Patent validity Once a patent application is filed, it is up to the PTO examiners and staff to determine its validity. According to statute, “a person shall be entitled to a patent unless …” he fails to show that the invention is non-obvious, useful, and novel, the three pillars of patent validity. The PTO has stated publicly that it sees applicants as “customers” whom they will help secure a patent. If the PTO refuses to grant a patent, the applicant can submit a modified application. Ultimately, the PTO’s decision can be appealed to the Supreme Court. It is easy to see how an over-burdened office that is inclined to grant patents, combined with the deference courts give to their validity, can cause real problems. Further, the inherent subjectivity of the el“The record companies could have improved their business model to take advantage of the new peer-to-peer technology, ements underlying a patent seems to invite but they relied only on copyright to control their fate. They refused to bend, and instead they broke.”—Chris Sprigman infringement and litigation. “If you have As the New York Times reported, Apple somebody who has initially applied for its “Siri” patent, the Jefferson, the nation’s first patent administrator (see iPhone’s voice recognition search engine, copied something, sidebar, opposite). in 2004, before either the iPhone or Siri somebody who “If nature has made any one thing less susceptible existed. The PTO rejected that application, is lying about than all others to exclusive property, it is the action of calling it “an obvious variation” on existing something, the thinking power called an idea, which an individual technology. Apple resubmitted the applimay exclusively possess as long as he keeps it to himcation ten times before the Patent Office somebody who has self,” Jefferson wrote, “but the moment it is divulged, it finally approved it in December 2011. Two broken a contract focuses itself into the possession of everyone, and the months later, in February 2012, Apple sued … lay juries can receiver can not dispossess himself of it. Its peculiar Samsung for infringement of that and relate to them.” character, too, is that no one possesses the less because other patents. every other possesses the whole of it. He who receives “A dispute over infringement of a patan idea from me, receives instruction himself without ent that the Patent Office spent 18 hours lessening mine; as he who lights his taper at mine, receives light working on will receive hundreds, if not thousands, of hours of without darkening me.” attention from experts, lawyers, and judges analyzing whether the Significant procedural hurdles stand in the way of proving such Patent Office made a good decision,” says Davis Polk litigation patents invalid. Samsung attempted to prove at trial that the Apple partner Chris Hockett ’85. “It comes under very intense scrutiny, patents were invalid on their face, but they failed because they distypically costing millions of dollars.” obeyed the court’s discovery orders and were not permitted to use “The examiners have a tough job,” says Angioletti. “They have the evidence they wanted at trial. limited resources, they look at an awful lot of applications, and you “They buried it in boxes of documents in a way that the magcan’t expect perfection, so there are plenty of patents that shouldn’t istrate running the discovery process said was unfair to Apple,” have issued in the first place. That’s something that we all have to says Chris Sprigman, Class of 1963 Research Professor in Honor of deal with.” Graham C. Lilly and Peter W. Low. “He banned Samsung from inThe Apple case highlights the intense debate surrounding what troducing at trial a lot of this invalidity evidence, and the trial judge types of innovation can and should receive patent protection. upheld the magistrate. Samsung’s case on invalidity was truncated Software applications are especially problematic, as they come close by that ruling. That was essentially their own fault.” to claiming ownership of an abstract “idea,” a notion toxic to Thomas
UVA Lawyer / Fall 2012 31