Notice and Notice Failure at BU, panel 7

Mark Lemley – Ready for Patenting

 

Patent’s problematic approach to what we want to encourage when we grant a patent. Long struggle with what you are giving us is simply an idea/conception or an actual thing/reduction to practice.  Various doctrines point in different, sometimes conflicting directions; most obvious is §102(g) priority rules under pre-AIA provisions—tried very hard to split the baby; invention is reduction to practice + conception + diligence in working to reduce to practice to figure out first inventor. Even pre-AIA, thumb on scale in favor of early filing/against reduction to practice in various ways.  Constructive reduction to practice is the easiest thing to do—get a patent application on file and you’re done in a priority contest; everyone else needs fairly substantial evidence.

 

If you have an idea, you can (1) tinker and try to make a working device; that’s costly and lengthy, or (2) head to the patent office, which is more likely to leave you labeled the first inventor if a priority dispute emerges.

 

Also, if you choose constructive reduction to practice by filing, there’s no need to show it works for its intended purpose.  If you make the thing, you have to show it works.  If you do the former, then if it works, you win; if it fails, no big deal. You do have to demonstrate enablement and written description, but enablement isn’t that difficult a burden.  §112 information required isn’t that difficult, b/c among other things the legal standard doesn’t require you to tell us how to make it work, only enough that a PHOSITA could make it work without undue experimentation.  Fed. Cir. has been quite dismissive of actual building/experimenting in various ways.  Definition of inventorship—court says the people who just built it are mere tinkerers and don’t count; inventors are the ones w/the idea. Infamous statements about software: you don’t have to disclose code or high level flowcharts because “actually writing a computer program is necessarily a mere clerical function for a skilled programmer.”  Heh.

 

If the pre-AIA statute put a thumb on the scale for early filing, AIA puts a fist.  And the elimination of experimental use (doesn’t think that’s right interpretation, but PTO’s implementing regulations say there’s no experimental use defense) makes it difficult if you wanted to keep tinkering before filing.  Even if the defense survives, it’s lost force.  Pre-AIA, once you were the first inventor experimenting, neither my own acts nor subsequent inventions could affect my patent.  Post-AIA, at most I get a year to prevent my own conduct from barring patent, but the only way to prevent other people’s conduct from being a bar is to make a public disclosure, when most experimentation by its nature is private. 

Result: patent info tends to be thinner.  We learn a lot by doing, figuring out what does and doesn’t work.  At the same time, patents tend to be written more broadly b/c not constrained by what’s practical or what works: write patents in broad functional terms precisely when they haven’t gotten the thing to work.  By encouraging early filing, we give the world less info and get broader/worse patents, particularly for software.

 

What can we do?  Require either commercialization or reduction to practice, says Chris Cotropia. Thinks that goes too far and is impractical for some technologies (e.g., my great idea for organizing a semiconductor fab, which costs millions). We’d like to have a world in which people who have a good idea but aren’t in good position to test it can sell it to others who are.  Paper patents thus serve a useful purpose but at a minimum we ought to be neutral as to whether or not you actually built something.

 

How?  (1) we ought to keep experimental use. (2) strengthen §112, particularly as applied to paper patentees.  Enablement standard should be raised, either across the board or for paper patentees.  Limit you to predictions you’ve actually made.  (3) small extension to prior user rights.  Prior secret invention no longer later prevents you from patenting, but in theory I have a prior user right.  We ought to extend prior user rights not just to commercial use but experimentation.  Building and testing before someone shows up at patent office = at least protect those people from being punished b/c they chose to build rather than simply to patent.

 

Paul Gugliuzza: There are still reasons to confer patent on the entity that wins the race to the patent office.  (1) Earlier expiration/entry into the public domain.  But is that really persuasive? How much will it matter? Related patents might also block entry. Paper might not want to concede benefits from marginally earlier expiration encouraged by early filing.  (2) Courts don’t have to conduct costly/context specific inquiries about diligence in reduction to practice; was the prior user really using it; etc.  Interested in hearing about cost/benefit tradeoff in messy validity/novelty fights. 

 

Enablement via prophecy: could we do that entirely? If so, what type of disclosure should we require, if you don’t want to go all the way to reduction to practice? What standard would go beyond “no undue experimentation”?

 

John Duffy – Counterproductive Notice Requirements and Literalistic Claiming

 

We’ve messed up and we should go back in time.  If law imposes difficult to satisfy notice requirements and invalidates the whole right as a penalty for noncompliance, the enforcement mechanism weakens notice. Invalidation of the whole right transforms imprecisions at the edges of the right where uncertainty is greatest into uncertainty throughout the entirety of the right.  (Encourages people to litigate even at the center.)

 

Major problem—pre-CAFC law tolerated fuzzy boundaries but provided more certain notice.  Return to pre-CAFC law because it’s based in never-overruled SCt precedents and b/c it’s superior public policy.

 

Liebel Flarsheim v. Medrad is a poster child for all that’s wrong.  DCt interprets claim term “inejctor” to be limited to injector w/pressure jacket; CAFC reverses b/c there’s no ambiguity. Years later, CAFC invalidates the claim b/c the specification shows no injector w/o a pressure jacket. 9 years of litigation to get the right claim interpretation only to have that interpretation invalidate the claim. That’s insane.

 

Things that are wrong w/CAFC approach: (1) consistently refuses to limit scope to structures disclosed in specification and their equivalents. (2) treats canon of construing claims to preserve validity as a last resort not a first principle. (3) eschews any attempt to discover the real merit of the invention as a step in defining rights. All represent abandonment of pre-CAFC law.  Many critics have thought these were symptoms of peripheral claiming and advocated for a return to central claiming (Lemley, Fromer)—but the CAFC is not doing peripheral claiming.  Prior-CAFC, peripheral claiming meant something much different: Risdale Ellis, who named peripheral claiming, said in 1949 that it measn that infringement requires: “(1) the claim must read in terms on the alleged infringing structure. (2) The alleged infringing structure must be the equivalent of anything disclosed by the patentee.”  Peripheral claiming wasn’t a rigid rule of everything within the claim being the patentee’s—a different version of doctrine of equivalents, in which the doctrine narrows the claims. That’s why old SCt cases are always talking about the doctrine of equivalents. 

 

CAFC’s literalistic one-step test of claiming is radically new and inconsistent w/SCt precedent and even CAFC’s own prior precedent.  They purported to adopt the jurisprudence of CCPA and the Court of Claims, and the latter used a requirement that didn’t just require the claims to read literally on the accused structures, but also a determination that the accused structures do the same work, in substantially the same way, and accomplish substantially the same result.  Autogiro v. US, triple identity test for doctrine of equivalents.  Very presciently said that making literal overlap only a step and not the entire test was consistent since 1898.  This is not an argument about a “defense” to infringement that CAFC has repeatedly rejected. This is a requirement of infringement analysis.

 

The consequence of CAFC change: allowing literality to satisfy the infringement test rewards literary skill/drafting, not invention.  Collateral consequences: traditionally we look into the art to find the real merit of the alleged discovery/invention.  Never discuss pioneering patents any more.  CAFC: validity preservation is a last resort only when a claim is still ambiguous after everything else has been tried. 

 

Patent claims are like metes and bounds system, which is vague and not certain, as real property authorities say.  When patent lawyers say “metes and bounds,” don’t think precision!  Think vagueness.  The terrain is irregular and mountainous; we’re stuck with metes and bounds, but then we need to use their tools—always try to preserve validity.  So practically, a cert petition should ask the SCt: whether a defendant may be held liable for infringement where the patent discloses nothing equivalent to the products or processes accused of infringing.  Prior-CAFC law: the answer is clearly no, not yes at is in the CAFC now.

 

Commentators: Henry Smith

 

Calls into question the assumption that peripheral claiming involves specifying patent’s outer bounds exactly; conventional wisdom is that central claiming started from the center and worked outwards.

 

Missing link: equity. Doctrine of equivalents is an equitable doctrine.  Explains how peripheral claiming works, why it fell out of favor, the limits built into it, and what would be required to bring it back. 

 

Equity is called for as a solution to opportunism; conflicting rights (nuisance); polycentric problems (like those that gave rise to class actions).

 

Older guidance: Ellis does say that doctrine of equiv. is used to narrow the literal claim. Also used to determine if a claim is too broad. Under peripheral claiming, DOE can be used to narrow a claim, never to broaden it, w/narrow qualifications. We rarely worry about patentee being too modest about claims. 

 

Why the change?  Fusion of law and equity; post fusion, function of equity can become obscure.  Equity either becomes the general case (realist, contextualist) or highly disfavored (neoformalist, literalistic). Suspicions about overexpansive IP and notice failure reinforce suspicion of equity. Does this apply in the narrowing direction, and if so how much?

 

Is equitable intervention (exceptional in principle) justified? Is the gain from preventing opportunism and solving complex problems worth the uncertainty that selective intervention causes?  We don’t trust judges w/notions of commercial morality etc. now, and if we don’t equitable interventions seem more problematic.  One last reason for pessimism: it’s time for the SCt to do something, Duffy says, but SCt’s track record on resuscitating traditional equitable doctrines is terrible; we’d get a 4- or 5-part test bearing no relationship to the doctrine he just discussed. Not willing to get on the equitable train if the SCt is the engineer.

 

Meurer: do you favor grace periods/international harmonization?

 

Lemley: if we could get other countries to sign on to a grace period as part of harmonization he’d be in favor. If it meant getting rid of any vestige of encouraging building the thing, then no.

 

Duffy: Landes wrote the bible on claim drafting in the second half of the 20^th century. In the 1970s he talked about means plus function; today the conventional wisdom is that’s narrowing.  Landes says in 1970s that’s not a problem b/c it gives you the broadest interpretation you’d ever be entitled to. This wasn’t a special rule for means plus function elements.  The standard rule allowed more functional analysis about how much contribution you’d made.  How can you tell how meritorious an invention is?  Even today, people will say things like “this is a strong case of obviousness”—how do they know? B/c we can tell the difference!  And if we can’t tell the difference between a pioneering advance that changes the art and a trivial advance, we have no hope of running a patent system.

 

Lemley: this is an explanation of why the abstract ideas branch of §101 is playing a new role: responding to the absence of constraint we built into the system a generation ago. One response is to go back to means plus function claims; hard to say that’s an abstract idea.  People w/the most difficulty doing that are the paper patentees, to link that to my paper.

 

Duffy: DOE was told to juries—so not equity in that way, and not equity just b/c it’s fuzzy.

 

Smith: equity can work functionally even on the legal side.