CORRECTION: 5/19/2011 @ 1:14pm ET (see bottom)
Most within the patent community who follow the blogs and read articles undoubtedly know that Hal Wegner seems to relish the opportunity to criticize me. I don’t read Hal’s newsletter because I don’t particularly like his brand of cantankerous writing, which seems laced with inaccuracies and misrepresentations. I do, however, get forwarded what he writes about me from time to time, and if what he writes about me and my opinions are typical for his newsletter I wonder why anyone reads what he writes. He is almost universally incorrect about what he says about me personally, what I have written and in order to achieve his point he uses ellipses and outright misrepresents my positions. Don’t get me wrong, I am appreciative that Hal is an avid reader of IPWatchdog.com, I am just perplexed by why he is unable to understand what I write and why he feels the need to cut me down at seemingly every opportunity.
Typically I let what Hal writes slide off my back because I don’t take him seriously. Having said that, the other day he did one of his trademark hatchet jobs on an article I wrote titled The Constitutional Underpinnings of Patent Law. This was actually the second Constitutional article I wrote in as many weeks. One week earlier I wrote Patents, Copyrights and the Constitution, Perfect Together. Hal’s newsletter, sent out with the subject “naive and wholly incorrect understandings,” grossly misrepresented my writings, and was incorrect on the law in places as well. That being the case, and given the particularly prickly and fallacious subject heading, I thought I might set the record straight. I think it is also time to challenge Hal to a debate so he will either put up or shut up.
First, in his newsletter e-mail Hal wrote:
Watchdog says “the Constitution requires the invention proffered by the applicant to be … the embodiment of a scientific advance.”
Reality: The Constitutional mandate to grant patents is to “Promote the Progress of … the Useful Arts”, KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 427 (2004); promotion of “Science” is tied to copyright protection, Bilski v. Kappos, 130 S.Ct. 3218, 3236 (2010)(Stevens, J., joined by Ginsburg, Breyer, Sotomayor, JJ.).
As if I don’t know that in the original text of the Constitution the term “useful arts” applied to patents and “science” applied to copyrights. How such an avid reader of IPWatchdog.com as Hal could have missed me explaining this in Patents, Copyrights and the Constitution, Perfect Together is beyond me. All you have to do is read the article and that historical factoid is well explained. I have written about this a number of times, and nearly every time I write about it I cite to Judge Rich’s excellent explanation published at 35 IDEA 1, 2 (1994). Leading into that quote by Judge Rich I say: “The reason the U.S. Constitution grants Congress the power to legislate in the area of intellectual property is to’promote the Progress of Science and useful Arts.’ See U.S. Const. art. I, § 8, cl. 8. It is interesting to note that the word “science” refers to protection of copyrightable subject matter and the term “useful arts” refers to the protection of patentable inventions.” Accordingly, it seems clear that Hal’s statement was a misrepresentation for the purpose of making me look back.
Putting aside the fact that Hal obviously wanted to make me look bad and as if I didn’t know what I was saying, does anyone today refer to science as pertaining to copyright and useful arts as pertaining to patents? Of course not. I personally don’t understand why Hal would challenge that patents are supposed to embody scientific advances. I understand that Hal is not a patent attorney and cannot represent inventors or businesses in their pursuit of a United States patent, but I would still think that he would understand the concept of an improvement patent and the fact that the next iteration of a patentable invention needs to be novel and non-obvious over prior innovations. So what gives?
Second, in his newletter e-mail Hal wrote:
Watchdog says “the embodiment of a scientific advance[ ] is what we have come to know as the non-obviousness requirement. …[I]t seems clear that it has always been considered a constitutional prerequisite to patentability.”
Reality: Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851)(sixty-plus years after the first patent law), is the first Supreme Court case to judicially legislate a nonobviousness standard (styled as “invention”). Hotchkiss never mentions the word “Constitution”; if anything, the test for “invention” should be traced to the then-recently published treatise of George Ticknor Curtis which is cited several times in counsel’s argument, e.g., Hotchkiss, 52 U.S. (11 How.) at 255, 256.
Hal did such a hatchet job on this quote that it is really necessary to provide the full quote so readers can understand what Hal decided to cut out to create the words he wanted to put in my mouth. I wrote:
This last requirement, the embodiment of a scientific advance, is what we have come to know as the non-obviousness requirement. Although this concept did not appear in the Patent Act itself until the 1952 revisions, it seems clear that it has always been considered a constitutional prerequisite to patentability. Indeed, the case law prior to the enactment of the 1952 Patent Act required a flash of inventive genius to be present before a patent could issue. See Reckendorfer v. Faber, 92 U.S. 347, 357 (1875); Smith v. Whitman Saddle Co., 148 U.S. 674, 681 (1893); C & A Potts & Co. v. Creager, 155 U.S. 597, 607 (1895); Concrete Appliances Co. v. Gomery, 269 U.S. 177, 185 (1925); Mantle Lamp Co. v. Aluminum Products Co., 301 U.S. 544, 546 (1937); Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941). The “flash of genius” requirement was specifically rejected by Congress with the enactment of 35 U.S.C. § 103(a), which in relevant part states: “Patentability shall not be negatived by the manner in which the invention was made.” 35 U.S.C. § 103(a) (2000). Congress may statutorily make this change because they are not doing away with the obviousness requirement, but rather, codifying the meaning of the Constitutional obviousness requirement, which is certainly within the scope of their authority pursuant to the Intellectual Property Clause.
In the paragraph previous to this one I did discuss how the Constitution requires an invention to be offered, and cited to Hotchkiss v. Greenwood, 52 U.S. 248 (1851) and also to Atlantic Works v. Brady, 107 U.S. 192 (1883) for the same proposition. Noticeably Hal didn’t mention the cite to Atlantic Works. I guess that didn’t fit into his predetermined narrative.
Where to begin? Let’s start with what the Supreme Court has said about the Constitution and the IP Clause association with the patentability requirements. In Graham v. John Deere the Supreme Court wrote:
The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which, by constitutional command, must “promote the Progress of . . . useful Arts.” This is the standard expressed in the Constitution, and it may not be ignored. And it is in this light that patent validity “requires reference to a standard written into the Constitution.” Great A. & P. Tea Co. v. Supermarket Equipment Corp., supra, at 340 U. S. 154 (concurring opinion).
But wait, there is more. Hal questioned in his familiar bellicose baritone my saying that there is a link between the patentability requirements and the Constitution dating back to Hotchkiss v. Greenwood. Why he would take issue with that correct statement is curious because the United States Supreme Court has routinely referred to Hotchkiss as ground-zero in the development of patent law in the United States. In Graham v. John Deere the Supreme Court also wrote:
The difficulty of formulating conditions for patentability was heightened by the generality of the constitutional grant and the statutes implementing it, together with the underlying policy of the patent system that “the things which are worth to the public the embarrassment of an exclusive patent,” as Jefferson put it, must outweigh the restrictive effect of the limited patent monopoly. The inherent problem was to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent.
This Court formulated a general condition of patentability in 1851 in Hotchkiss v. Greenwood, 11 How. 248…
Hotchkiss, by positing the condition that a patentable invention evidence more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business, merely distinguished between new and useful innovations that were capable of sustaining a patent and those that were not. The Hotchkiss test laid the cornerstone of the judicial evolution suggested by Jefferson and left to the courts by Congress. The language in the case, and in those which followed, gave birth to “invention” as a word of legal art signifying patentable inventions.
So whether Hal likes it or not, Hotchkiss is the starting point for the patentability requirements (as stated by the Supreme Court) and those patentability requirements are tied to the Constitution (again as explained by the Supreme Court). I believe that would make me correct and Hal incorrect, for those keeping score.
You see, it really isn’t my opinion that Hotchkiss is relevant as the starting point for the patentability discussion, it happens to be the opinion of the United States Supreme Court. While I have been known to disagree with the Supreme Court on numerous occasions, the fact that I think they get a ruling wrong doesn’t mean that my view of the world is the law. So if Hal has a problem with what I wrote I think he ought to consider taking it up with the folks wearing black robes in the building adjacent to the Capitol in Washington, DC.
Based on his writings, manner and what he has says to others about me, it seems Hal has little use for me. It would seem that Hal sees himself as the guardian of correct information, while at the same time getting so many things incorrect. As for the misrepresentations, I have no explanation and won’t even hazard a guess. I do not suspect he will ever change, and I know I will never change. So why not have some fun, shall we?
I challenge Hal Wegner to a debate on any issue relating to patents, at a mutually convenient time and at a mutually convenient place. I’m sure we can find a venue for such a debate without much difficulty.
I propose we each choose a panelist with those two panelists choosing a third, presumably neutral panelist. Then we have a debate with the panel of experts asking questions. Perhaps we can have opening statements, closing statements and even ask each other questions about our respective writings. I would also be happy to prepare some written materials in advance so that the debate could qualify for CLE credit. Heck, we could even allow questions from the audience.
Hal, I know you are reading. I don’t expect you to stop your misrepresentations, but I will call you on them when they are so deserving. I do seriously hope you take me up on the offer for a debate, because I am rather tired of your attempts to make me look like I don’t know what I am talking about. We both know I do know what I am talking about, and I am happy to put up. Are you?
When the above article was originally posted I made the statement that Hal Wegner is not a patent attorney. I received several inquiries about this, which prompted me to check once again. I did check the USPTO Roster of Attorneys and Agents at the time I wrote that statement, but must have misspelled his name, perhaps searching “wagner” and not finding him. As it turns out, and as hard as it might be for me to believe given some of what Hal writes, Wegner is indeed a patent attorney. See Screenshot of Hal Wegner’s USPTO Registration Information. Mea culpa and apologies.