Edison as a patent troll, or where is California headed in stem cell research?

In March 2006, there was renewed concern about the patent system, manifested not only in the discussion of NTP v. The RIM (BlackBerry) case, which was settled for $612.5 million, but also on the fate of the use of injunctions in patent infringement cases, will be reviewed by the Supreme Court in eBay v. MercExchange. The Wall Street Journal wrote that US patent law is “deterring research and penalizing innovation” and that the patent system is “fast becoming a detriment to US competitiveness, not to mention basic fairness. The idea that patents are not fundamental to innovation can also be found in the philosophy of some venture capitalists, who will tell you straight up “patents are not the reason we are investing.”

Although some people, such as Adam B. Jaffe and Josh Lerner, suggest that patent problems are of recent origin, with changes in the last 20 years that have led to a decline in the quality of patents but a strengthening of rights patent, the empirical evidence because this is thin. Many of the problems we see now have been around for a long time.

Aspects of the history of the light bulb are discussed below. According to the venture capitalists’ point of view, JP Morgan invested in Edison, man, before Edison’s key patent.
issued. To attract the attention of influencers, Edison installed the first commercial electric power plant near Wall Street, just as RIM (BlackBerry) has achieved impact through the opulence of
your customers After a commercial beachhead was established, the patent wars began. Edison’s ultimate success in the patent wars was established both offensively and defensively, and was largely
assisted by his high profile. It is suggested that certain legal problems faced by Thomas Edison in the 19th century will soon appear before stem cell workers in the 21st century. [Of various suggestions that Edison was troll-like in his behavior in not making product, one observes that Edison himself obtained the funds from investors to set up the first electric power plant, and then created the power plant. He made product. Whether he was actually the inventor of the light bulb is a different story.]

DID EDISON INVENTE THE LIGHT BULB?

Although not much discussed, Edison’s famous U.S. Patent No. 223,898 application, granted on January 27, 1880, was involved in interference with competing inventors Sawyer and
Man and Edison lost on the disputed point.

Subsequently, successors to Sawyer and Man challenged Edison’s patent. Edison’s basic statement read: An electric lamp for giving light by incandescence, consisting of a high-resistance carbon filament, made as described, and secured to metal wires, as stated. The trial court noted that Edison “was the first to make a carbon from materials and by a process which was specially designed to impart to it a high specific strength; the first to make a carbon in the special form for the special purpose of imparting to it high total strength; and the first to combine such a burner with the necessary fixtures of lamp construction to prevent disintegration and give it a sufficiently long life”. The trial court also noted, somewhat
cryptically, “There are many adjudicated cases where it appears that the inventor built better than he knew; where a patent has been held for an invention the full meaning of which was not appreciated by the inventor when it was made. In the case of the patent of the Bell telephone there was a great deal of doubt as to whether Mr. Bell had had the talking telephone in mind when he filed his patent application, but the court said, “It describes an apparatus that was an articulated telephone, whether Bell knew of it or not.” Edison’s patent survived.One problem with the court’s analysis is that the distinctly long life of Edison’s filaments arose from the use of
bamboo, which was not disclosed in Edison’s patent.

In a case that went all the way to the Supreme Court, the relevant Sawyer and Man patent, asserted against Edison’s interests, did not survive. The first claim of US Pat.
317,076 (related to patent 205,144) said: An incandescent conductor for an electric lamp, made of carbonized fibrous or textile material and in the shape of an arch or horseshoe, substantially as
previously exposed. The Supreme Court noted: “It is admitted that the lamp described in the Sawyer and Man patent is no longer in use and was never a commercial success;
incorporate the principle of high strength with a small lighting surface.” As to the breadth of the Sawyer/Man lawsuit, the Supreme Court stated: “But if lumber in general were not fit for purpose, and yet the patent holder had discovered a wood that certain qualities, which gave it a peculiar suitability for such a purpose, would not constitute an infringement for another to discover and use a different type of wood, which was found to contain similar or superior qualities.” The court He further noted that Sawyer/Man “made a broad claim for every fibrous or textile material, when in fact an examination of more than six thousand plant growths showed that none of them possessed the peculiar qualities that fitted them for that purpose. Was everyone then prevented by this broad statement from doing more research? We think not.”

The court noted that Edison “found only about three species of bamboo suitable for his purpose.” After discussing the amount of work Edison did with the bamboo, the court asked: The question
really is whether Sawyer’s and Man’s imperfectly successful experiments with charred paper and charcoal, granting all they are credited for, warrant subjecting them to
tribute to the results of the brilliant discoveries made by others “previous use of said material”.

Although the Supreme Court did not address the issue, Edison argued at trial that Sawyer/Man had amended his application to fit Edison’s work: “there is no such invention
was stated in the original application, but was first introduced more than four years after it was filed, and after the same material had been used by Edison and claimed by
him in a patent application.” The trial court agreed, saying that “after Edison’s inventions on this subject were published to the world, there was a complete change of base on the part of Sawyer and Man, and that the application was amended to give it an entirely different direction and purpose than it had in its original form…. [Testimony] shows that the idea of ​​claiming coals made from fibrous and textile materials was an afterthought and not part of the purpose of the original application.”

On the subject of invention, the text within the court cases expresses mistrust as to whether or not Edison was the inventor of the light bulb. In 1875, Henry Woodward and Matthew
Evans patented a light bulb, the rights to which Edison bought. In 1878, Joseph Wilson Swan invented a light bulb with a lifespan of about 13.5 hours. Edison’s light bulbs in 1880, derived from a filament derived from bamboo, lasted 1,200 hours.

The problems in the 1895 case are not unrelated to those in LizardTech v. Land Resource Mapping, 433 F.3d 1373; 2006 US Application LEXIS 137; 77 USPQ2D 1391 (CAFC 2006) and are not
unrelated to issues in the current discussion of alterations in the practice of continuous applications.

[Endnote 13, which appears here in the text, states: 71 Fed. Reg. 48 (Jan. 3, 2006). Abuses of applicants while awaiting developments in similar or parallel technology caused by amending the pending application to cover developments. If the
amendments are covered by the disclosure, this practice is allowed. PIN/NIP, 304 F.3d 1235.]

MOTHER CELLS

The situation that the courts faced in the 1880s, trying to find out who invented the light bulb, will soon be faced by the courts of the 21st century, trying to find out who invented the light bulb. . carried out invention on embryonic stem cells. Although there are currently numerous patent applications on somatic cell nuclear transfer [SCNT] At various stages in the generation of embryonic stem cells, questions about the scope of invention and enablement exist today, just as there were in the 19th century. Although many people now claim
large, with perhaps limited clearance and a written description, the ultimate winner will be the person who identifies the idea to make the whole system happen and gets the patent
protection in this regard.

UPGRADE TO “ONLY SEEN TWICE”

In the November 2005 issue of Intellectual Property Today, I presented some data on the PTO’s fiscal year 2004 continuing claims and noted that the USPTO is evaluating the possibility
of limiting continuations, which crystallized in the Federal Register in January 2006. Two Chicago readers, Kevin Noonan and Paul Reinfelds, submitted data for fiscal year 2005 and noted, with the small number of “second” continuation requests, that the PTO’s proposal limiting continuous applications, even if done, would probably not solve the problem facing the PTO.

[Endnote 18 stated of the data for FY 2005: There were 63,000 continuing applications, which included 44,500 cons/cips and 18,500 divisionals. Of these, 11,800 were second, or subsequent, applications. Separately, there were 52,000 RCEs, of which 10,000 were second, or subsequent. Thus, 21,800 applications of
384,228, were second or subsequent, which is 5.7%. As for FY2004, RCEs were the single most abundant “continuing” form, 52,000 of 384,228 [13.5%]. All “continuous” forms combined
constituted 115,000 of 384,228 [30%]. The content of Note 18 was quoted in comments made to the USPTO on proposed rulemaking in the area of ​​continuing applications:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/ebert.pdf.
The comments referred to my April 2006 Intellectual Property Today article, which I was unaware of at the time of the comments, was not actually published by Intellectual Property Today. These comments to the USPTO objected to the proposed limitations on second and subsequent continuing applications on the basis that, even if implemented, the proposed limitations would NOT solve the application backlog problem AND, separately, would adversely affect many reasonable uses of the application. practice of continuous requests. ]

Of Carhart’s book, “Lost Triumph,” the publisher is Putnam, not Putman. Two other reviewers have disputed the novelty of the book, despite the fact that the theory about the possible existence of JEB Stuart
The paper had been published years before Carhart’s book.

[After March 2006, the Supreme Court decided the case eBay v. MercExchange. Therein, the Supreme Court made clear that entities such as universities and individual inventors, who don’t make product, could satisfy the four-factor test and obtain permanent injunctions to bar infringement of their patents.]