Federal Circuit Faces an Old Challenge under New Chief Judge Moore. It Should Assume the Burden of Its Historical Mandate.
The law of patentable subject matter is a mess.
Prof. Mark A. Lemley — Stanford Law School (2019)
[This post is an amended version of a piece I published on IPWatchdog.com on 25 Oct. 2021.]
The first was from Marc Karlinsky, editor of Chicago Daily Law Bulletin. It read, “New bill sheds light on sunscreen issue,” and the lede read, “Like other states, Illinois’ school regulators generally require a doctor’s note before students can use sunscreen … .”
Because it’s a drug, for heaven’s sakes.
That was email number one. Number two? From Richard Lloyd at Intellectual Asset Magazine. He asked, “Is the U.S. still the driving force of the global patent market?”
So, in one glance, a focus on sunscreen legislation in schools and the ongoing erosion of patent values domestically. Given equal treatment! The simple juxtaposition drove it home.
What are our priorities? A stable environment for innovators? Or government micro-management? You can guess where I stand: Outlaw sunscreen!
But, seriously, what can we do when our institutions move so slowly, and when special interests skew our patent laws? How can we effect change in spite of the legislative and judicial roadblocks?
We should do what we were trained to do: that is, find a work around. A lot can be done to overcome these hurdles if we return to treating protection of innovation strategically, rather than commoditizing patents. We need to educate companies and inventors on drafting better patents—but fewer of them. We need to focus on the innovation pipeline. We need to encourage innovative companies to be selective about what to patent, and work for that protection, rather than abandoning the idea of patenting all together.
Those two emails spurred me to write this piece, now live at IPWatchdog.com. I’ll be revisiting this theme in succeeding posts—both there and here on my blog. Stay tuned.
MIMI
Then the Federal Circuit issued its ruling in Berkheimer v. HP, followed by its decision in Aatrix Software v. Green Shades. Glimmers of hope?
Maybe. Survival rates at the PTAB are improving. But the cost and time necessary for a patentee to claw their way back to the district court — that is, just to get back to Square One — is too much for many. I’m not the only one who believes it’s having a negative effect on our nation’s innovation ecosystem. Last week, many colleagues who fight in the dust of the patent arena shared ideas and insights at the 2018 Leahy Institute of Advanced Patent Studies Conference (where the sunrises truly are spectacular, btw, and I also took a moment to catch this lovely afternoon shot!).
This past month, with our year still newly begun, I thought to reach out to my friends and colleagues, clients and other contacts, as I considered what the year ahead might bring. I greatly appreciate the many warm responses I received.
One response came from Gene Quinn, a passionate voice in defense of innovators who shares my concerns about what’s been happening to innovative companies and entrepreneurs since passage of AIA and the Supreme Court’s Alice decision. Gene kindly invited me to adapt my email to him as a post for IPWatchdog.com. Thanks to Gene for the opportunity to share it.
Strange days. And still waiting for the sun.
MIMI
I’m optimistic about the court’s future approach to reviewing such decisions!
In Berkheimer v. HP on Feb. 8, the Court reversed summary judgment of ineligibility with respect to some of Berkheimer’s claims. This after having noted—hold your breath!— that whether a claim element is well-understood, routine, and conventional is a question of fact. Thanks: I needed that!
This Wednesday, Feb. 14, it happened again in Aatrix Software v. Green Shades, with the Court vacating a Rule 12 dismissal for lack of patent eligibility because of issues of claim construction and fact, which must be interpreted for Rule 12 in the light most favorable to the non-movant.
A Valentine for the Federal Rules of Civil Procedure! An approach based on the question of fact!
I hope these decisions mark the beginning of a broader recognition of the underlying facts related to patent eligibility and the proper procedure required for Rule 12 dismissal. And that they don’t just end up being two rare survivors in the carnage that has resulted from the Alice decision.
More detail in my piece on IPWatchdog.
MIMI
But while I used to receive calls asking about the procedure for getting a patent, I no longer do. I fear it’s because inventors no longer believe patents are worthwhile.
I get it: if I were to get a call today, I couldn’t paint a rosy picture for would-be patentees. What do we say, today, to someone who calls to ask about patenting their invention? Who wants to file an infringement litigation? What if they ask how much it’s going to cost?
Times change. So has patent law. And not for the better.
Yesterday, Gene Quinn published my satire, “Confessions of a Frustrated Patent Attorney: The Telephone Call,” on his blog at IPWatchdog. It’s a transcript of what an imaginary phone call with an inventor might sound like today. The news isn’t good for inventors, and while I enjoyed writing the piece, and I think its title is apt, times really are frustrating.
Satire is born of truth, they say. I hope my essay helps change people’s minds, and I’m encouraged by the thoughtfulness of the comments, too. Read it all here.
MIMI
This tale concludes today, but it remains to be seen where the real story will lead …
Read Part I: The Birth of an Idea, the Growth of an Industry
Read Part II: The Path of Innovation Leads to Competition
Read Part III: The B-Techs Hatch a Pernicious Plan
Part IV: The Demise of Innovation, Or, Perhaps, the Birth of Hope
The fairy tale one always wishes will have a happy ending. Will this one? We’re not sure.
For once it was known that the competitive position of the New Innovators could be undercut in the courts and that the B-Techs’ devious plan would become an unencumbered success, the B-Techs prepared a celebration. Everyone planned to celebrate the demise of the trolls. They promised joy throughout the land.
But underneath this manufactured joy was great sorrow, for the deeper truth was that New Innovators were the lifeblood of their country’s great success—and they always had been, ever since a revered 200-plus-year-old Foundational Document had enshrined patent rights in its first article (in section 8 to be precise).
And it came to be that the B-Techs’ ability to force the people to believe they should be happy would prove short-lived. For the B-Techs were destroying the very inventors and entrepreneurs who could provide the people with breakthrough toys. One can only imagine what would have happened if the B-Techs and the New Innovators had joined forces. However, without having anything new to feed to their people, the B-Techs lost the worship of the people, who of course had long ago tired or forgotten about the original amazing innovations of the B-Techs.
Nothing was new anymore for the people. Nothing was exciting. (After all, people thought, how many more megapixels do I need?) The future looked barren indeed, even if viewed through rose-tinted lenses in a virtual reality headset.
And so it was. A few small voices began whispering that it was time for a New Reality. Others began listening. And there was born A New Hope.
MIMI
Read Part I: The Birth of an Idea, the Growth of an Industry
Read Part II: The Path of Innovation Leads to Competition
Part III: The B-Techs Hatch a Pernicious Plan
So it came to pass that the B-Techs banded together like a bullies in a playground, and vowed to bring these pesky patentees down.
This meant huddling together in secret, in well-lighted but often badly air-conditioned places called conference rooms, to which administrative assistants brought lunches from a place called The Corner Bakery and coffee from a place named for a ship’s chief’s mate. (Yup, you’ve guessed it.)
Sipping coffee, huddled over little cardboard boxes filled with carbohydrates like sandwiches and cookies and, yes, even potato chips, the B-Techs hatched a plan to rid the world of the New Innovators. They would trample down these upstart New Innovators! They would bludgeon them with legal filings!
And, even though these New Innovators had been awarded patents by legal means by that big office in the CiMI, the B-Techs would ignore their patents—a strategy called Willful Infringement. The B-Techs decided they would deliberately infringe the patents held by those pesky rebels, the New Innovators.
When the New Innovators learned that the B-Techs were infringing, they asked the land’s revered Reconcilers to step in and stop it. But lo! those B-Techs had yet another step in their insidious plan to stay one step ahead.
Through Representative Agents, the B-Tech leaders went to the country’s High Council, and sought to educate the council members, who purported to represent the people, about the evils of the rebels. It’s a backroom bullying process called lobbying.
B-Tech was so fierce in its lobbying, and their rhetoric about these pesky patentees was so forceful in its Hyperbole (a specialized form of embellishment that happens often in lobbying), that the New Innovators became branded as trolls.
Isn’t that ironic? Small innovators who had followed the law were being accused of abusing it. And they were being tarred with the brush of nasty names, while B-Techs who didn’t have patents got away with stealing the New Innovators’ new ideas!
And as all this was going on, the B-Techs engaged so-called Media Agents to report on proceedings at the High Council and create an aura of disrespectability around the New Innovators they now were calling trolls!
The Media Agents warned the people of the dangers of these so-called trolls—even though they were virtually a total fiction! (Yes, it’s true: There were a very few bad apples in the barrel … But nowhere near the whole barrel!)
Several creative Media Agents even began depicting the New Innovators as dwarfs inhabiting the underside of bridges, by attaching little digital pictures called JPGs and GIFs to their emails. It was even suggested that these trolls, who supposedly were invading the land, could steal people’s souls if looked straight in the eye. What lies!
It’s called Spin. And all this lobbying at the High Council and the spin of the Media Agents had a pernicious effect. The people, who no longer had an ounce of independent thought, worshipped the B-Techs, and swallowed hook, line, and sinker every word of the Hyperbole about the invasion of so-called trolls. Who weren’t trolls at all!
After all, the people rationalized, who would want to hurt their beloved B-Techs? And if B-Techs were hurt, how would we get all the amazing updates and new megapixel toys? And as the Hyperbole of the troll invasion spread throughout the land, it reinforced the urgency at the High Council to do something!
Do something the High Council did. It issued decrees that made it difficult to enforce a patent unless you were a deep-pocketed B-Tech. It issued decrees punishing anyone who wasn’t a B-Tech for trying to enforce a patent.
Then came the next phase of the B-Techs’ invidious plan: they engaged Warrior Agents—highly skilled, highly paid professionals who would stop at nothing to protect B-Techs.
(Without the B-Techs, you know, these Warrior Agents were merely service providers—people who wielded words for anyone who would pay them. But with the support of the B-Techs, these Warrior Agents believed they were The Champions of Good. And the people believed it, too!)
The Warrior Agents, masters of all High Council decrees, convinced the land’s revered Reconcilers, who after all were confirmed in their position for life by the High Council, that the decrees made the New Innovators’ patents invalid.
Why, the Warrior Agents argued, why even look at the numerous drawings or the complicated descriptions and detailed claims of the patents. Why do that?
And just like the people had done, the revered Reconcilers swallowed every word of Hyperbole from the Warrior Agents about how dangerous these purported trolls were. They simply had to be stopped.
So the revered Reconcilers began to routinely hold patents invalid—not, mind you, based on the claims or what the patent covered, but instead based on who owned it, how famous they were, whether the accused infringers were more famous, or who had the most money to spend on spurious filings.
The revered Reconcilers obliged these verbally dexterous Warrior Agents by exploiting facile analogies to Dismiss on the Pleadings (which is special legal terminology for taking a shortcut to avoid digging into complexity).
And sadly, though the New Innovators fought mighty battles against the Warrior Agents all over the land for many years, in the end the combination of High Council decrees, false media narratives, bamboozled Reconcilers, and frankly, a brain- and brand-washed people meant the New Innovators began losing the war to protect their innovations.
Eventually, it was feared, they would just die out. But we will see.
Stay tuned for Part IV: The Demise of Innovation (But, Perhaps, the Birth of Hope)
MIMI
And the story continues …
Read Part I: The Birth of an Idea, the Growth of an Industry
Part II: The Path of Innovation Leads to Competition
And so it came to pass that as the B-Techs grew and expanded, their ability to continue innovating with their toys began to wane.
Sure, they continued to make changes and updates, and the people continued to enjoy them. But increasingly these changes were not really new. They were incremental, like combinations of old toy elements or upgrades such as from four megapixels to eight megapixels. You know. Stuff like that.
Markets being competitive (although sometimes it doesn’t seem that way), it came to pass that the B-Techs increasingly became the target of a spritely new crew of smaller innovators who developed ideas of their own. These New Innovators dreamed of making new and improved toys, just like B-Techs. In fact, they often wanted to partner with the B-Techs, but the B-Techs shunned them as not worthy.
So, when the time came to protect their own innovations, these New Innovators decided they would go and seek the legal protections that were available for inventors.
They wrote down “claims,” and made detailed drawings called “exhibits,” and went to a place called the City of Magnificent Intentions or CiMI (pronounced “see-me”), where they applied for patents (and even copyrights and trademarks, too) from a big office called the PTO. And so these little innovators became patentees.
It was all very above board. All very legal and proper.
But the B-Techs didn’t see it that way. They didn’t see it that way at all. They saw these New Innovators, the patentees, as pesky rebels, and as a real threat to their domination of the toy world. Even though the New Innovators had followed all the rules, done all their due diligence, disclosed all known prior art, written detailed claims, and come up with very good drawings of their novel inventions, the B-Techs didn’t care.
The B-Tech’s frustration became so intense that many leaders were heard proclaiming, just like nasty Bolingbroke in Shakespeare’s play:
Who shall it be that rids us rebel fire—
These pesky patentees? Infringe, you say?
We face such terr’ble inconvenience
And cannot rule the world as wont with such
As patent holders. Enough! Now people
Will not worship us as they should—
No longer will they want our toys.
We must act.
“A fairy tale?” you ask. Well, yes. Because every once in a while, even though the work has piled up, you feel energized and spirited about something enough during breakfast on a Sunday morning that ideas just well up and the words spring onto the page. And if you have a couple of spritely, cheerful teenage daughters who occasionally read stories, narratives intersect and you just have a little fun with things. And that’s what happened here. So, a fairy tale … of a sort. And here goes.
Both courts erred in overlooking valid claims, although in the wake of the wacky Alice ruling, such a decision might not have been unexpected.
IPWatchdog, which readers will know as a leading intellectual property law blog that recently has been featuring extensive content about obstacles facing software patentees and smaller innovators these days, posted my letter request for amicus support on behalf of Evolutionary Intelligence on March 31.
My letter and posts point out how the decision in Evolutionary Intelligence is symptomatic of a disturbing trend in patent protection that’s upending longstanding legal doctrines and harming America’s innovating community.
Alice and AIA together now permit larger companies to infringe the patents of smaller entities virtually at will, since it’s having deep pockets that matters. Don’t have capital to defend your patents? Your IP rights go out the window. The law is no longer blind.
Responses to my letter and these posts show that many in the innovating community agree. One commenter, the founder and president of an Ohio software development company, noted:
IANAL [sic: “I am not a lawyer”], but I would support Evolutionary Intelligence because the consumer of the information generated by the method is a server operating system, which is a non-human actor, assuming the method is proven new, non-obvious, useful, and fully described. [Emphasis mine.]
