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  • A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

    By Andrew Williams —

    Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September.  In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an invalidating reference under 35 U.S.C. § 102(e)(2) was entitled to its provisional filing date because it failed to compare the provisional application to the claims of the reference patent (as opposed to the patent attempting to be invalidated).  The opinion focused on the claims of the reference patent, and was silent as to whether the provisional disclosure would also need to be invalidating.  Therefore, it is clear that comparing the claims of the reference patent to the provisional is necessary, but is such a comparison sufficient to allow the reference patent to claim priority back to the provisional filing date for the entirety of its disclosure.

    In analyzing the case, we highlighted the most important take away — if you are attempting to invalidate a pre-AIA patent claim with a prior art under 102(e)(2), whether in an IPR proceeding or in district court, and you need to rely on the filing date of a provisional application, you must show where support for that prior art patent's claims can be found within the provisional filing.  This is contrary to the common-place practice of merely identifying in the provisional application where the invalidating disclosure can be found (similar to identifying in the 102(e) patent where the invalidating disclosure can be found).  However, even though we suggested that it would still be advisable to make such a showing in addition to where support for the claims can be found, we also provided a scenario demonstrating what problems can ensue if Dynamic Drinkware stood for the proposition that identifying support for the claims of the reference patent was necessary and sufficient for the entirety of the non-provisional disclosure to be entitled to the provisional filing date.

    After the post published, we were accused by several commenters of misreading the case.  If their opinions had no merit, it would not warrant a response.  However, there were some valid points expressed that are worth noting, so we decided to prepare this follow-up post to air this controversy (if it can even be considered that).  For the record, we do not believe that we are misreading the Dynamic Drinkware case.  Instead, we are reading it for precisely what it says.  We do not disagree, however, that there might be an alternative reading that would address these problems.  However, for the alternative reading to be correct, the case needs to be read as incorporating information implicitly.  Nevertheless, this alternative reading is satisfying because it would do away with the problematic scenario that we identified, and it would eliminate the inherent unfairness of our reading of the case.

    As commenter Kip explained:

    The decision says that for provisional X to anticipate under 102e, it must result in a publication or patent that:

    1. has at least one claim supported by X;
    2. contains disclosure (in the spec or claims) that anticipates the patent under review

    In other words, according to this reading, there are two requirements — you need to show support for the claims of the reference patent, and you need to identify where the disclosure in the provisional can be found for the patent being challenged.  This interpretation was echoed by commenter EG, long-time friend of the blog.

    But unfortunately, there is no support in the Dynamic Drinkware case itself that supports this interpretation.  This could be due to a lack of clarity on the part of the Court, as commenter Dan Williams put it (no relation).  Dynamic didn't show that the claims had support, so no further analysis was necessary.  Or, as Mr. Williams put it, "[w]hat they really were saying in my opinion was '(you need both 1 and 2, and even though Dynamic proved 2), Dynamic didn't show 1, so they lose.'"  Nevertheless, there is no support anywhere else in this case for that interpretation, and despite requests, no one was able to provide any.

    The best support, as provided by commenter Kip, was the citation in the opinion to In re Werthein, 646 F.2d 527 (CCPA 1981).  That case was authored by Judge Rich, and stood for the proposition that if you are citing a patent as invalidating art and claiming priority to a continuation-in-part application, you need to find support in that CIP.  The reasoning was the same as that for providing the invaliding effect of patents at the filing date, not the publication date or issue date — that the ability to use a patent as prior art should not depend on the speed and/or efficiency of the Patent Office.  Correspondingly, the theory in this case holds that if the prior patent does not support the claims of the issued patent, than it itself never would have resulted in a patent (regardless of the speed of the Office).  Thus, if the provisional does not support the relevant disclosure, then priority to it is unavailable.

    The problem is Wertheim came out in 1981, prior to the advent of provisional applications.  Therefore, how that case is applied to provisionals needs to be ascertained.  Moreover, rather than applying Wertheim as determinative of the present case, Dynamic Drinkware actually tells us how Wertheim applies to provisionals:  "A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1."  It says nothing about the disclosure of the reference patent, much less the claims of the patent that is being challenged.

    At this point, it should be noted that both interpretations have merits and flaws.  It will be interesting to see if these issues come up soon, or even at all.  What is clear is that if you are trying to invalidate the claims of a patent, and you need support to the provisional, you better include support related to the claims of the reference patent.    

  • Comments on the USPTO’s Subject Matter Eligibility Guidance — The ABA

    By Michael Borella —

    On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update").  The update provided recommendations and resources for examiners in addition to those in the Office's 2014 Interim Guidance on Subject Matter Eligibility.  In particular, the Office provided procedural and substantive guidelines regarding the examination of inventions that may include subject matter that does not meet the requirements of 35 U.S.C. § 101.  For a more detailed overview of the July Update, see our review thereof.

    ABAThe Office requested public comments on the July Update, the comment period of which ended on October 28, 2015.  The Office recently published the comments it received from a number of organizations, law firms, companies, and individuals.  This is the first in a series of articles regarding the comments, and covers those provided by the American Bar Association Section of Intellectual Property Law (the Section).

    The Section begins by commending the Office for providing extensive examples of patent-eligible and patent-ineligible claims, as "[t]hese examples help both examiners and stakeholders to reach a common understanding and advance prosecution."  But, the Section is quick to point out that uncertainty regarding the examination of patents under § 101 remains.

    Importantly, the Section took the position that there are three distinct tests for patent-eligibility, the "machine or transformation test," the "law of nature" and "natural phenomenon" test used prior to Mayo v. Prometheus, and the two-prong Alice v. CLS Bank test.  The Section views the first two tests as incompatible because "it would have been unthinkable to observe that one part of a claim was performed in the human mind, and another part operated by natural principles."  (It would not be surprising if there is a DNA analysis claim out there somewhere that is a counterexample to this notion.)  The Section further views the Alice test as being limited to review of long-standing concepts (it isn't).  As a result, the Section recommended that "[w]here the three tests diverge, the Eligibility Update should be separated into three separate sections to make the distinctions clear."

    In Alice, the Court clearly stated that the two-prong Mayo test was universal, in that it applied to all judicial exceptions to patent-eligibility, as well as all statutory classes of claim.  The Court wrote that:

    [W]e set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts . . . first, we determine whether the claims at issue are directed to one of those patent-ineligible concepts [then] we consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.

    To the extent that they are still applicable, the pre-Alice tests serve to further inform this analysis.  Moreover, whether a claim is novel has little bearing on the eligibility thereof.  This is reflected by the Court's position in Assoc. for Molecular Pathology v. Myriad Genetics ("[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry"), as well as that of the Federal Circuit in Ultramercial Inc. v. Hulu ("[t]hat some of the [claimed] steps were not previously employed in this art is not enough — standing alone — to confer patent eligibility").  Unfortunately, the Section's misunderstanding of the law here detracts from the credibility of its positions as a whole.

    Nonetheless, the Section went on to make an astute observation about how examiners are applying the Office's § 101 framework.  Responding to the Office's statement that the July Update will "ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea," the Section wrote that "[i]t is not clear that examiners are following this instruction, but appear to use their creativity in an attempt to identify an abstract idea from the claim, which is a guilty until proven innocent mindset."  Indeed, many patent-eligibility rejections seem to be based on knee-jerk, conclusory reactions, rather than actual analyses of claims.  Some examiners have stated that they are under pressure from their supervisors to reject claims under § 101 unless those claims are clearly eligible.

    The Section also raised the issue that "[u]sing broad, categorizing words to describe a claim, e.g., an advertising method or system . . . will only lead the examiner to label a claim as directed to an abstract idea, since it can be reduced to a few generic words."  Many others have complained about such over-generalization of claimed inventions by the Office.  As the Section noted, "labeling a claimed concept in as few words as possible is certainly not the test."

    The Section further took issue with the Office's statement about official notice.  Namely, in the July Update, the Office stated that "[c]ourts have not identified a situation in which evidence was required to support a finding that the additional [claim] elements were well-understood, routine or conventional, but rather treat the issue as a matter appropriate for judicial notice."  In the Section's view, the Administrative Procedure Act (APA) "requires agencies to support any adverse decision by substantial evidence."  The Section reminded the Office that it is not an Article III court, and noted that the Supreme Court did provide evidence for its reasoning that some claim elements were well known in Alice and Bilski v. Kappos.  Ultimately, the Section recommended that the Office's reference to official notice be completely removed.

    Another Section recommendation is that examiners help applicants draft patent-eligible claims.  For example, applications that "describe and claim specific hardware to accomplish a particular task should be patent eligible, and examiners should help applicants to amend claims to be patent eligible."  This is a commendable notion.  Although many examiners will work actively with applicants to find pathways to allowance, others take an "it's not my problem" approach, which is not productive for either the applicant or the Office.

    And finally, the Section expressed concern that the Office may be in violation of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement due to the Office's "practically excluding certain subject matter as per se patent ineligible."  The Section pointed to application rejection rates of nearly 100% in many art units of Technical Center 3600 as an example.

  • National Geographic Considers Technology and Its Threat to Humanity

    By Kevin E. Noonan —

    National GeographicProgress, and faith in progress to improve human lives, has been a cornerstone belief in American civilization (and, indeed, Western civilization generally, at least since St Augustine argued that Christ's death put an arrow on history).  It was so important to the Founding Fathers that they enshrined promoting progress as one of the powers of Congress in the Patent Clause.

    But there has always been a countervailing meme:  that technological progress threatens our humanity and that we run the risk of having our humanity devalued by overreliance on technology.  This idea has fueled countless science fiction plots, from Frankenstein to The Matrix.  In many ways, the urge for "natural" products is a reflection of that idea, and while it provides a useful and (general) healthy counterpoint to overly processed foods, the philosophy has its limits.  As Covert Bailey used to say, syphilis is natural.

    And in the biotechnology era, that is the point:  most of what biotechnology addresses involves the breakdown of the natural machine, at the cellular level.  It has provided and continues to provide drugs that have addressed chronic disease and provided insights into the mechanisms for other diseases of ancient provenance.  Most of the fears that have arisen regarding biotechnology — Asilomar, test-tube-babies — have not come to pass.  And in their stead have been elucidation of the basis of diseases like muscular dystrophy and Huntington's chorea, as well as personalized medicine and treatments for cancer, AIDS, and Alzheimer's disease.

    Indeed, the disruptions that technology can cause are social ones, and these need to be addressed.  Apocryphally, medieval shoemakers threw sabots into prototype machines for mass production to disable them, and this sentiment persists today in resistance to technological change.  What is needed is not resistance to technology but the political will to help workers adapt to such change, and these days political will is one thing most recognize is sorely lacking.

    The National Geographic Channel is airing a new special "Breakthrough: More than Human," hosted by Paul Giamatti and premiering Sunday, November 8 at 9 p.m ET/8 p.m. CT, which addresses some of these questions.  It is serious and informative, and is a welcome addition to the conversation we need to have about technological change.

    But the truth is that the only thing to fear is fear of the new and unknown.  And it would be a shame if collectively we are too afraid to take advantage of the ever-increasing pace of technological change, because we are too afraid of an unlikely dystopian future to accept the benefits we are more likely to get in return.

  • Court Report

            By Sherri Oslick —

    Gavel About Court Report:  Each week we will report briefly on recently filed biotech and pharma cases.

    Janssen Biotech Inc. et al. v. Par Pharmaceutical Inc. et al.
    1:15-cv-00679; filed August 3, 2015 in the District Court of Delaware

    • Plaintiffs:  Janssen Biotech Inc.; Janssen Oncology Inc.; Janssen Research & Development LLC
    • Defendants:  Amneal Pharmaceuticals LLC; Amneal Pharmaceuticals of New York LLC; Par Pharmaceutical Inc.; Par Pharmaceutical Companies Inc.

    Infringement of U.S. Patent No. 8,822,438 ("Methods and Compositions for Treating Cancer," issued September 2, 2014) following a Paragraph IV certification as part of defendants' filing of an ANDA to manufacture a generic version of Janssen's Zytiga® (abiraterone acetate, used in combination with prednisone for the treatment of patients with metastatic castration-resistant prostate cancer).  View the complaint here.  [NB: The complaint was voluntarily dismissed.]


    BTG International Ltd. et al. v. Actavis Laboratories FL, Inc. et al.
    9:15-cv-81076; filed August 3, 2015 in the Southern District of Florida

    • Plaintiffs:  BTG International Ltd.; Janssen Biotech Inc.; Janssen Oncology Inc.; Janssen Research & Development LLC
    • Defendants:  Actavis Laboratories FL, Inc.; Actavis Pharma, Inc.; Actavis, Inc.

    Infringement of U.S. Patent Nos. 5,604,213 ("17-Substituted Steroids Useful in Cancer Treatment," issued February 18, 1997) and 8,822,438 ("Methods and Compositions for Treating Cancer," issued September 2, 2014) following a Paragraph IV certification as part of Actavis' filing of an ANDA to manufacture a generic version of Janssen's Zytiga® (abiraterone acetate, used in combination with prednisone for the treatment of patients with metastatic castration-resistant prostate cancer).  View the complaint here.  [NB: The complaint was voluntarily dismissed.]


    Sanofi-Aventis US LLC et al. v. AstraZeneca Pharmaceuticals LP et al.
    1:15-cv-00662; filed July 31, 2015 in the District Court of Delaware

    • Plaintiffs:  Sanofi-Aventis US LLC; Sanofi-Aventis Deutschland GmbH
    • Defendants:  AstraZeneca Pharmaceuticals LP; Amylin Pharmaceuticals LLC

    Declaratory judgment of non-infringement and invalidity of U.S. Patent Nos. 6,902,744 ("Exendin Agonist Formulations and Methods of Administration Thereof," issued June 7, 2005), 7,399,489 ("Exendin Analog Formulations," issued July 15, 2008), and 7,521,423 ("Exendin Pharmaceutical Compositions," issued April 21, 2009) based on Sanofi's filing of an NDA seeking approval to market in the U.S. its Lyxumia® product (lixisenatide, a GLP-1 agonist used for the treatment of adults with type 2 diabetes mellitus to achieve glycaemic control in combination with oral glucose-lowering medicinal products and/or basal insulin when these, together with diet and exercise, do not provide adequate glycaemic control).  View the complaint here.


    IDEXX Laboratories Inc. et al. v. Charles River Laboratories Inc. et al.
    1:15-cv-00668; filed July 31, 2015 in the District Court of Delaware

    • Plaintiffs:  IDEXX Laboratories Inc.; IDEXX Distribution Inc.
    • Defendants:  Charles River Laboratories Inc.; Charles River Laboratories International Inc.

    Infringement of U.S. Patent Nos. 8,927,298 ("Sample Collection and Analysis," issued January 6, 2015), 8,945,945 (same title, issued February 3, 2015), and 9,040,308 (same title, issued May 26, 2015) based on Charles' River's marketing of its EZ-Spot® product, a dry whole blood spot sample collection method, using Multiplexed Fluorometric Immunoassay technology to detect virus, bacterial, and other contaminants, similar to IDEXX's Opti-Spot® product.  View the complaint here.


    Galderma Laboratories L.P. et al. v. Dr. Reddy's Laboratories Ltd. et al.
    1:15-cv-00670; filed July 31, 2015 in the District Court of Delaware

    • Plaintiffs:  Galderma Laboratories L.P.; Nestle Skin Health S.A.; TCD Royalty Sub LLC
    • Defendants:  Dr. Reddy's Laboratories Ltd.; Dr. Reddy's Laboratories Inc.; Promius Pharma LLC

    Infringement of U.S. Patent Nos. 7,211,267 ("Methods of Treating Acne" issued May 1, 2007), 7,232,572 ("Methods of Treating Rosacea," issued June 19, 2007), 8,603,506 ("Once Daily Formulations of Tetracyclines" issued July 6, 2010), 7,749,532 ("Once Daily Formulation of Tetracyclines," issued July 6, 2010), 8,206,740 ("Once Daily Formulations of Tetracyclines," issued June 26, 2012); 8,394,405 (same title, issued March 12, 2013); 8,394,406 (same title, issued March 12, 2013); 8,470,364 (same title, issued same title, issued March 12, 2013); and 8,709,478 (same title, issued April 29, 2014) following a Paragraph IV certification as part of Dr. Reddy's filing of an NDA (under § 505(b)(2) of the Food, Drug and Cosmetic Act) to manufacture a generic version of Galderma's Oracea® (doxycyline delayed release capsules, used to treat inflammatory lesions of rosacea).  View the complaint here.


    Validus Pharmaceuticals LLC v. Aurobindo Pharma Ltd. et al.
    3:15-cv-05912; filed July 31, 2015 in the District Court of New Jersey

    • Plaintiff:  Validus Pharmaceuticals LLC
    • Defendants:  Aurobindo Pharma Ltd.; Aurobindo Pharma USA, Inc.; Aurolife Pharma LLC

    Infringement of U.S. Patent No. 6,977,253 ("Methods for the Treatment of Bipolar Disorder Using Carbamazepine," issued December 20, 2005) following a paragraph IV certification as part of Aurobindo's filing of an ANDA to manufacture a generic version of Validus' Equetro® (carbamazepine extended-release capsules, used for the treatment of acute manic to mixed episodes associated with Bipolar I disorder).  View the complaint here.

  • Conference & CLE Calendar

    CalendarNovember 4, 2015 - Patent Quality Roadshow (U.S. Patent and Trademark Office) – Western Michigan University Thomas M. Cooley Law School, Auburn Hills, MI

    November 4, 2015 - European biotech patent law update (D Young & Co) – 4:00 am, 7:00 am, and 12:00 pm (ET)

    November 5, 2015 – "Objective Evidence in IPRs: Demonstrating Sufficient Nexus — Linking Evidence and Merits of Claimed Invention, Leveraging Prosecution Declarations" (Strafford) – 1:00 to 2:30 pm (EST)

    November 10, 2015 - Patent Quality Chat webinar series (U.S. Patent and Trademark Office) – 12:00 to 1:00 pm (ET)

    November 12, 2015 - Patent Quality Roadshow (U.S. Patent and Trademark Office) – North Carolina Central University School of Law, Durham, NC

    November 12, 2015 – "Leveraging Experts for USPTO Prosecution and PTAB — Developing Strong Patentability Records to Strengthen Claims Against IPR and PGR Challenges" (Strafford) – 1:00 to 2:30 pm (EST)

    November 12, 2015 – "Protecting Privilege: Patent Agents within the Bar and Attorneys Beyond the Border" (American Intellectual Property Law Association) – 12:30 – 2:00 pm (Eastern)

    November 16-17, 2015 – Patent Litigation 2015 (Practising Law Institute) – New York, NY

    ***Patent Docs is a media partner of this conference or CLE

  • AIPLA Webinar on Protecting Privilege

    AIPLA #1The American Intellectual Property Law Association (AIPLA) will be offering a webinar entitled "Protecting Privilege: Patent Agents within the Bar and Attorneys Beyond the Border" on November 12, 2015 from 12:30 – 2:00 pm (Eastern).  Jeffrey I. D. Lewis of Fried Frank Harris Shriver & Jacobson, LLP; Angela Sebor of GlobeImmune, Inc.; and Anthony C. Tridico of Finnegan Henderson Farabow Garrett & Dunner, LLP will discuss attorney-client privilege as applied to domestic patent agents and non-lawyer patent attorneys outside the United States.  The webinar will explore unsettled and often complex issues surrounding privilege and communications between U.S. patent agents or foreign patent practitioners and their clients, and address recent efforts by the USPTO and intellectual property organizations to engage stakeholders in a discussion of privilege for patent practitioners, as well as possible solutions for resolving current inconsistent treatment of privilege rules in the U.S. and abroad.

    The registration fee for the program is $95 (AIPLA member rate) or $150 (non-member rate).  Those interested in registering for the program, can do so here.

  • USPTO Enhanced Patent Quality Initiative Roadshows and Patent Quality Chat Webinar Series

    USPTO SealThe U.S. Patent and Trademark Office will be hosting patent quality roadshows on November 4, 2015 at the Western Michigan University Thomas M. Cooley Law School in Auburn Hills, MI and on November 6, 2015 at the North Carolina Central University School of Law in Durham, NC.  During the full-day roadshows, patent quality experts and executives will be on-hand and via remote presentation to lead discussions on clarity of the record, improving global patent prosecution, measuring patent quality, enhancing examiner interviews, and patent automation initiatives.  An agenda for the November 4 roadshow can be found here and an agenda for the November 6 roadshow can be found here.

    The USPTO will also be offering the next webinar in its Patent Quality Chat webinar series on November 10, 2015 from 12:00 to 1:00 pm (ET).  The latest webinar, which will be hosted by Deputy Commissioner for Patent Quality Valencia Martin Wallace and Senior Advisor Sandie Spyrou, will provide an update on the Enhanced Patent Quality Initiative (EPQI).  Ms. Spyrou will share a summary of the EPQI comments collected by the USPTO to date, and Ms. Wallace will discuss next steps that the USPTO is considering to be responsive to these comments as the Initiative moves forward.  Ms. Wallace and Ms. Spyrou will be encouraging feedback on how to improve these programs.

    Additional information regarding the Patent Quality Chat webinar series, including how to view the webinar online can be found here.

  • European Biotech Patent Law Webinar

    D Young & CoD Young & Co will be offering its next European biotech patent law update on November 4, 2015.  The 45-minute webinar will be offered at three times: 4:00 am, 7:00 am, and 12:00 pm (ET).  D Young & Co European Patent Attorneys Simon O'Brien and Catherine Mallalieu will provide an essential update and live Q&A on EPO biotechnology case law.

    While there is no fee to participate, attendees must register in advance.  Those wishing to register can do so here.

  • USPTO Revises Rules to Facilitate Access to Applications and File Contents by Foreign IP Offices

    By Donald Zuhn —

    USPTO SealIn a notice published earlier this week in the Federal Register (80 Fed. Reg. 65649), the U.S. Patent and Trademark Office issued a final rule revising the rules of practice to permit applicants to authorize the USPTO to give certain foreign IP offices access to all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign IP office.  The final rule also revises the rules of practice so that applicants will  not be charged a fee when the USPTO provides a foreign IP office with an electronic copy of an application-as-filed or an electronic  copy of file contents.

    In addition to the rules changes, the notice indicates that the application data sheet (ADS) form (PTO/AIA/14) will be revised to include separate access authorizations for the priority document exchange (PDX) program and for the program by which U.S. search results are delivered to the European Patent Office (EPO).  The most noticeable difference between the prior ADS form and the revised ADS form will be that in the revised ADS form an "opt-out" check box rather than an "opt-in" check box will be included for each access authorization.  The notice notes that the revised ADS form will make it easier for applicants to give the necessary authorization for access to an application.

    The notice contains a specific discussion of the rules changes at pages 65651-52 and comments (and the USPTO's responses to those comments) that were received by the USPTO in response to a notice of proposed rulemaking that was published in July of 2014 at pages 65652-53.

    The changes in the final rule will take effect on November 30, 2015 and apply to all applications filed before, on, or after the effective date.

  • Pigs Fly, Hell Has Frozen Over, and the New York Times Supports Small Inventor and University Patenting

    By Kevin E. Noonan —

    New York TimesAdmittedly, only on its Op-Ed page.  But last Saturday Joe Nocera wrote a remarkably sane and reasoned column, entitled "The Patent Troll Smokescreen," pointing out that "big companies with large lobbying budgets" are using the patent troll meme to change patent law in their favor (but in ways that will not increase innovation, benefit the country or "promote progress" for anything other than their bottom lines).

    The column was prompted by the paradox that for some, like the Electronic Frontier Foundation, anyone who is a non-practicing entity (or NPE) and asserts a patent is a patent troll.  Mr. Nocera clearly understands the received wisdom about patent trolls:  they are NPEs that "use [their patents] not to further innovation or manufacture a product but to conduct a kind of legal extortion racket," based on patents that are "sometimes absurdly vague."  He cites as an example the Lemelson bar code patents (which of course were never accused of being vague but this is journalism so, close enough).  Patent trolls, Mr. Nocera writes, are "sand in the engine of commerce."

    But it is clear that Mr. Nocera has been taken aback by the rhetoric that patent trolls should include universities because "[w]henever the university's scientists come up with innovations — which they rarely intend to use to manufacture a product — WARF [who licenses patents from the University of Wisconsin] applies for a patent and then seeks to license it, just as trolls do."  Naively, he then states that "of course, nobody thinks a university is a patent troll" based on his (correct) understanding that "[u]niversities are supposed to come up with new ideas, not manufacture new products.  That's what companies do."  And he further understands that even anti-troll champions like Hastings College of Law Professor Robin Feldman recognizes the social utility of encouraging universities to license their patented technology, because it will "encourage the commercialization of new products."

    The social utility could be hampered, Mr. Nocera realizes, if the bills in Congress aimed at curtailing the type of "trolling" he disparages ends up "having huge negative consequences for legitimate inventors."  Or if "a series of Supreme Court rulings make matters worse, putting onerous burdens on inventors while making it easier for big companies to steal unlicensed innovations."  (The latter has, of course, already happened; see "The ACLU, Working for the Man").

    According to Mr. Nocera, those decisions and the AIA have created a situation where "big companies can now largely ignore legitimate patent holders."  And the companies doing it "don't call it stealing"; instead, they call it "efficient infringing" according to Robert Taylor, a patent lawyer for the National Venture Capital Association.  The result:  the big company expropriates patented technology and then has "top-notch" patent lawyers working for it to invalidate any patent asserted against it.  And "[b]ecause the courts have largely robbed small inventors of their ability to seek an injunction [] the worst that can happen is that the infringer will have to pay some money.  Which, for a rich company like, say, Apple, [is] no big deal," according to Mr. Nocera.  In Apple's case, the piece states that Apple has a policy, expressly stated on its website, that "the company can lay claim to any unsolicited [note, not unpatented] idea."  He then describes the lawsuit between Wisconsin and Apple and the $234 million judgment the WARF obtained against Apple for patent infringement.  But he mentions that this doesn't make Wisconsin whole, due to lost opportunity costs, stating that WARF didn't have the chance to license the technology exclusively to an Apple competitor, and in addition had to risk infringement litigation to obtain any recovery at all.

    The piece ends with a reminder that bills remain pending in both the House and Senate that "will [] effectively tilt the playing field even further toward big companies with large lobbying budgets" and states:

    For the sake of real innovation, and in the name of the small inventor, who holds a special place in America's mythology, the pendulum needs to start swinging in the other direction.

    Perhaps a measure of sanity will return to the patent law debate, if the Times Op-Ed editors saw fit to publish Mr. Nocera's column.  Patentees would do well to send a copy to their Senators and Representatives in Congress, and perhaps take the opportunity to engage legislators in a discussion of these issues.

    Because we can be sure that those "large lobbying budgets" are not going unspent by companies engaging in "efficient infringement."