Remember that the Court of Appeals for the Federal Circuit, sitting en banc, is scheduled to hear oral argument in Cardiac Pacemakers v. St. Jude Medical next Monday (June 1st). The en banc appeal is limited to the following question:
“Does 35 U.S.C. ยง 271(f) apply to method claims, as well as product claims?”
Once available from the court, I’ll make the oral argument file available on the casepage for the en banc appeal. (I’ll post my notes on the oral argument once prepared).
In a hearing yesterday before the Joint Economic Committee, Federal Reserve Chairman Ben Bernanke answered questions about the economic outlook of the United States. The majority of the hearing focused on the financial industry bailout, the credit crisis, and the forthcoming results of the “stress analysis” of the country’s largest banks.
Somewhat suprisingly, there was an interesting patent-related exchange between Congressman Elijah Cummings (D-Maryland) and Chairman Bernanke. Congressman Cummings asked
“Is there anything you see that the Obama Administration might be able to do, or that we might be able to do, to encourage innovation….?”
In response, Chairman Bernanke offered several policy-related ideas, including detailed thoughts on the “controversial” idea of encouraging immigration of highly skilled scientists and engineers to the United States.
He also mentioned patent reform, albeit with measured indifference:
“There are reviews and thinking about the patent laws and those sorts of things to make those more effective.”
That quote is the entirety of Chairman Bernanke’s patent-related response to the innovation question posed by Congressman Cummings. There’s not much that can be read into this brief statement, other than the fact that Chairman Bernanke is aware of the patent reform issue and its relationship to the policy issue of “encouraging innovation.” Chairman Bernanke is obviously a highly-skilled Congressional witness and was visibly careful in his choice of words on this issue. Nothing relating to a position of the Federal Reserve, the Obama Administration, or Chairman Bernanke can be inferred from this brief remark.
You can view Chairman Bernanke’s response to “the innovation question” in the CNBC video below – it starts at about the 10 minute mark.
Hat tip to a Twitter friend @TechLaw_Elman for pointing me to Chairman Bernanke’s comments.
Last week, Google restated its call for patent reform in an editorial published in the Detroit Free Press. The content of the message was not a surprise – clearly playing to the Michigan audience, the company added a “jobs” twist to the familiar rant about litigation costs, dubious claims, and “patent trolls.” The timing of the article was just as predictable – the House Judiciary Committee, chaired by Representative Conyers from Michigan, was set to hold a hearing on its version of the Patent Reform Act of 2009 on the next day.
But something that happened the day before the editorial hit the press is very surprising, perhaps even to Google.
On Tuesday, the Patent and Trademark Office granted US Patent No. 7,525,207 to the company for a Water-Based Data Center.
Big deal, right?
That’s what I thought, until a Twitter friend (@elosf) had me looking at claim 1 of the ‘207 patent:
1. A system, comprising:
a computer data center proximate to a body of water comprising a plurality of computing units;
a sea-based electrical generator in electrical connection with the plurality of computing units; and
one or more sea-water cooling units for providing cooling to the plurality of computing units.
Whoa.
Now I’m interested. As a geek in every sense of the word, the subject matter intrigued me. But, as a patent attorney, the breadth of the claim left an impression.
My curiosity led me to Public PAIR, where I learned the following about the ‘207 patent:
(you can download a .pdf of the patent here, and a .pdf of the entire prosecution history here).
I’m not familiar with either the data center art or the “sea-based electrical generator” art, so I don’t know if that claim is patentable or not. But, in the post-KSR world, it’s incomprehensible that the Office would allow such a claim in a first action on the merits. Basing the allowance on grounds that the claim differs from the prior art by “a combination of…functional features” that, individually, are known in the art only confounds the problem.
Besides the obvious indefiniteness problem (the specification doesn’t mention the claim term “proximate,” making me wonder if land-based data centers with pipes reaching to the sea are covered), a simple Google book search reveals a 1997 publication stating that “the Unisys UYK-43 is the standard US Navy shipboard mainframe” that weighs 1795 lbs “when water-cooled.”
Surely the Office, in applying KSR and the broadest reasonable interpretation of the claim language, should have addressed these issues during examination. But, it didn’t and now Google is the proud owner of this incredibly broad patent.
For Google, the timing of this embarrassment of riches couldn’t be worse. The issuance of the ‘207 patent presents a troubling irony – the company was granted a very dubious patent claim the day before it stepped into the pulpit and lectured about “dubious infringement claims” and the need for reform.
It also highlights a fundamental problem with the narrow focus of the company’s (and industry’s) call for patent reform:
By focusing on the “expenses” and “problems” associated with so-called “bad patents,” reformers are abandoning the broader issue of patent quality – which, just a few short years ago, was the driving force behind the current patent reform movement.
Intentional or not, this is a sad development. While the Googles of the world call for patent reforms that devalue all patents in an effort to address the dubious ones in the herd, the Patent Office has been reduced to what Professor Mark Lemley recently termed “an assembly line type of operation.” That the outputs of such an operation are sometimes troubling – as exemplified by the ‘207 patent – should come as no surprise.
Patent reform efforts that continue to focus narrowly on the outputs, such as those called for by Google, will only make the overall system weaker. Patent quality is the basal problem that simply must be addressed.
It’s time we built a Patent Office and a patent examination system that makes everyone – Examiners, attorneys and agents, companies, and even the Office itself – proud. A fully funded Office capable of efficiently and thoroughly examining patent applications would go a long way, I think, to addressing the so-called “bad patents” problem that has Google and others concerned. I suspect the same Office would do a better job of promoting innovation and creating the “jobs” of which Google speaks.
Hal Wegner reported earlier this week that a selection has been made for the next Under Secretary for Intellectual Property/Director of the Patent and Trademark Office and that the vetting process had begun. Barring any hiccups, an announcement can be expected this week.
Speculation as to the identity of the next Under Secretary is, not surprisingly, running wild. Three individuals – Q. Todd Dickinson, David Kappos, and James Pooley – have been the subject of attention for months now, and a new name – Mike Kirk – was thrust into the ring just last week.
Picking a candidate in this time of turmoil seems an impossible task. There is no shortage of candidates with academic and professional qualifications that are beyond question – each of the favorite candidates above fit into this category.
But, at this critical time, the Office and the patent community desperately need a Director that brings more than merely the right resume. The unprecedented state of disarray in which the Office is operating requires a candidate that brings intangible character traits that aren’t necessarily born from having attended the right school, having worked at the right firm, or having led the Office in the past.
We need a fresh face that, simply by being nominated, sends a signal to all Office stakeholders that a period of healing is set to begin. We need someone that, from day one, instills confidence in all stakeholders that the Office is committed to restoring the sense of partnership that has been destroyed in recent years. We need someone that is willing to try new approaches to old problems while respecting the Office’s role in protecting inventor’s rights. We need someone that values administrative efficiency, but that is not willing to compromise those rights in pursuing it. We need someone that embraces a goal of complete transparency and marries it with the Office’s statutory duty to “disseminat[e] to the public information with respect to patents and trademarks.”
The position is, without doubt, more challenging than it has ever been before and the new Under Secretary stands to inherit an incredible mess. No matter the selection, I firmly believe that the community stands ready to assist the new Director in unravelling everything and setting the Office and the system back on the right track.
