tag:blogger.com,1999:blog-6851300.post7930576625025322689..comments2023-11-05T06:06:12.057-06:00Comments on The 271 Patent Blog: Revisiting the Presumption of ValidityTwo-Seventy-One Patent Bloghttp://www.blogger.com/profile/02481083706071978817noreply@blogger.comBlogger15125tag:blogger.com,1999:blog-6851300.post-53899367508935945052009-08-23T10:16:08.158-05:002009-08-23T10:16:08.158-05:00As to MaxDrei, one can read The Pathological Expor...As to MaxDrei, one can read <a href="http://papers.ssrn.com/sol3/papers.cfm?abstract_id=929208" rel="nofollow">The Pathological Export Boom and the Bazaar Effect: How to Solve the German Puzzle</a>. <br />As to the deference of courts to the USPTO, another factor that must be included in the discussion is the difference between courts and the USPTO as to presumptions of claim scope. A different 271Blog post brought up this issue. <a href="http://271patent.blogspot.com/2009/07/time-to-do-away-with-broadest.html" rel="nofollow">Time To Do Away With "Broadest Reasonable Interpretation?" Paper Says "Yes!"</a> Additionally, it remains true that no one has shown, as a practical matter, that the issue raised by Lemley et al. and then by Devlin, is of great concern to anyone who actually practices patent law. The results of Markman hearings matter a lot; level of deference is not such a big deal.Lawrence B. Eberthttps://www.blogger.com/profile/05616776187293753324noreply@blogger.comtag:blogger.com,1999:blog-6851300.post-7593173467319500372009-08-21T02:11:02.798-05:002009-08-21T02:11:02.798-05:00Good point about offshoring, Mr Ebert sir. I suspe...Good point about offshoring, Mr Ebert sir. I suspect that many of the sub-systems of an Audi or a BMW or even a Mercedes, are imported into Germany, then exported again, inside the real car. Still, it all makes real money for Germany, out of real manufactured goods, doesn't it? Given the ridiculously high quality (and cost) of the universal German healthcare system, something needs to make a lot of real money for the German government. It sets its hopes on innovation in real technology.<br /><br />Can't really comment on your "deference" point, because I don't yet quite "get" it. Never mind. Maybe others can comment on that.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-7785965918657035942009-08-20T16:46:15.237-05:002009-08-20T16:46:15.237-05:00As to MaxDrei's Germany, from eurointelligence...As to MaxDrei's Germany, from eurointelligence:<br /><br /><i>According to the 2005 theory of Hans-Werner Sinn, Germany export success is not the result of an innate strength but a pathological phenomenon, as it reflects a persistent rise in the value-added of German exports accounted for by intermediate imports. Germany has thus developed into a bazaar, where most of the goods are imported, a relatively minor amount of value-added applied, and exported at a profit. What appears to be a competitive export market is in reality nothing but a reflection of Germany's industry's increasing use of <b>oursourcing and offshoring</b>. With this theory, Sinn also tried to explain why there has been negative employment growth in Germany's manufacturing industry despite the rise in exports.</i><br /><br />As to the initial theme of the 271Blog post, there is no evidence that the degree of deference of courts to the USPTO has a significant impact on most patent cases. The papers of Lemley and Devlin are thus not relevant to real world problems.Lawrence B. Eberthttps://www.blogger.com/profile/05616776187293753324noreply@blogger.comtag:blogger.com,1999:blog-6851300.post-20415212627702193102009-08-20T15:17:33.809-05:002009-08-20T15:17:33.809-05:00As Mr Ebert notes:
"As to exports, Germany i...As Mr Ebert notes:<br /><br />"As to exports, Germany is slightly ahead of China."<br /><br />Germany is also ahead of China, I might add, on cost of labour, per hour. Remind me Lawrence (as you know all the stats) how much does a production line worker cost i) in socialist Germany and ii) in communist China and iii) in the flexible labour market of the USA? And nevertheless, German goods are outselling the rest!? It can't be the price, can it. Maybe the quality?<br /><br />Still, I agree with you, it's apportionment of damages that is the deal-breaker.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-59549782544700744852009-08-20T09:08:26.171-05:002009-08-20T09:08:26.171-05:00As to exports, Germany is slightly ahead of China....As to exports, Germany is slightly ahead of China. Are people buying all those Chinese products because they are innovative? An argument that export level implies "innovative" is problematic. <br /><br />Going back to the theme of the initial post [Of all the proposed reforms in patent law, one of the most controversial reform measures involves the level of deference courts should give to PTO decisions ], I re-state my query: is there any evidence that a significant number of litigation outcomes hinge on "level of deference" to the USPTO?<br /><br />As to Devlin's paper, Devlin distinguished himself from Lemley et al (whose proposals went back to 2005) on the business of obscure references. Is there any evidence that a significant number of prosecution outcomes hinge on the presence of an obscure reference?<br /><br />The main sticking point on patent reform since 2005 has been about the way damages are calculated. The talk about "patent quality" was mainly a pretext, and the Quillen/Webster assertions about patent grant rate (eg, 97%) were based on both legal and numerical misunderstandings.Lawrence B. Eberthttps://www.blogger.com/profile/05616776187293753324noreply@blogger.comtag:blogger.com,1999:blog-6851300.post-4202239543339918412009-08-20T02:02:32.505-05:002009-08-20T02:02:32.505-05:00As I have written in another patent law blog, I ch...As I have written in another patent law blog, I choose to dip in, comment quickly, then depart and do other things. If that reduces the value of my contributions to diddly squat, I don't care (as long as they nevertheless provoke replies that educate me).<br /><br />Sory Mr Ebert, I still don't follow you entirely.<br /><br />Germany is still "export Weltmeister" isn't it? Somebody still wants to buy innovative technological products that carry the "Made in Germany" tag.<br /><br />If you advocate a system in which Applicants for patents should, in their own self-interest, "be careful what they ask for", then I agree with you. My perception of the present system in the USA is that it is one of "gamekeepers and poachers" each trying to be one step ahead of the other (like in tax law). If you can bamboozle the PTO you can then blackmail the rest. But, unlike in tax law, one can make patent law much simpler, on the basis of "OK, if that's what you want, you can have it. But you might regret it later, in court". Then you arrange that, in court, the loser pays, and if there is one invalid claim in the patent, the patent owner loses. To be fair, you have to give the patentee an equitable chance to amend, by excision of the bad claim, for example when previously unknown prior art emerges, but the American way of litigationg can easily manage that.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-47793648375734795712009-08-19T18:06:49.473-05:002009-08-19T18:06:49.473-05:00Somehow, the following comment post from early Aug...Somehow, the following comment post from early August 19, did NOT "take" onto the 271Blog:<br /><br />The text --where he expands on previous studies -- perhaps requires expansion. Footnote 16 of Devlin's text alludes to the 2007 SLR paper of Lichtman/Lemley (but not the 2005 paper) and highlights the distinction of his 2008 paper: <i>. In particular, the author believes that a heightened presumption of validity would, in itself, be insufficient to spur optimal use of the "gold-plated" review process. This Article argues that those electing elevated review should also benefit from an immunity from obscure prior art never realistically within their purview. In addition, such inventors should be charged with conducting a full search of the prior art, absent a compelling excuse such as financial hardship.</i> Of the former, with the internet there is increasingly little "obscure" prior art not within a scientist's purview [and how to define such; would the Indian Journal of Chemistry in "In re '639 Litigation" qualify?]. Of the latter, if the applicant has to pay for the USPTO's search, why is there not sufficient practical motivation simply to let applicants who want to fare well later to do a search and prepare a 1449 form? As an overall question, is there any evidence that the differences in legal presumption impact a significant fraction of litigation outcomes? (analog thinking of academic lawyers in a mostly digital litigation world). As a footnote to Devlin's concern about obscure references, contemplate the obscure (ie, nonexistent) 1947 NYT article relied upon in various law review articles. [see <a href="http://www.jmripl.com/Publications/Vol8/Issue1/Ebert.pdf" rel="nofollow">WHAT THE STORY OF THE INVENTION OF THE TRANSISTOR TEACHES US <br />ABOUT 21ST CENTURY PATENT PRACTICE</a><br /><br />**Separately, as to defining the state of societal technology in 2009 by cars, one wonders if MaxDrei will be going to the best builders of vacuum tubes next[?] One can concede German superiority, but who cares? Also, Toyota has been getting sued over Prius technology. The prime value to society of a patent system is in the public disclosure, a point Lemley, for one, has never understood. We don't want nonnovel and obvious patents for reasons very similar to not wanting nonnovel and obvious science publications. [As to the "fear" remark, those who don't adapt to the "new" tend to get left in the dust. How many vacuum tube-based tv monitors are being sold these days? The Germans did adapt to the aeroplane, although not to the Wright patent, which they considered invalid. The Wright patent was the only patent of his lifetime Justice Douglas thought might be justifiable.Lawrence B. Eberthttps://www.blogger.com/profile/05616776187293753324noreply@blogger.comtag:blogger.com,1999:blog-6851300.post-35182147950272004632009-08-19T05:41:46.558-05:002009-08-19T05:41:46.558-05:00Mr Ebert, I'm not convinced. You want to talk ...Mr Ebert, I'm not convinced. You want to talk about German vehicle technology? Which car has more advanced technology, an American clunker, a Toyota Prius or an S class Mercedes? Is examination a "waste of time"? I think not. The UK until 1978 examined novelty but not obviousness and the system worked just fine. It's about coarse and fine filtering, and intelligent allocation of precious skilled experienced judicial/administrative resources. It's also about fear of the new/unknown.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-2415980045805656392009-08-18T15:07:57.241-05:002009-08-18T15:07:57.241-05:00the Land grant cases are here:
U.S. Supreme Court
...the Land grant cases are here:<br />U.S. Supreme Court<br />Maxwell Land Grant Case, 121 U.S. 325 (1887)<br /><br />the query is why a presumption of validity equals a clear and convincing evidentiary standard. the presumption confuses burden of proof with allocation of the burden of proof.<br /><br />KSR also hinted to this: KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 1745, 167 L. Ed. 2d 705, 82 U.S.P.Q.2d 1385 (2007) ("We need not reach the question whether the failure to disclose Asano [uncited prior art] during the prosecution of Engelgau [the patent-in-suit] voids the presumption of validity given to issued patents, for claim 4 is obvious despite the presumption. We nevertheless think it appropriate to note that the rationale underlying the presumption-that the PTO, in its expertise, has approved the claim-seems much diminished here.").<br /><br />I discuss the various aspects of prior art submitted and not considered in Sections 3:2-3:6 of my generic pharma patent and FDA treatise. (GENPHARMA database in Westlaw).Shashank Upadhyenoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-23155541682210358362009-08-18T14:03:28.758-05:002009-08-18T14:03:28.758-05:00For what it's worth, some time ago I authored ...For what it's worth, some time ago I authored a paper about the presumption of validity of U.S. patents and the "clear and convincing" standard that it is afforded.<br /><br />My research found that the origin of the presumption of validity codified at 35 U.S.C. 282 can be traced back to the 1800's, when the U.S. government was engaged in the granting of "land patents," i.e., ownership of land (particularly in the west and southwest) previously not deeded to a U.S. citizen. (Google "Maxwell Land Grant").<br /><br />The presumption was that the intrepid surveyors (from the U.S. Dept. of the Interior or its equivalent at the time, as I recall) were competent to establish where one person's property ended and another's began. These surveyors often suffered great hardships in mapping out previously uncharted territory, and hence great deference was given to them.<br /><br />An arugment can be made that the "clear and convincing" standard for utility patents is too high, given the distinction between the relatively objective task of determining the metes and bounds of a piece of tangible real property versus the inherently cloudier matter of defining, with words alone, the scope of one's intangible intellectual property.Practitioner in Houstonnoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-61196506951642976032009-08-18T09:39:06.967-05:002009-08-18T09:39:06.967-05:00Idk, bottom line, I agree that the cursory review ...Idk, bottom line, I agree that the cursory review is cause for concern, but then again, clear and convincing evidence isn't all that large of a standard to meet it doesn't seem to me. <br /><br />6Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-85206528426190690252009-08-18T06:50:04.638-05:002009-08-18T06:50:04.638-05:00If it were true that --How then can the validity o...If it were true that --How then can the validity of any patent claim be credibly settled by anything other than inter partes contested adversarial proceedings? --, then we are wasting our time with examination of patent applications, and Einstein was merely twiddling at the Swiss patent office. In reality, worrying about preponderance, etc. is applying analog thinking to what is mostly a digital world. As to "where" technology advances, is it the US, or the rest of the world? And, what did the Germans do with the invention of the Wright Brothers?Lawrence B. Eberthttps://www.blogger.com/profile/05616776187293753324noreply@blogger.comtag:blogger.com,1999:blog-6851300.post-9309423823888400462009-08-17T17:02:55.884-05:002009-08-17T17:02:55.884-05:00Patents are the most expensive and time consuming ...Patents are the most expensive and time consuming legal process in the world to obtain a title to property. There is a myth that a large number of patents are invalidly granted. Pat Choates’ article Patent Reform is Anything But, see www.manufacturingnews.com/news/07/0629/art2.html, clearly disproves this myth. Destroying the presumption of validity or placing additional burdens on the applicant is not consistent with “promoting the progress of science and the useful arts.” The U.S. patent system is already becoming an elites system that only large companies can afford to use. This proposal would just continue the process of making the patent system a Byzantine nightmare with little value to true innovators – see http://hallingblog.com/2009/05/18/intellectual-property-socialism-part-iv-uspto-takes-aim-at-innventors/Dale B. Hallinghttp://www.hallingblog.comnoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-2681628425591534612009-08-17T16:27:57.970-05:002009-08-17T16:27:57.970-05:00Is the validity of a patent claim something about ...Is the validity of a patent claim something about which one can have an argument?<br /><br />Is it not the case that there are always two sides to an argument?<br /><br />Is it not the case that arguments about the validity of a patent claim are often resolved by evidence?<br /><br />How then can the validity of any patent claim be credibly settled by anything other than inter partes contested adversarial proceedings?<br /><br />Or does the PTO have the resources to adduce evidence of its own, on issues such as whether the claimed technical feature combination actually delivers a surprising or unexpected effect?<br /><br />Does any jurisdiction other than the USA require more evidence than a preponderance, to strike down a claim of a patent? I can't think of one.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-49155595133330749682009-08-17T14:09:21.069-05:002009-08-17T14:09:21.069-05:00Your link to the Lichtman/Lemley work takes one to...Your link to the Lichtman/Lemley work takes one to an <a href="http://papers.ssrn.com/sol3/papers.cfm?abstract_id=963996" rel="nofollow">SSRN abstract</a>. Note that this Lichtman/Lemley work appeared in the Stanford Law Review in 2007: Rethinking Patent Law's Presumption of Validity, 60 Stanford Law Review 45 (2007), right around the time then-candidate Obama started talking about gold-plated patents. Professor Lemley, with co-authors, had already proposed gold-plated patents two years earlier in “What to do about bad patents?” [28 Regulation 10 (December 22, 2005)]. As discussed in Special Feature: On Aspects of Barack Obama’s Technology Policy, published in <a href="http://www.iptoday.com/news-article.asp?id=2976&type=ip." rel="nofollow">Intellectual Property Today in November 2008</a>, the plan is neither new nor particularly useful. A patent applicant is free to seek out and identify to the USPTO all relevant prior art, thereby making sure that the application is as strong as applicant can make it.Lawrence B. Eberthttps://www.blogger.com/profile/05616776187293753324noreply@blogger.com