Notice and Notice Failure at BU, panel 7

Mark Lemley – Ready for Patenting
Patent’s problematic approach to what we want to encourage
when we grant a patent. Long struggle with what you are giving us is simply an
idea/conception or an actual thing/reduction to practice.  Various doctrines point in different,
sometimes conflicting directions; most obvious is §102(g) priority rules under
pre-AIA provisions—tried very hard to split the baby; invention is reduction to
practice + conception + diligence in working to reduce to practice to figure
out first inventor. Even pre-AIA, thumb on scale in favor of early
filing/against reduction to practice in various ways.  Constructive reduction to practice is the
easiest thing to do—get a patent application on file and you’re done in a
priority contest; everyone else needs fairly substantial evidence.
If you have an idea, you can (1) tinker and try to make a
working device; that’s costly and lengthy, or (2) head to the patent office,
which is more likely to leave you labeled the first inventor if a priority
dispute emerges.
Also, if you choose constructive reduction to practice by
filing, there’s no need to show it works for its intended purpose.  If you make the thing, you have to show it
works.  If you do the former, then if it
works, you win; if it fails, no big deal. You do have to demonstrate enablement
and written description, but enablement isn’t that difficult a burden.  §112 information required isn’t that
difficult, b/c among other things the legal standard doesn’t require you to
tell us how to make it work, only enough that a PHOSITA could make it work
without undue experimentation.  Fed. Cir.
has been quite dismissive of actual building/experimenting in various
ways.  Definition of inventorship—court says
the people who just built it are mere tinkerers and don’t count; inventors are
the ones w/the idea. Infamous statements about software: you don’t have to
disclose code or high level flowcharts because “actually writing a computer
program is necessarily a mere clerical function for a skilled programmer.”  Heh.
If the pre-AIA statute put a thumb on the scale for early
filing, AIA puts a fist.  And the
elimination of experimental use (doesn’t think that’s right interpretation, but
PTO’s implementing regulations say there’s no experimental use defense) makes
it difficult if you wanted to keep tinkering before filing.  Even if the defense survives, it’s lost
force.  Pre-AIA, once you were the first
inventor experimenting, neither my own acts nor subsequent inventions could
affect my patent.  Post-AIA, at most I
get a year to prevent my own conduct from barring patent, but the only way to
prevent other people’s conduct from being a bar is to make a public disclosure,
when most experimentation by its nature is private. 

Result: patent info tends to be thinner. 
We learn a lot by doing, figuring out what does and doesn’t work.  At the same time, patents tend to be written
more broadly b/c not constrained by what’s practical or what works: write
patents in broad functional terms precisely when they haven’t gotten the thing
to work.  By encouraging early filing, we
give the world less info and get broader/worse patents, particularly for
What can we do? 
Require either commercialization or reduction to practice, says Chris
Cotropia. Thinks that goes too far and is impractical for some technologies
(e.g., my great idea for organizing a semiconductor fab, which costs millions).
We’d like to have a world in which people who have a good idea but aren’t in
good position to test it can sell it to others who are.  Paper patents thus serve a useful purpose but
at a minimum we ought to be neutral as to whether or not you actually built
How?  (1) we ought to
keep experimental use. (2) strengthen §112, particularly as applied to paper
patentees.  Enablement standard should be
raised, either across the board or for paper patentees.  Limit you to predictions you’ve actually
made.  (3) small extension to prior user
rights.  Prior secret invention no longer
later prevents you from patenting, but in theory I have a prior user
right.  We ought to extend prior user
rights not just to commercial use but experimentation.  Building and testing before someone shows up
at patent office = at least protect those people from being punished b/c they
chose to build rather than simply to patent.
Paul Gugliuzza: There are still reasons to confer patent on
the entity that wins the race to the patent office.  (1) Earlier expiration/entry into the public
domain.  But is that really persuasive?
How much will it matter? Related patents might also block entry. Paper might
not want to concede benefits from marginally earlier expiration encouraged by
early filing.  (2) Courts don’t have to
conduct costly/context specific inquiries about diligence in reduction to
practice; was the prior user really using it; etc.  Interested in hearing about cost/benefit
tradeoff in messy validity/novelty fights. 
Enablement via prophecy: could we do that entirely? If so,
what type of disclosure should we require, if you don’t want to go all the way
to reduction to practice? What standard would go beyond “no undue
John Duffy – Counterproductive Notice Requirements and
Literalistic Claiming
We’ve messed up and we should go back in time.  If law imposes difficult to satisfy notice
requirements and invalidates the whole right as a penalty for noncompliance,
the enforcement mechanism weakens notice. Invalidation of the whole right
transforms imprecisions at the edges of the right where uncertainty is greatest
into uncertainty throughout the entirety of the right.  (Encourages people to litigate even at the
Major problem—pre-CAFC law tolerated fuzzy boundaries but
provided more certain notice.  Return to
pre-CAFC law because it’s based in never-overruled SCt precedents and b/c it’s
superior public policy.
Liebel Flarsheim v. Medrad is a poster child for all that’s
wrong.  DCt interprets claim term “inejctor”
to be limited to injector w/pressure jacket; CAFC reverses b/c there’s no
ambiguity. Years later, CAFC invalidates the claim b/c the specification shows
no injector w/o a pressure jacket. 9 years of litigation to get the right claim
interpretation only to have that interpretation invalidate the claim. That’s
Things that are wrong w/CAFC approach: (1) consistently
refuses to limit scope to structures disclosed in specification and their
equivalents. (2) treats canon of construing claims to preserve validity as a
last resort not a first principle. (3) eschews any attempt to discover the real
merit of the invention as a step in defining rights. All represent abandonment
of pre-CAFC law.  Many critics have
thought these were symptoms of peripheral claiming and advocated for a return
to central claiming (Lemley, Fromer)—but the CAFC is not doing peripheral
claiming.  Prior-CAFC, peripheral
claiming meant something much different: Risdale Ellis, who named peripheral
claiming, said in 1949 that it measn that infringement requires: “(1) the claim
must read in terms on the alleged infringing structure. (2) The alleged
infringing structure must be the equivalent of anything disclosed by the patentee.”  Peripheral claiming wasn’t a rigid rule of
everything within the claim being the patentee’s—a different version of doctrine
of equivalents, in which the doctrine narrows the claims. That’s why old SCt
cases are always talking about the doctrine of equivalents. 
CAFC’s literalistic one-step test of claiming is radically
new and inconsistent w/SCt precedent and even CAFC’s own prior precedent.  They purported to adopt the jurisprudence of
CCPA and the Court of Claims, and the latter used a requirement that didn’t
just require the claims to read literally on the accused structures, but also a
determination that the accused structures do the same work, in substantially
the same way, and accomplish substantially the same result.  Autogiro v. US, triple identity test for doctrine
of equivalents.  Very presciently said
that making literal overlap only a step and not the entire test was consistent
since 1898.  This is not an argument
about a “defense” to infringement that CAFC has repeatedly rejected. This is a
requirement of infringement analysis.
The consequence of CAFC change: allowing literality to
satisfy the infringement test rewards literary skill/drafting, not
invention.  Collateral consequences:
traditionally we look into the art to find the real merit of the alleged
discovery/invention.  Never discuss
pioneering patents any more.  CAFC:
validity preservation is a last resort only when a claim is still ambiguous
after everything else has been tried. 
Patent claims are like metes and bounds system, which is
vague and not certain, as real property authorities say.  When patent lawyers say “metes and bounds,”
don’t think precision!  Think vagueness.  The terrain is irregular and mountainous; we’re
stuck with metes and bounds, but then we need to use their tools—always try to
preserve validity.  So practically, a
cert petition should ask the SCt: whether a defendant may be held liable for
infringement where the patent discloses nothing equivalent to the products or
processes accused of infringing. 
Prior-CAFC law: the answer is clearly no, not yes at is in the CAFC now.
Commentators: Henry Smith
Calls into question the assumption that peripheral claiming
involves specifying patent’s outer bounds exactly; conventional wisdom is that
central claiming started from the center and worked outwards.
Missing link: equity. Doctrine of equivalents is an
equitable doctrine.  Explains how
peripheral claiming works, why it fell out of favor, the limits built into it,
and what would be required to bring it back. 
Equity is called for as a solution to opportunism;
conflicting rights (nuisance); polycentric problems (like those that gave rise
to class actions).
Older guidance: Ellis does say that doctrine of equiv. is
used to narrow the literal claim. Also used to determine if a claim is too
broad. Under peripheral claiming, DOE can be used to narrow a claim, never to
broaden it, w/narrow qualifications. We rarely worry about patentee being too
modest about claims. 
Why the change?  Fusion
of law and equity; post fusion, function of equity can become obscure.  Equity either becomes the general case
(realist, contextualist) or highly disfavored (neoformalist, literalistic).
Suspicions about overexpansive IP and notice failure reinforce suspicion of
equity. Does this apply in the narrowing direction, and if so how much?
Is equitable intervention (exceptional in principle)
justified? Is the gain from preventing opportunism and solving complex problems
worth the uncertainty that selective intervention causes?  We don’t trust judges w/notions of commercial
morality etc. now, and if we don’t equitable interventions seem more
problematic.  One last reason for
pessimism: it’s time for the SCt to do something, Duffy says, but SCt’s track
record on resuscitating traditional equitable doctrines is terrible; we’d get a
4- or 5-part test bearing no relationship to the doctrine he just discussed.
Not willing to get on the equitable train if the SCt is the engineer.
Meurer: do you favor grace periods/international
Lemley: if we could get other countries to sign on to a
grace period as part of harmonization he’d be in favor. If it meant getting rid
of any vestige of encouraging building the thing, then no.
Duffy: Landes wrote the bible on claim drafting in the
second half of the 20th century. In the 1970s he talked about means
plus function; today the conventional wisdom is that’s narrowing.  Landes says in 1970s that’s not a problem b/c
it gives you the broadest interpretation you’d ever be entitled to. This wasn’t
a special rule for means plus function elements.  The standard rule allowed more functional
analysis about how much contribution you’d made.  How can you tell how meritorious an invention
is?  Even today, people will say things
like “this is a strong case of obviousness”—how do they know? B/c we can tell
the difference!  And if we can’t tell the
difference between a pioneering advance that changes the art and a trivial
advance, we have no hope of running a patent system.
Lemley: this is an explanation of why the abstract ideas
branch of §101 is playing a new role: responding to the absence of constraint
we built into the system a generation ago. One response is to go back to means
plus function claims; hard to say that’s an abstract idea.  People w/the most difficulty doing that are
the paper patentees, to link that to my paper.
Duffy: DOE was told to juries—so not equity in that way, and
not equity just b/c it’s fuzzy.
Smith: equity can work functionally even on the legal

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