Amicus Curiae Brief — Aktiebolag v. First Quality Baby Prods., LLC, 136 S. Ct. 1824 (2016) (No. 15-927)

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Fe ee ee

Supreme Court, U.S.

FILED

_No. 15-927 SEP ~ 7 2016

OFFICE OF THE CLERK

IN THE

Supreme Court of the United States

SCA HYGIENE PRODUCTS AKTIEBOLAG

AND SCA PERSONAL CARE, INC.,

Petitioners,

FIRST QUALITY BABY PRODUCTS, LLC, FIRST

QUALITY HYGENIC, INC., FIRST QUALITY PRODUCTS,

INC., AND FIRST QUALITY RETAIL SERVICES, LLC,

Respondents.

ON WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF OF THE ELECTRONIC FRONTIER

FOUNDATION AND PUBLIC KNOWLEDGE AS

AMICI CURIAE IN SUPPORT OF RESPONDENTS

CHARLES DUAN VERA RANIERI

PUBLIC KNOWLEDGE Counsel of Record

1818 N Street NW, Suite 410 E,:LECTRONIC FRONTIER

Washington, DC 20036 FOUNDATION

(202) 861-0020 815 Eddy Street

cduan@publicknowledge.org San Francisco, CA 94109

(415) 436-9333

vera@eff.org

Counsel for amici curiae

TABLE OF CONTENTS

TABLE OF AUTHORITIES ek be © eke

INTEREST OF AMICICURIAE ......

SUMMARY OF ARGUMENT

ARGUMENT

I. Laches in Patent Cases Is Necessary to Promote

Fairness in Validity Determinations..... ....

Evidence of Invalidity Is Susceptible to Loss

After Delay

1. Anticipation

EEE

3. Insufficiency of the Specification

Cases and Business Practices Show the Effect

of Delay on Invalidity Defenses .

Internet-Related Prior Art Is Particularly Sen-

sitive to Loss overTime.. .........

The Public at Large Is ened When Laches

Frustrates Proof of Invalidity

II. Patent-Specific Concerns of Invalidity Evidence

Make Petrella Inapplicable

In Stark Contrast to Patent Validity, Copyright

Validity Is Rarely Contested

Unlike Copyright Owners, Patentees Do Not

Generally Require Fvidence — to Loss

over Time ...

III. Section 286 Does Not Deter » ethan Delay

CONCLUSION

(1)

. 16

TABLE OF AUTHORITIES

CASES

A.C. Aukerman Co. v. R.L. Chaides Construction Co.,

960 F.2d 1020 (Fed. Cir. 1992) ......... —

Alice Corp. Pty. Ltd. v. CLS Bank International,

134 S. Ct. 2347 (2014) oars « een

Allen Engineering Corp. v. Bartell Industries, Inc.,

299 F:3d 12336 (Fed. Cir. 2002) Te , 26

Amazon.com, Inc. v. Barnesandnobdle.com, Inc.,

73 F. Supp. 2d 1228 (W.D. Wash. 1999) 17

Ariad Pharmaceuticals, Inc. v. Eli Liliy & Co.,

598 F.3d 1236 (Fed. Cir.2010)(enbanc)... . ae

Art Attacks Inc, LLC v. MGA Entertainment Inc.,

581 F.3d 1128 (9th Cir. 2009) ; - - 26

Arthur Andersen LLP v. United States,

544 U.S. 696 (2005) 13

Bayer, In re,

568 F.2d 1357 (C.C.P.A. 1978) -

Blonder-Tongue Laboratories, Inc.

v. University of Illinois Foundation,

402 U.S. 313 (1971). . : 21

Blue Calypso, LLC v. Groupon, Inc.,

815 F.3d 1331 (Fed. Cir. 2016) dean ; 7

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

489 U.S. 141 (1989) ; 22

Campbell v. Acuff-Rose Music, Inc.,

510 U.S. 569 (1994) 23-24

Cardinal Chemical Co. v. Morton International, Inc.,

508 U.S. 83 (1993) ; 21

(it)

(111)

Carnegie-Mellon University

v. Marvell Technology Group,

807 F.3d 1283 (Fed. Cir. 2015) pee he . 29

Carnegie-Mellon University

v. Marvell Technology Group,

No. 09-CV-290, 2014 WL 183212 (W.D. Penn. Jan. 14,

2014) ; oe ek 29

Constant v. Advanced Micro-Devices, Inc.,

848 F.2d 1560 (Fed. Cir. 1988) <r 7

Cronyn, In re,

890 F'2d 11568 (Fed.Cir.1989) ......... 7-8

Cyclobenzaprine Hydrochloride Extended -Release Cap-

sule Patent Litigation, In re,

676 F.3d 1063 (Fed. Cir.2012) .... ... ...... 10

Delano Farms Co.

v. California Table Grape Commission,

778 F.3d 1243 (Fed. Cir. 2015) , ; eas 6

Dembiczak, In re,

175 F.3d 994 (Fed. Cir. 1999) > ae

Egbert v. Lippmann,

104 U.S. 333 (1881) ... 6

Feist Publications, Inc. ». Rural cei smpesimetunan

499 US.340(1991).. .... ... . 25

Galliher v. Cadwell,

145 U.S. 368(1892) .. . .. . 22

Graham v. James,

144 F.3d 229 (2d Cir. 1998) . .. We .; wero

Graham v. John Deere Co.,

383 U.S. 1 (1966) aa iva ees 9, 27

Hall, In re,

781 F.2d 897 (Fed. Cir. 1986) , se a »

(11)

Halo Electronics, Inc. v. Pulae Electronics, Inc.,

136 S. Ct. 1923 (2016) oe

Hamilton Beach Brands, Inc.

v. Sunbeam Products, Inc.,

726 F.3d 1370 (Fed. Cir. 2013)

Holmberg v. Armbrecht,

327 U.S. 392 (1946)

i4i LP v. Microsoft Corp.,

598 F.3d 831 (Fed. Cir.2010) ......

141 LP v. Microsoft Corp.,

670 F. Supp. 2d 568 (E.D. Tex. 2009) .

Kendall v. Winsor,

62 U.S. 322 (1858)

Klopfenstein, In re,

380 F.3d 1245 (Fed. Cir. 2004)

KSR International Co. v. Teleflex Inc.,

550 U.S. 398 (2007) ;

Lamps Plua, Inc. v. Seattle Lighting Fixture Co.,

345 F.3d 1140 (9th Cir. 2003)

Lear, Inc. v. Adkins,

395 U.S. 653 (1969)

Lister, In re,

583 F.3d 1307 (Fed. Cir. 2009)

Mahurkar v. C._R. Bard, Inc.,

79 F.ad 1572 (Fed. Cir. 1996)

1, 26

. 7,12-14,17

. 30

Massachusetts Institute of Technology v. AB Fortia,

774 F.2d 1104 (Fed. Cir. 1985)

Mazer v. Stein,

347 U.S. 201 (1954)

(v)

Medicines Co. v. Hospira, Inc.,

No. 14-1469, -1504, 2016 WL 3670000 (Fed. Cir. July

11, 2016) (en banc) . 6

Medtronic, Inc. v. Miroweki Family Ventures, LLC,

1348. Ct. 843 (2014)... ... ce < _—

Merck & Cie v. Watson Laboratories, Inc.,

822 F.3d 1347 (Fed. Cir.2016) ...... 6

Micron Technology, Inc. v. Rambus Inc.,

645 F.3d 1311 (Fed. Cir. 2011) _——

Microsoft Corp. v. i41 LP,

131 S. Ct. 2238 (2011) 7, 11-12, 25

Mintz v. Dietz & Watson, Inc.,

679 F.3d 1372 (Fed. Cir. 2012) ;, 27

Motion Picture Patents Co.

v. Universal Film Manufacturing Co.,

243 U.S. 602(1917). . bes 22

National Railroad Passenger Corp. v. ili

536 U.S. 101 (2002) 3

Nautilus, Inc. v. Biosig Instruments, Inc.,

134 S. Ct. 2120 (2014) _~ : 1,9, 11

Octane Fitness, LLC v. Icon Health & Fitness, Inc.,

134 S. Ct. 1749 (2014) . ; ‘ae oe)

Odetics, Inc. v. Storage Technology Corp.,

116 F.3d 1497 (Fed. Cir. 1997) (unpub. tbl.op.)... .12

Odetics, Inc. v. Storage Technology Corp.,

919 F. Supp. 911 (E.D. Va. 1996). .. « «12-18

Petrella v. Metro-Goldwyn-Mayer, Inc.,

134 S. Ct. 1962 (2014) 4, 23, 25-26, 28

Pfaff v. Wells Electronics, Inc.,

625 U.S.55(1998) ... . ; . 6

(11)

Pope Manufacturing Co. v. Gormully,

144 US. 224 (1892) ;

Precision Instrument Manufacturing Co.

v. Automotive Maintenance Machinery Co.,

324 U.S. 806 (1945). . <<

Sid & Marty Krofft Television Productions, Inc.

v. McDonald's Corp.,

562 F.2d 1157 (9th Cir. 1977)

Suffolk Technologies, LLC v. AOL Inc.,

752 F.3d 1358 (Fed. Cir. 2014)

Tesco Corp. v. National Oilwell Varco, LP,

804 F.3d 1367 (Fed. Cir. 2015)

Topliff v. Topliff,

145 U.S. 156 (1892) .

Trans Web, LLC v. 3M Innovative Properties Co.,

812 F.3d 1295 (Fed. Cir. 2016) . . ,

Unwired Planet, LLC v. Apple Inc.,

106 F. Supp. 3d 1083 (N.D. Cal. 2015)

Unwired Planet, LLC v. Apple Inc.,

No. 15-1725, 2016 WL 3947839 (Fed. Cir. July 22, 2016)

Vas-Cath Inc. v. Mahurkar,

935 F-2d 1555 (Fed. Cir. 1991)

VirnetX, Inc. v. Cisco Syatems, Inc.,

767 F.3d 1308 (Fed. Cir. 2014)

Voter Verified, Inc. v. Premier Election Solutions, Inc.,

698 F.3d 1374 (Fed. Cir. 2012) :

Wanda, In re,

858 F.2d 731 (Fed. Cir. 1988)

W.L. Gore & Associates, Inc. v. Garlock, Inc.,

721 F.2d 1540 (Fed. Cir. 1983)

. 21

(11)

Woodland Trust v. Flowertree Nursery Inc.,

148 F.3d 1368 (Fed. Cir. 1998) 7

STATUTES AND REGULATION

17 USC. § 410(c) ' . 25

34C.F.R.§99.31(ax6MiIiXB) .. . . ... —

35 U.S.C. § 102 . 7, 24

——§102(aXl) ... , ; .. 6&6

—— § 108 pie 8-9, 24

——§112 . , vee .. 10-11

——— § 112(a) - , —

——§112o)_... s 0) Secees } 2h eee

SEE ‘csees vvxeevseses aa

—— § 2 —

——— § 282(b\(2) . 2

—— § 284 : , . 26

—— § 286 . 27-29

—— § 311(b) ' : ~e ene

——$§3l(e) ln ee es —

America Invents Act, Pub. L. No. 112-29, 125 Stat. 284

(2011) . , : rer : . 6,9

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INTEREST OF AMICI CURIAE

The Electronic Frontier Foundation’ (“EFF”) is a

nonprofit civil liberties organization that has worked for

over 25 years to protect consumer interests, innovation,

and free expression in the digital world. EFF and its

more than 26,000 dues-paying members have a strong in-

terest in helping the courts ensure that intellectual prop-

erty law serves the public interest.

Public Knowledge is a non-profit organization that

is dedicated to preserving the openness of the Internet

and the public’s access to knowledge, promoting creativ-

ity through balanced intellectual property rights, and up-

holding and protecting the rights of consumers to use in-

novative technology lawfully. Public Knowledge advo-

cates on behalf of the public interest for a balanced patent

system, particularly with respect to new and emerging

technologies.

The Electronic Frontier Foundation and Public

Knowledge have previously served as amici in patent

cases. E..g., Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S.

Ct. 1923 (2016); Alice Corp. Pty. Ltd. v. CLS Bank Int'l,

134 S. Ct. 2347 (2014); Nautilus, Inc. v. Biosig Instru-

ments, Inc., 1348. Ct. 2120 (2014); Octane Fitness, LLC v.

Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014).

‘Pursuant to Supreme Court Rule 37.3(a), all parties received ap-

propriate notice of and consented to the filing of this brief. Pursuant

to Rule 37.6, no counsel for a party authored this brief in whole or

in part, and no counsel or party made a monetary contribution in-

tended to fund the preparation or submission of the brief. No person

or entity, other than amici, their members, or their counsel, made a

monetary contribution to the preparation or submission of this brief.

]

SUMMARY OF ARGUMENT

In the library of this Court sits a small volume, a gift to

the Honorable Learned Hand, that opens with a proposi-

tion: “The element of time . . . pervades the entire patent

law structure.” Joseph V. Meigs, Time: The Essence of

Patent Law vii (1940). There can be little doubt of this

truth. A patent is awarded to the applicant who is first

in time, and no patent may issue on an invention that

was earlier in time patented, described, or known to the

public. In advancing the inventions of the future, patent

law constantly relies on evidence of the past to determine

which patents are valid.

That temporal dimension is why patent law should

retain the equitable doctrine that encourages timeliness.

Laches is and ought to be available in patent infringement

cases because it helps to ensure that patent validity, a

concern central to the patent system and highly sensitive

to time delay, is fully and fairly adjudicated. In patent

law as in others, the doctrine of laches serves to abate

the possibility that the passage of time may obscure evi-

dence of invalidity. The fact that “testimonial evidence is

frequently critical to invalidity defenses” supported the

Federal Circuit’s retention of laches in A.C. Aukerman

Co. v. R.L. Chaides Construction Co., 960 F:2d 1020, 1035

(Fed. Cir. 1992), and it counsels strongly toward retaining

the defense now.

1. In patent infringement actions, evidentiary prej-

udice created by the passage of time disproportionately

harms those accused of infringement. Patent invalidation

often depends on fact- and time-specific evidence such as

what products were available as of a particular date, the

time and conditions of an article’s publication, and know!-

edge at a given point in the past—evidence that is easily

lost or forgotten over time. In case after case, including

cases that have come before this Court, those accused

of patent infringement have proffered evidence of inva-

lidity, but the difficulty in procuring facts from the past

prevented those defendants from meeting the clear-and-

convincing evidence burden required for patent invalida-

tion.

Internet architecture and software industry norms

have exacerbated the rate of loss of technological prior

art. Ordinary fast-paced software industry practices are

not conducive to the meticulous documentation of prior

invention that the patent system demands. Furthermore,

the Internet is notorious for losing information over time,

heightening the likelihood of loss of evidence needed to-

day.

When time delay frustrates a charge of patent invalid-

ity, the injury is not merely to the party to the lawsuit—

the injury falls upon the entire public, who now must

pay licensing fees that may not have been required if the

patent had been timely adjudicated and invalidated.

Delay in bringing suit over patent infringement thus

creates a unique harm: it fades away evidence that might

otherwise have invalidated the patent at issue. Laches in

patent cases is necessary to avoid this possibility to the

largest extent possible.

Not all delay is due to laches, and many of the exam-

ples of the harms of delay described below cannot be ad-

dressed by laches. But laches has never been intended

to cure all the harms of delay; the doctrine’s more mod-

est raison d’étre has always been to discourage a limited

class of inequitable and prejudicial delays. See, e.g., Nat'l

R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 122 (2002).

That the laches defense will at least in some cases deter

the serious harms described herein is reason enough to

preserve that defense.

2. Besides pointing to strong reasons why laches

serves necessary purposes of the patent system, inva-

lidity evidence concerns render the copyright precedent,

Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962

(2014), inapplicable to the patent context. First, invalid-

ity is rarely disputed in copyright cases; Petrella had lit-

tle occasion to contemplate whether laches was needed to

facilitate copyright invalidity defenses. By contrast, in-

validity is often the central focus of patent cases; insofar

as the availability of laches could strongly affect patent

invalidity outcomes, considerations outside the scope of

Petrella must be considered here.

Second, Petrella relied in part on a view that copy-

right claimants and defendants would be equally harmed

by delay, rendering the incentive effect of laches unnec-

essary. But patent law provides a strikingly different

context. While the nature of invalidity defenses ren-

ders alleged patent infringers greatly prejudiced by de-

lay, patent owners rarely need to offer evidence of the

past. A prima facie case of patent infringement can be

made by comparing information in the four corners of a

patent to a product on a store shelf; little to no histori-

cal investigation is needed. This asymmetry in eviden-

tiary burdens demands a different result in application of

laches in the patent context.

ARGUMENT

I. LACHES IN PATENT CASES Is NECESSARY TO

PROMOTE FAIRNESS IN VALIDITY DETERMINA-

TIONS

By encouraging timeliness in bringing patent infringe-

ment cases, laches promotes fairness in patent validity de-

terminations. Invalidity defenses often rely on evidence

that is attenuated or lost over time. Undue delay thus

makes invalidity harder to prove, unfairly harming both

the accused infringer and the public at large. By deter-

ring undue delay, laches mitigates these harms.

A. EVIDENCE OF INVALIDITY Is SUSCEPTIBLE TO

Loss AFTER DELAY

Those accused of infringement regularly raise the de-

fense of patent invalidity along three avenues: anticipa-

tion by prior art, obviousness over prior art, or insuffi-

cient description or enablement. The effect of delay on ev-

idence of each of these avenues to invalidity is described

in turn.

1. ANTICIPATION

A patent is invalid as anticipated by prior art if its

invention was “described in a printed publication, or in

public use, on sale, or otherwise available to the public”

before the relevant filing date of the patent. 35 U.S.C.

§ 102(a)(1).2 Because of the backward-looking nature of

this defense, laches can hinder proof of anticipation.

?Patents based on applications filed prior to March 16, 2013 are

subject to a different anticipation requirement, though similar in

relevant substance. See America Invents Act, Pub. L. No. 112-29,

sec. 3(n\1), 125 Stat. 284, (2011).

1. For example, a key defense against improperly

granted patents is showing that the invention was “in

public use, on sale, or otherwise available to the public.”

Id. In just the last few years, the Federal Circuit has

considered numerous cases involving potentially invali-

dating public use, including a recent significant en banc

case; district courts have heard many more.’ Thus, con-

trary to the suggestions of one other amicus,‘ invalidity

disputes over public use are a critical and frequent occur-

rence in patent law.

Proving invalidity based on prior public use is much

more difficult after delay. The defense often turns on ex-

acting showings of the precise times of invention. See,

e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998) (re-

quiring evidence of when invention is “ready for patent-

ing”); Egbert v. Lippmann, 104 U.S. 333, 336-37 (1881)

(relying on time when garment was first worn in public as

evidence of public use). That evidence, by definition not

"See, e.g., Meda. Co. v. Hospira, Inc., No. 14-1469, -1504, 2016 WL

3670000, at *& (Fed. Cir. July 11, 2016) (en banc); Merck & Cie v. Wat-

nom Lahe., Inc., R22 F.3d 1347, 1361-52 (Fed. Cir. 2016); Trans Web,

LLC v. 3M Innovative Props. Co., 812 F.3d 1296, 1299, 1301-03 (Fed.

Cir. 2016) (“The primary issues are whether sufficient corroborat-

ing evidence exists to support the finding of prior public use ");

Delano Farms Co. v. Cal. Table Grape Comm'n, 778 F.3d 1243, 1247-

48 (Fed. Cir. 2015); Hamilton Beach Brands, Inc. v. Sunbeam Prods.,

Inc., 726 F.3d 1370, 1375-79 (Fed. Cir. 2013); Unwired Planet, LLC v.

Apple Inc., 106 F. Supp. 3d 1083, 1099-100 (N.D. Cal. 2015), vacated

on other grounds, No. 15-1725, 2016 WL 3947839 (Fed. Cir. July 22,

2016); see also Tesco Corp. v. Nat'l Oilwell Varco, LP, 804 F.3d 1367,

1369-70 (Fed. Cir. 2015) (relating to invalidity determination based

on on-sale bar).

‘See ABA Br. 14 & n.15, July 22, 2016. Even if ABA were correct

that invalidity disputes often turn on printed publications, time delay

remains a concern in light of evidence necessary for that prior art as

well. See Section 1.A.1(2) infra p. 7.

recorded in printed publications, is not the type typically

archived by libraries and is thus notoriously susceptible

to loss or deterioration over time. Indeed, the Federal

Circuit is so concerned with quality of public use evidence

that it demands a “heavy burden when establishing prior

public knowledge and use based on long-past events,”

and requires corroboration of oral testimony. Woodland

Trust v. Flowertree Nursery Inc., 148 F:3d 1368, 1373

(Fed. Cir. 1998).° This “burden” was justified by the Fed-

eral Circuit, in part, based on its belief that “in modern

times, by the ubiquitous paper trail of virtually all com-

mercial activity” would mean that it would be “rare in-

deed that some physical record . . . does not exist.” Jd.

Without laches, however, that “heavy burden” of corrob-

oration becomes increasingly heavy, and eventually, es-

pecially “in modern times,” likely insurmountable. See

Section I.B infra p. 11.

2. Even patent invalidation based on printed publi-

cations is made more difficult after delay. In order for

a printed publication to serve as prior art under § 102,

the proponent must prove that the publication was “suffi-

ciently accessible to the public interested in the art.” Jn

re Cronyn, 890 F:2d 1158, 1160 (Fed. Cir. 1989) (quoting

Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,

1568 (Fed. Cir. 1988)). That may involve showing the time

that the relevant document was indexed for searching,

see, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F:3d

1331, 1349-50 (Fed. Cir. 2016), or demonstrating that the

forum or journal of publication was of sufficient renown

’The Federal Circuit's corroboration requirement is asymmetric:

patent challengers seeking invalidity must provide corroboration,

but patentees rebutting invalidity charges need not. See isi LP v.

Microsoft Corp., 598 F.3d 831, 847 (Fed. Cir. 2010), aff'd, 131 S. Ct.

2238 (2011).

to those in the relevant technical field, see, e.g., Voter Ver-

ified, Inc. v. Premier Election Solutions, Inc., 698 F.3d

1374, 1380-81 (Fed. Cir. 2012).

Evidence of whether a document was “sufficiently ac-

cessible” is easy to lose over time. At least three cases

have turned on detailed facts regarding whether proce-

dures for indexing and cataloging library holdings meant

that a dissertation qualified as prior art. See Cronyn,

890 F.2d at 1161; Jn re Hall, 781 F-2d 897, 899 (Fed. Cir.

1986); In re Bayer, 568 F.2d 1357, 1361 (C.C.P.A. 1978).

These are facts that are unlikely to be retained. Indeed,

evidence of library procedures in two of these cases de-

pended on the memory and testimony of librarians. See

Hall, 781 F.2d at 897-98; Bayer, 568 F.2d at 1358.

In other cases, a document’s status as a printed publi-

cation has depended on such facts as the number of people

attending a conference, Mass. Inst. of Tech. v. AB Fortia,

774 F.2d 1104, 1109 (Fed. Cir. 1985), professional norms

and expectations about copying or taking notes when the

document is presented, see In re Klopfenstein, 380 F.3d

1345, 1351 (Fed. Cir. 2004), and the technical operations of

online database services at a particular point in time, see

In re Lister, 583 F.3d 1307, 1317 (Fed. Cir. 2009). These

are all ephemeral facts, often left unrecorded and likely

to escape memory.

Thus, for both public use and printed publications,

time delay can erase necessary evidence of what might

have been a strong case for invalidity by anticipation.

2. OBVIOUSNESS

Time delay also interferes with proving patent invalid-

ity for obviousness under 35 U.S.C. § 103. Determination

of obviousness of patent claims is based on a four-part

inquiry into (1) “the scope and content of the prior art,”

(2) “differences between the prior art and the claims at is-

sue,” (3) “the level of ordinary skill in the pertinent art,”

and (4) “secondary considerations” that may serve as “in-

dicia of obviousness or nonobviousness.” Graham v. John

Deere Co., 383 U.S. 1, 17-18 (1966).

Because obviousness turns on prior art, time delay

hinders proof of obviousness in all the ways that delay hin-

ders proof of anticipation, as described above. And delay

attenuates evidence of a further element of obviousness,

namely the determination of the “level of ordinary skill in

the pertinent art.”

The relevant level of skill in the art is that as of “the

effective filing date of the claimed invention.” 35 U.S.C.

§ 103.° Assessment of that level “requires the oft-difficult

but critical step of casting the mind back to the time of

the invention.” In re Dembiczak, 175 F-3d 994, 999 (Fed.

Cir. 1999). Experts are often called on to both discuss the

state of the prior art as of the priority date and mentally

exclude any post-priority advances in a field. See, ¢.g.,

Rebecca S. Eisenberg, Obvious to Whom? Evaluating In-

ventions from the Perspective of PHOSITA, 19 Berkeley

Tech. L.J. 885, 899 (2004). That feat of mental gymnastics

only becomes more difficult as time elapses.

Furthermore, this Court recognized not long ago that

the obviousness inquiry must also consider the common

sense inferences that the skilled artisan’ would reach.

*Prior to the America Invents Act, § 103 used the language “the

time of the invention.” The difference is inconsequential for purposes

of the argument here.

"Rather than the lengthy phrase “person having ordinary skill in

the art,” courts and litigants use short forms such as “PHOSITA.”

This brief uses the more readable “skilled artisan.” See Nautilus,

Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014).

See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420-21

(2007). Envisioning the scope of common sense at a par-

ticular time in history is difficult, and that difficulty is mul-

tiplied as the time gap increases.

Difficulty in assessing the skilled artisan’s past know!-

edge tends to disfavor those seeking invalidation by ob-

viousness. The difficulty of “casting the mind back” has

led the Federal Circuit to be hypervigilant for hindsight

bias and to reject obviousness determinations where the

knowledge of a skilled artisan might be in question. See,

e.g., W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d

1540, 1553 (Fed. Cir. 1983); In re Cyclobenzaprine Hy-

drochloride Extended-Release Capsule Patent Litig., 676

F3d 1063, 1073 (Fed. Cir. 2012); Glynn S. Lunney, Jr. &

Christian T. Johnson, Not So Obvious After All: Patent

Law’s Nonobviousness Requirement, KSR, and the Fear

of Hindsight Bias, 47 Ga. L. Rev. 41, 42-43 (2012) (not-

ing dramatic decrease in success of obviousness defenses

following creation of Federal Circuit). Evidentiary diffi-

culties in determining obviousness, in practice, have re-

sulted in fewer patents being determined obvious.

3. INSUFFICIENCY OF THE SPECIFICATION

Time delay may also diminish evidence of a patent’s

invalidity for failure to meet the statutory requirements

for the written specification. Under 35 U.S.C. § 112, a

patent must satisfy three primary requirements: it must

include a written description demonstrating possession of

the patented invention, § 112(a), it must enable one of or-

dinary skill in the art to practice the invention without

undue experimentation, id., and it must include claims

specifying the patent’s exclusionary right with sufficient

definiteness, § 112(b).

Each of these three requirements is measured with re-

spect to a skilled artisan. Under the written description

requirement, the patent must “clearly allow persons of

ordinary skill in the art to recognize that the inventor in-

vented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly

& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quot-

ing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.

Cir. 1991)) (internal alterations omitted). Under enable-

ment, the oft-cited factors of Jn re Wands include “the

relative skill of those in the art.” 858 F:2d 731, 737 (Fed.

Cir. 1988). And definiteness of claims “is to be evaluated

from the perspective of someone skilled in the relevant

art.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.

Ct. 2120, 2128 (2014).

As explained above with respect to obviousness deter-

minations, determination of the knowledge of a skilled ar-

tisan at the time of the invention is a fact-specific inquiry

that often involves evidence susceptible to loss over time.

That possibility of lost evidence means that time delays

can impede determinations of whether a patent satisfies

§ 112. Because patents are statutorily presumed valid,

see 35 U.S.C. § 282, and may only be invalidated over clear

and convincing evidence, Microsoft Corp. v. i4i LP, 131 S.

Ct. 2238, 2243 (2011), any deficiency in evidence will tend

to disfavor invalidation. Thus, as with anticipation and

obviousness, a delay in litigating a patent will increase

the difficulty of proving invalidity under § 112.

B. CASES AND BUSINESS PRACTICES SHOW THE

EFFECT OF DELAY ON INVALIDITY DEFENSES

It is not mere theory that delay impedes proof of in-

validity. The negative effect of delay on invalidity de-

fenses is both seen in past cases and made more likely

by industry-standard business practices.

1. Cases demonstrate that delay can make invalidity

defenses harder or even impossible to prove.

In Odetics, Inc. v. Storage Technology Corp., the

patent owner asserted a patent on data backup systems

against a manufacturer of such systems. See 919 F. Supp.

911, 916 (E.D. Va. 1996), vacated on other grounds, 116

F.3d 1497 (Fed. Cir. 1997) (unpub. tbl. op.). Contesting

the validity of the patent, the manufacturer argued that

it had invented the backup systems before the patent

owner. See id. at 922 & n.17. But the patentee had de-

layed bringing suit for over six years. Jd. at 921. In the

interim, the manufacturer had destroyed 600-800 docu-

ments that might have proven invalidity, and the manu-

facturer’s patent counsel had forgotten he had ever repre-

sented the manufacturer. See id. at 922. The loss of those

facts due to the patentee’s delay, said the district court,

had rendered the manufacturer’s ability to raise its inva-

lidity defense “somewhat less than ‘full and fair.’” Jd. at

923 (quoting A.C. Aukerman Co. v. R.L. Chaides Constr.

Co., 960 F:2d 1020, 1033 (Fed. Cir. 1992)).

Absent a laches defense, delay in bringing suit in

Odetics may very well have rendered a practicing manu-

facturer liable for patent infringement for a product that

it invented first.

Similarly, i47 LP v. Microsoft Corp. involved a patent

on a method of displaying and editing certain special

computer files using word processing software, and the

patent owner alleged that the word processing program

Microsoft Word infringed the patent. See 598 F.3d 831,

839-40 (Fed. Cir. 2010), aff'd, 131 S. Ct. 2238 (2011). Mi-

crosoft contended that the patent was invalid because the

patentee had sold a product called S4 before the relevant

date of the patent. See id. at 846.

A factual dispute ensued, which could have easily

been resolved with a single piece of evidence: the source

code of S4.° But the litigation was filed fourteen years

after S4’s creation, and the patentee had destroyed S4’s

source code “years before this litigation began.” /d.

With only circumstantial evidence of the S4 program, Mi-

crosoft was unable to meet the threshold of clear and con-

vincing evidence to invalidate the patent. See id. at 847-

48.

2. Thedocument losses observed in both Odetics and

i4i are not idiosyncratic to those cases, but reflective of

ordinary business practices. Company records are reg-

ularly destroyed pursuant to standard document reten-

tion policies. See, e.g., Arthur Andersen LLP v. United

States, 544 U.S. 696, 704 (2005) (noting document destruc-

tion policies to be “common in business” and “not wrong-

ful”).2 Indeed, document destruction may sometimes be

legally required.'°

Patent applicants, owners, and attorneys regularly

destroy patent-related records in this manner, even

though the records may become relevant to patent as-

8Source code is a set of written instructions that a computer can in-

terpret (possibly through a translational step called “compilation”) to

perform desired operations. All computer programs originate from

a software developer writing source code.

®See also Ass’n of Records Managers & Adm'rs, Generally

Accepted Recordkeeping Principles 9 (2014), URL supra p. viii;

LexisNexis, Elements of a Good Document Retention Policy 3

(2007), URL supra p. ix.

10 See, e.g., 34 C.F-R. § 99.31(a)(6XiiiB) (requiring school contrac-

tors to destroy educational records when no longer needed).

sertion later.'' Of course, the interest of patent owners

and their attorneys is to destroy potentially harmful docu-

ments and to retain helpful ones,'* an interest that has on

occasion been followed so zealously that it led to sanction-

able conduct. See Micron Tech., Inc. v. Rambus Inc., 645

F.3d 1311, 1825-26 (Fed. Cir. 2011) (patentee held “shred

days” before imminent litigation)."* Delay in bringing

suit could leave patent infringement defendants without

key documents that would have been present had the law-

suit been timely filed.

These cases and practices show how delay affects evi-

dence of patent invalidity: key documents are destroyed,

and memories fade. Where delay in bringing suit is excus-

able, such losses may be written off as the unfortunate

uncertainties of litigation.’ But where it is within the

power of the patentee to avoid the prejudice of delay, the

law ought strongly to encourage early filing of lawsuits

to give parties a fuller, fairer opportunity to litigate ques-

tions of invalidity. Laches is the well-established tool for

encouraging that behavior, and it ought to be retained.

"See David W. O’Brien, Discovery of Draft Patent Applications:

Considerationa in Establishing a Draft Retention Policy, 2 Tex. In-

tell. Prop. L.J. 237, 255-56 (1994).

'2 Helpful documents might include, for example, evidence that the

inventor on a patent conceived of an invention at an earlier time than

the filing date of the application. See Mahurkar v. C.R. Bard, Inc., 79

F.3d 1572, 1578 (Fed. Cir. 1996).

'31t is worth considering whether, if the patentee in Micron had

engaged in laches after destroying the documents, the accused in-

fringer would have had any evidence left to prove that the unlawful

destruction had occurred.

'4In 743, for example, the district court ultimately found the paten-

tee’s delay excusable. See i4i LP v. Microsoft Corp., 670 F. Supp. 2d

568, 603-05 (E.D. Tex. 2009).

C. INTERNET-RELATED PRIOR ART IS PARTICU-

LARLY SENSITIVE TO LOSS OVER TIME

Ties between the Internet and prior art render dis-

couraging delay through the laches defense even more

important today than ever before. Increasingly, prior art

that can be used to invalidate patents can be found on the

Internet, either because it is published on that network

or because it is software built for that network. But soft-

ware technology lifecycles outpace the level of documen-

tation needed for prior art purposes and the Internet is

notoriously unreliable as a long-term archive.

1. Software development happens at a fast pace, of-

ten in a context of intense competition. It is an iterative

process that must rapidly respond to user needs and fea-

ture requests.’” The processes are often decentralized,

and the formal development tools are optimized for collab-

oration and efficiency rather than litigation record keep-

ing. Moreover, disclosure of new features and innova-

tions to the public often occurs by releasing new versions,

rather than through patents or traditional printed jour-

nals. The community mantra is, as one veteran software

developer put it: “Release early. Release often. And lis-

ten to your customers.” Eric S. Raymond, The Cathedral

and the Bazaar: Musings on Linux and Open Source by

an Accidental Revolutionary 29 (rev. ed. 2001).

In seeking to please a demanding user base with rapid

improvements, software developers rarely take the time

to chronicle al] the details of their work at each release

time. The conventional avenue of documenting prior art,

namely filing a patent application, is rarely undertaken in

'®See, e.g., Tom Warren, Windows 10: The Top 10 Most Requested

Features, The Verge (Oct. 17, 2014), URL supra p. xi (Microsoft so-

liciting feature requests for its Windows operating system).

the software industry: multiple studies have found that

“most venture-backed software firms did not acquire any

patents.”"* And historical versions of the software itself

often go unarchived, because software users are regu-

larly encouraged to update immediately to the latest and

greatest versions. '”

The fast pace of software creation often means that

software developers have little time to extensively doc-

ument their progress. Release notes, if prepared at all,

are often written in sparse shorthand, which make search-

ing difficult."* Often software developers forgo detailed,

timestamped documentation of their work because they

'6Ronald J. Mann & Thomas W. Sager, Patents, Venture Capital,

and Software Start-Ups, 36 Res. Pol’y 193, 197 (2007); see also Stuart

J.H. Graham et al., High Technology Entrepreneurs and the Patent

System: Resulta of the 2008 Berkeley Patent Survey, 24 Berkeley

Tech. L.J. 1255, 1278-79 (2009).

'TIndeed, because many software updates address security flaws

and vulnerabilities, many companies strongly discourage users from

retaining old versions. See, e.g., Stefan Lueders, Computer Secu-

rity: Mac Security: Nothing for Old Versions, CERN (July 7, 2016),

URL supra p. x. Certainly some developers keep old versions in

archival programs, or code repositories, that keep track of a software

project over time. Those software archives are sometimes even pub-

licly available, in the case of open source software. See generally

Raymond, supra. But mere availability of old software does not nec-

essarily render it useful prior art. Searching myriad repositories for

relevant computer code is often an exercise in futility. See Christina

Mulligan & Timothy B. Lee, Scaling the Patent System, 68 NYU.

Ann. Surv. Am. L. 289, 300 (2012). Locating the right art in a soft-

ware repository will often depend on the memories of users and au-

thors of that software—memories subject to loss over time.

'*See, e.g., Davin Granroth, How to Write Release Notes (Mar. 3,

2010), URL supra p. ix (“Release notes are often little more than a

bullet list of updates, and that’s fine.”); Jennifer Cloer, 10 Years of Git:

An Interview with Git Creator Linus Torvalds, Linux Found. (Apr. 6,

2015), URL supra p. viii (discussing difficulties with producing good

believe—rightly—that the practice is error-prone: for a

frequently updated program, out-of-date documentation

can do more harm than good.'* And to the extent that

company-internal documentation is generated, that doc-

umentation may very well be destroyed in the ordinary

course of business. See Section I.B(2) supra p. 13.

The likelihood of loss of primary evidence of software

prior art is further emphasized by how often patent liti-

gators rely on circumstantial evidence such as mailing list

postings and product brochures. See, e.g., Suffolk Techs.,

LLC v. AOL Inc., 752 F.3d 1358, 1361-65 (Fed. Cir. 2014)

(Internet newsgroup posting); 141, 598 F.3d at 847 (letter

to investors); Amazon.com, Inc. v. Barnesandnoble.com,

Inc., 73 F. Supp. 2d 1228, 1233-34 (W.D. Wash. 1999) (re-

tailer advice book mentioning relevant software). This

circumstantial evidence is presumably offered only be-

cause the more direct evidence, such as source code or

detailed documentation, is unavailable.

And it is not just that material from software firms is

prone to loss—the firms themselves often disappear, tak-

ing relevant prior art with them. Many “dotcom bubble”

companies in the early 2000s quickly failed, but similar

technologies are now used by modern, profitable compa-

nies.” Documents and code from defunct startups, if they

commit messages and other documentation when using Git Hub, a Git

repository hosting service).

'8See Frederick P. Brooks, Jr., The Mythical Man-Month: Essays

on Software Engineering 169 (1975) (noting “folly of trying to main-

tain independent files [e.g., software code and documentation] in syn-

chronism”); Peter Vogel, Why You Shouldn't Comment (or Docu-

ment) Code, Visual Studio Mag. (June 27, 2013), URL supra p. xi.

See Robert McMillan, Turns Out the Dot-Com Bust’s Worst

Flops Were Actually Fantastic Ideas, Wired (Dec. 8, 2014), URL

supra p. x (describing Pets.com). The ABA brief’s assertion (at 14

n.16) that dotcom-era patents from the 1990s are in large part expired

even existed in the first place, are unlikely to remain af-

ter the companies cease to exist. But those documents

and code could easily be relevant prior art to patents that

are asserted today. When a software patent owner en-

gages in laches, a firm with key prior art could very well

go bankrupt during the delay period, making that prior

art impossible to find or authenticate.

Rapid, iterative development in software and Inter-

net technologies positions alleged infringers poorly, often

through no fault of their own, to fight patent infringement

suits after delay. Absent the risk of laches, patent owners

can exploit these realities to more easily assert patents

that would be invalidated but for the practical inability

to find and establish cognizable evidence of invalidity.

2. The Internet further exacerbates the problems

caused by delay, because Internet-published documents

such as websites and online articles are subject to greater

loss. The problem, sometimes generally referred to as

“link rot,” is that information on a website can be moved,

altered, or even deleted at the website operator’s whim,

making that information difficult or impossible to find

later. See Jonathan Zittrain et al., Perma: Scoping and

Addressing the Problem of Link and Reference Rot in Le-

gal Citations, 127 Harv. L. Rev. F. 176, 176 (2014).”!

Studies confirm the prevalence of link rot. One sur-

vey found that websites cited in scientific literature had

(even though they are not, see, ¢.g., VirnetX, Inc. v. Cisco Sys., Inc.,

767 F.3d 1308 (Fed. Cir. 2014) (involving 1998 patents)) is entirely ir-

relevant to concerns about loss of dotcom-era non-patent prior art.

That prior art is frequently necessary to invalidate patents filed well

after that era.

2! As just one example of link rot, citations in this very brief had to

be modified from those referenced in the brief amici filed at the Fed-

eral Circuit, in part because several of the links no longer worked.

a median lifespan of only 9.3 years—less than half of or-

dinary patent term. See Jason Hennesey & Steven Xi-

jin Ge, A Cross Disciplinary Study of Link Decay and

the Effectiveness of Mitigation Techniques, 14 (Supp. 14)

BMC Bioinformatics S5, 3 (2013), available at URL supra

p. ix; 35 U.S.C. § 154(a)(2). Another found that URL refer-

ences in three major law journals over a 17-year window

worked only about 30% of the time, with the balance re-

turning errors or incorrect data. See Zittrain et al., supra,

at 184.

Services like the Internet Archive’s “Wayback Ma-

chine” seek to ameliorate link rot.“ But even that service,

which periodically archives and timestamps the contents

of the Internet, cannot solve this problem. The Internet

is large and archivists struggle to collect it all: the sur-

vey described above found that only 62% of links studied

were saved on the Internet Archive. See Hennesey & Ge,

supra, at 3.

More importantly, services like the Internet Archive

generally do not (and likely cannot) store interactive con-

tent like database query results or programmed Inter-

net scripts. See Comments of ABA Section of Intellec-

tual Property Law 2, Prior Art Resources for Use in

the Examination of Software-Related Patent Applica-

tions, 79 Fed. Reg. 644 (USPTO Apr. 23, 2014), avail-

able at URL supra p. viii (web pages “including certain

JavaScript enabled links and instructions may not be

archived”). Those services thus fail to archive the in-

=See generally Jill Lepore, The Cobweb: Can the Internet Be

Archived?, New Yorker, Jan. 26, 2015, at 34, available at URL supra

p. ix (describing the Internet Archive and related services). The In-

ternet Archive itself is currently accessible at https://archive.org/.

™Those comments, as with other examples of gaps in Internet

archiving, are difficult to resolve with the ABA amicus brief, which

formation perhaps most useful to prove software patent

invalidity, especially where the patented technologies in-

volve databases and interactive programs.

Indeed, this Court itself has observed the depth of the

link rot problem. Responding to criticisms that almost

half of website links in Supreme Court opinions no longer

worked,” the Court adopted a new policy of archiving and

making available copies of Internet content it cites.”

Link rot shows that the Internet, as useful as it may

be, is a poor archive of historical information. To the ex-

tent that online information is necessary prior art for in-

validating a patent, then, time delay will severely dimin-

ish the availability of that information. In an age where

the Internet is more and more the central hub of publi-

cation, discouragement of time delay through the laches

doctrine is only more essential.

D. THE PUBLIC aT LARGE Is HARMED WHEN

LACHES FRUSTRATES PROOF OF INVALIDITY

The evidentiary harm to invalidity defenses caused by

undue delay does not merely affect one defendant to a

patent lawsuit. It affects the entire public, and the grav-

ity of that widespread effect strongly counsels toward re-

taining legal disincentives to delay.

contends without relevant citation that services like the Wayback

Machine “capture and preserve nearly everything published on the

internet.” ABA Br. 14, July 22, 2016.

4 See Megan Garber, 49% of the Links Cited in Supreme Court De-

cisions Are Broken, The Atlantic (Sept. 23, 2013), URL supra p. ix;

Adam Liptak, Jn Supreme Court Opinions, Web Links to Nowhere,

N.Y. Times, Sept. 24, 2013, at A13; Zittrain et al., supra, at 186-87.

Lyle Denniston, No Subs for Lawyers in Court Lines, SCOTUS-

blog (Oct. 5, 2015), URL supra p. viii.

An issued but invalid patent is a public evil, and in-

validation of that patent is a public good. Because it

imposes a restraint on all people subject to the laws of

the United States, every patent “by its very nature is

affected with a public interest.” Precision Instrument

Mfg. Co. v. Auto. Maint. Mach. Co., 324 US. 806, 816

(1945); see also Medtronic, Inc. v. Mirowski Family Ven-

tures, LLC, 1348S. Ct. 843, 851-52 (2014). Where a patent

owner possesses a statutorily defective but nonetheless

issued patent, “the public may continually be required to

pay tribute to would-be monopolists without need or jus-

tification.” Lear, Inc. v. Adkins, 395 U.S. 653, 671 (1969).

As a result, this Court has many times “emphasized the

importance to the public at large of resolving questions

of patent validity.” Cardinal Chem. Co. v. Morton Int'l,

Inc., 508 U.S. 83, 100 (1993); see also Pope Mfg. Co. v. Gor-

mully, 144 U.S. 224, 234 (1892) (it is “important to the

public that competition should not be repressed by worth-

less patents”).

A defense of invalidity of a patent is often the best,

and sometimes the only,” way to reap that public good. A

judicial determination works to collaterally estop a paten-

tee from making future accusations of infringement. See

Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402

U.S. 313, 350 (1971). Thus, the result of patent invalida-

tion is “the creation of a public good enjoyed by society

as a whole, not just the party who challenged the patent.”

Although there exist several administrative avenues to chal-

lenge patent validity, each is limited to certain types of challenges.

See, e.g., 35 USC. § 311(b) (inter partes review, limited to printed

publication prior art); 356 U.S.C. § 321(c) (post-grant review, limited

to 9 months after patent issuance). Only district court litigation al-

lows every type of validity challenge.

Megan M. La Belle, Patent Litigation, Personal Jurisdic-

tion, and the Public Good, 18 Geo. Mason L. Rev. 43, 61

(2010).

Where undue delay renders what would have been a

successful invalidity defense unprovable due to loss of ev-

idence, that public good is lost.2” Unjustified tribute to

would-be monopolists must be paid not only by one law-

suit defendant, but also by the entire population.

That broad harm defeats the foundational premise of

the patent system itself. The “primary object” of the

patent monopoly is its benefit to the public and commu-

nity at large. Motion Picture Patents Co. v. Universal

Film Mfg. Co., 243 U.S. 502, 511 (1917). Public disclosure

of new and useful inventions is the “centerpiece of federal

patent policy,” because disclosure both makes innovation

publicly accessible and demarcates the limited monopoly

right. Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

489 US. 141, 157 (1989). And no less important to the

patent system is “substantially free trade” in publicly

known, unprotected conceptions so the public can build

on prior knowledge. Jd. at 155. Permitting patent own-

ers to impede invalidity determinations by unreasonably

delaying litigation would undermine these fundamental

principles.

“'Certainly laches as a defense is personal to the asserting party.

See Holmberg v. Armbrecht, 327 U.S. 392, 396 (1946) (laches is

“founded upon some change in the condition or relations of the prop-

erty or the parties”) (quoting Galliher v. Cadwell, 145 U.S. 368, 373

(1892)). But the incentive effect of the laches defense is not so limited:

it produces a benefit that accrues to the entire public.

Il. PATENT-SPECIFIC CONCERNS OF INVALIDITY

EVIDENCE MAKE PETRELLA INAPPLICABLE

Based on a detailed statutory analysis of the Copy-

right Act, Petrella v. Metro-Goldwyn-Mayer, Inc. re-

jected the defense of laches in copyright cases. See 134

above, for at least two reasons. First, validity chal-

lenges in patent cases have no significant counterpart

in the copyright context. Second, Petrella relied on the

premise that plaintiffs and defendants in copyright cases

are equally harmed by delay, but that premise fails to

carry over to patent law, where defendants are uniformly

more harmed.

A. In STARK CONTRAST TO PATENT VALIDITY,

Although a valid copyright is required to make a claim

for copyright infringement, validity is often not contested

in copyright matters. See, e.g., Campbell v. Acuff-Rose

Music, Inc., 510 U.S. 569, 574—75 (1994) (validity not at is-

sue, as it was “uncontested” that defendant’s acts “would

be an infringement” but for fair use). A database search

that only 2.7% of judgment events resulted in a finding

of a lack of ownership/validity of the copyright at issue,

with a further 6.4% percent of judgment events finding

ownership/validity.”

These values were computed based on data from the online ser-

vice Lex Machina, as of April 20,2015. Among 3019 judgment events

recorded there, 193 found that the copyright was valid and that the

party asserting it had the right to do so, and 84 found the opposite.

In contrast, defendants in patent cases commonly

challenge the validity of the patent at issue, often based

on the lack of novelty under § 102 or nonobviousness un-

der § 103. One study found that, of cases filed in 2008-2009,

motions for summary judgment on invalidity were filed in

roughly 45% of cases, of which 70% related to anticipation

or obviousness. John R. Allison et al., Understanding the

Realities of Modern Patent Litigation, 92 Tex. L. Rev.

1769, 1778, 1784-85 (2014).

That distinction, in turn, presents patent defendants

with evidence-gathering challenges that copyright defen-

dants rarely face. For example, as discussed above, antic-

ipation and obviousness invalidity defenses require prior

art predating the priority date of the patent. Thus patent

defendants must frequently rely on evidence from many

years prior to the filing of a lawsuit in order to make their

In addition, patent validity is directly affected by the

actions of third parties. Third parties have evidence that

defines the scope and content of the prior art, and those

third parties likely give little thought, if any, to maintain-

ing records for use by others in patent infringement ac-

tions. Copyright defendants, in contrast, often defend al-

legations of infringement using their own materials. See,

e.g., Campbell, 510 U.S. at 582 (lyrics of defendant’s own

song established parody defense); Graham v. James, 144

F.3d 229, 235-38 (2d Cir. 1998) (discussing use of license

as defense to copyright infringement).

A further distinction lies in the burdens of proof. In

both copyright and patent litigation, an alleged infringer

Judgment events include the following: default judgment, consent

judgment, judgment on the pleadings, summary judgment, trial, and

judgment as a matter of law.

can raise invalidity as a defense. Compare 17 U.S.C.

§ 410(c) (copyright registration carries presumption of va-

lidity), with 35 U.S.C. § 282(b)(2) (defenses to patent in-

fringement include patent invalidity). However, patent

defendants, unlike their copyright counterparts, must es-

tablish invalidity with “clear and convincing” evidence.

Compare isi, 131 S. Ct. at 2251-52, with Lamps Plus,

Inc. v. Seattle Lighting Fixture Co., 345 F-3d 1140, 1144

some evidence or proof” to rebut presumption of valid-

ity). Thus, stale evidence risks prejudices not faced by

defendants in copyright infringement litigation.

B. UNLIKE COPYRIGHT OWNERS, PATENTEES

Do Not GENERALLY REQUIRE EVIDENC=

SUBJECT TO Loss OVER TIME

In reasoning that laches should not apply in copyright

cases, Petrella relied in part on a view that evidentiary

suaietbasimeniiiebeaiiite“eatanhadtiae ation

Ct. at 1977. That strongly distinguishes Petrella from the

patent context, because patentees generally do not rely

on evidence that is likely to be lost due to delay.

1. The most important time-sensitive evidence that

a copyright owner must show is proof of copying. See

Mazer v. Stein, 347 US. 201, 218 (1954) (“Absent copy-

ing there can be no infringement of copyright.”); Feist

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361

find it difficult to gather evidence of copying; indeed the

briefs opposing laches in Petrella repeatedly emphasized

this point to show that “laches is unnecessary to protect

proof of copying generally requires either direct evidence

of the copying act or a showing of access and substantial

similarity to the copyrighted work. See, e.g., Sid & Marty

Krofft Television Prods., Inc. v. McDonald’s Corp., 562

F.2d 1157, 1162 (9th Cir. 1977). A tardy plaintiff may be

hard-pressed to obtain that evidence of direct copying or

access to the original work.”

In contrast, copying “is of no import on the question

of whether the claims of an issued patent are infringed.”

Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F:3d 1336,

1351 (Fed. Cir. 2002).*' Indeed, from the patent owner’s

perspective, the facts needed to maintain an infringement

action can be found within the four corners of a patent on

file with the United States Patent and Trademark Office,

along with evidence from the alleged infringer showing

Brief for Petitioner at 54, Petrella, 134 S. Ct. 1962 (Nov. 15, 2013)

(No. 12-1315); see also Brief of Amicus Curiae the California Soci-

ety of Entertainment Lawyers in Support of Petitioner at 10-11,

Petrella, 134 8. Ct. 1962 (Nov. 21, 2013) (No. 12-1315).

Cf. Art Attacks Inc, LLC ». MGA Entm't Inc., 581 F.3d 1138,

1143-45 (9th Cir. 2009) (discussing level of evidence needed to prove

access); 4 Melville B. Nimmer & David Nimmer, Nimmer on Copy-

right § 13.01[B] (2016) (element of “copying” includes “the factual

question [of] whether the defendant, in creating its work, used the

plaintiff’ material as a model, template, or even inspiration.”).

"' Actual copying is potentially relevant to enhancement of dam-

ages under 35 U.S.C. § 284. See Halo Elecs., Inc. v. Pulse Elecs.,

Inc., 136 S. Ct. 1923, 1929 (2016) (citing Topliff ». Topliff, 145 U.S.

156, 174 (1892)). But allegations of copying are very rare in patent

litigation. See Christopher A. Cotropia & Mark A. Lemley, Copying

in Patent Law, 87 NC. L. Rev. 1421, 1443, 1452 (2009) (finding that

of cases examined in dataset, only 10.9% of cases included an allega-

tion of copying, and only 1.76% of cases had an established case of

copying).

each element of the patent claim at issue. While a copy-

right owner might have to look to decades-old evidence

of an initial act of copying, the patent owner need go no

further than buying the accused product at a store and

comparing it to the patent.™

2. Patent owners do on occasion rely on evidence of

so-called “secondary factors” to rebut an obviousness con-

tention. Those factors include “commercial success, long

felt but unsolved needs, failure of others,” and the like,

and tend to show that a patented invention was not obvi-

ous to those of skill in the art at the time of the invention.

Graham, 383 U.S. at 17-18; see Mintz v. Dietz & Watson,

Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012).

Evidence of secondary considerations might seem to

be sensitive to time delay, but this evidence of validity

is far less sensitive to time than evidence of invalidity.

For one thing, many of these secondary considerations,

like industry praise, commercial success, and copying by

others, occur after the time of the invention, as opposed

to invalidating prior art which by definition must be cre-

ated before that time. That differential in time means that

evidence rebutting invalidity will less likely be lost than

evidence favoring invalidity.

Also, the patent owner has the advantage of know-

ing in advance what evidence to seek out and preserve to

prove these secondary considerations. The patentee who

delays bringing suit can spend the years of delay gather-

ing evidence of secondary considerations; by contrast, the

accused infringer generally is ignorant to what patents

To the extent that the patent owner needs proof of past infringe-

ment, 35 U.S.C. § 286 limits the necessary look-back period to six

years.

may be asserted in the future and thu. cannot preemp-

tively gather evidence of invalidity. The end result, when

the lawsuit is filed after long delay, is a case that tilts only

farther from a full and fair hearing, and only farther from

the necessary task of ensuring that the public is burdened

only by valid patents.

And in any event, multiple empirical studies confirm

that “secondary considerations play a very insignificant

role in nonobviousness jurisprudence.” Christopher A.

Cotropia, Nonobviousness and the Federal Circuit: An

Empirical Analysis of Recent Case Law, 82 Notre Dame

L. Rev. 911, 946 (2007); Gregory N. Mandel, Patently

Non-Obvious: Empirical Demonstration that the Hind-

sight Bias Renders Patent Decisions Irrational, 67 Ohio

St. L.J. 1391, 1423 (2006) (secondary considerations rele-

vant to obviousness determination in “only one to two per-

cent of reported cases” considered). Comparing loss of

evidence of secondary considerations to loss of evidence

of overall invalidity as a practical matter, then, it cannot

at all be said that plaintiffs are “at least as likely” to be

harmed as defendants, as was found in Petrella.

Thus, while a delay in suit may be “at least as likely” to

harm plaintiffs as defendants in copyright cases, the bal-

ance of evidentiary prejudice is very different under the

Patent Act. The substantial differences in the causes of

action and defenses condone, even demand, a substantial

difference in the application of the doctrine of laches.

Ill. SECTION 286 DoEs Not DETER EVIDEN-

TIARY DELAY

The six-year look-behind period for damages provided

in 35 U.S.C. § 286 is inadequate to deter the prejudice that

would result from a patent owner’s delay in bringing suit,

and instead may actually encourage delay.

Six years of past damages can be substantial. For ex-

ample, in Carnegie-Mellon University v. Marvell Tech-

nology Group, a patent owner learned of a manufacturer

that was possibly infringing, but then waited five years

and eleven months—one month shy of the § 286 limit—to

bring suit. See No. 09-CV-290, 2014 WL 183212, at *19

(W.D. Penn. Jan. 14, 2014). The district court found that

the delay period had caused real prejudice to the manu-

facturer: lab notebooks and emails of key witnesses had

been lost, evidence that “may have been relevant to [the

manufacturer]’s invalidity defenses.” See id. at *32. Un-

clean hands* prevented the manufacturer from using the

defense of laches, though, meaning that the patent owner

was awarded damages for the full five year, eleven month

period, an award of $1.45 billion.“

Carnegie-Mellon exemplifies conventional wisdom:

six years of patent damages is no small amount, and yet

six years is plenty of time to cause evidentiary prejudice.

The § 286 limitation thus will not deter patent owners

from delaying and causing harms to the patent system.

“Specifically, the district court found that the manufacturer had

engaged in copying the patented technology. See id. at *37. This

is a unique and unusual situation, as copying is very rare in patent

cases. See note 31 supra p. 26. While the manufacturer in Carnegie-

Mellon thus was on notice of the patent and thus could have avoided

prejudice, most accused infringers w:ll be unaware of the patent and

thus unable to adequately protect against evidentiary prejudice. See

discussion supra p. 27.

“The Federal Circuit reduced this amount to $278 million and or-

dered a new trial on the balance, based on an unrelated issue of ex-

traterritoriality. See Carnegie-Mellon Univ. v. Marvell Tech. Group,

807 F.3d 1283, 1302 (Fed. Cir. 2015).

By waiting until the end of patent terms, patent own-

ers may be able to maximize potential damages as well as

maximize the chances that evidence relating to the impor-

tant defense of invalidity will be lost. But patent law has

never prioritized patent holders’ interests over the inter-

ests of the general public in granting patents only where

truly deserved and only to the extent necessary to encour-

age disclosure and creation of new inventions. See, e.g.,

Kendall v. Winsor, 62 U.S. 322, 327-28 (1858) (“It is un-

deniably true, that the limited and temporary monopoly

granted to inventors was never designed for their exclu-

sive profit or advantage; the benefit to the public or com-

munity at large was another and doubtless the primary

object in granting and securing that monopoly.”).

Laches, especially when viewed within the broader

goals of patent law, has an important role to play in en-

couraging patent owners to bring suits earlier, making it

less likely that the mere passage of time allows an illegit-

imate monopoly. “{L]aches does not result from a mere

lapse of time but from the fact that, during the lapse of

time, changed circumstances inequitably work to the dis-

advantage or prejudice of another if the claim is now to

be enforced.” William Q. de Funiak, Handbook of Modern

Equity § 24, at 41 (1956). As demonstrated, the “changed

circumstances” caused by the passage of time result in

evidentiary prejudice that not only prejudices defendant,

but also the general public. Limiting damages to only six

years prior to suit does not compensate for the fact that

accused infringers may have to pay tribute to someone

who did not, in fact, disclose any invention to the public.

CONCLUSION

For the foregoing reasons, this Court should affirm

the Court of Appeals.

Respectfully submitted,

VERA RANIERI

Counsel of Record

ELECTRONIC FRONTIER

FOUNDATION

815 Eddy Street

San Francisco, CA 94109

(415) 436-9333

vera@eff.org

CHARLES DUAN

PUBLIC KNOWLEDGE

1818 N Street NW, Suite 410

Washington, DC 20036

(202) 861-0020

eduan@publicknowledge.org

Counsel for amici curiae

September 2016

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.