New York Law School professor James Grimmelmann has written a wonderful, much-needed online essay entitled “Copyright, Technology, and Access to the Law: An Opinionated Primer.”  It’s available here.

Here’s the opening paragraph:

Recently, the state of Oregon has used copyright law to threaten people who were publishing its laws online. Can they really do that? More to the point, why would they? This essay will put the Oregon fracas in historical context, and explain the public policies at stake. Ultimately, it’ll try to convince you that Oregon’s demands, while wrong, aren’t unprecedented. People have been claiming copyright in “the law” for a long time, and at times they’ve been able to make a halfway convincing case for it. While there are good answers to these arguments, they’re not always the first ones that come to hand. It’s really only the arrival of the Internet that genuinely puts the long-standing goal of free and unencumbered access to the law within our grasp.

As the saying goes, read the whole thing!

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.”

Together with my colleague, Geoff Manne, I have organized a conference on the nonobviousness doctrine following the Supreme Court’s KSR case last term.  The conference is entitled, “Nonobviousness - The Shape of Things to Come.”  It’s a great line-up of participants, and should be an excellent conference.  You can find details here.  Here’s the program:

FRIDAY

8:00 a.m. Registration and Continental Breakfast

8:30 a.m. Welcome and Introduction

Lisa LeSage Associate Dean and Director of Business Law Programs
Joe Miller, Associate Professor, Lewis & Clark Law School
8:45 a.m. Morning Session I - Law
Panelists:
Gregory Mandel, The Nonobvious Problem
John Duffy, Racing, Timing, and the Patenting Standard
Rebecca Eisenberg, Pharma’s Nonobviousness Problem

Commenter:
Rochelle Dreyfuss
10:15 a.m. Break

10:30 a.m. Morning Session II - Economics
Panelists:
Suzanne Scotchmer, Nonobviousness, Options and the Scarcity of Ideas
Scott Stern, The Strategic Impact of Patent Office Standards
Vincenzo Denicolo, The Nonobviousness Requirement with Complementary Innovations

Commenter:
Michael Katz
Noon Lunch
Keynote Speaker - Kevin Rivette
Mr. Rivette is currently the Chairman of the USPTO Public Patent Advisory Committee. He recently served as IBM’s Vice President of Intellectual Property Strategy.
1:15 p.m. Afternoon Session I - Psychology
Panelists:
Keith Sawyer
Colleen Seifert, Now Why Didn’t I Think of That? The Cognitive Processes That Create the Obvious,
Steven Smith, Invisible Assumptions and the Unintentional Use of Knowledge and Experiences in Creative Cognition

Commenter:
Janet Davidson
2:45 pm Break

3:15 pm Afternoon Session II - R & D Perspectives
Panelists:
Mark Blaxill, Senior Partner & Managing Director, Boston Consulting Group
Ian Harvey, Chairman, Intellectual Property Institute (UK)
Damon Matteo, Vice President for Intellectual Capital Management, Xerox PARC
Kevin Rivette, Chairman, USPTO Public Patent Advisory Committee

Moderator:
Andy Culbert, Associate General Counsel, Microsoft Corp.

4:30 pm Reception
SATURDAY

9:00 am Morning Session I - Law
Panelists:
Katherine Strandberg, Nonobviousness and Nerd Culture
Joseph Miller, Are Erroneous Patent Denials Better Than Erroneous Grants?
R. Polk Wagner, KSR, the Supreme Court and the Future of Patent Reform

Commenter:
Robert Merges
10:30 am Break

Noon Lunch & Conference Close

The Federal Circuit, alone among the U.S. Courts of Appeals, has the power to hear cases before a five-judge panel (rather than a three-judge panel).  It also has the power to decide, by local rule, when it will hear a case with a five-judge panel.  Here’s the key language from 28 U.S.C. § 46(c):

Cases and controversies shall be heard and determined by a court or panel of not more than three judges (except that the United States Court of Appeals for the Federal Circuit may sit in panels of more than three judges if its rules so provide), unless a hearing or rehearing before the court in banc is ordered by a majority of the circuit judges of the circuit who are in regular active service.  (Emphasis added).

And the Court has certainly heard patent cases with five-judge panels.  See, e.g., Animal Legal Defense Fund v. Quigg, 932 F.2d 920 (Fed. Cir. 1991).

So … here’s my somewhat odd idea to help reduce interpanel unpredictability (if one thinks, as some do, that there’s too much such unpredictability): If, after oral argument in a case, a three-judge panel splits its vote (i.e., there’s a dissenter), the case is reassigned to a five-judge panel that includes two more judges (as well as the original three) for a new argument (and more briefing, if needed).  In practical terms, this gives the dissenter the chance to persuade two other colleagues and become a new, three-person majority.  Or not.  Either way, the resulting decision involves more focused consideration by a greater number of the court’s judges.

What do you think?

Patently-O has the report: a day after the PTO published it’s new continuation and claiming rules, a suit’s been filed challenging the regulations on a host of theories.

A few thoughts …

(1) The constitutional arguments are just silly, proposing standards that have never been the law and aren’t going to be any time soon.

(2) The regulatory / Patent Office power arguments aren’t as silly, but they’re close. In my view, here’s what anyone who wants to knock out the new regulations on the ground that they’re beyond the Patent Office’s longstanding, sweeping power to “establish regulations, not inconsistent with law, which shall govern the conduct of proceedings in the Office,” 35 U.S.C. section 2(b)(2)(A), needs to be able to explain: As a matter of regulatory power, how are the continuation rules any different from, e.g., the rule that the application be presented in English (37 C.F.R. section 1.52(b)(1)(ii))? Or, for that matter, that it be presented on a particular type of paper (37 C.F.R. section 1.52(a)(1))? And it’s not enough to shout, as the complainers typically do, that section 120 provides for continuation applications. A continuation application filed in Finnish, or in white print on black paper, won’t be accepted.  Why should the third, or fourth, or fifth continuation application be accepted, without any explanation from the applicant about why the claim amendments and/or supporting arguments couldn’t have been presented earlier? How are the new rules different, given that — like the rule requiring an English-language disclosure — these rules are reasonably (if not perfectly) designed to help the Patent Office do its job of evaluating whether a given claim passes muster under the Act (including the written description requirement of section 112!)? Unless someone has a cogent answer to this question (and I haven’t heard one yet), the Patent Office rules strike me as an eminently reasonable, lawful exercise of the Office’s regulatory power to create an effective examination process at the Office.

I refer, of course, to Universal Music Group v. Augusto.

Augusto resold a UMG free promotional music CD on eBay. UMG alleges it’s copyright infringement.

EFF is on the case for Augusto, along with Keker & Van Nest.

Here’s the web page for pleadings, at EFF.

Tim Lee has written about the case, at both Ars Technica and The American.

A question I have … is the Bobbs-Merrill Co. case, the fountainhead of the first sale doctrine, any weaker now that the Supreme Court has, in the Leegin case, overturned the Dr. Miles case (which had held that resale price maintenance was a per se antitrust violation)? After all, the sale condition the book publisher purported to impose in Bobbs-Merrill was a resale price maintenance condition …

Mike Madison has an excellent post on free riding, over at Madisonian.

Check it out …

Peter Lattman, in today’s Wall Street Journal, reviews KSR’s aftermath in nonobviousness cases.

[ Hat tip to The Patent Prospector ]

The nonobviousness statute, 35 U.S.C. sec. 103, contains a subsection specially tailored to the patentability of biotechnological processes. It is sec. 103(b). Kevin Noonan has a wonderful post at Patent Docs that explains the sense in which KSR may have breathed quite a bit of new life into subsection (b)’s special rule for these process claims.

Today, the Federal Circuit issued its first precedential post-KSR decision on the question of obviousness. In the case, Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., No. 06-1402 (Fed. Cir. May 9, 2007), the Federal Circuit (Judge Lourie, writing for himself and Judges Mayer and Dyk) affirms a trial court’s bench trial determination that the claimed invention would have been obvious.

The case is a “must read.” The Federal Circuit embraces the KSR Court’s cautious attitude toward combination claims. The following paragraph is indicative:

We agree with Fisher-Price that the district court correctly concluded that the subject matter of claim 25 of the ’861 patent would have been obvious in view of the combination of Bevan, the SSR, and the knowledge of one of ordinary skill in the art. An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 2007 WL 1237837, at *12 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Thus, we bear in mind that the goal of the claim 25 device was to allow a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in that word. In this way, the child would both associate the sound of the letter with the letter itself and be able to sound out the word one letter at a time to learn to read phonetically. Accommodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years.

Slip op. at 8.

The following two paragraphs are also, to me, especially striking:

We agree with the district court that one of ordinary skill in the art of children’s learning toys would have found it obvious to combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost. While the SSR only permits generation of a sound corresponding to the first letter of a word, it does so using electronic means. The combination is thus the adaptation of an old idea or invention (Bevan) using newer technology that is commonly available and understood in the art (the SSR). We therefore also find no clear error in the finding of the district court that one of ordinary skill in the art could have utilized the electronics of the SSR device, with the method of operation taught by Bevan, to allow a child to press each individual letter in a word and hear the individual phonemes associated with each letter to sound out the words.

This combination of Bevan and the SSR lacks only the “reader” of claim 25 of the ’861 patent. The district court found that readers were well-known in the art at the time of the invention. As there is ample evidence in the record to support that finding, we find no clear error in the court’s determination. Furthermore, the reasons for adding a reader to the Bevan/SSR combination are the same as those for using readers in other children’s toys — namely, providing an added benefit and simplified use of the toy for the child in order to increase its marketability. Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art. See KSR, 2007 WL 1237837, at *15. Nor does Leapfrog present any evidence that the inclusion of a device commonly used in the field of electronics (a reader), and even in the narrower art of electronic children’s toys, represented an unobvious step over the prior art. Our conclusion is further reinforced by testimony from the sole inventor at trial that he did not have a technical background, could not have actually built the prototype himself, and relied on the assistance of an electrical engineer and Sandia National Laboratory to build a prototype of his invention.

Slip op. at 10-11.

The only time the Federal Circuit refers to the question whether the prior art provided a motivation to combine the prior art references is in describing Leapfrog’s rejected contentions. The words “suggest” and “suggestion” do not appear anywhere in the court’s opinion.

UPDATE: Here’s Patent Prospector’s take on the case, with extended excerpts.

UPDATE 2: And Dennis Crouch’s take at PatentlyO.