An Open Letter to the Supreme Court concerning Patent Law by Roberta J. Morris[FN.*]

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1 An Open Letter to the Supreme Court concerning Patent Law by Roberta J. Morris[FN.*] Contents: 1. The Patent Office Does Not "Request Changes" In Claim Language (page 2) 2. The Patent Office Does Not Care About Infringement, Literal or By Equivalents, Nor Should It (page 5) 3. When "Prior Art" Is Involved, The Patent Office Does Not "OBject," It "REjects" (page 10) 4. Lack of Intent to Infringe Can Not Justify a Reduced Damage Award (page 12) Dear Honorable Justices: I am writing to you because there are a few things you should know about patent law that your best friends won't tell you. (If you had best friends who knew patent law, I don't think I would be writing this letter.) Although the "literature" and the lower courts may have refrained from mentioning it, there are parts of Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33, 137 L. Ed. 2d 146, 117 S. Ct (1997) that, in a course on patent law, would make a great exam question of the "spot the errors" variety: You were right about the forest, but misidentified some of the trees. To continue with arboreal (and somewhat mixed) metaphors, inasmuch as you will very likely venture down that road again some day, I thought a little global positioning might keep you out of the woods. * Roberta J. Morris is an adjunct professor at the University of Michigan Law School, where she teaches patent law and related subjects, and is Of Counsel to the Michigan patent firm Gifford Krass. She holds an AB summa cum laude from Brown University, a JD from Harvard Law School, and a PhD in Physics from Columbia University, in that order. The views expressed here are purely her own. 1

2 1. The Patent Office Does Not "Request Changes" In Claim Language You repeatedly say that the Patent Office ("PTO") "requests a change" in a claim during the patent application process. [FN.1] The process is ex parte, but it is not a partnership: "request" is the wrong word. When Rhett Butler said "Frankly, my dear, I don't give a damn," Scarlett could have considered it to be a "request for a 1. The words vary (see underlining), but the idea is the same: "It is telling that in each case this Court probed the reasoning behind the Patent Office's insistence upon a change in the claims. In each instance, a change was demanded because the claim as otherwise written was viewed as not describing a patentable invention at all -- typically because what it described was encompassed within the prior art. But, as the United States informs us, there are a variety of other reasons why the PTO may request a change in claim language. Brief for United States as Amicus Curiae (counsel for the PTO also appearing on the brief). And if the PTO has been requesting changes in claim language without the intent to limit equivalents or, indeed, with the expectation that language it required would in many cases allow for a range of equivalents, we should be extremely reluctant to upset the basic assumptions of the PTO without substantial reason for doing so.... [note 6] "6.... This is especially true where, as here, the PTO may have relied upon a flexible rule of estoppel when deciding whether to ask for a change in the first place. To change so substantially the rules of the game now could very well subvert the various balances the PTO sought to strike when issuing the numerous patents which have not yet expired and which would be affected by our decision." 520 U.S. at 31-32, underlining and italics mine. (The italicized words are the subject of section 2, pp below). The reference to the amicus brief suggests that you are paraphrasing the Solicitor General, but that excellent brief (available on LEXIS at the docket-based citation 1995 US Briefs 728 and on Westlaw as 1996 WL ) never says that the PTO "requests changes" of patent applicants. The United States filed a brief out of a concern that the decision would affect the patent "climate" and the patent system as a whole, not because the day-to-day running of the PTO was involved. 2

3 change" but it was a rejection.[fn.2] And that is what the PTO issues. Like Rhett, the PTO does not give a damn what the rejected applicant does next. But if the applicant chooses to respond, by amending, arguing or both, the PTO's job is the same as it was when it examined the initial claims. It must make sure that claims are only allowed where: 1) none of the "unless" clauses of 35 USC 102 apply, 2) no pieces of information that qualify as prior art, as defined by those 102 clauses, can be combined with each other 2. MARGARET MITCHELL, GONE WITH THE WIND 1035 (1936). Actually Mitchell did not write the word "Frankly" so the better citation is GONE WITH THE WIND (Metro-Goldwyn-Mayer 1939), David O. Selznick, Producer, script credited to Sidney Howard. [As a footnote to this footnote: Rhett Butler's (or should I say Clark Gable's) classic line is much quoted in law review articles and even judicial opinions, see, e.g., Bethel School Dist. No. 403 v. Fraser, 478 U.S. 675, 691 (1986) (Stevens, J. dissenting), but generally without a "bluebook" cite. The answer to "who wrote the script?" may be found in many places, including the web. See, e.g., (available as of 3/28/01, last modified 6/8/98) or Item 21 of Kimberly Potts, 50 Things You Never Knew About Gone with the Wind, reproduced at Windtrivia (available as of 3/28/01, no modification date).] As with all analogies, however, we should be cautious not to press this one too far: Mitchell says of Scarlett, that "[s]he knew now that there was no appeal..." (at 1036). Patent applicants know differently. If a claim has been rejected twice, an appeal is permitted to the Board of Patent Appeals and Interferences (35 USC 134, which I like to call the "two-time loser" rule). From there a further appeal can be made to the District Court for the District of Columbia or to the Federal Circuit (35 USC 141 and 145), and if the Federal Circuit rules against the claim (directly from the Board or on appeal from the District Court), the applicant can even petition you for certiorari. Of course, many applicants prefer to remain at the examination level (filing "amendments after final rejection," see 37 CFR 1.116, or continuation applications, 37 CFR 1.53). Scarlett, however, did not have the option of convincing the rejector to change his mind. 3

4 and with the knowledge of a "person of ordinary skill in the art" (POSITA), in a combination the suggestion for which is found in the art, to make the invention (35 USC 103), 3) the claims are as they should be according to 35 USC 112 2; 4) the specification is as it should be according to 35 USC 112 1, to the extent the Examiner can tell [FN.3], and 5) the invention is "useful." [FN. 4] The way the patent process works is rather like submitting a claim to an insurance company. The company's first 3. I add "to the extent the Examiner can tell" because it seems to me to apply to "on its face," in contrast to An accused infringer may discover infirmities in the claims that escaped the examiner, whether because of greater resources, more time, or life-or-death motivation, but the PTO is not "institutionally" or inherently ill-suited to this task. The situation is different, however, for 112 1, particularly the "best mode" requirement (which depends on the inventor's subjective view), and also perhaps for "enablement." The examiners' job description does not require them to have all the practical know-how of a real-life POSITA, so they may not know enough to know that the applicant has not quite said enough to "enable" the claims. 4. I have omitted the subject matter requirements of 35 USC 101. After State Street Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 47 U.S.P.Q.2D 1596 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 851 (1999) and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352, 50 U.S.P.Q.2D 1447 (Fed. Cir. 1999), cert. denied, 120 S. Ct. 368, it seems to me that section 101 has effectively been amended to read as follows (using patent amendment conventions: bracketing to show deletions, underlining for additions): Whoever [invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may] wants to obtain a patent [therefor] on something useful may do so, subject to the conditions and requirements of this title. and that is as it should be. See Roberta J. Morris, Business Method Patents: Old or New, Good or Bad, 609 PLI/Pat 95, 125 (2000). (My amendment also deletes "therefor," a typo waiting to happen.) 4

5 response is often a "rejection" and it is not a request for a change. The optimistic view may be that it is an invitation to make some changes or arguments and try again, but the pessimistic view may be more accurate: you are being told to forget the whole thing. You can refile, and ultimately you may succeed with your claim (a term of art in patent law, as it is in insurance law, but with different meaning), but the rejectors do not care whether you persevere or quit. The steady stream of rejections is not even a threat to job security. Enough new "first applications" will always be filed for both the PTO and the insurance company to stay in business. To say that the PTO "request[s] a change in claim language" misses the mark. The right verb is "reject": examiners reject claim language. Applicants may submit changes in that language, or arguments about it, or both, in an attempt to overcome the rejection and convince the examiner to allow the claim, but the examiner will be equally happy if they just go away instead. 2. The PTO Does Not Care About Infringement, Literal or By Equivalents, and Has No Business Doing So Another linguistic lapse lies in the often-quoted passage in footnote 6 and related text concerning your "reluctan[ce]... to change... the rules of the game." Lawyers, judges and professors love that passage, and I have no quarrel with the bottom line either. I am concerned, however, about how things might play out, should you later come to appreciate that the finer points of the "game" whose rules you wanted to retain 5

6 were not exactly what you thought they were. The idea that the PTO considers infringement in general, and prosecution history estoppel in particular, is peculiar. Infringement has no meaning until the patent issues.[fn.5] The PTO has enough to do without speculating about what the future will bring for the applicants and their actual or potential competitors. Thus when you decided not to embrace the Petitioner's invitation to "change the rules of the game," it is unsettling that your rationale included the following: "This is especially true where, as here, the PTO may have relied upon a flexible rule of estoppel when deciding whether to ask for a change in the first place." 520 U.S. at 32 n6. (See as well the other italicized phrases in note 1 above). The PTO does not "rely" on any "rule of [prosecution history] estoppel," flexible or otherwise, because it is not concerned with infringement. It has no "basic assumptions" about infringement nor does it "strike a balance" based on infringement concepts when it decides to allow claims. Its mission is concerned with whether the application complies with the requirements for entitlement to a patent: validity, not 5. Under the new law requiring publication of certain applications, 35 USC 122(b) (enacted 11/29/99, effective 11/29/00), once a patent application has been published, the patent owner may under certain circumstances be entitled to a "reasonable royalty" for infringement from the date of publication. 35 USC 154(d). Of course, these "provisional rights" can not be asserted until the patent comes into existence. Even under these new post-warner-jenkinson provisions, then, the "rules of the game" do not require the PTO to consider infringement. 6

7 infringement. (The Solicitor General's Brief did not tell you otherwise.) During prosecution, the PTO is required to give claims their broadest reasonable interpretation. See, e.g., In re Morris [no relation], 127 F.3d 1048, 1054, 44 U.S.P.Q.2D 1023, 1027 (Fed. Cir. 1997). By contrast, in infringement litigation, courts are admonished to construe claims to sustain their validity if possible. E.g., ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 U.S.P.Q. 929, 932 (Fed. Cir. 1984). This generally means construing them narrowly. (Such a construction in turn may mean that the accused infringer does not infringe.) Validity and infringement -- the two basic concepts of patent law -- are often intermingled by people who have not had many encounters with patent law: not just law students but also inventors and competitors of patent owners encountering the system for the first time.[fn.6] It is important, obviously, to 6. It appears that this was only the second case where you (you as individual jurists on the Court, not the Court from its inception) were presented with the language of a patent claim in the context of the question of infringement. The first such case was Markman v. Westview Instruments, Inc., 517 U.S. 370, 38 USPQ2d 1461 (1996). In the 1970s and 1980s, Justices Rehnquist and Stevens considered claim language and validity, both in the context of infringement litigation, Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 U.S.P.Q. 449 (1976), and in the context of 101 rejections to claims in patent applications, e.g., Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981). They were also on the Court when it considered questions about the language of the patent statute, such as in Dawson Chemical Co. v. Rohm & Haas Co., 448 U.S. 176, 206 USPQ 385 (1980) (the misuse/contributory infringement case where, however, infringement of the claim was not contested) and General Motors Corp. v. Devex Corp., 461 U.S. 648, 217 USPQ 1185 (1983) (considering prejudgment interest). The other Justices came to the Court only shortly before (Justice O'Connor) or else after (Justices Scalia, Kennedy, 7

8 understand the differences. A claim that is not valid can not be infringed; if a claim is not infringed, it does not matter whether it is valid. Patents asserted in court against an accused infringer are presumed valid (35 USC 282) but the infringer can rebut the presumption by presenting clear and convincing evidence of invalidity. In considering both validity and infringement, it is helpful to understand the concept of the "claim chart"[fn.7] and to feel comfortable using the phrase "read Souter, Thomas, Ginsburg, Breyer) the creation of the Court of Appeals for the Federal Circuit. From then until Markman, the patent cases for which the Court granted certiorari involved questions of statutory language, procedure, appellate jurisdiction, etc. (On certiorari to the Federal Circuit, in chronological order: Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 229 U.S.P.Q. 478 (1986); Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 7 U.S.P.Q.2d 1109 (1988); Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 15 U.S.P.Q.2d 1121 (1990); Cardinal Chem. Co. v. Morton Int'l, 508 U.S. 83, 26 U.S.P.Q.2d 1721 (1993); Izumi Seimitsu Kogyo Kabushiki Kaisha v. U.S. Philips Corp., 510 U.S. 27, 28 U.S.P.Q.2d 1930 (1993); Asgrow Seed Co. v. Winterboer, 513 U.S. 179, 33 U.S.P.Q.2d 1430 (1995); on certiorari to the Third Circuit, patent policy implicated: Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 9 U.S.P.Q.2d 1847 (1989).) The most recent patent case cited in Warner-Jenkinson, other than Markman, is the 1966 decision in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 148 USPQ 459, which was decided before any of you was on the Court. 7. Inventors, and patent lawyers, too, are very often visual thinkers. They feel that one chart (C), graph (G) or equation (E) is often easier to comprehend, and is comprehensible more quickly, than a series of sentences. That is, a picture (P) is worth a thousand words (W), or to put it most succinctly: P 1000W, where P = C G E 8

9 on" (other than as a command to persons looking at statutes[fn.8]). In a claim chart, you make two columns, one for the claim and one for the thing it may or may not "read on." When you write the claim in the left column, you divide it into its "elements" or "limitations." These may not be identical with the lettered paragraph designations the applicants wrote into their claim (and some applicants write run-on claims, anyway). Rather, as with parsing a sentence, the "elements" of the claim are the phrases that make it possible to analyze it. The claim may be parsed differently at different times, depending on the circumstances. But parsing is an excellent way to ensure clear thinking about any comparison between the "claimed invention" and something else. That other thing may be "the prior art" or it may be an "accused device" (or accused process or accused composition). If the claim "reads on" the prior art, it is invalid. If the claim "reads on" the accused device, it is infringed. "Reading on" means that there is a 1:1 correspondence between the items in the two columns of the chart, and this in turn means that the way the claim is parsed can have big consequences, especially given the "All-Elements Rule" (approved, though not using that phrase, in Warner-Jenkinson, 520 U.S. at 29 and 40). By keeping the mental image of the claim chart in mind (or an actual claim chart in front of you) the analysis may be easier to do and to do correctly, whether the question is 8. In law school, I learned from Prof. Arthur Miller that the first rule of civil procedure was "Read the rule" and the second rule was "Read on." 9

10 validity or infringement. Insights may also be gained into concepts you mentioned in Warner-Jenkinson, such as the "public notice" function of a claim and the use of prosecution history, both for claim interpretation and for doctrine of equivalents analysis. 3. When "Prior Art" Is Involved, The Patent Office Does Not "OBject," It "REjects" "Objection" is a term of art for the patent office. In Warner-Jenkinson, 520 U.S. at 31, you quoted Chief Justice Stone in Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 86 L. Ed. 736, 62 S. Ct. 513 (1942) where he used the word "objection" in connection with a discussion of prior art, and you continued with that usage.[fn.9] Nowadays, however, when prior art is the grammatical object of a phrase beginning "based on," the verb is "reject." "Objections" are related to formal matters. This is made clear in the Manual of Patent Examining Procedure (the "MPEP," the PTO's "official interpretation of statutes [and] regulations," Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439, 221 U.S.P.Q. 97, 107 (Fed. Cir. 1984)). MPEP 706, entitled "Rejection of Claims," is immediately followed by , entitled "Contrasted with Objections," which says: "The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a 'rejection.' The term 'rejected' must be applied to such claims in the examiner's action. If the form of the claim (as distinguished from its substance) is improper, an 9. E.g., "the patent examiner objected to the patent claim due to a perceived overlap with the Booth patent" (520 U.S. at 32) and "where a change is made to overcome an objection based on the prior art..." (520 U.S. at 33n7, emphasis mine). 10

11 'objection' is made." (Emphasis mine) Similarly, the patent statute (35 USC 132) lists "rejection, or objection, or requirement" as the three kinds of responses the PTO may make during examination of an application.[fn.10] The terms are mutually exclusive. I do not mean to suggest, however, that an amendment or argument responding to an examiner's objection or requirement, as opposed to a rejection, would be incapable of meeting the "substantial reason related to patentability" test of Warner- Jenkinson (520 U.S. at 33, emphasis mine). That is a subject for another day, but suffice it to say that, in line with the teachings of Warner-Jenkinson, I believe that justice -- the justification for the existence of the doctrine of equivalents, whether or not it is called an "equitable" doctrine -- requires careful thought rather than reliance on labels. Whoever evaluates a claim, the prior art, and an accused device must look at the whole story. This is so whether the evaluators are A) judges; B) patent owners (actual or potential) deciding whether or not to assert the patent or to purchase rights to it; or C) competitors (actual or potential) deciding whether to license, design around, or proceed regardless of the patent. (The last is a legitimate option when the claim is invalid, unenforceable or 10. Section 132 was enacted in 1952 based on earlier statutes (35 USC 51, R.S. 4903) and the relevant language has not been amended since. The earlier version, enacted in 1939, used only the words "rejected" and "rejection." P. J. Federico in his Commentary on the New Patent Act (35 U.S.C.A. (1954 ed., discontinued in subsequent volumes), reprinted in 75 J. PAT. TRADEMARK OFF. SOC'Y 161, 197 (1993)), explained that section 132 "has been... amplified to explicitly incorporate some practice under the old law." 11

12 not infringed by their activities). 4. Lack of Intent to Infringe Can Not Justify a Reduced Damage Award Your decision says: "The jury also found, however, that Warner-Jenkinson had not intentionally infringed, and therefore awarded only 20% of the damages sought by Hilton Davis." 520 U.S. at 23, emphasis mine. [FN.11] The jury's damage calculation is not supposed to take into account whether or not the infringer acted "intentionally" or "willfully." The damages calculated by the jury must be "adequate to compensate" the patent owner. 35 USC 284.[FN. 12] A jury award of only 20% of what the patent owner sought means that the jury preferred the infringer's damages evidence. The jurors' views certainly may have been colored by their opinion that the accused infringer had acted innocently, 11. The Federal Circuit decision said something similar but without the "therefore": "The jury found that Warner-Jenkinson did not willfully infringe, however, and awarded only 20% of Hilton Davis' request in damages." 62 F.3d 1512, 1516, 35 USPQ2d 1641 (1995), emphasis mine. 12. "Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. "When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed." 35 USC 284, as codified in 1952 based on earlier statutes, quoted words never amended, emphasis mine. 12

13 indeed independently inventing the same process. Still, it would have been reversible error for the trial court to have instructed them that "if they find the infringer acted unintentionally, they should reduce the damage award." Intent is not part of the cause of action of patent infringement, as you noted in Warner-Jenkinson. ("Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent." 520 U.S. at 35.)[FN.13] Willfulness is a separate issue from infringement. The jury may enter a special verdict on willfulness, but then the court, not the jury, decides whether to multiply the actual damages by a number between 1 and 3. Nothing in the statute allows the court or the jury to use a multiplier that is less than 1. Respectfully submitted, Dated: March 30, 2001 Roberta J. Morris [typographical errors corrected 9/28/01; adjusted for MSWord 3/4/05] 13. When I explain to my patent students that innocence is no defense in patent cases, I contrast the situation with copyright infringement using the following hypotheticals (updating the author and the invention to stay current): If 100 monkeys are given 100 word processors and somehow they type out A Painted House, John Grisham has no cause of action for copyright infringement because the monkeys did not copy. But if those 100 monkeys are given a fully equipped pharmaceutical lab and somehow they make Claritin, Schering does have a cause of action for patent infringement (that is, if Schering has claims in a patent that is in force and that "reads on" the monkeys' composition or process). The fact that the monkeys did not "copy" is irrelevant. Nor does it help them that they, like the petitioners in Warner-Jenkinson, independently made the invention. Probably the monkeys had better stop what they are doing and seek outside counsel's advice (see, e.g., Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 219 U.S.P.Q. 569 (Fed. Cir. 1983)), but that is a topic covered later in the term. 13

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