Comments on Petherbridge, et al., Unenforceability Discussant: Brian Love 7 th Annual Conference on Empirical Legal Studies November 9, 2012

Some Specific Methodological Points  Invalidity database: –Why exclude patents invalidated under 102? –Why exclude patents invalidated for claim indefiniteness from database of invalid patents?  Why not include district court inequitable conduct findings that were never appealed or were summarily affirmed? –Are virtually all findings appealed? Maybe, due to harsh outcome? –If so, does a doctrine that knocks out only ~ 3 patents per year have much of an impact at all?

Alternative Explanation: Hapless vs. Deceptive  Unenforceable patents look as predicted, but should they? –“intent to deceive” > gross negligence  Possible IC is ensnaring those who’re merely careless or not patent-savvy, but subjectively intentless ? –Are these low-hanging fruit hanging a little too low for comfort? –Might patentees who are scheming against the PTO to get a valuable patent at all cost also be savvy enough to cover their tracks? –For example, by disclosing extra (immaterial) references, or reducing the number of interactions with the PTO to reduce risk of that killer prior art being discovered, etc.

Alternative Explanation: Hapless v. Deceptive  Similarities between unlitigated patents and unenforceable patents (p. 19). –Similar propensity to disclose references –Both relatively unlikely to be from industries most affected by patent system: pharmaceuticals and computing  Both prosecuted by relatively non-savvy/disinterested patentees? –Rather than police mechanism for those who scheme to get a patent they foresee using... is IC a trap for those who ultimately litigate patents they didn’t expect ex ante to litigate?  Evidence that might tend to support or refute this: –Are unenforceable patents disproportionately prosecuted by small entities? By individuals? By entities with few existing patents? –Characteristics broken down by whether evidence of intent was direct or indirect? (more on this in 1 second)

Future Research Dramatic shift in law over the study period ( ):  Are we getting better or worse at singling out bad actors? –Compare characteristics pre/post Kingsdown ; pre/post Therasense  Possible results driven by older “sliding scale”-era cases? –Pre- Kingsdown, hapless conduct re very material info likely IC  True that inequitable conduct floods the PTO with immaterial references? –Has the number of disclosed refs changed pre/post Kingsdown ; pre/post Therasense

Future Research  Are we punishing the right entity? –How often is the patentee at the time of litigation the same one who prosecuted the patent? –How often does the misconduct appear to be on the part of the patentee acting alone; i.e., without the knowledge of her attorney/agent? (or vice versa) –How often are ethical proceedings or malpractice claims brought against the attorneys/agents involved?  Comparison to non-infringed patents? –Lengthy prosecution tends to increase claim complexity, decrease claim scope? –How many patents might have been found not infringed absent IC ruling?