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2017 Ⓒ Boston Patent Law Association
President's Message
We find ourselves on the other side of the autumnal equinox, with our Annual Meeting looming on the horizon. I look forward to seeing our members for BPLA’s business meeting on December 7th, where we will recap the accomplishments of a year whose success has already been evidenced by the frequency with which we all gathered for case law committee meetings and other committee and Association events.
I am deeply grateful for the diligence and patience of so many who contributed in countless ways to our lively events and informative programming throughout 2017. Our President Elect, Rory Pheiffer, worked tirelessly with our committee co-chairs, who enriched these meetings with relevant content. Our Activities Chair, Emily Whelan, pulled together our signature events this year, such as the celebration of the Honorable Arthur J. Gajarsa and the annual PCT Seminar—which, for the first time, was combined with a primer on the Madrid Protocol—and she remains busy working on the logistics of our Annual Meeting. Our Board Member Dr. Jen Sieczkiewicz worked to gather an industry committee to discuss issues of import to its constituents. Michael McGurk chaired the Writing Competition and has only recently come up for air, having reviewed many an essay. Deirdre Sanders worked tirelessly as Editor-in-Chief of our Newsletter, issuing many reminders about deadlines for this (and prior) newsletter publications. Michael Bergman served as BPLA’s Treasurer and Dan Young as our Secretary, two roles that require much work to keep our Association solvent and properly accountable to our membership. To all of you, I extend my thanks, both for your hard work and your friendship.
We were all treated to a special appearance recently. The Honorable Michelle K. Lee, former Under Secretary of Commerce for Intellectual Property and Director of the USPTO, made time to speak to our membership here in Boston. I for one thoroughly enjoyed hosting the Fireside Chat with former Director Lee on November 9. Her detailed responses to questions regarding her dual roles at the USPTO and Department of Commerce, her work to ensure patent quality and facilitate the rise in popularity of the AIA Post Grant proceedings, and her thoughts about diversity were riveting, as was the suggested guidance she had to share for Andrei Iancu, President Trump’s nominee to be the USPTO Director.
I remain humbled to have had the opportunity to serve as President of the BPLA. In keeping with an effort to make the President’s address informative and include a touch of the rich history we have in our midst—in the form of Past-Presidents or other giants of IP law in our community—I want to recount my conversation with one of my dearest mentors: Jim Lampert.
Mr. Lampert came upon patent law much by chance. While pursuing his undergraduate degree at MIT, he participated in a CO-OP course that allowed him to spend eight months working in industry at Linde Air Products in New Jersey as a fledgling engineer. Coincidentally, he happened to sit down the hall from a patent practitioner, conversations with whom sparked his interest in patent law. Mr. Lampert speculates whether he would have stayed in engineering if he had gone anywhere other than MIT – too many very smart people, and had not been introduced to patents at Linde in 1960.
And so, toward the end of his undergraduate studies Mr. Lampert considered two non-engineering career paths as he decided between Business School and Law School. The Business School application asked more than a dozen -18 essay questions, while the Law School application essentially boiled down to three 3x5 index cards. His choice was in the cards, as it were, and he went directly to Harvard Law School.
At this time, the Harvard catalog said that it frowned on narrow undergraduate educations such as engineering. Mr. Lampert’s view is that Harvard was wrong, and that a science and engineering background can provide one of the best foundations on which to build a legal career.
Upon graduating, he was faced with two choices about where to begin his practice of law: Hale and Dorr (now WilmerHale) or Fish, Richardson & Neave (now known as simply Fish and Richardson). At the time, there was no technical or IP group at Hale and Dorr, so Mr. Lampert began his career at Fish, where he practiced for 21 years from 1964-1985, simultaneously serving as a captain in the US Army Corps of Engineers from 1964 to 1966.
While at Fish, Mr. Lampert found a mentor in Bill Rymer who knew the Supreme Court patent jurisprudence upside down, and he was, as Jim put it, “worse than I am about citing it!” Those of us who have spent time with Jim know that has to be some feat as we know that Jim can surprise one with a citation to a 1940 and a 2010 case that stand for the same proposition. We now know the genesis of this skill. Mr. Rymer provided Mr. Lampert with the structure of the patent law on which Jim framed his understanding and that ultimately shaped his patent practice. Additionally, it was Mr. Rymer who introduced Mr. Lampert to teaching, a vocation that Mr. Lampert pursued from 1972-87 when he began teaching a Patent, Trademark and Copyright course at BU Law School. Those of us who have been lucky to work with Jim also know that he has never stopped teaching – since retirement he has been teaching at MIT, even though he formally stopped doing so in a law school environment when he began to build in earnest the IP department at the then Hale and Dorr law firm in 1987.
By 1985, Mr. Lampert had come to realize that patents were only part of a business; and saw a need to focus on a client’s basic business goal, to sell products or services and make money. Gutenberg for example is credited with the world’s greatest invention, the printing press, and he did not have IP protection. In Jim’s view, the question is not how many patents a company has, but on how the company can use its IP as a tool to exploit market opportunities and increase its value to potential investors and buyers. Mr. Lampert sees patents as useful when they cover not only what competitors might do and not only the patentee’s business. One of his central themes is that patent practitioners need to focus on a client’s goals and business, and figure out what IP can, and cannot, accomplish for it.
With this analysis in mind, Mr. Lampert determined that he needed to be where he could build what he dubbed the three-legged stool: a firm with patent, corporate, and litigation expertise. This brought Mr. Lampert to Hale and Dorr, where he worked to establish the one element he thought the firm was missing -- IP. The move to Hale and Dorr brought an end to his formal teaching career in 1987, as the work of building and chairing the new department began to consume more of his time. Mr. Lampert served as department chair until 2006 and retired from WilmerHale in 2012. He remains an active member of the legal community; you may have seen him at any number of our BPLA events, particularly more recently at the Case Law Committee meetings.
Mr. Lampert cites the creation of the United States Court of Appeals for the Federal Circuit (CAFC) as the one of the major developments during his years of practice. He recounts that establishing a single Court of Appeals for all patent cases was fueled by such things as Justice Jackson’s oft-misunderstood statement that “the only valid patent is one which this Court has not been able to get its hands on,” and the Temporary National Economic Committee’s conclusion that patents were one of the causes of the great depression.
Mr. Lampert noted that, with the CAFC in place, companies became more likely to pursue litigation, and that with that new interest jury trials came into vogue. As Mr. Lampert saw it, before 1982 patent practitioners rarely asked for a jury trial, and few had much jury trial experience. A typical practice was to put your case in before a trial judge, and make your record for appeal. Mr. Lampert believes that the move to jury trials is the major reason that many general practice firms have gotten into the patent business.
Mr. Lampert also pointed to the CAFC’s, and the Supreme Court’s recent, impact on the interpretation of the law as a major change agent. Mr. Lampert notes that one only needs to consider KSR International Co. v. Teleflex Inc. and State Street Bank and Trust Co. v. Signature Financial Group, Inc. decisions to understand his thesis that Federal Circuit and the Supreme Court seem to approach patent law differently – one seeking to strengthen patents by ensuring that every inventor who is entitled to patent gets one, with the other looking more at the balance between a patentee and the public somewhat differently and believing it important that patents are not granted to those who are not entitled to them.
Mr. Lampert recalled that many practitioners had hoped that the Patent Act of 1952 would lower the standard for invention; but Graham v. Deere said that it did not. In the years after 1982, it seems to Jim that the Federal Circuit made it more difficult for a challenger to invalidate a patent as “obvious,” for example using the TSM test to reduce “improper hindsight.” However, KSR’s rejection of TSM resulted in a change in the Federal Circuit’s tone with regards to obviousness, especially in the mechanical engineering arts. Mr. Lampert believes that after 35 years of the CAFC and 10 years after KSR, we now have a standard closer to what the Supreme Court said over the years before the CAFC came into being, and less challenging to an accused infringer than TSM. But, to Mr. Lampert, the Federal Circuit’s State Street decision made an even bigger impact on patent practice. State Street’s patent covered a computer that did what the Internal Revenue Service required to avoiding taxes on a partnership. Before State Street, the understanding was that patents were awarded for technological inventions. The Federal Circuit expanded patent potential to business methods that produced “a useful, concrete and tangible result.” With this new standard came controversy, starting with Justices Breyer, Stevens and Souter’s contention that the Supreme “Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary;” and leading to Alice and the CAFC’s and the district courts on-going struggled to define patentable subject matter.
When we were talking about this, Jim asked me: Why is this so hard? Alice says the first step is to decide if the claim involves an “abstract idea.” But even if it does, doesn’t the second step say that the claim is patentable if, as a whole, it is new and not obvious even if, as the Supreme Court said in Parker v. Flook, you treat the “abstract idea” you identified in step one as prior art? We all know that many patent claims are for unobvious combinations of individually old elements.
When asked about the keys to success in this business, Mr. Lampert believes that depends on one’s definition of success. The options range from becoming a partner at a patent or general practice firm; achieving academic success teaching patent law; and serving as in-house counsel for a business. Each can generate its own form of success.
He believes the biggest challenge facing patent lawyers today is how much the number of hours they are expected to bill has increased. He fears that young lawyers are too often told “go find a case that says X,” focus on the sand and not the beach, and have no time to gain an overall understanding of the relevant law.
No matter what type of practice one plans to pursue, Mr. Lampert recommends making time for case law group discussions. You may in the end be stuck with a case that says “X,” but it is important to know whether, and why, that case might be wrong.
Though he sees how cluttered their lives are, Mr. Lampert recommends that young patent lawyers find time to sit by a fireplace and read Robinson On Patents, which despite being more than 125 years old is still one of the most influential and frequently cited U.S. patent treatises. Be warned, Robinson On Patents has three volumes!
Volume 48, Issue 4
Community Calendar Read more >
Table of Contents
Message from the President Monica Grewal
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The Amendment of Trademark Law in Indonesia
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< Back
Deleted Teachings and Incorporation by Reference
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Save the Date: BPLA Annual Meeting
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The Constitutionality of Inter Partes Review Is Before the Supreme Court
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Invented Here! 2017 Recognition Event
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BPLA Committee Report
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Members On The Move
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The Federal Circuit Confirms a Return to Restrictive Patent Venue Requirements
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Officers and Board of Governors
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In memoriam of Stanley Abkowitz
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What Reviving the TTIP Agreement Could Mean for the Future of Geographical Indications
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The use of Applicant Admitted Prior Art in IPR Petitions
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Situations When Written Opinions of Counsel Could Spare You a Patent-Related Headache
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Job Listings
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Community Calendar
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Save the Date: Case Law Committee Meeting
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Message from the Editor-in-Chief
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Proposed BPLA By-law Amendment
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Minutes of the 2016 BPLA Annual Meeting
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The BPLA Files Amicus Curiae Brief in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al.
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