Professor Mark Lemley wrote an article about the Myth of the sole inventor, to which we provided a critique, with an executive summary of the critique published here on IPWatchdog.com. On October 9, 2011, he wrote a response to our critique, and this is our reply.
In his October 9 response, Lemley asserts that our critique engaged in ad hominem attack. Our critique notes that he “neglected” to mention critical facts, that “his scholarship is unreliable,” and that “no reader should take his radical proposals for new patent law seriously.” We regret that Lemley regards this treatment of his treatment of sources as ad hominem attack on him. Our critique is directed to defects in his work.
We offer the following rebuttals.
1) We are puzzled that Lemley believes the “history of science” in two articles that do not identify actual claimed inventions, should be his sole authority on the discoveries covered in the articles that he proclaims as “inventions.” He asserts that such articles provide him with more “sophisticated understanding of those inventions.” This makes it all the more striking that his “more sophisticated” analysis takes leave of his patent law expertise, by failing to precisely ascertain that the cases described in such articles in fact involved invention and that they were simultaneous. Consulting such “history of science” literature is not the problem; neglecting to ascertain that it describes actual inventions is. It is this imprecise analysis and unreliable scholarship that leads Lemley to use assertions of simultaneous discoveries of the theory of evolution and simultaneous discoveries of oxygen, for his conclusion that “we should be denying patents on the vast majority of the most important inventions, since most of those seem to involve near-simultaneous invention” (Lemley 2011, p4).
2) We assembled detailed evidence for four of Lemley’s cases to show that his scholarship is unreliable and downright misleading. But Lemley mischaracterizes our critique. Lemley claims that we “agree” with his assessment of the invention history of two of these cases, Watt’s steam engine condenser and the automobile. Lemley’s response is simply incorrect.
In the steam engine case Lemley’s paper relies on page 6 of Miller, to the effect that another (not specified) patent cited against Watt in litigation “helps to substantiate the suggestion that others were experimenting along similar lines to Watt, and independent of him”. But this quote cannot be found on page 6 in Miller’s book or on any other page of Miller’s book. As we pointed out in our critique, even if there were such a patent cited against Watt in litigation (and there were some), the fact that the court upheld Watt’s patent in view of such an earlier patent only proves that Watt’s invention was a different invention when analyzed with the precision of the patent law, and therefore these were not simultaneous inventions. The mere assertion that another was working “along similar lines” is Lemley’s only ground for asserting the steam engine as a case of simultaneous invention. When one attributes a quote to a source that does not contain the quote and one makes legal assertions that forsake the precise analysis at the foundation of patent law, we call it unreliable scholarship.
We note that Lemley’s treatment of the automobile history discussed no evidence of simultaneous invention of any precisely-claimed invention. Now Lemley’s response characterizes the automobile case as that of simultaneous invention. We challenge Lemley to name specific instances of simultaneous, precisely-defined inventions in the early automobile field.
3) Lemley’s response introduces the new term “sequential improvement.” This suggests to us that he has now abandoned many of his claims of “simultaneous invention.” The word ‘sequential’ does not occur a single time in his article. We agree with Lemley’s new description that invention and innovation are often sequential, building in a series of related but different inventions: it is a normal feature of development and does not require a 108 page and 260 footnote article to establish it. Nor does it have radical policy consequences for the patent system which is well-adapted to this feature of real invention. But Lemley’s recommended policy would deny patents to second comers who contribute the key missing ingredient that unlocks an entire field. To Lemley’s credit, he recognizes the benefits of patent races and that the patent system leads to more innovation. But if that is true, Lemley does not explain why the patent system that we actually have is broken. His proposal to deny patents on “the most important inventions” and not grant more patents seems to flow from unreliable scholarship rather than a precise, reliable diagnosis of a problem.
4) Lemley’s response asks us to trust his scholarship on his “walk through” of 33 cases. We looked at only four of his 33 cases. We presented our results for all four. Perhaps the other 29 do not share the same flaws. However, since we showed such clear errors in four of four cases, we challenge Lemley to identify any statistical method that would suggest the other 29 are trustworthy. Would anybody do so in any other research setting? Assume that a scientist proclaims a general finding based on 33 experiments that the scientist says he conducted. If others independently repeated four of these experiments and they got four failures out of four, would they trust the scientist’s general finding? No; they would justifiably conclude that the scientist’s work is unreliable scholarship.
5) Lemley complains that we accuse him of not focusing on the “claims of the Boulton-Watt patent” and defends his failure to do so by asserting that “patents in the 18th century didn’t have any claims”. This much is correct but in only the narrowest semantic sense: English patents in the 18th century had obligatory clauses in the specification, sometimes referred to by the English courts as “articles,” that substantively delineated the claimed invention – identical in substance to ‘claims,’ differing in name only. Since 1734 English law mandated enrolment of a specification in which the patentee “particularly describe and ascertain the nature of the said invention” [See David J. Brennan, ‘The Evolution of English Patent Claims as Property Definers,’ 4 Intellectual Property Quarterly 361-399, (2005)]. Watt’s patent included such articles in enumerated form in the specification (which we called claims only in order to convey to today’s readers the substance without getting bogged down in vocabulary). Watt’s enumerated articles define Watt’s invention for the English courts. We are disturbed that Lemley’s response grasps at vocabulary straws while ignoring the substance of our critique. We find it breathtaking that neither his paper nor his response reflect any reading of the patent, its enumerated articles, or the litigation history. When Lemley writes that it is “bizarre to suggest that my article is ‘not a serious work of scholarship’ because I failed to focus on a patent claim that didn’t even exist,” we are left to observe that neither his paper nor his response reflect anything that does exist in Watt’s patent to distinguish it from work of others, who Lemley asserts “were experimenting along similar lines to Watt.” Whether the invention is ‘claimed’ in a series of modern enumerated claims prefaced by the modern phrase “I claim as my invention…”, or as in Watt’s case, by enumerated articles in the specification sufficient to be held valid in a court of law, Lemley’s work ignores Watt’s actual invention as claimed in the patent. We call ignoring the most important primary source “unreliable scholarship.”
6) What Lemley does not say in his response to our critique speaks volumes. To name a few important items that his response ignores, he takes no issue with our central point that real statistics on simultaneous invention (interferences) are the definitive evidence that simultaneous invention is very rare rather than commonplace. By silence, he seems to accept our view that obviousness law is the very instrument in patent law designed to prevent patent grants for near-simultaneous inventions. Most striking, by silence in his response and by failure to amend his paper, he appears intent on continuing to propagate errors. After our critique alerted Lemley to his gross errors – for example, that Fleming never patented penicillin, Lemley updated his July 2011 paper posted on SSRN with a new version on September 20, 2011. The new version maintains many of the errors and still implies that Fleming had “substantial patent rights” over penicillin and actually cites in support of the work a monograph that reveals that such rights never existed. His revised paper still leaps to the conclusion that his imaginary “substantial patent rights” were relevant to the ten-year delay before therapeutic penicillin began to be developed. From this imaginary “fact” his revised paper leaps again to yet another general attack on the patent system, to suggest that the “lesson” is “not encouraging for granting broad exclusivity.” Lemley’s refusal to correct his misleading treatment of an implied Fleming penicillin patent after having been alerted to the fact that no such patent ever existed, is troubling. Our hope is that Professor Lemley will correct this and other errors prior to publication of his article.