Comments on: Section 2 Symposium: Herbert Hovenkamp on Patents and Exclusionary Practices

By: observer

observer — Fri, 08 May 2009 22:59:08 +0000

The antitrust community seems to have a severe case of “To a man with a hammer everything looks like a nail”.

By: Dale B. Halling

Dale B. Halling — Fri, 08 May 2009 20:34:18 +0000

The specification is not suppose to define the boundaries of an invention. That is the purpose of the claims. The PTO rules attempting to limit continuation are not laudable, they are an attempt to further weaken our patent laws. These rules will punish inventor’s of ground breaking technology by limiting their access to the patent system.

The concerns about Rambus should properly fall within contract law not antitrust law. There are plenty of remedies for improperly obtained patents, including rule 11 sanctions. Antitrust law has a sad history of being more about politics than law. Infusing more antitrust law into patent law disputes will decrease the incentives for innovating by making validity and enforcement of patents more uncertain.

By: Herb Hovenkamp

Herb Hovenkamp — Fri, 08 May 2009 14:55:49 +0000

The comment is factually correct, but the fact is that if the original specification really did specify the precise boundaries of a patent and gave clear notice of what infringed and what did not, then claims would not be necessary. The reason we have disputes such as Rambus is because a specification does not necessarily give adequate notice of an invention’s boundaries. I have not argued, although others have, that patent continuations be abolished. But the fact is that they can be abused and limitations need to be imposed on the abuses. For example, late claims approved after a prescribed delay could be given prospective force only. The PTO rules regarding continuations that the Federal Circuit rejected a month ago in Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009), were a laudable attempt in this direction. Hopefully Congress will address the issue.

By: observer

observer — Fri, 08 May 2009 14:33:07 +0000

“This law makes it possible for an applicant to file a patent application in January, 2004, observe a rival’s technology on the market in March of 2004, and then write a claim on that technology for submission in a continuation application.”

Mr. Hovencamp left out an important condition at the end of the above sentence – “but only if supported by the patent’s original specification”. Suprisingly there is no mention at all of a patent’s specification which one would expect when discussing patents, continuation applications and priority dates.

There are perfectly valid reasons why continuation applications exist and Mr. Hovencamp does nothing to acknowledge this. Indeed the blog post does much to confuse the issue by implying patent owners can arbitrarily add claims to cover competitor’s products. If one is going to suggest the removal of continuation applications one should consider the lost benefits plus the secondary implications of such a change (ie asking “and then what”).

By: Herb Hovenkamp

Herb Hovenkamp — Thu, 07 May 2009 09:24:59 +0000

Mr. Halling suggests that claim construction lies at the heart of most patent/antitrust disputes and that the problem is minimal because claims clearly define patent boundaries. While we might disagree about the latter proposition, the fact is that very few patent/antitrust disputes involve claim construction. A Walker Process case could conceivably arise on the basis of an unreasonably broad construction of a claim, but in that case the infringement plaintiff and defendant would have access to the same information. The much more serious ambiguity problems arise from defects that are not on the record, such as prior use or sales that are typically known only to the patent applicant. The problem in the patent holdup cases is frequently that the claims have not yet been approved at the time the deception occurs, because they are subject to ongoing continuation applications.

By: Dale B. Halling

Dale B. Halling — Thu, 07 May 2009 01:07:31 +0000

Mr. Hovencamp is poorly informed about the boundaries of patents. Patent boundaries are clearly defined by the claims. The courts have consistently narrowed the scope of the claims, which define the invention. As a result, literal interpretations of the claims are the only interpretations that survive.

To suggest antitrust law has well defined boundaries and patents do not is the height of absurdity.