Here is Clay Shirky’s talk at Web 2.0 (Apr 23, 2008), called Gin, Television, and Social Surplus.

My favorite bit: “The way you explore complex ecosystems is you just try lots and lots and lots of things, and you hope that everybody who fails fails informatively so that you can at least find a skull on a pikestaff near where you’re going. That’s the phase we’re in now.”

Read it.  Seriously.

What do you think is the most important law review article about patent law that was published in the 1980s?

What do think is the most important law review article about patent law that was published in the 1960s?

Today, in Agrizap, Inc. v. Woodstream Corp. (Fed. Cir. May 28, 2008), the Federal Circuit overturned a jury verdict of nonobviousness. The claimed invention is a rodent electrocution trap, U.S. Patent No. 5,949,636. The key difference between the ‘636 trap and the key prior art trap (a trap the patentee sold more than a year before the ‘636 patent’s filing date) is that the prior art trap used a mechanical switch and the claimed trap uses a resistive switch.

The Federal Circuit’s analysis employs a post-KSR presumptive obviousness framework that I think we’ll see quite a bit of in the coming years. Here’s the entirety of the court’s substantive analysis of the nonobviousness question:

This is a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results. KSR, 127 S. Ct. at 1739. The only difference between the Gopher Zapper and the asserted claims, as conceded by Agrizap, is the type of switch used to complete the circuit that triggers the generator. The asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch employed by the Gopher Zapper. As illustrated by the Dye and Madsen patents, the use of an animal body as a resistive switch to complete a circuit for the generation of an electric charge was already well known in the prior art. In favoring resistive switches over mechanical switches, both the Dye and Madsen patents are directed to solving the same problem as the ’636 patent—the malfunction of mechanical switches in environments prone to dirt and dampness. See ’746 patent col.1 ll.43-46, ll.53-63; ’809 patent col.1 ll.31-55.

In this case, the objective evidence of nonobviousness simply cannot overcome such a strong prima facie case of obviousness. Similarly, in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., we held that the objective considerations of nonobviousness presented in that case, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid. 485 F.3d 1157, 1162 (Fed. Cir. 2007). Based on the foregoing, we reverse the district court’s denial of Woodstream’s motion for JMOL as to the obviousness of the asserted claims.

An interesting article from Chandler Burr in today’s New York Times, about the invention of scent molecules in the perfume trade.
Here’s the first paragraph:

Its scent is reminiscent of a mixture of a just-picked apple and a rose in its prime. But to the Takasago International Corporation, which manufactures this synthetic material, it smells even sweeter.

As they say, read the whole thing!

( I wonder if the perfume folks are as agitated about patent reform as big pharma … )

The Federal Circuit has taken In re Bilski, the patentable subject matter case, en banc.

According to the September 2006 BPAI decision rejecting Bilski’s claims on section 101 grounds, Claim 1 is as follows:

1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;

(b) identifying market participants for said commodity having a counter-risk position to said consumers; and

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

The Federal Circuit en banc order asks for a supplemental brief from each of the parties, Bilski and the PTO, by March 6, 2008. Amici can file briefs “30 days thereafter.” By my count, that would put the amicus brief deadline on Saturday, April 5. And under Fed R App P 26(a)(3), that Saturday becomes the next Monday, April 7.

Here are the questions in the court’s en banc order:

1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?
2. What standard should govern in determining whether a process is patent-eligible subject matter under section 101?
3. Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?
4. Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?
5. Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

Although the courts order doesn’t mention it, the closest analogue in the court’s recent section 101 cases appears to me to be In re Comiskey (Sept. 2007).

A potentially interesting fact about the database of Board of Patent Appeals & Interferences decisions available on Westlaw:

From 4/30/2007 (i.e., the date KSR issued) to now (which is 269 days), the phrase “common sense” appeared at least once in 233 BPAI opinions.

In the 269 days ending 4/29/2007 (the day before KSR), the phrase “common sense” appeared at least once in 58 BPAI opinions.  (That’s a 364% increase.)

Coincidence?  Hard to say …

You can pull down a copy of the BPAI’s remand decision(s) in In re Lee here.  The copy is a pdf; it starts with the Board’s denial of rehearing, and continues with the Board’s June 2006 remand decision.  The Federal Circuit affirmed the Board’s decision yesterday, as I noted.

A validly issued, well-crafted patent is a great good thing.  An erroneously issued, overbroad patent is a terrible, anticompetitive thing.  “Getting it right” is important, and there are many reasonable arguments on all sides of the complex implementation questions.

Is there a tie breaker in some of these policy debates, a default position to which we can return when we’re not precisely sure how best to proceed?  Like it or not, the Supreme Court has clearly used competition (and a right to copy) as our default.  To take a few examples:

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 33 (2003): “‘In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.’ TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001).”

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001): “Trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 160 (1989). Allowing competitors to copy will have salutary effects in many instances. ‘Reverse engineering of chemical and mechanical articles in the public domain often leads to significant advances in technology.’ Id.”

Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 213 (2000): “The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.”

Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 63 (1998): “As we have often explained, most recently in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 151 (1989), the patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time. The balance between the interest in motivating innovation and enlightenment by rewarding invention with patent protection on the one hand, and the interest in avoiding monopolies that unnecessarily stifle competition on the other, has been a feature of the federal patent laws since their inception.”

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 156-57 (1989): “Both the novelty and the nonobviousness requirements of federal patent law are grounded in the notion that concepts within the public grasp, or those so obvious that they readily could be, are the tools of creation available to all. They provide the baseline of free competition upon which the patent system’s incentive to creative effort depends. A state law that substantially interferes with the enjoyment of an unpatented utilitarian or design conception which has been freely disclosed by its author to the public at large impermissibly contravenes the ultimate goal of public disclosure and use which is the centerpiece of federal patent policy.”

This morning, the Federal Circuit affirmed the PTO’s remand decision in In re Lee rejecting the claims as invalid for obviousness; the case had been argued just 14 days ago, on Jan 8.  The court affirmed by a summary affirmance order, under Rule 36 … in other words, no opinion, just the word “Affirmed.”

In re Lee, in its prior trip to the Federal Circuit, gave the court a bit of a black eye: it was in Lee that the court opined that “[t]he ‘common knowledge and common sense’ on which the Board relied in rejecting Lee’s application are not the specialized knowledge and expertise contemplated by the Administrative Procedure Act. Conclusory statements such as those here provided do not fulfill the agency’s obligation.” 277 F.3d 1338, 1344 (Fed. Cir. 2002).

Compare KSR: “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” 127 S. Ct. 1727, 1742-43.