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Putting patent litigation in context: Disputes are nothing new, increasing court focus on documentation requirement is

The presence of disputes is not symptomatic of a “broken” system — the pertinent question is: what will be the emphasis in resolving these disputes?

Patents represent a long-term investment regime, systematically pitted against short-term exigencies like access to medicine and consumer choice. Simply put, the U.S. patent system is like a retirement savings plan — a giant national 401(k) through which we have historically agreed as a country to pay a little more now for today’s innovations in exchange for having more great innovations available in the future. Fidelity to the patent system poses a classic question: Is it wiser to use resources now or save for the next generation? Naturally and understandably, there is a public desire to capitalize on advances in technology immediately. And the IP system is affirmatively designed to get in the way of that. It is no wonder that conflict follows.

Nobody has contributed more to its “innovation IRA” than the United States, and the tensions inherent in the system inevitably lead to disputes. But the “sky is falling” mentality increasingly prevalent in IP discourse must be put into context. Patent litigation is nothing new. The “smartphone wars” currently serving as the poster child for IP alarmists are hardly the first patent war. Similar disputes arose in the middle part of the 19th century with sewing machines. Then again in the 19th century with the telegraph and electricity. Yet again in the first part of the 20th century with airplanes. And we are seeing such disputes again today with consumer electronics devices including not just smartphones, but tablets and gaming consoles.

Disputes have always been a part of the IP system and always will exist. A moderate level of disputes is intrinsic to a system that works to protect innovators’ rights without becoming so rigid as to lack capacity to keep up with the pace of invention. If the U.S. wants to continue to maintain a flexible system — as it always has had — with all the benefits that come with flexibility, then Americans must accept — as they always have — some degree of imprecision. And with that imprecision there will always be disputes.

Certainly, greater predictability could be achieved by defining bright-line rules such as “no business method patents” or “no software patents” or “no DNA patents” — but query what impact such inflexible rules would have on future innovation. Take software patents for example. More than mere lines of code, software patents embody paradigm-changing innovations like automated language translation, voice recognition, and video compression. Importantly, these major technological advances have all been implemented at various points in hardware, firmware, and software. So by what logic should these processes be patentable when implemented in hardware but not in software? At its core, software is just a medium of expression — like the English language. And no one would think to pass a nonsensical law that said “no patents in English.” Policymakers should similarly decline short-sighted invitations to foreswear protection to any critical form of innovation — software, biotech, or other.

The preoccupation with statutory subject matter within the current IP debate exemplifies how we can all benefit from context. Subject matter eligibility is a coarse filter — it is not suited to the fine-grained issues now being passed through it. The question should be less about how to distinguish between patentable versus unpatentable processes and more about how to put the documentation requirement of the patent system to work. This means looking to Section 112 of the U.S. patent statute, specifically enablement, clear specifications, strict requirements on means plus function claims. Thankfully, and notwithstanding the recent decision of the U.S. Supreme Court to grant certiorari in CLS Bank Int’l v. Alice Corp., the Federal Circuit and district courts are doing just that.

Juxtacomm-Texas Software v. TIBCO Sofware, recently affirmed by the Federal Circuit, is an exemplary case. Here, the trial court invalidated a patent based on a Section 112 analysis. Critically, neither of the parties had briefed Section 112 — but the judge asked for it and based his summary judgment ruling on the fact that the invention set forth in the claims was “not what the patentee regarded as his invention.” The implication is that courts will not tolerate a patent whose description indicates a helicopter but whose claims cover an airplane.

Another example of a documentation issue is with so-called “nonce words.” Here, a patentee hides behind high-sounding language like “computing device” and “data structure” — effectively blurring the boundary between implementation and aspiration. And then there is “results obtained” claiming — where a patentee claims the objective of the invention rather than the structure that achieves the objective. Courts are now focusing on and rejecting these practices, shifting the focus from the unproductive (statutory subject matter) toward the constructive: accurate and meaningful documentation, and claims no broader than the documentation will support.

The goal for the IP system should not be to eliminate disputes. Tensions between short-term consumer savings versus long-term investment and between flexible standards that anticipate rapid change versus predictable rules that mitigate business risk will remain permanent fixtures of the IP debate. The presence of disputes is not symptomatic of a “broken” system — the pertinent question is: what will be the emphasis in resolving these disputes? The trend in court decisions toward increasing focus on the documentation requirement illuminates the path to a clearer and better calibrated patent system.

Contributing Author

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David J. Kappos

David J. Kappos is a partner at Cravath, Swaine & Moore LLP. He is widely recognized as one of the world's foremost leaders in the...

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