IP in the News

Two stories worth noting/commenting about and then it's back to work on my Kolab replacement technology... and maybe I'll try to find a job.

First up, the United States Supreme Court heard oral arguments today on a topic near and dear to my heart: obviousness. In order to receive a patent from the United States government an invention must pass a series of tests. They are generally conceived of as: utility, novelty, and nonobvious. At this point utility is pretty much a non-test, as everything has some utility. There used to be a doctrine about public good, but a famous case about those drink dispensers and how they trick you into thinking the juice is fresh (when, in fact, the juice you see is colored water in a continuous cycle) ended any need for public benefit.

Novelty is perhaps the hardest hurdle to cross, because any prior art can nullify your patent. Of course, there is no easy way to access prior art and because trade secret is such a big thing in the technology sector, a lot of prior art is never widely published.

Which leaves us with obviousness. Under the statute, a patent is not to be granted to an idea with someone of "ordinary skill" in the same field could have come up with it. The point being that just because you were first to come up with something anyone could have done does not mean you should have exclusive rights. However, the statute was pretty much eviscerated by the Federal Circuit when they observed that such inquiries have a "hindsight" problem. Essentially, when the court tries to consider the obviousness it does so in the context of the inventions existence. It's obvious because it's already be done. But the Federal Circuit wanted to know if it was obvious at the time of invention.

The Federal Circuit's test on this is odd and I'm not going to get into it because I don't really understand it. Justice Scalia is quoted to have declared it "gobbledygook" and "meaningless." Sounds about right. It's also worth noting that the Supreme Court usually reverses the Federal Circuit if it bothers to take the case, which means the test will likely be rejected and replaced with something better. Which is a good thing.

In the past I have argued the reversal rate reflected a fundamental disconnect between the Federal Circuit and the Judiciary itself. However, my Circuit Court research from last spring makes me doubt that claim. Unlike the regional circuit courts, which can split on the same question, the Federal Circuit holds sole initial appelate jurisdiction over patent claims. Thus there is no such thing as a circuit split in the area of patent law. I suggest this is a bad thing, as it leads to ossification and reduced experimentation, but the Federal Courts Improvement Act of 1982 disagrees with me on this point.

Much of what the Supreme Court does is pick winners in circuit splits, which means one circuit usually gets upheld and the other gets overturned. But in the Federal Circuit context, if the Justices agree with the the Fed Circuit, it's easier and quicker to simply deny cert. The only time they need to bother with a case is when they want to consider overturning a decision. Following the logic, we would expect the only time the Federal Circuit to be upheld is when four justices disagree (enough to grant cert) but can't find a fifth to form a majority. Since most patent decisions are 7-2 or better, we rarely see this situation.

In other news, the first report of a major university selling it's professor's fair use rights has emerged. Apparently Cornell University has entered into an agreement with Association of American Publishers (think RIAA for books) which will significantly constrain the ability for professors to distribute learning materials to students without paying a royalty. Now, I'm not going to say the issue isn't tricky, but this is no Napster situation. Professors are not stealing anything... they are teaching students. Considered by some to be the most noble of all professions.

The heart of the issues is §107 of the Copyright Act, which codifies fair use rights. The act has a four item list which are considered non-exclusive factors to be used in determining a fair use. Since it is a non-exclusive list, there are other factors, but these are the big four. The very first one reads

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

So, as you can see, the professors might think that their teaching falls under the nonprofit education purpose fair use exemption.

The publishers counter that they produce educational materials for the purpose of making a profit. If the very people who are supposed to be buying these products (teachers and students) can just get them for free, then there is no money to be had and it's time to get out of the business. Which is as good an argument as any.

Of course, for decades (if not centuries) professors would have books placed on reserve at the university library where students could access the book for free. Online reserve, which is at the heart of the agreement, is just a natural extension of the old concept, right?

The article first caught my attention because of the inflammatory headline: "Professors get 'F' in copyright protection knowledge." Which I thought was pretty extreme, given the difficult legal questions at issue. But the article redeemed itself way at the bottom when it recognized that not all matters are legal. Even if the publishers are 100% correct, they are essentially biting the hand that feeds them... the professors they are seeking to limit are the very professors who write the material in the first place. Here's the quote from the article.

At Harvard University, in Cambridge, Mass., Chris Dede, a professor of learning technologies at the Graduate School of Education, says the Internet may let faculty members publish their own material and cut the book industry out of the picture.

"If publishers push too hard, faculty may just decide they no longer need a middleman who collects all the profits in each direction," Dede says.

Which just goes to show you... you might have the best legal argument in the world, but if it doesn't hold up outside of the courtroom your just chasing short term victories in your long plunge off the cliff.