Wegner: Escaping the Depths of the Patent Shadows

WegnerA response to Merges,
By Hal Wegner

Professor Robert P. Merges makes much sense in his op-ed piece, Back to the Shadows, or Onward and Upward? Current Trends in Patent Law. We and thoughtful supporters of the patent system share much common ground.  Professor Merges touches on numerous points where there is hardly any significant difference with this writer, including the domestic results of the eBay decision from last year.  In his analysis of the Supreme Court, Professor Merges is correct that the Court is generally “pro business”, but it is another matter whether in some industries being “pro business” means being “pro-patent”.

PatentlyO2006026“Pro Business” as Anti-Patent, a new Direction at the Court:  Professor Merges is absolutely correct that the Supreme Court today is “pro-business”.  Whether the majority is pro-patent is possible but not yet conclusively determined: It is too soon to tell. It is undeniable that there is a solid, anti-patent Supreme Court core consisting of Justices Breyer and Stevens.  Justice Stevens’ anti-patent record reaches back to the mid-1970’s and is too well documented to question.  Yet, Justice Breyer is apparently now the more enthusiastic anti-patent of the two; they are the only members of the Court in this century to have taken the view that the open door to § 101 patent-eligibility for “living” inventions in the Chakrabarty case should be narrowed, arguing in a dissent in J.E.M. that the utility patent law “does not apply to plants”.(1) Just last year, an anti-patent drumbeat manifested in the Breyer dissent from the Metabolite “DIG” (joined by Stevens) plus their joint participation in the Justice Kennedy concurrence in eBay further validates their anti-patent bias.  Justice Souter joined both the Metabolite DIG dissent and the Kennedy eBay concurrence, but whether he is truly a solid part of an anti-patent core requires more data points; they may be forthcoming in shortly in KSR and in early Spring in Microsoft.  Whether other members of the Court join this core remains to be seen.

Feeding this nascent anti-patent core are two dominant themes:  First, while the Supreme Court is pro-business, a major segment of the business community is largely anti-patent, turning the patent system upside down:  Under this twisted view of patents, being “anti-patent” may be “pro business”.  Second, the patent jurisprudence of the Federal Circuit has created and continues to create problems that necessarily fuel further growth of an anti-patent sentiment. 

Being Pro-Business today may mean being Anti-Patent:  Business interests in the majority of fields do not enforce their patents to obtain or maintain an exclusive patent right; many have a generally negative view of the patent system.  (The minority view is found in the pharmaceutical, chemical, biotech and other emerging technologies and amongst small businesses and universities where a patent-based exclusive position is essential to development and exploitation of new technology.)

Many businesses that do not seek an exclusive patent-based position pay a lot of money to create a patent thicket principally for cross-licensing settlements with other manufacturers who would otherwise sue them for infringement.  Yet, these patent thickets provide no protection against non-manufacturing patentees who have everything to gain from an infringement litigation and nothing to lose.  

Huge awards for non-manufacturing patentees are manifested by the more than half billion dollar numbers in the BlackBerry settlement and the Eolas trial court judgment.  The only plus side of the patent picture for this segment of business society is the generation of a nonexclusive royalty stream where an IBM may generate a billion dollars or more in revenue.  But, for industry, this is a “patent tax” as it provides no positive benefit in terms of technology transfer or exclusivity.   For such business interests, the end to virtually automatic injunctive relief in eBay is a major victory with no apparent downside. 

Professor Merges’s analysis of eBay is absolutely correct when viewed from a purely domestic standpoint, with one significant exception:  The anti-patent drumbeat that comes from the business community to reach the result in eBay necessarily fuels an anti-patent attitude at the Court which must to some extent feel that by being anti-patent it is being pro-business.

The Global Model, < ?xml:namespace prefix ="" st1 />Patent Mountains in a Flat World: eBay may work fine from a domestic standpoint,  but it represents a total failure internationally by creating a giant patent monkey wrench that threatens to destroy the foundations for global protection of American innovation abroad. This issue is explained in detail in a Northwestern piece,  Injunctive Relief: A Charming Betsy Boomerang, 4 Nw. J. Tech. & Intell. Prop. 156 (2006).  

All major industries – not just pharmaceuticals, chemicals and biotech – should be carefully crafting global patent strategies to exclude copyists and other competitors from creating “me too” manufacturing industries around the world.   In the global arena, patents are needed to create a commercial beachhead in foreign markets and to create exclusive positions in what is otherwise becoming a borderless commercial world – the “flat” world of Thomas L. Friedman.   Aggressive pro-active patent procurement strategies can be used for foreign markets to create dominant positions to safeguard foreign markets in the traditional manufacturing industries. 

Additionally, the domestic difficulty of defending against “trolls” is largely nonexistent in foreign fora which have safeguards; the foreign laws provide a gauntlet of specialized patent tribunals, both judicial and administrative, to kill troll patents.  Japan, for example, since 2004 has a revamped its administrative patent revocation system that commences before a senior board panel that reaches a decision in roughly one year; thereafter, the Intellectual Property High Court is effectively the sole reviewing tribunal.  Or, the Tokyo District Court has specialized, hardball divisions that have an extremely low rate of maintaining patents and which also provide rapid justice.  Germany boasts its famed Bundespatentgerichtshof in Munich near the German and European Patent Offices; the Bundespatentgerichtshof has exclusive trial jurisdiction over patent validity challenges and similarly dispenses prompt justice.

The manufacturing industries of the United States are largely blind to use of a global patent system to create patent beachheads and exclusive positions in foreign markets.  The proof of the pudding is found from Friedman’s interviews for his book.  This distinguished journalist conducted numerous in depth interviews with large numbers of leading American manufacturers.  None of those interviewed by Friedman speaks of the use of patents as a weapon to be used to counter the flat commercial world:  The collective failure of the manufacturing industries to use patents to dominate foreign markets and manufacturing is a serious challenge for reforms.

eBay, Undermining the Exclusive Rights Promised by the TRIPS:   Absolutely vital to a patent-based strategy to dominate foreign markets is the patent system’s promise of exclusivity, including injunctive relief.  To the extent that a developing country jurist at the end of an infringement trial is able to weigh equities under its system in an eBay-like manner and determine that it is not “fair” to impose injunctive relief, then the entire model collapses.  A very low royalty rate will be assessed against a local manufacturer, tantamount to a compulsory license, without any further sanction.   If a system of compulsory licenses results in the major Asian states, then patents become worthless as a way to establish a patent beachhead to create exclusive rights. 

The Trade Related Aspects of Intellectual Property – the TRIPS – was created in part to maintain strong, exclusive patent rights precisely to compel nations around the world to issue patents that would be enforced with injunctive relief.  This cornerstone feature of the TRIPS is absolutely essential, a cornerstone for the pharmaceutical, chemical and biotech industries.  It largely is not, but could be used in foreign markets to obtain exclusivity within other American industries.   < ?xml:namespace prefix ="" o />

The contours of TRIPS-based exclusivity are yet to be finally shaped:  This will take place in Geneva in mandatory dispute settlement panels of the World Trade Organization when, most likely, a western country challenges an Asian state’s compulsory licensing or other eBay-like standard as violating the TRIPS.   The first line of defense to such a charge will be one word, eBay!  Surely, it will be argued, the United States is TRIPS-compliant as the leading proponent and creator of the TRIPS; hence, if eBay is the law of the United States, it presents a model of TRIPS-compliance for any country to follow. 

The Federal Circuit:  Professor Merges is quite correct that the Federal Circuit case law has sparked great interest by the Supreme Court.  This is clearly a second root cause fueling an anti-patent attitude.  Professor Merges is dead on when he says that “[t]he Federal Circuit may well be the ‘new Ninth Circuit.’ Despite the Federal Circuit’s overall success in stabilizing patent law and setting it on a more coherent course, in my opinion the legal rulings of that Circuit often cause unnecessary confusion. Vacillation and variation are well-recognized in a number of important areas: claim construction, the ‘written description’ requirement, means-plus-function claims, inherency, and product-by-process claims, just to name a few.”   Whether styled as “vacillation and variation” or a balkanized body of conflicting and confusing precedent, the Federal Circuit has indeed contributed to the anti-patent sentiment at the Court.

The Duffy Ultimate Solution to Dilute the Federal Circuit:  Whether the extreme proposal of Professor John F. Duffy to create two parallel courts of appeal for review of patents is necessary or practical is probably rendered moot by the realities of the legislative process.  More importantly, by the end of 2012 at the latest, the Court will be manned by Chief Judge Rader joined by future Chief Judges Prost and Moore – and a combination of up to nine new judges and senior-eligible current members of the court who have not chosen to take senior status.   The better use of resources to reform the system should be focused upon compelling the President to appoint a mix of District Court judges, senior patent litigators and serious patent academics to fill these nine appointments:  Never in the history of the court has a District Court judge been elevated to the Federal Circuit.

There is much more than can and must be said about the Federal Circuit, which will be found in “What’s Up with the Supreme Court?”, a paper being prepared for the February 20, 2007, program, Federal Circuit Judges Come to California.

There are many other excellent points in Professor Merges’s piece which need a response which will be made in due course.  Professor Merges sums up:  “[W]e do … both share an important fundamental belief in the viability and continuing potential of the patent system.… We need to continue to work with the Court, and with each other, in the good faith belief that we are all engaged in a worthy common enterprise.”  Indeed.

(1) J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Intern., Inc., 534 U.S. 124, 156 (2001)(Breyer, J., joined by Stevens, J., dissenting).

34 thoughts on “Wegner: Escaping the Depths of the Patent Shadows

  1. 34

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  2. 33

    Re: Bystander’s PS.
    With all due respect, I am an inventor, and I don’t like the eBay ruling, and the majority of those who posted above do not like the eBay ruling.

    Are you of the opinion that patent professionals think the way big businesses typically take advantage of independent inventors is equitable?, because that is not so. When big business patent professionals routinely misappropriate independent inventors’ patents, they are not acting naïvely — they know exactly what they are doing and who they are doing it to.

    Big business likes the eBay ruling, because even if the independent inventor is able to muster the resources to sue for infringement and he ultimately prevails, big business still doesn’t run the risk of injunction. Only after big business loses an infringement lawsuit does it have to face paying for a license, and even then it only has to pay the going un-inflated rate (typically, big business attorneys are smart enough to avoid risk of willful infringement).

    As was posted above,
    “By denigrating a patentee’s ‘exclusive Right,’ the USSC’s eBay decision has taken our patent system one giant leap toward compulsory licensing, akin to giving big business a sovereign’s power of eminent domain to misappropriate from an independent inventor, yet there has been no legislation that even suggests compulsory patent licensing.”

    In the light of day, one realizes that the eBay ruling is not supported explicated or implicated by either the word or intent of either The Constitution or Congress’s patent statutes. With all due respect, those who like the eBay ruling encourage compulsory licensing that gives big business power akin to eminent domain over independent inventors’ patents.

    All fair-minded patent professionals recognize that problems exist. However, most shudder at this topsy-turvy turn of eBay events.

  3. 32

    I had great respect for Prof Wegner, but what’s with the hand waving in his editorial? Where’s the real evidence that EBay decision weakens US’ competitiveness? Other than a few isolated cases in India and Brazil on pharmaceutical products, which country really dare to steal US patents? China – some might suggest. But more often than not the ruling there favors the patentee. Besides, if they can’t sell in US and EU, where can they sell copycat products?

    The Justices basically said in KSR that “patent bar defend very much what the Federal Circuit does” and “… they’ve leaned too far in the direction of never seeing a patent they didn’t like and that has unfortunate implications for the economy.” Professor’s hand waving unfortunately plays into the stereotype. Maybe he’s also angling to influence the Microsoft case. But IMHO that Court will upheld 271(f). Congress added that clause for good reason.

    P.S. to the PR hacks from the patent trolls. I know real entrepreneurs – they do not share any of your opinions. They like the Ebay ruling. So take your silly propaganda elsewhere. This is a forum for professionals.

  4. 31

    Stepback,

    The reference to “equitable” in my earlier post was simply to the jurisdication from which the remedy of injunction originates (i.e. equity, as opposed to the common law), rather than a normative statement about the substance of the law. The rest is a bare statement of the law here and in many other jurisdications. But thanks for denigrating my country all the same…

  5. 30

    Malcolm,

    I filed my patent app in early 2002, in the pre-EBay times, when injunctions were issued to all holders of valid and infringed patents regardless of their practicing or non-practicing status (The case usually cited at the time was “Continental Paper…”)
    My patent was finally granted in late 2006,
    (after collecting a dust for 4.5 years before the first office action)
    And now it is post-Ebay era and injunctions are routinely denied to small non-practicing entities (a.k.a “independent inventors”)
    Now tell me I am not f*****. Seriously.

  6. 29

    “So the SCOTUS judges chose this particular unworthy business method patent to f*** the rest of us, little guys with patents on various high-tech inventions (mine is telecom-related)”

    OK, I’ll take the bait: tell us how the eBay decision “fxcked” you. Were you receiving royalties that were contingent on a different holding? Seriously.

  7. 27

    Hey, Joe,

    I understand that some people (including myself) may have little or no respect for “Buy it Now” patent. It doesn’t seem to promote the progress a lot anyway..
    So the SCOTUS judges chose this particular unworthy business method patent to f*** the rest of us, little guys with patents on various high-tech inventions (mine is telecom-related)
    How nice and clever…

  8. 26

    Any discussion of the eBay decision which does not refer back to the specifics of the patent in question is meaningless. The Court was obviously uncomfortable with the notion that “Buy it now” could be patented and were concerned about the combined effect of weak gate keeping at the patent issuance stage and strong enforcement.

  9. 24

    Small Guy,

    Yes agreed. The usual response is that your Little Guy’s infringement letter got “accidently” (if you know what we mean) lost in the mail room with all those insurance reimbursement requests.

    That said, you are missing the main point:

    The traditional “equitable” remedy for the long delays involved with full blown trials was to issue a temporary injunction pending final resolution of the case. That usually brought the Big Guy quickly to the bargaining table where he would at least start acknowledging the existance of the Little (pain in the butt) Guy.

    In a case where injunction may not be an appropriate “equitable” remedy, the court should still be on the hook for fashioning another “equitable” remedy that will help the Big Guy find his way quickly to the bargaining table.

    Hopefully some litigation attorneys out there will see this “obvious” aspect of eBay and will find motivation to “suggest” to their trial judges that an alternate remedy should be fashioned if injunction is not possible (i.e. because the claimed subject matter is a cure or vaccine for a life-threatening epedemic, in which case the public good may outweigh other equitable factors). Gee, I’m glad they thought of it first.

  10. 23

    Stepback, a couple of corrections to your post:
    “In response the big business (BB) says we are not paying you anything, so go sue us if you can even afford to.”

    The BB never talks to a little guy, at least in high-tech industry..
    They just plainly ignore your little pathetic existence and all of your valid patents they infringe upon, until of course they are sued in court…

    “I will agree that in the case of a large microchip with millions of circuits, where one of them happens to infringe on a lttle guy’s patent, it may not be fair for the court to enjoin the whole thing.”

    Well, if infringement is not intentional then yes, of course, it is not fair to shut down production..
    But what happens in reality is that big and dishonest corporation deliberatly starts using little guy’s patented technology in their products in full advance knowledge of the existing patent (or patent pending status)
    (The real estate analogy would be trespassing on little guy’s property when there is a clear sign “Private property, Stay off” for everybody to see.)

    This pretty much happened every time some revolutionary high-tech idea was introduced by a little guy, even before EBay (See for example what happens to the idea of 56K modem invented by Townshend, or the Rambus story…)
    They just screamed “Me too !!!!” and started cranking out infringing products…
    Now, after EBay…

  11. 22

    Addendum:

    That said, I will agree that in the case of a large microchip with millions of circuits, where one of them happens to infringe on a lttle guy’s patent, it may not be fair for the court to enjoin the whole thing. However, the court “could” fashion some alternative equitable remedy –like forcing BB to start posting a treble damages bond which grows with each day of continued delay and forfeits over to the little guy if BB fails to prove its position at trial.

    It is the fact that the court refuses to fashion any sort of equitable remedy pending trial which is the evil here.

  12. 21

    So what you are saying Stephen in terms of an analogy is this:

    1. One day a little real estate owner (akin to an independent inventor) wakes up to find a big business trespassing and squatting on his land (akin to infringing a patent).

    2. The little guy says please get off or pay me rent (akin to royalties).

    3. In reponse the big business (BB) says we are not paying you anything, so go sue us if you can even afford to.

    4. And so the little guy scrapes and grovels and manages to raise funds for a lawyer. The little guy does sue. He brings forth evidence showing likelihood of success.

    5. Lo and behold, the court finds that the lttle guy’s deed to the land is likely to be valid and likely to being trespassed on. But instead of enjoining the big trespasser, the court says, “You know, Big Business is a friend of ours. When BB does something bad it is not bad. It is good. It is good for the community that BB should be allowed to do something bad. So we are not going to enjoin BB. You, the little guy should stop whining and get over it. Yes, you have property rights. But the rights of some pigs are more equal than the rights of little squealers like yourself. [The allusion being to George Orwell’s book, Animal Farm.] You are not a real person. You are instead a “troll”. How do we know? Our friends in BB have told us so. We do what they tell us. No trial is needed to see clearly that you are a subhuman troll. All “men” are created equal. However, just as in the past, we hold that some are not really “men”. They are inferiors because of the color of their skin, or their gender, or the fact that BB has labeled tham as “trolls”. So get over it and go on with your little guy’s poor pathetic life. Stop complaining. We are always fair and balanced. Sometimes we are more “balanced” in favor of BB because we are pro-BB, that’s all.”

    And you, Stephen, are OK with that?

    Maybe that sounds fair and balanced in that prison colony down under (Australia), but here in the States it used to be that all men were deemed to be created equal in the eyes of the law. Not any more. Now there is a new color black, it is called trollishness. The courts clearly and happily see this new black. The corporate South has risen again. Abraham Lincoln’s body lies a rottin’ in his grave. Hooray and yipee kie yaeh. [/sarcasm off]

  13. 20

    In my part of the world (Australia), injunctions are, like all equitable remedies, discretionary. So while a patentee may well feel aggreived to find that he or she is not entitled to an automatic injunction, nothing in law preordains this. Same goes for trespass to real property. The simple truth is that property rights are, and always have been, subject to limitations, despite the exclusivity (rhetorically) attached to them. See Robert Gordon’s excellent piece “Paradoxical Property” in Brewer & Staves (eds), “Early Modern Conceptions of Property”, Routledge, 1996, pp. 95-110.

  14. 19

    “Your friends live here Malcolm-in-the-not-so-Middle:
    link to patentfairness.org

    No, they don’t. It’s strange that you would think so, actually, given my straightforward comments in this thread and others.

    Bad patents are a real problem for everybody — big business, small inventors, and the public — no doubt about it. The USPTO is broken and needs to be fixed.

    But I doubt that US patent laws are “abusively litigated” any more than any other laws. Businesses — especially big businesses — who get into the habit of perpetually complaining about “abusive litigation” are nothing more than whining babies. If they can’t take the heat, they should get out of the kitchen. Someone who can take it will replace them.

    Businesses who hire million dollar lobbyists to cry in a congressman’s face about getting sued are simply pathetic. The only thing more pathetic is when a bunch of church ladies and/or senator’s wives get together to whine about violent video games or naughty words on records.

  15. 18

    I am not sure that the categories pro- or anti-patent is helpful analytical, but the terms do make for fun rhetoric, like the term patent troll.
    I think it is best to categorise Justice Breyer’s view as pro-comnpetition. His jurisprudence, as well as Justice Kennedy’s concurrence in eBay, asks us to rethink the competitive norms in intellectual property, a theme that percolates in copyright and trademark law as well.

  16. 16

    “Which do you think serves the common good more, patents without injunction?, or patents with injunction? ”

    I think by definition a patent confers an exclusive right to make/use/sell the invention.

    “Small Inventor Lobby” ??????
    What the heck are you talking about?”

    You know exactly what I’m talking about.

  17. 15

    Malcolm,

    Perhaps I missed something in your comment, maybe I am getting old. I looked for something regarding views on the USSC’s eBay ruling in relation to The Constitution, or35 U.S.C. 154 and 35 U.S.C. 283. Or even something about the cost of patent litigation (which, of course, is not in the same ball park as prosecuting a patent at the PTO).

    It appears you are not a fan of either Big Business or bleeding heart independent inventors, so far so good. But, where do your sympathies lie?, with CAFC’s injunction interpretations?, or with the unsettling USSC eBay ruling? Which do you think serves the common good more, patents without injunction?, or patents with injunction? The Constitution’s framers thought the latter, and they said so.

  18. 14

    Please consider this, for every Big Business that gets taken advantage of but survives nonetheless, mightn’t there be myriad independent inventors who get screwed out of their inventions and wind up bankrupt?

    Uh-oh, it’s time to buy some more kleenex again!

    For the record: I’m absolutely not a fan of giant multinational corporations. However, amongst all the bad things that flow from multinational corporations, the “myriad” (100/year? 1000/year) small inventors who allegedly go bankrupt because they were allegedly “screwed” out of their inventions has got to be near the very bottom of the list of the things that suck about WalMart, MicroSoft, Merck and friends.

    The Small Inventor Lobby has serious issues with its rhetoric and its proposed solutions to the “inequities” that it perceives. Taking the S.I.L. at its word, one expects to find dozens of small inventors shooting heroin in People’s Park or stumbling along with a bottle of Night Train in the back alleys at the edge of town, all the while muttering, “IBM SCREWED ME OVER.”

    Similarly, if one waits long enough, one will surely hear the S.I.L. moaning, “But for the Rasmusson decision, which lowered the enablement standard for anticipation, Little Billy Booboo would have gotten his patent and America would be 1% more technological advanced than it is now. But no! Only a Big Business could afford to pay an attorney to make the successful argument to overcome the Examiner’s rejection. It’s so unfair!!!”

    I’ve said it before and I’ll say it again: people who aren’t wealthy or endowed with corporate assets, tools, and/or connections are ALWAYS at a disadvantage when competing with the wealthier/better endowed.

    Sadly (and I do mean sadly because politically I’m more or less a socialist) there is nothing — NOTHING — remotely unconstitutional about this fact. Cookies crumble that way in America and they always have.

    It’s best for the S.I.L. to stop pretending otherwise if it wants to be taken seriously.

    Hal Wegner’s article is excellent, by the way.

  19. 13

    Alan, in all due respect, I think the discussions are warranted, indeed essential, because, as you so clearly articulated, there is a glaring contrast of problems.

    Please consider this, for every Big Business that gets taken advantage of but survives nonetheless, mightn’t there be myriad independent inventors who get screwed out of their inventions and wind up bankrupt? Who would argue that is consistent with the express words or intent of The Constitution?, or that that is any equitable way “To promote the Progress of Science…”?

    The hope is the many discussions will lead back to the happy equitable balance that the CAFC commendably stood by despite possible ambiguities or imperfections in the patent statutes. It seems the general consensus in the community most skilled in the art is that there was a pronounced failing in the USSC’s eBay ruling because, for example, (i) there is no legislation to support it, and (ii) that ruling was wide of the equitable mark and fought with an inventor’s “right to exclude.”

  20. 12

    Does ALMOST EVERY discussion on this board have to come back to Big Business is screwing the individual inventor vs. Patent Trolls are making it impossible to produce products?

  21. 11

    For clarification, and in all due respect,

    The “Anonymous” (with a cap “A”) submitter is not the same person as the subsequent “anonymous” (with lower case “a”) submitter.

    I, Lenny, submit this post-comment for clarification: I signed my first posted-comment today “Anonymous” with a cap “A”.

  22. 10

    Brendan, agreeing with Alun Palmer, I would add,

    In all due respect, your point is well taken, at least as far as it goes.

    As you also must know, consistent with the words and the intent of Congress’s patent statute, 35 USC 283, district courts and the CAFC never were under any obligation to enforce exclusivity of a patent against principles of equity or the public good.

    Your view doesn’t seem to take that into account, i.e., that the CAFC had already interpreted 35 USC 283 consistent with the “principles of equity” as clearly intended by the word and intent of the statutes legislated by Congress.

    On the other hand,

    “By denigrating a patentee’s ‘exclusive Right,’ the USSC’s eBay decision has taken our patent system one giant leap toward compulsory licensing, akin to giving big business a sovereign’s power of ‘eminent domain’ to misappropriate from an independent inventor, yet there has been no legislation that even suggests compulsory patent licensing.”

    Am I to take it nonetheless that you favor giving Big Business “compulsory licensing” or “eminent domain” power against independent inventors? If so, perhaps you should lobby Congress, or am I mistaken, and there has already been such legislation.

    Please bear in mind that Big Business already has quite the the edge in dealing with independent inventors. Compulsory licensing would give Big Business no reason I can see (except “equity”) to buy an independent’s patent license except after expensive litigation which, typically, independent’s can ill afford.

    Be honest now, do you really trust Big Business to act equitably?

  23. 9

    I have copied the relevant bits of the constitution and the statute below. As I see it, the more specific ‘injunctions in accordance with the principles of equity’ language of 35 USC 283 wins over the ‘right to exclude others’ language of 35 USC 154 on the ground that a more specific clause overrules a more general one, i.e. the remedy is more specific than the grant, but the more specific language of 283 does not appear to be constitutional, as it does not provide the ‘exclusive Right’ of Art 1, Section 8. This is ironic, given the similarity between the constitution and 35 USC 154.

    I don’t beleive that eBay fully discussed this, i.e. either the tension between sections 154 and 283 or whether section 283 was constitutional.

    The Constitution of the United States of America

    We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquillity, provide for the common defense, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.

    Article. I.
    Section 8.
    The Congress shall have Power To lay and collect Taxes, Duties, Imposts and Excises, to pay the Debts and provide for the common Defence and general Welfare of the United States; but all Duties, Imposts and Excises shall be uniform throughout the United States;
    (Clause 8)
    To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

    35 U.S.C. 154 Contents and term of patent; provisional rights.

    (a) IN GENERAL.-

    (1) CONTENTS.-Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.

    35 U.S.C. 283 Injunction.

    The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

  24. 8

    “Am I missing something?”

    I think what you may be missing is the beginning of Art. I, S 8.

    “Congress shall have the power to . . .”

    Congress has the power to grant to Inventors the exclusive to their inventions. But Congress does not have the obligation. If Congress passed no law regarding patents, deciding to grant no inventors any rights in anything they come up with, this would be perfectly Constitutional. Similarly, if Congress passes a law saying that some inventors, at some times, may get the exclusive right to their inventions, that too is Constitutional.

    Section 8 simply grants to Congress the power to do certain things, while other sections limit that power. See, e.g., Bill of Rights. The Constitution did not come up even once in the eBay decision because it didn’t matter. The only relevant issue in eBay was the interpretation of the statute: “The courts . . . may grant injunctions in accordance with the principles of equity.” 35 USC 283. The Supreme Court then reiterated what those “principles of equity” are–specifically, the four-factor injunction test.

  25. 7

    anonymous,

    Doesn’t this strike a problemic note? One can argue that the grant of any patent (independent of the technology or amount of innovation therein) does not “promote the progress of science” because it does not allow use of others to the invention in the patent.

    How would a court by itself determine whether something promoted science, hire experts?

    The framers intended Congress to enact laws to determine what consitutes a discovery and comport with the promotion of science. Congress in turn enacted the patent statutes. It seems to me that the court’s job is to determine 1) whether the patent statutes are constitutional and 2) whether a particular patent is valid/infringed under the patent statutes.

    To be fair, however, I do not recall anyone challenging the patent statutes themselves as unconstitutional…

  26. 6

    In all due respect, if by “court,” when you say,

    “If the court decides that the enforcement of a patent would have an effect opposite of promoting the progress of science and useful arts, then it is under no obligation to grant or enforce exclusivity.”

    you mean a District Court, or the Court of Appeals for the Federal Circuit, then there would be no problem and we’d be in agreement. As you must know, those lower courts never were under any obligation to enforce exclusivity of a patent against the public good.

    The problem, even to a casual observer, is that the USSC’s eBay decision is neither consistent with the letter nor intent of what the framers of The Constitution wrote or meant.

    From its inception in 1982, the Court of Appeals for the Federal Circuit, the CAFC, interpreted and codified the patent injunction issue correctly. In stark contrast to the USSC’s eBay ruling, the CAFC position was solidly founded in The Constitution, i.e., it (the injunction issue) wasn’t “broke” before the USSC’s eBay ruling, but now it is.

  27. 5

    Here’s what you missed:

    The Constitution says:

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    NOT

    “To make hopeful individuals, patent lawyers and corporations rich, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    If the court decides that the enforcement of a patent would have an effect opposite of promoting the progress of science and useful arts, then it is under no obligation to grant or enforce exclusivity.

    There is no problem with acting rationally in accord with the letter and intent of the framers, which is exactly what the court did and exactly what we want them to do.

  28. 4

    P.S.
    If you recall a different Declaration of Independence, you are sadly mistaken.

    Here is what it has always said:
    link to ushistory.org

    “When in the Course of global corporate events it becomes necessary for one corporation to dissolve the political bands which have connected it with humanity and to assume among the supreme powers of the earth, the separate and equal station to which the Laws of Nature and of Nature’s God entitle it, a decent respect to the opinions of mankind requires that the corporation should declare the causes which impel it to the new pardigm shift.

    We hold these truths to be self-evident, that all corporations are created equal, that they are endowed by their Creator with certain unalienable “Rights”, that among these are Profitability, Liberty to do as we please and infringe as we want, and the pursuit of Happiness. — That to secure these rights, Governments are instituted among Corporate interests, …. ”

  29. 3

    “Am I missing something?”

    Of course.
    1. The US SCt. consists essentially of human beings.
    2. On any given day, a member of the human species can act irrationally.
    3. On any given day, a member of the human species can redefine the “meaning” of any one or more of the noises (words) that said member makes.
    3a. Take for example the meaning of the word “men” in the phrase, “All men are created equal”. At different points in time, the august body to which you refer has given different meanings to the noises, “men” and “equal”. Once upon a time, “men” excluded those humanoids whose ethnic background was other than Anglo Saxon. Once upon a time, “men” excluded those humanoids whose gender status was other than male. Once upon a time, “equal” meant that some pigs are more equal than others. (Oops it still does.)
    4. “Exclusive” is just another noise signal whose meaning can be easily bent. “Right” is just another noise signal whose meaning can be easily bent so that some pigs (nontrollish pigs) have more “rights” than others. Simple as that. It’s just a matter of how “right” minded one is is. That is what you are missing.
    5. I miss the good old days when the humanoids on the S.Ct. were whole brained, instead of being “right minded”. But too late now I guess. The corporate state rules. Hail Cesaer. Down with Spartacus. Down with independent inventors. Send in another surge of the Pertrician Guard. All roads lead us back to Rome and to its downfall. All hail to the globalized empire, one harmonization, under a diety, indivisible, with “justice” liberally meted out to all who oppose.

  30. 2

    In all due respect, for what it may be worth, this is the lay “Settled Expectations” opinion of an independent, non-attorney inventor.

    Subject: The Exclusive Right to a Patent Injunction & the USSC eBay Decision.

    In Connolly v. Pension Benefit Guaranty Corp. 457 U.S 1, 222, 106 S.Ct. 1018, 89 L.Ed.2d l66 (1986), The United States Supreme Court held that:

    “… legislation readjusting rights and burdens is not unlawful solely because it upsets otherwise settled expectations.”

    The USSC’s eBay ruling, which, for the most part, denies an independent inventor “the exclusive Right” to his invention, is not unlawful solely because it upsets the inventor’s expectation of being able to enforce his patent with the threat of injunction – the eBay ruling is unlawful because it is in stark contrast to The Constitution, Art. I, §8, Clause 8, which was the uninterrupted basis of this expectation, until the eBay ruling:

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    It takes a Bill passed by Congress and ratified by two thirds of the individual States comprising the United States to amend The Constitution – there has been no such amendment. Our Constitution is crystal clear and unambiguous on “the exclusive Right,” and there is no hint of limitation on the promise of this fundamental patent premise.

    Ultimately, of course, it is up to the USSC to interpret the Constitution. However, remarkably, the eBay ruling does not even reference The Constitution – yet the eBay ruling effectively undermines Article I, §8, Clause 8 with respect to the independent inventor, and that is wide of the mark. The USSC eBay ruling should not stand.

    By denigrating a patentee’s “exclusive Right,” the USSC’s eBay decision has taken our patent system one giant leap toward compulsory licensing, akin to giving big business a sovereign’s power of eminent domain to misappropriate from an independent inventor, yet there has been no legislation that even suggests compulsory patent licensing.

    From its inception in 1982, the Court of Appeals for the Federal Circuit, the CAFC, interpreted and codified the patent injunction issue correctly. In stark contrast to the USSC’s eBay ruling, the CAFC position was solidly founded in The Constitution. <>

    Am I missing something?
    Anonymous.

  31. 1

    Comment from Munich: Spot on, Hal Wegner. As one who witnessed the 1970’s fusion of common law English patent law with civil law German patent law, to create the European patent law model now being adopted throughout the world (except USA) I think it a shame that US domestic patent law has so lost its way recently that patent owners now routinely fail to secure a final injunction. That strikes at the very essence of a law of patents, and will be useful to those working towards the demise of Western economic power. Let’s take on authoritarian cultures, not by military force (except as a last resort) but primarily by soft power, respect for the Rule of Law, and by example; by having a patent law that commmands respect, because it delivers both reasonable legal certainty for the public and fair protection for the inventor-filer. That’s Article 69 of the EPC. And then owners of claims that are valid and infringed will be entitled to the relief that is inherent in a real patent system, namely a permanent injunction.

    Get the patent law right, and the issue whether a judge is anti or pro patent becomes meaningless, because any innovative US company will always be an accused infringer one day and the very next day a sufferer from infringement.

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