The America Invents Act, a First-to-Invent Patent System, and “Obama-Birther” Accusations

Adam Mossoff —  6 July 2016

About a month ago, I was asked by some friends about the shift from the first-to-invent patent system to a first-to-file patent system in the America Invents Act of 2011 (AIA). I was involved briefly in the policy debates in the spring of 2011 leading up to the enactment of the AIA, and so this query prompted me to share a short essay I wrote in May 2011 on this issue. In this essay, I summarized my historical scholarship I had published up to that point in law journals on the legal definition and protection of patents in the Founding Era and in the early American Republic. I concluded that a shift to a first-to-file patent system contradicted both the constitutional text and the early judicial interpretations of the patent statutes that secured patent rights to first inventors.

This legal issue will likely reach the courts one day. A constitutional challenge a couple years ago was rightly dismissed as not being justiciable, but there may yet be an appropriate case in which an inventor is denied a patent given that he or she lost the race to file first in the Patent Office. So, after sharing my essay with my friends, I thought it valuable to post it again on the Internet, because the website on which it was first published (www.noonHR1249.com) slipped into digital oblivion long ago.

I was asked to write this essay in May 2011 by the U.S. Business & Industry Council (USBIC)[1] The USBIC requested my scholarly analysis of the first-to-file provision of the AIA, which was being debated as H.R. 1249 on Capitol Hill at the time, because I had been publishing articles in law journals on the legal definition and protection of patents as property rights in the Founding Era and in the early American Republic (see here and here for two examples). In my essay, I identified the relevant text in the Constitution, which authorizes Congress to secure an exclusive right to “Inventors” in their “Discoveries” (Article 1, Section 8, Clause 8). Based on my academic research, I summarized in my essay the historical Supreme Court and lower federal court decisions, which secured patents to inventors according to the same policy justifications used in common-law cases to justify property rights to first possessors of land. Thus, I concluded that the first-to-file provision in the American Invents Act was unconstitutional, based on well-recognized arguments concerning textual analysis of the Constitution and inferences from original public meaning as reflected in the historical judicial record.

There’s more to my essay, though, than just the substantive legal argument. It also provides an insight into the nature of the legal academic debates going back many years, because at the time Professor Mark Lemley of Stanford Law School compared me to an “Obama-birther” and he called this constitutional and legal argument “fringe science.” Given concerns expressed last year in an open letter co-authored by Professor Lemley and others about inappropriate rhetoric used by academics, among other issues (see here for a news report on this letter), it bears noting for the record that this is a concern that goes back many years.

Here’s the basic story: My essay was published by the USBIC in May 2011 and I was invited to speak in congressional staffer briefings and in other venues in Capitol Hill against the AIA on this issue. At this time, I was the only legal academic writing and speaking on Capitol Hill on this issue in the AIA. In late May, the 21st Century Coalition for Patent Reform, which supported enactment of the AIA, distributed on Capitol Hill a response that it had solicited from Professor Lemley. I no longer possess this response statement that was sent out via email by the 21st Century Coalition, but I do have the response I was asked to write on June 1, 2011 in which I explicitly refer to Professor Lemley’s argument against the first-to-invent position. In response to a law professors’ letter to Congress defending the first-to-file provision in the AIA that was circulated on an IP professors listserv (IPProfs), I sent out on IPProfs on June 11 a draft letter to Congress, calling for signatures from other law professors in support of my argument first presented in my essay (the final version is here). The next day, on June 12, Professor Lemley wrote on Facebook that my constitutional and legal argument made me the same as an “Obama-birther.”[2] Although he didn’t refer directly to me, it was clear that it was directed at me given that this posting by Lemley followed the day after my email to all IP professors asking them to join my letter to Congress, and I also was the only law professor actively writing on this issue and speaking on it on Capitol Hill up until then.

The following year, in a New York Times article on the court challenge to the first-to-file provision, Professor Lemley further characterized this constitutional argument as “the legal equivalent of fringe science.”

Before the spring of 2011, my writings on legal doctrine and policy were published only in law journals, and I had never participated in a policy debate over patent legislation. In my academic articles before this time, I had critiqued Professor Lemley’s incorrect historical claims about whether U.S. patents were considered monopolies or property rights, and they reflected a purely academic tone that one should expect in a law journal article (see here). Before spring 2011, I had never addressed Professor Lemley, nor had he addressed me, about the AIA, other legislation or court cases.

Professor Lemley’s “Obama-birther” attack on me was surprising, and when I replied in the comments to his Facebook post solely on the substantive merits of the issue of policy versus law, Professor Lemley defended his accusation against me. (This is evidenced in the screen shot.)[2] At the time, I was still a relatively junior academic, and this was an object lesson about what a senior academic at a top-five-ranked law school considers acceptable in addressing a much-more junior academic with whom he disagrees. This remark in 2011 was not an outlier either, as Professor Lemley has used similar rhetoric in the ensuing years in addressing academics with whom he disagrees; for instance, a couple years ago, Professor Lemley publicly referred to an academic conference that I and other patent scholars participated in as a “Tea Party convention.”

Of course, legal and constitutional disputes consist of opposing arguments. In court cases and legislative debates, there are colorable legal and policy arguments on both sides of a dispute. Few issues are so irrational that they are not even cognizable as having a supporting argument, such as astrology and conspiracy theories like the birthers or 9-11 truthers. So, I will simply let my essay speak for itself as to whether it makes me the same as an “Obama-birther” and if my argument represents “fringe science.”

More important, if or when a good case arises in which an inventor can rightly claim an identifiable and specific harm as a result of the statutory change created by the AIA, I hope my essay will be of some value.

[1] Full disclosure: The U.S. Business & Industry Council paid me for my time in writing the essay, which I disclosed in the essay itself. Unfortunately, as recently reported by IAM Magazine, other legal academics are not always so forthcoming about their financial and legal connections to companies when publicly commenting on court cases or advocating for enactment of legislation.

[2] This is a link to a screen shot I took last year only because the Facebook post by Professor Lemley recently disappeared after I only quoted the language from it about a month ago when I shared on Facebook my essay with my friends and colleagues.

UPDATE on June 7: I added some more supporting links and some additional information after this was initially published on June 6, 2016.

8 responses to The America Invents Act, a First-to-Invent Patent System, and “Obama-Birther” Accusations

  1. 
    Adam Mossoff 8 July 2016 at 2:40 pm

    Ms. Ranieri asserts that I said she compared patent owners to child molesters and that she did no such thing. This is incorrect. The fact is that she did make this comparison in a tweet, and many others agreed that this is what her tweet said; for example, the reporters at IAM Magazine said she said exactly this (https://twitter.com/IAM_magazine/status/727725921554333696). When I simply noted on Twitter that her tweet said this and that this was offensive, she then deleted the tweet (here is its now-defunct URL: https://twitter.com/vranieri/status/727626598187290624). This of course strongly suggests that the tweet did indeed say this, and that it was indefensible and thus best deleted. (Unfortunately, no screen shot exists.)

    Let the facts and evidence speak for themselves, as my blog posting says above. Ms. Ranieri’s choice to delete her tweet makes it unavailable as evidence and conveniently makes it possible for her to now accuse me falsely of something just as false as her original comparison on Twitter of patent owners to child molesters. Most lawyers would agree that deleting evidence and then making false accusations based on this now-destroyed evidence is serious business. It’s ironic if only because deleting inculpatory statements, or at least hiding them after making them public to thousands of people, is one of the bad behaviors identified in the blog posting to which Ms. Ranieri is now posting this false charge against me.

    I agree that it would be great to elevate the discourse that was first set at a low level a long time ago by people like Lemley. We don’t have to be so grand in our wish in eliminating awful rhetoric like calling academic opponents in the IP policy debates “Obama-birthers.” We can simply start by eliminating from usage rhetorical epithets like “patent troll,” which is used to attack individual inventors, startups, universities, and many other creators and licensors of patented innovation. Ms. Ranieri and her colleagues at the Electronic Frontier Foundation (EFF) are frequent purveyors of the “patent troll” epithet. Just google it for confirmation. Unfortunately, as a lawyer for EFF, Vera Ranieri made her first introduction to me only when she began “comment trolling” me on Twitter with similarly charged rhetoric in responses to my tweets about patented innovation. I was ultimately forced to block her on Twitter, but on a public blog I won’t delete her comment here the way that she deleted her tweet that compared patent owners to child molesters.

    • 
      Vera Ranieri 8 July 2016 at 5:48 pm

      Mr. Mossoff,

      I am hurt by your continued insistence that I said something that I did not, and ascribing positions to me I do not hold. Setting aside the fact that the IAM tweet does not support your claim (it nowhere makes reference to child molesters), I did not say what you said at all. It was instead at most a poorly worded logical fallacy regarding the law school/evidentiary device of “when did you stop beating your wife”.

      I fully admit it was poorly executed and I regret it, especially as it was misunderstood to be something more than merely a poor use of logical relationships (if you search, you’ll see I posted how it was deleted because of how it was being misunderstood).

      In fact, if anything it was similar to Kevin Noonan’s tweet and post (see here, https://twitter.com/AdamMossoff/status/726189315248807936 with you quoting it) analogizing Justice Breyer to those who encouraged eugenics. To be clear I don’t actually think Kevin Noonan thinks that at all, nor do I think you think that – but instead as Mr. Noonan and you clearly understand, analogizing to another logical fallacy that is more easily understood is a way to help explain a position.

      I harbor no ill-will toward you, and to the extent you feel (or in fact) I “comment trolled” you, I sincerely apologize. You clearly feel bullied by Mr. Lemley. I urge you to look again and consider how your own words are affecting others.

      I am not going to comment further on this post. I just wanted to let you know how your words are affecting others.

  2. 
    Adam Mossoff 8 July 2016 at 9:15 am

    I am very happy that this blog posting is being so widely read. For the record, I stand by my use of the “junk science” label for the specific “empirical studies” created by some professors, and I’d be more than willing to have this compared to the use of the “Obama-birther” label under the facts presented in the blog posting here. As pointed out by a letter from 43 economists and law professors and in academic articles critiquing these studies, the specific studies I have called “junk science” (1) use secret, proprietary data collected by companies with a direct stake in the policy outcome in the D.C. policy debates in which these studies are pushed by lobbyists, (2) the data is not made available for independent review by statisticians or economists, (3) the studies are rife with selection effects, (4) and the studies draw unsupported generalized claims. I am more than happy to have the Lemley and Mossoff statements submitted for blind peer review under the facts: “Obama-birther” / “fringe science” / “Tea Party convention” versus “junk science.” The statistical studies would need to be submitted for blind peer review to reputable and disinterested statisticians and economists who are not connected with any company or organization in the innovation industries or advocating for legislation or court decisions. We can also submit the “Obama-birther” comment to the same reputable and disinterested statisticians or economists with the statement of facts and supporting evidence I provide in my blog posting.

    As John Adams wisely observed in a letter to Abigail Adams on October 29, 1775: “Facts are stubborn things; and whatever may be our wishes, our inclinations, or the dictates of our passion, they cannot alter the state of facts and evidence.” Thus, I will let the facts described and supported with evidence in my blog post stand versus any ex post assertions that appear to contradict these facts, or against invalid comparisons to other claims made about and between peer academics directly engaged in the policy debates.

    • 

      Wow, Adam, that is some blind spot you have. Mark’s alleged name calling is worse, so that justifies yours? There’s a difference between critiquing methodology and calling someone’s work “junk.” “Junk” implies that there is no value in the work at all, which you haven’t ever established. At most, you’ve made an argument that any conclusions drawn should be limited and qualified.

      For whatever reason, you seem to feel the need to double down on your name calling, instead of just conceding that maybe name calling isn’t a good thing to do.

      You have completely and glibly dismissed the work of academics who tried, sincerely, to answer difficult empirical questions. You may not like their conclusions and you may not like their methodology. That’s fine; no one expects his or her work to be immune to criticism.

      But it’s out of line for you to call their work “junk” publicly and repeatedly. Whether some one else has dismissed or insulted your work is irrelevant. In my opinion, you owe those academics you’ve insulted an apology. Based on your comment, I doubt one will be forthcoming, but I can still hope.

    • 
      Vera Ranieri 8 July 2016 at 1:43 pm

      Mr. Mossoff claims that Mr. Lemley directed certain insults at him. Assuming for purposes of discussion only that that is true, Mr. Mossoff states that it was an “object lesson about what a senior academic at a top-five-ranked law school considers acceptable in addressing a much-more junior academic with whom he disagrees” and Mr. Lemley “use[s] similar rhetoric in the ensuing years in addressing academics with whom he disagrees.”

      As someone who has been a target of Mr. Mossoff’s rhetoric, I’m disappointed he doesn’t recognize how hurtful and unhelpful they are. (Mr. Mossoff once claimed that I once compared patent owners to child molesters, something that I would put well beyond the level of merely accusing someone of being an “Obama-birther”. For the record: I did absolutely no such thing.)

      I struggle to see how he felt it appropriate to make such an inflammatory accusation when he himself has felt he has been unfairly accused and argues that Mr. Lemley was wrong to engage in such rhetoric.

      I do not mean by this post to start an argument, but rather express my disappointment and hope that, going forward, we can all engage in a more civilized discourse. Mr. Mossoff should support such an idea, in light of this post.

  3. 

    Considering how many academics Adam has unfairly accused of practicing “junk science” as part of the patent reform debate, it’s hard to feel much sympathy here, especially given Mark’s explanation above.

    No one likes to have his or her work criticized or labeled as “junk” or “fringe.” Perhaps Adam will remember this lesson going forward.

  4. 

    I fear there has been some misunderstanding, and that apparently it has persisted for some time. I never directed any such comment at Adam. Indeed, I didn’t know until I read this post that he had been hired to defend the position that first to file was unconstitutional. My comments were directed at those lobbying Congress to oppose the AIA on the ground that it was unconstitutional, and a lawsuit later filed on that ground. I have the greatest respect for Adam’s scholarship, and I’m sorry he believed my Facebook post was directed at him. It wasn’t. I’m even sorrier that he seems to have carried that belief for five years. i wish we had been able to talk about it and clear the air.

    [There are a couple of other inaccuracies in this post. I never wrote a response to this issue at the direction of the 21st Century Patent Coalition. And I never deleted a Facebook post, contrary to Adam’s suggestions. It’s still there. I suspect what happened is that Facebook treats someone else’s Facebook posts as private, not as something to be copied into a public post. [I wish Adam had done the same, but that’s another matter].

    Let me be clear: I think the constitutional challenge to first to file is weak indeed. I also think it reflects an unfortunately common tendency to conflate a strong policy wish with a belief that the constitution will make it so. That’s what the argument has in common with the Obama birther movement. You can think it’s not an apt analogy. Fair enough. But to say that “Professor Lemley then wrote on Facebook that my constitutional and legal argument made me the same as an “Obama-birther” is not true.

    I posted a detailed message to Adam’s Facebook page in an effort to clear the air, but it appears he may have deleted it. We’ll see if he deletes this too.

    Mark Lemley

  5. 

    Adam, sorry to hear this. On a related issue (and possibly a very interesting and rewarding research topic for an accomplish patent law historian and specialist) it appears that the correction of inventorship was an action in law in England at the time of the ratification of the U.S. Constitution in 1787. Based on Seventh Amendment case law that would indicate that Congress cannot simply change the inventorship systems from first to invent to first to file – there appears to be a Constitutional limit to it. Also an interesting fact: in most colonies/states the correction of inventorship was handled by the State AG.

    Jonathan