Judge Richard Linn: Changing Times, Changing Demands

Which cases do the Federal Circuit judges think are the most important right now? On September 27, 2011, the Honorable Judge Richard Linn of the U.S. Court of Appeals for the Federal Circuit shared his views on which cases should make it to the top of the list when he gave a videotaped lecture on "Changing Times: Changing Demands" at Southern Methodist University Dedman School of Law in Dallas, Texas. Not surprisingly, his list corresponds well with academic scholarship.

Jay Kesan et al.--Developing a Comprehensive Patent Related Information Retrieval Tool

How can one reliably gather and identify pertinent data from such varied sources as litigation history, press releases, news articles, scientific literature, and foreign databases?  In a recent article, Jay Kesan and his colleagues in the theoretical and computational biophysics group at Illinois (Hang Yu) and in the civil and environmental engineering department at Stanford (Kincho Law, Siddarth Taduri, and Gloria Lau) explore potential frameworks for approaching this non-trivial task. Poorly performing search tools can result in millions of dollars in patent litigation or lost revenue—from erroneous preclearance searches to any resulting patent invalidation proceeding.  Accordingly, the inability to obtain and find critical information regarding patents and patent applications is a very serious problem.  Currently, cross-referencing hundreds of incompatible databases (operated by independent entities), wherein millions of documents are stored in various file formats and contain data arranged in a number of ways, is a very laborious and perhaps impossible task.  In Developing a Comprehensive Patent Related Information Retrieval Tool, Kesan and his colleagues directly address the need to create algorithms capable of cross-referencing data in multiple domains to identify the most relevant documents for a user's specific needs and also establish a basic framework for developing such tools.

David L. Schwartz: Prospectivity and Retroactivity in Patent Law

Should the Federal Circuit issue a higher proportion of non-precedential opinions? In Prospectivity and Retroactivity in Patent Law, Professor David Schwartz of the Chicago-Kent College of Law writes a draft article that raises this and many other fascinating questions.

Reflecting on the role Federal Circuit precedent plays on patent rights, Schwartz uses his piece to illustrate that, while many Federal Circuit opinions have significant retroactive effects on pre-existing patents, most of these opinions have few (if any) prospective effects on future patents. His point, essentially, is that patents, once issued, are very rarely capable of meaningful amendment or modification, so court opinions that limit (or enhance) the value of pre-existing patents will have a meaningful impact on those pre-existing patents; in many cases, the court opinions will contract a patentee’s rights, and there is nothing that the patentee will be able to do about it. At the same time, however, court opinions will often have little to no impact on future patents, as savvy patent prosecutors will usually find ways to “draft around” a court’s newly established patent rules.

Peter S. Menell - The Common Law Development of the American Patent System: What History Can Teach Us

What is the judiciary’s role in developing and evolving patent law? Patent law is essentially a product of the legislature, yet throughout history, courts have been especially active in developing (not just interpreting) this body of law. In The Mixed Heritage of Federal Intellectual Property Law and Ramifications for Statutory Interpretation, Peter Menell, a professor at Stanford Law School and the University of California Berkeley School of Law, illustrates how patent and copyright laws have diverged from the conventional understanding of the Constitutional allocation of law-making authority, and instead have evolved as a mixture of judicial common law and legislative codification and supplementation. In this article, Professor Menell, leads a vastly informative journey from the constitutional beginning of patent law through the modern era, and even provides some insight for the future. According to Menell, this historical context is necessary to properly interpret and apply modern patent law. Professor Menell demonstrates that despite the congressional basis of patent law, the judiciary has always had a large role in developing patent law. As evidence, Menell points to several prominent features of patent law that cannot be found in the United States Code. He also tracks patent law through three distinct periods in history and reveals how the judiciary has played a significant role in shaping the law in each period.

Dan Burk: Do Patents Have Gender?

This is a guest post by Allison Tait, a Gender Equity and Policy Postdoctoral Associate with the Yale Women Faculty Forum, who has previously posted on Written Description. A few comments from me follow below.

Dan Burk wants to find out whether or not patents are gendered. Since everything from Happy Meal toys to energy bars and tool kits can be gendered, a reasonable feminist would not be surprised to find that patents are in fact gendered. The real question is how they are gendered.

Herbert Hovenkamp: Patent Exclusions and Antitrust After Therasense

While Therasense has received a significant amount of coverage due to its implications on the inequitable conduct defense, few have discussed its implications in other areas. In Patent Exclusions and Antitrust After Therasense, Professor Herbert Hovenkamp of the University of Iowa takes the opportunity to analyze the potential implications of Therasense on patent exclusion suits.

Jonathan Masur: The Ever Expanding Patent System

Could the commonly cited flaws of the patent system be caused by the underlying relationship of its two main players, the PTO and the Federal Circuit? The patent system has come under attack in recent years in light of the growing number of invalid or weak patents and an ever-expanding definition of what can be patented. Critics have blamed this expansion (or “patent inflation”) on a number of factors including lack of funding, capture by private interests, and lack of expertise. In Patent Inflation, Jonathan Masur, a professor at the University of Chicago Law School, suggests this phenomenon may have a more fundamental source—the institutional relationship between the PTO and the Federal Circuit.

In his thought-provoking article, Masur suggests that the administrative nature of patent law creates institutional pressure to expand the boundaries of patentability. He arrives at this novel theory by combining a few simple, yet profound, observations into a model that predicts patent expansion.

John M. Golden: Patentable Subject Matter and Institutional Choice

Is the patentable subject matter requirement obsolete or just underdeveloped? Many criticize the Patent Office for its mounting backlog and the rising number of “bad” patents that issue. In Patentable Subject Matter and Institutional Choice, John M. Golden, a Law Professor at the University of Texas, offers a well-analyzed approach to preventing patent grants in undesirable classes of innovation with a rejuvenated patentable subject matter requirement. He advocates for clarification of limits on patentable subject matter in order to better use this threshold inquiry into patentability as a categorical filter. Although Golden suggests ways in which Congress and the courts can act to clarify the patentable subject matter requirement themselves, his primary proposal is for the Patent Office to have substantive rulemaking authority on this issue.

Top 10 New IP Paper Downloads

It's time to revisit the list of most downloaded IP papers posted on SSRN in the past 60 days. Wagner and Petherbridge on Phillips and Horowitz on copyright remain popular, but the rest are new. Unsurprisingly, articles related to the Leahy-Smith America Invents Act signed into law on Sept. 16 are starting to show up:

Colleen Chien: Predicting Patent Litigation

Patent litigation is an expensive headache, especially if the asserted patents seemingly come out of the blue. Patent clearance searches, used to identify patents that may potentially be asserted or infringed, can be daunting, due to the sheer number of patents that must be reviewed. A recent paper by Colleen Chien, Assistant Professor at the Santa Clara University School of Law (also covered at Patently-O), provides a way to narrow the field of potentially-litigated patents by analyzing the “acquired” characteristics of patents.

Blogging Hiatus

This is a sad time to be leaving the blogosphere, with the Leahy-Smith America Invents Act just signed into law on Friday. Even if the changes are less dramatic than many wished, it is still the most significant patent reform bill since at least the 1980s, and I'm sure patent scholars will have a lot to say about the new act over the next year. (There has already been some interesting commentary at Patently-O.)

But I start clerking tomorrow, so I am leaving Written Description in other capable hands while I take a one-year blogging break. You will still be able to follow WD on Facebook and Twitter (as well as by email or with RSS readers), and feel free to email any of the blog authors with your suggestions, questions, or comments. Since I started this blog almost eight months ago, I have gotten to know so many interesting people in the patent community—both scholars and practitioners—and I really appreciate all of your feedback. Looking forward to jumping back into the conversation in a year!

Steven Horowitz: Copyright's Asymmetric Uncertainty

If you are trying to catch the attention of student law review editors, write an abstract like Steven Horowitz did for Copyright's Asymmetric Uncertainty. Horowitz, a Sidley Austin associate coming off Posner/Kennedy clerkships, uses one paragraph to convey a clear and simple idea that still seems novel and nonobvious. Let's see how he does this:

Sarah R.W. Rajec: Tailoring Remedies To Spur Innovation

Will we ever find a perfect remedial scheme in patent law? Ever since the dawn of the patent system, our law has sought to tailor the patent system so that it optimally balances its grants of exclusive monopoly power with the incentives it provides to prospective inventors. In Tailoring Remedies To Spur Innovation, Sarah R. Wasserman Rajec, a Visiting Associate Professor at GW, has written a thought-provoking draft paper in which she seeks to move us one step closer to that ideal balance. Incorporating useful insights from the economics and antitrust literatures, she argues that the law surrounding permanent injunctions in patent suits can be better adapted to promote innovative ends.

Washington Declaration on Intellectual Property and the Public Interest

What do over 180 experts from 35 countries agree is the most pressing global issue for intellectual property policy? The Washington Declaration on Intellectual Property and the Public Interest, which was formulated at the Global Congress on Intellectual Property and the Public Interest from August 25-27, 2011, reveals that changing the direction of negotiations on intellectual property rights in U.S. trade agreements is that issue. The Declaration criticizes an "unprecedented expansion of the concentrated legal authority exercised by intellectual property rights holders" through recent trade agreements. It calls for new efforts to "re-articulate the public interest dimension in intellectual property law and policy." The Declaration is now open to endorsement and comment.

Introducing New Written Description Bloggers

I am delighted to welcome three new bloggers on Written Description, who will share their thoughts on recent IP scholarship while I take a one-year blogging break. You can look forward to hearing from them in the coming weeks! We are open to adding one or two more blog authors, so if you are interested in blogging about twice a month, please send me an email.

Brian Love on Patent Litigation Timing

How do practicing and non-practicing entities differ in when they initiate patent litigation? Brian Love, a fellow at Stanford Law School, empirically addresses this question in his draft paper, An Empirical Study of Patent Litigation Timing: Could a Patent Term Reduction Decimate Trolls Without Harming Innovators? Based on a random sample of recently expired patents, Love reports that "the average product-company patent has been shelved by its owner before the average NPE patent has even been asserted."

Open Video at NYLS and Smart Phones at Whittier

Two more conference announcements: on Sept. 10-12, New York Law School is hosting the Open Video Conference, and on Nov. 4, Whittier Law School is hosting a symposium on the Law of the Smart Phone. Whittier's symposium is related to a student writing competition with a $1000 prize; the deadline is Sept. 9.

Sean Seymore on "Null Patents"

In The Null Patent, Sean Seymore (Vanderbilt Law and Chemistry) makes the creative proposal that the patent system could help solve the problem of unpublished negative scientific results. Negative results are very important: they can save other scientists from wasting time on dead-ends, and they can help identify false positives in studies based on statistical significance. (There is generally a 5% chance that a "significant" result is just based on random error, which is a problem if only significant results are published, as xkcd aptly illustrates.) So it would certainly be good for science if more negative results were published. But what do patents have to do with this?

More Upcoming IP Conferences

Some IP conferences and seminars in the 2011-12 academic year, as reported by Madisonian:

Jacob Rooksby on University Patent Litigation

Although one might expect universities to seldom initiate patent litigation, Jacob Rooksby reports that they filed over 50 patent cases in 2009 and 2010. In University Initiation of Patent Infringement Litigation, after reviewing the history and criticisms of the Bayh-Dole Act (which allows recipients of federal research funds to patent and license their inventions), Rooksby notes that "[o]ne largely overlooked cost of university involvement in technology transfer is university involvement in patent-related litigation." His article, which was recently published in the John Marshall Review of Intellectual Property Law, seeks to fill that empirical void. Rooksby was an IP litigator for 3 years, and is now pursing a Ph.D. in higher education at UVA.

Top 10 New IP Paper Downloads

What are the most downloaded IP papers that were posted on SSRN in the past 60 days? Aside from Bessen's article, the list is entirely new since I posted it in July:

Anna Laakmann: Pragmatic Patent Adjudication

Could the Federal Circuit fix the empirical stalemate in patent law by moving toward a more candid, pragmatic, and information-eliciting approach, focused on patentable subject matter doctrine? This is the thesis of a working paper by Professor Anna Laakmann (VAP at Penn State), Pragmatic Patent Adjudication, which she presented in the same session as me at IPSC.

Antitrust IP Conference at Stanford - Oct. 6

"Should Google be considered a dangerous monopoly, or is competition just 'a click away'? . . . How will antitrust and IP rules apply to Open Source? What lies ahead for Antitrust and IP in China? What is the future direction of the global market for patents? And what are the latest antitrust challenges facing mergers in the technology and communications industry?"

These questions will be addressed at the ABA Conference at Stanford on Oct. 6: Antitrust and IP in Silicon Valley and Beyond. Hear speakers from the FTC, DOJ, IV, Square, Microsoft, and more. Conference participants will also receive iPads and voting clickers for interactive participation! (Presumably you have to give the iPads back.) The conference is free for law students and has a reduced rate for academics. For more, see announcements from the ABA and from Stanford.

IPSC Today and Tomorrow

I'm in Chicago for the annual IP Scholars Conference (IPSC) today and tomorrow. This year the conference is at DePaul, and the schedule is available here. DePaul law student Daniel Rogna is live-blogging the conference; updates are available on the IPSC Blog and the CIPLIT twitter account. I'm sure I'll be writing more about many of the posted conference papers in the coming month!

What Experience Is Necessary To Write Good Patent Scholarship?

Between taking the patent-law-less bar exam and moving, I haven't had much time for reading scholarship in the past few weeks, so I am looking forward to two full days of IP scholarship at IPSC this week. But Friday's guest post at Patently-O reminded me of a trend I've noticed at the intersection of the academic and practicing patent law communities: practitioners criticizing academics simply for being "academic." Are these merely ad hominem attacks, or is practice experience and/or a technical background really necessary to write good patent scholarship?

Non-Faculty IPSC Presenters

The annual IP Scholars Conference is at DePaul this August, and the abstracts of accepted papers have been posted. According to the latest updates to the conference website, there are 137 presenters, and 19 of us do not have tenure-track faculty positions. What are the other non-faculty presenters currently doing?

Jacob Sherkow: Negativing Invention

Does nonobviousness favor "flash of genius" inventions over laborious ones, despite Congress's explicit declaration that "[p]atentability shall not be negatived by the manner in which the invention was made"? Jacob Sherkow argues that it does in his forthcoming article, Negativing Invention. Sherkow is currently an E.D.N.Y. clerk, and before law school he received an M.A. in Biotechnology, a background that shines in his discussions of the inventive process in different disciplines.

Top 10 New IP Paper Downloads

What are the most downloaded IP papers that were posted on SSRN in the past 60 days? There are five new papers on the list since I posted it last month, though Rantanen & Petherbridge's Therasense article still reigns after having two Patently-O blog posts.

Why Isn't IP on the Bar Exam?

I'm studying for the NY bar this summer, which means I spend every morning as a BARBRI girl, watching helpful reviews of things like the difference between possibilities of reverter and vested remainders subject to total divestment, or all the elements of all the different crimes you might commit by killing someone in New York vs. at common law vs. under majority statutory rules. (Fellow bar studiers: I've found Anki to be a great flashcard program.) But one thing I am not studying is the subject I focused on most in law school—intellectual property law—because it is not tested in NY, or in any other jurisdiction that I'm aware of. Why is this?

Katherine Strandburg: Patent Fair Use 2.0

In 2000, Dean Maureen O'Rourke (BU Law) published Toward a Doctrine of Patent Fair Use in the Columbia Law Review, in which she argued that patent law, like copyright, should have a fair use doctrine. The idea hasn't caught on in the past decade, but Professor Katherine Strandburg (NYU Law) has now updated the idea in Patent Fair Use 2.0.

Adam Mossoff on Patent History and Commercialization

Historical sources can help in "rediscovering the fundamental commercialization policy within patent law," argues Professor Adam Mossoff (George Mason Law) in his recently posted book chapter, Commercializing Property Rights in Inventions: Lessons for Modern Patent Theory from Classic Patent Doctrine. (If you want to buy the whole book, it looks like it is cheapest from Walmart.) Here is the abstract:

Hemphill & Sampat on Pharma Market Life

"Prospecting" by generic pharmaceutical companies—raising patent challenges to high-sales branded drugs—is on the rise, but these challenges are not shortening the effective market life of branded drugs; rather, patent challenges are combatting "evergreening" efforts by branded manufacturers. This is the surprising result of a new empirical working paper by economists Scott Hemphill (Columbia Law) and Bhaven Sampat (Columbia Public Health), Evergreening, Patent Challenges, and Effective Market Life in Pharmaceuticals, which builds on their prior work in the area. (I have also worked with Bhaven in the past, when he provided some of the data for my paper on university drug patents.)

Cultural Cognition Project: Rationality and Climate Change

While I was in law school, I worked on survey design and data analysis for the Cultural Cognition Project, led by Professor Dan Kahan. We just posted a new working paper to SSRN: The Tragedy of the Risk-Perception Commons: Culture Conflict, Rationality Conflict, and Climate Change. Here is the abstract:

The conventional explanation for controversy over climate change emphasizes impediments to public understanding: Limited popular knowledge of science, the inability of ordinary citizens to assess technical information, and the resulting widespread use of unreliable cognitive heuristics to assess risk. A large survey of U.S. adults (N = 1540) found little support for this account. On the whole, the most scientifically literate and numerate subjects were slightly less likely, not more, to see climate change as a serious threat than the least scientifically literate and numerate ones. More importantly, greater scientific literacy and numeracy were associated with greater cultural polarization: Respondents predisposed by their values to dismiss climate change evidence became more dismissive, and those predisposed by their values to credit such evidence more concerned, as science literacy and numeracy increased. We suggest that this evidence reflects a conflict between two levels of rationality: The individual level, which is characterized by citizens’ effective use of their knowledge and reasoning capacities to form risk perceptions that express their cultural commitments; and the collective level, which is characterized by citizens’ failure to converge on the best available scientific evidence on how to promote their common welfare. Dispelling this, “tragedy of the risk-perception commons,” we argue, should be understood as the central aim of the science of science communication.

Comments are welcome!

SSRN Patent Professor Rankings

Which patent law professors had the most SSRN downloads in the past year? While there are certainly many problems with using SSRN downloads for rankings, it can still be an informative metric, so I am going to again import a useful series from TaxProf Blog into the IP setting. SSRN's list (login required) was last updated on 6/6/11, and here's a ranking by "Total New Downloads," which tracks "Total downloads for the last 365 days for all the author's papers in the SSRN eLibrary." Inclusion on this list is based on my subjective assessment of whether the person could count as a "patent professor" or "patent scholar" (based on a quick look at his or her SSRN page); if you think I missed someone, please let me know!

Mann & Underweiser: New Look at Patent Quality

"What can justify another paper about patent quality?" ask Ronald Mann (Columbia Law) and Marian Underweiser (IBM) at the beginning of A New Look at Patent Quality: Relating Patent Prosecution to Validity (a working paper posted to SSRN last fall). Answer: an empirical analysis of a new dataset of Federal Circuit patent validity decisions from 2003 until 2009. Mann and Underweiser have written my favorite kind of article: one that brings new and rigorous empirical evidence into the debate. Even if you disagree with their specific policy conclusions, the empirical results are presented independently and remain a useful contribution.

Top 10 IP Paper Downloads

Over at TaxProf Blog (which has interesting posts about legal education as well as about tax law), Paul Caron has been posting weekly updates of the Top 5 Recent Tax Paper Downloads. Because I am rarely able to read and review IP papers as fast as they are posted on SSRN, I am going to begin doing the same for the IP papers that received the most SSRN downloads in the past 60 days. This week, I'll list the whole top 10:

Colleen Chien on the Patent Ecosystem

The "patent ecosystem" is defined by the complex interactions between two seemingly disparate paradigms—the defensive amassing of patents in the "patent arms race," and the purchase of patents (often by "patent-assertion entities") in the "patent marketplace"—argues Colleen Chien (Santa Clara Law) in From Arms Race to Marketplace: The Complex Patent Ecosystem and Its Implications for the Patent System. How do these two paradigms interact, and what can they teach us about the patent system?

Lemley: Myth of the Sole Inventor

Edison invented the light bulb, right? No, explains Mark Lemley (Stanford Law) in his newly posted article, The Myth of the Sole Inventor. Edison merely "found a bamboo fiber that worked better as a filament in the light bulb developed by Sawyer and Mann, who in turn built on lighting work done by others." Alexander Graham Bell developed the telephone at the same time as an independent inventor; the Wright brothers' airplane was soon surpassed by others (which they tried to delay with patents); Samuel Morse wasn't the first to make a working telegraph; and Eli Whitney's cotton gin just happened to work better than other mechanical toothed cotton gins at the time. "The canonical story of the lone genius inventor is largely a myth," Lemley argues.

T.J. Chiang: Levels of Abstraction

What is an "invention"? The Wright brothers received a patent for building one embodiment of an "invention" ("a single glider that could barely fly"), but the scope of their patent claims covered a much broader idea of their "invention," which might be interpreted at different levels of abstraction, ranging from all flying machines to only airplanes very similar to the original embodiment. In The Levels of Abstraction Problem in Patent Law (forthcoming in the Northwestern University Law Review), Tun-Jen Chiang (George Mason Law) argues that courts do not even acknowledge that this problem exists; rather, they select a level of abstraction "arbitrarily and silently." Chiang's goal is "to demonstrate that the problem exists and current doctrine fails to acknowledge it" and to "provide the [legal realist] foundation for a more transparent analysis of the problem."

Peter Lee: Accession and Patent Remedies

We often refer to patents as "property," so can traditional property remedies teach us something about appropriate remedies in patent infringement cases? This is what Professor Peter Lee (UC Davis) argues in his forthcoming article, The Accession Insight and Patent Infringement Remedies, which I had the opportunity to hear him discuss last month at Fordham Law. (Full disclosure: I edited Lee's Patent Law and the Two Cultures and am already a fan of his writing style.)

Lee considers the doctrine of accession, which governs the "mistaken improvement" of property. In a canonical accession case, Wetherbee v. Green (Mich. 1871), Wetherbee chopped down $25 worth of trees under a faulty license and made $700 worth of barrel hoops. The Michigan Supreme Court held that as long as Wetherbee was acting in good faith, title to the wood would transfer and he would only need to compensate the true owners for their $25 loss, rather than giving them the $700 barrel hoops.

So what happens, Lee asks, if Wetherbee's fictitious great-great-granddaughter patents a revolutionary new battery and begins commercializing it, only to be sued for infringing a patent covering an older battery design? What if she is unable to negotiate a reasonable licensing agreement?

Mortarboard Patents

Yale Law's Commencement is today. Although square graduation hats have been around since the 16th century, there have continued to be improvements in mortarboard technology; for example, a quick Google Patents search revealed that three Chicago inventors filed mortarboard patents in the 1930s, and Ohio-based Thomas La Maida filed three patents in the 1950s. And maybe I should have a graduation cap cover?

Unfortunately, I was unable to locate any scholarship discussing this important topic. But congratulations to all my graduating classmates!

Top 10 Most-Cited Patent Articles

Update 6/10/11: I have realized that there are a lot of problems with using WestlawNext for broad searches like this. For example, I realized that Mark Lemley's Rational Ignorance at the Patent Office has 368 citations—more than any on this list—but it doesn't show up when you search the JLR database for "patent," even though it has "patent" in the title. And if you search JLR for "TI:patent" the most-cited article only has 73 citations—none of the articles below are included. So the list below contains short descriptions of some highly cited patent articles, but I no longer believe that these are the most-cited patent articles of the past 15 years. If anyone discovers how WestlawNext decides what is included in a search, please let me know.

The Federal Circuit cites legal scholarship as frequently as other circuits, according to a study by David Schwartz and Lee Petherbridge (Patently-O has a nice summary). I have also heard that patent scholarship tends to be more widely read than other legal scholarship, both because many law review articles have practical value and because patent practitioners often work at a high academic level (I have no evidence to support this claim, but it seems plausible). Of course, most citations to patent scholarship come from other scholarship and secondary sources. So what are the most cited patent law articles?

Michael Carrier on the Patent-Antitrust Paradox

Studying for my antitrust exam made me think about the intersection of patents and antitrust—something we only had time to touch on briefly during the class. I've already blogged about the chapters my professor, George Priest, wrote for the Kauffman Foundation's new book on innovation, including Chapter 8 on the role of antitrust law in promoting innovation. But to learn more about the specific patent-antitrust intersection, I read Unraveling the Patent-Antitrust Paradox (U. Pa. L. Rev. 2002) by Professor Michael Carrier (Rutgers Law), which seems to be the most-cited article to tackle the topic in the past decade.

Patent Law, State Law, and Abraxis v. Navinta

I am studying for my federal jurisdiction exam, so I have been thinking about how patent law fits into the themes of this course. We used the classic casebook, Hart and Wechsler's The Federal Courts and the Federal System, and one of the themes emphasized by the book is the interstitial nature of federal law. From p. 459:

Federal law is generally interstitial in its nature. It rarely occupies a legal field completely, totally excluding all participation by the legal systems of the states. . . . It builds upon legal relationships established by the states, altering or supplanting them only so far as necessary . . . . Congress acts, in short, against the background of the total corpus juris of the states in much the way that a state legislature acts against the background of the common law, assumed to govern unless changed by legislation.

One might think that patent law is entirely federal, but Professor Amar (who has also reviewed an earlier edition of the casebook) liked to remind us that federal law is never in a vacuum.

Kara Swanson: Feminism, Corsets, and IP

This is a guest post by Allison Tait, a Yale 3L with a Yale Ph.D. in French literature. Allison writes about women's property and marriage regulation and is the former Editor-in-Chief of the Yale Journal of Law & the Humanities.

What do feminism, the corset, and intellectual property have in common? Quite a bit, it turns out, according to Kara W. Swanson (Northeastern Law) in her latest paper, Getting a Grip on the Corset: A Feminist Analysis of Patent Law. For Swanson, feminine interventions in patent-protected technology converge in the corset. The corset involved women as both consumers and litigants. The corset constructed gender by shaping the feminine form into a graceful silhouette with a small waist. And the corset narrated gender by calling into question the divide between public and private in Egbert v. Lippmann—the 1881 “corset case” that provided a foundational examination of the public use doctrine. The case turned on the question of Francis Lee Barnes’ right to her deceased husband’s patent for an improvement in corset springs. Problems abounded for Francis because the Court cast her as a public woman at a time when the public space of the market belonged to men and the private sphere of domestic relations to women.

Sarah Tran on Expediting Green Patents

The PTO's Green Technology Pilot Program, which expedites review of green patents, "looks far greener than it actually is," argues Sarah Tran (SMU Law) in Expediting Innovation: The Quest for a New Sputnik Moment (forthcoming in the Harvard Environmental Law Review). Tran argues that the PTO should reduce obstacles to expedition in order to "better optimize the constitutional patent bargain while responding to critical public needs." Although there are problems with the Sputnik analogy, I agree that developing green technologies should be a top priority, and we should think about how to support both creation of and access to green patents.

The Green Technology Pilot Program was launched in December 2009 in response to green patent programs in the UK, Japan, Australia, and Korea. But Tran points out that it was limited to patents already in the system falling within a small subset of technology classes, with further limitations on types and number of claims. Perhaps more problematic, "accelerated review was only available for one year to applications already in the system—the program had no relevance to technologies that had not yet been invented." But even now that many of these restrictions have been removed, the program remains under-enrolled. What's wrong with it, and how can it be improved?

Monday Deadline To Present at IP Scholars Conference

This year's IP Scholars Conference is August 11-12 at DePaul in Chicago. According to the conference website, requests to present should be made no later than May 2, which is Monday. I hope to be there (talking about my draft paper on disclosure), and I hope to meet some blog readers there!

Seaman on Willful Patent Infringement

What effect has In re Seagate had on willful infringement findings? Seagate raised the bar for willfulness by requiring patentees to show "objective recklessness." Christopher Seaman (Chicago-Kent Law) addresses this question in Willful Patent Infringement and Enhanced Damages After In re Seagate: An Empirical Study (forthcoming in the Iowa Law Review). Seaman created a dataset of all patent willfulness cases from September 2004 to July 2010 (straddling the Seagate decision in August 2007); the paper says that data "will be made publicly available on the author's website," but they don't appear to be posted yet.

Although "[m]any observers predicted that [Seagate's] heightened standard would result in far fewer willfulness findings and enhanced damage awards," Seaman's empirical study "finds that willful infringement was found only about 10% less often after Seagate." For a concise summary of the specific findings, see Peter Zura's post on his 271 Patent Blog. Of course, with studies of this sort it is always difficult to separate the effect of the new legal rule from the decisions of the parties over which cases to litigate, so it is hard to know what conclusions we can draw, but I think Seaman's findings are still useful.

15 Years of TRIPS Implementation

The Journal of Intellectual Property Law at the University of Georgia Law School hosted a conference in January called "15 Years of TRIPS Implementation: Intellectual Property Protection From a Global Perspective." Peter Yu (Drake Law), who organized the conference, presented TRIPS and Its Achilles' Heel. Yu examines "why the TRIPS Agreement fails to provide effective global enforcement of intellectual property rights" and "lessons that can be drawn from the continuous battle between developed and less developed countries over international intellectual property enforcement norms."

Edward Lee (Chicago-Kent Law) presented Measuring TRIPS Compliance and Defiance: The WTO Compliance Scorecard, which "proposes the tabulation of a TRIPS Compliance Scorecard measuring a country's attempt to correct any treaty violation that a WTO panel or the Appellate Body has found against the country. . . . Two alternative methods are offered – a simple and a complex score to track the violating country's response. Scorecards are computed for WTO countries under both methods; in both cases, the U.S. ends up with the lowest score in 2011."

The other papers presented don't appear to be online:

• Donald Harris (Temple Law), Evaluating the Success of TRIPS by Looking to Compulsory Licensing
• Sean Flynn (American University Washington College of Law), From TRIPS to ACTA: The Rise of the Enforcement Agenda
• Ruth Okediji (Minnesota Law), If WIPO Leads, Should the World Follow?: Decentralizing IP Norm-making Processes and the Norms That Result Therefrom
• Henning Grosse Ruse-Khan (Max Planck Institute for Intellectual Property, Competition and Tax Law), The International Law Relation Between TRIPS and Subsequent TRIPS-Plus Free Trade Agreements: Towards Safeguarding TRIPS Flexibilities?
• Susan Sell (George Washington), TRIPS Was Never Enough: TRIPS-Plus, ACTA, and the Trans-Pacific Partnership Negotiations

Do You Want To Blog About IP Scholarship?

Due to my clerkship plans this fall, I will be unable to blog from Sept. 2011 until Sept. 2012. But I'm sure 2011-12 will see lots of great patent and IP scholarship, and it would be great to have some blog posts about it here. So if you are interested in joining me as a co-blogger on Written Description (to begin as soon as you like, and to continue even after my clerkship ends), send me an email at lisa.ouellette@yale.edu to tell me (1) why you are interested and (2) a little about at least one patent/IP article that you would want to blog about. This blog has gotten great shout-outs from sites like The Volokh Conspiracy, Concurring Opinions, Patently-O, PriorSmart IP News, and SCOTUSblog since it began this spring, and I think it is a fantastic opportunity for law students or young academics to get their voices heard.

Also, if any blog readers will be at the Fordham IP Conference next week, feel free to email me and let me know. I would love to meet up and hear about any papers you are working on! I will probably be posting less frequently over the next month during exams, but I will want lots to blog about this summer.

Are Biotech Patents Enabled?

Stanford 3L Dmitry Karshtedt, who has guest posted on this blog, has a new post on Stanford's Law and Biosciences Blog about biologics, which are complicated drugs like erythropoietin that are typically made using living cells, as distinct from easily replicated small-molecule drugs like aspirin.

Karshtedt discusses his new paper, Limits on Hard-To-Reproduce Inventions: Process Elements and Biotechnology's Compliance with the Enablement Requirement, in which he argues that claim limitations can help enable biotech patents. I have also discussed the enablement problem for biologics starting at ¶ 106 of Access to Bio-Knowledge: From Gene Patents to Biomedical Materials, which cites Gregory Mandel's argument that many biotech patents fail enablement. What do readers think: is enablement a problem for biotech? Should biotech patents disclose more? I'd like to think about this issue more as I revise my paper on patent disclosure.

Does Microsoft v. i4i Matter?

Tomorrow, the Supreme Court will hear oral argument in Microsoft v. i4i Limited Partnership, which examines whether the invalidity defense of 35 U.S.C. § 282 must always be proved by clear and convincing evidence. Microsoft has argued that the standard should be a preponderance of the evidence, especially when the prior art used to contest validity is "unconsidered evidence," or evidence not considered by the Patent and Trademark Office (PTO).

Amicus briefs from the legal academic community generally support Microsoft. A brief of 37 law, business, and economics professors (with counsel Mark Lemley) argues that given the constraints on PTO review (e.g., that examiners only have 16-17 hours per patent), the clear and convincing evidence standard is appropriate only when the PTO considered an issue on the record. This echos a 2007 Stanford Law Review article by Lemley and Doug Lichtman, and Lichtman makes the same point in a (tritely titled) New York Times op-ed. Microsoft is also supported by a brief from the William Mitchell Intellectual Property Institute, arguing that the clear and convincing evidence standard is "historically anomalous" and "conflicts with general legal principles," and a brief from digital IP scholar Lee Hollaar, arguing that the heightened standard raises particular problems for software patents. But does the standard of patent validity actually matter?

David Fagundes on Roller Derby IP

Can you learn something about intellectual property by studying roller derby girls? Apparently yes: David Fagundes (Southwestern Law) has posted an entertaining new article, Talk Derby to Me: Emergent Intellectual Property Norms Governing Roller Derby Pseudonyms (forthcoming in the Texas Law Review). Fagundes expands on work by Robert Ellickson and others on the role of social norms in creating order without law. From the abstract:

This analysis of derby names shows that IP norms emerge independently of law’s substantive (un)availability, so long as the relevant group is close-knit and the norms are welfare-maximizing. These groups are especially likely to craft formal regulation and registration schemes to buttress informal norms where the relevant community is identity-constitutive, and where the intangible goods arise from nonmarket production. In addition to this critique of existing explanations for IP norm emergence, this study suggests a counter-theory for the emergence of user-generated IP governance systems, casts (further) doubt on the coherence of the prevailing neoclassical economic assumptions underlying IP law, and calls into question what it means for rules to be law.

If, like me, you hadn't heard of roller derby pseudonyms, check out the description of them on pp. 11-12, with names including Tara Armov, Paris Killton, Venus de Maul'r, Paris Troika, Madam Ovary, and Raven Seaward.

New Book on Innovation: Rules for Growth

An impressive array of authors have put out a new book, Rules for Growth: Promoting Innovation and Growth Through Legal Reform (free download), funded and organized by the Kauffman Foundation. The book covers a dizzying array of topics, from immigration to tort reform. Although the length (494 pages) is daunting, those who just want the take-home message can look at Table 1.1 on pp. 17-22 for the specific policy recommendations. For example, in terms of PTO reform, the book recommends (1) a second-pair-of-eyes review to weed out bad patents; (2) changing incentives for patent examiners; (3) a tiered review process; and (4) a post-grant opposition process.

Here is the Table of Contents, along with notes about what struck me during my brief skim:

Ryan Vacca: The Federal Circuit Acts Like an Administrative Agency

Is the Federal Circuit engaging in substantive rulemaking and policy setting about patent law? Should it? Professor Ryan Vacca (Akron Law) answers "yes" to both questions in Acting Like an Administrative Agency: The Federal Circuit En Banc (forthcoming in the Missouri Law Review). When only the third of the Federal Circuit's docket comprised of patent cases is considered, the Federal Circuit goes en banc more than any other circuit (see the table on p. 4), but "the more striking feature of the en banc orders is their scope": the court often requests briefing on numerous or broad questions of patent policy, and the orders often "expressly permit amici curiae to file briefs without leave of court" and "specifically invite[] the United States or the PTO to file an amicus brief." Vacca argues that when the Federal Circuit sits en banc in patent cases, it is acting like an administrative agency. And despite concerns about separation of powers and lack of meaningful review, Vacca argues that "the Federal Circuit may be the best candidate" to set patent policy currently, as Congress has shown little interest in amending the Patent Act (though that may be changing?) and the PTO lacks rulemaking authority. It's an interesting piece and a quick read, and it received a shout-out on PatentlyO.

Heidi Williams: IP on Genes

How does intellectual property protection for human genes influence the development of products based on these genes? A few weeks ago, Heidi Williams (NBER fellow and incoming MIT econ prof) presented to the Yale Law School Information Society Project about her empirical study of this topic: Intellectual Property Rights and Innovation: Evidence from the Human Genome.

Williams looked at the race to sequence the human genome between the Human Genome Project, whose genes were freely available, and Celera, whose genes were protected through contractual restrictions on redistribution and licenses for commercial uses. (So Williams was not looking at gene patents, but her results may have implications for the gene patent controversy and Myriad case.) Celera's IP protection only lasted until the gene was re-sequenced by the Human Genome Project, which meant a maximum of two years of protection, ending in 2003. To my knowledge, this is the first paper to look at the impact of open access not just on publications, but also on commercial products. The results are very interesting:

Jeanne Fromer: Patentography

Would stricter venue rules improve patent law? In Patentography (NYU L. Rev. 2010), Professor Jeanne Fromer (Fordham Law) argues that considering the "geography of patent disputes" by "making patent venue proper only in the district in which the principal place of business of any of a case's defendants is located" would help resolve complaints of (1) forum shopping, (2) poor district court performance in patent litigation, and (3) insufficient deference by the Federal Circuit. Her basic insight is that this venue restriction "will lead to a concentration of an industry's patent suits in the districts where that industry's firms are densest," so that most pharma suits will be in D.N.J., while software suits will be in N.D. Cal., D. Mass., and W.D. Wash.—and she argues that this industry-specific specialization by generalist courts would produce more reasoned opinions than specialized patent trial courts. I'm not sure that "patentography" is the clearest name for patent geography ("-graphy" refers to a writing or field, and patent attorney Mark Rosen made aborted efforts to define "patentography" along these lines), but Fromer presents an intriguing argument that taught me something new and made me rethink my views on specialized patent courts.

Michael Risch on Patent Trolls and Utility

Michael Risch (Villanova Law) has posted two new articles on SSRN that are related to recent Written Description posts. The first is Patent Troll Myths (forthcoming in the Seton Hall Law Review), which compares results with Patent Quality and Settlement Among Repeat Patent Litigants by John Allison, Mark Lemley, and Joshua Walker. Risch begins with a provocative claim: "It turns out that just about everything we thought about patent trolls—good or bad—is wrong." Risch started with the ten "most litigious" non-practicing entities (NPEs)—including Acacia Technologies, General Patent Corp., and Ronald A. Katz—and searched for all cases involving these NPEs from 1986 and 2009, resulting in a dataset involving 1011 cases and 400 patents.

Do Patents Disclose Useful Information?

I recently uploaded a revised draft of my current working paper, Do Patents Disclose Useful Information?, on SSRN. I am grateful for all the feedback I have received on this paper so far, and I welcome more—please feel free to email me. Here is the abstract:

Courts often state that patents are justified by disclosure theory, the idea that patents are awarded as quid pro quo for the public disclosure of inventions. Economists have long argued that disclosure theory should be accorded no weight in the design of the patent system because patented inventions would have been disclosed anyway. Even the few legal scholars who dispute these economic arguments agree that, in practice, patents are currently not useful as technical sources for other innovators. This Article challenges all these arguments, arguing not that disclosure theory is a valid justification for the patent system, but rather that the benefits of full technical disclosures are stronger than is generally believed, and that these benefits probably outweigh any incremental loss in innovation incentives. Using results from a new survey of nanotechnology researchers and case studies of individual patents, this Article shows that patents do contain useful technical information that is not available elsewhere. This technical content could be improved, however, in at least three ways: stronger enforcement of disclosure requirements (including through an obligation to respond to good faith reproducibility questions from skilled researchers), elimination of legal barriers to using patents as technical sources, and improved access to patents through peer production. These changes will help defuse the tension between patents and the open culture of science.

Tim Holbrook: Can presumptions save patents' technical nature?

Are patents legal documents or part of the technical literature? Both, but the balance is currently skewed, says Professor Timothy Holbrook (Emory Law), in Patents, Presumptions, and Public Notice (forthcoming in the Indiana Law Journal): because of patents' "Janus-like nature, reading and interpreting them can be challenging, as courts must parse both the legal and the technical." This article builds nicely on Holbrook's prior work, including Possession in Patent Law (arguing that the purpose of patents is not disclosure, but rather to show that the inventor possessed the invention).

Allison, Lemley & Walker: Repeat Patent Litigants

Do repeat patent plaintiffs have stronger patents? Are they more likely to settle to prevent these patents from being invalidated? John Allison (UT Austin Business), Mark Lemley (Stanford Law), and Joshua Walker (Lex Machina, Inc.) empirically address these questions in Patent Quality and Settlement Among Repeat Patent Litigants, which was just published in the March issue of the Georgetown Law Journal.

The study was based on the Stanford IP Litigation Clearinghouse, which links all patent suits since 2000 with their corresponding patents (and is "free to academicians, public interest researchers, judges, policymakers, and the media" and run by Lex Machina). The authors compare the 106 patents that were litigated 8 or more times with 343 patents that were litigated only once. Among their findings:

Samuelson & Schultz: What business methods are patentable after Bilski?

The final paper presented at Stanford's Bilski Symposium was "Clues" for Determining Whether Business and Service Innovations Are Unpatentable Abstract Ideas by Pamela Samuelson and Jason Schultz, both of Berkeley Law (though this paper looks like it is being published by the Lewis & Clark Law Review, not the Stanford Law Review). The paper discusses the "clues" in Bilski for "distinguish[ing] between unpatentable abstract ideas and patentable processes."

John Duffy on Business Method Patents

"[W]hy did business patents arise, and why did they survive?" John Duffy (GW Law) seeks to answer these questions in Why Business Method Patents?, the fifth paper in my review of Stanford's Bilski Symposium. Unlike the first four papers, Duffy neither explains how Bilski should have been decided nor focuses on how Bilski will be interpreted going forward; rather, he presents a compelling (and well-written) historical explanation of how we ended up where we are today.

Dmitry Karshtedt: Samsung-Stanford Symposium on Patent Remedies

This is a guest post by Dmitry Karshtedt, a 3L at Stanford with a Ph.D. in chemistry. Karshtedt is the Stanford Law Review Senior Symposium Editor, and his legal scholarship is available on SSRN.

The inaugural Samsung-Stanford Symposium on Patent Remedies took place on February 18, 2011, at Stanford Law School. The panels featured both law professors and students who won the Samsung-Stanford prizes on the basis of their proposals. Links to videos of the panels and PDFs of the papers are included below.

The first panel, moderated by Professor Robin Feldman of U.C. Hastings College of the Law, was focused on injunctions. Janet Freilich, a 2L from Harvard, kicked off the discussion and presented a nuisance framework that judges could use to determine when to issue injunctions, supplementing the four-part test endorsed in eBay v. MercExchange. Professor Christopher Cotropia, from the University of Richmond, then presented an empirical paper that showed that the Federal Circuit’s Kyocera case did not have the expected effect of reducing the number of filings by patent owners to prevent the importation of infringing goods through the International Trade Commission. Professor Ted Sichelman, from the University of San Diego, argued that patent remedies must be based on harm to the public caused by diminished incentives to innovate due to infringement, rather than on injury to individual patent owners. Professor Peter Lee of U.C. Davis then proposed a rule, based on the law of accession in the real property context, holding that infringement suits against owners of improvement patents should result in damages rather than injunctions. Finally, Professor John Golden of University of Texas discussed the compliance of patent injunctions with the Federal Rules of Civil Procedure.

The second panel, moderated by Brian Love, a teaching fellow at Stanford Law, focused on patentee overcompensation and apportionment. In the first paper, Professor Amy Landers of McGeorge demonstrated that the history of the Patent Act supported apportionment based on the novel contribution of the patentee over the prior art. Professor Bernard Chao of the University of Denver then argued that more reasonable damage awards will be reached if courts, as they may, allow accused infringement to implead other infringers for contribution. Using the example of the iPhone, 3L Ravi Mohan of Santa Clara argued that the use of apportionment is unavoidable for complex technologies. Finally, Dmitry Karshtedt, a 3L at Stanford, highlighted a panel split in the Federal Circuit involving differing treatment of proven acts of direct infringement in figuring indirect infringement damages.

The third panel, moderated by Professor Colleen Chien of Santa Clara, showcased empirical papers on patent damages. Damon Andrews, a 3L at the University of Iowa, argued that the goal of much of patent litigation is to extract settlements from defendants. Professor Michael Mazzeo of Northwestern University, in a paper co-authored by Jonathan Hillel of Skadden Arps and Samantha Zyontz of George Mason University School of Law, showed that patent damages are not as extravagant as commonly perceived. Rhonda Sadler, a 3L at Mercer Law School, suggested approaches to simplifying jury instructions based on evidence of lack of understanding of current jury charges in patent cases. Professor Christopher Seaman of Chicago-Kent College of Law, completed the panel by demonstrating the effects of opinions of counsel on cases dealing with various issues in patent law such as willful infringement.

The fourth and final panel dealt with structured calculation of reasonable royalties, and was moderated by the Honorable Ronald Whyte of the Northern District of California. Professor Thomas Cotter of the University of Minnesota discussed four principles that should guide courts in calculating reasonable royalties—faithfulness to substantive law, focus on compensation sufficient to make the patentee whole, increased damages only when this is needed for optimal deterrence, and basis of damages on licenses that parties would have actually entered into but for the infringement. The second paper was given Kanav Hasija, a Master in Intellectual Property at the University of New Hampshire School of Law and co-authored by Paul Tanpitukpongse, a 3L at UNH, and discussed a game theory approach to calculating reasonable royalties. Stanford LLMs Tony Lai and Samuel Windley co-authored the third paper, presented by Samuel, which involves courts encouraging patent litigants to negotiate actual royalty agreements and using such negotiations as the basis for reasonable royalties. The conference ended with Stanford’s Mark Lemley, who explained how courts should approach the issue of ongoing royalties in cases where injunctions are not granted and the losing defendant continues to infringe.

Robin Feldman on Owning You

The fourth paper in my review of Stanford's Bilski Symposium is Whose Body Is It Anyway? Human Cells and the Strange Effects of Property & Intellectual Property Law by Robin Feldman (U.C. Hastings Law). Feldman's thought-provoking paper was presented in the same panel as the paper on genetic diagnostic patents by Dreyfuss and Evans, and she expresses a similar concern about genetic patents. Although the title and beginning of the paper led me to believe that it would focus on moral and ethical concerns of patenting DNA (which I have argued are not as significant as potential concerns about healthcare and basic research), Feldman actually presents a "modest and practical approach." She concludes that genes should be patentable, but only under a narrow claim scope.

Part I is about neither patents nor Bilski: Feldman argues that Moore v. Regents of the University of California (holding that a patient who consented to removal of his cells did not have a property interest in those cells) was wrongly decided, and that a person should have a property right in cells that are removed from his or her body. (If I were editing this piece, I might recommend that this Part be cut or reduced to a paragraph in the Introduction: this argument isn't new, and I think it detracts from the more interesting arguments in Part II.)

Part II examines "the extent to which inventors can tie up human genes and related substances" in light of Bilski and Association for Molecular Pathology. Like Dreyfuss and Evans, Feldman focuses on the use of "pre-empt" in Bilski, arguing that "[i]n gene-related inventions, pre-emption problems can emerge ... in the context of attempts to tie up a natural phenomenon." Under this preemption test, inventors should not be allowed to patent "the relationship between elevated blood sugar levels and diabetes" but should be able to patent "personalized medicine diagnostic methods, which may involve hundreds of biomarkers and complex statistical modeling." Considering the breast cancer genes at issue in Molecular Pathology, Feldman argues that the diagnostic claims are closer to personalized medicine, while the therapeutic claims (for "the 'method' of determining whether a cancer therapeutic is effective") have "greater problems."

"The more interesting question," writes Feldman, "involves the claims to particular DNA and cDNA sequences created outside the human body." She argues that the common analogy between gene patents and isolated and purified natural products (like the paper pulp in the 1874 American Wood-Paper case) is outdated because "the modern creation of genetic inventions no longer requires purification"; instead, genes can be built "from the ground up" through chemical synthesis. Feldman argues that genes should be patentable if researchers can develop specific uses for them, and that "the fact that genes exist in a natural form in the human body should not prevent patenting of genes in laboratory form." The subject matter test is related to novelty and utility: "we ask whether the invention allows us to accomplish something that we could not accomplish with the natural product. Applying that yardstick to isolated DNA and cDNA would suggest that such products should be considered human invention, rather than the handiwork of nature."

Feldman says that the problem is not gene patents per se; rather, it is "allowing patent holders to reach beyond the state of knowledge at the time of the invention," and "[t]he solution lies in properly limiting the scope of the allowed claim." But unlike Lemley et al., who argue that § 101 independently limits claim scope, Feldman says that "this limitation could be accomplished through the disclosure requirements of section 112." Myriad's BRCA1 patent claims, for example, should be limited to the BRCA1 sequence "for the purposes of breast cancer diagnosis in a designated patient population." (Feldman doesn't explain what "a designated patient population" would be, but presumably it would be something like "women at risk for breast cancer.") These restrictions might be important in some hypotheticals, but they wouldn't satisfy the Molecular Pathology plaintiffs, since the use of the BRCA1 gene for breast cancer diagnosis is what they care about. But presumably Feldman would argue that under our current patent laws, that makes doctrinal sense.

Dreyfuss & Evans: Bilski and Gene Patents

Does Bilski bar patents on genetic diagnostics? All the Justices in Bilski agreed that patents may not "preempt" (or "pre-empt") something, but what does "preempt" mean? Is a gene patent that can't be designed around preemptive? Rochelle Dreyfuss (NYU Law) and James Evans (UNC Genetics and Medicine) tackle these question in the third paper in Stanford's Bilski symposium: From Bilski Back to Benson: Preemption, Inventing Around, and the Case of Genetic Diagnostics.

Like Lemley et al. and Menell, Dreyfuss and Evans agree that the fractured Bilski opinions were uninformative. (Does anyone think the Bilski opinions were great? That would be a novel argument.) They write that "preempt" is used "entirely within the legal domain" and has no meaning in "technological discourse." (It addition to describing displacement of state law by federal law, the term frequently came up in law review article discussions: a "preempted" piece failed the novelty prong for a good law review article.) In Part I, Dreyfuss and Evans argue that § 101 does not tell us "whether" a new technology can be patented, but rather "how" the technology is claimed: "claims that 'preempt' competitive development—that cover prospects that cannot be efficiently mined by individual rights holders—are barred." This is very similar to the argument by Lemley et al. that § 101 is about claim scope, not gatekeeping.

In Part II, Dreyfuss and Evans apply these ideas to patents on genetic diagnostics, which is a subset of what are often called "gene patents," and I will use the "gene patent" shorthand in this post. Lawyers who are unfamiliar with genetic diagnostics will enjoy II.A on "The Science of Genetics." II.B then reviews the SACGHS report on genetic diagnostic patents (Evans was chair of the SACGHS task force). The piece reports that "when there were patents held exclusively by a single entity, both clinical practice and scientific development were impaired," which is a different message from the SACGHS draft report, which concluded that "patents covering genetic tests ... do not appear to be causing wide or lasting barriers to patient or clinical access," as I quoted in Access to Bio-Knowledge: From Gene Patents to Biomedical Materials. But because the draft report found that patents do little to help the development of new genetic diagnostics, I argued in Access to Bio-Knowledge that the report still supported calls for exempting genetic diagnostics from patentability—a conclusion that the final report makes even stronger.

Dreyfuss and Evans hint in Part III that a legislative carve-out may be unnecessary because patents on genetic diagnostics might "preempt" competitive development for at least four reasons: (1) inventing around gene patents is impossible, (2) gene patents limit interoperability, (3) gene patents create broad unmined prospects, and (4) patentees for genetic diagnostics tend to be academics who are not primarily motivated by patents. (This last factor seems like an important policy concern, but the link to preemption is less obvious than for the other three.) The authors never actually say that they think genetic diagnostic patents are not patentable subject matter under Bilski, but they note that "it is no wonder that courts have begun to question the validity of these patents" (citing Association for Molecular Pathology) and that "one Federal Circuit judge has already suggested that Bilski's preemption test raises serious questions about patents on isolated DNA molecules" (citing Judge Dyk's opinion in Intervet v. Merial).

I wish that the paper had a more explicit conclusion—even if the authors do not feel comfortable claiming that genetic diagnostic patents do preempt development and are thus unpatentable subject matter, they could at least lay out what factors still need to be examined to decide whether this is true—but I still think the paper does a nice job of highlighting the preemption concern and thinking about factors that might be relevant in investigating preemption.

Peter Menell on Bilski Methodology

How should courts think about interpreting the Patent Act? Although it has one of the more awkward titles I've seen recently, I enjoyed Peter Menell's contribution on this subject to Stanford's Bilski symposium: Forty Years of Wondering in the Wilderness and No Closer to the Promised Land: Bilski's Superficial Textualism and the Missed Opportunity To Ground Patent Law Interpretation and Return Patent Law to Its Technology Mooring.* Menell is a professor at Berkeley Law and has a Ph.D. in economics, and much of his research has involved the intersection of copyright and software / computing / the internet (see, e.g., his recent article about copyright and knowledge-preservation efforts like Google Books).

In his Stanford symposium piece, Menell argues that Bilski was a missed opportunity to delineate the confusing boundaries of patentable subject matter. This by itself isn't news: as soon as Bilski came down, the patent blogosphere said it was a vague letdown that offers no clarity. And the opinion fit nicely with Peter Lee's thesis about Supreme Court patent cases raising cognitive burdens for judges. But Menell does not simply critique the Court's fractured majority as vague; he also criticizes its methodology: "In its effort to shoehorn analysis of patentable subject matter into a textualist mold, the Court collapsed the rich historical development of patentable subject matter into three amorphous, static, and ill-defined exceptions [for laws of nature, physical phenomena, and abstract ideas]. The resulting methodology and analysis are incoherent." Although Menell argues against the Supreme Court's "textualist turn," he is still able to wield the tools of textualism more deftly than the Court when criticizing the majority opinion in Part II.

Rather than using textualism, Part IV argues that the Court should "integrate the constitutional and jurisprudential traditions surrounding patentable subject matter with statutory construction principles and forthright recognition of the challenges of applying historic doctrines to unforeseeable technological developments." Specifically, courts should (1) "ascertain whether any constitutional provision constrains legislative or judicial power" and then (2) "determine the appropriate interpretive lens" based on whether the statutory text in question was intended to change prior law—if not, courts should continue the common-law patent tradition.

Applying this framework to Bilski, Menell argues that "[t]he historical record strongly indicates that 'useful Arts' was understood at the time of the Constitutional Convention to limit patents to technological fields," and that "[t]here is no reason to believe that 'business methods' have become a science or technology," so "the Court did not need to reach the statutory question." But if it did consider the statute, the Court should have noted that the 1952 Patent Act "perpetuated" a "functional, common law approach" for patentable subject matter, using "process" not in its 1952 dictionary sense but "based upon the rich jurisprudence of the prior 150 years," which "limited 'process' or 'art' to physical acts that produce a physical or chemical transformation or operate a machine."

It sounds like Menell thinks the Federal Circuit got it right with the machine-or-transformation test, and since he was on the same panel at the Stanford symposium with Mark Lemley, whose paper argued against gatekeeping approaches like machine-or-transformation, it would have been interesting to hear their conversation about this. Any readers who were there want to share any details?

*Nitpicky Bluebook tip of the day: The Bluebook is full of unnecessarily complicated rules (see my classmate James Kwak's critique), but once you have been an articles editor, little mistakes jump out at you. One of the most common mistakes that slips past editors is the capitalization of the word "to," which should be lowercase when used as a preposition (rule 8(a)), but uppercase when used as part of an infinitive verb (as in two of the examples in rule 16.3). So in the title of this article, we have "to the Promised Land" and "to Its Technology Mooring" but "To Ground." (Also note that "Its" should be capitalized, even though it is under five letters, because it is not an article, conjunction, or preposition.) Will "mistakes" like this keep your brilliant article from getting accepted? Of course not. But will lots of Bluebook mistakes signal that you might have been sloppy with more important details? Maybe. (Whether editors should be so worried about the capitalization of "to" is another question...)