Even as we are down to the wire on Festo, n2 confusion in the popular press continues. n3 For example, in an article in the New York Law Journal, nominally dated January 7, 2002, n4 we have the text:
In Festo USA Corp. v. SMC, the high court will consider whether the U.S. Court of Appeals for the Federal Circuit (CAFC) was correct when it rejected the so-called doctrine of equivalents, a cause of action established in 1854 that allows patent owners to pursue infringement claims when alleged infringers do not literally violate a patent. ( ... )
The "prior art," also known as the patent history section of the patent application, identifies devices or products previously developed that are part of the new product but are not covered by the patent because they already existed.
The distinction is critical. In the past, if patent owners asserted a cause of action against alleged infringers based on the doctrine of equivalents, the alleged infringers could assert the defense of patent history, in essence arguing that their design was based upon information that was already "out there." ( ... )
Particularly troublesome for patent attorneys without the aid of the doctrine of equivalents is to devise a patent that can prevent copying -- a tough assignment in the Technology Age.
Actually, the issue is whether the Court of Appeals was correct in rejecting the "flexible bar" of the 1983 case Hughes-I, n5 wherein estoppel, once found applicable, "may have a limiting effect" on available equivalents "within a spectrum ranging from great to small to zero." Framed in this way, one is asking whether a circuit court of appeals, convening en banc, can alter its own precedent. n6 The en banc Festo court did not reject the doctrine of equivalents, established by the U.S. Supreme Court in Winans v. Denmead, 56 U.S. 330 (1853). However, it is true that petitioner Festo argues that the en banc Festo decision is in conflict with the Supreme Court decision in Warner-Jenkinson v. Hilton Davis, 520 U.S. 17 (1997). An important aspect of the en banc Festo decision is that the file history estoppel can arise for any reason relating to patentability, including one NOT related to prior art. A key question to be decided by the Supreme Court will be whether a finding of prosecution history estoppel completely bars the application of the doctrine of equivalents.
A recent author suggested that the petitioner Festo may prevail on policy grounds. n7
The loftier perch of the Supreme Court gives the petitioner in that case a better chance of striking the balance in favor of the patent owner, winning the policy argument. None of the justices will have any first-hand experience in confronting the difficulty of applying the flexible bar. The respondents will have a significant challenge in making the policy case as a practical matter.
Many commentators have expressed the opinion that the case will be decided on policy grounds. An interesting aspect is the alignment of parties. Groups of patent lawyers, such as the AIPLA and the IP contingent of the ABA, favor reversal, but the large companies, who are the major clients, such as IBM, Ford, Eastman Kodak, and DuPont, favor affirmance of the en banc ruling. One wonders if the more conservative justices of the court would base a decision on policy grounds, which would amount to interstitial legislation. It is possible that the Supreme Court will pay some attention to the facts of the case, wherein the amendment about the magnetic sleeve in the case of the Stoll patent does resemble the unexplained amendment in the Warner-Jenkinson case.
The Future of Ideas?
As Festo heads to the Supreme Court, a book by Lawrence Lessig (The Future of Ideas) is getting a bit of play in the media. As reviewed by the New York Times on January 6, 2002:
Lessig's passionate new book, "The Future of Ideas," argues that America's concern with protecting intellectual property has become an oppressive obsession. "The distinctive feature of modern American copyright law," he writes, "is its almost limitless bloating." As Lessig sees it, a system originally designed to provide incentives for innovation has increasingly become a weapon for attacking cutting-edge creativity. ( ... )
Lessig is aware that he's not the first critic to claim that America's copyright lawyers have become pinstriped thought police. Much of the novelty of his book lies in his effort to trace how the intellectual property virus has spread, with tragic results, to the Internet -- a communication network expressly created to allow the rapid dissemination of new ideas. "An environment designed to enable the new is being transformed to protect the old," he concludes glumly. ( ... )
Lessig's utopian musings about the evils of copyright will surely be criticized by some as pie-in-the-sky thinking. Certainly, a legal scholar could skewer many of the dubious assertions Lessig makes while defending "open access." (At one point, Lessig says that Napster, which came into being in 1999, clearly didn't harm the record industry because CD sales have "tripled in the past 10 years.") In the end, "The Future of Ideas" is less valuable as legal scholarship than as sweeping cultural criticism. It's a manifesto that shakes you up, making you aware of how much is lost when a culture turns "ideas" into "intellectual property." ( ... )
Lessig's prose, too, is less than limpid. "The commitment of a society open to innovation must be to let the old die young," he writes. Let the old die young? Somebody should do a fan edit of this book. n8
Then there's the fact that Lessig directs almost all of his ire at fellow lawyers. Certainly, artists are equally to blame for the drying up of America's cultural commons. Bjork's share-and-share-alike philosophy is all too rare these days. Indeed, it was the millionaire headbangers of Metallica who helped lead the fight to shut down Napster. And shouldn't George Lucas, the ultimate technogeek, be held accountable by fans for shunning a digital novelty? Copyrights may be enforced by lawyers -- but more and more, it's artists who are the real phantom menace.
Greg Aharonian recently posted commentary related to the patent aspects of Lessig's book.
Part of the discussion delved into inferences about impact of a patent through citation analysis, an area I had previously explored in Intellectual Property Today in June, July, and December of 1996. The general point would be that the theory underlying so-called quantitative analysis of economic impact is questionable. Part of Mr. Aharonian's comments were as follows:
Yes I do have training and experience to question economist's studies of the patent system. I have seen too many studies analyzing patent citations done by economists who have no idea how prior art citations get onto the front page of a patent, which usually isn't due to the inventor, but rather the patent examiner or a patent searcher. Therefore most citations offer no information on technology flows between patent assignees, nor do they much measure the importance of patents by their citations. Yet many economists believe so, because they have no experience with patent prosecution. Similarly, their simplistic models, "assume an industry with two manufacturers, one product, and ten consumers, . . . blah blah blah". Finally, no economist has ever had the intelligence or the guts to blast the hell out of the NSF for continuing to publish Narin's economic nonsense patent statistics - they don't want to jeopardize their own NSF grants. I am not judging the economists' reasoning, but rather their non-economic assumptions, many of which are based on data they don't have and don't collect. So your citing them impresses anyone with practical experience in patenting very little.
Separately, of relevance to Festo, Greg writes of:
corporate America which fully supports the currently broad-scoped patent system.
The interesting thing here, of course, is that, in Festo, the big corporations (for example, IBM, Kodak, Ford, DuPont) have aligned with the Federal Circuit in cutting back the broad scope afforded by the doctrine of equivalents. The big corporations prefer certainty rather than a broad-scoped patent system.
In writing to Aharonian, Lessig seemed almost to trivialize the objectives of the book:
My aim with respect to patents was to do things: (1) to establish the strong and bipartisan pedigree for the claim that patents are a different sort of "property"; (2) to establish the uncontroversial claim that while we can see the costs of a patent system, we have no good evidence that the benefits of the system outweigh those costs.
Of point (1), although intellectual property has some qualities distinct from other forms of property, the general concept of property is a construct. Unlike physical phenomena, property is what we say it is. n9 Of point (2), Aharonian did bring up facts about pharmaceuticals, which particular area would seem to be a clear example of evidence where the benefits outweigh the costs. n10
Intellectual Property and Academe
Although given short shrift in the Times review, the nexus of intellectual property with academe is getting increasing attention. n11 For example, at the end of December, the AP discussed a GAO report on conflicts of interest in academic research: n12 "Universities and federal health officials must do more to prevent financial conflicts that could taint biomedical research and harm human subjects."
Separately, with the proliferation in the number of journals, and correlated enhanced costs, n13 there have been increasing concerns about the availability to researchers of publications, which concerns fall under the rubric of the "scholarly communication problem." David Shulenberger of the University of Kansas wrote:
If we are to keep scholarship available in our libraries we must assert that, at some point in time, all of it must become part of the public domain. We must then establish a way to make that material permanently accessible to scholars and the public in a useful fashion. I no longer believe that solutions that fail to deal with ultimate ownership of scholarly communication, i.e. copyright, are viable. I have reached this conclusion because I believe in the market. What the market is telling us now is that the scholarship published in many academic journals has real economic value. While it is fashionable to characterize all scholarly journal articles as "seldom read" and "of primary value only in negotiating the academic credentialing game," the truth is far different.
Some commercial publishers of academic journals in science, technology, medicine, and lately the social sciences, have demonstrated the economic value of scholarly journals by raising their prices at rates far in excess of the cost of producing them. We know they raised prices faster than costs because this area of publishing has become extraordinarily profitable.
An interesting point here is that it is the conveyor of the information, rather than the creator of the information, that is stated to be obtaining the most benefit. Unlike the problematic lawyers fingered by Lessig n14 or the evil artists identified by the Times, n15 the entity truly benefitting is the one simply making the copies. In this, the concept of intellectual property is not the virus, but rather the implementation of the concept. The incentive should be directed to the "author."
In Passing
Of the discussion of the use of low cost discovery techniques in the Dec. 2001 issue of IPT, I note a case wherein interrogatories were simply ignored. To my first professor of civil procedure, Randall Picker, I note that the subtleties of the Federal Rules of law school don't always translate to the real world.
Endnotes
n1 The opinions expressed herein are designed to foster scholarly debate and are those only of the author and not of any employer, past, present, or future. The author can be reached at Lebert@ReedSmith.com. The deadline for Intellectual Property Today this month coincides with oral arguments in Festo. Petitioner Festo argued that the only bar to the doctrine of equivalents is the disclaimer/surrender of subject matter to achieve patentability and the effect of the en banc Festo decision was only to shift the debate to whether an amendment was narrowing. Respondent SMC was asked about issues with retroactivity (response: consistent with Exhibit Supply and Warner-Jenkinson) and whether section 112 related to patentability (yes). The issue in this case is that the reason for the addition of the magnetic sleeve element in the claim is not clear from the prosecution history. In going from no limitation about a magnetic sleeve to an affirmative requirement of a magnetic sleeve, it is also not clear whether the applicant surrendered a sleeve made of a non-magnetic material (aluminum) which comprised ferromagnetic impurities.
n2 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki, 234 F3d 558, 56 USPQ2d 1865 (CAFC 2000). Petition for cert granted June 18, 2001; oral argument January 8, 2002.
n3 See a discussion of coverage by Scientific American and Forbes in L. B. Ebert, Festo Briefs: Which Future for 21st Century Patent Law?, IPT, pp. 20-22 (Nov. 2001).
n4 Leigh Jones, 'Festo' Set to Go Before High Court, New York Law Journal, January 7, 2002.
n5 Hughes Aircraft Co. v. United States, 717 F2d 1351 (CAFC 1983).
n6 There has been some discussion of conflicting lines of authority, as between Hughes-I and Kinzebaw v. Deere & Co., 741 F2d 383 (CAFC 1984) [see, for example, TM Patents v. IBM, 136 F.Supp 2d 209, 58 USPQ2d 1571 (SDNY 2001]. In the opinion of this author, such conflict is somewhat contrived. First, the later Kinzebaw case cited, with approval, the earlier Hughes-I case. How do we have a conflict when there is citation with approval of the earlier case by the later case? If the Kinzebaw court did not think it was inconsistent with the Hughes-I court, why should anybody else? Second, in the Kinzebaw case, the patentee had made an amendment, to overcome prior art, stating that the radius of the wheels exceeds the distance from the axis of the wheels to the rear edges of the discs and [is] less than the radius of the disks. Although the patentee clearly indicated that the radius of the wheel is LESS than the radius of the disk, the patentee asserted infringment against an accused product wherein the radius of the wheel was GREATER than the radius of the disk. The argument of the patentee in litigation was that the limitation was unnecessary to avoid the prior art. The court rejected this, stating that the accused infringer utilized a characteristic that the inventor specifically eliminated. On the facts of Kinzebaw, there was no room for a "flexible" approach. Either the radius of the wheel was less than the radius of the disk (covered by the amendment) or the radius of the wheel was greater than the radius of the disk (given up by the amendment). There is a world of difference between the Kinzebaw issue and, say, the issues in Insituform, wherein the patentee never gave up more than one cup. Insituform Technologies v. Cat Contracting, 58 USPQ2d 1392 (CAFC 2001) [unpublished]. There is also a world of difference between the Kinzebaw issue and Intermatic Inc. v. Lamson & Sessions Co., No. 00-1101, wherein the claim in question had not been amended at all. As a separate matter, as of January 8, 2002, Hughes-I had been cited 514 times and Kinzebaw had been cited 117 times.
n7 Patrick J. Flynn, Festo case heads to high court; if a recent trend continues, justices will be less likely to defer to the Federal Circuit, National Law Journal, C1, C12 (Dec. 24-Dec. 31 2001). Of the Kinzebaw issue, the author stated: "Prosecution history estoppel, however, continued to dog the Federal Circuit after Warner-Jenkinson. An arguable split of opinion among Federal Circuit panels continued to exist . . . [underlining added] The article discussed other recent Supreme Court cases on patents, including Pfaff v. Wells, 515 U.S. 55 (1998), wherein the author stated that the "ready for patenting test" was only marginally different from the "substantially completed" test, an assertion which might be questioned. Of Dickinson v. Zurko, 527 U.S. 150 (1999) [which was a 6-3 vote], the author noted that the court's opinion reads like a lecture to an unruly classroom. The author did not discuss Nelson v. Adams, 529 U.S. 460 (2000) [which was a 9-0 vote] wherein there was an oblique comparison of the Federal Circuit's ruling to Alice in Wonderland.
n8 This text is not unlike a comment I once received from Harry Kroto, in regard to the debate of whether or not soot was primarily formed of buckminsterfullerene. The text actually derives from a famous scientist. Both Sir Harry and I are still alive, and no one cares whether or not soot is formed primarily of buckminsterfullerene.
n9 Whether or not understood by lawyers, the stoichiometry in chemical compounds is determined by atomic weights, not by atomic numbers. See L. B. Ebert, Festo: The Coming Storm?, IPT, pp. 48-49 (Aug. 2001) discussing Durel v. Osram, 52 USPQ2d 1418, 1429 (D. Az.). Similarly, whether or not understood by lawyers, Einstein's analysis of the photoelectric effect in 1905 is still correct, and the energy of the photon, rather than the amount of photons, is the prime determinant in the chemistry performed by the photon. See also "The Physicists" by Friedrich Durenmatt.
n10 The Chicago Tribune wrote on December 28, 2001: Why is breaking patents a problem? If there's a drug out there that will cure what ails, why should a drug company patent stand in the way? Here's why. A patent basically gives the company that developed a drug a temporary monopoly during which the company alone can reap the profits. Once the patent period expires, other companies are free to make cheap copies of the drug. But most proposed drugs don't make it past the costly research and development stage. Few make it to the human testing stage. Only one of every five that get that far ever reaches the market. On average, each successful new drug takes up to 15 years to develop and costs $ 500 million.
n11 As this article went to press, Cornell University was accusing Hewlett-Packard Co. of infringing on a patent for a high-performance data processing system (by Cornell Professor Emeritus H. C. Torng) and MIT and Electronics for Imaging Incorporated, of Foster City, California were going against 94 companies, including Microsoft, over software (developed by MIT professor William Schreiber) used in products such as photo scanners and digital cameras.
n12 Leigh Strope, Feds Probe Tainted Medical Research, AP (Dec. 31, 2001). "Sen. Bill Frist, R-Tenn., requested the investigation because of concerns that researchers or institutions were becoming too focused on financial rewards." See also, L. B. Ebert, Commercialization of Information: Science Journals as Infomercials?, IPT, p. 5 (Dec. 1999). Also, Wall St. Jour. (Feb. 2, 1999): although [academic] researchers are increasingly supported by for profit companies, this critical fact is seldom revealed in publications on the resultant research. Also, Annals of Plastic Surgery, Vol 45 No. 3, pp. 332-334 (Sept. 2000)
n13 See also, L. B. Ebert, A Tale of Conflicting Models, IPT, pp. 20-21 (July 2001), especially the discussion of AGU v. Texaco, 60 F3d 913 (CA2 1995).
n14 As reported in L. B. Ebert, Festo: Sea Change in Patent Law?, IPT, pp. 34-35 (Jan. 2001), Lessig wrote "Thus the nature of the patent cycle: a process created by lawyers that benefits only one group with any real certainty -- lawyers."
n15 Recall that publisher New York Times was adverse to free lance authors in a copyright matter in New York Times v. Tasini, 121 S. Ct. 2381, 60 USPQ2d 1001 (2001).