Panel On US Patent Law Ethics Finds Compromises and Hope

By John T. Aquino for Intellectual Property Watch
WASHINGTON, DC – Panellists at the all-day 29 March symposium “Ethical Issues in Patent Law” expressed frustration at the inability to improve patent system processes that self-protectively resist change. But the symposium was also filled with lessons on dealing with ethical issues and a determination to keep trying to change the system for the better.

The need for “patent reform” – tightening standards, providing more feedback to the US Patent and Trademark Office (USPTO) from experts – was a repeated topic, as was the desire of well-financed companies who have an investment in keeping the current system as it is. It was also noted that a patent lawyer’s ability to ethically navigate through an imperfect system is sometimes very difficult.

The event was held at the Columbus School of Law, Catholic University, in Washington, DC, and was sponsored by the law school and the law firms of Venable and Finnegan, Henderson, Farabow, Garrett & Dunner.

“Why is it?” asked attorney Jonathan Band, “that we were working on a patent reform bill in 1998 and are dealing with one again in 2007 and yet we still aren’t tackling the big issues like changing the obviousness standard? That is because politically there is no way to deal with it. There are too many vested interests who want the standard to stay the way it is.”

Paul Michel, chief judge of the US Court of Appeals for the Federal Circuit, asked that patent claims be more clearly stated while acknowledging that claims are sometimes kept deliberately ambiguous so as to stretch the scope of claims as far as possible. “It should hardly come as a surprise, then, that there develop disagreements in interpretation,” Michel said.

Edward J. Damich, chief judge of the US Court of Federal Claims, remembered when he was chief intellectual property counsel for the Senate Judiciary Committee and suggested to Republican Senator Orrin Hatch of Utah that there be one intellectual property agency, rather than the USPTO on one hand and the Copyright Office separately residing in the Library of Congress, which Damich said he “always found most bizarre.” But, he said, “I found out that the stakeholders didn’t want one-stop shopping. They wanted to keep being able to shop around and feed off the different agencies and Congress until they could get what they wanted.”

But while panellists indicated frustration and even resignation, they never expressed defeat. Noting that there was “patent reform talk in the air,” Judge Michel said that there was a role for “all lawyers to participate in all possible ways in the emerging public dialogue, because a lot of things can go wrong in Congress with unintended consequences. Congress needs a diverse set of viewpoints. It almost cannot get too much help, and it’s going to need it soon, from what I hear within the next year and a half.”

“Purebred Greyhound into a Mangy Cur”

Michel also asked that attorneys consider filing more amicus briefs in panel cases to provide the court with more information and more help. He noted that only one amicus brief had been filed in State Street (the 1998 decision making business method patents possible). “It’s been out a decade and it’s still not clear what it meant. I’m not sure.”

In discussing the proposed change from “first-to-invent” to “first-inventor-to-file,” attorney Charles Gholz suggested that it likely would have little impact on patent-savvy US corporations, which already act as if they live in a “first-inventor-to-file” world, or on non-patent-filing corporations and universities, which would continue unknowingly. Ethically, Gholz said, there would be little change for practitioners. “Different things will constitute ‘bad facts.’ However, our obligation to disclose ‘bad facts’ will be the same.” Also on the panel were Harold Wegner of Foley & Lardner and Linda Cohen of the University of California, Irvine.

Judge T.S. Ellis III of the US District Court for the Eastern District of Virginia, Mary Graham of Morris Nichols Arsht & Tunnell, Gregory Castanias of Jones Day, and William Coston of Venable discussed patent litigation issues in Virginia, Delaware, Texas, and the International Trade Commission, all forums where patent litigation has been either growing or prominent. Judge Ellis in particular said that a major problem with Markman hearings (typically pre-trial determinations of patent claims, as set forth in the 1998 Supreme Court case Markman v. Westview Instruments) is de nova review (a form of appeal in which the appeals court holds a trial as if no prior trial had been held) at the Federal Circuit. “Why not go to extrinsic evidence, and the district judge can make a factual determination?”

Suzanne Michel, chief counsel for intellectual property for the Federal Trade Commission (no relation to Judge Michel), Thomas Stoll, associate solicitor, USPTO, and Jeffrey Langer of the Columbus School of Law, discussed the practicalities of being an ethical patent practitioner , with particular reference to the Rambus case (2006) and an attorney with the company who appeared to get caught in the middle of conflicting rules and situations.

In a panel on lobbying and legislation, Damich, Band, and David W. Jones, former counsel for the Senate subcommittee on intellectual property and now with Microsoft, struggled in discussing a process whose outcome seldom satisfies anyone. Still, Band wondered why, when patent litigation can cost a company an average of $6 million a year, corporations do not spend more time – and less money than the cost of litigation – on lobbying. He noted how the 1998 Sony Bono Copyright Term Extension Act had brought millions of dollars for the Disney Company and other copyright holders by extending their copyrights for 20 years and did it without litigation. Band suggested that IP holders are reluctant to get too involved with Congress for fear of what it might do.

Jones concurred: “Changing just three lines in a bill could cost a company millions and millions and millions of dollars.” Damich recalled being a mediator with an IP-related group with Sen. Hatch calling in. “He’d warn them, ‘If you guys can’t come to a resolution, I’m going to do what I think is right.’ You could see the look of horror or their faces,” Damich said.

Panellists made comments such as “there is never going to be perfection” and “sometimes the only result possible is an ugly compromise,” but Judge Damich ended on a positive note. He said he had come to the Senate Judiciary Committee after having been a law professor. In drafting and re-drafting legislation, working with stakeholders and making compromises, Damich said he sometimes felt that he was watching “a purebred greyhound change into a mangy cur.” But, “while it might not be satisfying intellectually,” Damich decided that the whole process showed that we do have a democracy that so many people can weigh in on legislation and their voices be heard.”

John T. Aquino may be reached at info@ip-watch.ch.