In a new essay for the Patently-O Patent Law Journal, Donald Chisum considers the "invention priority principle" and its role in the written description analysis.
There may be a solution: application of an established patent law priority principle. The principle focuses on a specific embodiment of a generically claimed invention as a constructive reduction to practice, that is, as a completion of the inventive process. Adopting this solution would preserve the written description of the invention's (WDIs) independence and applicability to original claims but would remove WDI as a standard for assessing the scope of a patent claim. WDI would continue to govern whether, at the time an applicant files an application, he or she has completed the inventive process, that is, "possesses" the invention. But only enablement would govern how broadly the applicant is entitled to claim that invention. It may be possible to implement this priority principle interpretation of Ariad without contradicting its clear holdings.
Cite as Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72.
Following on the heels of the Federal Circuit en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., Professor Kevin Collins asks "What next?"
The nine-judge majority reaffirms that the written description requirement applies to original claims and that its scope and purpose are to be determined by examining the relevant Federal Circuit precedent. Indeed, but for the fact that it removes the uncertainty caused by the vociferous dissents in earlier written description opinions, the en banc opinion in Ariad could readily be framed as a non-event in the evolution of the written description requirement. However, the importance of removing the uncertainty about the existence of a written description requirement as applied to original claims should not be lightly dismissed. Before Ariad, the uncertainty channeled much of the scholarly conversation about the written description doctrine into a binary debate, pitting those who it applied to original claims versus those who believed that it did not. After Ariad, the stage is now set for greater participation in more nuanced conversations about the role that the written description requirement does and should play in curtailing patent protection. Ariad may end one facet of the debate over written description, but it would be a lost opportunity if Ariad were interpreted to end the debate over written description more broadly and cut off these more nuanced conversations.
In this short (but nuanced) essay, Professor Collins suggests that the next steps in patent law scholarship should adopt a "trans-doctrinal approach" that reaches the broader purposes and limitations of the law rather than being confined to doctrinal silos. The essay suggests that this holistic approach may also be helpful in explaining a perception that patent law varies greatly according to the area of technology. [Download Collins.Ariad]
Cite as Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24.
Etan Chatlynne reports post-KSR patent validity decisions with a special focus on the presumption of validity and the clear and convincing standard for rebutting that presumption. He finds that the presumption and evidentiary standard did not affect thirty-eight of forty-five (84%) Federal Circuit invalidity determinations made between April 2008 and June 2009. The standards may have affected the remaining seven of forty-five (16%) determinations. [Download Chatlynne.PresumptionofValidity.Final]
Etan Chatlynne, Investigating Patent Law’s Presumption of Validity—An Empirical Analysis, 2010 Patently-O Patent L.J. 37.
Michael Kasdan and Joseph Casino discuss recent shifts in reasonable royalty jurisprudence with a particular focus on the recent cases of Cornell, Lucent, and Lansa. Together, these decisions "indicate an emerging trend to more carefully scrutinize the evidentiary and economic basis of reasonable royalty-based patent damages awards in the setting of the appropriate royalty base, the application of the entire market value rule, and the calculation of the appropriate royalty rate." [Download Kasdan.Casino.Damages]
Cite as Michael Kasdan and Joseph Casino, Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards, 2010 Patently-O Patent L.J. 24.
Dennis Crouch, Broadening Federal Circuit Jurisprudence: Moving Beyond Federal Circuit Patent Cases, 2010 PATENTLY-O PATENT LAW JOURNAL 19 (2010).
Abstract: Federal Circuit patent jurisprudence has typically focused on Federal Circuit law and Federal Circuit precedent. However, recent Supreme Court decisions such as eBay v. MercExchange, MedImmune v. Genentech, MGM v. Grokster, and KSR Intl. v. Teleflex cases have challenged that default position. These cases represent a directive from the Supreme Court that the interpretation of patent law doctrine requires a consideration of history and doctrines that arise from other areas of law. In this essay, I examine the recent Federal Circuit decision of SEB v. Montgomery Ward and consider whether that case represents a shift in Federal Circuit jurisprudence toward an increased influence of non-patent considerations when deciding patent cases and patent issues.
Edward Reines and Nathan Greenblatt have returned with an extension of their 2009 article on the proposed right of interlocutory appeals of claim construction. This new article considers the impact of the recent Supreme Court decision of Mohawk Industries, Inc. v. Carpenter as well as proposed modifications to the Patent Reform Act of 2009. [Download Reines.2010]
Paul Cole, Patentability of Computer Software As Such, 2008 Patently-O Patent L.J. 1. [Download six-page article.pdf]
[PDF Version] Mark R. Patterson, Reestablishing the Doctrine of Patent Exhaustion, 2007 Patently-O Patent L.J. 38, https://patentlyo.com/lawjournal.
By, Arti K. Rai [PDF Version]
Joshua D. Sarnoff, BIO v. DC and the New Need to Eliminate Federal Patent Law Preemption of State and Local Price and Product Regulation, 2007 Patently-O Patent L.J. 30, https://patentlyo.com/lawjournal/2007/08/bio-v-dc-and-th.html. [Download Sarnoff.BIO.pdf ]
John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007 Patently-O Patent L.J. 21. [Essay – Duffy.BPAI.pdf]
Joseph Casino and Michael Kasdan [PDF VERSION] Preferred Citation: Joseph Casino and Michael Kasdan, In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal, 2007 Patently-O Patent L.J. 1, https://patentlyo.com/lawjournal/2007/05/in_re_seagate_t.html
Patently-O In-Deep is the code name for the new Patent Law Journal. Please contact me if you are interested in becoming an editor or author: PatentLawJournal@gmail.com