Tuesday, January 24, 2017

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.


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