Mark Lemley: The Fractioning of Patent Law

Why is it that patent owners, despite seemingly having an abundance of advantages, seem to consistently lose their cases? In The Fractioning of Patent Law, Professor Mark A. Lemley (William H. Neukom Professor of Law and Director of the Stanford Program in Law, Science, and Technology) systematically explores the structure of modern patent law to provide a detailed, and distinctly probable, explanation for patent owners’ astonishingly low success rates in litigation.

In this article, Professor Lemley begins his investigation by identifying the distinct advantages patent owners have historically been entitled. Modern patent owners have been handed a “stacked deck” with strong presumptions of patent validity, minimal restrictions on the drafting and evaluation of claims, and even the ability to purposely select the most favorable district. Nevertheless, Professor Lemley finds the results of patent infringement cases, particularly the patentees’ rate of success, to be rather baffling.

Professor Lemley begins his search for a reasonable explanation for the variance of plaintiff success in federal courts by excluding the recent changes to patent law. Patent owners’ similar inferior success rates during the maxim of patent-friendly jurisprudence support his exclusion of recent reform. Professor Lemley finds that the most logical explanation for patentees’ unsuccessful trend lies in the fractioning of the patent system. By separating a patent infringement lawsuit into numerous issues, patent law has created an asymmetric system that is tremendously defendant biased.

Professor Lemley gives the reader a brief, but comprehensive, recollection of the evolution from central claiming to peripheral claiming. He argues that this progression initiated the eventual fractioning of patent law. The courts division of the disclosure doctrines in 35 U.S.C. §112 has only aggravated the problems for patent owners. And as the focus shifted to patent claims, the fractioning effect accelerated. Professor Lemley points out that patent infringement has gradually become more enamored with matching the words of a claim, rather than the degree of overlap between products. The immediate effect: in order to win an infringement case, the patentee must win everything.

Additionally, limitations on the number of claims asserted at trial and the number of claims the court will construe have substantially mitigated any of the patentees’ perceived advantages. Professor Lemley goes on to explain how the doctrine of offensive non-mutual collateral estoppel and the doctrine of equivalents are of no benefit to the patentee either. Although the doctrine of equivalents was intended to avoid the disadvantaging of patent owners, and possibly could have minimized the effects of fractioning, Markman essentially diminished the doctrine’s utility. Furthermore, Professor Lemley asserts that the courts’ tendency to commandeer decision-making authority has increased the likelihood of fractioning.

In his thorough history and explanation of disproportionate litigation results, Professor Lemley has revealed what seems to be the most logical reason for patentees’ poor success. Peripheral claims were intended to construe patents more narrowly with expectations of improving certainty, providing superior public notice, and enhancing innovation. However, the compartmentalized emphasis of the current patent system has inadvertently resulted in the current difficulties patentees face in infringement cases.

Scholars have long known that the outcome of patent litigation often hinges on the construction of patent claims. See e.g. Peter Menell, Matthew Powers, and Steven Carlson, Patent Claim Construction: A Modern Synthesis and Structured Framework, 25 Berkeley Tech. L.J. 713 (2010). Academics have commonly made interesting proposals for the reform of claim construction. See e.g., Peter Lee, Substantive Claim Construction as a Patent Scope Lever, IP Theory, Vol. 1, p.100-114 (2011); Dan Burk and Mark Lemley, Fence Posts or Sign Posts: Rethinking Patent Claim Construction, 157 U. Pa. L. Rev. 1743 (2009). However, with the enactment of the America Invents Act, scrutiny of the long-term effects on patent litigation should provide several interesting observations. Will the current reform be enough to alter patentees’ litigation trend? Can these serious disadvantages to patentees be eliminated? During the movement to a system of peripheral claiming, very few anticipated such adverse effects upon litigants. What consequences have been overlooked in the current reform? As patent law continues to evolve, Professor Lemley’s article isolates a critical flaw in litigation and sheds light upon some of the inadvertent consequences of peripheral claiming.

Posted by Derik Sanders (dtsanders@smu.edu), a 2014 Juris Doctor Candidate at SMU Dedman School of Law and research assistant to Professor Sarah Tran.