The following is the abstract from the new article by Professors Mark Lemley & Mark McKenna’s on (The Problem With) Intellectual Property Scope:
Intellectual property (IP) law doctrines fall into three basic categories: validity, infringement and defenses. Virtually every significant legal doctrine in IP is either about whether the plaintiff has a valid IP right that the law will recognize – validity – about whether what the defendant did violates that right – infringement – or about whether the defendant is somehow privileged to violate that right — defenses.IP regimes tend to enforce a more or less strict separation between these three legal doctrines. They apply different burdens of proof and persuasion to infringement and validity. In many cases they ask different actors to decide one doctrine but not the other. The U.S. Patent and Trademark Office, for example, decides questions of patent and trademark validity but not questions of infringement. Even in court, resolution of one issue is often allocated to a judge while the jury decides a different issue. And even where none of that is true, the nature of IP law is to categorize an argument in order to apply the proper rules for that argument.
The result of this separation is that parties treat IP rights “like a nose of wax, which may be turned and twisted in any direction.” When infringement is at issue, IP owners tout the breadth of their rights, while accused infringers seek to cabin them within narrow bounds. When it comes to validity, however, the parties reverse their position, with IP owners emphasizing the narrowness of their rights in order to avoid having those rights held invalid and accused infringers arguing the reverse.
Because of the separation between validity, infringement, and defenses, it is often possible for a party to successfully argue that an IP right means one thing in one context and something very different in another. And courts won’t necessarily detect the problem because they are thinking of only the precise legal issue before them.
The result is a number of IP doctrines that simply make no sense to an outsider. In patent law, for instance, it is accepted law that there is no “practicing the prior art” defense. In other words, one can be held liable for doing precisely what others had legally done before, even though a patent isn’t supposed to cover things people have already done. In design patent law, one can be held liable for making a design that an “ordinary observer” would find too similar to a patented design, even though the things that make the two look similar – say, the roundness of the wheels on my car – are not things the patentee is entitled to own. In copyright, once a court has concluded that someone has actually copied from the plaintiff, a song will sometimes be deemed infringing because of its similarity to a prior song, even if the similarity is overwhelmingly attributable to unprotectable standard components of the genre. And in trademark, a party can be deemed infringing because its products look to similar to the plaintiffs’ mark and therefore make confusion likely, even if that confusion is likely caused by non-source-designating features of the design.
The culprit is simple, but fundamental: IP regimes largely lack an integrated procedure for deciding the proper extent of an IP right. The proper scope of an IP right is not a matter of natural right or immutable definition. Rather, it is a function of the purposes of the IP regime. But without some way of assessing how broad an IP right is that considers validity, infringement, and defenses together, courts will always be prone to make mistakes in applying any one of the doctrines.
In this article, we suggest that IP regimes need a process for determining the scope of an IP right. Scope is not merely validity, and it is not merely infringement. Rather, it is the range of things the IP right lawfully protects against competition. IP rights that claim too broad a scope tend to be invalid, either because they tread on the rights of those who came before or because they cover things that the law has made a decision not to allow anyone to own. IP rights with narrower scope are valid, but the narrowness of that scope should be reflected in the determination of what actions do and do not infringe that right. And whatever the doctrinal label, we should not allow an IP owner to capture something that is not within the legitimate scope of her right. Nor should it follow from the fact that some uses are outside the lawful scope of an IP owner’s right that the IP right itself is invalid and cannot be asserted against anyone. Only by evaluating scope in a single, integrated proceeding can courts avoid the nose of wax problem that has grown endemic in IP law. Scope is, quite simply, the fundamental question that underlies everything else in IP law, but which courts rarely think about expressly.
Seems to just meander about with lots of conclusory language.
It would’t be Lemley otherwise.
There’s a simple reason that there’s no “practicing the prior art” defense — because there are two. One is called “invalidity,” one is called “noninfringement.” They have to be applied separately, precisely. Only a really sloppy thinker with little understanding of the real world, who’s trying to upset the system and create chaos, in order to get a soapbox, would argue otherwise.
If the prior art is truly prior art, then what’s it prior art to? If it’s prior art to the the independent claim, then that independent claim is invalid, and you have to look at validity and infringement of the dependent claims.
If the accused device does not infringe the independent claim, then the case is over, and you don’t have to look at the dependent claims.
They play out totally differently. Only a nincompoop would not recognize that they have to be kept separate.
Doesn’t seem to be anything here that you don’t encounter in every patent suit: The patentee argues one interpretation to ensnare the accused device, and a different interpretation to avoid being ensnared, in turn, by the prior art.
I was struck by an odd statement in the abstract. The statement that there is no “practicing the prior art defense” to patent infringement makes no sense and serves no purpose but to show off your doctrinal purity, and even still, it’s wrong. If invalidity is a defense to patent infringement, practicing the prior art is a defense to patent infringement: The plaintiff pleads that your device equals his claims. You prove that your device equals the prior art (and nothing in addition). You have thus proven that the patentee’s claims equal the prior art. (It’s just an instance of the transitive property.) How is that not a defense to infringement, if invalidity it a defense to infringement. And 35 USC § 282 makes invalidity a defense to patent infringement.
The case law invoking this maxim actually says “Questions of obviousness in light of the prior art go to validity of the claims, not to whether an accused device infringes.” That does not mean that practicing the prior art is not a defense to infringement. More precisely, it does not establish that the accused device does not match the claim language. To the contrary, it takes as a given (a pleaded fact) that the accused device matches the claim language, and takes this a proof that the claim language matches the prior art.
So, the “practicing the prior art defense” to patent infringement is merely a shorthand way of saying you have an invalidity defense to patent infringement, and that defense is that your device consists of something in the prior art, and the plaintiff has already plead that their claims cover your device.
Jarring misstatements like this make me doubt the value of the article.
K. D. Crockett, Lemley is also the source of the divided infringement rule of BMC Resources. Pulled it out of thin air, just as did Rader. No citation to authority.
As well, in his recent article on jury trials, he show no familiarity at all with the multitude of Supreme Court public rights cases on the issue he was discussing. He was all but advocating ending jury trials for patent invalidity. To do so he had to ignore controlling Supreme Court authority to the contrary.
Lemley is far too much of an advocate to be trusted.
I still feel compelled to read all 97 pages of the article to see if he proposes useful solutions to the problem he discovered that we were all overlooking for a few decades.
Rejection of the the “practicing the prior art defense” as a defense to patent infringement was actually pro-patent. Because invalidity and non-infringement have very different burdens of proof, and this was sneaking an invalidity defense of anticipation into an infringement analysis.
There are at least two current doctrines that invite prior art issues into the infringement analysis. In claim construction, claims can be (but need not be) construed to preserve validity. Smith v. Snow, 294 U.S. 1, 14 (1935). Also, DOE is limited by the prior art. Wilson Sporting Goods (if the scope of equivalence needed to cover the accused device would result in a claim that ensnares the prior art, that scope is impermissible).
So, I don’t think the practicing the prior art defense was ever rejected. Just in some cases, the judges got confused as said something loosely, then like a house of cards, flimsy logic got topped with more flimsy logic, till a entire flimsy construction appeared.
Phillips v. AWH Corp. 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc):
“While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction. See Nazomi Communications, 403 F.3d at 1368-69. Instead, we have limited the maxim to cases in which “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Liebel-Flarsheim, 358 F.3d at 911; see also Generation II Orthotics, Inc. v. Medical Tech., Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001) (“Claims can only be construed to preserve their validity where the proposed claim construction is ‘practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000) (“having concluded that the amended claim is susceptible [**66] of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434 (Fed. Cir. 1988) (rejecting argument that limitations should be added to claims to preserve the validity of the claims). In such cases, we have looked to whether it is reasonable to infer that the PTO would not have issued an invalid patent, and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent’s validity.
As indicated in Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1337 (Fed. Cir. 2011): “A “practicing the prior art” defense typically refers to the situation where an accused infringer compares the accused infringing behavior to the prior art in an attempt to prove that its conduct is either noninfringing or the patent is invalid as anticipated because the accused conduct is simply “practicing the prior art.” In Tate [Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357 (Fed. Cir. 2002)], this court explained that accused infringers “are not free to flout the requirement [**19] of proving invalidity by clear and convincing evidence by asserting a ‘practicing the prior art’ defense to literal infringement under the less stringent preponderance of evidence standard.” Id. at 1367. Instead “[a]nticipation requires a showing that each element of the claim at issue, properly construed, is found in a single prior art reference. ‘It is the presence of the prior art and its relationship to the claim language that matters for invalidity.'” Zenith Elecs. Corp. v. PDI Commun. Sys., Inc., 522 F.3d 1348, 1363 (Fed. Cir. 2008) (quoting Tate, 279 F.3d at 1367). Here, as explained above, Amazon’s experts explained how each of the claim elements is disclosed by Amazon’s 1995 System. Amazon adequately satisfied its burden to show by clear and convincing evidence that each limitation of claims 1, 3, 5, 7, and 8 was found in its 1995 System and thus, these claims are invalid as anticipated.”
Paul:
When establishing freedom to operate, is there anything wrong with saying “If I do what is in a 100 year old prior art, and nothing more, then no currently in-force patent can have a valid claim that can stop me.”?
For example, if I want to eat soup with a sterling silver spoon tomorrow, I do my research and find prior art with people eating soup with silver spoons, in the nineteenth century. So I buy an antique silver spoon this afternoon, and use it tomorrow to eat soup. I don’t eat cereal, steak, grapefruit or mashed potatoes, I just eat soup. The spoon is assayed, and it is sterling silver. I get sued by Scrag, Inc. for there patent that covers a method of eating soup with a spoon.
Don’t I have a good defense to infringement? If Scrag, Inc. proves I infringe (meet the claim language), haven’t they also proven anticipation, and thus have a defense to infringement?
Sounds great for a “freedom to operate” search and opinion, but that is not the same as defending an actual patent suit. There you will seem likely to have to actually prove up the anticipatory prior art you claim to be practicing by clear and convincing evidence [unless all of it is fully admitted by the patent owner], [and convince the patent owner that that is really all that you are doing]. See the Fed. Cir. decisions I posted above.
P.S. Now that many D.C.s are handling out attorney fee sanctions thanks to the Sup. Ct. Octane decision, a defendant that promptly enters into settlement discussions in which their strong “practicing the prior art” prior art defense is clearly presented to the patent owner’s attorneys now has a better chance of convincing them to settle cheap and drop their suit. After being put on notice of strong prior art, their proceeding further now risks attorney fee sanctions unless they have a basis for distinguishing it.
This seems like a stretch. Scope of an IP right is relative and only becomes clearer with iterative disputes. For example, a patent claim’s scope is partly determined in an ex parte examination relative to certain designated prior art references. The scope of that claim becomes clearer once it is issued and subject of another dispute, such as an infringement litigation where the claims are perhaps compared to further prior art or an accused infringer’s device. If the claim is valid, such claim may be the subject of further disputes in which its scope relative to other products is determined. How is it possible to determine the full scope of a patent claim in a single proceeding, particularly without parading dozens of examples and asking, does this claim cover this example? Of course the patentee will always answer yes. Who will be tasked with saying no?
downward, exactly right. That is why we should never discuss scope in the abstract.
Judges also find it annoying when asked to do this during claim construction. They want to know why the issue is important, and issued typically is important either for validity are for infringement.
To the extent that the Federal Circuit basically says that claim construction can be decided in the abstract, they are not helping.
Lemley does not respond to substantive criticism of his vanity published papers. Therefore, Lemley has demonstrated that he is not a scholar and his papers are not scholarship but vanity musings to push his personal monetary agenda.
Night – If you publish a substantive response, I’m confident that Prof. Lemley will respond as I’ve personally seen him do many times. (To be clear, I don’t mean a blog comment, but actually write a response well done enough to be published).
I think he knows what the criticisms are and has not addressed them.
I think there many reasonable questions that he has not addressed.
Part and parcel of the “issue” is that “well enough to be published” is rather meaningless.
There is very much an over-abundance of “published” material that is pure and utter C R P.
Night Writer has dubbed this “vanity press,” and there be a sharp truth to that accusation that should be abundantly clear. For example, the Besson inflated numbers and the “Tr011” rhetoric still to this day is trotted out because it was “published” somewhere.
By the by, any update (yet) on the Executive branch response to Ron Katznelson’s anti-Tr011 propaganda busting action?
Not to agree with any of the generalities or platitudes, but is not the fact that IPR parties ARE quickly forced to argue for and obtain a defined BRI claim scope vis a vis the cited prior art is one of the reasons some trial lawyers seem to dislike it so much?
Paul, setting aside the fact that BRI is construction chosen to read on the prior art, and not to avoid it if there is an alternative consistent with the specification,
BRI is not the same as the construction in court. That means the validity case being decided in the PTO is not the same validity case being decided in court even before considering burdens of proof.
Any observer of even modest ability to ponder reality would thing that the architects of this system were not thinking clearly if the PTO was “really” intended to be an “alternative” forum for litigating the “same” issues of validity, but at a lower cost to all parties.
The authors: IP regimes need a process for determining the scope of an IP right. Scope is not merely validity, and it is not merely infringement. Rather, it is the range of things the IP right lawfully protects against competition. … And whatever the doctrinal label, we should not allow an IP owner to capture something that is not within the legitimate scope of her right. Nor should it follow from the fact that some uses are outside the lawful scope of an IP owner’s right that the IP right itself is invalid and cannot be asserted against anyone.
Before I dive into the article, does the article provide details about this desired “process”?
In theory, the “process” we have now is supposed to accomplish all the listed goals, i.e., the process of requiring applicant to define infringing acts with a “patent claim” which is then examined for excessive scope by the PTO, according to a set of guidelines, and the applicants is given the opportunity to adjust the scope of the claim.
Obviously the existing process could be improved mightily be requiring the PTO and applicants to be more clear about what activities would infringe the examined claim and what activities do not infringe the examined claim. That clarity could be achieved — in theory — by requiring both the PTO and applicants to be more direct and forthright about forseeable issues. For instance, applicants could be required to (1) agree on the closest prior art known to both applicants and the Office, and then make a series of admissions on the record about numerous specific types of modifications that (i) would and (ii) would not qualify as infringement; and (2) agree on closest non-prior art and/or existing products and describe why those products do and/or do not infringe the claims. Yes, that can be asking a lot but it shouldn’t dissuade those applicants who are expecting quite a lot (tens of millions or hundreds of millions of dollars) from their granted patent.
BY THE PTO?
MM, one really needs an adversarial system with people that have a lot of money at stake depending on the outcome for the system to work properly.
The PTO cannot decide hypothetical cases. Nor can the courts.
The PTO cannot decide hypothetical cases. Nor can the courts.
“Deciding hypothetical cases” is something that the PTO, the courts and applicants all do regularly. What I’m suggesting here is to introduce formal transparency about those decisions into the system.
There is nothing — absolutely nothing — that would prevent the PTO from asking an applicant, e.g., whether someone looking at data using method X and thinking about correlation Y would infringe the claim according to the applicants understanding of the claim term (along with an explanation of the answer). Having an answer to the question on the record will save everyone money and time (with the possible exception of a patentee hoping to threaten people into taking a license to an ineligible claim — and why should we care about such patentee’s think?).
Likewise with questions of infringement. Applicant thinks the Examiner is interpreting the claim too broadly? Well, then the applicant would surely be happy to answer the a list of questions aimed at determining what exactly falls within the scope of the claim and what doesn’t, with specific reference to some real world practical examples in the prior art and in the non-prior-art.
In short: make it more difficult to hide the ball and get on the record the applicants’ beliefs about what the claims means so that the applicant can’t later pretend that “nobody knows.” Surely the applicant knows what the claims mean because the applicant is (in theory) the inventor.
Well, then the applicant would surely be happy to answer the a list of questions aimed at determining what exactly falls within the scope of the claim and what doesn’t, with specific reference to some real world practical examples in the prior art and in the non-prior-art.
When was the last time you prosecuted a patent application? You are asking an Examiner to seriously think about the claim language. You are also asking the Examiner to develop a number of hypothetical embodiments not even contemplated by the inventor. Then you are asking the asking the pull this together and ask insightful questions as to the scope of the claims. Good luck with that.
Today, it is extremely rare for an Examiner to put an on-the-record claim construction of claim terms without first being asked for one. Forget asking the Examiner to substantially increase his/her workload, you think the Examiner is even capable of doing what you are asking?
In short: make it more difficult to hide the ball and get on the record the applicants’ beliefs about what the claims means so that the applicant can’t later pretend that “nobody knows.”
Examiners can do that already by making their claim constructions on the record. If Applicants want to disagree, they can also put that on the record as well. There is a concept called prosecution history estoppel that is very effective in achieving what you are looking for. However, it works best when the Examiner takes the initiative with on-the-record claim constructions — not bloody likely based upon my decades of experience in dealing with the USPTO.
sOmebody around here floated the suggestion (quite awhile back now) of examiners doing exactly that.
As I recall, the usual examiner-commentators p00h-p00hed my idea and would have none of it.
Maybe Random and 6 have changed their tune…
Well, MM, the PTO could do something like what you propose right after filing. Plug the claims into an AI-controlled automatic prior art search engine. The automatic search results could be given to the applicant so that he might consider clarifying the claims. Unless the claims are modified, the search could be used during examination by the examiner.
The process could be repeated automatically upon every amendment.
I think this will help eliminate bias by the examiner in his search and would better reveal prior art that the examiner would never have found unaided by a “programmed computer.”
I think that you need a pizza for that…
😉
anon, yeah, I hope MM got the irony of it all.
The result is a number of IP doctrines that simply make no sense to an outsider. In patent law, for instance, it is accepted law that there is no “practicing the prior art” defense.
Professor Crouch addressed this 8 years ago:
link to patentlyo.com
At first glance, this decision might appear in direct conflict with numerous Supreme Court and Federal Circuit opinions stemming from the 1884 Ohio Circuit Court statement: “That which infringes if later, anticipates if earlier.” Peters v. Active Mfg., 21 F. 319 (W.D.Ohio 1884) (affirmed and quoted in 129 U.S. 530 (1889)). That initial notion, however, can be pushed aside by understanding that the CAFC’s problem with the pithy maxim is that it serves as a poor rule of evidence. The court has established a specific element by element procedure for determining anticipation by a clear and convincing standard. When those standards are applied the maxim will be upheld.
That is validity, Mr. 112. Scope is about infringement as well.
And your point is relevant to my comment how?
There is a limited “practicing the prior art” defense in the context of assignor estoppel, where even though the defendant is estopped from challenging validity, he can raise as a defense to an infringement claim that he is simply “practicing the prior art.”
Actually, the phrase “practicing the prior art” is misleading. The real question isn’t whether you are “practicing the prior art,” but are you “practicing only the prior art”?
If you are practicing only the prior art, then if the claims cover what your activities, then the claims also cover the prior art — hence invalidity of the claims. However, consider the following hypothetical claim of:
A method comprising the steps of X, Y, Z, and NN.
The prior art is the steps of X, Y, and Z.
You are practicing, X, Y, Z, and NN. While you may be practicing the prior art, you are not practicing ONLY the prior art. Instead, you are adding “NN,” which infringes when combined with X, Y, and Z. Without reading the article, I can only assume that the authors do not appreciate this point.
Throw in the distinction of the claim as a whole incorporating the no mere aggregation doctrine, and you have an excellent point.
“Only by evaluating scope in a single, integrated proceeding can courts avoid the nose of wax problem that has grown endemic in IP law.”
Well, I agree. But this is essentially an argument that we need to confine validity to the context of infringement proceedings where both validity and infringement are to be resolved in one forum. The nose of wax problem somewhat disappears. (Europeans often comment here that is a major problem in Europe where validity is decided in the patent office and infringement in courts. Major problem.)
We also need to adopt an additional test for infringement, perhaps as a defense. Since the Supreme Court has often said that one is not entitled to a scope beyond what one discloses and equivalents, a defense of lack of infringement because what one is doing is not an equivalent of what one discloses. Graver Tank cited Westinghouse for this proposition. Lack of infringement is also a defense in 282.
I think that the growing nose of wax problem is quite something else, and works in the exact opposite sense that Mr. Lemley apparently tilts at.
It almost sounds like he is attempting to “occupy” the term and use it (too) against patent holders.
Too late
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