January 31, 2007 by thomason.

If the IP bar is governed by an aristocracy, then it would have to include those on the Federal Circuit Court of Appeals.  Others too may hold rank on this social register.

The CAFC recently proposed to amend its rules that concerned opinions it deems non-precedential.  One comment filed with the rules panel was that the CAFC rules give little insight about what makes a case precedential, vel non.  Would a unique issue, decided in mere workmanlike fashion, be non-precedential; would a stellar review, involving a pedestrian issue of claim construction, deserve the banner of precedential authority.  Another matter left to the vagaries of discretion.

One theory, based on observation rather than linear proof, is that precedential rulings typically involve large, well-known law firms representing the appellant.  So too with the lesser side of the docket, where the non-precedential decisions of the CAFC name small firms as counsel for the appellant.  The theory derived from this is that small firms present less significant issues, or that their arguments result in insignificant CAFC rulings.  Use your own imagination to postulate how the theory applies when large law firms appear for an appellant before the CAFC.

Just take the rulings in January 2007.  Appellants’ counsel in the non-precedential decisions had names such as Cislo & Thomas (14 attorneys), Lambert & Associates (4 attorneys), Matthews, Lawson (13 attorneys), and Yetter & Warden (22 attorneys).  The largest firm in the 2007 non-precedential group was Middleton & Reutlinger (47 attorneys).  Compare that against the firms named as appellants’ counsel in the precedential rulings: Robins Kaplan, Baker & Botts, Fulbright & Jaworski, Leydig Voit, Morrison & Foerster, Sidley & Austin - all large firms.  Among the 2007 setters of precedent for appellants at the CAFC in January, the firm of Moses & Singer (@90 attorneys) was about the smallest.  The one exception was 35+ attorney firm representing appellant in the Int’l Electronic case, in which the “court takes umbrage” and puts all “members of the bar …on notice” that sanctions may be imposed for appealing a non-final order.  Everyone needed to know that precedent.

It’s just an theory derived from observations, drawn upon meager statistics.  Still, would it be just for the appeals presented by large firms to be favored, or for the issues pleaded by small firms to be disdained or given second rank.  The case and the issues, not the counsel, should make a CAFC case important enough to be accorded the treatment given to precedential decisionmaking.

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January 30, 2007 by thomason.

The IP bar deserves to be commended for its studied efforts protecting the IP of the businesses, innovators and artisans of our Country.  Instead, the legal protections sewn around IP appear to provoke more criticism of U.S. patents and copyrights, and to foment calls to slacken the bonds permitted by Art. I, Sect. 8, clause 8.

Much of critique is aimed at Congress or the Courts, but there too are some who suggest tossing away long-standing IP principles.  Some critics are idle bloggers or academics, but other voices carry more weight.  Here are some striking remarks by one worthy observer.  A “plagiarized passage in a published work can increase the pleasure of the reader.”  The “amount of sheer originality in literature and the arts is greatly exaggerated.”  “[O]ur broad and strict copyright laws …stifle creativity.”

These passages are taken from “In Defense of Plagiarism” by noted Federal Judge, Richard A. Posner, in the Jan. 29^th edition of Forbes.  His Honor makes three proposals: stop extending copyright terms, add an intent element to infringement, and provide remedies only for proven harm to the “source, a competitor or an audience.”  Posner’s money quote is “No harm, no foul is what the law ought to be.”

Many may agree that legislating term extensions to existing copyrights does not serve the public good.  Posner may have that right, but it gets overshadowed by his suggestion to “bring in the concept of fraud,” to the copyright law “with its connotation of harming”.  Posner’s thesis is that copying has benign forms, “If copying is not fraudulent” and “if it thus is harmless” then why should it be “a reprobated form of copying.”  Because it is unoriginally wrong?

He adds many examples of now-famous persons who were copyists, who in his opinion, improved on the original.  Posner claims that Manet “borrowed the woman’s pose” in his painting of “Olympia” from the master Titian’s “Venus of Urbino.”  Dear Judge Posner, naked women reclined in repose might look all the same through your spectacles, but the keen eyes of others never would mistake the lissome Olympia for the full-figured Venus.  So too, no studied reader would confuse Plutarch’s “Mark Antony” with either of the retellings written by Shakespeare and by Sir Thomas North.  Again, tales of one figure in history tend to have shared content, or their tale would not be true to history.

Judge Posner, in my humble view, suggests a copyright regime built in honor of established authors.  If the work of unknowns can serve as the inspiration for others to “improve the original” then they are certain to remain unknowns.  Posner justifies his no-harm, no-foul thesis with the notion that “plagiarism is ubiquitous in Western culture.”  That same point of reference may be a solid rationale for granting copyrights, for “limited Times to Authors,” which are enforceable with remedies not excused by a lack of fraudulent intent or an absence of provable harm.

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January 18, 2007 by thomason.

Did not my 7^th grade math book ask, if three persons can complete a task in 37.5 minutes, then how long would it take six persons?  The answer, based on CAFC decisions since Thanksgiving would be that two panels of three persons take twice as long to review a case than one panel – cause they do it twice.  Grappling with this inverse proposition, makes it more understandable why colleges put the math and philosophy departments in the same building.  But, I digress.

In the past months, the CAFC has busily issued opinions in cases that previously have been before that Court.  The most recent is Transclean v. Jiffy Lube, which affirms offensive collateral estoppel against a patentee who won an earlier infringement case.

Oh swell, the value of patents continues to be reduced.  A winning patentee may not get a post-verdict injunction; a patentee who settles based on a license has to worry that the licensee later will challenge validity, and now, winning an infringement suit against a maker can preclude later suits against other known infringers.  What’s next, no need for the infringer to prove teaching, motivation or suggestion?

The ‘back for a return engagement’ aspect of Transclean describes too the recent CAFC rulings in the E-Pass, the Abbott v. Andrx, and the Plumtree cases.  The recent E-Pass ruling works off a pre-Phillips claim interpretation decision in 2002.  The 2006 Plumtree decision now asks whether the 2005 case, involving a patent with slightly different claims, provided that “reasonable apprehension” that our Founding Fathers must have been thinking about when they quill-penned Article III onto the parchment. 

Now, in Transclean, the panel seems to focus on the opposite end of that apprehension spectrum, where the patentee does not give potential infringers a reason to expect suit.  The earlier, successful suit was affirmance of an infringement judgment granted as a discovery sanction.  There too was garden-variety infringement, over the disputed claim term “resilient”, but the earlier CAFC panel vacated (punted on) that, because one cannot be twice as much an infringer, i.e., the infringement as a sanction was adequate relief.  Of course, had the garden-variety infringement not been vacated, that would have come into play when Transclean II reached the CAFC, where the infringement sanction became grounds to preclude, as collaterally estopped, the patentee’s suit against the customers of the infringer in Transclean I. 

On second review, this is not at all like 7^th grade math.  It is much more like the Myth of Sisyphus, and the philosophic battle between dung-balls and gravity.

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January 15, 2007 by thomason.

You probably watched a film over this long weekend, perhaps at a theatre and at home.  Seeing the FBI & Interpol WARNING about copyright infringement in 16:9 aspect on my new HD setup really made a big impression. 

My viewing pleasure was The New Bond Film (does it have another title?), The Good German, and two classics, Lawrence of Arabia, and Rocky.  Each has that central figure, with their own essential male-ness - strengths that cloak vulnerabilities, wise ways that may just be instincts, admired by men and women to the point that some want them destroyed - no one of them the sort you’d raise your son to be.

Each of these films has its own copyright profile too.  Lawrence is an original portrayal of a life in actual historical context.  The New Bond and his exploits derive from, but differ from Ian Fleming’s novel.  Rocky depicts a flamboyant heavyweight champ named for an earth god, who plucks an unknown club fighter into the limelight.  The Good German uses visual composition to pay homage to past films.  Artistic license, and the copyright tenets that provides exclusivity, provides full vocal range to these characters and to directorial efforts composed from history and popular culture.  What limits then are there on making a known story one’s own.

Recent cinema has retold ‘true’ or ‘inspired by’ stories of Ray, Johnny Cash, Enron execs, The Aviator, and now, “Bobby.”  These biopics are more history, or pop culture fables, than “works of original authorship.”  When the famous or infamous say “I’ll sell you my story,” what really do they sell - a covenant not to sue?  The great exploits of Lawrence in Arabia are true, and many truly are exagerrated.  With that, and ”Bobby,” the man who lived the story died before it was adapted for the silver screen.   Events in history are publici juris, and uncopyrightable.  Yet, the expression or arrangement of the historical story may be protected by copyright.

Is “Lawrence of Arabia” any more T.E. Lawrence, or any less so, than “Rocky” is a depiction of The Bayonne Bleeder, Chuck Wepner; is not Apollo Creed a crass version of The Louisville Lip?  Copyright cannot protect the author’s studied retelling of the facts, especially when those facts and the essential characteristics of real persons are woven into new costuming.

The Bond franchise credits its originator, but the films produced by Albert Broccoli derive from, rather than track closely, the books of Ian Fleming.  Both are original works, protected by copyright, one for the originals and others for the derivative versions.  A derivative copyright protects only the new material contained in the derivative work, not the matter derived from the underlying work.

A more complex issue of copyright accompanies “homage” films such as The Good German.  Students of film noir, neo-noir, as well as fans of Dietrich, Garbo and Welles can reel off the numerous instances where The Good German pays homage to their prior work.  “The Third Man” “Casablanca” and others, plainly were recast in The Good German.  Recall the cases about “look and feel” form of copyright infringement.  Director Steven Soderbergh adopts, in gross, the look and feel of several classics and noir films.  In fact, scenes or perhaps Scènes à faire, appear throughout the film.  What then is the distinction between homage and “substantial similarity” in a copyright context?  At least one of the two will get you sued.  Homage is perhaps a sincere form of showing your respect for the masters.  Substantial similarity is what chafes an author to the point of suing for exploitation.

It’s another week, with plenty of opportunities to watch more films.  Enjoy!

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January 10, 2007 by thomason.

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Flash back to those bitter-sweet hours you spent in Civ. Proc., wondering ‘what is this man talking about; Art. III controversies?’  Then, fast forward to J. Scalia’s opinion in Medimmune v. Genentech (2007), and you may begin wondering what was discussed on those days you slept through that class.  The fun part of his opinion comes in the derisive footnotes aimed at J. Thomas’ dissent, particularly the fn. 10 perjorative about Clarence “quoting wildly out of context” with “a snippet [that] has nothing to do with” what Scalia knows to be the case.

Note to the publish-or-perish crowd, get working on that Article III article about the decisive permutations in the Altvater, Lear, Cardinal Chemical, Holmes Group, and Medimmune opinions.  Add in the ‘what-we-do-not-decide-today’ aspects, and after it’s edited in final, toss the whole of it in the recycle bin.

The bar had supposed that Medimmune would decide something new.  The simplistic view now is that Scalia tossed a stare decisis, no-hitter then went back to his hobbitat.  After scrounging every useful snippet his clerks found in cases “where threatened action by the government is concerned,” His Honor arrives “fortuitously” at civil precedent, Altvater v. Freeman, (1943). 

Altvater may, or not, be one of the cases Scalia earlier had mentioned, which “do not draw the brightest of lines between those [DJ] actions that satisfy the case-or-controversy requirement and those that do not.”  The key point (used “wildly” by some) for distinguishing Altvater from Medimmune was that the former case involved an infringement suit that provoked an invalidity counterclaim.  J. Scalia puts Altvater on the bright side of the law, and bolstered by his viewpoints of policy and logic, he relies on it to decide what patent lawyers and the Federal Circuit had never before known to be so. 
When that licensing deal just doesn’t ‘feel right’ anymore, become apprehensive about validity.

On the policy arguments and patent logic espoused by Justice Scalia, I am reminded of his prior works.  Jurisdiction over patent clashes “is much less tied to general principles of law with which I am familiar, and much more related to the peculiarities of patent litigation, with which I deal only sporadically.”  J. Scalia, concurring in Cardinal Chem v. Morton, 508 U.S. 83, 103.  Indeed, invoking federal court jurisdiction over patent claims in a compulsory counterclaim would require a “neologism” grafted upon “an unprecedented feat of interpretive necromancy,” J. Scalia, in Holmes Group v. Vornado, 535 U.S. 826, penultimate ¶. 
Fashioning that wisdom into settled law, the majority opinion holds that, against a licensor who “engages in a danse macabre, brandishing a Damoclean threat with a sheathed sword” (Cardinal Chem., at 96 quoting, J. Markey), a paying licensee like Medimmune may dispute validity, because to declare a patent’s “valid[ity] if it is not infringed is to [NOT] decide a hypothetical case,” Altvater v. Freeman, 319 U.S. at 363.

What further was ‘not decided today’ involved the discretionary nature of declaratory judgment jurisdiction, by which the court “may declare” rights.  §2201.  Those “equitable, prudential, and policy arguments in favor of a discretionary dismissal” are to be considered “on remand.”

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January 9, 2007 by thomason.

It’s perhaps is an indictment of our schools when commentators seize upon random bits of numerical measure, and from that, fashion points and corollary conclusions.  A recent Booz Allen + Hamilton report concludes that more R&D spending does not “necessarily create more valuable innovations” and that the “important innovations don’t involve new patents.”  From the scatter of statistical seeds from which those observations sprang, BA+H erects a rule (set out in bold type) that “Patents generally don’t drive profits (em. del.).” 
Casting aside the devilish details and courtesanal caveats of BA+H, the bold type conclusion of the BA+H report has been seized upon by many of the patent-haters in our blawgoshere to prop up their anti-patent agenda.  A good example is my favorite patent-hater, Mike over at techdirt.com (which really is a fine tech news site).  The last patent that Mike liked probably issued in the late forties (indeed, Mike recently denigrated how few patented inventions came out of Edison’s lab).
So, I read the BA+H Patents report.  My technical training makes it hard to accept any hypothesis based on “no statistical relationship between” factoid A and numeroid B.  Wrapping my mind around separate points, HAVING a statistical relation, is more intellectually engrossing.  When BA+H posits that “we found no statistical relationship between financial performance and either patents counts or patent quality,” my sense is that nothing was proven or even connoted by that missing statistical link.  Would a panel accept for scholarly publication a study based on the lack of relation between two data sets?
At a minimum, the analysis behind the BA+H Patents proposition needs replacement data with statistical relation, data normalized within industry groups, or its premise tossed since it lacks relevant, statistically probative data.Still, once I’d wrapped my mind about the spring inside the BA+H Patents timepiece, to recast the data was an intellectual necessity.  Here’s some wheat germs gleaned from exhibit 10b in the BA+H Patents report.  Taking the premise that more [R&D $] makes more [patents] but not “necessarily” more [moola, jack, gelt, ka-ching, G’s], then focusing on the contrary data, one asks: does spending less on R&D, mean less patents, profits, etc.  Consider only the @20 listed “High-Leverage Innovators” which spent less than @2% of their sales on R&D.  Of these, Conoco spent 0.1% of its sales on R&D, but has over 900 patents (not including those of Phillips).  ExxonMobil’s R&D was 0.2% of sales, and the combined companies hold over 12,500 patents.  Are these petrochemists innovators; do they make tons of money?  Ecolab, which makes cleaning and sanitizing chemicals, applied 1.5% of its sales to R&D, and holds almost 650 patents.  Again, innovator; financially successful?  Indeed, do any of the 92 companies on exhibit 10b hold no patents, need no patents, profit not from their patents?  Read what BA+H says about SanDisk’s profits.
Overall, the surficial points glossed off the BA+H Patents data were that some industries, e.g., medical, spend a larger portion of their sales revenues on R&D, and that companies in the Far East spend a larger percentage than do those in the U.S.  These two points suggest (a) that certain industries that enjoy higher margins, protected by patents, consider greater R&D expenditures necessary and worthwhile, and (b) that the U.S. could fall behind other global economies that rely on IP and R&D budgets to acheive their high profitability.
Those stats are relevant and related.  The notion in the BA+H report that patents play an insignificant role relies on the lack of a “statistical relationship.”Overall, the surficial points glossed off the BA+H Patents data were that some industries, e.g., medical, spend a larger portion of their sales revenues on R&D, and that companies in the Far East spend a larger percentage than do those in the U.S.  These two points suggest (a) that certain industries that enjoy higher margins, protected by patents, consider greater R&D expenditures necessary and worthwhile, and (b) that the U.S. could fall behind other global economies that rely on IP and R&D budgets to acheive their high profitability.Those stats are relevant and related.  The notion in the BA+H report that patents play an insignificant role relies on the lack of a “statistical relationship.”Overall, the surficial points glossed off the BA+H Patents data were that some industries, e.g., medical, spend a larger portion of their sales revenues on R&D, and that companies in the Far East spend a larger percentage than do those in the U.S.  These two points suggest (a) that certain industries that enjoy higher margins, protected by patents, consider greater R&D expenditures necessary and worthwhile, and (b) that the U.S. could fall behind other global economies that rely on IP and R&D budgets to acheive their high profitability.Those stats are relevant and related.  The notion in the BA+H report that patents play an insignificant role relies on the lack of a “statistical relationship.”

Overall, the surficial points glossed off the BA+H Patents data were that some industries, e.g., medical, spend a larger portion of their sales revenues on R&D, and that companies in the Far East spend a larger percentage than do those in the U.S.  These two points suggest (a) that certain industries that enjoy higher margins, protected by patents, consider greater R&D expenditures necessary and worthwhile, and (b) that the U.S. could fall behind other global economies that rely on IP and R&D budgets to acheive their high profitability.Those stats are relevant and related.  The notion in the BA+H report that patents play an insignificant role relies on the lack of a “statistical relationship.”

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January 4, 2007 by thomason.

It took awhile, but the CAFC finally spoke the phrase, a “motivation” to combine.  It’s been months since the patent panelists were putting forth daily reads on the subject.  Then, after the Supremes held O/A in KSR v. Teleflex, the TSM channel had gone silent at the CAFC.

In Eli Lilly & Co. v. Zenith Goldline Pharm., (Fed. Cir. 12/26/2006), about all the panel did was to mention the “motivation” prong of obviousness, but the Kahn and Rouffet decisions were cited authoritatively for the following proposition.  “Rather, to establish a prima facie case of obviousness based on a combination of elements in the prior art, the law requires a motivation to select the references and to combine them in the particular claimed manner to reach the claimed invention.”One wonders how so many appeals about obviousness can precede the KSR case, but then so few come thereafter.  There hardly is a case, where infringement can be proven, that does not devote substantial time to obviousness, and to asking: TSM, yea, or nay.  We are left to suppose that a backlog of obviousness appeals is building at the CAFC, which (post-KSR) may lead to a mass remand “to reconsider in light of the Supreme Court’s ruling” on what constitutes obviousness.

One wonders how so many appeals about obviousness can precede the case, but then so few come thereafter.  There hardly is a case, where infringement can be proven, that does not devote substantial time to obviousness, and to asking: TSM, yea, or nay.  We are left to suppose that a backlog of obviousness appeals is building at the CAFC, which (post-) may lead to a mass remand “to reconsider in light of the Supreme Court’s ruling” on what constitutes obviousness.

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