Patently-O TidBits

  • Amgen v. Hoechst: Amgen has filed its petition for certiorari asking for a review of de novo appellate claim construction. The money quote:

“Construction of patent claims depends on technological mastery and is therefore, like the inquiry into the reliability of scientific testimony under Daubert, 509 U.S. 579 (1993), something for which trial courts are uniquely suited and owed special deference. The Federal Circuit’s simplistic syllogism – if an issue is for the court, it must be subject to complete de novo review on appeal – flies in the face of Rule 52(a) and is belied by well-established practice in patent and other areas of the law in which the factual determinations undergirding a court’s legal pronouncement are reviewed for clear error.”

Amgen follows the Supreme Court’s lead in verbally trashing CAFC jurisprudence.  It is one thing for Justice Scalia to shout gobbledygook — quite another coming from counsel asking for a hearing.

  • Professor Isaacs: Patents are not property, they are federal entitlements not covered by the Takings Clause of the Fifth Amendment. [LINK]
  • Personal: Rent my apartment in Brookline MA…[LINK]

37 thoughts on “Patently-O TidBits

  1. 37

    “Whoever wrote that passage from James v. Campbell was pulling that barely comprehensible mishmash out of his butt.”

    Written by Justice Bradley for a unanimous court. One justice did dissent in part, but his concern was directed to a different issue having nothing to do with the quoted section from the opinion. In fact, what the dissent said is interesting because it discussed why a specific patent should be upheld.

    By the way, just where did you come up with the word “own”? The quote speaks only to whether or not the government is empowered by Clause 8 to reserve a license unto itself.

    You have obviously consumed too many “moonies” as you sit naked at your keyboard.

  2. 36

    Slonecker says “I have great difficulty reconciling the [language James v. Campbell 1881] with advocacy that a patent arises from the government’s benevolence.”

    And indeed you should because the quoted section from James v. Campbell contradicts the literal text of the Constitution.

    “Clause 8. The Congress shall have Power *** 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.”

    At some point, the Framers have to be given some credit. Saying that Congress “shall have a Power” is plainly different from saying that citizens have an inalienable right to exclusively own their “inventions” for “limited times.” Whoever wrote that passage from James v. Campbell was pulling that barely comprehensible mishmash out of his butt.

  3. 35

    Mr. Harrison:

    “[The]reasoning does seem to flow naturally from the jurisprudence of Mathews v. Eldridge and subsequent benefits cases.”

    This is of course possible, but then again it seems to me the reasoning has as its underlying premise that patents are entitlements bestowed benevolently by government in the furtherence of what Congress deems to be good social policy.

    Against this backdrop is James v. Campbell, 104 U.S. 356 (1881). Particulary noteworthy in my view is the part of the decision that states:

    “The Constitution gives to Congress power ‘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,’ which could not be effected if the government had a reserved right to publish such writings or to use such inventions without the consent of the owner…The United States has no such prerogative as that which is claimed by the sovereigns of England, by which it can reserve to itself, either expressly or by implication, a superior dominion and use in that which it grants by letters-patent to those who entitle themselves to such grants. The government of the United States, as well as the citizen, is subject to the Constitution; and when it grants a patent the grantee is entitled to it as a matter of right, and does not receive it, as was originally supposed to be the case in England, as a matter of grace and favor.” p. 358

    I have great difficulty reconciling the above quote with advocacy that a patent arises from the government’s benevolence.

    Importantly, I do not call attention to James v. Campbell as a case on “all fours” with Zoltek. I mention it only to point out that in 1881 the grant of a patent was certainly not viewed to be an act of benevolence. I am not aware of anything transpiring since then that compells a different view.

  4. 34

    ‘I assume everyone here is sitting naked at their keyboards, at least from the waist down.’

    LOL. I think the topic of sticky formulations is being discussed in another thread, Malcolm.

  5. 33

    “Here in Berkeley, you hardly ever hear Mr. or Ms. I should remember that this is not the norm elsewhere.”

    I assume everyone here is sitting naked at their keyboards, at least from the waist down.

  6. 32

    Lest there be any doubt concerning just how incomprehensible statutory and case law is concerning inventions of “interest” to the government, one need go no further than compare and contrast Chapter 17 to Title 35 with Section 1498 to Title 28.

    Having dealt intimately with this subject for many, many years, how nice it would be for a court to finally stand up and say “We give up. Statutory drafting and jurisprudence to date personify the rule of GIGO. We are going to buck tradition and decide this matter with a clean slate.” Of course, the chances of that happening are about the same as the Tooth Fairy giving me money for my dentures.

  7. 31

    BTW, Mr. Slonecker, I apologize for the infomality. Here in Berkeley, you hardly ever hear Mr. or Ms. I should remember that this is not the norm elsewhere.

    Mr. Dhuey

  8. 30

    As a mere patent agent, I wonder why no-one mentions that the statute declares patents to be property (35 USC 261)?

  9. 29

    Professor Isaacs:

    Thank you for responding – and I hope that you did not take offense to any of my comments (none was certainly intended). With respect to the topic of “consideration,” Michael’s post about how claims against the USG for trade secret misappropriation is interesting. My comment about the consideration “paid” by an inventor in order to obtain a patent referred to the fact that one must disclose their invention to the public in order to obtain a patent. Essentially, an inventor must give up their trade secret rights in exchange for the patent. Yet, if patents are not the type of property subject to the Takings Clause, the USG is free to “take” an inventor’s patent rights but cannot misappropriate someone’s trade secrets. It seems to create a curious conundrum if patent rights are not subject to the Takings Clause, while trade secret rights are. I believe that the court in Phillip Morris v. Reilly (312 F.3d 24 – 1st Cir. 2002) held that trade secrets are property protected by the Takings Clause. Perhaps an interesting angle to the debate.

  10. 28

    First, I’m pleased to see that my article has inspired further conversation on the topic of patents as property.

    Second, my article has been accepted for publication by George Mason Law Review. (Interestingly, I have not been able to locate any publications by Mr. Slonecker vetted by anyone, much less by any respected scholarly journal.)

    Third, I thank Mr. Harrison for taking the time to carefully review my article, and correct the misimpression that he accidentally created in his first post. (Whereas it is clear that “anon” at 3:25am has not read my article, and misunderstands my thesis.)

    Fourth, given both Mr. Slonecker’s offensive tone and his ad hominem attacks (see “mentalbate”), there would be no possibility of engaging in a professional, polite, substantive discussion with him. It is a shame, because a respectful airing of different viewpoints is often mutually beneficial. For instance, MJM’s point about “consideration” is certainly an interesting one that I only had time to address in passing in my current article.

    But a correction of Mr. Slonecker’s misstatement is required. He describes me as someone in academia having “no substantive experience representing clients having significant business interests.” As indicated in my biography (conveniently posted by Mr. Slonecker), I practiced intellectual property law at two major law firms for almost seven years — during which time I repeatedly represented such clients as Pfizer, Johnson & Johnson, and Teva, among numerous others. Last time I checked, seven years was considered substantive experience, and those major corporations have significant business interests.

    Finally, in reference to the critcism of (heaven forfend!) discussing “the public good” and “social policy”, I’ll simply note that the establishment and distribution of intellectual property rights do indeed have consequences beyond providing encouragement (whether to a lesser or greater extent) to inventors. Regardless of which rights one espuses should exist, and how those rights should be distributed, it is incumbent to recognize and value seriously the associated costs as well as the benefits of those choices. Dismissing out-of-hand some of the potential societal effects — based solely on an argument that “patents are property, period” — is an incomplete and non-scholarly analysis.

  11. 27


    USG can sink a patent case citing some national security concerns.

    Remember Crater vs. Lucent ?

    link to

    And trade secrets just don’t apply to many types of inventions.

    For example, after looking once at the Crater Coupler anybody can make the same.
    Which means you can either try to hide it from the world in your garage or you need a strong patent protection. Period.

  12. 26

    In the realm of USG contracting the following is the almost universal scenario:

    Patentee sends letter to contractor saying “You are infringing my patent”.

    Contractor sends letter to patentee saying “Pound sand, weasel. Go take it up with the USG ‘cuz it ain’t my problem.”

    Patentee send letter to USG saying “My patent is being infringed by the work being done under your contract with the contractor.”

    USG replies “So sue me. I will consign your claim to a “black hole” where it will languish for years as an administrative claim.”

    Patentee send letter saying “Here is my claim.”

    USG replies “Got it. We will get back to you sometime in the next decade of so. Hopefully, by then you will be under Chapter 11.”

    Amazingly, if the patentee also had a trade secret and had instead sent a letter telling either the contractor or the USG “You are using my trade secret without my authorization”, the internal response by both the contractor and the USG is “Uh-oh, we have a real problem!”

  13. 25

    I stand corrected, but in some ways that makes the constant reference to his “letter” even less persuasive on just what the patent and copyright system is all about.

    BTW, was he in France on business or just taking a cruise?

    To MJM:

    Nice pickup on the distinction I was attempting to draw. Many who are intent of changing the system seem to be coming from the perspective of consumers in matters such as pharmaceuticals, and not from the perspective of promoting the progress of the sciences and useful arts.

    To Mr. Dhuey:

    My concern is not about yet another missive from academia, but that academia is attempting to insinuate its views even more and more in a debate where there are few presentations for the “rest of the story”, as Paul Harvey would say. I read time and time again their testimony before Congress raising the hue and cry for reform. I rarely read, however, contrary views.

    It was not that long ago that Walker on Patents, Deller’s Walker on Patents, and Chisum were the primary sources for objective analyses on the law. I have noted less and less reliance on their works, and more on those of academics. I know it is a crude way to put it, but to me the former devoted their professional careers to explicate the law, and the latter to enlarge their CVs.

    It is fair to say that no body of law should be cast in stone, but I think it is also fair to say that any such stone tablets should not be consigned to a scrap heap.

    To All:

    Zoltek, for which a cert petition is currently pending, is troubling to me for several reasons, not the least of which is the characterization that 1498 represents a waiver of sovereign immunity, and not a jurisdictional statute. This raises a whole host of ancillary questions, not the least of which is “What about rights not explicity covered by the terms of 1498”? How this question is answered has strategic importance for litigation by and against those who contract with the USG under the ASPA and with foreign governments under the auspices of the FMS provisions of the AECA. Using the latter as an example, is a procurement of goods by the USG, which goods are then sold by the USG to a foreign government, truly a transaction “by or for the USG” under 1498? This is not an academic question. It is one that confronts patentees and holders of copyright daily, and the economic ramifications of how that question is answered is anything but insignificant.

  14. 24

    If the Supreme Court grants cert. in Zoltek v. United States and holds patents are not subject to the Fifth Amendment’s Taking Clause, inventors will be turned off from patents. Currently, the Government can hire a contractor who ends up stealing another’s patented invention without having to pay for the use of that patented invention. If the U.S. Supreme Court allows this conduct to continue (as the CAFC allowed) no one will patent inventions useful to the government in fear of never being compensated for their hard work and research.

    We should hold the U.S. government to a higher standard than private infringers. Hopefully the Supreme Court will see the importance of protecting patents from the government’s takings and reverse Zoltek v. United States.

    For a more in-depth analysis on this topic please see my comment titled: Why Bother Calling Patents Property? The Government’s Path to License Any Patent and Maybe Pay for it, available at link to

  15. 23

    “While this probably helps your argument, it severely undermines your credibility: Thomas Jefferson was not a voice, and had no vote, at the Constitutional Convention. He was in France at the time.”

    He phoned his vote in. Duh!

  16. 21

    I read part of an old law school coursebook on IP law (forget the name, but it was one of those ugly slate blue books from the late 80s). In it I found a discussion of the Federal Circuit’s creation and how this indicated the desire of Congress to lower the patentability standard and thus promote research. The text also stated that the creation of the Federal Circuit meant that the Supreme Court would “rarely, if ever” take on another patent case. Well, that certainly has changed in the last 5-10 years, and begs the question: why?

    As for Michael’s comment about patents existing only to promote the “social good”, I think that you can still hold that view without calling for the need to reform our patent laws. To me, the “social good” from patents is explicitly stated in the Constitution: to promote the progress of science and useful arts. “The patent system, which is rooted in the United States Constitution, serves a very positive function in our system of competition, i.e., the encouragement of investment based risk.” Loctite Corp. v. Ultraseal Ltd. (Fed. Cir. 1985).

    Perhaps one of the best commentaries on the “social good” resulting from a strong, and pro-inventor patent system is from Justice Story:

    “The Constitution of the United States, in giving authority to Congress to grant such patents for a limited period, declares the object to be to promote the progress of science and useful arts, an object as truly national, and meritorious, and well founded in public policy, as any which can possibly be within the scope of national protection. Hence it has always been the course of the American courts, (and it has latterly become that of the English courts also,) to construe these patents fairly and liberally, and not to subject them to any over-nice and critical refinements. The object is to ascertain, what, from the fair sense of the words of the specification, is the nature and extent of the invention claimed by the party; and when the nature and extent of that claim are apparent, not to fritter away his rights upon formal or subtle objections of a purely technical character.” Ames v. Howard (1833)

    Too bad that many academics and judges don’t seem to recall Justice Story’s advice.

  17. 20

    What I’m suggesting, Michael, is not to get any more worked about that paper than if it had been a very long post here on Patently-O. The formality of being published in a journal is actually pretty significant, as I doubt very much that a court would consider it (or even find it) unless that occurs.

  18. 19

    Mr. Slonecker:

    “[Thomas Jefferson] was but one voice and one vote at the Constitutional Convention.”

    While this probably helps your argument, it severely undermines your credibility: Thomas Jefferson was not a voice, and had no vote, at the Constitutional Convention. He was in France at the time.

  19. 18

    As you read her paper, do try to keep in mind that Ms. Isaacs holds as an underlying principle that patents exist to promote only the social good. Thus, her views, at least in my opinion, are tainted. She and others who adhere to her principle equate “promote progress” with “..but only if society is truly benefited”.

    By the way, if I read one more paper crowning Thomas Jefferson as the “father” of our patent system I am going to hurl. Last time I looked he was not the only person who was involved in establishing the patent and copyright system. He was but one voice and one vote at the Constitutional Convention where Article I, Section 8, Clause 8 was enacted.

  20. 17

    I understand the agrument that terminating an entitlement to, say, food stamps, is not a taking as much as it is a cessation of a giving. A patent, however, is granted for a specific period of time.

    Constitutionally, Congress is free to change the patent laws. It can expressly provide for a shorter term or provide that patent rights are subject to regulatory takings without compensation. Once exclusive rights have been granted for a specific period of time (whether food stamps or patent rights), shortening or terminating the period without compensation would be an ex post facto law and a taking.

  21. 16

    “Deleaded” is a term of art in Massachusetts and some other New England jurisdictions, where lead paint can be abated by municipal authorities, subjecting tenants to evictions during the abatement for which they have few legal remedies. A “deleaded” apartment would not be subject to the hassle of abatement.

    I agree with Mr. Slonecker. For more than a century, IP law and patents specifically languished as a subject too arcane for even most law professors. Now, I read this abominable scholarship so divorced from the day-to-day realities of our practice. Amazing. More mainstream lawyers I suppose have had to deal with this type of scholarship forever. But I’d wager that the general public has paid less attention to scholars in these fields than in ours.

  22. 15

    Let us also remember that there is “consideration” that is paid for obtaining a patent – namely, the public disclosure of one’s invention. “The consideration which it requires him to pay for this benefit, is to put the public in possession of his invention; so as to enable all to use it, after his monopoly shall expire; and all to avoid involving themselves in controversies and difficulties, by inadvertently infringing it while it continues.” Evans v. Eaton, 20 US 356, 413-4 (1822). This basic underpinning of our patent system would be eviscerated if patents are not considered property worthy of protection under the Takings Clause Also, under Professor Isaacs’ approach, Congress could decide tomorrow to simply abolish all patent laws without running afoul of the Takings Clause. As for 1498 and pharmaceutical patents, I don’t think that the application of the Takings Clause to patents likely would not prevent the federal government from doing some of the things pharmaceutical companies fear.

  23. 14

    Having now read the paper, I realize that my prior comment was completely misleading – being based only on Dennis’ one-sentence summary of Prof. Isaac’s paper. Her reasoning does seem to flow naturally from the jurisprudence of Mathews v. Eldridge and subsequent benefits cases.

    The Oklahoma Land Rush could easily be distinguished from a grant of patent in that the Sooners received fee simple grant deeds, while a patent holder has only a (revocable?) term of years in their “parcel” of intellectual property. (?on proof of invalidity?)

  24. 12

    It should really all come down to one simple question, as asked by Lord Hoffmann in the UK Amgen case:

    “[W]hat would a person skilled in the art have understood the patentee to have used the language of the claim to mean?”

    The reason these cases end up going all the way is because the patentee wants the claim to have a meaning that it simply doesn’t have, and wants to bend the law to suit them.

  25. 11

    I do not understand Professor Isaacs’ point. It appears that his entire theory is that patents are not property for the Takings Clause because they are only federal entitlements. How is this different from the rationale of the Zoltek majority (which Professor Isaacs unambiguously disparages) — especially the opinion of Judge Dyk, where he states:

    “Patent rights are creatures of federal statute. They do not exist in the abstract. If, as I urge, the patent holder’s right to sue the government for infringement under 1498(a) is no broader than the rights of the patent holder against private parties under section 271(a), then there can be no taking resulting from the refusal to recognize a greater right against the government.”

    Can someone explain to me why Professor Isaacs’ essential thesis is not preempted by this?

  26. 10

    “The heck with the Isaacs paper …”

    I place far greater emphasis on the orderly development and predictability of federal patent and copyright law than I do on “deleaded” apartments for rent, particularly when such grants are characterized as arising from “federal government benevolence” (my term).

    I, for one, am getting tired of academic opinions laying the foundation for fixing a system that is far from “broken” by persons I charitably characterize as neophytes, and especially by those in academia having no substantive experience in actually representing clients having significant business interests in a stable body of law upon which important business decisions can be based.

    It is well nigh impossible to get a client from Point A to Point B if the road therebetween is constantly being redirected.

  27. 9

    “Until this paper gets published, it’s only a well-polished version of what the rest of us are writing here.”

    I submit that a paper downloadable through a number of services is tantamount to publication. Presentation in a “learned journal” is but a mere formality.

    I also submit that it is NOT “…what the rest of us are writing here.” To the contrary, it is yet another academic fixated on parsing rights under federal IP law in the context of advocating what patents are “worthy”; namely, only those that meet the test under the academic mantra that “promote progress”. It is yet another preliminary step to the advocacy that the system is broken and in dire need of repair.

    If anyone seriously believes that it represents mainstream thought about our patent laws (and by association our copyright laws), then that person does not fully grasp what is being advocated and why.

    For those representing pharmaceutical companies, it is yet another brick in the wall being inexorably built to utilize 1498 to craft a policy carving out pharmaceuticals from the scope of Title 35. Why? Because the good of society as a whole demands this be done.

    Judges Newman and Rader recognize fundamental principles of law challenged by arguments such as this. This should tell us something important is underfoot.

  28. 8

    The heck with the Isaacs paper — nice apartment, Dennis! I wish I was coming to Brookline. But, what does “deleaded” mean? I can guess, but I’ve never heard of that term anywhere else.

  29. 7

    Until this paper gets published, it’s only a well-polished version of what the rest of us are writing here.

  30. 6

    It was interesting to read that paper and note two references to the Patently-O site. Wonder when the courts will start citing it as well.

    On the not so interesting side is that the two references were to comments I made. No matter the context in which the references were used, I still hew to the line that judicial “ossification” is a carefully measured understatement.

    Many years ago I coined the word “mentalbate”. I defined it to mean “playing with yourself mentally, usually in an effort to impress.” It certainly appears especially apt here.

  31. 5

    Getting really really sick of all those “law professors” writing about taking away patent rights from the rightful patent holders for the so-called “public good”

    yeah, indeed, “public good”, screw one patent holder after another, and soon enough nobody will bother to invent anything.

  32. 4

    “The need for appellate caution in reversing the judge’s evaluation of the facts is based upon much more solid grounds than professional courtesy. It is because specific findings of fact, even by the most meticulous judge, are inherently an incomplete statement of the impression which was made upon him by the primary evidence. His expressed findings are always surrounded by a penumbra of imprecision as to emphasis, relative weight, minor qualification and nuance (as Renan said, la vérité est dans une nuance), of which time and language do not permit exact expression, but which may play an important part in the judge’s overall evaluation.”

    So what is wrong about this?

  33. 3

    I almost forgot, Pharma better read this one. It is no less than a “call” for those who have an eye on 1498 as a means to place “important social and policy” limits on the reach of pharmaceutical patents.

  34. 2

    Davida H. Issacs…Norther Kentucky University, Salmon P. Chase School of Law:

    Relevant text from her bio:

    “Professor Isaacs teaches Intellectual Property, including classes on patents, copyrights and trademarks, as well as teaching Civil Procedure. She graduated from New York University School of Law in 1995, where she was Associate Editor of the NYU Review of Law and Social Change. She received her undergraduate degree magna cum laude from Brandeis University in 1992.

    Before coming to Chase, Professor Isaacs was an intellectual property litigator for almost seven years at major New York and Washington, D.C. law firms, specializing in trademark and pharmaceutical patent litigation. Professor Isaacs’ scholarly focus is the balance between the rights of intellectual property owners and the public interest, including issues such as which intellectual property qualifies as ’property’, what is the scope of those property rights, and when the public interest justifies limiting intellectual property owners’ rights.”

    The first part of the blog post is of modest interest, but the second, a journal article, of infinitely of much more importance.

    As one reads the paper there is one piece of trivia to keep in mind. Prior to enactment of the Copyright Act of 1978 federal pre-emption was not associated by Congress with the copyright law. Thus, states like California regularly issued copyright registrations to the same extent as trademark registrations. People should try and keep this and other examples in mind as they peruse her paper and note the important distinction she draws between intellectual property rights conferred by states and those conferred by the federal government. As to the former she makes clear that state conferred rights can implicate the Takings Clause, whereas the latter to not because the latter arise from what I take the liberty of terming the ‘benevolence of the federal government”.

    Let me see. If a copyright under federal law is granted, it can be effectively withdrawn because of federal benevolence. If a copyright under state law was previously granted, then that is an entirely different matter. Is federal preemption so great that with the stroke of a pen Congress can remove a species of property from the reach of the Takings Clause because it represents federal largesse, but a contrary conclusion can be drawn for the identical right being conferred by a state?

    As JOhn Stossel would say, “Give me a break!”

    I included the excerpt from her bio on the law school’s website as it seems particularly relevant in placing her views into context. Whenever I see the words “social change” and “public policy” my antenna extend fully because I know I am in for a real treat. This paper does not disappoint from this perspective. It does, however, greatly disappoint in most other respects. By her logic, it would seem that the “Great Oklahoma Land Grab” was no more that the federal government’s exercise of benevolence. Guess that those land grants could likewise be truncated by the mere stroke of a pen.

  35. 1

    “Construction of patent claims depends on technological mastery ”


    If my claims are confusing to a person with a bachelors degree in molecular biology, it’s because (1) I screwed up or (2) I want them to be confusing.

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