Posts Tagged: "mark lemley interview"

LEMLEY: “I think Alice is a real sea change on the patentable subject matter issue. I’ve heard a lot of folks talk about how Alice doesn’t really use the word “software” so it doesn’t really change anything, but I honestly think that’s wishful thinking… I think a lot of patent lawyers had talked ourselves into thinking that the Court didn’t really mean it in Mayo when it talked about having to add a significant inventive component beyond the abstract idea or the natural process. But the court in Alice makes it clear that if your patent covers an implementation of an idea we want proof of an inventive concept beyond that idea before we’ll grant you a patent.

The way that many plaintiffs argue damages has always amazed me, and this shift to reasonable royalties at least somewhat vindicates my long held position. The law on lost profits makes it extremely difficult for a patentee to prevail, although historically lost profits has been where big awards have come. Still, reasonable royalties are guaranteed as a minimum for a victorious plaintiff. I have long believed that spending more time making a compelling reasonable royalty case and painstakingly establishing the reason a reasonable, yet high royalty would pay dividends. I suspect this is particularly true in a world where there are over 7 billion people and counting, and by some estimates the number of mobile phones is predicted to surpass the number of people on the planet by the end of 2014. There were over 1 billion smartphones purchased in 2013. The sheer numbers of devices that can infringe are staggering.

In part 1 of my interview with Mark Lemley we discussed whether the Supreme Court will take the i4i v. Microsoft case and address the presumption of validity, as well as what implications such a ruling would have on the value of previously acquired property rights. In part 2 of the interview, which appears below, we move past the presumption of validity to several other patent matters, including reverse pharma payments and In re Ciproflaxacin, the Stanford Patent Prize, patent misuse, patent trolls and the usual fun questions with a heavy emphasis on science fiction.

On Friday, September 17, 2010, I had the opportunity to chat with Professor Mark Lemley, who is the William H. Neukom Professor at Stanford Law School and partner in the San Francisco law firm Durie Tangri LLP. Lemley is well known both in the academic community and the practice community. In fact, he is one of only a select few that have managed to simultaneously have a stellar career both in academia and in private practice. I chat with Lemley via e-mail from time to time on various matters, and we have talked about an interview for some time. Then a draft of a amicus brief Lemly filed today with the United States Supreme Court arrived in my inbox and I knew this was the issue that would make for an excellent interview. Lemley is leading the charge of law professors who are asking the Supreme Court to review i4i v. Microsoft and address the presumption of validity enjoyed by an issued patent, pegging the presumption to those references considered by the patent examiner during prosecution.