Patent Law Professors on the Move

The lateral market for patent law professors is alive and steaming ahead.

  • Scott Kieff has accepted a position at GW law school in DC and will be moving from Washington University in St. Louis. GW may well have the best patent focused program in the country. At any opportunity, Kieff promotes the notion that strong property rights almost always lead to the best outcome.
  • Tim Holbrook is off a recent stint at Stanford Law school and is taking a position at Emory in Atlanta. Emory's patent space has been vacant since Margo Bagley left for UVA several years ago. Holbrook is leaving his fulltime position at Chicago-Kent.
  • Also leaving Chicago is Katherine Strandburg (from Depaul). Strandburg is taking a position at NYU where she will join Richard Epstein and my undergraduate classmate Troy McKenzie. McKenzie is a chemical engineer, but does not do patent law. Instead he focuses on bankruptcy.
  • In a coup, Mark Janis is headed home to Indiana (Bloomington) – leaving his longtime post at Iowa. Janis largely focuses on the interplay between trademark and patent rights.
  • Dave Schwartz is moving from John Marshall to fill Holbrook's position at Kent. Before moving into academia, Dave was a partner at a firm handling patent litigation and prosecution.

Each of these individuals have been helpful to me at some point during the past few years. Thank you, and good luck in your new positions!

64 thoughts on “Patent Law Professors on the Move

  1. 64

    The only IP profs who have anything valuable to contribute are the part-time IP profs who practice part-time if not full-time.

    The emphasis on the careers of full-time IP profs reminds of the rise of M.B.A.s on Wall Street, who ended up ruining the field for themselves and everyone else.

  2. 63

    link to ibdeditorials.com

    Editorial on the “new” breed of college professors:

    “A younger, radicalized group treats the material once called “classic” as mainly the propaganda of past ruling classes. They see Western civilization as itself oppressive, so why expose students to its traditions?

    The shift to social activism as a teaching goal also may be all that many of the students can handle (at least outside engineering and the physical sciences, where hard work still goes on).”

    Looks like this pernicious practice might be working its way into the patent law curriculum…

  3. 62

    to MaxDrei,

    Thanks for responding. IPBiz has a link to the case; merely click on the title of the post.

    Some commentary on stereoisomers remains to be done, both as to this case and generally.

    Also, the Chapman case, even though non-precedential,
    has a lot to teach.

  4. 61

    Many thanks Mr Ebert. Judge Rader speaks in Europe very often, so I imagine he has some passing familiarity with PSA. Nevertheless, I have no evidence up to now that he has actually grasped it. (All credit if he has). Now I must get hold of the Chapman case. I think also The Patent Prospector has posted a link to it. Thanks again, and for your Link.

  5. 58

    “6” purportedly responded to the following: ” Regardless, how, pray tell, does an Examiner get “worn down” under the current count system? I’ve *never* had it happen with an Examiner I have had a case with, and I would absolutely love to know how to do it because it would make my life so much easier and the client would be thrilled. Please, dish.”

    With this comment (March 10 at 3:42):
    “Half of your allowances probably did this already. 90% of your third RCE’s did this.”

    Nobody but you believed that that was actually an answer. Clearly you don’t have one–there *is* no incentive for an examiner to allow a case under the current count system when they can get infinite counts under RCE-reject-reject-RCE, and all the Office Action text cut and pasted. I bet it takes you five minutes a count.

  6. 57

    “Is this the same Examiner 6k who has posted numerous times about shooting down applications? ”

    Yes but I can look over nearly any app I allow a month later and view it as a new app and I can tell how I would still want to smack it down. Most allowances are not clear cut, they’re me saying “I just don’t feel like I have the art right now so it is time to allow”. Which is allegedly what my “job” is according to many people here. I don’t have infinite time to sink claims you know, examination does end on occasion.

    This problem comes sharply into focus when I get a CON. When that happens the claims are usually a little more narrow than the already allowed ones and I go out and sink them. Pity, but that’s the way of things, the more time you pay for me to search, the less claim you’ll be left with at the end of the day.

    “When was the last time any Examiner gave any weight to an alleged fact that, e.g., discovering the source of the problem was the key to the invention (i.e., in which the invention was made), and the solution naturally flowed from the problem? None that you know of? I didn’t think so.”

    We don’t give patents for keys to inventions, we give patents for inventions. You can take your keys to inventions and horde them all you like.

    Personally I know the benefits of finding the source of the problem. At my job at a company we were having issues with a machine creating problems on the product at a certain step in the manufacturing process. I put forth the only realistic approach to finding the source of the problem and that wasn’t recognized until right before I left. If they do spend the money to perform the “diagnostic” I guess you’d call it, then they’ll save millions in the long run by finding and fixing the problem, but as of the time of my departure they didn’t have the budget and manpower to spare. But, they probably eventually got around to it. Either way, the solution to the problem would likely be something as mundane as moving a hose 5 inches downward inside the machine and increasing the output a bit to compensate. That invention is not patentable but the “key” to the invention will have been innovative and very important. That said, my method of diagnosing the problem might have been inventive and patentable, but it was probably much more valuable as a trade secret.

    I don’t have time to talk further comedian, but I will say this, I’ll give weight to a reasoned argument, but I can’t speak for my fellows. I will also say though that most of those arguments are not used for a reason, and that reason is because there are much stronger arguments that weight against them being valid. In fact, I regularly address arguments that are somewhat unorthodox and I have yet to see one succeed.

    “OK, that’s just silly. 102 relates to all claim elements found in a single reference. ”

    Yes I’m sure he knows Jen, that’s why he said that 103 was basically merged with 102. In essence when you make a TSM 103 you’re basically saying that by having looked at the two references you can practically see with your mind’s eye an embodiment flowing directly out of the primary reference that fulfills all limitations.

    I know, I do this every day.

    ” Regardless, how, pray tell, does an Examiner get “worn down” under the current count system? I’ve *never* had it happen with an Examiner I have had a case with, and I would absolutely love to know how to do it because it would make my life so much easier and the client would be thrilled. Please, dish.”

    Half of your allowances probably did this already. 90% of your third RCE’s did this.

    “Claims to useful processes, machines, and products are being rejected everyday at the USPTO based upon Bilski. Should we have anticipated these rejections based upon the language of the STATUTE?”

    It is funny how you can tell that the statute doesn’t support those rejections right away but you had trouble figuring out what 103 said for years. In any event, it’s my opinion that someone needs to step up and get those cases reigned in. You up for it? How about you and 5000 other attorneys willing to appeal every one of those cases?

    Alright I really gtg.

  7. 56

    JAOI,

    Here’s Max’s post from that thread:

    PSA’s value is in framing the debate about obviousness and in reducing it to a debate about a gap between just two points that were fixed, even before the app was filed. Debate about this defined gap is utterly focussed and shuts out all the background “noise” that otherwise bedevils obviousness debate. The steps are:

    1. Read what the inventor wrote in his app. Identify from the app the technical field and the contribution the inventor subjectively thinks he’s made to it. That “contribution” can be presented (for the artificial purposes of the about to commence PSA debate)as the solution to a technical “problem”(even if in actual fact the act of “invention” was in reality more like a “discovery”).

    2. Do a prior art search (hindsight here, of course).

    3. Imagine the PHOSITA on the date of the claim being tasked with achieving the “technical effect” that the claimed subject matter achieves. From what “realistic starting point” might that PHOSITA reasonably begin? There’s your first fixed point. If you can’t find one, you may be looking at Student’s “Problem Invention”.

    4. Now address the claim. Break it down into “technical features”. How many of those are within the disclosure of the starting point source (which we call D1).

    5. If all features are in D1, D1 takes away novelty.

    6. But they aren’t. We have one or more tech features (X) that “characterize” the claim relative to D1. They establish novelty, and the jumping off point for the next step.

    7. When you add magic ingredient X to D1, what technical effect does that yield? It might only be a mere alternative to the D1 embodiment but, more likely, it yields a performance difference.

    8. Express that performance difference as a “technical effect”.

    9. You can express that technical effect as an “objective problem”.

    10. Revert to D1. Imagine the PHOSITA with D1 on the prio date, with no knowledge of the claim or the invention but given by his boss the task of modifying D1 in such a way that modified D1 will achieve the identified “technical effect”.

    11. Imagine perplexed PHOSITA on the prio date, ignorant of the claimed subject matter, at a loss what to do, so scouring the art for a hint, or a suggestion from that published art what mods to D1 might help him to achieve that effect. Remember, the PHOSITA at that date doesn’t know that X will solve his problem because he lacks the power of hindsight. Either the published art tells him to try X, or it doesn’t. If it doesn’t, then X ain’t obvious to the PHOSITA.

    Whatever you might think about the artificiality of the aforementioned PSA treatment, it does have four merits, namely:

    i) it’s all over in a twinkling. Either you’ve obvious, or you’re not;

    ii) try as you will, you will find nothing to justify the assertion that PSA favours Applicant over Opponent, or Opponent over Applicant. It’s fair to both.

    iii) it “fits” with what real PHOSITA’s do, in real research labs, so commands their respect; and

    iv) even judges can relate to that.

    That’s why I’m a fan. Next.”

    You may also want to review the Australian standard of determining inventive step. Look at a case from Australia called Lockwood Security Products Pty Ltd v. Doric Products Pty Ltd [No2] [2007] HCA 21 (23 May 2007) decided by the Australian High Court. A practitioner named Bill Bennett from Pizzeys Patent & Trademark Attorneys wrote a good article on that case, and provides a good critique, so to speak, of the PSA test. (You can find Mr. Bennett’s article with Google pretty easily.)

    You should also check out the Patent Manual of Practice & Procedures of IP Australia (i.e. the Australian MPEP), particularly section 1.3.8.6.2 on inventive step.

    I think the Australians have the best approach. Just my opinion of course.

  8. 55

    Jaoi, I have found a print of the earlier thread. It starts at June 12, 2008 and runs till at least June 18. John Darling is there, and many of our mutual friends. Title: Patently-O Bits and Bytes No. 43. Maybe you can post the Link? I don’t know how. Many thanks.

  9. 54

    JAOI, there is a monumental thread from about 8 months ago, in this blog, in which I “took on all comers” on EPO-PSA (TSM). Maybe somebody can find it and show a link to it. I’m a bit busy right now, and anyway I have found that it takes about three days to get PSA across. 25 words is dangerous because then every reader thinks they have “got” PSA when, in fact, they are still clueless. Again, sorry. Try the EPO website. You can access the EPO’s MPEP, called the “Guidelines for Examination” in which there is a rigorous and well-written treatment of PSA. Only snag is, it’s written for readers who are already steeped in European practice, so it’s a struggle for those steeped in a different TSM regime to “let go” their prejudices and instead go with the EPO flow.

  10. 53

    Max,

    As you schedule may permit, perhaps you can provide a “25-words-or-less” tutorial on TSM-EPO-PSA?

  11. 52

    Lemley has written some good stuff in the past and he is knowledgeable in the area of patent law, but he co-wrote that paper about limiting continuations AND RCEs, which is just ridiculous. It was a solution in search of a problem. There was no evidence to support any benefit to such a limitation and it appeared to treat the RCE/continuations as a function of the practitioners and did not describe how examination might be changed to reduce the need for continuations.

    Further, all the RCEs I have filed have been because the Examination I received was poor, and my continuations have generally been filed to pursue non-allowed claims.

  12. 51

    Thanks Comedienne. With your dictionary definition I now know why JPO Exrs formulate obviousness objections as:

    The PHOSITA would have found it ***easy*** to combine the disclosures of D1 and D2.

    Frustrating, no? Hindsight pure, no? So, where in the world can one have an intellectually worthwhile, business-oriented, PHOSITA-comprehensible, attorney-satisfying and Examiner-disciplining argument with a PTO Exr, that solves the puzzle, whether or not a specific claimed subject matter was or was not ***obvious** at the relevant date, in a process that nurtures a cordial atmosphere of mutual respect between Exr and atty? That’s a rhetorical question, by the way. Readers already know what I think on that.

  13. 50

    >What I found completely lacking from the >decision in SCOTUS is any exhaustive look at >the actual language of the 35 USC 103 and any >attempt to perform a rigid statutory >construction on the language.

    Somewhere in KSR is the language that the Supreme said something like the 1952 act merely codified it precedent or some such ridiculously arrogant language.

  14. 49

    “In other words, do your fin job to advocate for your clients rights under THE STATUTE, WHICH IS THE LAW rather than whatever is the passing fad interpretation.”

    hahahahahahaha

    103: “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”

    When was the last time any Examiner gave any weight to an alleged fact that, e.g., discovering the source of the problem was the key to the invention (i.e., in which the invention was made), and the solution naturally flowed from the problem? None that you know of? I didn’t think so.

    What is this word “obvious”? What does “obvious” mean. One dictionary definition is “easily discovered, seen, or understood.” The operative word there is “easily.” However, SCOTUS, in its eminent wisdom, decided that “easily discovered” wasn’t restrictive enough. “[A]a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Ever try to assemble a puzzle when you don’t what it will look like in the end? Next time you put together a puzzle, flip the pieces upside down and the try to complete it. Hardly “easily discovered.”

    Instead of looking at the term “obvious,” SCOTUS created a new test: “the results of ordinary innovation are not the subject of exclusive rights under the patent laws.” Tell me where I should have found the term “ordinary innovation” in the STATUTE.

    Whatever happened to “at the time of the invention”? When faced with “hindsight bias,” SCOTUS only response is to state that “[r]igid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law.” Are saying that it was improper for us attorneys to present arguments, prior to KSR, based upon “at the time of the invention” language, which is found within the STATUTE?

    What I found completely lacking from the decision in SCOTUS is any exhaustive look at the actual language of the 35 USC 103 and any attempt to perform a rigid statutory construction on the language.

    101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    If you want to look at what the STATUTE says, it doesn’t mention anything about non-statutory subject matter. Instead, it only says that if you discover a new and useful process, machine, manufacture, or composition of matter you may obtain a patent therefor. Thus, under the STATUTE if you’ve got a process and it is new and useful, you can obtain a patent therefor. One can argue that Bilski’s method is not new or useful, however, it is a process. As such, the Federal Circuit’s case law as to Bilski is not based upon the STATUTE.

    Claims to useful processes, machines, and products are being rejected everyday at the USPTO based upon Bilski. Should we have anticipated these rejections based upon the language of the STATUTE?

  15. 48

    In defense of Patent Law professors — some patent law professors have both scientific backgrounds and patent prosecution experience!

    I teach Patent Law & I am the co-director of the IP Concentration program at Suffolk University Law School in Boston. My scholarly writing tends to be pro-patent and pro-IP generally. See writing at:

    link to lawprofessor.org

    And, I am a former engineer, registered patent and I have prosecution experience.

    As part of our IP Concentration we offer a Patent Specialization Program. Graduates of our program currently work as patent prosecutors in virtually every Boston area law firm that does patent prosecution work.

  16. 47

    There are several good points in the patent reform bills (like the changes to 102 and allowing entites to file) but the damages section eat them alive!

    I cannot log onto the live hearing, anyone listening? Are they making any news?

  17. 46

    Greetings JAOI. Thanks… and….Ha, now I can reply. Maybe you liked my comment above because in it I deliberately refrained from the suggestion that the EPO’s 30 year old, tried and tested, eminently fair, rigorous, rigidly consistent and predictable approach to obviousness is the guiding light now manifestly absent from USPTO practice. Can anybody point me to a scholarly (we are on law professors, after all) demolition job done on EPO-PSA?

  18. 45

    Dear Lionel,

    Re: “Post-KSR we are in a wilderness where there appear to be no limits on the USPTO’s ability to reject no matter how flimsy their reasoning.”

    Fortunately, my few pending applications wending their way through the Patent Office have not been hurt by KSR – my guess is the more professional Examiners simply ignore KSR and rely on TSM, which I think is as it should be.

    However, in the hands of Judges, KSR, coupled with the anti-patent sentiment stirred up for several years by the propaganda from the damed Coalition for Patent Fairness, has been deadly.

    Even Judge Newman has succumb on occasion to politically correct trash talk and rendered seriously result-oriented decisions (especially when coupled on the bench with Judge Moore – my guess is that Judge Moore is Just too strong in pressing her own biased views).

    * * * * *

    Dear Max,

    I meant to say, Welcome back Max, we all missed you, well maybe not all. Did you enjoy your sabbatical?

  19. 44

    By the way Max, nice comment above. Please keep up the fine work (õ¿Q).

  20. 43

    “I’m still pretty young. It is up to us to be invincible and up to you old guys to stick to your ways. I find myself sticking to my ways (which is usually the old way) more and more often. Dam getting old.”

    That’s fine, but you could be invincible a little more quietly? I can’t hear myself think in here…

  21. 42

    “6” said: “‘Yet more academics cite Lemley and Moore, as if this “wearing down” is occuring, and thus rank speculation becomes accepted fact.’

    It happens to me so I believe him.”

    Is this the same Examiner 6k who has posted numerous times about shooting down applications? Regardless, how, pray tell, does an Examiner get “worn down” under the current count system? I’ve *never* had it happen with an Examiner I have had a case with, and I would absolutely love to know how to do it because it would make my life so much easier and the client would be thrilled. Please, dish.

  22. 41

    Like I said your post might get deleted.

    Acceptable topics:

    Ronald Regan’s corpse
    anti-patent rhetoric
    trolls

  23. 40

    Professor Miller (a.k.a. Joe, a.k.a. Flash of Genius blog),

    Obviously you’ve scratched on a raw emotional nerve.

    How does one go about explaining this without offending? Let’s try this: The way that many professors write about the practice of law is like an unnamed religious organization writing about the practice of s_x and other day to day living stuff. (Dennis, am I allowed to say it this way? Some leeway for freedom of speech here, huh? 2nd Amendment and all? Thanks.)

    The stuff that actually goes on in the patent prosecution trenches is very different from the way professors (and judges) poetically cast their ivory tower theories about it; about what inventors do and how they do it; about what prosecution attorneys/agents do and how they do it;and about what patent examiners do and how they do it.

    You’ll probably want a concrete example.

    Let’s try moment of conception and constructive reduction to practice as an example. If you read the professorial literature, you get the impression that most inventions arise from an Aha and Eureka moment. Sort of like Doc Brown falling against the toilet in the Back to the Future (Part I) movie and having a vision of the flux capacitor … which as we all know makes time travel possi … well never mind.

    In reality it almost never happens like that. It’s more like Spoc of Star Trek doing a mind meld with an inarticulate inventor who has been working on a series of projects over the last ten years. There is no clear line of separation between the work products of the inventor and the work products of the patent practitioner when a patent application gets drafted. The patent drafter is not the “mere conduit” of raw scientific thought as courts used to (and perhaps some still do) see it. It’s a much more complex and convoluted process.

    The only way to truly understand is to write a patent application of your own. So here’s a stack of blank pages. Go to it. Where do you start? Claims first? Drawings first? Summary of the invention? We leave it as an exercise for the student to discover on his own. ;-)

    (And for extra credit, write a response to an incomprehensible first Office action. Good luck.)

  24. 39

    To Lionel Hutz, if TSM was taking the 103 ship badly off course, and KSR was the needed big course correction, then it will inevitably take some time to settle on the new course of legal development. OK, for many PTO Exrs, it might be Pay Back Time now, but attorneys will have to resist that, and the CAFC will help them. However, with no guiding light to replace TSM (where are all the law professors?), I don’t see how the 35USC103 ship can settle on any particular new course. I expect it to go around in circles. You?

  25. 38

    There was a time, not too long ago (after CAFC), when a “patent professor” who did not have a practical background in patent law would raise eyebrows. Most litigators were nonetheless registered.

    Remember, patent professors, especially ones who run blogs and delete or block dissenting posters while anonymously trolling do not own patent law. They might just be political hacks with axes to grind. Just ask Mooney.

  26. 37

    Judge Rader, John Duffy, Solicitor Whelan, Commissioner Mossinghoff, Martin Adelman, Don Dunner, and now Scott Kieff?!? All teaching IP at GW?? It’s a patent student’s dream!

  27. 36

    Of Joe Miller’s text –It seems bizarre, for example, to suppose that only someone with patent prosecution experience could make valuable contributions to patent system policy formulation. (…)
    Why so much negative feeling for, e.g., Prof. Lemley, who – among other things – remains actively engaged in patent litlgation and other i.p. litigation. Is it simply because he has proposed policy options that would, e.g., make it harder for some patent prosecution lawyers to make as much money in the same manner as they have in the past?– my post (above Joe’s) raised issues APART from lack of prosecution experience and I did not say that lack of prosecution experience precluded insight. As to Lemley, my repeated criticism as to “Ending Abuse…” (BULR) was his FALSE statement about Robert Clarke, which has never been retracted. Further, Lemley sub silentio as to that comment adopted Clarke’s position in “rubberstamp.” Lemley has completely garbled the stories of the integrated circuit and transistor to serve his policy positions. [Of the transistor, see 8 JMRIPL 80].

    So Joe, say it ain’t so, or explain your silence on these points. And, separately, I will make the same amount of money whether Lemley’s positions are adopted or not. What’s your reason for not commenting on the fake citations?

  28. 35

    “So, attorneys were supposed to ignore years and years worth of Federal Circuit precedent and argue what?”

    Argue whatever the f you like, whatever you yourself can read from the statute tempered by your knowledge of of what the CAFC says on the matter, what the SC says on the matter, and what any other sources you trust say on the matter. You don’t just ignore the CAFC precedent, but you don’t view it as the be all end all to a clearly more complex issue. In other words, do your fin job to advocate for your clients rights under THE STATUTE, WHICH IS THE LAW rather than whatever is the passing fad interpretation (insert lawlol here). The caselaw is nothing more than a rough guideline, a crutch to wing it on a day to day basis and an invitation for someone to present a convincing argument as to why it should be changed and persuade the judges. I believe that Michel went into this the other day in a recording. They can only refine the caselaw if we will send them cases with good arguments, with the necessary facts behind them, as to why it should be refined.

    How do you guys get out of law school without having learned to think critically about the law? That should be lesson no. 1 and the last thing they go over there. Having respect for the law doesn’t mean blindly following every interpretation of it. In a nutshell, that is why SC justices are head and shoulders above you rank and file.

    “Are you for real? If you want to be an anarchist, why don’t you find another country to live in. Either respect the rule of law or go live someplace like Zimbabwe, Sudan, or Iraq.”

    Determining that strict TSM is ludicrous at best is hardly an “anarchist” action.

    While we’re on the subject though, can you honestly tell me that the currently held views on how thousands of laws are applied across this country are not 100% wrong? Are you a lawyer? Have you even read statutes? Have you not seen statute after statute struck down? Can you even read, think critically, or have some backbone for your client? Maybe you want to just sit there and punch up a form paragraph citing TSM and some blanks for you to fill in so you can make hundreds of thousands of dollars a year without any real effort? I think that is probably what is the problem here.

    Bottom line, if I, and every other newbie to patents can show up on their third day, hear about TSM and think to themselves: “that is completely rtarded” then something is amiss and seasoned lawyers should know that even moreso.

    Right now we see Bilski is just begging for some refining. Time to get some cases, make some arguments. My advice is to not use Bilski itself because that will be failtastic. Members of the CAFC have expressed interest in the application of 112, that is an open invitation for cases like Miyazaki to go up to them.

    All in all, the poor state of the interpretation of any law I generally blame on you guys so you’ll excuse me from being sympathetic to when you get caught in your compatriots webs.

  29. 34

    Y-A-W-N.

    At least there are still some people out there who provide timely news about CAFC decisions – something this blog USED to do, once upon a time.

    Lots of luck in your career as an academic, Dennis.

  30. 33

    I heard Mr. Kieff speak once as a guest speaker at U of C Law School. He is highly organized and structured, but when I had a chance to think further upon his presentation, I began to see the flaws in the logic, and what was presented as an air tight case began to spring many leaks.

  31. 32

    “It was your own fault for buying into the hardcore TSM rubbish when the truth of the statute is written for all to see.”

    So, attorneys were supposed to ignore years and years worth of Federal Circuit precedent and argue what?

    “Why am I incapable of making the correct determination as to what the law actually says without relying almost solely on soundbytes from the CAFC/USSC?”
    Are you for real? If you want to be an anarchist, why don’t you find another country to live in. Either respect the rule of law or go live someplace like Zimbabwe, Sudan, or Iraq.

  32. 31

    I think the funniest line in any Federal Circuit opinion ever has just been written, and it wasn’t even written by the Federal Circuit.

    In the process of tanking every one of Scott “Prestigious Law Firm Partner and Alleged Inventor” Harris’ appealed claims, the Federal Circuit wasted some of its precious time addressing applicants’ proposed “alternate test” for determining statutory subject matter. Are you ready? Here is the test:

    “Does the claimed subject
    matter require that the product or process has more than a scintilla of interaction with
    the real world in a specific way?”

    ROTFLMAO!!!! Is Harris teaching law anywhere? If not, there’s always stand-up comedy.

    Imagine if the invention was a “paradigm” for marketing an energy bar with no filler formulated for a pet chinchilla. Does the claim to the energy bar with no filler formulated for a pet chinchilla have more than a scintilla of interaction with the real world? What about the dependent claim: “wherein said energy bar for said chinchilla further comprises vanilla”?

    Gotta love Bilksi. It’s the crap claim killa.

  33. 30

    “has rendered any “order” in the patent law area,”

    No I don’t, they specifically removed any order to the system that they could, because the patent laws demand it. The don’t ignore the laws, they interpret them without an eye to making them make sense and fall neatly into place when they plainly do not.

    “isn’t right either. As I told you in a different post, “a man has got to understand his limitations.” You don’t seem to understand yours. Again, you’ve been warned for a second time.”

    I’m still pretty young. It is up to us to be invincible and up to you old guys to stick to your ways. I find myself sticking to my ways (which is usually the old way) more and more often. Dam getting old.

    “I don’t reflexively disagree with every statute or ruling that makes patents harder to get. What I want is to know what the law is so I can advise my clients and help them make good decisions about whether getting a patent is worthwhile. The CAFC and the Supremes lately have been making abrupt sweeping changes to patent law that frustrate me. When something like KSR or Bilsky comes down, patents I have prosecuted over previous decades are suddenly in question. I can write future applications and claims with the new law in mind – but then how can I feel confident that that law won’t reverse course or set out in some new direction in a few years?”

    I tell you Jen I almost feel sorry for you attorneys who have their work called into question by the changing law, but in this case it is altogether too hard. It was your own fault for buying into the hardcore TSM rubbish when the truth of the statute is written for all to see. It should have been 100% impossible for any good attorney to not see that, and adjust their arguments accordingly. The question that you, and a whole lot of other attorneys need to ask yourself is: Why am I incapable of making the correct determination as to what the law actually says without relying almost solely on soundbytes from the CAFC/USSC? The answer is most likely because you’re allowing yourself to be sloppy. Actually, it is nearly 100% likely that is the case.

  34. 29

    “With TSM, 103 was basically merged into 102 (because if the prior art said to do whatever is claimed, then 102 SHOULD have applied). ”

    OK, that’s just silly. 102 relates to all claim elements found in a single reference. (Speaking of people who have never prosecuted a patent, mutter mutter).

  35. 28

    “Joe – There are several issues here that are tightly interwoven. The first is that many patent attorneys – especially prosecutors – are passionate about their craft and about the patent system. Coupled with that is the reality that the income of patent prosecutors depends upon the availability of valuable patent rights. Working as a prosecutor is most rewarding when you see the patent rights coupled with a successful business model. In those cases, the patent attorney/agent feels that he has added value to the process. ”

    Thanks for saying that. Like most prosecutors, I guess, I do this because I like patents and feel that helping companies get them is a worthwhile endeavor. Prosecutors generally could do something else, starting with staying engineers instead of being lawyers at all.

    I don’t reflexively disagree with every statute or ruling that makes patents harder to get. What I want is to know what the law is so I can advise my clients and help them make good decisions about whether getting a patent is worthwhile. The CAFC and the Supremes lately have been making abrupt sweeping changes to patent law that frustrate me. When something like KSR or Bilsky comes down, patents I have prosecuted over previous decades are suddenly in question. I can write future applications and claims with the new law in mind – but then how can I feel confident that that law won’t reverse course or set out in some new direction in a few years?

    I do think that a judge or professor who ever prosecuted patents would at think a lot harder about the value of certainty for patent holders and potential infringers, rather than whether a new test would give them a result they like better in a particular case.

  36. 27

    While I mostly disagree with Microsoft Bob, I do want to point out that effectively the TSM test, as applied by the CAFC, gutted 103. I understand that it provided a clear line for practitioners, but as practitioner, 103 was a VERY low hurdle pre-KSR, post TSM. If all I had were 103 rejections, I could practically guarantee the client a patent on the present claims.

    Post-KSR we are in a wilderness where there appear to be no limits on the USPTO’s ability to reject no matter how flimsy their reasoning.

  37. 26

    Dennis: “Although some folks challenge the academics as out of touch with realities of the law, I really don’t think that is a predominant issue in the patent field at the moment.”

    Word. The folks who get most bent out of shape by the academics are the same folks who get most bent out of shape by any proposed change to the patent system that arguably makes it “harder” to obtain a patent.

    That said, I’m not a big fan of any of the patent law pointy heads with one exception: the Big D!

    **smoooooch**

  38. 25

    “With TSM, 103 was basically merged into 102 (because if the prior art said to do whatever is claimed, then 102 SHOULD have applied).”

    Never practiced before the USPTO pre-KSR I see?

    At least for the 10 years prior to KSR, the USPTO NEVER had a problem applying the TSM test or finding 103 combinations to make. To think otherwise evidences a willing ignorance as to what was going at the USPTO.

    “101 was removed by the ‘anything under the sun made by man’ test”
    Also not very up with the case law I see? There never was an “anything under the sun made by man” test. That statement was found in a Supreme Court case and cited the legislative history of 35 USC 101. Based upon your ignorance as to this very basic stuff, your opinion isn’t going to go very far here.

  39. 24

    I am going to join Joe’s observation on this. The responses so far have largely looked like that a professor is all right as long as he agrees with the commenator’s pro-patent-owner views. A professor that disagrees must affirmatively disclaim expertise: “Well, here is what I think, but don’t listen to me because I am no expert.” That will really lead to healthy debate about our system, where only patent prosecutors and their allies get a voice.

    Btw. Scott Kieff is hardly one dimensional, either. For example, he favors a registration system that would put many prosecutors out of business.

  40. 23

    “It seems bizarre, for example, to suppose that only someone with patent prosecution experience could make valuable contributions to patent system policy formulation.”

    Would you ask your average patent examiner to give advice as to how to judge gynamistic competitions? I enjoy sports as much as the next guy and I watch gymnastics ever 4 years during the Olympics, but I wouldn’t be offended if the world gynmastic federation treated my suggestions as to scoring reforms for the floor exercise as dung.

    The average patent professional can identify the ramifications of a proposed change in far greater detail than someone who was never involved in the process. To use an analogy someone presented, some of the proposals being floated by these professors are akin to a proposal to solve the problem of DUIs by banning cars. With these types of proposals, it is easy to justifying ignoring the contributions of these professors.

  41. 22

    6,

    Like I told Joe Miller we’ll just have to “agree to disagree.” I’m not saying the Federal Circuit has done as good a job as it should (Bilski is a good example of a failure by the Federal Circuit), but if you believe SCOTUS recently (or in the past, with the possible exception of Festo) has rendered any “order” in the patent law area, you’re as clueless as you’re prior posts have suggested. Again, the patent statutes aren’t perfect, but to ignore them as SCOTUS (and some members of the Federal Circuit have done) isn’t right either. As I told you in a different post, “a man has got to understand his limitations.” You don’t seem to understand yours. Again, you’ve been warned for a second time.

  42. 21

    Dear Professor Crouch,

    Re: “I also agree with prior posts that the purpose of these blog comments is to critique. I think it can (and often is) done without too much name calling.”

    Do you think some sickos are entertained by the name calling?
    Sorta like the sickos that create traffic jams by slowing down to see accident victums and car wrecks, or the sickos that watch hexagon fighting to see how much blood is shed.

    I mean, I find the name calling rather distracting (õ¿Q)

  43. 20

    With TSM, 103 was basically merged into 102 (because if the prior art said to do whatever is claimed, then 102 SHOULD have applied). KSR merely puts back some normalcy into the system. 101 was removed by the “anything under the sun made by man” test and the UCT test, and now it’s coming back post-Bilski. The CAFC removed the first sale doctrine entirely and just used the higher standard from antitrust and Quanta knocked that back in line (but I’ll admit the “authorized sale” test is short sighted). And Festo just removed the incentive for patent applicants to withhold all that they know about the prior art. All of you super pro-patent guys got used to every single thing being ownable and enforceable through patent law at the drop of a dime, even if it was retardedly obvious, completely unrelated to patent law, or directly in the prior art. Well those days are over.

    Rader and his crew (Newman, formerly Rich, etc) are now a minority. Most of the things they say have some merit, but they went overboard and now they’re getting knocked back in line by other judges (Bryson, Gajarsa, Prost, Moore, etc) who are not willing to distinguish SCOTUS cases just so they can make up their own law.

  44. 19

    “(BTW, Scalia is one of the worst when it comes to understanding IP law, patent or otherwise), ”

    If by worst you mean better than everyone else then I agree.

    “As far as my “contempt” of SCOTUS, I wish it weren’t so, but is borne out by the absolute rhetorical nonsense SCOTUS spews out about patent law that has no bearing or relationship to the patent statutes. (SCOTUS was postively awful in the damage it did to patent law during the 50’s, 60’s and 70’s and one reason why the Federal Circuit was created in the 80’s to articulate a coherent, logical and consistent view of patent law jurisprudence.)”

    Translation: USSC did too good of a job 50’s-70’s so the CAFC was created to make some sense of statutes which had just recently been exposed as being incoherent, illogical, and inconsistent.

    Just because the statutes are bad doesn’t mean we shouldn’t have good law through interpretation. Wait a minute.

  45. 18

    “Yet more academics cite Lemley and Moore, as if this “wearing down” is occuring, and thus rank speculation becomes accepted fact.”

    It happens to me so I believe him.

  46. 17

    Joe,

    I’m afraid we’ll just have to “agree to disagree.” I don’t discount “litigation” experience, but what I’ve found from 31+ years working in this “vineyard” is that patent litigation shows an distressing ignorance (or at least a misrepresentation) of what goes on during patent prosecution. The way inequitable conduct is alleged with impunity in patent litigation is one glaring example of this “lack of reality” about what goes on during patent prosecution. And many who do patent litigation have no patent prosecution experience, or even a scientific/engineering background. At trial, that often leads to the “blind leading the blind” as many district court judges are even more ignorant (and even terrified) of patent law and the technology that underlies it.

    As far as my “contempt” of SCOTUS, I wish it weren’t so, but is borne out by the absolute rhetorical nonsense SCOTUS spews out about patent law that has no bearing or relationship to the patent statutes. (SCOTUS was postively awful in the damage it did to patent law during the 50’s, 60’s and 70’s and one reason why the Federal Circuit was created in the 80’s to articulate a coherent, logical and consistent view of patent law jurisprudence.) KSR International is a glaring example of where SCOTUS trounced the TSM test (which I’m willing to agree may have been applied too rigidly by the Federal Circuit), but have put in its place a standard for obviousness that is completely elusive and no more helpful than what SCOTUS did 40 years ago in Graham (my view of the failure of SCOTUS in KSR International is shared by many others who work in this “vineyard”). Also, instead of defining what the language 35 USC 103 means, SCOTUS once again resorts to their oxymoronic cliches about the difficulty of finding patentability in a combination of elements. What, pray tell, isn’t a combination of old elements?

    Finally, the “contempt” here isn’t one way. When someone like Scalia refers to the TSM test, which many of us in the “vineyard” view as an objective standard for when it’s appropriate to combine multiple references, as “gobbledygook” (BTW, Scalia is one of the worst when it comes to understanding IP law, patent or otherwise), why are you surprised that the patent bar expresses “annoyance” with SCOTUS, including my patent attorney brother who is at a different end of the political spectrum from me? (I won’t go into detail with my views about how anti-patent the likes of Justice Breyer and Kennedy are.)

    Dennis: I stand corrected on Strandburg. But her views still do not evidence to me a any “realistic” or “experienced” understanding of the “real patent world,” especially as it relates to patent prosecution. Also, my view is not simply based on the fact that I’ve earned my livelihood from patent prosecution (which is true), but from my dad (a former patent examiner and patent attorney) taught me that the “end doesnt’ justify the means,” including allowing the U.S. patent system to be screwed by those who flat out don’t have the “experience” or background to know what they’re talking about, but who want to have a “disproportinate” influence on how to make that system better. Finally, my concern with Arti Rai has nothing to do with her gender, but her view that what the USPTO did in the GSK/Tafas suit in anyway passes muster under the APA/RFA/OMB; Rai’s view (which Lemley shares) shows complete unwillingness to acknowledge the gross violations committed by the USPTO in enacting the various Rule packages (David Boundy, Belzer and Katzelson have establshed this exhaustive detail). In fact, one female patent law professor I do have greart respect (even though I don’t always agree with her conclusions) is Janice Mueller; that’s because she reasons through the issue(s) based on what the patent law is, not what other IP law professors think patent law should be.

  47. 16

    I think patent litigators play an important role, a very important one, in developing the law by arguing it strengthes, weaknesses and doing it to the nth degree. What we need are judges that can take those arguments and mold a great interpretation of the law that attempts to balance consequences – I think they are doing that pretty well right now thus all these folks pushing for change to a well established law in a time of other cirses seems scary to me, very scary.

    Leave it to the courts, it is hard to argue they are getting it wrong right now.

  48. 15

    I also agree with prior posts that the purpose of these blog comments is to critique. I think it can (and often is) done without too much name calling.

  49. 14

    The problem I have with some academics is their reliance on speculation that would never have been made, if they had actual work experience.

    For instance, Lemley and Moore, hypothesize about “wearing down” an examiner. I’ve never met an examiner who was tired of racking up easy counts. I doubt anyone with substantial prosecution experience would argue that “wearing down” occurs in any meaningful amount.

    Yet more academics cite Lemley and Moore, as if this “wearing down” is occuring, and thus rank speculation becomes accepted fact.

  50. 13

    “SCOTUS is by far the worst offender, even going to the extent of “disdain” for patent to hide a pathetic ignorance of not only patent law, but the technology that underlies.”

    It is merely you, mortal, who is unable to comprehend the wisdom of the USSC. USSC is just about the only one who has a grasp on what the actual patent law is and should be. They have a hard time grasping the inept principles put forth so regularly by the lower courts. Rightly so. They cut the lol from the lawlol and turn it back into the law from the precariously near lawlulz state the lower courts deliver it to. What you might consider taking from this is that where you think you see ignorance, you really see a court overlooking ridiculousness on purpose and laughing at the lawyers spouting nonsense law when they go behind closed doors. I know one of the chics that works for them and she will tell you.

  51. 12

    Joe,
    First, I don’t know that I’d “devalue” the status of a litigator, but can you honestly say that a patent litigator has practical knowledge of the patent system, such that he or she should (or could) make well-reasoned arguments for or against change to the patent system? I know plenty of litigators who have little or no knowledge of the practical side of the patent system, which is neither good nor ill in most cases. But I wouldn’t want them (as does Lemley) arguing for structural changes to the system.
    Second, at least in some cases, lack of practical knowledge of the system could result in bad scholarship. For example, in Lemley and Moore’s paper on ending abuse of continuations, their very first premise (that patents are secret and competitors have “no way of knowing whether an application is pending”) is flat false. That’s not a good sign.

  52. 11

    Joe – There are several issues here that are tightly interwoven. The first is that many patent attorneys – especially prosecutors – are passionate about their craft and about the patent system. Coupled with that is the reality that the income of patent prosecutors depends upon the availability of valuable patent rights. Working as a prosecutor is most rewarding when you see the patent rights coupled with a successful business model. In those cases, the patent attorney/agent feels that he has added value to the process. The law professors being challenged here are all ones who – at times – argue that patent rights are too strong and that we should raise the cost and lower the reward of patenting. Mark Lemley is the most well known and active professor currently voicing this opinion. (Those who read Lemley’s body of work will see that he not one dimensional – for instance, he continues to support broad 101 subject matter). I don’t believe that I have ever seen a negative comment about Scott Kieff here on the blog. Although some folks challenge the academics as out of touch with realities of the law, I really don’t think that is a predominant issue in the patent field at the moment. Most of the leading patent professors have an extensive amount of past and continuing real-word experience. Contrary to EG’s suggestion above, Strandburg is a patent attorney and also a PhD physicist.

    A second issue involves the current state of the internet, blogs, and political discourse. The most vindictive posts are anonymous. The very worst are posted against Arti Rai who – in addition to arguing arguing that the PTO has rulemaking powers – is a woman.

  53. 10

    EG,
    Your comments do help a bit, but they also sadden me.
    For example, why devalue patent litigation experience (as you seem to do)? Patent enforcement, through litigation and licensing, is a key part of the patent system; one can have a great deal of experience in it, with neither a science degree nor patent prosecution experience.
    Also, why devalue the expertise that comes from years of teaching patent law to law students, which entails – among other things – closely reading and analyzing decades of patent law precedent from the CCPA, the Federal Circuit, and the Supreme Court? This is one facet of patent law expertise, although far from the only one.
    Finally, why all the contempt for the Supreme Court? It has been a critical part of our patent system since the founding of the Republic more than 220 years ago. They may differ with you, or with me, or with any other person(s) in a given case. But the Court plays a vital role in ensuring that patent law remains firmly within the mainstream of American law principals more generally. (The MedImmune and eBay cases are good examples of this.) Does it give you no pause that, again and again in recent years, the Supreme Court has reversed the Federal Circuit in unanimous (or near-unanimous) opinions? When extremely smart, diligent people disagree with me, I usually think, “okay – I have something important to learn here, and I’m glad I have the chance to learn it.”
    Many patent law practitioners, in both prosecution and litigation, have helped me immeasurably in the years since I left private practice. Based on things they’ve said to me, I think I’ve helped them too. I see little of those wholesome, respectful exchanges in the comments here, and I think that’s regrettable.

  54. 9

    Joe-

    The answer is simple, the content of the prof posts shows a lack of basic knowledge of the law and how a patent is used to protect R and D investments. Get me a Judge Newman like prof (who I think F. Scott Kief is, BTW, from the few writings of his I have read) and we will be nice to profs. As long as Lemley and his fellow sheep are trying to ruin the patent system, and folks like Dennis are whistling past the graveyard it is our job to protect the country and my company’s R and D investment.

    As for making money, I work in house and make little – these profs likely make more than I do – but I work here because I like the connection to jobs and actual value creation – which patents do here very day!

    Do some research Joe, Judge Michel (who also makes less than most of the profs) would think any person with actual facts would reach the same conslusion about these profs I have.

  55. 8

    “Given the above post, I’m wondering if you could share some thoughts on some of the reasons for the virulently anti-professor bias of so many of the comments I see here at Patently-O.”

    Joe,

    Lawrence Ebert hit on quite a bit of the reason why (Lawrence: amen to your comments). I’m not against academia and in fact, welcome their views, even if I disagree with them. The problem is that IP academia tends to portray themselves as having a level of knowledge and experience about patent law (especially one that reflects “real work” experience) that is misleading. That’s what sticks in the craw of us who have toiled the actual patent “vineyard” for many years.

    Lemley is a good example of an IP professor who professes a level of “knowledge and experience” about patent law that isn’t supported by his resume (no science/engineering background, no patent prosecution experience, etc.) It’s one thing to express an opinion on patent law; it’s something entirely different to represent yourself as a “expert” when your actual work background doesn’t support it. Academics like Lemley and Strandburg too often profess a view on the patent area that has no connection to “reality” but try to protray that view as being “expert” when it isn’t. Believe me, academia isn’t alone in professing “expertise” in the patent area that they don’t have; SCOTUS is by far the worst offender, even going to the extent of “disdain” for patent to hide a pathetic ignorance of not only patent law, but the technology that underlies.

    I hope this helps you understand where us who toil in this “vineyard” come from.

  56. 7

    Dennis,
    Given the above post, I’m wondering if you could share some thoughts on some of the reasons for the virulently anti-professor bias of so many of the comments I see here at Patently-O.
    It seems bizarre, for example, to suppose that only someone with patent prosecution experience could make valuable contributions to patent system policy formulation. Patent litigation, in which I have some experience, gave me a reasonable basis for policy engagement. Patent law also implicates administrative law, technology policy, the psychology of creativity, and much else besides. Open exchange on substance with others, who know things I don’t, helps me greatly. Bile-filled invective doesn’t.
    Why so much negative feeling for, e.g., Prof. Lemley, who – among other things – remains actively engaged in patent litlgation and other i.p. litigation. Is it simply because he has proposed policy options that would, e.g., make it harder for some patent prosecution lawyers to make as much money in the same manner as they have in the past?
    Again, I’m interested to know your thoughts on this ferocious disdain some of your commenters have for lawprofs.

  57. 6

    Apart from the issue that many IP Profs have no experience with patent prosecution (or science), a large number of them have formed a pack, promoting self-fulfilling prophecies through mutual back-scratching (citation daisy chains). Additionally, because of the connectivity, there is little tendency to criticize the work of other IP profs.

    See also

    link to ipbiz.blogspot.com

  58. 5

    6,

    Read the cert brief filed by 24 law professors in the KSR International case. Strandburg is one of the primary authors of that brief. Enjoy the “lack of reality” that brief espouses.

  59. 2

    So Strandburg is moving onto NYU? Frankly, her views on KSR International made no realistic sense to me. That’s quite common with academia who have had no, or minimal, experience in the “real work” world.

  60. 1

    I can’t say I read you guys too often, but based on recent PatentlyO posts, and the misguided lies we can expect from Mark Lemley in his upcoming testimony – you guys really need to get some practical knowledge of the law!

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