BusinessWeek has posted a detailed and fascinating profile of Nathan Myrhvold’s invention-generation-and-patent-acquisition-and-licensing firm, Intellectual Ventures. [ Hat tip to Patent Prospector. ]

The profile - which you should read if you’re interested in the business of i.p. licensing - makes a clear distinction between IV’s invention generation sessions (a.k.a. brainstorming sessions) and its patent acquisitions program.

Both components of IV’s strategy are fun to consider, and the combination is downright tantalizing.

Given my recent focus on patent law’s nonobviousness requirement, I’m particularly struck by Myrhvold’s insight, reflected in the way he structures the brainstorming sessions, that nonobvious invention so often lies in using information from far outside the art that is most pertinent to the problem at hand. (In other words, ordinary artisans are inventive within the conventional wisdom, and with the conventional tools, of their chosen art. The nonobviousness requirement reflects this fact by focusing, in section 103, on the prior art that is pertinent to the problem by the ordinary artisan’s lights.) Consider these passages, from the profile:

On June 17 it invited 10 of the most blindingly brilliant doctors and scientists in the country to a daylong brainstorming session at its headquarters in a nondescript office building next to a swamp in Bellevue, Wash. Assembling around a conference table, the diverse group, which included physicists from Lawrence Livermore National Laboratories, physicians from several major medical centers, and a Stanford University postdoctoral fellow in bioengineering, spent the day pondering a complex question: How can surgery be improved? …

Myhrvold’s time at Microsoft planted the seeds that would grow into his vision of IV, which he and Edward Jung, who had also been a top scientist at Microsoft, co-founded in 2000. One formative experience was his role in creating Microsoft Research, which now employs more than 700 researchers. A key insight he had in developing the operation, he says, is that predicting which inventions will be successful is enormously risky, and the only way to mitigate that risk is to invent on a very large scale. So just as a stock fund manager spreads his exposure over many positions, IV is aiming for a diversified portfolio of patents.

The invention sessions are part of that strategy. Myhrvold believes they enable IV to come up with breakthrough ideas because they combine the insights of an interdisciplinary group of experts in a way that rarely happens in industry, where expertise tends to be siloed. At the June 17 session, for instance, Lowell L. Wood Jr., a physicist who once designed nuclear weapons; Michael A. Smith, a chest surgeon from the University of Southern California; and Edward S. Boyden III, a biomechanical engineer, are among those at the table who watch as neurosurgeon Dennis J. Rivet gets up and walks over to the whiteboard.

This companion piece focuses on the IV brainstorming sessions.  Read all about it!

I started blogging here at TFOG on May 6. Today, the site passed the 3,000 mark for visits, and the 6,000 mark for page views, in SiteMeter. That’s about 55 visits a day (generating 110 page views a day), for the past 55 days.

Thank you for visiting the site. I hope you’re enjoying it. I am!

I’m also eager to hear your suggestions for how to improve TFOG, and topics you’d like to see discussed. For example, what survey question would you like to see in the upper left corner (in TFOG’s “Cast Your Vote …” feature)? What unsung corner of patent law should I explore? What sleeper case do you think is the next big thing?

Earlier today, I gave a talk to the Oregon Patent Law Association. I discussed the Supreme Court’s patent law decisions for the October 2005 Term, just concluded. The title of the talk was the same as the title of this post.

In what ways is the Supreme Court putting the law (back) in patent law, you ask? Well, it’s putting the law in “patent law” by shaping patent doctrine according to its generalist perspective. Thus, for example, in the eBay case, the Court opens its opinion by framing the injunction issue as a matter of making patent law more like the general federal law of permanent injunctions:

Ordinarily, a federal court considering whether to award permanent injunctive relief to a prevailing plaintiff applies the four-factor test historically employed by courts of equity. Petitioners eBay Inc. and Half.com, Inc., argue that this traditional test applies to disputes arising under the Patent Act. We agree and, accordingly, vacate the judgment of the Court of Appeals.

Its putting the law back in patent law in the sense that the Supreme Court is continuing its more recent trend of deciding more patent law cases each Term. On this phenomenon, the indispensable reference is John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 Supreme Court Review 273.

If you’re interested, you can look at my PowerPoint slides for the talk.

Dennis Crouch’s KSR cert grant post at Patently-O is drawing some great comments. The most savvy observation thus far is from Dennis himself, in the body of the post. It pertains to amicus briefs:

For those of you concerned about the potential impact of this case — It is very likely that the CAFC’s motivation test will be changed and briefs simply requesting “no change� are unlikely to to be given much weight. Proposed solutions, including analogies to other areas of law (and foreign law) may be helpful. In this case, I also believe that would be useful to provide the Court with a number of real-world examples of how the system works or how it should work.

Dennis hits a bull’s eye here. The thing that most convinces me is the superstrong position the SG (with the help of the PTO) has already taken against the teaching/suggestion/motivation test. Look at the Supreme Court’s decision in Festo for a sense of how powerful the SG’s advocacy can be in helping the Court formulate its approach to patent law:

Just as Warner-Jenkinson held that the patentee bears the burden of proving that an amendment was not made for a reason that would give rise to estoppel, we hold here that the patentee should bear the burden of showing that the amendment does not surrender the particular equivalent in question. This is the approach advocated by the United States, see Brief for United States as Amicus Curiae 22—28, and we regard it to be sound.

The teaching/suggestion/motivation test will not survive KSR unchanged. It may not survive it at all.

Early last month, I blogged a bit about the Federal Circuit’s decision in an interesting “printed publication” case, Bruckelmyer v. Ground Heaters, Inc. Those posts are here, here, and here.

Today, the Federal Circuit denied the en banc rehearing petition in the case. Judge Newman, joined by Judge Linn (the dissenter at the panel stage), offers a spirited dissent from the denial of en banc review in the case.

Here’s how Judge Newman summarizes the facts in the case, which, she concludes, don’t make for an invalidating “printed publication”:

The facts are not in dispute. The ‘085 and ‘301 patents were held invalid because of the existence of two drawings that were stored in the unpublished archive of an unrelated Canadian patent application by a different inventor. The drawings were cancelled from the Canadian application before the patent was granted, and are not referred to in the published Canadian patent. It is undisputed that these cancelled drawings are not available in any database or any library, and that no index, no catalog, no abstract suggests their existence or their content. It is not contested that the only way to obtain these drawings (although their existence was unknown) is to personally go to the Canadian Patent Office in Hull, Quebec, and ask to examine the file wrapper (the prosecution history) of this particular patent, which is entitled “Portable Construction Heating System”. This is not the method for heating frozen ground in preparation for pouring concrete, which is the subject of the patent in suit. The only lead to this particular Canadian prosecution record, we are told, is to observe that the broad recitation in the Canadian patent that “other typical uses [of the invention] are . . . thawing frozen ground,” and then to travel to Quebec to examine the file wrapper to see if it might contain information that was deleted from the Canadian application before issuance. This excised and unpublished and unreferenced material is not a “printed publication,” no matter how generously that concept is defined. This court improperly relies on it to invalidate the United States Patents here at issue.

UPDATE: Dennis Crouch, at Patently-O, writes about today’s decision.

As I discussed in my review of Justice Breyer’s dissent from the Court’s dismissal of LabCorp, Justice Breyer praises the role generalist judges can play in maintaining a sound body of patent law:

In either event, a decision from this generalist Court could contribute to the important ongoing debate, among both specialists and generalists, as to whether the patent system, as currently administered and enforced, adequately reflects the “careful balance� that “the federal patent laws … embod[y].� Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989).

I’ve added a new poll today, questioning the premise of Justice Breyer’s praise for generalist judging in patent law.  Does it help?  Hurt?  Make no difference, in the end?  Share your thought by casting vote!  (Or by leaving a comment …)

The LabCorp v. Metabolite case had me thinking … how often do patentees write claims that focus on an assaying-and-correlating sequence of the type under review in LabCorp?

I don’t have an answer to that question.  I can, however, share the results of three searches of the PTO’s database of issued patents.  One can do full-text searching of the claims back to 1976.  From that time to this, the PTO has issued more than 3 million utility patents.  Searching all the claim language, I can report that, as of today (Monday, June 26), there are …

• 101 patents with claims that contain both the terms “correlating” and “assaying”
• 12,245 patents with claims that contain the term “correlating”
• 2,226 patents with claims that contain the term “assaying”

No wonder some folks were worried about the LabCorp case.

The Supreme Court has granted review in KSR Int’l v. Teleflex, Inc., S. Ct. No. 04-1350. [ Hat tip to SCOTUSblog. ] This grant is consistent with the Solicitor General’s recommendation in the case, which I reviewed in some detail. The SG’s brief recommending review likely gives a strong preview of what the SG’s brief on the merits will argue.

For more background and links to all the petition-stage briefs in KSR, see the indefatigable Patently-O.

Assuming KSR does not seek an extension of time within which to file its opening merits brief, KSR’s brief is due on Thursday, August 10. (S. Ct. Rule 25.1 provides a 45-day briefing period after grant.) Any amicus briefs in support of KSR are due the same day. (S. Ct. Rule 37.3(a).) Because I don’t know whether KSR will seek an extension of time, I’m not going to calculate Teleflex’s due date here. The Supreme Court Rules are available on line.

The Court also denied review in FTC v. Schering-Plough, S. Ct. No. 05-273, an antitrust case about a patent litigation settlement that included a “reverse payment” from patentee to accused infringer.

UPDATE:  Dennis Crouch, at Patently-O, comments on today’s cert. grant in KSR.  He also provides a master collection of links.

I’m surprised that the Supreme Court dismissed the LabCorp case without deciding the patentable subject matter question in the case, or, at the very least, vacating the Federal Circuit’s decision and remanding the case for a “do over” (much as they did this past Monday a criminal law case, Youngblood v. West Virginia, as Orin Kerr decribes here). [ I’m going to leave to others the procedural question whether the Court should have decided the case on the merits. ]

I’m not at all surprised, however, at Justice Breyer’s views in his dissent from the dismissal order. Writing for himself and Justices Stevens and Souter — the same 3 justices who signed on to Justice Kennedy’s business-method- patent-skeptical concurrence in eBay v. MercExchange — Justice Breyer makes a number of points that should encourage accused infringers to fully litigate the “patentable subject matter” question before the Federal Circuit and on petition to the Supreme Court. Indeed, Justice Breyer’s opinion deserves close scrutiny because it states the views of 3 justices (i.e., 60% of the 5 votes one needs to win a case, and 75% of the 4 votes one needs to get the Court to grant review). It would merit close scrutiny even if he did not state that, for this trio, the case is an easy one on any approach to the patentable subject matter doctrine: “But this case is not at the boundary. It does not require us to consider the precise scope of the ‘natural phenomenon’ doctrine or any other difficult issue. In my view, claim 13 is invalid no matter how narrowly one reasonably interprets that doctrine.”

Continuing the generally skeptical perspective of his dissent Eldred v. Ashcroft, 537 U.S. 186 (2003) (upholding the constitutionality of the Sonny Bono Copyright Term Extension Act), Justice Breyer appears to treat the claim for i.p. protection as the one that most needs to prove itself. In other words, i.p. protection is the exception to open use of and competition in ideas, not the other way around. In this case, Justice Breyer focuses on a core theme in all of intellectual property law — namely, the need for balance at the sweet spot between too much i.p. protection and too little. He also strikes a new theme that I think runs through this Term’s two full decisions in patent cases (Illinois Tool Works and eBay) — namely, the need for a generalist (rather than specialist) approach to patent law doctrine. [ The Unitherm Food case, altough arising in the patent litigation context, is really about the rigors of Fed. R. Civ. P. 50, not about patent law. ]

More below the fold. (more…)

As my regular readers know, I’m steeped in a tangled set of big projects about patent law’s nonobviousness doctrine. I see many things through the prism of these projects … even things that, on the surface, have nothing to do with the issue.

Today’s example is this brief essay on creativity from Robin Hanson, an economics professor at George Mason University. [ Hat tip to Tyler Cowen at Marginal Revolution. ] In the essay, Hanson is out to point up some deficiencies in the ‘creative hero figure’ meme.

Here are the two paragraphs that most struck me:

The sobering truth is that the dramatic artistic creations or intellectual insights we most admire for their striking “creativity” matter little for economic growth. Creative new clothes or music may change fashion, but are soon eclipsed by newer fashions. Large and lasting economic innovations, like steam engines or cell phones, are rare and tend to be independently “invented” by many people. One less visionary would matter little.

Instead, the innovations that matter most are the millions of small changes we constantly make to our billions of daily procedures and arrangements. Such changes do not require free-spirited self-expression. Instead, people quite naturally think of changes as they go about their routine business and social lives.

The reason this grabs me is because it helps me express why I think our current nonobviousness standard (especially with its hard “suggestion test” component) is too low. All of us are, in our chosen arts, inventing obvious inventions all the time … without any documented suggestion pointing the way.