Patents, presumptions, and public notice

Indiana Law Journal

Volumn 86, Issue 3, 2011, Pages 779-826

  Holbrook, Timothy R ^a  

^a EMORY UNIVERSITY SCHOOL OF LAW   (United States)

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EID: 79959221067     PISSN: 00196665     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (409)

1. U.S.C. § 271(a) (2006).
2. U.S.C. § 112,1(2. 3. Id.¶. See generally Jeanne C. Fromer, Patent Disclosure, 94 Iowa L. Rev. 539, 545-47 (2009) [hereinafter Fromer, Patent Disclosure];
3. Timothy R. Holbrook, Possession in Patent Law, 59 SMU L. Rev. 123, 127-31 (2006) [hereinafter Holbrook, Possession];
4. Jeffrey A. Lefstin, The Formal Structure of Patent Law and the Limits of Enablement, 23 Berkeley Tech. L.J. 1141, 1142-59 (2008);
5. Sean B. Seymore, Heightened Enablement in the Unpredictable Arts, 56 UCLA L. Rev. 127, 129-31 (2008) [hereinafter Seymore, Heightened Enablement].
6. See generally Peter Lee, Patent Law and the Two Cultures, 120 Yale L.J. 2, 9-17 (2010) (describing district court judges' struggles with technology aspects of patent law).
7. See, e.g., United States v. Dubilier Condenser Corp., 289 U.S. 178, 186 (1933) ("An inventor deprives the public of nothing which it enjoyed before his discovery, but gives something of value to the community by adding to the sum of human knowledge.").
8. But see Note, The Disclosure Function of the Patent System (or Lack Thereof), 118 Harv. L. Rev. 2007, 2023-26 (2005) (rejecting the view that patent disclosures disseminate technical knowledge).
9. U.S.C. §§ 103, 112; Wamer-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,37 (1997) (comparing tort's "reasonable person" to patent law's person skilled in the art).
10. See generally Dan L. Burk & Mark A. Lemley, Is Patent Law Technology-Specific?, 17 Berkeley Tech. L.J. 1155, 1185-90 (2002);
11. Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 Va. L. Rev. 1575, 1648-51 (2003);
12. Jonathan J. Darrow, The Neglected Dimension of Patent Law's PHOSITA Standard, 23 Harv. J.L. & tech. 227 (2009);
13. Rebecca S. Eisenberg, Obvious to Whom? Evaluating Inventions from the Perspective of PHOSITA, 19 Berkeley Tech. L.J. 885 (2004);
14. Joseph P. Meara, Just Who Is the Person Having Ordinary Skill the Art? Patent Law's Mysterious Personage, 77 wash. L. Rev. 267 (2002);
15. John O. Tresansky, PHOSITA-The Ubiquitous and Enigmatic Person in Patent Law, 73 J. Pat. & Trademark Off. Soc'y 37,37-38 (1991).
16. See, e.g., Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984).
17. But see ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935,941 (Fed. Cir. 2010).
18. An invention must be new in order to be patented. 35 U.S.C. §§ 101-02. The absence of novelty results in the claimed invention being anticipated. See, e.g., Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987).
19. See generally Timothy R. Holbrook, The More Things Change, the More They Stay the Same: Implications o/Pfaff v. Wells Electronics, Inc.
20. and the Quest for Predictability in the On-Sale Bar, 15 Berkeley Tech. L.J. 933, 936-37 (2000);
21. Sean B. Seymore, Rethinking Novelty in Patent Law, 60 Duke L.J. 919,930-37 (2010).
22. U.S.C. § 103; Holbrook, supra note 9, at 937.
23. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256-57 (Fed. Cir. 2007) (concluding that the level of ordinary skill was determinative of obviousness);
24. see also Timothy R. Holbrook, Equivalency and Patent Law's Possession Paradox, 23 harv. J.L. & Tech. 1, 8-9 (2009) [hereinafter Holbrook, Paradox] (discussing the relationship between disclosure and PHOSITA).
25. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1361 n.3 (Fed. Cir. 2008);
26. Darrow, supra note 7, at 236; Holbrook, Paradox, supra note 11, at 21-27.
27. U.S.C. § 1295(a)(l). See generally Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (2002).
28. Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform, 103 Colum. L. Rev. 1035, 1068-69 (2003).
29. Of the judges currently on the Federal Circuit, five have technical backgrounds and/or had patent experience prior to joining the bench: Judges Newman, Lourie, Gajarsa, Linn, and Moore. See United States Court of Appeals for the Federal Circuit, http://www.cafc.uscourts.gov(follow "The Court: Judges" hyperlink). Judge Rader served on the Senate Subcommittee that dealt with intellectual property policy issues. See id. Judge O'Malley, while not having a technical degree, does have considerable experience as a district court judge trying patent cases. See id. Judge Dyk and nominee Edward DuMont litigated patent cases prior to their appointments.
30. See, e.g., TiVo, Inc. v. EchoStar Commc'ns Corp., 516 F.3d 1290 (Fed. Cir. 2008) (nominee DuMont), vacated and reh'g en banc granted, No. 2009-1374, 2010 WL 1948577 (Fed. Cir. May 14, 2010);
31. Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553 (Fed. Cir. 1995) (Judge Dyk).
32. The final pending nominee, Jimmie V. Reyna, has neither a technical degree nor patent litigation experience. See Jimmy V. Reyna, WilliamsMullen, http://www.williamsmullen.eom/jreyna. He does have extensive international trade experience, over which the Federal Circuit has jurisdiction. In contrast, examiners at the U.S. Patent and Trademark Office do have technical backgrounds.
33. See Patent Examiner Positions, U.S. Pat. & Trademark Off., http://usptocareers.gov/Pages/PEPositions/Default.aspx.
34. Eisenberg, supra note 7, at 889-97 (discussing the marginalization of PHOSITA in the obviousness context).
35. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
36. See Craig Allen Nard, Legal Forms and the Common Law of Patents, 90 B.U. L. Rev. 51,79-82 (2010).
37. Cf. Markman, 52 F.3d at 978-79 ("Moreover, competitors should be able to rest assured.. that a judge, trained in the law, will similarly analyze the text of the patent and its associated public record and apply the established rules of construction, and in that way arrive at the true and consistent scope of the patent owner's rights to be given legal effect.").
38. See John F. Duffy, Rules and Standards on the Forefront of Patentability, 51 Wm. & Mary L. Rev. 609, 611 (2009);
39. Timothy R. Holbrook, The Supreme Court's Complicity in Federal Circuit Formalism, 20 Santa Clara Computer & High Tech. L.J. 1, 2 (2003) [hereinafter Holbrook, Complicity]; Nard, supra note 17, at 77-99; Rai, supra note 14, at 1103-22;
40. John R. Thomas, Formalism at the Federal Circuit, 52 Am. U. L. Rev. 771, 792 (2003).
41. See Lee, supra note 4, at 29-41.
42. With all respect due to Mark Twain.
43. See infra Part II.A.
44. See infra Part II.A.
45. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc). 784
46. U.S. Const, art. I, § 8, cl. 8. See generally Paul J. Heald & Suzanna Sherry, Implied Limits on the Legislative Power: The Intellectual Property Clause as an Absolute Constraint on Congress, 2000 U. III. L. Rev. 1119 (discussing the Constitutional purpose and limits of the Patent and Copyright Clause);
47. Timothy R. Holbrook, The Treaty Power and the Patent Clause: Are There Limits on the United States' Ability to Harmonize?, 22 Cardozo Arts & Ent. L.J. 1,4-21 (2004) (discussing potential Constitutional limits on patent law).
48. U.S.C. §112,¶1 (2006).
49. Sean B. Seymore, The Teaching Function of Patents, 85 Notre Dame L. Rev. 621, 624 (2010) [hereinafter Seymore, Teaching Function];
50. Fed. Trade Comm'n, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy ch. 4, at 3-4 (2003).
51. U.S.C. § 112,¶ 2 ("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.").
52. See Holbrook, Paradox, supra note 11, at 8-9.
53. Nat'l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1334 (Fed. Cir. 2004) (noting that validity is determined on a claim-by-claim basis).
54. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (noting that infringement is assessed on a claim-by-claim basis).
55. See Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1315 (Fed. Cir. 2005);
56. Dana Corp. v. Am. Axle & Mfg., 279 F.3d 1372, 1376 (Fed. Cir. 2002) ("[A] court may not invalidate the claims of a patent without construing the disputed limitations of the claims and applying them to the allegedly invalidating acts.").
57. U.S. Patent No. 5,205,473 col.l 11.44-52 (issued Apr. 27, 1993).
58. See, e.g., U.S. Patent No. 5,716,827 col.2 11.41-57 (issued Feb. 10,1998). Methods resulting in the isolation of substantially homogenous compositions of human hematopoietic stem cells are provided. The methods employ a predetermined separation regimen and bioassays for establishing the generation of each of the hematopoietic lineages from the isolated cells. The human stem cells find use: (1) in regenerating the hematopoietic system of a host deficient in stem cells, (2) in a host that is diseased and can be treated by removal of bone marrow, isolation of stem cells and treatment of individuals with drugs or irradiation prior to re-engraftment of stem cells, (3) producing various hematopoietic cells, (4) detecting and evaluating growth factors relevant to stem cell self-regeneration; (5) the development of hematopoietic cell lineages and assaying for factors associated with hematopoietic development; and (6) treatment of genetic diseases through gene replacement in autologous stem cells.
59. 37C.F.R. § 11.7.
60. Seesupranoie 14.
61. Seymore, Teaching Function, supra note 27, at 641-57.
62. Id. at 633-41.
63. Id. at 641-46.
64. Fromer, Patent Disclosure, supra note 3, at 543.
65. Id. at 560 ("By process of elimination, the patent document is the principal way for an interested technologist to locate useful information about a patented invention."). But see Holbrook, Possession, supra note 3, at 143-46 (arguing that patents are a poor source of technical information due to limits on use and delays in publication).
66. Fromer, Patent Disclosure, supra note 3, at 560-61.
67. Id. at 563-85.
68. Joseph Scott Miller, Enhancing Patent Disclosure for Faithful Claim Construction, 9 Lewis & Clark L. Rev. 177,187-88 (2005).
69. Id. at 188.
70. Id. at 203-07.
71. John M. Golden, Construing Patent Claims According to Their "Interpretive Community": A Call for an Attorney-Plus-Artisan Perspective, 21 Harv. J.L. & tech. 321, 327 (2008).
72. Id. at 383-85.
73. U.S.C. §§ 1295(a)(1), 1338(a) (2006).
74. See Dan L. Burk & Mark A. Lemley, Fence Posts or Sign Posts? Rethinking Patent Claim Construction, 157 U. Pa. L. Rev. 1743, 1748-61 (2009) [hereinafter Burk & Lemley, Fence Posts];
75. Kimberly A. Moore, Judges, Juries, and Patent Cases-An Empirical Peek Inside the Black Box, 99 Mich. L. Rev. 365,365 (2000);
76. David L. Schwartz, Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases, 107 Mich. L. Rev. 223,227-29 (2008).
77. Because an invention may be something new, it may be difficult to find words to adequately capture the idea, further compounding the boundary delineation problem. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002);
78. Jeanne C. Fromer, Claiming Intellectual Property, 76 U. Chi. L. Rev. 719,737, 755 (2009).
79. James Bessen & Michael J. Meurer, Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk 46-72 (2008);
80. Craig Allen Nard, A Theory of Claim Interpretation, 14 Harv. J.L. & tech. 1, 12-14 (2000).
81. See In re Bilski, 545 F.3d 943, 994 (Fed. Cir. 2008) (en banc) (Newman, J, dissenting) (discussing uncertainty surrounding court's standard for patent-eligible subject matter), affd, Bilski v. Kappos, 130 S. Ct. 3218 (2010);
82. Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1046-47 (Fed. Cir. 2001) (discussing need for certainty in the on-sale bar);
83. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 586 (Fed. Cir. 2000) (en banc) (discussing reliance on public record to effect public notice), vacated & remanded, 535 U.S. 722 (2002);
84. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455-56 (Fed. Cir. 1998) (en banc) (discussing need for certainty in claim construction).
85. See, e.g., Electromotive Div. of Gen. Motors Corp. v. Transp. Sys. Div. of Gen. Elec, 417 F.3d 1203,1214-15 (Fed. Cir. 2005) (elevating two out of thirteen factors, control and customer awareness, as necessary to find experimental use).
86. See generally Holbrook, Complicity, supra note 19, at 2-3; Thomas, supra note 19, at 781-83.
87. There is a dearth in the literature about patent law's audience. See generally Mark D. Janis & Timothy R. Holbrook, Patent Law's Audience(s) (Jan. 11, 2011) (unpublished manuscript) (on file with author).
88. See, e.g., Group One, 254 F.3d at 1047 (setting standard for "on-sale bar" under 35 U.S.C. § 102(b) as formal commercial offer as defined by contract law).
89. But see Timothy R. Holbrook, Liability for the "Threat of a Sale": Assessing Patent Infringement for Offering to Sell an Invention and Implications for the On-Sale Patentability Bar and Other Forms of Infringement, 43 Santa Clara L. Rev. 751, 782-83 (2003) (arguing standard is wrong because it is directed to lawyers, not technologists).
90. Admittedly, these two doctrines can be related, as the scope of the disclosure informs the appropriate scope of the claims. See generally Holbrook, Paradox, supra note 11, at 8-15.
91. See Burk & Lemley, Fence Posts, supra note 50, at 1750.
92. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002) ("[T]he nature of language makes it impossible to capture the essence of a thing in a patent application.");
93. Bessen & Meurer, supra note 51, at 56-61; Burk & Lemley, Fence Posts, supra note 50, at 1751-61.
94. See generally KIMBERLY A. MOORE, PAUL R. MICHEL & TIMOTHY R. HOLBROOK, Patent Litigation and Strategy 322-23 (3d ed. 2008).
95. Phillips v. AWH Corp., 415 F.3d 1303,1312-13 (Fed. Cir. 2005).
96. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,1582 (Fed. Cir. 1996).
97. Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352,1355-56 (Fed. Cir. 2004).
98. Phillips, 415 F.3d at 1314;
99. Vitronics, 90 F.3d at 1583;
100. Markman v. Westview Instruments, Inc., 52 F.3d 967,978-79 (Fed. Cir. 1995) (en banc).
101. Vitronics, 90 F.3d at 1584.
102. Id. at 1583 ("[Competitors are entitled to review the public record, apply the established rules of claim construction, ascertain the scope of the patentee's claimed invention and, thus, design around the claimed invention. Allowing the public record to be altered or changed by extrinsic evidence introduced at trial, such as expert testimony, would make this right meaningless." (citation omitted)).
103. Markman, 52 F.3d at 978 ("The patent is a fully integrated written instrument.").
104. See supra note 14.
105. Markman, 52 F.3d at 980-81; Phillips, 415 F.3d at 1318. In Pitney Bowes, Inc. v. Hewlett-Packard Co., the court clarified Vitronics by explaining: Despite the district court's statements to the contrary, Vitronics does not prohibit courts from examining extrinsic evidence, even when the patent document is itself clear. Moreover, Vitronics does not set forth any rules regarding the admissibility of expert testimony into evidence. Certainly, there are no prohibitions in Vitronics on courts hearing evidence from experts. Rather, Vitronics merely warned courts not to rely on extrinsic evidence in claim construction to contradict the meaning of claims discernible from thoughtful examination of the claims, the written description, and the prosecution history-the intrinsic evidence. 182 F.3d 1298,1308 (Fed. Cir. 1999) (citations and footnote omitted).
106. Vitronics, 90 F.3d at 1584.
107. Phillips, 415 F.3d at 1320-22 (rejecting the methodology of Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002)).
108. The Federal Circuit appears ready to reconsider its standard of review for claim construction. See, e.g., Trading Techs. Int'I, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1350-51 (Fed. Cir. 2010) (now-Chief Judge Rader criticizing the de novo standard of review);
109. Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039 (Fed. Cir. 2006) (en banc) (declining en banc reconsideration of de novo review with several dissents and concurrences); see also Trading Techs., 595 F.3d at 1363-64 (Clark, J., concurring) (district court judge sitting by designation, criticizing de novo review). Prior to recent judges taking senior status or retiring, there seemed to be a sufficient number of judges willing to reconsider the issue en banc. See Moore et al., supra note 59, at 261 (counting number of Federal Circuit judges willing to reconsider the de novo standard). With Judges Schall and Mayer taking senior status in 2009 and 2010, respectively, and Judge Michel retiring altogether in 2010, the ability of the court to reconsider the issue en banc will depend on the new judges. Federal Circuit Judge O'Malley, a former district court judge, has criticized the de novo standard.
110. See Kathleen M. O'Malley, Patti Saris & Ronald H. Whyte, A Panel Discussion: Claim Construction from the Perspective of the District Judge, 54 Case W. Res. L. Rev. 671, 680 (2004) (Judge O'Malley stated, "If we are going to receive evidence from experts in order to determine those things, it is a hard pill to swallow as a district judge that, after seeing the experts, and hearing the experts, our efforts to answer those questions are subject to a completely de novo review and a blank record. It is difficult to accept that there is no deference given to that factual decision making." (emphasis in original)). Even if the Federal Circuit changes the standard of review, however, it will not eliminate the problem if the court persists in giving primacy to the intrinsic evidence. Indeed, it is quite possible that deference to the factual extrinsic evidence will not alter the oft-criticized reversal rates because, on appeal, the court can simply rely on the intrinsic evidence, to be reviewed de novo anyway, and ignore extrinsic evidence if it is inconsistent with the intrinsic evidence. See Markman, 52 F.3d at 997-98 (Mayer, J., concurring) (arguing for contract-like analysis, with intrinsic evidence treated as legal and extrinsic evidence as factual).
111. See, e.g., CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed. Cir. 2002);
112. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345-47 (Fed. Cir. 2001);
113. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999).
114. Vitronics, 90 F.3d at 1582.
115. See, e.g., Trading Techs., 595 F.3d at 1353.
116. Phillips, 415 F.3d at 1316 ("[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor's intention, as expressed in the specification, is regarded as dispositive.");
117. SciMed, 242 F.3d at 1345-47.
118. See, e.g., Nystrom v. TREX Co., 424 F.3d 1136, 1143-46 (Fed. Cir. 2005) (construing term "board" as limited to boards made of wood).
119. See Miller, supra note 44, at 205-06 (recognizing and criticizing such implied definitions).
120. See Timothy R. Holbrook, Substantive Versus Process-Based Formalism in Claim Construction, 9 Lewis & Clark L. Rev. 123, 142 (2005) [hereinafter Holbrook, Claim Construction].
121. See Holbrook, Possession, supra note 3, at 160.
122. Gen. Mills, Inc. v. Hunt-Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997) ("Where the parties do not dispute any relevant facts regarding the accused product. but disagree over possible claim interpretations, the question of literal infringement collapses into claim construction and is amenable to summary judgment.");
123. see also Jeanne C. Fromer, Patentography, 85 N.Y.U. L. Rev. 1444,1469-72 (2010).
124. See infra notes 86-159 and accompanying text.
125. See Seymore, Teaching Function, supra note 27, at 633-41.
126. Holbrook, Possession, supra note 3, at 131-32.
127. U.S.C. § 112, 1 (2006).
128. Ariad Pharms., Inc. v. Eli Lilly & Co, 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). But see id. at 1369 (Linn, J, dissenting).
129. For case law, see, e.g., LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005);
130. In re Wallach, 378 F.3d 1330,1334-35 (Fed. Cir. 2004);
131. Regents of the Univ. of Cal. v. Eli Lilly & Co, 119 F.3d 1559,1566 (Fed. Cir. 1997).
132. See also Univ. of Rochester v. G.D. Searle & Co, 375 F.3d 1303, 1307-08 (Fed. Cir. 2004) (Rader, J, dissenting from declination of en banc consideration) ("In 1997, this court for the first time applied the written description language of 35 U.S.C. § 112, \ 1 as a general disclosure requirement in place of enablement, rather than in its traditional role as a doctrine to prevent applicants from adding new inventions to an older disclosure. Neither Eli Lilly nor mis case has explained either the legal basis for this new validity requirement or the standard for 'adequate support'"); id. at 1325-27 (Linn, J, dissenting from declining rehearing en banc).
133. For commentary, see, e.g., Duane M. Linstrom, Spontaneous Mutation: A Sudden Change in the Evolution of the Written Description Requirement as it Applies to Genetic Patents, 40 San Diego L. Rev. 947, 970 (2003);
134. Janice M. Mueller, The Evolving Application of the Written Description Requirement to Biotechnological Inventions, 13 Berkeley tech. L.J. 615, 617 (1998) [hereinafter Mueller, Evolving Application];
135. Harris A. Pitlick, The Mutation on the Description Requirement Gene, 80 J. pat. & trademark Off. Soc'y 209,222-23 (1998);
136. Harold C. Wegner, When a Written Description Is Not a "Written Description": When Enzo Says It's Not, 12 Fed. Cir. B.J. 271, 274 (2002);
137. Jennifer L. Davis, Comment, The Test of Primary Cloning: A New Approach to the Written Description Requirement in Biotechnological Patents, 20 Santa Clara Computer & High Tech. L.J. 469,487-88 (2004).
138. Anascape, Ltd. v. Nintendo of Am, Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) ("To obtain the benefit of the filing date of a parent application, the claims of the later-filed application must be supported by the written description in the parent 'in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.'"); see also id. at 1342 (Gajarsa, J, concurring) ("Here, the majority's opinion demonstrates a good example in applying the written description in a priority policing context, while leaving invalidity in the capable hands of the enablement doctrine. Though Ariad makes clear that written description is not confined to the priority policing context, I continue to believe such confinement, while not statutorily mandated, streamlines litigation and arguably reconciles some of our written description and enablement precedent."); In re Ruschig, 379 F.2d 990,995-96 (C.C.P.A. 1967) (holding that when an applicant attempts to claim specific chemical compounds which were broadly disclosed, the question is not enablement, but "whether the specification discloses the compound. specifically, as something [the applicant] actually invented").
139. U.S.C. §§ 120,132(a) (2006).
140. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991).
141. Tronzo v. Biomet, Inc., 156 F.3d 1154,1158 (Fed. Cir. 1998) ("To meet [the written description] requirement, the disclosure of the earlier application, the parent, must reasonably convey to one of skill in the art that the inventor possessed the later-claimed subject matter at the time the parent application was filed.").
142. In re Ruschig, 379 F.2d at 995-96.
143. Janice M. Mueller, Patent Law 123 (3d. ed. 2009).
144. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc);
145. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336,1344 (Fed. Cir. 2005).
146. See LizardTech, 424 F.3d at 1346;
147. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559,1568-69 (Fed. Cir. 1997).
148. Ariad, 598 F.3d at 1350,1352-53.
149. Id. at 1351 ("The law must be applied to each invention at the time it enters the patent process, for each patented advance has a novel relationship with the state of the art from which it emerges. Thus, we do not try here to predict and adjudicate all the factual scenarios to which the written description requirement could be applied. Nor do we set out any bright-line rules governing, for example, the number of species that must be disclosed to describe a genus claim, as this number necessarily changes with each invention, and it changes with progress in a field.").
150. See generally Janice M. Mueller, The Evolving Application of the Written Description Requirement to Biotechnological Inventions, 13 berkeley tech. L.J. 615 (1998) (exploring the written description requirement's unique impact on biotechnology and characterizing it as a super enablement requirement).
151. Eli Lilly, 119F.3dat 1567.
152. Cf. In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995) ("A prior art disclosure of the amino acid sequence of a protein does not necessarily render particular DNA molecules encoding the protein obvious because the redundancy of the genetic code permits one to hypothesize an enormous number of DNA sequences coding for the protein.").
153. Eli Lilly, 119 F.3d at 1567-68.
154. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956,964 (Fed. Cir. 2002) (adopting PTO Guideline that "the written description requirement can be met by 'showfing] that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics. i.e., complete or partial structure, other physical and/or chemical properties, Junctional characteristics when coupled with a known or disclosed correlation between Junction and structure, or some combination of such characteristics'" (alteration in original) (emphasis in original) (quoting Guidelines for Examination of Patent Applications Under the 35 U.S.C. 112, % 1, "Written Description" Requirement, 66 Fed. Reg. 1099,1106 (Jan. 5,2001))).
155. Gentry Gallery, Inc. v. Berkline Corp, 134 F.3d 1473, 1479-80 (Fed. Cir. 1998).
156. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343-47 (Fed. Cir. 2005) .
157. F.3d 1336 (Fed. Cir. 2010) (en banc).
158. Id. at 1352 ("It also has not just been applied to chemical and biological inventions.").
159. See LizardTech, Inc. v. Earth Res. Mapping, Inc., 433 F.3d 1373, 1378 (Fed. Cir. 2006) (Rader, J, dissenting);
160. Davis, supra note 86, at 487-88 ("[T]he court has not issued clear and consistent standards.");
161. Mark D. Jam's, On Courts Herding Cats: Contending with the 'Written Description" Requirement (and Other Unruly Patent Disclosure Doctrines), 2 Wash. U. J.L. & Pol'y 55, 62-71 (2000);
162. Duane M. Linstrom, Spontaneous Mutation: A Sudden Change in the Evolution of the Written Description Requirement as It Applies to Genetic Patents, 40 San Diego L. Rev. 947, 970 (2003) ("[I]t has also left us with even more uncertainty in the law than before the ruling.");
163. Mueller, supra note 97, at 617;
164. Pitlick, supra note 86, at 222;
165. Arti K. Rai, Intellectual Property Rights in Biotechnology: Addressing New Technology, 34 Wake Forest L. Rev. 827, 830-31 (1999);
166. Wegner, supra note 86, at 274. But see Lefstin, supra note 3, at 1215-22.
167. Holbrook, Possession, supra note 3, at 161-63;
168. Christopher M. Holman, Is Lilly Written Description a Paper Tiger?: A Comprehensive Assessment of the Impact o/Eli Lilly and Its Progeny in the Courts and PTO, 17 Alb. L.J. Sci. & Tech. 1, 80 (2007) (arguing that the courts have failed to articulate a standard for compliance with written description which is distinct from enablement); Wegner, supra note 86, at 271.
169. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1325 (Fed. Cir. 2003) (Rader, J, concurring) ("[T]he only way to distinguish the Lilly rule from enablement is to construe Lilly as requiring more disclosure than necessary to enable one of skill in the art to make and use the invention, a 'super-enablement' standard."); Mueller, supra note 97, at 617.
170. Ariad Pharm, Inc. v. Eli Lilly & Co, 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) ("We also reject the characterization, cited by Ariad, of the court's written description doctrine as a 'super enablement' standard for chemical and biotechnology inventions."). The court has recognized that there is a relationship between the two doctrines.
171. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005) (observing that written description and enablement are "closely related" and "usually rise and fall together").
172. See, e.g., Ariad, 598 F.3d at 1355 (rejecting patentee's expert testimony as "legally irrelevant");
173. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 925-26 (Fed. Cir. 2004) (rejecting patentee's expert testimony and relying solely on specification to invalidate the claim).
174. See infra notes 124-59 and accompanying text.
175. See infra notes 124-59 and accompanying text.
176. U.S.C. § 122(b)(1) (2006).
177. See Fromer, Patent Disclosure, supra note 3, at 553;
178. Holbrook, Possession, supra note 3, at 131;
179. Seymore, Teaching Function, supra note 27, at 624;
180. Katherine J. Strandburg, What Does the Public Get? Experimental Use and the Patent Bargain, 2004 Wise. L. Rev. 81,91.
181. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974) (explaining that the information disclosed in the patent adds to the public storehouse of knowledge).
182. In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988).
183. Id.
184. Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co, 730 F.2d 1452, 1463 (Fed. Cir. 1984).
185. Nat'l Recovery Techs, Inc. v. Magnetic Separation Sys, Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999) ("The scope of enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation.").
186. AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234,1244 (Fed. Cir. 2003).
187. Wands, 858 F.2d at 736-37.
188. Id. at 737.
189. Holbrook, Possession, supra note 3, at 129-30;
190. see also Holbrook, Paradox, supra note 11, at 41-42 (discussing how knowledge of PHOSITA alters scope of enablement).
191. F.3d 1361 (Fed. Cir. 1997).
192. Id. at 1366 (citation omitted).
193. U.S.C. § 112, ¶ 1 (2006) ("The specification shall contain a written description. 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 ." (emphasis added)).
194. 344 F.3d 1234 (Fed. Cir. 2003).
195. Id. at 1244.
196. 481 F.3d 1371 (Fed. Cir. 2007).
197. Mat 1379.
198. Id. (quoting AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003)).
199. See Liebel-Flarsheim, 481 F.3d at 1379-80;
200. AK Steel, 344 F.3d at 1244-45.
201. F.3d 1274 (Fed. Cir. 2007).
202. Id. at 1283.
203. F.3d 993 (Fed. Cir. 2008).
204. Id. at 1002.
205. Id. at 995.
206. Sitrick v. Dreamworks, LLC, No. CV 03-4265-SVW (AJWx), 2006 WL 6116641, at *4 n.3, *33 (CD. Cal. July 20, 2006).
207. Sitrick, 516 F.3d at 1000.
208. Id. at 1001.
209. F.3d 935 (Fed. Cir. 2010);
210. see also Sean B. Seymore, Patently Impossible, 64 Vand. L. Rev. (forthcoming 2011) (manuscript at 33-34 n.187).
211. ALIA, 603 F.3d at 936.
212. Id. at 938-39.
213. Id. at 940-41 (emphasis added) (quoting Auto. Techs. Int'l, Inc. v. BMW of N. Am., 501 F.3d 1274, 1282 (Fed. Cir. 2007)
214. and Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361,1366 (Fed. Cir. 1997)).
215. Id. at 941.
216. Id. at 941-42.
217. Mat942.
218. If the novel aspect was known to the PHOSITA, then it may suggest the claim is invalid as lacking novelty or being obvious, but it should have no impact on whether it is enabled.
219. See Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007) ("[T]he specification need not necessarily describe how to make and use every embodiment of the invention 'because the artisan's knowledge of the prior art and routine experimentation can often fill in the gaps.' ")
220. (quoting AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234,1244 (Fed. Cir. 2003))).
221. Nat'l Recovery Techs, v. Magnetic Separation Sys, Inc., 166 F.3d 1190, 1196 (Fed. Cir. 1999).
222. The same would be true in Sitrick if the accused device was a movie instead of a video or in ALZA if the accused device was an osmotic form.
223. See Holbrook, Paradox, supra note 11, at 11.
224. Liebel-Flarsheim, 481 F.3d at 1380;
225. see also ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 943 (Fed. Cir. 2010);
226. Automotive Techs, v. BMW of N. Am., 501 F.3d 1274, 1285 (Fed. Cir. 2007).
227. See Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1322-23 (Fed. Cir. 2003) (Rader, J., concurring) ("This case illustrates some of the unintended consequences of this judge-made doctrine. Each time a claim encompasses more than the preferred embodiment of the invention described in the specification, a defendant can assert that the patent is invalid for failure to describe the entire invention. Under the expanded written description doctrine, every claim construction argument could conceivably give rise to a validity challenge as well.").
228. See, e.g., Bayer AG. v. Biovail Corp., 279 F.3d 1340, 1342 (Fed. Cir. 2002) (addressing enforcement of patent previously found not infringed);
229. see generally Glynn S. Lunney, Jr., E-Obviousness, 7 Mich. Telecomm. & Tech. L. Rev. 363, 384 (2001) ("[Fjailing to resolve the validity issue where raised permits potentially invalid claims to 'remain in terrorem of the art' and to serve as a basis for enabling the patent holder to extract license fees, if not monopoly rents. ")
230. (quoting Royal Typewriter Co. v. Remington Rand, 168 F.2d691 (2d Cir. 1948)).
231. Blonder-Tongue Labs., Inc. v. Univ. of 111. Found, 402 U.S. 313, 350 (1971);
232. see also Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83,100-01 (1993).
233. See Cardinal Chem., 508 U.S. at 101
234. ("As this case demonstrates, the Federal Circuit's practice of routinely vacating judgments of validity after finding noninfringement creates a similar potential for relitigation and imposes ongoing burdens on competitors who are convinced that a patent has been correctly found invalid."). See generally Joseph Scott Miller, Building a Better Bounty: Litigation-Stage Rewards for Defeating Patents, 19 Berkeley Tech. L.J. 667,677-95 (2004).
235. Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1557 (Fed. Cir. 1996);
236. see also Holbrook, Claim Construction, supra note 78, at 144.
237. But see Phillips v. AWH Corp, 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc) ("While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction.").
238. Cf. Seymore, Teaching Function, supra note 27, at 653 ("More recently, various legal actors disagree about whether the enablement analysis should begin inwardly with the applicant's disclosure or outwardly by gauging the PHOSITA's knowledge.").
239. Ian Ayres & Robert Gertner, Filling Gaps in Incomplete Contracts: An Economic Theory of Default Rules, 99 Yale L.J. 87, 87-88 (1989). The literature has suggested immutable rules are important to protect either parties to the contract who could not otherwise protect themselves in the negotiation, rooted in parentalism, or parties external to the contract, rooted in combating externalities. Id. at 88
240. Id. at 90-91.
241. Id. at 91.
242. R. Polk Wagner, Reconsidering Estoppel: Patent Administration and the Failure of Festo, 151 U. Pa. L. Rev. 159,214-16 (2002).
243. See Brenner v. Manson, 383 U.S. 519, 534 (1966) (noting incentive for patent applicants to write applications "so that they disclose as little useful information as possible");
244. Seymore, Teaching Function, supra note 27, at 634 n.62.
245. See USPTO Patent Application Rule, 37 C.F.R. § 1.56 (2009) (noting duty of candor and good faith to the USPTO, including duty to disclose material information). The risk of eventual invalidation in litigation would constrain strategic efforts, but given that so few patents reach litigation, that risk would be discounted significantly.
246. Cf. Wagner, supra note 163, at 216-17 (arguing for a stronger, almost absolute bar rule for prosecution history estoppel to force information disclosure during the patent's prosecution).
247. This is not to say that contracts do not involve time-related complexities. Contracts often account for future behavior and may need to be adjusted or interpreted in light of changed circumstances over time during an ongoing relationship between parties. See generally Paul J. Gudel, Relational Contract Theory and the Concept of Exchange, 46 Buff. L. Rev. 763,765 (1998).
248. Some terms may be left intentionally ambiguous to be addressed at a later date. See Milton C. Regan, Jr. & Palmer T. Heenan, Supply Chains and Porous Boundaries: The Disaggregation of Legal Services, 78 fordham L. rev. 2137, 2164-65 (2010).
249. Nevertheless, the focus on the interpretation of the contract is the intent of the parties at the time the contract is formed. See, e.g., Centigram Arg, S.A. v. Centigram Inc., 60 F. Supp. 2d 1003,1006-07 (N.D. Cal. 1999).
250. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co, 535 U.S. 722, 731 (2002) ("Unfortunately, the nature of language makes it impossible to capture the essence of a thing in a patent application. The inventor who chooses to patent an invention and disclose it to the public, rather than exploit it in secret, bears the risk that others will devote their efforts toward exploiting the limits of the patent's language.. ").
251. The doctrine of equivalents could be used to combat the asymmetry, but the Federal Circuit's use of the specification in estoppel-like fashion also applies to the doctrine of equivalents. See, e.g., SciMed Life Sys. v. Advanced Cardiovascular Sys, 242 F.3d 1337, 1345-47 (Fed. Cir. 2001);
252. see also Holbrook, Paradox, supra note 11, at 26-27.
253. If the patentee has surrendered literal claim scope, then almost invariably she will be precluded from asserting the doctrine of equivalents; thus, the traditional protection for patentees to combat the temporal dimension of patent law generally is unavailable to patentees in this situation. See, e.g., L.B. Plastics, Inc. v. Amerimax Home Prods, Inc., 499 F.3d 1303, 1309 (Fed. Cir. 2007) ("We have held that when a specification excludes certain prior art alternatives from the literal scope of the claims and criticizes those prior art alternatives, the patentee cannot then use the doctrine of equivalents to capture those alternatives.").
254. See supra notes 153-59 and accompanying text.
255. See supra notes 133-50 and accompanying text.
256. Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495, 1500-08(2001).
257. See generally Kimberly A. Moore, Worthless Patents, 20 Berkeley Tech. L.J. 1521 (2005).
258. The use of the specification to preclude claim scope is particularly troubling in contrast to the use of the prosecution history because the surrender may have been inadvertent. Holbrook, Claim Construction, supra note 78, at 142-43.
259. Lee, supra note 4, at 25-41.
260. Id. at41.
261. The Supreme Court has long emphasized the public notice function of a patent. See McClain v. Ortmayer, 141 U.S. 419, 424 (1891) ("The object of the patent law in requiring the patentee to [distinctly claim his invention] is not only to secure to him all to which he is entitled, but to apprise the public of what is still open to them.").
262. See infra notes 183-99 and accompanying text.
263. See infra notes 200-21 and accompanying text.
264. David L. Faigman, Madisonian Balancing: A Theory of Constitutional Adjudication, 88 Nw. U. L. Rev. 641,658 (1994).
265. See Mark D. Janis, Patent Law in the Age of the Invisible Supreme Court, 2001 U. Ill. L. Rev. 387. (Pubitemid 33656912)
266. See generally John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 Sup. Ct. Rev. 273;
267. Timothy R. Holbrook, The Return of the Supreme Court to Patent Law, 1 Akron Intell. Prop. J. 1 (2007) [hereinafter Holbrook, Supreme Court].
268. 550 U.S. 398 (2007).
269. The last time the Supreme Court addressed the issue of obviousness was in 1973. See Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976);
270. see generally Holbrook, Complicity, supra note 19, at 5-9 (cataloging pre-1995 Supreme Court cases reviewing Federal Circuit judgments and noting a dearth of cases dealing with substantive patent law).
271. See Holbrook, Complicity, supra note 19, at 3; Thomas, supra note 19, at 773.
272. 383 U.S. 1 (1966).
273. Mat 17-18.
274. See, e.g., U.S. Patent No. 5,194,299 (filed Dec. 31, 1986) (patent covering Post-It Notes®);
275. see generally Gregory N. Mandel, Another Missed Opportunity: The Supreme Court's Failure to Define Nonobviousness or Combat Hindsight Bias in KSR v. Teleflex, 12 Lewis & Clark L. Rev. 323, 336-42 (2008) (discussing experimental studies and flaws in the current obviousness inquiry);
276. Gregory N. Mandel, Patently Non-Obvious: Empirical Demonstration that the Hindsight Bias Renders Patent Decisions Irrational, 67 Ohio St. L.J. 1391 (2006) (performing experimental studies that show the presence of the hindsight bias in assessing the obviousness of an invention).
277. See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275 (Fed. Cir. 2004);
278. Timothy R. Holbrook, Extraterritoriality in U.S. Patent Law, 49 Wm. & Mary L. Rev. 2119, 2160 (2008) [hereinafter Holbrook, Extraterritoriality].
279. In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999); In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).
280. Dembiczak, 175 F.3d at 999; Rouffet, 149 F.3d at 1357.
281. Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135,140 (Fed. Cir. 1986);
282. see also Teleflex, Inc. v. KSR Int'l Co., 119 Fed. App'x 282, 286-90 (Fed. Cir. 2005)
283. (reversing summary judgment of invalidity based on misapplication of TSM analysis), rev'd, KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
284. See Adam B. Jaffe & Josh Lerner, Innovation and Its Discontents 34-35 (2004);
285. A Patent System for the 21st Century 89-90 (Stephen A. Merrill, Richard C. Levin & Mark B. Myers eds., 2004);
286. Fed. Trade Comm'n, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy 6-7 (2003).
287. KSR, 550 U.S. at 419 ("But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.").
288. Id. at 420-21.
289. Darrow, supra note 7, at 248; Daralyn J. Durie & Mark A. Lemley, A
290. Amy L. Landers, Ordinary Creativity in Patent Law: The Artist Within the Scientist, 75 Mo. L. Rev. 1, 3-4 (2010);
291. Joseph Scott Miller, Remixing Obviousness, 16 Tex. Intell. Prop. L.J. 237,244 (2008);
292. Seymore, Heightened Enablement, supra note 3, at 134-35.
293. See Lee, supra note 4, at 42. Lee characterizes the Supreme Court's jurisprudence as taking a "holistic turn," rejecting the Federal Circuit's rules for more standard-like analyses. Id. I agree with this only partially because early Supreme Court cases expressed the same interest in certainty as the Federal Circuit. See Holbrook, Complicity, supra note 19, at 5-9. Earlier cases articulated the use of presumptions to balance these interests, a methodology the Court unfortunately has failed to embrace as of late. See infra notes 198-221 and accompanying text.
294. Cf. Holbrook, Supreme Court, supra note 182, at 21.
295. The Supreme Court's more recent pronouncements, while rejecting the Federal Circuit's formalism, have failed to offer much guidance as to their holistic approach. See Lee, supra note 4, at 63-64. For example, the Supreme Court rejected the Federal Circuit's bright-line rule regarding patent exhaustion. Under the Federal Circuit's prior law, only unrestricted sales of the patented good exhausted the patentee's exclusive rights; any limits on the right of the purchaser on use of the invention resulted in a license, which did not exhaust the patent rights. See Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 706-08 (Fed. Cir. 1992).
296. The Supreme Court rejected this rule, but offered little guidance as to when exhaustion is triggered, noting only that "[t]he authorized sale of an article that substantially embodies a patent exhausts the patent holder's rights and prevents the patent holder from invoking patent law to control postsale use of the article." Quanta Computer, Inc. v. LG Elecs, Inc., 553 U.S. 617,638 (2008). Similarly, the Supreme Court rejected the Federal Circuit's rule for assessing subject matter eligibility of a claimed process. The Federal Circuit required a process be "tied to a particular machine or apparatus" or "transform[] a particular article into a different state or thing." In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc), affd sub nam. Bilski v. Kappos, 130 S. Ct. 3218 (2010).
297. The Supreme Court noted that the "machine-or-transformation" test was helpful but was not the sole test; instead, it relied on vague notions of the unpatentability of abstract ideas, natural phenomena, and laws of nature. Bilski, 130 S. Ct. at 3227.
298. Brief for International Business Machines Corp. as Amicus Curiae Supporting Neither Party, KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) (No. 04-1350), 2006
299. WL 2430566, at *18 (arguing that "references should be presumed combinable by a person having ordinary skill in the art where the references are within the scope of the 'analogous art'"; in such circumstances, there need not be a motivation to combine the references); Timothy R. Holbrook, Commentary, Obviousness in Patent Law and the Motivation to Combine: A Presumption-Based Approach, Wash. U. L. Rev. Slip Opinions (Mar. 21, 2007), http://lawreview.wustl.edu/commentaries/obviousness-in-patent-law-and- the-motivation-to-combine-a-presumption-based-approach; Miller, supra note 196, at 250-56;
300. Joshua D. Sarnoff, Bilcare, KSR, Presumptions of Validity, Preliminary Relief, and Obviousness in Patent Law, 25 Cardozo Arts & Ent. L.J. 995,1000 (2008).
301. Cf Holbrook, Supreme Court, supra note 182, at 9,21-23.
302. See Holbrook, Paradox, supra note 11, at 14.
303. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34 (2002);
304. Litton Sys, Inc. v. Honeywell, Inc., 140 F.3d 1449,1462 (Fed. Cir. 1998).
305. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126,136-37 (1942).
306. U.S. 17(1997).
307. Id. at 30-32.
308. Mat33.
309. Id. at 33-34.
310. Id. at 30 ("But petitioner reaches too far in arguing that the reason for an amendment during patent prosecution is irrelevant to any subsequent estoppel.").
311. 535 U.S. 722 (2002).
312. Mat740.
313. Id. at 740-41.
314. Id.
315. Mat741.
316. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co, 344 F.3d 1359, 1369 (Fed. Cir. 2003) (en banc).
317. U.S. 23 (2001).
318. Mat29.
319. Id. at 29-30.
320. Mat29.
321. Id. at 29-30;
322. Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205, 212-13 (2000) (noting that a product design can serve as a trademark if it is source-identifying);
323. see also In re Pennington Seed, Inc., 466 F.3d 1053, 1060 (Fed. Cir. 2006) (characterizing TrafFix holding as a "rebuttable presumption" of functionality).
324. Professor Lee advocates a different methodology, drawing on patent law's enablement doctrine; Supreme Court decisions should enable any particular test or standard articulated. See Lee, supra note 4, at 63-71.
325. My thesis could be viewed as a narrower form of this argument because a presumption-based approach seemingly would be enabling. Overall, however, Professor Lee's proposal has one serious flaw. Enablement in patent law is based on the idea that the patent document is self-contained and self-referential-the specification must explain how to make and use the invention contained within the patent itself. A Supreme Court decision, and any rule articulated therein, must necessarily be of general applicability because it must be applied to unforeseen future cases. It is difficult to see how a singular Supreme Court decision could enable a court to readily decide a host of future cases involving ever-evolving technologies. Thus, the Supreme Court would have to write considerable dicta in order to guess what cases may come down the line. While Professor Lee's insights are commendable, the proposed prescription is a bit unsatisfying. Another approach may be for the Supreme Court to take clusters of cases in a particular area with different factual contexts to create greater certainty around legal standards. See Carolyn Shapiro, The Limits of the Olympian Court: Common Law Judging Versus Error Correction in the Supreme Court, 63 Wash. & Lee L. Rev. 271, 313-27 (2006).
326. To be fair, Professor Lee expressly disclaims offering any "substantive guidelines for determining when the Supreme Court should intervene in patent affairs." Lee, supra note 4, at 76. In contrast, the proposals in this article do seek to offer such guidance to both the Supreme Court and the Federal Circuit.
327. See Lee, supra note 4, at 24-25.
328. See Ronald J. Allen, Presumptions in Civil Actions Reconsidered, 66 Iowa L. Rev. 843, 845 (1981);
329. Kenneth S. Broun, The Unfalfillable Promise of One Rule for All Presumptions, 62 N.C. L. REV. 697,702 (1984);
330. Mason Ladd, Presumptions in Civil Actions, 1977 Ariz. St. L.J. 275,279;
331. cf Keyes v. School Dist. No. 1, Denver, Colo, 413 U.S. 189, 209 (1973) ("This burden-shifting principle is not new or novel. There are no hard-and-fast standards governing the allocation of the burden of proof in every situation. The issue, rather, 'is merely a question of policy and fairness based on experience in the different situations.'" (quoting 9 J. Wigmore, Evidence § 2486, at 275 (3d ed. 1940))).
332. See Allen, supra note 222, at 845 ("[Presumptions] have been used to construct rules of decision to avoid factual impasse at trial; to allocate burdens of persuasion; to instruct the jury on the relationship between facts; and to allocate burdens of production."); Ladd, supra note 222, at 280-81.
333. Antonio E. Bernardo, Eric Talley & Ivo Welch, A Theory of Legal Presumptions, 16 J.L. Econ. & Org. 1,2 (2000).
334. See Ladd, supra note 222, at 277 ("Courts and legislatures often carelessly use the term 'presumption.'");
335. see also Broun, supra note 222, at 703 (exploring "bursting bubble" presumptions versus presumptions that shift the burden of proof).
336. Professor Allen advocated for eliminating the use of the term "presumption." Allen, supra note 222, at 864.
337. Broun, supra note 222, at 697-98. Part of the problem with finding a uniform rule is that various policy concerns reflected in the presumption may need to be treated differently given the context, creating variations in the ways in which presumptions function. Id. at 708.
338. U.S.C. § 282 (2006).
339. Allen, supra note 222, at 849-50 (objecting to use of term "presumption" in this context). Not all courts agreed with this view of the presumption of validity, however. Before the Federal Circuit was created, some courts treated the presumption of validity as merely shifting the burden of production to the defendant and, once that burden was satisfied, the presumption of validity disappeared under a "bursting bubble" approach. See Sperberg v. Goodyear Tire & Rubber Co, 519 F.2d 708, 713 (6th Cir. 1975) ("The issuance of letters by the Patent Office, because of the statutory presumption of validity, makes a prima facie case for a plaintiff asserting the validity of his patent. This presumption has no independent evidentiary value, however, but only serves to place the burden of proof on a party who asserts invalidity.
340. As the Supreme Court pointed out in Del Vecchio v. Bowers, 296 U.S. 280 (1935), a statutory presumption 'falls out of a case' when the party against whom the presumption works meets his burden of offering evidence sufficient to justify a contrary finding." (citation omitted) (emphasis in original));
341. Ronald J. Allen, Presumptions, Inferences and Burden of Proof in Federal Civil Actions-An Anatomy of Unnecessary Ambiguity and a Proposal for Reform, 76 Nw. U. L. Rev. 892, 897 n.26 (1982) (characterizing Sperberg as dealing with burden of production).
342. The Federal Circuit has used the statutory presumption to require proof of invalidity by clear and convincing evidence. See, e.g., Iovate Health Scis, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed. Cir. 2009).
343. But see generally Doug Lichtman & Mark A. Lemley, Rethinking Patent Law's Presumption of Validity, 60 Stan. L. Rev. 45 (2007) (arguing that the clear and convincing standard is not appropriate if the asserted prior art was not before the PTO).
344. The Supreme Court will address this issue in the October 2010 term. See Microsoft Corp. v. i4i Ltd, No. 10-290,2010 WL 3392402 (U.S. Nov. 29, 2010). The question presented is "[w]hether the court of appeals erred in holding that Microsoft's invalidity defense must be proved by clear and convincing evidence." Petition for a Writ of Certiorari at i, Microsoft Corp. v. i4i Ltd, No. 10-290 (U.S. Aug. 27, 2010), 2010 WL 3413088, at *ii.
345. Restatement (Second) of Torts § 328D (1965);
346. see also Gideon Parchomovsky & Alex Stein, Torts and Innovation, 107 Mich. L. Rev. 285, 286-87 (2008) (referring to res ipsa loquitur as a presumption);
347. see generally David Kaye, Probability Theory Meets Res Ipsa Loquitur, 77 Mich. L. Rev. 1456 (1979).
348. There is variation among the states as to whether the presumption of the res ipsa rule is permissive, allowing the jury to find negligence, or mandatory, shifting the burden of production to the defendant. See Broun, supra note 222, at 699.
349. See 35 U.S.C. § 295 (2006). This burden shifting appears to be a mandatory presumption.
350. Id. This presumption is required by the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS), although the U.S. statutory provision permissibly differs from the TRIPS article. TRIPS Article 34 permits the burden shift if either the product of the process is new or "if there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used." Article 34 only requires signatories to adopt one of these conditions, and the United States has adopted only the latter. Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, art. 34, The Legal Texts: The Results of the Uruguay Round of Multilateral Trade Negotiations 320 (1999), 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) [hereinafter TRIPS Agreement] ("Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process." (emphasis added)).
351. Cf. Ladd, supra note 222, at 281.
352. Such a scenario can arise because it is an act of infringement to import the product of a patented process, even if the process is performed overseas. 35 U.S.C. § 271(g) (2006); see Holbrook, Extraterritoriality, supra note 189, at 2139-41, 2148-50.
353. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30 (2001);
354. see, e.g., Great Neck Saw Mfrs, Inc. v. Star Asia U.S.A., LLC, No. C06-647Z, 2010 WL 2949296, at *16 (W.D. Wash. July 23,2010).
355. One could frame these scenarios more concretely in terms of a presumption framework. Under TrafFix, the accused infringer could be viewed as having the burden of producing the utility patent and showing that the asserted trade dress is covered by the patent; the burden of production then shifts back to the trademark owner. Similarly, the accused infringer bears the burden of producing evidence that a narrowing amendment was made during prosecution of the relevant patent. The burden of production then shifts to the patent holder to show that the amendment was made for a reason unrelated to patentability, that the amendment bore only a tangential relationship to the asserted equivalent, or that the equivalent was unforeseeable.
356. Allen, supra note 222, at 860.
357. See Broun, supra note 222, at 702.
358. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co, 535 U.S. 722, 727 (2002);
359. Warner-Jenkinson Co, v. Hilton Davis Chem. Co, 520 U.S. 17, 29-30 (1997);
360. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,1584 (Fed. Cir. 1996).
361. See supra notes 163-66 and accompanying text.
362. See supra note 163 and accompanying text.
363. Phillips v. AWH Corp., 415 F.3d 1303, 1318-19 (Fed. Cir. 2005) (en banc).
364. See Festo, 535 U.S. at 737.
365. Vitronics, 90 F.3d at 1583; see also Phillips, 415 F.3d at 1324 ("In Vitronics, we did not attempt to provide a rigid algorithm for claim construction, but simply attempted to explain why, in general, certain types of evidence are more valuable than others. Today, we adhere to that approach and reaffirm the approach to claim construction outlined in that case.. ").
366. Cf. Festo, 535 U.S. at 738 ("It does not follow, however, that the amended claim becomes so perfect in its description that no one could devise an equivalent. After amendment, as before, language remains an imperfect fit for invention.").
367. Cf. Kelly Casey Mullally, Patent Hermeneutics: Form and Substance in Claim Construction, 59 Fla. L. Rev. 333, 367-68 (2007) (arguing that reliance on intrinsic evidence alone risks reducing notice and certainty because of lack of technical context).
368. See, e.g., Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1382 (Fed. Cir. 2000) ("[T]he extrinsic evidence invoked by PowerTrax to show a potential issue of fact relating to the importance of the reliability issue does not trump the clear disclosures and assertions in the patent itself.");
369. Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 141 F.3d 1084, 1095 (Fed. Cir. 1998) (Newman, J, dissenting) ("This new and absolute rule is presented by the majority as rendering irrelevant any evidence of insubstantiality of the differences, or sameness of function/way/result, with reference to the function described in claim clause [5].. The importance of a property mentioned in the specification is a fact to be found and weighed. It is improper to foreclose such evidence by ruling that every unclaimed advantage must be present, whatever its relative significance in practice.").
370. Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U.S. 428, 435-36 (1911) ("It is certainly not necessary that he understand or be able to state the scientific principles underlying his invention, and it is immaterial whether he can stand a successful examination as to the speculative ideas involved.");
371. Newman v. Quigg, 877 F.2d 1575, 1581-82 (Fed. Cir. 1989) ("While it is not a requirement of patentability that an inventor correctly set forth, or even know, how or why the invention works, neither is the patent applicant relieved of the requirement of teaching how to achieve the claimed result, even if the theory of operation is not correctly explained or even understood." (citations omitted)).
372. The use of extrinsic evidence could elevate the role of expert testimony in claim construction prepared in anticipation of litigation and the concern of "hired guns" that do not help elucidate the meaning of the claims. See, e.g., Phillips, 415 F.3d at 1318;
373. Vitronics, 90 F.3d at 1585.
374. As the Supreme Court noted, however, in most cases, credibility and other concerns with experts should be subsumed in the entirety of the claim construction process. Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 (1996). Moreover, if the expert testimony is in equipoise or otherwise unclear, than the presumptive interpretation afforded by the intrinsic evidence would control, mitigating this concern.
375. Importantly, this approach also differs from contract interpretation, which has been advanced as an appropriate analogy to claim construction. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 997-98 (Fed. Cir. 1995) (Mayer, J, concurring) (arguing for contract-like analysis, with intrinsic evidence treated as legal and extrinsic evidence as factual), aff'd, 517 U.S. 370 (1996). In contract interpretation, resort to parole evidence is appropriate only if the contract language itself is ambiguous.
376. See, e.g., Thomsen v. Famous Dave's of Am, Inc., 606 F.3d 905, 908 (8th Cir. 2010) (applying Minnesota law);
377. Addicks Services, Inc. v. GGP-Bridgeland, LP, 596 F.3d 286, 294 (5th Cir. 2010) (applying Texas law). In claim interpretation, however, more than the patent applicant's intent is relevant; instead, it is that of the exogenous, objective PHOSITA. Thus, the contract analogy also fails.
378. See Phillips, 415 F.3d at 1316 ("[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs."); Markman, 52 F.3d at 980 ("As we have often stated, a patentee is free to be his own lexicographer.");
379. cf. Miller, supra note 44, at 203-07 (advocating requiring lexicon and preferred dictionary sections in patents to guide definitions).
380. See supra notes 72-78 and accompanying text.
381. This canon of claim construction is known as claim differentiation. See Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380-81 (Fed. Cir. 2006) (discussing doctrine's applicability to not only independent and dependent claims but also to two independent claims).
382. See, e.g., Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090,1096 (Fed. Cir. 2008).
383. E.g., CCS Fitness v. Brunswick Corp, 288 F.3d 1359, 1369 (Fed. Cir. 2002).
384. See Broun, supra note 222, at 702.
385. Cybor Corp. v. FAS Techs, Inc., 138 F.3d 1448, 1454-56 (Fed. Cir. 1998) (en banc).
386. Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1332 (Fed. Cir. 2009) ("[C]laim differentiation is a rule of thumb that does not trump the clear import of the specification.");
387. see also Autogiro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct. CI. 1967) ("Claim differentiation is a guide, not a rigid rule. If a claim will bear only one interpretation, similarity will have to be tolerated.");
388. accord ICU Med, Inc. v. Alaris Med. Sys, Inc., 558 F.3d 1368, 1376 (Fed. Cir. 2009);
389. NOMOS Corp. v. BrainLAB USA, Inc., 357 F.3d 1364, 1368 (Fed. Cir. 2004).
390. While there is considerable support for this move, even at the Federal Circuit, it is unclear as a constitutional matter how the court could do so. The Supreme Court, in agreement with the Federal Circuit, removed the jury from the act of claim construction by treating the issue as "purely legal." Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996). It is unclear how the courts could then remove the jury from claim construction, yet afford deference to fact finding relevant to claim construction on appeal.
391. See supra note 148 and accompanying text.
392. Professor Seymore has offered a slightly different burden-shifting methodology for use in the USPTO. See Seymore, Heightened Enablement, supra note 3, at 156-57. His proposal and this framework could complement each other, with mine focused on the litigation context and his the prosecution context. The PTO does currently use a variant of burden shifting when assessing the sufficiency of a patent application, although the initial burden lies on the examiner, not the applicant, to demonstrate a prima facie case of lack of written description or enablement.
393. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Professor Seymore would shift this burden if the applicant has failed to provide a working example.
394. U.S.C. § 282 (2006).
395. Of course, the Patent Office is not well-situated to evaluate the scope of disclosures, particularly enablement, as it has no ability to experiment or "try out" the invention. See Fromer, Patent Disclosure, supra note 3, at 579-80;
396. Seymore, Patently Impossible, supra note 141, at 18-19 (both discussing the limits on the PTO's ability to assess disclosure). The disclosure in the patent application is presumed sufficient, and it is incumbent on the examiner to provide a basis to challenge the application's sufficiency. See In re Doyle, 482 F.2d 1385, 1392 (C.C.P.A. 1973);
397. see generally Lichtman & Lemley, supra note 230, at 53-56 (noting difficulties examiners have in adequately reviewing patent applications).
398. See Apotex USA, Inc. v. Merck & Co, 254 F.3d 1031,1037-38 (Fed. Cir. 2001).
399. U.S.C. § 102(g)(2) (2006).
400. See Lutzker v. Plet, 843 F.2d 1364, 1366 (Fed. Cir. 1988).
401. See, e.g., Apotex, 254 F.3d at 1035-36.
402. See, e.g., id. at 1036 (arguing that Apotex's patent is not invalid because, although Merck was the first-to-invent, it suppressed the invention); cf. Young v. Dworkin, 489 F.2d 1277, 1281-82 (C.C.P.A. 1974) (awarding patent to the second-to-invent because the first-to-invent suppressed the invention).
403. Apotex, 254 F.3d at 1037-38 (citations omitted).
404. F.3d 1371 (Fed. Cir. 2007).
405. Mat 1380.
406. Id.
407. Mat 1382.
408. Seemingly much of the admitted extrinsic evidence would be factual in nature, requiring deference on appeal, whereas the intrinsic evidence would be reviewed de novo.
409. Cf. Mullally, supra note 247, at 368-69.