Tim Knight Talks to Mark Lemley About Patent Law

Mark Lemley

Professor Mark Lemley is the William H. Neukom Professor of Law at Stanford Law School, where he teaches intellectual property, computer and Internet law, patent law, and antitrust.  He is also the author of seven books, and 119 articles on his subjects of interest.

As if all this were not enough, Prof Lemley remains a practicing lawyer.  He has worked with Brown & Bain and Fish & Richardson in Silicon Valley, and with Keker & Van Nest in Sa Francisco.  He is a founding partner of Durie Tangri LLP, where he litigates and counsels clients in all areas of intellectual property, antitrust, and Internet law.  He has argued numerous court cases, including six Federal appellate cases.  Clients he has represented include Comcast, Genentech, Google, Grokster, Hummer Winblad, Impax, Intel, NetFlix, Palm and TiVo.

Yet, despite all of this practical experience, Lemley appears to be a controversial figure.  When his name comes up on certain popular blogs covering US patent law, it is not uncommonly met with abuse and derision by various commenters.  This perhaps says more about those making the comments than it does about Lemley, yet it is difficult to understand why he is widely-viewed as being ‘anti-patent’.  Certainly his academic papers address policy matters, rather than issues of day-to-day practice, and his proposals for reform are sometimes contentious and might be interpreted as ‘weakening’ the protection provided by the US patent system.  However, he writings do not appear to be generally anti-patent per se.  And when the strong protections provided under the system are being employed by patent trolls, leading to widespread loss of public confidence in, and support for, the system, maybe this is a discussion that needs to take place.

Perhaps the cause of Lemley’s unpopularity amongst some supporters of the US patent system is the fact that his academic writings are often cited by anti-patent activists as being supportive of their positions.  He is, for example, cited by Richard M. Stallman in his anti-IP article ‘Did You Say “Intellectual Property”? It's a Seductive Mirage’.  He was more recently quoted on opensource.com in a post entitled ‘Speaking of software patents’ which was, unsurprisingly, against software patents.

Lemley was also cited a number of times by retiring Supreme Court Justice Stevens in the Bilski decision to support various propositions which some have seen as generally anti-patent, and not applicable only to the ‘abstract’ Bilski claims.

We were therefore interested to see Lemley express his views in person during a recent interview, available in two parts on YouTube, with software-entrepreneur and market-watcher Tim Knight, and thought it worth sharing here.

PART I

In part one of the interview, Prof Lemley talks about:

1. patent reform;
2. some of the strengths and weaknesses of the US patent system;
3. patent trolls, patenting and defensive publishing; and
4. the role of IP rights in China.

PART II

In part two of the interview, Prof Lemley discusses:

1. forum shopping and the Eastern District of Texas;
2. challenges and benefits of being both an academic and a practicing lawyer; and
3. his advice – and warnings – for inventors.

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Before You Go…

Thank you for reading this article to the end – I hope you enjoyed it, and found it useful.  Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.

But now – for the first, and perhaps only, time – I am asking for a favour.  If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research.  My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection.  But I need data to train my models, and that is where you can potentially assist me.  If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.

The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months.  No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar.  You might even find it to be fun!

There is more information on the project website, at claimscopeproject.net.  In particular, you can read:

1. a detailed description of the study, its goals and benefits; and
2. instructions for the use of the online claim comparison application.

Thank you for considering this request!

Mark Summerfield

Tags: Law reform, Patent law, Trolls, US