL 80 (2008), published years before before Lemley's "Myth" and Love's "pioneering invention" paper.

**As one footnote to Oullette's comments [e.g., I haven't carefully checked your sources (just as I don't carefully check the sources of articles I blog about, since this is a blog, not a law review)], one should note that Oullette has a Ph.D. in physics from Cornell and authored a paper -- Probing electrostatic potentials in solution with carbon nanotube transistors, L Larrimore, S Nad, X Zhou, H Abruna, PL McEuen - Nano letters, 2006 -- so one might think that she should have some familiarity with the story of the transistor and separately of Edison's concept of high resistance carbon filaments in light bulbs.

The CAFC considers oxidation in Zhejiang v. Kaneka

The bottom line:

Under the proper construction, even without consideration
of Dr. Sherman’s opinions, we conclude there is a
dispute of material fact regarding whether ZMC’s processes
meet the “oxidizing” limitation in claims 22 and 33.
The district court erred in granting ZMC’s motion for
summary judgment of noninfringement.

The dispute:

At the outset, Kaneka argues the district court “improperly
changed” our construction of “oxidizing” in
Kingdomway from “some action resulting in oxidation” to
an action that increases the amount of oxidation above a
baseline of passive oxidation. It argues the district court’s
changed construction led it to erroneously exclude
Dr. Sherman’s expert report and grant summary judgment
of noninfringement. We agree in part.

In Kingdomway, we held “oxidation requires an active
step.” 790 F.3d at 1305.

The district court interpreted our construction to
mean “some amount of oxidation, in excess of that which
occurs naturally from exposure to ambient air, must be
caused by an ‘active step’ in the coenzyme Q10 manufacturing
process.” J.A. 48 (emphasis added). This is not
precise. The only bounds provided by Kingdomway on
what constitutes an “active step” or “active oxidation” is
that it does not require use of an oxidizing agent. 790
F.3d at 1306. The opinion emphasizes that there must be
“some action resulting in oxidation”; the oxidizing step
“cannot be interpreted as doing nothing, or to simply
allow oxidation to occur on its own.” Id. at 1305–06
(emphasis added). But the opinion does not state that to
be an active step, the oxidation rate must be greater than
that of passive oxidation. And it is silent as to any degree
of oxidation that would be necessary to qualify as active
oxidation. The opinion simply requires that there be
some action that results in oxidation. Id. at 1307.

Observe footnote 2:

The question whether the term “oxidizing” requires
an oxidizing agent was before the prior panel of
this court, and we are bound by their decision that it does
not. See id. Thus, it is not a decision that we can review.

Monday, January 23, 2017

More on "myths" surrounding simultaneous independent invention

Further to the IPBiz post
The theme of independent invention, and whether the same thing was invented
, which in part discussed Mark Lemley's
Myth of the Sole Inventor, a previous post on IPBiz had noted:

Separately, some commentary from Lisa Larrimore Ouellette related to Lemley's Myth of the Sole Inventor, and "review" of law review articles:

Lemley isn't making any claims about the scope of the patents these inventors received, so whether "bamboo" appears in Edison's patent is irrelevant. Rather, his claim is a historical one: that while society thinks of Edison as stepping into vacuum and independently creating this pioneering invention, he was really building on others' ideas much more than the canonical myth suggests. I don't think Lemley did original research on this - he relied on peer-reviewed articles like this one - and it is possible that the scholars he relies on got the history wrong. But I don't think your post on ezinearticles about whether Edison was a patent troll really addresses this historical claim.

Relevant text in Lemley's article [110 Mich. L.R. 709 (2012) ] includes:

Edison's particular inventive contribution was the discovery of a new filament - a particular species of bamboo -
that worked better than Sawyer [p. 723] and Man's carbonized paper because it had a higher resistance to electricity and
so turned more of the power routed through the bulb into light. Higher resistance was a useful contribution, though it is
worth noting that Edison's core patent, U.S. Patent No. 223,898, was filed in a rush to beat known competitors to market
and included elements like a spiral filament that he himself soon abandoned.

Edison found commercial success with his bamboo filament, which lasted much longer than other carbonized
vegetable materials. But bamboo didn't turn out to be the future; subsequent inventors came up with still better filaments
in short order, n73 and modern incandescent lightbulbs operate on the high-resistance filament principle and use
filaments that none of the inventors would have thought possible or feasible.

As to "bamboo," Lemley did not rely on any "peer-reviewed articles" in his law review. Edison's inventive contribution was the concept of a high resistance filament, recited in US 223,898, and was not a bamboo filament, not recited in US '898 or even known to Edison at the time of filing the application for US '898. Lemley presented no evidence that others were working on this inventive contribution prior to, or simultaneously, with Edison or Edison's people. Edison did NOT find commercial success with the bamboo filament.

The idea that Edison "invented" the light bulb had been questioned long before Lemley's 2012 law review article. For example, note the 1992 book "They All Laughed" by Ira Flatlow. [See
More on Edison and the light bulb and ethical norms in intellectual property scholarship

Within "Myth," Lemley also discusses the corset as an example of multiple independent invention, wherein he states

The corset, itself the subject of one of the best-known Supreme Court patent cases, Egbert v. Lippmann, 104 U.S. 333 (1881), was itself the result of independent invention by multiple parties and a web of patent litigation. See Kara W. Swanson, Getting a Grip on the Corset: Gender, Sexuality and Patent Law, 23 Yale J.L. & Feminism 57 (2011).

Samuel Barnes made the invention in 1855. Eight years later, in 1863, Samuel Barnes and Frances (who became his wife in 1863) showed the invention to his friend Joseph Sturgis; and in March 1866 Samuel applied for a patent. Samuel died a month after the patent issued in July 1866. By 1870, Frances, remarried and with name Egbert, sued others with similar corset designs, for patent infringement. The duration 1855 to 1870 hardly qualifies as an example of simultaneous independent invention.

Details taken from https://www.revolvy.com/main/index.php?s=Egbert%20v.%20Lippmann .

**As footnotes

Ouellette's blog discussed the Swanson article at http://writtendescription.blogspot.com/2011/05/kara-swanson-feminism-corsets-and-ip.html

At page 743 of Myth, Lemley states --The transistor was originally conceived as primarily useful in
hearing aids. n201 -- with the reference tracking to a "news release" [ News Release, Stanford University, Humans Not Great at Assessing New Technology, Economist Says (June 1, 1994), available at
http://news.stanford.edu/pr/94/940601Arc4231.html ], which is not a peer-reviewed article.

The "news release" states in pertinent part: The invention of the transistor was not front-page news but a tiny item in a weekly column on "News of Radio" buried inside a 1947 edition of The New York Times. The device, the article predicted, "might be used to develop be tter hearing aids for the deaf."

As noted many times (including in 2008, four years before Myth), there was no article in the New York Times in 1947 about the transistor. The reference is non-existent.

The release also states: Ten to 15 orders was all IBM envisioned for the computer in 1949. Even by 1956, a Harvard physicist involved in developing the machine for solving differential equations said he would be surprised if the billing departments o f department stores could ever make use of such a number cruncher. The fact that early machines relied on 18,000 vacuum tubes, and that the semiconductor had yet to be invented, probably limited everyone's imagination, Rosenberg said.

Myth also notes: -- William Shockley's invention of the transistor at Bell Labs -- writing out Bardeen and Brattain, who
disclosed the point contact transistor before Shockley unveiled the planar transistor (Shockley was their group leader at Bell Labs).

Sunday, January 22, 2017

CBS Sunday Morning on 22 January 2017

Jane Pauley introduced the stories for January 22, 2017, which featured events related to the inauguration of January 20.

Ben Tracey did a piece on McDonalds, a trendy subject with the movie "The Founder." The piece noted the existence of Richard and Maurice "Mac" McDonald who opened a drive-in burger restaurant in San Bernardino, California. The piece did discuss that the McDonalds developed techniques to create "fast food" and might be deemed the inventors of such concept.

As to innovation, the piece had text:

“I didn’t really understand completely how the McDonald brothers had created fast food as we know it today,” said the film’s director, John Lee Hancock. “It wasn’t just a gimmick; this was world-changing.

The piece noted the ambiguity in who might be deemed the founder of McDonald's.

Within the piece:

Tracy said, “The title of the movie, you’re being a little cheeky.”

“It’s intentionally misleading, I would say, yeah!” laughed Hancock. “What’s your definition of a founder? Is it someone who has the idea, or someone who expands the idea?

Of the topic of "founder", historyvshollywood states:

For years, McDonald's celebrated Founder's Day by honoring "founder Ray Kroc." However, in 1991, the company decided to honor the McDonald brothers in addition to Kroc. "They are founders, they founded the concept," said Fred Turner, McDonald's then senior chairman. "Ray Kroc founded the company that developed that concept into the largest food service organization in the world" (Sun Journal).

The Tracey piece included footage of the McDonald's in Downey, CA, the third McDonald's overall and the oldest surviving McDonalds. Kroc's own first McDonald's restaurant in Des Plaines, Illinois was the ninth restaurant overall.

The Tracey piece did not get into the fate of the first McDonald's. Historyvshollywood notes:

Kroc wasn't aware that the [1961] agreement excluded the original restaurant, but the McDonald brothers insisted it did. He became furious and since he now owned the [trademark] rights to the McDonald's name, he forced Dick and Mac McDonald to rename the restaurant "The Big M." Kroc then opened a brand new McDonald's a block away and after six years, it put The Big M out of business.

The almanac featured the birthday of Sam Cooke, January 22nd, 1931 and discussed his sad end.

The moment of nature did "short eared owls" from New Hudson, NY. "Ears" on owls are tufts of feathers that resemble mammal ears.

The theme of independent invention, and whether the same thing was invented

The theme of "who invented what" is explored in discussion from Benzmüller to Gödel to Leibniz to Turing.

Back in October 2013, ABC News ran a story titled Computer Scientists 'Prove' God Exists , which included the text

That is where Christoph Benzmüller of Berlin's Free University and his colleague, Bruno Woltzenlogel Paleo of the Technical University in Vienna, come in. Using an ordinary MacBook computer, they have shown that Gödel's proof was correct -- at least on a mathematical level -- by way of higher modal logic. Their initial submission on the arXiv.org research article server is called "Formalization, Mechanization and Automation of Gödel's Proof of God's Existence."

The story got a bit of a push on 22 January 2017 [ http://www.corrieresalentino.it/2017/01/un-calcolo-matematico-dimostra-lesistenza-di-dio/ ]

The earlier proof by Gödel was related to even earlier assertions by Leibniz. As we know in the IP game, the Newton/Leibniz "concurrent invention" of calculus arises [Prioritätsstreit ].

For example, Samson Vermont, Independent Invention As A Defense To Patent Infringement, 90 JPTOS 268 (2008)

This type of neck-and-neck finish is common. Researchers frequently converge on the same idea at roughly the same time. n10 Famous examples include the light bulb (Edison and Swann), the telephone (Bell and Gray), the integrated circuit (Kilby and Noyce), calculus (Newton and Leibniz), the periodic table (Mendeleyev and Meyer), the telegraph (Morse, Henry, and Cooke and Wheatstone), the telescope (Hans Lippershey, Drebbel, Fontana, Jansen, Metius, and Galileo--each claiming they invented it in 1608 or 1609), n11 and certain facets of the theory of relativity (Einstein and Poincare). n12 Some historians and philosophers of science believe convergence is the rule rather than the exception.

One can argue whether Edison (who taught high resistance filaments) arrived at the "same idea" as Swann.

Mark Lemley cites to Vermont in SHOULD PATENT INFRINGEMENT REQUIRE PROOF OF COPYING?, 105 Mich. L. Rev. 1525 :

To begin, the stakes are quite high. While we tend to glorify the individual inventor who makes a significant leap forward, most of the important inventions in U.S. history were made independently by multiple inventors, or at least were built on a solid base of prior work by others. Vermont identifies a number of such simultaneous inventions, including the light bulb, the telephone, the telegraph, the telescope, and the integrated circuit. n12 We might reasonably add to his list the steamboat, which was patented by different inventors in different states; n13 the airplane, which was first patented by the Wrights but independently developed and significantly improved upon by Glenn Curtis and others; n14 the laser, which was the subject of patent applications by two different groups; n15 and polypropylene, which was the subject of a 30-year interference between competing inventors. n16 The fact that so many important advances in technology involved independent invention by multiple parties underscores the significance of Vermont's argument. But it also means that if Vermont is wrong, and an independent invention defense would significantly reduce the incentives to innovate, the potential losses for society are substantial.

See also IPBiz on Lemley's myth of the sole inventor, which included Lemley saying -- And we should be denying patents on the vast majority of the most important inventions, since most seem to involve near-simultaneous invention. --

Lemley on the myth of the solo inventor

More on the Myth of the Solo Inventor

**Also on Leibniz by Charles M. Yablon, FAILED LAWYERS AND THE SOURCES OF SATIRE, 15 Geo. Mason L. Rev. 775

Voltaire's greatest work, Candide, takes aim at one of the fattest satirical targets ever presented, the astounding conclusion by the great German philosopher Gottfried Leibniz that ours is the best of all possible worlds. This conclusion was logically derived from careful contemplation of the nature of existence, which led him to an understanding of the nature of God's attributes and perfection. See GOTTFRIED WILHELM VON LEIBNIZ, Monadology, in MONADOLOGY AND OTHER PHILOSOPHICAL ESSAYS 148, 162-63 (Paul & Anne Martin Schrecker trans., Macmillan 1988) (1692). Leibniz, who also invented calculus, was undoubtedly the most brilliant stupid person who ever lived. Voltaire does not so much refute the argument as present it in stupefied amazement, as he piles misfortune after misfortune on Candide and the other innocent but rather dim protagonists of his story. He also manages to include numerous contemporary illustrations of intolerance, greed, and injustice among a wide variety of nations and cultures. God does not come off too well either.

Voltaire was no fan of Leibniz. At the time of the initial dispute over the invention of calculus, Newton had more proponents. The work of Leibniz was more directed to differential calculus and Newton more concerned with integration.

Other work of Leibniz pre-saged much work of Alan Turing, which is curiously cited in Ten Law Professors’ Brief in Trading Technologies v. CQG, submitted by Adam Mossoff, which includes:

“We have held that such
programming creates a new machine, because a general purpose computer in
effect becomes a special purpose computer once it is programmed to
perform particular functions pursuant to instructions from program
software.” In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc).

This statement is not merely a legal conclusion; it is technological
It is a consequence of the foundational work in computer science in
the 1930s by Alan Turing, who proved that a general-purpose computer
(what he called a “Universal Turing Machine”) executing a software
program can perform the same operations of any specific hardware designed
and built for that same purpose.

Perhaps the foundational work was that of Leibniz.

** Bell's invention also arises in the brief:

The Supreme Court expressly affirmed Claim 5 as patentable subject
matter under the predecessor statute to § 101 in Dolbear v. Am. Bell Tel. Co.,
126 U.S. 1 (1888). Applying Appellant’s version of Mayo-Alice test
invalidates this claim. Under Mayo step one, the claim is directed to
“transmitting vocal or other sounds” by “electrical undulations” (electric
current) which is an abstract idea (transmitting sounds) applied to a natural
phenomenon (electricity). Under step two, the claim does not recite anything
that was not conventional, because telegraphic transmission and electrical
circuits had been long known in the art. See CHRISTOPHER BEAUCHAMP,
CHANGED AMERICA 58-85 (2014) (recounting many prior and existing uses
of electrical currents in telegraphic communication before Bell’s invention).

The conclusion of the brief:

Amici urge this Court to affirm the district court’s decision that
Appellee’s claims directed to the use of a GUI are patentable subject matter
under § 101.

Monday, January 16, 2017

The Crowley copying considered in context

In the context of a post about Monica Crowley [ Why plagiarism took down Monica Crowley, Trump’s pick for a top national security post ], one commenter stated

I am conservative and I like Monica, but I hate plagiarism. I had a similar experience when I edited a fellow law student’s law review article. I spent a lot of my precious school time improving his article for him, while he resisted the changes in a more than average way. The editor-in-chief called me in and showed me what the footnote checker had discovered – like Monica’s work, the article was full of paragraph-long stolen passages. No wonder he resisted the edits; I was changing presumably excellent published work. This guy was rich and apparently skillful at working his way out of trouble. He was kicked off of the law review but not out of law school. I still have a bitter taste from it.

The main body of the post did mention Biden's plagiarism at Syracuse Law:

If that wasn't bad enough, Biden admitted the next day that while in law school he had
received an F for a course because he had plagiarized five pages from a published article
in a term paper that he submitted.

The post of Aaron Blake did not mention that the length of the paper (for a 1L class) was 15 pages,
and did not mention that a fellow 1L (reviewing the paper) warned Biden about copying from the
published article, which had been provided to the class for the writing exercise. Biden did get an F,
had to retake the course, but remained in law school, and went on to other things. The copying issue
as to Kinnock is less straightforward as to "plagiarism," with the bigger concern that the
copied "life elements" were not true as to Biden.

The post of Aaron Blake did not mention the plagiarism issue with the Ph.D. thesis of Glen Poshard, one-time governor candidate in Illinois. Poshard had to re-write his thesis but did not lose his Ph.D. The less discussed issue was
how the copied material related to Poshard's thesis and how the thesis committee missed the copying and the illogical presentation.

Of Biden, see

Biden and plagiarism

Went to a garden party: does Joe Biden hide in your shoes?

Of "footnote checker" (cite checker),

the Lemley citations about transistor/hearing aid ultimately track back to a non-existent 1947 article in the
New York Times. Cite checkers in law reviews are imperfect.

See the 2004 post:
Inventors of transistor foresaw only a hearing aid application?

CRISPR, intellectual property, and Latour

Further to the IPBiz post
Politics in the academia of intellectual property?
, one notes that Professor Lemley's reference to the lack of understanding by the transistor's inventors of the potential of the transistor appeared in several law reviews. As noted in 2008:

See Mark A. Lemley & R. Anthony Reese, Reducing Digital Copyright Infringement Without Restricting Innovation, 56 STAN. L. REV. 1345, 1387 n.160 (2004) (counting "the inventors of the transistor, who anticipated its use in hearing aids" among "the inventors who did not recognize the potential of their ideas"); Mark A. Lemley, Ex Ante Versus Ex Post Justifications for Intellectual Property, 71 U. CHI. L. REV. 129, 137 n.29 (2004) (same).

A later law review article by Michael Carroll [ 70 Ohio St. L.J. 136 ] relied on this faulty perception:

Our reliance on the allegedly superior information of private innovators is a subject warranting further study. We know from experience that innovators often misjudge the likely market value of their innovations. For example, a number of pioneering inventors undervalued their innovations. See, e.g., Lemley, Ex Ante Versus Ex Post, supra note 31, at 139 (collecting sources).

[Michael Carroll has an A.B. from the University of Chicago, was a journalist in Chicago, and is a Professor of Law at
American University.]

A more recent law review, discussing CRISPR, also cites to Lemley's "Ex Ante" paper [The CRISPR Revolution: What Editing Human DNA Reveals About the Patent System's DNA (64 UCLA L. Rev. Disc. 392)].

**There is another implicit CRISPR/Lemley tie-in, through a reference to CRISPR being somewhat a Latour-esque area (which IPBiz does NOT believe). Note CRISPR: the latest biotech hype at BostonReview.net:

One Latourian hybrid now fascinating researchers and the public is the gene-editing technique CRISPR-Cas9. What began with an attempt to build a better yogurt now has journalists speculating about Brave New World (1932) scenarios. Scientists, ethicists, entrepreneurs, and officials across the globe want to reap the benefits while guarding against errors and side effects.

Of Latour, wikipedia writes:

In the laboratory, Latour and Woolgar observed that a typical experiment produces only inconclusive data that is attributed to failure of the apparatus or experimental method, and that a large part of scientific training involves learning how to make the subjective decision of what data to keep and what data to throw out. Latour and Woolgar argued that, for untrained observers, the entire process resembles not an unbiased search for truth and accuracy but a mechanism for ignoring data that contradicts scientific orthodoxy.

Latour and Woolgar produced a highly heterodox and controversial picture of the sciences. Drawing on the work of Gaston Bachelard, they advance the notion that the objects of scientific study are socially constructed within the laboratory—that they cannot be attributed with an existence outside of the instruments that measure them and the minds that interpret them. They view scientific activity as a system of beliefs, oral traditions and culturally specific practices— in short, science is reconstructed not as a procedure or as a set of principles but as a culture

The transistor/hearing aid saga would be an extreme example of Latour-esque activity, because the underlying "data" (a non-existent article in the New York Times and citations to it) are not present, and the actual Bell Labs public demonstration involved three different tangible applications of the transistor, none of which involved a hearing aid.

**BUT note a later reference to Lemley's understanding of inventors' understanding of patent value in Masur, 2 J. of Legal Analysis 687:

These conceptions of large quantities of uncertainly valued patents credit inventors with little ability to discern the worth of innovation in their own commercial fields, contrary to evidence that patent applicants have "a fairly good sense ex ante as to which of their patents will be the most valuable (Burk & Lemley 2009, 52)."

[ Burk, Dan L., & Mark A. Lemley. 2009. The Patent Crisis and How the Courts Can
Solve It. Chicago: The University of Chicago Press. One notes that, if it were true that the transistor inventors thought only of hearing aids, as Lemley stated in 2004, then the 2009 text is problematic.]

Separately, Masur gives a rather incomplete "history" of the patent grant rate saga, among other things omitting reference to the paper of Clark, who gave a figure of about 75% years before the Lemley paper.

A number of separate studies have attempted to determine the proportion of
patents approved by the PTO, with varying results. One early study found that
the PTO grants approximately 97 percent of the patents it examines (Quillen &
Webster 2001), a figure that was later revised downward to 85 percent (Quillen,
Webster, & Eichmann 2002); another study found a grant rate of approximately 75
percent (Lemley & Sampat 2008). n16 Irrespective of the precise figure, there
is ample evidence to indicate that patent examiners are performing poorly when
it comes to weeding out invalid patent applications (Merges 1999; Schaafsma

Politics in the academia of intellectual property?

A post at PatentlyO on an article by Jonathan Barnett titled Has the Academy Led Patent Law Astray? produced some comments about Mark Lemley:

I doubt that few within the patent academy are willing to ideologically challenge someone like Lemley as his ability to alter career prospects is probably quite real.


Also, I couldn’t agree more regarding Lemley and his influence over academia. He has also gotten a lot of these professors their jobs. Lemley is unethical and should be taken down based on his unethical conduct.


Of the 40+ names that signed the proposed patent “deform” bill some years back, more than 1/3 had ties to large serial infringers, with of course, “Professor” Lemley being the biggest paid for name on the list. He and his minions are fond of putting their names on these faux academic studies without revealing their representation of their large infringing clients (Google for example).

As to the impact of Professor Lemley, one notes that the word "Lemley" appears 203 times in the last six months on the LEXIS law review database. For example, an article titled "Are universities special? ( 49 Akron L. Rev. 671 ) has as footnote 4: See Mark A. Lemley, Are Universities Patent Trolls?, 18 Fordham Intell. Prop. Media & Ent. L.J. 611, 612-13 (2008) ("Universities are non-practicing entities. They share some characteristics with trolls ... but they are not.")
And an article titled "THE CIRCULAR LOGIC OF ACTAVIS " has: n129. See Lemley & Shapiro, supra note 126, at 75 ("When a patent holder asserts its patent against an alleged infringer, the patent holder is rolling the dice.").
The word "patentlyO" appears 52 times and the word "ipwatchdog" 53 times. The word "crispr" appears 13 times.

More than five years ago, there was some discussion about Lemley's theory on the "myth of the solo inventor," which got into both Edison's light bulb and Lemley's assertion that the inventors of the transistor thought it would be useful only in the context of hearing aids. The support for the latter was a non-existent article supposedly in the New York Times. There was an article in the New York Times, the day after the public release by Bell Labs of information on the transistor, which article was mainly about the radio show "Our Miss Brooks." Thus, more in keeping with history, it was the New York Times, not the inventors of the transistor, who did not recognize the potential of the transistor. Lemley was wrong to refer to a non-existent article and wrong not to appreciate the actual significance of the Times article.

The 2011 post in "written description" on "myth" had some commentary by Oullette:

Thanks for citing your article about Lemley's claim that "[t]he transistor was originally conceived primarily as useful in hearing aids" (to make it easier for others reading these comments, here is a link to your article on Hein, and the relevant page is 86). I haven't carefully checked your sources (just as I don't carefully check the sources of articles I blog about, since this is a blog, not a law review), but it looks like you are right that this is as much a myth as the other myths Lemley debunks!

Lemley: Myth of the Sole Inventor

**As to Edison, apart from the fact that Edison's basic light bulb patent does not mention bamboo at all, the key discovery was as to "high resistance" (which was not part of the work of prior investigators). See the discussion in the IPBiz post

Shaver on Edison's light bulb: "Scientifically speaking, his team’s discoveries were neither the first, nor the most important."

**In passing, from Jason Rantanen, The Doctrinal Structure of Patent Law's Enablement Requirement , 69 Vand. L. Rev. 1679 (2016) :

See Jason Rantanen, Patent Law's Disclosure Requirement, 45 LOY. U. CHI. L.J. 369, 370 n.1 (2013). But see J. Jonas Anderson, Secret Inventions, 26 BERKELEY TECH. L.J. 917 (2011) (analyzing the situations in which the disclosure function operates and suggesting changes to encourage the use of secrecy by inventors where appropriate); Mark A. Lemley, The Myth of the Sole Inventor, 110 MICH. L. REV. 709, 745 (2012) ("Disclosure theory cannot, however, support the modern patent system."). For a discussion of why enablement might matter even irrespective of whether disclosure theory actually supports the patent system, see Lisa Larrimore Oullette, Do Patents Disclose Useful Information?, 25 HARV. J.L. & TECH. 545 (2012).

**In passing, note post at Huffington by Michelle Lee Patent Quality is Here to Stay