Patent Reform: Jaffe/Lerner and Kappos
An earlier IPBiz post questioned certain statements made by IBM's David Kappos, and focussed on one issue of how effective third parties will be in evaluating potentially invalidating prior art. One point in the IPBiz post pertained to the Jaffe/Lerner anecdote about how the USPTO missed a key reference in allowing US 6,049,811 over (alleged) prior art in a patent journal, 74 JPTOS 315.
IPBiz pointed out that nothing in 74 JPTOS 315 invalidated the claims of US '811.
IPBiz notes that an earlier book review of Innovation and Its Discontents had questioned Jaffe/Lerner about the US '811 story.
The book review in question is by J. Steven Rutt and appears in 2 Nanotechnology L. & Bus. 111 (2005). It is not entirely favorable to Innovation and Its Discontents:
Although Innovation is a good read, unfortunately, the title is incorrectly alarmist: with all due respect, the patent system is not broken. Certainly, our patent system, like democratic government itself, is dynamic, is in need of improvement and is becoming more complex every year. But it is not broken.
Rutt gets into the issue of the '811 patent:
One example is noted for why patent lawyers are needed to address these important policy issues surrounding the PTO. In providing anecdotal evidence, Innovation considers U.S. Patent No. 6,049,811 (issued Apr. 11, 2000), which is --ironically --directed to a "Machine for Drafting a Patent Application and Process for Doing So." Innovation describes prior art from Hitachi which was not cited by the Patent Office in granting the patent but allegedly destroys the novelty of this patent. In other words, Innovation uses this patent's story to support the broader notion that the PTO too often carelessly grants a patent which should not have been granted. This writer, however, observes that the '811 patent claims specifically require that:
the claims are drafted before the summary of the invention, abstract, and the detailed description of a preferred embodiment of the invention is drafted; and the computer requires drafting the sections in a predetermined order prohibiting jumping ahead to draft a latter section. [footnote 7]
The Innovation authors, however, utterly fail to discuss the seminal point of whether the Hitachi prior art teaches this required feature of the invention. Hence, on first glance, even without studying the '811 patent and the Hitachi prior art more carefully, one skilled in patent law would find it is not so unreasonable that the '811 patent claims issued as a patent are novel over the prior art. It is quite possible, in fact, that the Hitachi prior art led the skilled artisans away from this feature of the '811 patent claims and, contrary to the authors' suggestion, actually supported the notion that the '811 patent claims deserved to issue. Moreover, the Innovation authors fundamentally miss the important point that it is quite possible that the Hitachi prior art is merely cumulative to the prior art which was cited, including the background discussion in the '811 patent, which is fairly extensive. In other words, the Innovation authors attempt to characterize the '811 patent as an embarrassing example of PTO carelessness, but even a brief look at the issue by a trained patent attorney confirms that it is not so embarrassing after all. The general scenario is frequently encountered that nanotechnology inventors and patent managers, including (p. 114) highly intelligent and highly technically trained people with advanced degrees, believe that some set of prior art somehow "knocks out" a patent claim. Upon inspection of the details, however, the patent claim may in fact legitimately be patentable.
Thus, Rutt clearly raised the issue that Jaffe/Lerner never showed 74 JPTOS 315 was prior art: [JL] utterly fail to discuss the seminal point of whether the Hitachi prior art teaches this required feature of the invention.
However, Rutt himself did not reach the seminal point (and does not cite 74 JPTOS 315 in his footnotes). In the earlier IPBiz post, IPBiz did reach the seminal point and concluded that 74 JPTOS 315 DID NOT TEACH what is claimed in the '811 patent. The USPTO did NOT miss a relevant reference. The teaching of 74 JPTOS 315 is not even cumulative.
Rutt does make a point relevant to the likely success of peer-to-patent and and Kappos' arbitrage: highly intelligent and highly technically trained people with advanced degrees, believe that some set of prior art somehow "knocks out" a patent claim. Upon inspection of the details, however, the patent claim may in fact legitimately be patentable.
IPBiz further notes: at the end of the day, there has to be someone at the USPTO who has the skills and training necessary to evaluate all the assembled prior art and make the right decision. The glaring evidence that Jaffe and Lerner "got it wrong" about 74 JPTOS 315 shows how difficult this task can be. When one chooses "argument by anecdote" and gets the anecdote wrong, there is problem. There is not a lot of evidence in Innovation and Its Discontents to back up the contention.
Rutt's conclusion stated: Nanotechnology's time has come, many believe. The patent system will not stop that. Innovation, despite its merits, unfortunately is excessively alarmist. The authors apparently seek to compare the present patent system to a mythical, past patent system which supposedly operated better; but, unfortunately, such a better system is indeed mythical. Based on this writer's experience in the daily trenches of nanotechnology and the patent system, (i) use of the system by money-conscious, competitive nanotechnology companies appears to be increasing, which reasonably suggests there is good value in the system; (ii) new nanotechnology product concepts appear to abound, which suggests the system forms a good basis for useful technology transfer and product development; and (iii) foreign governments look to the U.S. and its system for leadership in developing innovation systems which rely on patents. These are not signs of a broken system. The January 24, 2005 cover of Red Herring states that nanotech investment is "bruised but not dead;" by analogy, the U.S. patent system arguably may be bruised but is very much alive, evolving and supporting nanotechnology companies and their investors.
IPBiz notes, at the time of publication, Rutt was listed as an associate in the Intellectual Property Department of Foley & Lardner (he would not seem to be an intellectual property professor). IPBiz has not found an article by an intellectual property professor which addressed the defects in the JL argument about 74 JPTOS 315.
****
See corporatedealmaker on Patent reform: the fight over post-grant opposition
See also Tech companies, investors clash over patent law
****
Note that there are patent attorneys who OPPOSE post-grant opposition. See for example Joseph Hosteny such as "Post-Grant Opposition: Building on Sand," Intellectual Property Today [IPT], pp. 8-9 (August 2004) or What Now? Post-Grant Oppositions and the Proposed Budget, IPT pp. 8-9 (March 2005).
[as mentioned in "Getting the Patent Reform Wars on Track" at http://www.ipfrontline.com/depts/article.asp?id=14520&deptid=4]
Some of the debate about post-grant opposition concerns timing. For some proposals, see
http://ipbiz.blogspot.com/2007/02/provisions-in-pdq-patent-bill-and.html
IPBiz pointed out that nothing in 74 JPTOS 315 invalidated the claims of US '811.
IPBiz notes that an earlier book review of Innovation and Its Discontents had questioned Jaffe/Lerner about the US '811 story.
The book review in question is by J. Steven Rutt and appears in 2 Nanotechnology L. & Bus. 111 (2005). It is not entirely favorable to Innovation and Its Discontents:
Although Innovation is a good read, unfortunately, the title is incorrectly alarmist: with all due respect, the patent system is not broken. Certainly, our patent system, like democratic government itself, is dynamic, is in need of improvement and is becoming more complex every year. But it is not broken.
Rutt gets into the issue of the '811 patent:
One example is noted for why patent lawyers are needed to address these important policy issues surrounding the PTO. In providing anecdotal evidence, Innovation considers U.S. Patent No. 6,049,811 (issued Apr. 11, 2000), which is --ironically --directed to a "Machine for Drafting a Patent Application and Process for Doing So." Innovation describes prior art from Hitachi which was not cited by the Patent Office in granting the patent but allegedly destroys the novelty of this patent. In other words, Innovation uses this patent's story to support the broader notion that the PTO too often carelessly grants a patent which should not have been granted. This writer, however, observes that the '811 patent claims specifically require that:
the claims are drafted before the summary of the invention, abstract, and the detailed description of a preferred embodiment of the invention is drafted; and the computer requires drafting the sections in a predetermined order prohibiting jumping ahead to draft a latter section. [footnote 7]
The Innovation authors, however, utterly fail to discuss the seminal point of whether the Hitachi prior art teaches this required feature of the invention. Hence, on first glance, even without studying the '811 patent and the Hitachi prior art more carefully, one skilled in patent law would find it is not so unreasonable that the '811 patent claims issued as a patent are novel over the prior art. It is quite possible, in fact, that the Hitachi prior art led the skilled artisans away from this feature of the '811 patent claims and, contrary to the authors' suggestion, actually supported the notion that the '811 patent claims deserved to issue. Moreover, the Innovation authors fundamentally miss the important point that it is quite possible that the Hitachi prior art is merely cumulative to the prior art which was cited, including the background discussion in the '811 patent, which is fairly extensive. In other words, the Innovation authors attempt to characterize the '811 patent as an embarrassing example of PTO carelessness, but even a brief look at the issue by a trained patent attorney confirms that it is not so embarrassing after all. The general scenario is frequently encountered that nanotechnology inventors and patent managers, including (p. 114) highly intelligent and highly technically trained people with advanced degrees, believe that some set of prior art somehow "knocks out" a patent claim. Upon inspection of the details, however, the patent claim may in fact legitimately be patentable.
Thus, Rutt clearly raised the issue that Jaffe/Lerner never showed 74 JPTOS 315 was prior art: [JL] utterly fail to discuss the seminal point of whether the Hitachi prior art teaches this required feature of the invention.
However, Rutt himself did not reach the seminal point (and does not cite 74 JPTOS 315 in his footnotes). In the earlier IPBiz post, IPBiz did reach the seminal point and concluded that 74 JPTOS 315 DID NOT TEACH what is claimed in the '811 patent. The USPTO did NOT miss a relevant reference. The teaching of 74 JPTOS 315 is not even cumulative.
Rutt does make a point relevant to the likely success of peer-to-patent and and Kappos' arbitrage: highly intelligent and highly technically trained people with advanced degrees, believe that some set of prior art somehow "knocks out" a patent claim. Upon inspection of the details, however, the patent claim may in fact legitimately be patentable.
IPBiz further notes: at the end of the day, there has to be someone at the USPTO who has the skills and training necessary to evaluate all the assembled prior art and make the right decision. The glaring evidence that Jaffe and Lerner "got it wrong" about 74 JPTOS 315 shows how difficult this task can be. When one chooses "argument by anecdote" and gets the anecdote wrong, there is problem. There is not a lot of evidence in Innovation and Its Discontents to back up the contention.
Rutt's conclusion stated: Nanotechnology's time has come, many believe. The patent system will not stop that. Innovation, despite its merits, unfortunately is excessively alarmist. The authors apparently seek to compare the present patent system to a mythical, past patent system which supposedly operated better; but, unfortunately, such a better system is indeed mythical. Based on this writer's experience in the daily trenches of nanotechnology and the patent system, (i) use of the system by money-conscious, competitive nanotechnology companies appears to be increasing, which reasonably suggests there is good value in the system; (ii) new nanotechnology product concepts appear to abound, which suggests the system forms a good basis for useful technology transfer and product development; and (iii) foreign governments look to the U.S. and its system for leadership in developing innovation systems which rely on patents. These are not signs of a broken system. The January 24, 2005 cover of Red Herring states that nanotech investment is "bruised but not dead;" by analogy, the U.S. patent system arguably may be bruised but is very much alive, evolving and supporting nanotechnology companies and their investors.
IPBiz notes, at the time of publication, Rutt was listed as an associate in the Intellectual Property Department of Foley & Lardner (he would not seem to be an intellectual property professor). IPBiz has not found an article by an intellectual property professor which addressed the defects in the JL argument about 74 JPTOS 315.
****
See corporatedealmaker on Patent reform: the fight over post-grant opposition
See also Tech companies, investors clash over patent law
****
Note that there are patent attorneys who OPPOSE post-grant opposition. See for example Joseph Hosteny such as "Post-Grant Opposition: Building on Sand," Intellectual Property Today [IPT], pp. 8-9 (August 2004) or What Now? Post-Grant Oppositions and the Proposed Budget, IPT pp. 8-9 (March 2005).
[as mentioned in "Getting the Patent Reform Wars on Track" at http://www.ipfrontline.com/depts/article.asp?id=14520&deptid=4]
Some of the debate about post-grant opposition concerns timing. For some proposals, see
http://ipbiz.blogspot.com/2007/02/provisions-in-pdq-patent-bill-and.html
posted by Lawrence B. Ebert at 5:49 AM
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