Amicus Brief in Phillips v AWH
I recently filed (along with Joe Miller of the Lewis & Clark Law School) an amicus brief in the Federal Circuit's en banc rehearing of the Phillips v. AWH case, which raises issues surrounding the appropriate methodological approach to patent claim construction. You can download a copy of the brief (pdf) here.
September 20, 2004 in Federal Circuit, Patents | Permalink | Comments (0) | TrackBack (0)
Happenings at the Federal Circuit: New en banc case
So let's say that someone published an article that exposed and statistically verified two distinct lines of methodological approach in the Federal Circuit's claim construction jurisprudence . . . .
And then, four months after that article is published and widely disseminated, the court takes the claim construction issue en banc to resolve what it describes as two conflicting methodological approaches . . . .
Coincidence? Maybe. Or maybe not.
In any event, this will be fun -- and a good opportunity for the court to clarify the rules of claim construction.
August 25, 2004 in Federal Circuit, Patents | Permalink | Comments (0) | TrackBack (0)
New Paper: Patent Portfolios
After working much of the summer on this project, I (with co-author and colleague Gideon Parchomovsky) have finally released a working draft of Patent Portfolios. Here's the teaser abstract:
This article presents a new theory of patent value, responding to growing empirical evidence that the traditional appropriability premise of patents is fundamentally incomplete in the modern innovation environment. We find that for patents, the whole is greater than the sum of its parts: the true value of patents lies not in their individual worth, but in their aggregation into a collection of related patents, a patent portfolio.
The full draft (70pp, 2.3mb, pdf) is available for download here. Comments, as always, are appreciated.
August 25, 2004 in Patents | Permalink | Comments (0) | TrackBack (0)
Dissenting from Claim Construction
The past few months has seen an interesting series of dissenting opinions from the Federal Circuit with respect to claim construction. My take on a few:
Novartis v. Eon, 03-1211, -1260 (April 2, 2004) (Clevenger [dissent], Dyk [author], Prost).
In this case, the majority (Judges Dyk [writing] and Prost) bend over backwards to find a way--nominally consistent with the "procedural" approach to claim construction--to avoid reversing the district court's mistaken claim construction analysis. Their solution: argue that the variety of definitions for the relevant term ("hydrosol") found in several relevant reference books created ambiguity as to the real meaning of the term, thus requiring recourse to the specification. In doing so, the majority, using classic techniques of inferential reasoning such as "the specification only describes hydrosols made outside the body", effectively limited the claim scope to pharmaceutical products designed for injection, even though the claim language suggests nothing of the sort.Judge Clevenger, in dissent, makes the majority look like a pair 'o monkeys, noting that the settled law is that where the ordinary meaning of a term is broad enough to encompass several definitions, the term is not vague--just broad! Key quote:
"Hydrosol" simply means "a sol in which the liquid is water." Nothing in the dictionary listed under the word "hydrosol" speaks to the site where hydrosols are made. A "hydrosol" can be made anywhere, and manufacture outside the body is just a narrower subset of anywhere, with anywhere including inside the body. The existence of the narrower subset does not create ambiguity. It simply tells us what we know–that terms frequently have broad and narrow meanings. We then look to the specification and file history to determine whether the patentee made a clear disclaimer of the broader meaning. If not, the patentee is not taxed with narrowing references by way of examples (such as the intravenous
This is a terrible majority opinion, purporting to follow the good approach to claim construction ('proceduralism) while reaching the opposite result. Definitely does some damage to the law of claim construction.
Nystrom v Trex, 03-1092 (June 28, 2004) (Mayer, Gajarsa [concur/dissent], Linn [author])
Here, the majority--quite properly, in my view--refuses to limit the contested claim term 'board' to 'wood materials made from logs". As the majority points out, there is nothing inherent in the term board that would suggest that it must be made of wood, and the patentee did not explicitly disavow other materials or sources. The Gajarsa dissent is classically holistic: claim terms are subject to searching and thorough review by the federal circuit, and he would find inferences in the patent document (again, of the "single example" type) limiting the term board to wood boards. This is a nice, solid (no pun intended) claim construction analysis on the majority's part.more to come soon ...
June 29, 2004 in Federal Circuit, Patents | Permalink | Comments (0) | TrackBack (0)
Losing Copyright
Last Friday I attended (and spoke at) the a conference here at Penn entitled, Knowledge Held Hostage: Scholarly Rights versus Corporate Rights in the Digital Age. I should note that It was a somewhat rare occurrence for me; of late I do not typically get invited to these events, at least since my pro-IP paper, Information Wants to Be Free, was widely circulated -- don't want to disrupt ideological purity and all that . . .
In any event, the conference, which was very ably organized and put on by the Annenberg School, was generally a gathering by and for a collection of academics, NGO and lobbing folks, and a smattering of interested lawyers. As you might suspect from the title, the theme of the conference was very much one highly critical of 'corporate copyrights', and the copyright system more generally. Much of the discussion (sadly, there is really no 'debate' at these things) were versions of what we've all heard many times before: big corporations (e.g., movie and music companies) are using copyright law to stifle the ability of ordinary folks (here, scholars) to communicate. I counted at least 30 distinct 'horror stories', all of which invariably involved a copyright dispute (or even a copyright question -- more about this later) that sometimes prevented a worthy publication, presentation, video, etc from happening as was desired by the scholar/academic.
As anyone who has followed anything about new media in recent years can tell you, this is all very stylish, yet remarkably formulaic: lots of discussion about "suppression of free expression", "tyranny", "evil", "bullying", etc. Disney, is of course cast as the primary villain, and the heroes are all of the brave souls who 'speak up' about the issue. Lawrence Lessig is generally understood to be a prophet.
The problem with these sorts of events is a distinct lack of real discussion. Nobody from the relevant music or movie companies was invited (to my knowledge), and none came. Other than myself, nobody who was even mildly in favor of the current copyright regime spoke. There seemed to be a fair bit of group-think going on here: much nodding of heads and agreement, but less analysis of what was (a) really going on in the copyright world, and (b) what might be done to deal with it.
As someone who generally believes that the copyright law is -- though not perfect -- a extraordinary vehicle for stimulating the creation and distribution of high-quality information goods, I left the conference mildly discouraged. Much of the discourse from this end of the copyright spectrum is of the 'scorched earth' variety, leaving little room for debate or discussion in the effort to portray pro-copyright folks as evil. This is, of course, seems to me to be exactly the wrong way to actually deal with any real copyright reforms. This is not to say, however, that the pro-copyright folks, especially the often-goonish folks at the RIAA and MPAA have been model citizens here. My point is to note that neither, in my view, is behaving productively. My sense is that many in the anti-copyright fold are more interested in building a "movement" against copyright and big content-ownership corporations (and, of course, selling books, raising funds, etc etc) than they are in educating, debating, and seeking real copyright reforms. Maybe this is because they view copyright as a lost cause, or because they doubt their abilities to work with the content companies to hammer out mutually-beneficial reform ideas. Hard to know. A case-in-point here is the recently in-vogue "rejection" of fair use as a pro-public benefit of the copyright system. In my view, this approach only further confuses the already-confusing scope of fair use: if the so-called defenders of fair use won't defend it, then what is the ordinary user to think? Unfortunately, I fear that 'all is lost' is the desired message from the copy-left these days.
I should note, however, a couple of positive impressions I took away:
1. The response to my talk was generally civil and productive (which is not always my experience with the anti-copyright academics). Whether anyone took my message to heart I don't know, but at least they made noises like they were thinking about it.
2. The energy and talent that is creating new models of distribution and licensing is hugely impressive. In particular I note the Creative Commons Project, and Connexions, a collaborative educational toolkit. One of the interesting things for me is how these sorts of project take copyright law to a new level, enabling flexible and user-friendly ways to use copyright to assist in the development and distribution of information. Both projects, however, especially Creative Commons (which the director described as having an 'insidious' motive) have a anti-copyright message attached to them -- which in my view is unnecessary and likely to be counterproductive in the long term.
June 21, 2004 in IP Politics | Permalink | Comments (0) | TrackBack (0)
Annenberg Talk
Today I gave a brief talk on the current issues surrounding fair use in the scholarly domain. Here's the paper -- just a draft. (PDF)
June 18, 2004 in IP Politics | Permalink | Comments (0) | TrackBack (0)
