Sometimes we get lucky and everything lines up. This weekend was like that. I spent Friday and Saturday at my favorite I.P. conference sponsored by Franklin Pierce/UNH. Today, was a concert at Symphony Hall with Itzhak Perlman. What can you say but “aahh.”
As many of you know, my main area of academic interest is cyberlaw and intellectual property. But I also spent a fair amount of time teaching civil procedure and have an interest in how procedure affects substantive rights. I have certainly been aware of the major change in federal pleading brought about by Bell Atlantic v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). The Supreme Court transformed how federal pleading works from the “notice pleading” recognized by Conley v. Gibson, 355 U.S. 41 (1957), to a new standard often called plausibility pleading. See Twombly, 550 U.S. at 556.
Although the Supreme Court couched the transformation of pleading standard as an attempt to clarify a rule that had been “questioned, criticized, and explained away,” Twombly, 550 U.S. at 562, it was, in reality, a modification of the rules of pleading that had been written into the rules from their origin in the 1930s. This difference has now returned to cause great difficulty in the intellectual property field, particularly for patent infringement claims. As several courts have now discovered, the Supreme Court’s modification of Rule 8 without following the Rules Enabling Act’s provisions that allow the rules to be amended, see 17 U.S.C. §§ 2071–74, have left us with a set of federal rules that are internally inconsistent. Rule 84 reads, “The forms in the Appendix suffice under these rules and illustrate the simplicity and brevity that these rules contemplate.” Comparing the new plausibility pleading standard with Form 18 (supposedly sufficient to state a claim in patent infringement) brings out the conflict. As one court stated:
Without doubt, Twombly and Iqbal also implicate the “sufficiency” statement in Rule 84. In particular, when Rule 84 says that a form “suffices under these rules,” it obviously refers, inter alia, to Rule 8(a) and to Form 18 which posits what was thought before Twombly and Iqbal to be sufficient, at least as to claims of direct infringement. And, if the Supreme Court, as it clearly did in Twombly and Iqbal, says that Rule 8(a) must be applied differently than is provided for in a form, then the viability of the form must be measured against the new standard, even if the effect of doing so is to nullify the form.
Macronix Intern. Co., Ltd. v. Spansion Inc., 2014 WL 934505 (E.D. Va. 2014). In other words, Twombly and Iqbal have repealed Rule 84.
Another district court dealing with an similar patent infringement claim was willing to call out the Supreme Court:
The Forms in the Federal Rules Appendix, such as Form 18, satisfy the federal pleading rules and illustrate the simplicity and brevity that these rules contemplate. Rule 84 and the Advisory Committee notes to the 1946 amendment of Rule 84 make clear that the proper use of a form contained in the Appendix of Forms effectively immunizes a claimant from attack regarding the sufficiency of the pleading. That immunizing effect is not altered by variations in regional circuit law, because the Federal Rules cannot be amended by judicial interpretation. Accordingly, to the extent any conflict exists between Twombly (and its progeny) and the Forms regarding pleading requirements, the Forms control. Nevertheless, an implausible claim for patent infringement rightly should be dismissed.
JDS Uniphase Corporation v. CoAdna Photonics, Inc., 2014 WL 2918544 (N.D. Cal. 2014) (quotation marks and citations omitted).
Examining Form 18 shows how far plausibility pleading is from what the rules establish as the requisite. To allege patent infringement, the form requires four paragraphs:
1. A statement of jurisdiction (Referencing Form 7: “This action arises under Title 35 of the U.S. Code.”). 2. A statement of patent ownership (“A U.S. patent no. ###### that claims <short description of patent claim> was issued on <date> to the plaintiff who owned it during the infringement and still owns it.”); 3. A statement of infringement (“The defendant has infringed the patent by making, using or selling it.”); and 4. A statement of notice of patent (“A statutory notice was placed on the product by the plaintiff and a written notice of infringement was sent to the defendant.”).
Note that many of these phrases authorized by Form 18 are “conclusory [in] nature.” Iqbal, 556 U.S. at 681. Paragraph 1 states the conclusion that the action is brought under Title 35. Similarly, paragraph 2 establishes ownership without pleading the facts that establish it; paragraph 3 asserts infringement without providing the facts of when this happened, where it occurred, how it was done, or even which products of the defendant were infringing; and paragraph 4 concludes compliance with notice provisions without any specification of the when, where, how or why.
Now, of course, the requirement of pleading a patent infringement complaint (or most other actions, see, e.g., Form 10 & 11) is unclear. Cautious counsel may spend considerably more time drafting a complaint so that it begins to resemble the “who, what, when, where and how” that was required by the code pleading system the Federal Rules replaced. The extra money this is likely to cost may be worth it if it avoids a 12(b)(6) battle over the form of the pleading even though avoiding pleading battles now is as unlike as it was under the code system of pleading.
Rule 84 demands “simplicity and brevity.” Rule 8(e) demands a pleading system “to do justice.” The Supreme Court’s target may have been business and civil rights litigation as were involved in Twombly and Iqbal, but no matter that shows up in federal court is likely to be immune. Let’s argue about the form of the pleading rather than the merits of the action. Counsel: Prepare your demurs and your dilatory and peremptory pleas!
As my time here at the Lounge winds down, I’d like to
discuss one very interesting, yet not very common, design patent myth. More
than once, I’ve heard it suggested that design patent examiners are drawn from
the corps of “regular” patent examiners—i.e.,
that theyhave technical or
scientific backgrounds. This myth is interesting because it highlights an
important asymmetry between the PTO’s educational requirements for those people
who examine design patent applications and for those who prosecute them.
Patent prosecution is the process of applying for—and
negotiating with the PTO in hopes of obtaining—a patent. In order to prosecute a patent for
another person, you must be registered to practice before the PTO. To become a
registered patent attorney, you must pass an examination, sometimes
referred to as the “patent bar.” To sit for the patent bar, you need a scientific or
technical background. (For the current requirements,
If enacted, the Innovation Act would apply to all patent litigation. There are three types of patents: utility
patents, design patents, and plant patents. (For the PTO’s description of each,
However, the Innovation Act seems to have been drafted with only one type of patent—namely, utility patents—in
Another myth is that design patents can only be obtained
for ornaments or applied decorations. This myth often—though not always—appears
in discussions of fashion designs.
So in this post, I’ll focus on some examples from the fashion industry.
To be clear, you certainly can get design patents for applied
ornaments. For example, Alexander Wang Inc. recently obtained three design patents for decorative stud
designs, including this one:
Another myth is that only artistic (or
aesthetically appealing) designs can be patented. It’s true that that Patent
Act expressly requires that a patentable design be “ornamental.”
And the Supreme Court has suggested—albeit in dicta—that this means “a design must present an aesthetically
pleasing appearance.” So perhaps design
patent protection should be limited
to designs that show some degree of aesthetic creativity. Or, at least, to situations where consumers actually care about how a product looks.
But under current Federal Circuit case law, there is no
such requirement. Basically, the Federal Circuit will deem a design to be
“ornamental” whenever there are alternative product designs available. (This is
based on a string of logic that begins with the highly questionable premise
that “ornamental” is the opposite of “functional,” although a full discussion
of that issue is far beyond the scope of a blog post.) And there are almost
always alternative designs available. Therefore, as Chris Buccafusco has pointed
out, the Federal Circuit has effectively read “ornamental” out of the
Another common design patent myth is that the Patent
Act’s “nonobviousness” requirement is a very high barrier to protection for
In order to be patentable, a design must not only be new (or “novel”),
it must be sufficiently new (or
“nonobvious”). Section 103 of the Patent Act states that a patent “may
not be obtained” for an invention that “would have been obvious . . . to a
person having ordinary skill in the art to which the claimed invention
This requirement applies to both utility patents and design
patents. But obviousness is analyzed quite differently in each context.
In my last post,
I noted that it has become quite easy to get design patents. But it wasn't always that way. So what changed? One possible explanation is that the PTO simply abandoned its examining duties. But I
think the blame—or credit, depending on your point of view—belongs with the U.S.
Court of Appeals for the Federal Circuit.
the Federal Circuit has had exclusive appellate jurisdiction over patent cases. The court’s influence on utility
patent law has been widely
noted (and criticized).
But the court has also worked rather dramatic—and equally problematic—changes
to design patent law.
So I was intrigued when I heard that, in a recent speech,
the Hon. Diane Wood
suggested rolling back the Federal Circuit’s exclusive jurisdiction
over patent appeals. To be clear, she isn’t proposing that the Federal
Circuit be abolished; rather, she envisions giving parties “a choice: they could take their
appeals to the Federal Circuit, thereby benefiting from that court’s long
experience in the field, or they could file in the regional circuit in which
their claim was first filed.”
Chief Judge Wood, this proposal is similar to the system we have for the review of National Labor Relations Board decisions. So I’m curious what
labor law people think—does this dual-path appeal system work well in the NLRB
context? Do most parties pick their local circuit or the D.C. Circuit? How
often is Judicial Panel on Multidistrict Litigation intervention required?
A big (maybe the biggest) design
patent myth is that it’s very difficult to get a design patent. Or, to put it differently,
the substantive requirements are so difficult to meet that only a small number
of extraordinarily creative designs can survive PTO review and win design
The truth is, under current
Federal Circuit law and PTO practice, it’s actually pretty easy to get a design
patent. Of course, “easy” and “difficult” are relative terms. But recent empirical
work by Dennis
Crouch shows that, in recent years, the allowance rate has been over 90%. No matter how you define it,
that doesn’t seem very “difficult.”
But the numbers only tell
part of the story. For example, there may be selection effects at work—maybe
90% of applications are granted because people are only applying to patent
their most creative designs. But the patents themselves tell a different story.
First of all, thank you to Dan
for inviting me to be a guest blogger this month. I’ll be taking this
opportunity to talk about my favorite topic, design patents.
Ever since the jury returned
its blockbuster verdict
in Apple v. Samsung last summer,
design patents have been enjoying an unusual amount of attention—both in the media and in academia. But there is
still a lot of misinformation out there.
So while I’m here, I’d like to address some design patent myths that I've encountered in the course of my research. Some
of these myths are widespread; others are less common but raise interesting issues.
Some are truly myths; in other cases, I’ll use the word “myth” more loosely.
But before I dive into the myths, a bit of background might be helpful.
Professor Colleen Chien of Santa Clara Law School has been appointed to the White House Office of Science and Technology Policy (OSTP). She will be advising Todd Park, the Unites States Chief Technology Officer. Patent policy wonks will be reading the tea leaves on this appointment; her recent report critical of the impact of patent trolls can be found here. Chien is taking a one year leave.
The day started with a paper that seems to be just at the right point between theory and practice. It addresses the commonplace use of dual patent defenses, the primary one denying that infringement occurred and the secondary one alleging the invalidity of the patent itself. On the practical side, these dual defenses often work in conflict with each other. To show noninfringement, it is typically advantageous to have the patent construed narrowly — the less it covers the less likely that infringement occurred. At the same time, to show invalidity, it is often necessary to get the patent to be construed broadly — the more it covers the more likely it is that another earlier patent claims the same thing. The paper does a great job of summarizing the law, but it also demonstrates how an attorney who is litigating a case can make better decisions about how to assert these somewhat inconsistent defenses. The paper, Patent Invalidity Versus NonInfringement, by Roger Ford, will be published in the Cornell Law Review.
Another paper of note is one that throws empirical reality at the patent system and challenges a lot of the oft-stated problems within the patent system. John Golden of the Univ. of Texas examined data about the patent system use over time. Fundamentally, he showed that the “crisis” caused by a rising number of patent applications may not, in fact, exist. He has asked that quotes not be made of his early draft, but the basic finding is that patent filing growth now is not historically unique and much of it seems attached to international filings. The primary area of exceedingly high growth that he found was in the number of patent examiners, a growth that far exceeded the growth in the number of patents. There are significantly more examiners now per patent application than there have ever been. The few commentators out there who have been arguing that the basic problem with the patent office is mismanagement rather than resources may soon have another arrow in their quiver.
The conference experience will be different this afternoon as I shift sides of the hall as a commentator on another’s paper. I have found the process of attempting to summarize another’s preliminary work product into a five to ten minute synopsis to be highly challenging. Most of the participants at the conference will have read the draft, so more than a summary is necessary. Criticism is appropriate, but it must be crafted carefully so that it will be helpful to the author. The model I ultimately used for the task was the model of discussion in a seminar of trying to raise questions for thought without stating that the author is just wrong. The next paragraph will address how well it went.
The results: It would have been a lot different (and correspondingly better) had the author and I had a better opportunity to work together before the conference. As the commentator, I had to base the issues raised predominantly on where I saw areas that could be more strongly presented. Unfortunately, this doesn’t mean that the author feels the need to address the issues raised; indeed, the author could be worried about completely different topics. At a work-in-progress conference, supporting the author is the point, and this time, my pencil wasn’t as sharp as it could have been.
I have the privilege over the next few days of attending IPSC, the annual opportunity for all of us who study IP law to get together and fight with passion over points of IP law that seems to matter mostly to us. It is clear, in particular, that the courts and Congress fail to listen to us (which, in reality, doesn’t surprise us at all). I hope to share my impressions of the small part of the conference I am attending as there are as many as seven papers being given simultaneously so I could not present it all.
Maybe it is not surprising, but the conference opened with three presentations that addressed questions about the future of legal academia and the marketplace for lawyers. Are there going to be the positions available for students who study IP law? What will the next generation of IP faculty members look like and what skills should they have? Why is so much of the scholarship that is produced destined to be ignored by everyone but our peers at other law schools?
IPSC has two types of presentations, short and long. The short presentations involve a scholar making a summary of the work-in-progress and then gaining some feedback from the others in the room. The long presentations involve two scholars: a commentator who is drawn from the more seasoned members of the IP scholars community and the author. The commentator presents the subject of the paper and coordinates the conversation about the paper that ensues. As the conference is for works-in-progress, it is hoped (by the conference organizers, I assume, as I am not involved at that level) that the feedback and comments will lead to better papers.
The first group of sessions I attended were short presentations, all involving patent law, particularly the theoretical basis of it. It was a stark transformation from the opening plenary that stressed the need to make IP scholarship more relevant outside of academia. Most of the papers, although of interest for IP insiders, will not achieve a readership among the bench and bar. Whether patent claims are based on tort or contract may help understand why the law works the way it does and it is certainly interesting to think about, it doesn’t help anyone deal with a particular case, nor is it likely to help a policy maker decide how the law should change to address the evolving world of invention.
The longer presentations this morning continue to demonstrate the problem of redirecting research efforts. Both papers were more practice oriented than the earlier ones, but the reaction was less so. Both papers were criticized for failing to be, in effect, theoretical enough.
The other issue that I am finding increasing frustrating is the type of discussion that occurs far too often. This is a work-in-progress convention, so feedback is actively sought. When it is of the form, “You are completely wrong and I am completely right,” little good results. It isn’t the disagreement that is the point — it is helping one’s colleague to produce a paper that present her or his views in the best way. Save the disagreement to a responding article, if the point is so important, in the mean time, try to be helpful.
This is the most challenging afternoon of the conference. There are thirty possible short presentations to which I could go. Four of them are by close colleagues about topics of high interests. These four presentations overlap ... Oh well, pick and choose (and prepare your apologies in advance).
If I were the type of individual who liked to delve into one topic and not leave it until I had absorbed it completely, the afternoon would not be pleasant — fortunately, I am not that individual and love the potpourri. One paper on the First Amendment, the next on hearsay and the Confrontation Clause, then one on how scientists and artists innovate. Now the presentation is discussing the difference between interpretation of a patent and its construction (if that doesn’t take you back to contract law, I don’t know what will) followed by a discussion of the antitrust consequences of the reverse payment settlement in the drug world. A virtual ratatouille of law!
Law is currently accepting applications for the Marks IP Fellowship for
2014-2016. Here are the details (from an
email I received earlier today):
H. Marks Intellectual Property Fellowship at the George Washington University Law
School is a two-year position designed for persons who are interested in
pursuing an academic career in some area of intellectual property law. The
Marks IP Fellow will teach one course per academic year and help with the
administration of the Intellectual Property Program.At the same time, the Marks IP Fellow will
have the opportunity to pursue a scholarly project and prepare to enter the law
teaching market, normally in the fall semester of the second year
Applications for the
2014-2016 academic year are now being accepted.Applications should include:(1) a resume that includes a list of academic
references; (2) a law school transcript; (3) copies of any published work or
other writing samples in law or related fields; and (4) a proposal describing
the candidate's scholarly interests and the specific project or projects he or
she aims to complete while in residence at the Law School.
send applications, questions, or inquiries to:
The George Washington University Law School
2000 H Street, NW
Washington, DC 20052 firstname.lastname@example.org
I have the great joy of having been invited to the University of New Hampshire/Franklin Pierce’s Intellectual Property Scholars’ Roundtable on the Constitutional issues associated with I.P. law. I wanted to mention briefly the great value of this kind of conference. In the room are about twenty-five scholars who study various aspects of I.P. law. About a dozen of us are presenting an issue on which we are currently working and soliciting questions and comments from everyone else. I am not presenting a paper this year, so I can sit back a bit and think about the roundtable-style conference and its value to our scholarship in addition to absorbing the content of the presentations.
Topics at the conference have been limited to those I.P. issues associated with constitutional questions. To give an idea of the breadth of the topics covered, we have discussed the First, Second, Fifth, Seventh, Eleventh and Fourteenth Amendments as well as the Commerce, I.P., and Supremacy Clauses of the main document — and the conference isn’t over. Some of the most fascinating discussions have occurred when the interconnection of the different Constitutional provisions are discovered. In at least one time, it was exactly that. I don’t think any of us had thought about the connection raised before.
Indeed, this discovery of new interconnections is why the roundtable is such a valuable type of conference. The standard conference where papers are presented, mostly as finished works, has its value in dissemination of the information developed in the paper, but it doesn’t serve as the same incubator for new ideas. Indeed, where the research has been reduced to an article, it is often more informative to read the paper instead of hearing an oral presentation of it. For the roundtable conference, on the other hand, we get the opportunity to have our colleagues serve as idea editors. Whose scholarship wouldn’t be made better by that?
As I continue developing my summer’s writing project, I am faced with another issue. The patent bar is not comprised of just attorneys; instead, almost a quarter of the individuals who can file patent applications for others are “patent agents” rather than “patent attorneys.” The only difference between the two groups as far as the Patent Office is concerned is that a patent attorney is a self-reported member of a state’s bar. Both groups must establish generalized technical competence (but see here) and familiarity with the rules of practice propagated by the PTO.
The lack of legal training has another significant difference, however. All law students (at least at ABA Schools, see Interpretation 302-9) are required to study legal ethics and are introduced to the idea that their conduct as attorneys must be done within the bounds of the rules of practice. This training would not be obtained by most patent agents.
Two questions occur to me. First, does it make a difference? Are patent agents more likely to engage in inappropriate behavior before the PTO than a patent attorney? Second, which ever way the first question is answered, what does it say about the ethical training we provide in law school?
I am beginning to think about ways my first question can be measured. One possibility is to determine who is disciplined more by the PTO for ethical breaches, attorneys or agents. My guess, though, about this approach is that the number of disciplinary cases is so small that no statistically significant result will be obtainable.
Assuming there is a solution to the first measurement problem, there would be one answer — there is no significant difference between attorneys and agents — that is reinforcing of the status quo at the PTO. If agents turn out to be statistically less reliable than attorneys, it would behoove the PTO to reexamine the admission standards for patent agents. Of course, if attorneys are established to be the more problematic — or evan as problematic — we may have to reevaluate how we train them in ethics in law school.