Originally posted 2010-04-13 09:52:45. Republished by Blog Post Promoter
Speaking of the Patently-O patent law blog, let’s learn a little patent law. It’s been a while since law school.
The claims in a patent must be sufficiently definite so as to provide a standard by which a third party could, with some degree of certainty, determine whether a given practice would or would not be an infringement of the claims. 35 U.S.C. sec. 112. In other words, indefiniteness is just what it sounds like. But how fuzzy is fuzzy? In Fisher-Price v. Graco (Fed. Cir. 2005), the Federal Circuit ruled (in a “non-precedential” decision)
After a Markman hearing, the district court found several limitations of the claim indefinite (italicized) and thus invalid.
On appeal, the CAFC explained that a defect in a claim must be “severe” before it will be invalidated as indefinite. Here, the CAFC reversed because the “patent is not complex; it is readily understood by both the expert and layperson [and] the words used in the limitation are simple, with well-known ordinary meanings [that] can be construed without great difficulty, even if, as [the challenger] points out, it is not mentioned in the specification.
This is consistent with an August decision reported by Bill Heinze in which the Federal Circuit confirmed the rule that “When a claim ‘is not insolubly ambiguous, it is not invalid for indefiniteness.'”
I like this “insolubly ambiguous” standard because indefiniteness of patent claims makes me think — however inappositely (and I do think inappositely all the time) — of likelihood of confusion, thereby warming the otherwise bitterly cold cockles of my heart. More seriously: Wrting and prosecuting a patent all the way is serious business. Patent lawyers, whose malpractice premiums make them the ob-gyns of the legal profession,* need to be second-guessed in litigation like a headache. Setting the standard for indefiniteness high, and keeping it there, is a good idea.
* It is true that both bring marvelous things screaming into the world, is it not?
Law students from Thomas M. Cooley Law School and the University of Michigan Law School recently were named winners in the 2013 Michigan Innovation and Intellectual Property Legal Writing Competition, sponsored by the Intellectual Property Law Section of the State Bar of Michigan and the Cooley Law School Graduate Program in Intellectual Property Law.
That sounds like a good thing. And it made me remember that when I wrote this article, I relied on an award-winning piece of student scholarship because it seemed to be pretty good.
This, in turn, made me think that publicizing the winners of these awards and their work could be a good idea. For one, boom: A blog post! I really need not go any further. Secondly, why not give talented law students, who we all know can use any help they can get, a bit of encouragement? And third, seeing as how the most talented students — a group that presumably includes winners of these awards — will probably get jobs and then have the creativity beaten out of them so they can “succeed” in the legal profession, maybe, um, something else good.
I asked for, and received, a copy of the winning paper, and permission to post it ahead of its publication, in this case in a journal called IPLS Proceedings. That’s actually reason-to-do-this number four: Not too many people read things in legal journals, to be perfectly frank. But, evidently, some people read blogs. Anyway, it couldn’t hurt.
So, I present you with the first-prize-winner’s paper: Kyle Quigley, a graduating senior at Cooley Law School, was awarded first prize for The Experimental Exception to Patent Infringement Should be Expanded: The Proposal Of A Modified Exception Comprising A Bright-Line Rule Permitting Experimental Use Upon Delivery Of Express Notice Of Intent.”
There ya go! Great work, Kyle. Read More…
Attorney and gourmet chef Ben Manevitz sent this fascinating link along. The idea is finding a way to protect people who come up with creative story ideas by use of the patent system; the analogy is to business-process and, Ben points out, software patents. Yeah, the whole slippery slope thing!
In contrast to the usual patent stuff, it sure sounds like an interesting — I didn’t say good — idea in theory, but ultimately I think it’s unworkable and would cause a massive reaction in and out of the patent bar dwarfing the anger about business process patents if the PTO ever bought into it. Ben agrees. They do offer a sophisticated-looking legal analysis here.
My old friend Dennis Crouch — no, even older! — whose Patently-O blog labors mightily and effectively to make patents comprehensible, lists a few new IP blogs and rounds up his favorites (we say blushingly). Thanks for the links, Dennis — we knew you’d let let bygones be prior art.
Victoria Pynchon collects and reflects on some of the recent thinking about whether patent litigation makes any sense for anyone besides patent ligitators.
Dennis Crouch of the Patently-O blog did a cool little experiment. A professor of law at Boston University and a practicing patent lawyer, he’d be the first to admit this is entirely awful demographic / sociological statistical technique, but it’s still pretty good cocktail party nosh:
Name and contact-information is available for registered US patent attorneys. This weekend, I took a quick look at that database and compared it to US census data. You see lots of law firms with odd names headlining the banner, and I wanted to see whether attorneys with uncommon names were rising to the top — or, instead, if patent attorneys just have uncommon names. I also wanted to see whether the rate of various names could help us deduce anything about minority representation before the PTO.
So below is Dennis’s chart. And while they may not represent a minority group in the legal profession — at least not in my neighborhood — well, check out the chaps at the bottom of the list, 20th in PTO filings but a weensy 363rd in the census data:
Woodrow Pollock reports on the “the Rube Goldberg” of sanctions motions in an IP case — a skein of intertwined Rule 11 motions, counter-motions and what-have-you’s over whether due diligence had been performed prior to filing a patent claim. He sees no reason to try and improve on the court’s language, so neither do I:
Putting to one side the original motion for sanctions, the Court must now turn to several papers that related to Defendant’s motion in a Rube Goldberg-like manner. [FN – The Official Rube Goldberg Website]
* * *
All-in-all, the Court finds Rube Goldberg’s cartoon of a Self-Operating Napkin more entertaining than the Rube Goldberg-like web of papers submitted in this case. Although both parties have likely spent a great deal of time and money preparing these submissions, neither party has benefitted. The Court has spent too much time addressing them. For future submissions, counsel should note that this Court, like the U.S. Court of Appeals for the Seventh Circuit, “is not inclined to award sanctions in favor of a party that cannot be bothered to follow the rules itself.” Heinen v. Northrop Grumman Corp., 2012 WL 372988, at *2 (7th Cir. Feb. 7, 2012).
Furthermore, as this case remains in its early stages, counsel are advised that the effect of launching a litigation nuclear arsenal directed at peripheral issues not genuinely intended to advance the case toward resolution in an efficient, meaningful way will greatly diminish the credit given by the Court to future filings. Choose your battles wisely lest the early salvos cost you the war.
Motion for sanctions denied.
The Android talk, that is. Tech News World asked me a couple of days ago about whether it wasn’t pretty unusual to see parties to litigation — in this case, the Android patent litigation — going so public with their positions. Here’s what I said:
[T]here was some surprise within the industry that the head of very high-profile legal team took to the Internet to openly criticize his opponents.
But keeping arguments confined to the courtroom isn’t always the wisest choice, especially when the issue at stake is one that’s being hotly debated in public — in this case, patents.
“Now more than ever, millions of people are having the discussion with you or without you. So it makes more sense when you’ve got billions of dollars at stake to get your point of view heard so developers and investors don’t lose confidence,” Ron Coleman, partner and head of the intellectual property department at Goetz Fitzpatrick, told the E-Commerce Times.
There are two groups of people that tech companies are speaking to when they take to a public forum, he said.
“These companies are talking to at least two other constituencies whose take on the litigation matters a lot. The first is consumers, who have to decide whether or not they want to buy something that might be illegal in some time,” said Coleman.
Companies want to raise consumer confidence levels enough that if a patent matter comes to litigation, consumers won’t expect that a product will be scrapped altogether, only that the companies involved will eventually come to a settlement, he said.
The other group companies like Google want to make sure are on board are mobile developers.
“At least as important, if not more so, are the developers and innovators in the tech community,” Coleman said. Google doesn’t want to see developers fleeing Android, and it wants phone makers to continue to build large numbers of Android handsets without fear.
There’s a little bit more. The “no comment” approach makes less sense than ever when markets, developers and investors aren’t sitting around waiting for the resolution of interminable, hyper-technical and often blastedly wrong judicial decision-making about potentially paradigm-changing technologies.
In fact, “no comment” makes a lot less sense than a lot of lawyers think it does in other cases, too. From what I can tell, the “no comment” lawyers are typically either lazy, not wanting the trouble of paying proper attention to developing a proper media campaign; don’t know how to to it; or in a rare case, are not instructing clients to lay low but are protecting the unusual situation where the client has its own particular agenda that is better served by discretion.
That doesn’t mean wading into blogs or social media — though it may — and it doesn’t mean responding to every anonymous weenie who wants a comment or attacks you with a factoid.
No, you can’t please all the people all the time. But where public perception is a significant part of a client’s business model, a litigation victory can by mighty empty if everyone’s already gone home by the time the jury comes back with its verdict.
Plus, I love my new Droid X!