This episode is the patent doctrine panel from DreyFEST, the celebration of Professor Rochelle Dreyfuss. It was recorded on March 24, 2023.
Michael Burstein (Moderator), Cardozo Law
Margo A. Bagley, Emory University School of Law
Patricia A. Martone, Engelberg Center on Innovation Law & Policy
Rebecca S. Eisenberg, The University of Michigan Law School
Ryan Vacca, University of New Hampshire Franklin Pierce School of Law
Announcer 0:01
Welcome to Engelberg Center Live!, a collection of audio from events held by the Engelberg Center on Innovation Law and Policy at NYU Law. This episode is the patent doctrine panel from DreyFEST, a celebration of Professor Rochelle Dreyfuss. It was recorded on March 24 2023.
Michael Burstein 0:22
Okay, I think we are all here. So thank you so much to the Engelberg Center all the folks at NYU for organizing such a lovely and engaging and exciting tribute to Rochelle Dreyfus. It is my incredibly great pleasure to be part of this event, honoring one of the leading lights and most inspirational figures in our field. If you'll indulge me 30 seconds of tribute, Rochelle was my teacher, when I was a law student here at NYU. And to this day, the IP colloquium, which Harry so eloquently described earlier this morning, remains one of the signal intellectual experiences of my career, both as a student in the colloquium and to my great delight, many years later, as a colleague and presenter. And so like so many of us in this room, like so many of us in our field, I'm incredibly grateful to Rochelle for her mentorship, and support over the years. I'm especially grateful that she's never held against me the paper I wrote as a colloquium. If I recall correctly, the night before it was due was when it was written. So thank you. So it's, it's not even noon. And already a big theme of today's conversations has been Michelle's real Polymathic approach to our field. This panel is going to focus on patent doctrine. And even within that narrower area, Rachele scholarship ranges quite broadly. But there are a few themes that animate much of her work. One is a deep attention to and engagement with the real world with what industry does and how lawyers react. Another is sensitivity to the ways that various doctrines interact with one another as policy levers. So drawing inspiration from these themes, each of us is going to talk about contemporary issues. In an area where Rochelle has happened scholarship has been particularly influential. I don't think this panel needs introduction, but just in case I will very quickly introduce everyone. So sitting next to me Margo Bagley is the ASA Griggs Candler, Professor of Law at Emory University School of Law, where she returned to that faculty in 2016 after 10 years on the faculty at the University of Virginia, and Margo is an expert in international intellectual property law, especially in patent law. Next to her is Becky Eisenberg, the Robert and Barbara Luciano, Professor of Law at the University of Michigan School of Law, where she writes and teaches about patent law and innovation policy, particularly in the biopharmaceutical industry. Next is Patricia Martone. Pat is currently a research fellow here at the engelberg center, and she has been a longtime adjunct professor of law at NYU, before moving full time to her academic pursuits that enjoyed a long and successful career in private practice, primarily as a trial lawyer litigating high stakes IP disputes. And I should say, Pat, is one of three NYU Law grads on this panel, along with myself and our last panelist, Ryan Vaca, who is professor of law at the University of New Hampshire School of Law. Prior to that, he was a faculty member, director of the IP center. And wow, interim dean at the University of Akron School of Law. And His research focuses on IP and judicial administration. And so we're each going to spend a little bit of time talking about a topic and then I'll ask the panel some questions collectively, and then we'll open it up to the audience. So why don't we start with Margo?
Margo A. Bagley 3:59
Thanks, Michael. October 2001. I was a baby academic. And like most folks here was reeling in the aftermath of 911. But once the plane started flying again, I took a flight to New York for some kind of patent meeting. And I was so excited to see two rows in front of me, the amazing Rochelle typists whose work I had already cited and who I greatly admired, and I'm like, I'm going to have a chance and opportunity to meet her. So after the meeting was over, I nervously made my way to the place where she was standing. And I introduced myself and I asked her a substantive question. And she was so warm and so gracious and immediately put me at my ease. And for the past 22 years since then, I have read Man in awe of her, and very honored to consider her a friend and even to celebrate Shabbat in her home. Why was I nervous and in awe, because she is brilliant and has contributed so much to our understandings of patent law and policy. And I'd like to focus on a couple of her particular insights in relation to patent eligible subject matter. So Michelle's contributions in this area are, as in other areas profoundly, in profoundly illuminating. And and as it's as I was going through her writings and thinking about her work, I was struck by the countless times that I in particular, have been, you know, she's really opened my eyes to different ways of thinking about an issue. And I also liked the way with many of her articles in the title, she will ask a question that is very incisive, and goes to the heart of the particular issue being addressed, like our business method patents bad for business. I think that was probably the first article of hers that I cited in my work the covers, it was a paper on on business method patents. And there she identified two key problems with business method patents, one their quality or lack thereof, and the doubtful wisdom of recognizing exclusivity and competitive business processes. She also noted presciently in 2000. That's when that article was published, that the creation by Congress of private user rights and 35 USC 273 might eventually be viewed as having implicitly endorsed business, business method patents a view that actually was adopted in the Supreme Court's Bilski decision a decade later. A hallmark of Michelle's eligibility writings is a focus, I think, on nuance, and balance, granting appropriate incentives for innovation, but in accordance with the public good. And in discussing the expansions that we've seen in virtually all areas of IP, she noted, a strange aspect to many of these expansions is that they occur without any specific thought given to the need for protection. Once a creative product is recognized as having value, it is assumed that someone has the right to capture that value. And that is a point that Wendy noted earlier. But instead of just wholesale advocating against business method of patents, she offered a classic will shell nuanced approach distinguishing between software based technological methods and business method patents in areas where the incentive of exclusive rights was not needed for the development of new business methods. And she closed the article. I love this by noting that instead of throwing out the baby with the bathwater, what courts in Congress and the PTO were doing was keeping the bathwater business method patents where perhaps all we really wanted was the baby software. Great, it was great. I also have long admired or Shell's willingness to cordially and collegially engage with the written work of other scholars have differing views, and writing responsive arguments and responsive articles, something she's done on multiple occasions. And her 2012 response to an article by Professor Diane nickel, were show positive one factor contributing to the increasing patent eligible subject matter disputes that we were seeing. She said, the traditional tools for balancing public and private interests are largely broken. Thus, it is no wonder that the subject matter challenges have that subject matter challenges have been on the upswing. I quoted this particular assertion Three years later, in a book chapter entitled patent barbarians at the gate, the who, what, when, where, why and how a patent subject matter eligibility disputes, in which I described a variety of variety of factors contributing to the rise and patent subject matter eligibility challenges in the courts and why such challenges were likely to persist. Now, the tools to which Rochelle was referring included patent misuse, experimental use, a patent misuse, experimental use and compulsory licensing. And in the short chapter I wrote in the book for this occasion, I focus on or shells insights in relation to compulsory licensing as a tool, a policy tool, in a very short chapter entitled Tool Time. The continuing relevance of compulsory licensing is a patent policy tool and which argue for the need to revive this tool to get more balance into patent policy, particularly in relation to access to medicines. So to close Rochelle, his contributions to patent doctrine and patent policy are wide ranging and she is not done yet, something that I could not have envisioned 22 years ago was being invited to collaborate with her on a book, which hopefully will be coming out next year. But I look forward to continuing to be enriched by her insights for years to come. Thank you.
Rebecca S. Eisenberg 10:25
So I'm so happy to be here with so many friends to be a part of this celebration of roadshows career, and scholarship, Rochelle and I started around the same time, and so it's particularly poignant for me to see her reach this moment in her career. I've always been a huge admirer of Rochelle and her work, and I'm honored to be sitting up here on this panel. For me, one of Rochelle has great virtues as a scholar is something that other people have also been mentioning already throughout the morning, which is that she's always looking beyond the immediate issue at hand to take in a broader context. Her work spans an exceptionally broad range, but within each paper, she's also taking a very broad gaze, she's always keeping an eye on the big picture, thinking about a range of intersecting, you know, issues and doctrines and institutions and procedures, and trying to figure out how the how the various moving parts fit together or how they don't have they come apart. And so as a result, you know, my my remit is chocolate scholarship on non obviousness. But I'm realizing, as I, as I dig into this, that she said a lot of things about non obviousness in the course of observing other things or making or setting forth other insights. So, for example, I remember that in that wonderful paper, that early paper that a number of people have mentioned already, today on the case study as in the Federal Circuit, or the Federal Circuit as a case study in specialized courts. In that paper, she had some kind of words to say actually about the the Federal Circuit's nonobviousness jurisprudence, and I was struck by that at the time I read it back to check that that is indeed, what she said. That wasn't her main theme. She was in that in that paper she was she was using the Federal Circuit's early non obviousness decisions as an example of how a specialized court might fulfill expectations of improving the precision and accuracy of patent law. I'm not sure Rochelle would say the same thing today. Or if she's, she might might have picked a different example if she wanted to make that point. But that was back in 1989. And she's continued to serve a the broad landscape of patent law in subsequent papers about the Federal Circuit over the years that provide a really rich record of the aspirations and the successes and shortcomings of that very important institution. Those papers I think, are a great scholarly legacy, in which non obviousness makes occasional cameo appearances. I just one strand in that. That legacy of the Rochelle paper that most squarely focuses on non obviousness was written for a symposium nonobviousness convened shortly after the Supreme Court's 2007 decision in KSR, Lewis and Clark Law School almost 20 years after Rachel's initial praise for the Federal Circuit's early achievements in its non obviousness jurisprudence. Rose Michels paper in that volume was a comment on three other papers for the same symposium, one from John Duffy, one from Greg Mandel and one from me. And Rochelle took on the role of interlocutor among the three authors explaining where we agreed where we disagree, where we were simply talking about different aspects of the issues. In other words, this was a paper that placed Rochelle in conversation with a group of scholars including me, and she was quite generous towards me in that paper in a number of ways, she reframed my paper to sharpen it up and make itself smarter than it was. She credited me for insights that I'm not sure I actually quite expressed. She even something that I particularly appreciated. She gave me credit for some of Justice Kennedy's best lies which Justice Kennedy certainly did not do. Would have been petty of me to do that myself. So it was just lovely. To have Rochelle do it for me in print. She managed to pull it off quick graciously. She wasn't saying How come nobody ever cites women for the things I've said before, but she clearly there was a subtext, sort of second wave feminist subtext today, very much appreciated. So, back to non obviousness. You know, in that paper, as always, were shown was looking across a broader landscape. So, I had been focused in my paper on the intricacies of non obviousness doctrine as as applied by the Federal Circuit and decisions about a biopharmaceutical inventions. Rochelle, meanwhile, was thinking about the relative risks of type one and type two error is in the application of indeterminate standards in patent law, and situating patent protection alongside other policies and strategies for promoting innovation now, and in the past, that might have changed the Workfit not obviousness doctrine has to do. So we were all focused on the Supreme Court's KSR decision in which the Supreme Court berated the Federal Circuit for an unduly rigid approach to non obviousness doctrine and the lack of flexibility in taking account of the full range of circumstances that might make an invention obvious. And Rochelle agreed that overall, the Federal Circuit had made procedural choices for the process of adjudicating non obviousness that had the effect of upholding too many patents on obvious inventions. But she also gave the Federal Circuit credit for taking a more nuanced and flexible approach to non obviousness in certain settings. For example, that took account of of context in biopharmaceutical patent cases, and she gave me credit for convincingly demonstrating that and I'm not sure I deserve that credit, but I was quite happy to take it. And then Rachelle concluded by observing that all three papers focused primarily on the process of process of making non obviousness determinations rather than on the substantive standard for the necessary quantum of inventiveness, which was an important point to make it made me the best that we can expect for what has proven to be a stubbornly indeterminate standard. And I agree with that observation of her shell. So I would say the same thing about what Congress and the courts have done in this in this area. You know, when Congress first codified the non obviousness standard in the 1952 Act, they may well have been trying to lower the substantive standard. But their main contribution was to lay out a structured process for performing that inquiry. You know, they specified that the determination should be made by considering the differences between the invention and the prior art, that that inquiry should focus on the relevant date. footbed and from the perspective of a person having ordinary skill in the art, they substituted the word nonobvious, for the word inventive that had previously appeared in the cases, but they didn't really clarify much. They weren't really adjusting the standard they were adjusting the process and the more important contribution that they made was to formalize the steps in the analysis. 30 years later, the newly created federal circuit may well have been trying to lower the substantive standard of non obviousness in order to make it harder to invalidate patents for obviousness, but they didn't and couldn't have articulated a lower substantive standard. Instead, they made various process moves, they set a higher burden of proof for invalidating patent clear and convincing evidence that required the courts to consider more kinds of evidence in the record that would tend to show non obviousness rather than obviousness such as commercial success. They tried to counter the hindsight bias by imposing their notorious TSM test teaching suggestion and motivation that the Supreme Court criticized in much of the KSR opinion, these were all processed moves that made it harder to invalidate not new substantive articulations of the standard that authorized patents on on less innovative inventions, although that may well have been the effect and that may well have been the intent. And when the Supreme Court reversed the Federal Circuit and KSR they, again did not articulate a higher substantive standard. They just called into question the Federal Circuit's process moves. They lamented the rigidness and disapproved some of the standard bromides that the court invoked in In the course of reversing invalidity determinations, they all focused on process because process matters, maybe more than how you articulate the standard because the standard is going to be underpinned determined and in any event.
Unknown Speaker 20:13
Now, forcing adjudicators to go through more process before they reject or invalidate a patent doesn't stop them necessarily from rejecting or invalidating, but it makes it harder for them to do that. Which means that more patents pass the test is, as Rochelle explains, so Rochelle and the Supreme Court had different intuitions than the Federal Circuit about whether we want to tinker with the process to make it easier or harder. to invalidate, she worries more about the costs imposed by type two, that is false positive errors that protect patents on trivial inventions than about the type one false negative errors that leave good intentions unprotected, so she liked the KSR decision. But all that decision did was to nudge the Federal Circuit to lighten up on its strict process. So it wasn't clear at that moment whether the KSR decision was gonna change much. Looking back, I think it did make a difference, especially in the PTO, where these elaborate process requirements were making it unreasonably difficult to reject strict process requirements that are less likely to change litigation outcomes, because by the time you get to litigation, the stakes are high, both sides are willing to invest in costly process moves. But for PTO examiner's who have limited time do you have to write a little essay to the Federal Circuit about why they're teaching suggestion or motivation to combine these elements in the adventure? That may be a many more patents are going to issue. And I think for sure would agree with me that that was a good outcome that that places the burden of process moves at a lightening process moves for the for the agency, while allowing stricter proofs standards to continue in district court litigation. So thank you, Rochelle, for all of your, for your small bore moves to acknowledge a little bit of plagiarism on the Supreme Court, to your broad being big thing, insights across a vast landscape. Not only patent law, but intellectual property, law innovation generally.
Patricia A. Martone 22:49
Yes, thank you. Well, it's a great pleasure and honor to be here to celebrate Michelle's career. And I first met Rochelle in the late 1970s, when she was interviewing for a position at the firm. I was that then an associate at Fisher Neve, Rochelle decided to go elsewhere. But we we learned that we both like French food. And this became a bond later on in 1990. I met Rochelle again when I, of course in the process of becoming an adjunct professor here. And we've been friends and colleagues ever since. And, you know, thank you for inviting me to teach your class sometimes and and for all the advice you've given me, I really appreciate it. So I'm going to talk today about what I think is whatever Shell's most important contributions. And that is framing an economic approach to patent policy and particularly patent licensing in her 1986 article called The throwning Lear licensee estoppel in the incentive to innovate. Now. I'll explain what that means in a moment. But my I just want to say my perspective is that of a practitioner. I remember being impressed with his article when I read him for the first time in the early 1990s. I cited it in the first article, I wrote on patent misuse. And as a patent in trial, a trial and licensing lawyer who I regularly represent a patent owners, the focus on the economics of a patent licensing transaction freed from what I viewed as artificial constraints of anti pattern bias was kind of refreshing. And so it encouraged me to find some workarounds with respect to this case. So what was this case about in 1969, the Supreme Court ruled that patent licensees had a right to challenge the validity of patents that they had agreed to license and This marked the end of licensee estoppel because there was a die of legal doctrine. Let's say hi, once having taken a license, you can never challenge validity. And so in many ways, the foundations of we're share common ground with the doctrine of patent misuse. So the foundation of patent misuse is the belief that patents are inherently bad all patterns, and that they are monopolies. And they have to be carefully regulated. So it's been it's a doctrine that's been used by courts to prevent patentees from extending the monopoly granted by the patent was beyond the scope of the patent. Certainly we're is also founded on the policy that patents bad in the federal patent policy can override the contractual intent of the other parties. And this another case from the 1960s blood versus ties, which dealt with post patent ex breach of royalties from prohibiting the same, they continue to be the high watermarks of patents, or bad Supreme Court philosophy. And, and they actually are both still good law. But so what was special about Michelle's article, first of all, it recognize the long term importance of the case the case was decided to 69. And her article was written in 1986. There was, excuse me a recognition of LIRs negative impact on the patent holders bargaining position in patent licensing, in the exploitation of patent rights. And what what I think was most important was that she framed a new issue to be considered the importance of incentives innovation. Previously, the cases, were all about whether we should allow policies for restraining patent monopolies to overcome the contractual intent of the parties. This article said, Well, let's look at what we're doing to incentivize innovation. And I think that was at the time, a very welcome and profound statement. Because after all, if the economy and exploiting pen rights are not incentives to innovate, then the patent system is not serving a useful purpose. And in addition, if the patent system doesn't reward innovation, then innovators may choose to protect their inventions with trade secrets, which will mean lack of public access to valuable technical information. So what Rachelle recommended was that be the court and we're failed to recognize the economic function paid played by licensee is novel, and influence the allocations of risks between patentees or licensees and affecting investment decisions. So the goal of the article was to argue really, that we should, we should put aside anti patent bias and just focus on whether or not a particular agreement and to give people the parties the right to negotiate an agreement that they could negotiate to recognize appropriate incentives. So at the time this article was written, the United States was very different attitude towards patents. If the article begins with the 1985 finding of the President's Commission on the industrial competition, that rights to intellectual property have eroded to such a degree that investment in innovative activities is no longer profitable. And I always like to cite 1996 article in Fortune, a surprising new power patents. That says thanks mostly to a new appeals court patent holders winning many more suits against infringers, companies were patents with patents are going on the offensive. And at this point in time, one of the most important things that the Federal Circuit did was require judges to correctly instruct juries on the statutory presumption of validity. And because there was a statutory presumption of validity, having gone through the patent office, that was the basis for the heightened standard of proof that the court and impose so so what relevance is is have now because patents obviously the attitudes for expats are changed. We haven't reverted to calling pence monopolies. But there's a constant reference to bedpans, which we now sent to the patent office for a permanent timeout. But and we all So we have the MedImmune decision that rules that licensees can challenge license patents without repudiating the license. So, attitudes towards the roles of patents and stimulating innovation may have changed. But pad licensing is still an economic transaction. And incentives to innovate can be argued by both sides. I mean, these days many companies are saying that patents particularly big tech patents, stop them from innovating. So the point is that they both sides can argue with and still I would say in a negotiation rigid per se rules are not helpful, and it's something that parties ought to be able to work out. So what are some of the workarounds that that, that I used? I frequently use put language particularly before they were IPRS into pan license agreement, settling claims of infringement, prohibiting licensees from filing or assisting in the prosecution of any request for reissue or re examination on the theory that lawyers said, Well, you have to allow a challenge in court, it didn't say you also had to allow challenges in the patent office, which were cheaper and opportunities for companies to gang up on some smaller patent owners. There. There are various ways that people have dealt with this. There are there are agreements, which have been sustained, that require disputes to be litigated and specific courts require disputes to be litigated in arbitration. There are several instances of courts holding us promises not to institute any validity challenge in settlement agreements. And in consent judgments, they are relying on the policy favoring settlements and the policy of about the public policy of res judicata. So none of these cases talk about the need to incentivize innovation, and none of the courts that sustain them, in addition to overrule leer, when all these cases and approaches share the core goal, placing some or all the risks of invalidity onto the licensee, and thereby, in my view, contribute to incentivizing innovation. So I think that, again, I think that
Unknown Speaker 32:42
the approach that Professor Dreyfus argued of looking at instead of innovation is as a fundamental underlying a patent negotiation. A transaction is still has a lot of validity, and it's definitely worth thinking about. So thank you, Rochelle.
Michael Burstein 33:09
And Ryan,
Ryan Vacca 33:10
all right, so I'm tackling the two articles that Rochelle wrote on experimental use. And although I've never written myself on an experimental use, these two articles do have some significance to me, largely because of an event that happened probably about 15 years ago, close to the day. And spring of 2008, I just accepted my first academic position, I was going to be a visiting professor at the University of Oregon. And I went to Rochelle who had been one of my my advisors and mentors, and I told her the news and she was teaching a survey and she went into her closet in her office, and she came out and she said, Here's my case book. Here's the trick teacher's manual for it. Negative book, and I said, Great. But we also started talking about scholarship, and she's She shared this nugget with me, which was, you know, you're gonna write, you're gonna write a piece and then 10 years later or so, then you could write a new piece and you call it reconsidering. So this is 2008 is 2000 2004 was the first article on experimental use. So fast forward to 2016 and I'm serving as the Director of the IP Center at the University of Akron, and I invited Rochelle to deliver the annual Oldham lecture. And she graciously accepts she delivers a wonderful talk and as part of the agreement was she would publish her work in the LARP. And so she she delivers this talk, and then subsequently published a paper called reconsidering experimental you. I can't say she didn't warn me. But with with the sage advice that I'm now working on my next paper which is called reconsidering the Federal Circuit on Bach, which panels might be interested in letter. Okay, so let's talk about the articles. So she has these two articles. Experimental use, at least in its common law form, as we know, is an exception to patent infringement, that the the permitted somebody to use the patented invention to satisfy their scientific curiosity or amusement in ways that doesn't antagonize the patentees interests selling the products of that experimentation, though, is not permitted. So in her 2004 article, Rochelle describes a series of circumstances that led the Federal Circuit to narrowly construe the experimental use defense. And so in the article she describes how, until the Federal Circuit got a hold of the doctrine, experimental use was at least in theory, quite broad, and not really much of a concern for academic researchers or companies because of the fairly clear distinction between basic research and commercial application. The academics did the research using patented technology industry later took advantage of that basic research to get more patents and bring their products to market. But then the Federal Circuit narrows the experimental use. Defense starting in the 1984 with bowler and continuing through 2002, and Maddie versus Duke, Congress via the hatch Waxman act, reverses Bhullar but created by creating the statutory experimental use defense, but the common law experimental use has remained quite narrow, almost to the point of not being existed. So Rochelle tries to or she she traces the provocations for the narrowing to a few causes. So we have the development of commercial value for basic research. Think Myriad's sprocket one rocket to jeans. She talks about university research changing, right? They're no longer institutions of open science and sharing, but instead by dollars now transformed universities into quasi or not so quasi commercial actors, building patent portfolios, engaging in licensing and creating spin offs and the like. And finally, she mentioned with Rob Burgess called Lock jaw, our obsession with prioritizing patent protection or IP protection over free competition, focusing on this, it's been talked about today as well. And so, Rochelle notes, several possible solutions to this limited experimental use defense, including beefing up patentable subject matter exceptions. Presently, she says this would be a bad idea, because they might be going too far, we're going to create more problems if we increase these exceptions. And as we've now learned, 1020 years later, how right she was to be concerned with these increased exceptions to one on one. It's ultimately in the paper in the earlier paper, she suggested a revamped experimental use defense. She acknowledges the work done by others, including Becky on this panel and Kathy in the audience. And, but ultimately concludes that these are there are too complicated, or they raised just other difficult questions. And so our proposal, which was quite ingenious was the university and nonprofits, they were if they weren't able to get a license on reasonable terms from the patentee, then they could use the patented invention without without license if they signed a waiver. And the purpose of the waiver would be that they would agree to publish their results, the results of their research and refrain from patenting the discoveries made in the course of that work, or if they did happen to get a patent, then to license it agree to license it on reasonable terms. The benefits, of course to this is that the courts don't need to characterize sort of curiosity versus commercial activities. It doesn't necessarily prioritize universities who are now acting like commercial actors over actual commercial actors, and it gets the research out for others to use. In the 2016 article, she addresses the some of the important changes that have occurred over the last For 12 years, and rather than heeding her advice, to leave patentable subject matter alone, the supreme court gives researchers now the power to engage in basic research because lots of it, especially in the biotech field is now on patent. And this, of course, is ironic, because it was biotech industry that oppose the inclusion of a statutory experimental use defense in the IAEA. But the other problem with this is that researchers also lose out because now there's more of a shift to trade secrecy. So the disclosure function has suffered as well. And as we heard about in the previous panel on international law, Rochelle has expertise is in international key is unparalleled. She draws on this knowledge in this article as well, comparing the US approach to that of several other European countries, and suggesting that we paid perhaps take a page from their book. So given the the legal landscape, Rochelle, she changes her proposal for experimental use. And she sees the the more positive view of compulsory license, which was mentioned before, as a way to strike a more proper balance. She supports the Ag LA's proposal for a statutory experimental use defense that dramatically increases or drastically broadens its defense. And she recognizes that the most significant part of this might be the normal setting function that such a rule might produce. And so in some what we see what this paper is really leucine, and a lot of the papers that were discussed here that some of the comments were made on the international panel as well, which is this really demonstrates her practical understanding of the scientific community. These papers demonstrate a big picture view of the innovation landscape, her impressive knowledge of IP on the global stage, and her ability to accurately predict and analyze deficiencies with proposed solutions. So shows me a significant contribution to this doctrine. And there's hope, a bit, perhaps small hope that Congress may take a page from Michelle's pages, and enact a statutory experiment, user defense, that will be more beneficial to in striking, more proper balance than the Supreme Court and Federal Circuit have done.
Michael Burstein 42:54
So I'd like to pick up on a theme that I think has come about in several of these talks. So and that's also present in yourself Scholarship, which is the use of having doctrines really as policy levers and perhaps reflecting the outsize mental space that we're all devoting to eligible subject matter these days. Let me start there, right, where, you know, since Alice, we've had over 200 Federal Circuit decisions, lots of criticism of the of the coherence of this doctrine, Mark McKenna, and I think this doctrine is actually more coherent than many of us give credit to stay tuned for a paper making that kind of radical argument. But in the meantime, I'm curious what the panelists think about whether the Evanescence of some of these other policy tools, right things like compulsory licenses, like the experimental use exception, is, in fact, what's been driving the court to make some of its eligible subject matter decisions. And so let me ask a couple of related questions. Do we think that the revival of these older doctrines could maybe reduce the pressure currently placed on section 101? And do we think the courts might be at all receptive to that kind of, you know, policy lever sort of practical thinking about the intersection of these various patent doctrines?
Unknown Speaker 44:31
Well, I'm not a fan of these good for the poor to seek to hearing you explain the coherence of the plot. Let me put it that way. Let's start with that. But I think you need more than coherence to make it work. I mean, one of the things that I don't like about this, these developments and patentable subject matter, you know, she's talking about the process of non obviousness determinations and how its structured and the there's a series of things you need to consider But there's nothing like that with these subject matters determinations. And that really scares me. I mean, these, the trial courts are throwing out, you know, or invalidating patents on, you know, before conducting any discovery, because it's a kind of a seat of the pants. I know what when I see it a definition of these necessarily indeterminate standards. Sometimes you need an indeterminate standard, sometimes that's the best you can do. But then you can sort of slow it down and create a structure for thinking about what goes into the analysis. And so I don't like it that you don't have that with these patentable subject, subject matter. determinations. So I think, far from putting less pressure on one on one, they're putting more pressure on one on one thing, you know, what really scares me? Is these legislative proposals to to fix it, which or you know, even worse, so that's my
Unknown Speaker 46:01
quick take. Yeah, to the extent you're asking about whether the absence of things like experimental use exemption, compulsory licensing, or putting pressure, which is what Rochelle had argued, I, I definitely agree. And she makes the point in her paper. And well, several different papers, because Ryan mentioned one, and also with Diane, Nicole, about how different million the case was viewed in Australia versus the United States, because of the fact that there are compulsory licensing provisions or experimental use provisions. And, and she was really warning other countries don't don't borrow what we're doing or don't say that, you know, but look at the differences in the systems as a whole, in deciding what might might make sense. And if you have these other kinds of SEC policy levers to take the pressure off of subject matter eligibility, I mean, it doesn't change, what one might call the damage per se, that has already been done, but it certainly would, one would expect you would see fewer cases, if you don't have if you have other ways of of accomplishing the objective, which is having the ability to use particular doctrine, so or technology. So the challenge is because of the decisions that we have, in some cases, right, you don't need the exceptions. But in other in other cases, you still will. And one of the things I think is interesting and showing the continuing relevance, for example of something like compulsory licensing is how it came up in the Maderna. case with Maderna, arguing, we, you know, we should be you really can't sue us for infringement because of section 1498. And, you know, the United States government can use basically any invention at once. And so it's it's still around, it still has relevance, but we don't have a robust way of viewing it as a fully theorized way of viewing it.
Unknown Speaker 48:00
Actually, like, I understand the Vert during an argument, but I I don't do these things is linked to because I think accepting moderna you, you don't see this issue and patentable subject matter cases, I think there are two things going, two things going on. One is the Alice decision is a terrible decision. It's really poorly written. And it has created enormous confusion. And we can't get it could be fixed in Congress, but we have something going on in this country. Now that wasn't going on when I started practicing patent law, and litigation, the 70s. In the 1970s. And 80s. American industry had a somewhat uniform view of patents, whether it was positive or negative, or whatever it was, pretty much, it was pretty much the same. Now we have the tech industry, whose business model is very anti pattern, because they can't really protect a lot of what they do by patents and and therefore, and they're constantly being sued by patent holder. So they're anti pattern with the huge lobby. I mean, Google is one of the biggest lobbyists in the country, and they will, they're putting their pressure on any legislation. And then you have big pharma wealth wants to protect everything. And so that divergence of the industries and their attitudes towards patents, I think it's a real issue that is going to be very hard to to solve in any legislative purpose. And I've always thought that except for rare exceptions, that patents should be applied, you know, uniformly regardless of technology. It's it's a the science itself will determine whether something is anticipated or obvious or whatever but beyond that, this note During that we are now going down to opposite tracks, I think is a problem.
Unknown Speaker 50:06
I would also add, you know that the Supreme Court in its subject matter cases has been has recognized, I think we're coming recognizes that we really be need to be concerned with basic research. That was, that was the problem that was trying to partially trying to solve. But it just did. So with a very blunt tool, and one on one. That's and that's been the problem, right? And so we have these other tools that exists that we could create more, that can be more of a scalpel, right? That if we use experimenters, we use misuse, strength, all these kind of reverse doctrine of equivalents, right, narrowing the doctrine of equivalents, right, we can do all these things that can be much more customized to the particular case and might get us the right policy decision or the right outcome from a policy perspective, but we haven't really done that very well in the Supreme Court is now sort of bound us into the current state. That's a mess, like, so. How do we get out of it? That's that's the question. But I think the narrower approaches that Rochelle and others, Becky and Kathy suggested, would be a good step in that direction. Great.
Michael Burstein 51:23
So we have about five minutes left, and I'm cognizant that lunch is up next. So we have time probably for one or two quick questions from the audience.
Unknown Speaker 51:36
Like, is there a is there a microphone? I'm not familiar with the evolution of US patent. I was going to reveal that if you test if I would. Yes, I was wondering whether the test of non obviousness is applied to two patents, with a sum level of strictness As requested, for instance, in that decision of a Supreme Court, K, yes, sir versus Teleflex. So lift varad. beyond ordinary innovation, if this test in this terms, applies also to techno copyright, meaning, copyright protection of technological stuff, like software, like computer programs, because that is an exclusive protection to after a software copyright act. I would like to know if
Unknown Speaker 52:48
it was a clear answer to that, although I'm not the the authority. People in the room that know a lot more about this record, the clear answer is no. The this is a requirement for patent protection. Copyright, at least as a formal matter is much more willing to allow everything to be protected by copyright. I guess the idea expression dichotomy can sometimes exclude some things from from protection. But that's it's they don't set high standards for for getting a copyright. They just try to filter out what it is you can protect and what you can't protect.
Unknown Speaker 53:24
us with this?
Unknown Speaker 53:26
Yeah, my colleague, yes, my colleague, Jessica Lippman has wonderful examples of this. She says like we could you and I could each go to Paris and take very similar photographs of the Eiffel Tower. And each of those would be we would each have our own copyright. In our very similar photographs of the Eiffel Tower.
Unknown Speaker 53:50
Gustavo is a professor in a world where he was in Milan, I think what he might be getting at is copyright has a lot of except it has a lot of defenses to infringement. And maybe we could take a page from the way the copyright does that by saying yes, everything is copyrightable, but and then you have what 20 different sets of, of defenses and
Unknown Speaker 54:18
not protected at all. So fair use is just you don't have copyright protection. For that, there you go.
Unknown Speaker 54:26
So looking across the list was kind of an interesting parallel between technical copyright and the way that that's handled and our lack of ability to handle that on the patent side. But if you want to say one other thing, Becky had the best ever line about patent law and the Supreme Court, which was that the relationship between the Federal Circuit and the supreme between the Supreme Court and the Federal Circuit. It's like a dad who spends the occasional weekend with his kids. I explained all of the problems that we
Michael Burstein 55:07
do we need to wrap up. Okay. Thank you so much to the panelists, and thank you all thank you.
Announcer 55:15
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