Understanding patent-quality mechanisms

University of Pennsylvania Law Review

Volumn 157, Issue 6, 2009, Pages 2135-2173

  Wagner, R Polk ^a  

^a UNIVERSITY OF PENNSYLVANIA   (United States)

Author keywords

[No Author keywords available]

Indexed keywords

EID: 69849111692     PISSN: 00419907     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (132)

1. See, e.g., FED. TRADE COMM'N, To PROMOTE INNOVATION: THE PROPER BALANCE OF COMPETITION AND PATENT LAW AND POLICY ch. 5 (2003), available at http:// www.ftc.gov/os/2003/10/innovationrptpdf (offering recommendations designed to improve patent quality);
2. NAT'L RESEARCH COUNCIL OF THE NAT'L ACADS., A PATENT SYSTEM FOR THE 21ST CENTURY (Stephen A Merrill et al. eds., 2004) (evaluating the current patent system and recommending seven changes to it);
3. Robert Pear, Patent Bill Is Bonanza to Lobbyists, N.Y. TIMES, Apr. 30, 2008, at C1 (reporting views on patent reform and quoting the U.S. Patent and Trademark Office (USPTO) Director as stating that "[w]e are getting more and more unpatentable ideas, worse and worse quality applications"). The need for patent-quality reform has also spurred various lobbying groups.
4. See, e.g., Intellectual Prop. Owners Ass'n, Patent Reform, http://www.ipo.org/ AM/Template.cfm?Section=Action-CenterScTemplate=/CM/ ContenuOisplay.cfm Sc ContentID=3361 (last visited Apr. 15, 2009);
5. Patent Fairness Coalition, http://patentiairness.org (last visited Apr. 15, 2009);
6. The Coalition for 21st Century Patent Reform, Patents Matter, http://patentsmatter.com (last visited Apr. 15, 2009).
7. One prominent critic of efforts to improve patent examination is F. Scott Kieff, who argues that a better approach is to move to a "soft-look" examination process. F. Scott Kieff, The Case for Registering Patents and the Law and Economics of Present Patent - Obtaining Rules, 45 B.C. L. REV. 55, 56-58 (2003)
8. [hereinafter Kieff, Registering Patents];
9. see also F. Scott Kieff, The Case for Preferring Patent-Validity Litigation over Second-Window Review and Gold-Plated Patents: When One Size Doesn 't Fit All, How Could Two Do the Trick ?, 157 U. PA L. REV. 1937, 1947-63 (2009) (arguing against a "beefed-up" segregated examination system in the PTO, and emphasizing the beneficial information learned during the patent litigation process). I explore this approach in more detail infra Part III.
10. See infra Section II.B.
11. See infra Section I.B.
12. See infra Section III.A.
13. See infra Section III.B.
14. 7See infra Part II.
15. 8See infra Section III.D.
16. See 35 U.S.C. §102 (2006) (requirement of novelty); id. §103 (requirement of nonobviousness); id. §112 (requirement of specification). While other provisions of the U.S. Code might also be described as standards of validity, including the subject matter and utility requirements, id. §101, and the inventorship requirement id. §116, the novelty, nonobviousness, and specification requirements are overwhelmingly the most important
17. F. Scott Kieff and Mark Lemley have both made versions of this argument. Kieff suggests that much patent-quality assessment is best left to the marketplace, while Lemley makes the less vigorous argument that it is likely rational to be relatively uncertain about patent quality ("rationally ignorant") at the USPTO, as so few patents have any substantial value in the marketplace.
18. See Kieff, Registering Patents, supra note 2, at 67-69 (describing with approval the "commercialization" model of patents, in which the "screening role" is played by the "competitors of the patentee");
19. Mark A Lemley, Essay, Rational Ignorance at the Patent Office, 95 Nw. U. L. REV. 1495, 1531 (2001) (concluding that determinations of patent quality "can be made much more efficiently in litigation, because only a tiny percentage of patents are ever litigated or even licensed to others").
20. I, as well as many others, have observed the information problems inherent in patent prosecution. See, e.g., Lee Petherbridge, Positive Examination, 46 IDEA 173, 181-84 (2006) (explaining patent prosecution procedures and noting that "the information costs incurred by the Patent Office are quite high");
21. Michael Risch, The Failure of Public Notice in Patent Prosecution, 21 HARV. J.L. & TECH. 179, 209-10 (2007) (noting the information problems of patent prosecutions resulting from "a lack of clarity in patent claims");
22. John R. Thomas, Collusion and Collective Action in the Patent System: A Proposal for Patent Bounties, 2001 U. III. L. REV. 305, 312-17 (explaining how the "overload" of information necessary to patent examiners may negatively impact "Patent Office work product");
23. R. Polk Wagner, Reconsidering Estoppel: Patent Administration and the Failure of Festo, 151 U. PA. L. REV. 159, 169-77 (2002) (discussing the "significant informational costs of patent prosecution").
24. Aldiough it is well beyond the scope of this Article to explore the underlying policy basis for the patent system, the highlight is that innovation has characteristics of a public good (i.e., the cost of providing the good does not increase with consumption, and it is generally infeasible to exclude others from consuming the good), and is likely to be underproduced in the absence of market intervention. The classic articulation of this idea is found in Kenneth J. Arrow, Economic Welfare and the Allocation of Resources for Invention, in THE RATE AND DIRECTION OF INVENTIVE ACTIVITY: ECONOMIC AND SOCIAL FACTORS 609, 614-16 (Nat'l Bureau of Econ. Research ed., 1962).
25. For an overview of public-good economics, see HAL R. VARIAN, MlCROECONOMIC ANALYSIS ch. 23 (3d ed. 1992).
26. For my views, see generally R. Polk Wagner, Essay, Information Wants to Be Free: Intellectual Property and the Mythologies of Control, 103 COLUM. L. REV. 995 (2003) (arguing that the quantity of "open" information in the public domain is likely to increase where information goods are more propertized).
27. For further information, see WILLIAM M. LANDES & RICHARD A POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 18-20 (2003) (describing the "public-good character of intellectual property");
28. Peter S. Menell & Suzanne Scotchmer, Intellectual Property Law, in 2 HANDBOOK OF LAW AND ECONOMICS 1473, 1476-78 (A Mitchell Polinsky Sc Steven Shavell eds., 2007) (explaining how the economic interest in intellectual property has grown "out of the cridcal importance of innovation to social welfare").
29. It is important to remember that the patent system does not merely introduce incentives to create inventions, but also to commercialize inventions and invest in inventive activity-that is, to create, more broadly, a market for innovative activity. See, e.g, F. Scott Kieff, Property Rights and Property Rules for Commercializing Inventions, 85 MlNN. L. REV. 697, 710 (2001) ("The patent right to exclude competitors... provides incentives for the holder of the invention and the other players in this market to come together and incur all costs necessary to facilitate commercialization of the patented invention.");
30. Wagner, supra note 11, at 193 n.105 (collecting sources describing "the number of activities that are stimulated by the existence of the patent system").
31. See, e.g., Henry E. Smith, Property and Property Rules, 79 N.Y.U. L. REV. 1719, 1729, 1754-1764 (2004) (discussing uncertainty in property rules).
32. In statistics, "type I" errors are false positives, while "type II" errors are false negatives. See GRAHAM UPTON Sc IAN COOK, A DICTIONARY OF STATISTICS 200-201 (2d ed. 2006) (discussing type I and type II errors in the "hypothesis test" entry). In the context of this Article, a type I error would be the inappropriate grant of a patent that did not fully achieve the standards of patentability, and a type II error would be the inappropriate denial of a patentable application.
33. These errors are also, of course, far less visible by their very nature.
34. 126 S. Ct 1837, 1842-43 (2006) (Kennedy, J., concurring) (noting the "potential vagueness and suspect validity" of many patents obtained by patent trolls). For subsequent developments, see Andrew Beckerman-Rodau, The Aftermath of eBay v. MercExchange, 126 S. Ct. 1837 (2006):
35. A Review of Subsequent Judicial Decisions, 89 J. PAT. & TRADEMARK OFF. SOC'Y 631, 633 (2007) (positing greater uncertainty, but finding relatively little change in courts' subsequent granting or denial of injunctions);
36. Jeremy Mulder, Note, The Aftermath of eBay; Predicting When District Courts Will Grant Permanent Injunctions in Patent Cases, 22 BERKELEY TECH. L.J. 67, 72 (2007) (noting that because eBay's equitable-standards approach provided little practical guidance to district courts, and because district court determinations are only reviewable for abuse of discretion, "district courts will shape the future of patent injunction case law").
37. See John Markoff, Two Views of Innovation, Colliding in Washington, N.Y. TIMES, Jan. 13, 2008, §3, at 3 (noting disagreement over the effect that legislation intended to combat "patent trolls" will have on innovation and prices).
38. Lawsuit information is provided by the Administrative Office of the U.S. Courts (AO) in its Annual Reports. Patent-filing data are provided by the USPTO Annual Reports. Calculation of in-force patents is conducted by reducing the total potential number of in-force patents (using expiration-date data) by the proportion of patents that expire early due to failure to pay maintenance fees. For AO data, see Judicial Business of the United States Courts, http://www.uscourts.gov/judbususc/ judbus.html (last visited Apr. 15,2009).
39. For USPTO data, see USPTO Annual Reports, http://www.uspto.gov/web/ offices/com/annual/index.html (last visited Apr. 15, 2009).
40. Patent-renewal-rate data are also reported and compiled in Gideon Parchomovsky & R. Polk Wagner, Patent Portfolios, 154 U. PA. L. REV. 1, 15 tbl.l (2005).
41. E.g., James Gleick, Patently Absurd, N.Y. TIMES MAG., Mar. 12, 2000, at 44;
42. Editorial, Patently Absurd, WALL ST. J., Mar. 1, 2006, at A14;
43. Editorial, Patently Flawed, BOSTON GLOBE, July 23, 2007, at A10;
44. Patently Obvious, ECONOMIST, May 5, 2007, at 78;
45. Editorial, Patently Obvious, WALL ST. J., May 3, 2007, at Al6;
46. Editorial, Patently Ridiculous, N.Y. TIMES, Mar. 22, 2006, at A24.
47. See, e.g, eBay, 126 S. Ct. at 1842 (Kennedy, J., concurring) ("An industry has developed in which firms use patents not as a basis for producing and selling goods but, instead, primarily for obtaining licensing fees.").
48. See Pear, supra note 1 (reporting that brand-name drug companies lobbied Congress for a patent bill that would make it harder for the generic drug companies to assert claims of inequitable conduct on the part of brand-name patent holders).
49. See infra Section II.C.
50. See generally Parchomovsky & Wagner, supra note 19 (presenting a patentportfolio theory, which argues that it is in a firm's best interest to obtain an aggregation of related patents regardless of their individual worth, as an explanation of the recent increase in patent filings and intensity).
51. Even were we to set aside the substantial resources involved in obtaining patents for argument's sake, invalid patents are still not cost-effective because they will bar their holders from later patents on the same or similar inventions.
52. See supra note 11 and accompanying text (citing sources arguing that patent prosecution is rife with informational problems).
53. See supra Section I.B (discussing the reasons for such concern).
54. According to surveys by the American Intellectual Property Law Association, it costs upwards of $10,000 to prosecute a patent application of even moderate complexity, and it can cost much more if extensive amendments are required. AM. INTELLECTUAL PROP. LAW ASS'N, REPORT OF THE ECONOMIC SURVEY 21 (2007).
55. The opportunity costs of an invalid patent involve those resources which could have been dedicated to a valid patent and the missed opportunity to adequately protect a patentable invention.
56. These generally preclude the patentee from seeking a patent on ideas-even her own-disclosed more than a year prior to application. See 35 U.S.C. §102(b) (2006) (considering an invention to have been disclosed if it was either "patented or described in a printed publication," whether in the United States or abroad).
57. That those accused of patent infringement may seek to have the patent invalidated is an important (and unique) aspect of the patent law. See id. § 282 (listing various defenses to patent infringement, including "invalidity of the patent").
58. See, e.g., Thomas, supra note 11, at 314 (noting how patent examiners "are allowed only a limited time to sift through enormous amounts" of information, and explaining the limitations inherent in their "information-gathering techniques").
59. Indeed, one problem with the current patent-examination process is that the USPTO does not explicitly determine the meaning of claim language but rather uses what it describes as "the broadest reasonable construction" analysis. See U.S. PATENT Sc TRADEMARK OFFICE, DEP'T OF COMMERCE, MANUAL OF PATENT EXAMINING PROCEDURE §2111 (8th ed., 7th rev. 2008)
60. [hereinafter USPTO, MPEP] ("During patent examination, the pending claims must be 'given their broadest reasonable interpretation consistent with the specification.'"). The Federal Circuit has acknowledged (and apparently blessed) this approach: The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art" Indeed, the rules of the PTO require that application claims must "conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description."
61. Phillips v. AWH Corp., 415 F.3d 1303, 1316-1317 (Fed. Qr. 2005) (en banc) (citation omitted).
62. However, that value may be (and I think is likely to be) less than the sum of the sunk costs, opportunity costs, and costs of preclusion. See supra notes 28-30 (explaining these costs).
63. See Scott Atkinson et al., The Economics of a Centralized Judiciary: Uniformity, Forum Shopping and the Federal Circuit 39 tbl.4 (May 2008) (unpublished manuscript), available at http://ssrn.com/abstract=1129846 (finding that, since the establishment of the Court of Appeals for the Federal Qrcuit, the average age of a litigated patent is almost six-and-a-half years).
64. For a discussion of how many patents are actually "valuable," see Mark A. Lemley & Carl Shapiro, Probabilistic Patents, 19 J. ECON. PERSP. 75, 80-83 (2005),
65. and Parchomovsky & Wagner, supra note 19, at 16-19.
66. Patents are privately enforced (i.e., they act as a "hunting license," not as a reward), and therefore society only "pays" a patentee when her patent has market value. The remaining patented inventions are disclosed to the public for free (and eventually, of course, enter the public domain). See Lemley & Shapiro, supra note 36, at 84 (noting that patents are "neither litigated nor licensed for a royalty" in ninety-five percent of cases).
67. For a more general theory of how incomplete capture is a key tenet of intellectual property laws, see Wagner, supra note 12.
68. For the classic treatment of claim drafting (one which nearly all patent lawyers experience at some time), see generally ROBERT C. FABER, LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING (5th ed. 2006).
69. For example, the Federal Circuit's recent decision in Phillips v. AWH Corp., regarding claim-construction methodologies, makes clear that the description in a patent's specification will be used to alter claim scope. 415 F.3d 1303, 1315-17 (Fed. Cir. 2005) (en banc).
70. See generally Wagner, supra note 11, at 214-216 (explaining the strategic gains of making "broad claims" and "vaguely" describing an invention).
71. 35 U.S.C. §112 (2006) states the following: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
72. Indeed, the USPTO itself notes in the USPTO, MPEP that "[b]y far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art, that is, that the claimed subject matter is either not novel under 35 U.S.C. 102, or else it is obvious under 35 U.S.C. 103." MPEP, supra note 33, §706.02.
73. 35 U.S.C. §282 (2006) states the following: A patent shall be presumed valid. Each claim of a patent (whether in independent dependent or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim.... The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.
74. See Phillips, 415 F.3d at 1313 ("[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.");
75. see also R. Polk Wagner 8c Lee Petherbridge, Did Phillips Change Anything? Empirical Analysis of the Federal Circuit's Claim Construction Jurisprudence 27-33 (Apr. 3, 2008) (unpublished manuscript, on file with author) (criticizing the Federal Circuit's opinion in Phillips for choosing a holistic-as opposed to procedural- approach to claim construction).
76. See supra note 39 and accompanying text (explaining how legal rules tend to incentivize a lack of clarity in patent description).
77. These data are compiled from the USPTO Performance and Accountability Reports. To view these reports, see USPTO Annual Reports, supra note 19.
78. These data are compiled from the European Patent Office Trilateral Statistic Reports. To view these reports, see Trilateral Statistical Reports, http://www. trilateral.net/statistics/tsr.html (last visited Apr. 15, 2009).
79. An examiner receives a "count" towards his productivity for an "allowance or a non-final rejection." U.S. PATENT & TRADEMARK OFFICE, DEP'T OF COMMERCE, FINAL INSPECTION REPORT NO. IPE-15722, USPTO SHOULD REASSESS HOW EXAMINER GOALS, PERFORMANCE APPRAISAL PLANS, AND THE AWARD SYSTEM STIMULATE AND REWARD EX - AMINER PRODUCTION 7-8 (2004), available at http://www.oig.doc.gov/oig/ reports/2004/USPTO-IPE-15722-09-04.pdf. Because an examiner will presumably take more time before rejecting an application and exposing herself to the appeals process, the easiest way to ensure "productivity" is to quickly accept patent applications.
80. See generally Parchomovsky Sc Wagner, supra note 19, at 16-19 (describing the "patent paradox" through an analysis of the falling value of patents and the increase in the volume of filings).
81. See id. at 27-43 (presenting a theory of patent portfolios that argues that the benefits of a high-volume patent strategy "are substantial enough to encourage patenting behavior irrespective of the expected value of the underlying individual patents themselves").
82. Id.
83. See id. at 32-37 (describing how a portfolio of related patents acts as a "super-patent" which "allow[s] the holder to exclude others from the collective scope of its claims").
84. See id. at 3741 ("[D]iversity - the fact that no single patent determines the value - is a major benefit of patent portfolios. By distributing the importance of the total portfolio across the constituent individual patents, a patent portfolio allows holders to significantly hedge against aspects of risk and uncertainty....").
85. See id. at 3941 (explaining how "the diversity-features of patent portfolios" specifically address "uncertainty related to the patent law itself).
86. See id. at 60 (predicting that "innovation-driven firms will increasingly view patent portfolios as essential to their long-term success and behave accordingly").
87. For a comparison of how the patent system is like "a lottery where players have a low probability of winning a large jackpot," see Dennis D. Crouch, The Patent Lottery: Exploiting Behavioral Economics for the Common Good, 16 GEO. MASON L. REV. 141, 142, 149-159 (2008).
88. This is subject to the exception noted above-there is some value in any granted patent, due to the cost that others will incur to have it declared invalid. See supra text accompanying note 34. But in this context, this exception will have little impact, as it is certain that an invalid patent will not have a very large return.
89. See, e.g., Bronwyn H. Hall & Rosemarie Ham Ziedonis, The Patent Paradox Revisited: An Empirical Study of Patenting in the U.S. Semiconductor Industry, 1979-1995, 32 RAND J. ECON. 101, 125 (2001) (describing how stronger patent rights correlate with the defensive tactic of using patents as "bargaining chips," which can lead to "patent portfolio races");
90. Lemley, supra note 10, at 1504 (noting that the defensive strategy relies on sheer volume of patents, and not necessarily on patent quality);
91. Wesley M. Cohen et al., Protecting Their Intellectual Assets: Appropriability Conditions and Why U.S. Manufacturing Firms Patent (or Not) 17 (Nat'l Bureau of Econ. Research, Working Paper No. 7552, 2000), available at http://www.nber.org/papers/w7552 (finding that eightytwo percent of respondents to a survey listed "blocking rival patents on related innovations" as a motive for patenting).
92. See, e.g., Clarisa Long, Patent Signals, 69 U. CHI. L. REV. 625, 655-658 (2002) (considering patents as a means of credibly publicizing information).
93. For the USFTO data, see USPTO Annual Reports, supra note 19.
94. For the JPO data, see Trilateral Statistical Reports, supra note 46.
95. JAPAN PATENT OFFICE, ANNUAL REPORT 2008, at 44-45 (noting that, in fiscal year (FY) 2007, the JPO outsourced 79.3% of all prior art searches). There are eight "registered search organizations" in Japan, though one (a nonprofit foundation) conducts the bulk of the searches. Id.
96. U.S. PATENT & TRADEMARK OFFICE, U.S. DEP'T OF COMMERCE, PERFORMANCE AND ACCOUNTABILITY REPORT: FISCAL YEAR 2008, at 5 (citing this statistic as proof that "[s]earching and examination continued to show quality improvement" in FY 2008).
97. See 35 U.S.C. §§311-318 (2006) (providing for the Patent Office Director to conduct inter partes reexamination of a patent upon the request of a third party); see also Stephen G. Kunin & Anton W. Fetting, The Metamorphosis of Inter partes Reexamination, 19 BERKELEY TECH. L.J. 971, 973 (2004) (noting that "third parties have a limited pre-grant opportunity to protest or oppose issuance of a patent").
98. See Peer to Patent, Community Patent Review, http://www.peertopatent.org/ (last visited Apr. 15, 2009) (describing how the website "opens the patent examination process to public participation").
99. See Patent Reform Act of 2007, S. 1145, 110th Cong. §6(e) (2007) (proposing procedures for postgrant review of patents). But see Biotechnology Indus. Org., Oppose New Postgrant Review Provision Which Allows Limitless Administrative Patent Challenges, http://www.bio.org/ip/domestic/postgrantp.df (last visited Apr. 15, 2009) (opposing postgrant review on five grounds, including the possibility that competitors will not mount a postgrant challenge right away but rather will wait "until the economic stakes are high, and use evidence discovered during the proceeding as 'ammunition' for legal arguments" in district court litigation).
100. See supra note 60 and accompanying text
101. Mark Lemley, Doug Lichtman &Bhaven Sampat What to Do About Bad Patents?, REGUIATION, Winter 2005-2006, at 10, 12-13.
102. Id.
103. See Michael Abramowicz &John F. Duffy, Ending the Patenting Monopoly, 157 U. PA. L. REV. 1541, 1566-1575 (2009) (addressing the possibilities of relying on foreign nations' patent determinations or permitting private firms to take on the burden of examining patents).
104. See generally Kieff, Registering Patents, supra note 2, at 70-74 (proposing use of the soft-look registration system in conjunction with the commercial-litigation system in order to reduce the current patent system's significant social costs).
105. See id. at 104 ("Under soft-look systems, especially the registration model, the private benefit an applicant would get from strategic games involving the filing of excessive variation in claims decreases. At the same time, for those claims that happen to have appropriate scope, the public cost decreases and the public benefit increases.").
106. See id. at 121 &n.285 (analogizing to the rating organizations formed in securities markets).
107. I set aside the patent registration approach for now, because that approach does not directly seek to improve patent quality.
108. See discussion supra subsection III.A. 1 (noting that the increase in the number of examiners at the PTO has merely returned the Office's examiners-to-filings ratio to that of the mid-1990s).
109. See Petherbridge, supra note 11, at 196 (noting that this procedural change would be "specifically directed to increasing the amount of information in the public administrative record that is precisely targeted to defining the boundaries of the patented property").
110. Though it seems unlikely to hurt. See id. at 206 ("The combination of better knowledge concerning the boundaries of the property being examined, and [the resulting] more efficient search for prior art should result in an improved likelihood diat the Patent Office will make the correct decision on patentability.").
111. See Wagner, supra note 11, at 232-239 (describing the benefits of a strong form of prosecution history estoppel doctrine).
112. An additional problem with this proposal is that unfortunately, the Supreme Court has limited the application of the doctrine of prosecution history estoppel. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 73741 (2002) (holding that, where an amendment cannot reasonably be viewed as surrendering an equivalent that was unforeseeable at the time of application, and where claims of equivalence only have a tangential relation to the reason that the amendment was submitted, the presumption that prosecution history estoppel prohibits a finding of equivalence can be rebutted).
113. However, the Federal Circuit has increasingly used closely related doctrines such as "disavowal" or "prosecution disclaimer" to similar effect See, e.g, Gaus v. Conair Corp., 363 F.3d 1284, 1291 (Fed. Cir. 2004) ("Having disavowed coverage of [certain] devices ... the patentee cannot reclaim that surrendered claim coverage by invoking the doctrine of equivalents.");
114. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (noting that the doctrine of prosecution disclaimer is a "fundamental precept in our claim construction jurisprudence").
115. See Wagner, supra note 11, at 222-225 (arguing that "an information-forcing penalty default rule" can be used to force patentees to internalize the costs of strategically underproducing relevant information, thereby eventually reducing the costs imposed upon society).
116. See Parchomovsky &Wagner, supra note 19, at 3143 (explaining the advantages of patent portfolios).
117. See supra note 54 and accompanying text.
118. See supra p. 131.
119. See Parchomovsky Sc Wagner, supra note 19, at 67-68 (describing the potential costs and benefits of implementing a mandatory "cap" on the number of patents companies can hold). Professors Parchomovsky and Ayres have also proposed a system of tradable patent rights, which they argue would reduce the number of patents.
120. See generally Ian Ayres &Gideon Parchomovsky, Tradable Patent Rights, 60 STAN. L. REV. 863, 881-890 (2007).
121. See Parchomovsky &Wagner, supra note 19, at 66-74 (addressing the cost and inadequacy of various policy options seeking to combat patent portfolios).
122. See supra Section II.B.
123. See Craig Allen Nard &John F. Duffy, Rethinking Patent Law's Uniformity Principle, 101 Nw. U. L. REV. 1619, 1642-1650 (2007) (describing the Federal Circuit's problem of overcentralization of appellate jurisdiction and arguing for "an institutional structure that is more atomistic").
124. Stuart Minor Benjamin &Arti K. Rai, Who's Afraid of the APA? What the Patent System Can Learn from Administrative Law, 95 GEO. L.J. 269, 317-330 (2007) (proposing patent reform via the administrative law avenue of providing a more deferential standard of review to decisions of the USPTO).
125. See supra subsection III.A.1.
126. See supra notes 81-83 and accompanying text
127. In addition, a requirement to pay maintenance fees on invalid (but not-yetadjudged-so) patents would work a cash loss on such patentees as well, thus providing another form of penalty.
128. The risk that a patent will be litigated is on the order of one percent Lemley, supra note 10, at 1507. Factor in the difficulty of proving a patent invalid (due to the presumption of validity and expense of litigation), and the probability of even an invalid patent being declared invalid would be substantially less dian one percent
129. Abramowicz &Duffy, supra note 68, at 1587-1593 Their focus is on measures to police poor quality prosecution providers rather than patentees themselves, but there is of course no reason that the basic structure of their approach could not be applied here.
130. See id. at 1576-1601 (discussing fines based on multiples of patenting fees and other possible approaches).
131. See, e.g., Consol. Aluminum Corp. v. Foseco Int'l Ltd., 910 F.2d 804, 809 (Fed. Cir. 1990) (noting that "inequitable conduct in procuring one patent-in-suit requires a holding that the other patents-in-suit are unenforceable").
132. See supra Section IV.A.