Media Advisory

An Essay on the Legacy of Chisum on Patents

Robert Merges originally wrote this essay, previously unpublished, on the thirtieth anniversary of Chisum on Patents: A Treatise on the Law of Patentability, Validity and Infringement (1978-present). Merges has generously provided Written Description with a copy. In the essay, Merges discusses the world of patent law scholarship in the 1970s and the significant effect Chisum's treatise had within the patent community. Thirty years is a long time. In the field of patent law, especially. In our little corner of the legal world, hot topics and controversies – like the new technologies we study every day – come so fast and furious that even ten years seems an eon. (Remember the world before the TRIPS amendments? How about the big dustup in the 1990s over “equitable equivalents”?) That is why it seemed so remarkable when, one day a while ago, I happened to notice that Chisum on Patents turned 30 this year. Some milestones come and go, with nary a thought about them, like one’s 29th birthday, or the fifth anniversary of a root canal. But something about 30 years of Chisum on our shelves just caught my attention. Here was something truly noteworthy, something I could not in good conscience just let slip by. In this little essay, I want to make two points about the treatise. First, that it was, at its launching, an act of great bravado and daring – one we have all benefitted from enormously in the ensuing years. And second, that it has been not only a report or record of the many giant changes in the field since the late 1970s, but also an active agent in them – a participant, and not just a witness. Neither of these points is self-evident when one cracks open (or boots up) the current version of the treatise. What comes to mind when you think of 1978? In areas of great import, not much, I would be willing to bet. Personal milestones there were aplenty, as there always are. But on the great world stage, or at least the corner of it that cuts through the U.S., it was a lackluster year in what was in many ways a lackluster era. Inflation was 7.6%, on its way to the highwater mark of 13.6% a few years later. It was only three years after the end of Vietnam, four years on from Watergate, five years from the “first” oil shock, and only a year before the next one. Jimmy Carter was in the middle of his one Presidential term, well before he perfected the role of long-time ex-President. Popular bands included Hall and Oats and The Carpenters. The number one hit single was “Staying Alive” by the Bee Gees. The most popular TV show was “Three’s Company.” I could go on, but I won’t. The point is this: 1978, mostly a year to forget. One of the last things on most people’s minds in 1978 was technological innovation. The 1970s zeitgeist was decidedly anti-technology, partly a legacy of the 1960s (with its back-to-the-garden ethic), and partly, it seems in retrospect, because most people had neither the energy nor the optimism to show an interest in anything new and bold. The entire culture in fact seemed downright fatigued. Scholarly discourse, when it touched on technology at all, emphasized mostly negative themes: alienation, exploitation, environmental degradation.1 The geek or nerd culture associated with the advent of personal computers was still a few years away; slide-rule toting types were dismissed as “capitalist tools,” or at most hopelessly irrelevant to what was really going on.2 Into this miasma of despondence and ennui waded Donald Chisum of the University of Washington Law School of Seattle. He came bearing a new treatise on an obscure and, for many years, suspect area of law, Patents. He came with new energy and the promise of a young, eager, analytic mind. To say that he was swimming upstream would be a supreme understatement. From this distance, it looks more like he was spitting in the ocean, or even launching himself off a cliff. Of course, for a true contrarian, this was just the sort of inauspicious time that is, paradoxically, most auspicious of all. The field of patent treatises was, to put it mildly, wide open in 1978.3 For a sense of just how blank the slate was, consider that when Professor Chisum wrote his first substantive law review article on patent law in the 1970s, he was still citing for support the venerable Robinson treatise – written in 1890!4 True, there was the Deller’s Walker on Patents treatise, a comprehensive and original work when first published in 18835; but by 1978 it had long ceased to reflect the vision of a single author, and had fallen into the bloated and scattered form from which it was not rescued until Carl Moy created the modern edition in 2003.6 But while patent law as a discipline may have been thoroughly out of style in 1978, a string of fascinating issues was arrayed just along the horizon. A foreward- looking person would have noted these contemporary developments: The basic breakthroughs behind genetic engineering had just occurred (the Cohen-Boyer patent was filed in 1974, and Genentech was formed in 1976). Computer technology, driven in part by the space exploration program, was accelerating its serious penetration into business and society. The Digital Equipment Corporation (DEC), riding the wave of popularity from its pioneering PDP computers, was introducing the revolutionary VAX “minicomputer” in 1978, which not only ushered in a hardware revolution but also, perhaps more importantly, marked the advent of two pathbreaking software innovations: the Unix operating system and the “C” programming language. (Chisum’s time as an undergraduate and law student at Stanford would have brought him into close proximity to all these developments – Cohen at Stanford, along with the computer science department, and Boyer and “Berkeley Unix” across the Bay). It is interesting to look back at some law review articles Professor Chisum wrote in the period leading up to the first edition of the Treatise. In “The Sources of Prior Art,”7 published in 1975, we see a scholar growing in sophistication – and getting hooked on the intricacies of patent law in the bargain. Consider this classic example of a patent law conundrum, drawn from the ever-fascinating (and factually gnarly)8 case of In re Bass:9 The policy aspects of the Bass holding are also of interest. . . . [T]he combination of the fiction of separate inventorship and the use of prior invention as prior art means that Company M may obtain a patent only on A or on B even though its research effort and investment produced both. This may discourage some research or induce secrecy where that is possible.10 Right here in this passage, you can almost sense Professor Chisum warming to that unique combination that describes certain complex but important areas of law such as patents and tax: the marriage of conceptual and doctrinal complexity with significant questions of social policy. He was able to grasp the complex doctrinal issue in the Bass case, and explain it clearly: surely, the treatise writer’s first duty, and one he discharged absolutely faithfully, in this article and soon thereafter in the Treatise. But more importantly, he saw what was at stake in the fabric of the doctrine, why it mattered. Finding multiple inventive entities present in a single unified R&D group was illogical, and might lead to underinvestment in research. Professor Chisum saw and understood, even in the hazy days of the 1970s, that this was not good, and needed to be fixed. (It was, in 1984.) Doctrinal clarity and a willingness to say where he stands on certain difficult issues are hallmarks of the Chisum Treatise.11 His treatment of the Bass case is typical. In this as with so many other instances, he has carefully explained doctrines, pointed out irreconcilable conflicts in the caselaw, and, often, staked out a distinct position. Nonobviousness-type double patenting; product-by-process claims; even the murky waters of written description – Chisum patiently explains them all, the whole glorious field. And then often gives his readers a “bottom line.” That is the mark of a really helpful – and often, influential – treatise. The author shows authoritatively that he or she knows the field inside out. And then, on the important issues, he or she chooses a position. There are plenty of string-cites in Chisum, as he dutifully notes that “the cases are legion” on both sides of one dichotomous doctrine or another. (Reading claims in light of the specification, versus “reading in” limitations, as one example.) But frequently, in areas where the cases are seriously strained, he comes right out and chooses sides. That’s why the treatise is so valuable, and why it has endured. Chisum is not just a neutral observer. He often enters the fray (with dignity, of course – not to mention a lot of footnotes.) Another hallmark of the Chisum Treatise is perhaps less noticed, but equally important: its deep commitment to history. Chisum took the time, with each major doctrine, to trace its earliest origins, with special emphasis on Supreme Court treatment. This I think had two effects, one immediate and the other slower to develop. The immediate effect was to remind readers of the Treatise that there had been a time in American history when the highest court in the land routinely dealt with patent cases. This was not widely appreciated in 1978; the Supreme Court, with a few major exceptions (Brenner v. Manson, Graham v. John Deere, Gottschalk v. Benson), had largely absented itself from the field beginning in the 1950s. And, within the patent community, what memories there were of Supreme Court interest were not good: Justice Douglas’ assault on the field, and the generally low esteem with which patents were held by the highest tribunal during the 1940s and 1950s, had created the sense that patent law was at best a tolerated stepchild, and at worst an antiquated evil, of the federal system. (This was, after all, the highwater mark of the “patents = monopolies” period.) In this context, the field could only welcome Chisum’s concise but thorough mini-histories. Reminders that the giants of U.S. jurisprudence – Story, Taft, Holmes, Brandeis – had not only troubled themselves with patents, but often looked with favor upon them, came as a wonderful reminder of patent law’s historical importance. These little history lessons also pointed the way to a future when the status of the field would improve, and the past would be regained. In fact, they have proven enormously helpful to researchers over the past ten or twelve years, now that the Court (with a capital “C”) has re-entered the patent fray with great interest. Reading these passages, most of which were written for the first edition, it is clear exactly where Professor Chisum stood on the important policy questions that lie at the heart of patent law. When it came to whether research and development, or new technologies generally, were important enough to protect and encourage, or even worth studying at all, Chisum stood with the early giants of the U.S. patent system – Story, Fessenden, Daniel Webster, and the rest. He was for it. Technology, progress, economic growth – he was for all of it. His law review writing, and later the treatise, bear implicit witness to Chisum’s belief that the patent system was about something important. This more than anything else is what makes it so distinctive, what sets it apart from the general run of scholarly interest back in 1978. It was a seriously contrarian project at the outset. Only much later did the rest of the world – and much, much later, the legal academy – catch up with Chisum’s foresight and optimism. We who continue to learn from his treatise can be grateful indeed that he was so far ahead. It is in this spirit of praise, and pride in our shared endeavor, that I salute Professor Chisum and his Treatise for their contributions over these past 30 years. Bravo, Don! And here’s to many more years, and maybe even a few more volumes, of the best and most comprehensive treatise our fascinating field has even seen. 1. Interestingly, even the young Professor Chisum – himself a 1968 law school graduate – reveals a hint of this posture in a very early article criticizing corporate management for resisting demands of “activist” shareholders such as those who wanted to censure Dow Company for its role in making napalm. See Donald S. Chisum, Napalm, Proxy Proposals and the SEC, 12 Ariz. L. Rev. 463 (1970). 2. For a sense of what was “hot,” consider one of Professor Chisum’s first scholarly efforts. See Donald S. Chisum, In Defense of Modern Federal Habeas Corpus for State Prisoners, 21 DePaul L. Rev. 682 (1972). 3. In fact, treatises as a whole were in the process of receiving an intellectual requiem at the time. Consider this passage from Grant Gilmore, writing (nostalgically) of the days when scholars dared to consider law fixed and stable enough to venture a comprehensive treatise: Against this background of long-continued social, economic and political stability, American law had [by 1930] apparently achieved a sort of legal nirvana. The great treatises of Wigmore, Williston and others had organized, rationalized and purified the major fields into which we divide the Corpus Juris. The American Law Institute was about to complete its strange task of reducing the fundamental principles of the common law to black letter text in the Restatements. The idea of law -- a stable law for a stable society -- seems to have achieved an extraordinary degree of popular acceptance, among laymen and lawyers alike. Grant Gilmore, Friedrich Kessler, 84 Yale L. J. 672, 675 (1975). Gilmore’s own view, made famous in his little book The Death of Contract (1974), was that the “classical” structure of contract law was breaking down in the 1970s, and giving way to a policy mediated amalgam of contracts and torts some called “contorts.” 4. See Donald S. Chisum, Sources of Prior Art in Patent Law, 52 Wash. L. Rev. 1, 1 n. 4 (1976). It should be noted that a short, three volume treatise called Patent Law Fundamentals was first published in 1975 by Peter Rosenberg, an examiner at the PTO. Chisum did not cite this work in any of his early articles, and its appearance in 1975 did not seem to dissuade Don fro pursuing his own treatise project. 5. For those of us who first came upon the Walker treatise in its later, dissolute state, it is instructive to look at the original edition of 1883. In the Preface, the author Albert Henry Walker first notes that his new treatise covers 1256 judicial opinions, a big improvement over the prior art, the best of which covered a mere 280 opinions (plus 160 or so from Britain). Walker then writes: I began writing on the first day of May of [1881], and soon became so much interested in the work, that I largely suspended my active practice of the law, in order to give the book the freshest of my efforts, and thus the greatest degree of merit consistent with my abilities. The resulting treatise covers the entire field of the patent laws of the United States . . . down to the first day of September, 1883. Albert Henry Walker, Text-Book of the Patent Laws of the United States of America (1883), at iii-iv. These two years of concentrated effort produced a solid treatise that endured in highly serviceable form until well into the 20th century. 6. Carl Moy, Moy's Walker on Patents, 4th Ed. (2003) and supplements. 7. Chisum, Sources of Prior Art in Patent Law, supra note 4. 8. What other case do you know of that introduces the hapless reader to both the intricacies of pre-1984 inventive entity law and such wonders of textile machinery technology as the "doffer plenum" and the "lickerin plenum"? Truly, a case only a patent wonk could love. 9. In re Bass, 474 F.2d 1276, 177 U.S.P.Q. (BNA) 178 (C.C.P.A. 1973). 10. Chisum, Sources of Prior Art in Patent Law, supra note 4, at 18. 11.  And of all the great treatises, in fact: If one judges by the great treatises of the past – Coke, Blackstone, Kent and the more modern Williston and Wigmore treatises – the sound objective of a treatise is to inject a guiding principle into the subject or to attempt to analyze the existing thinking and to classify the case material in terms of guiding principles or objectives of the law. Once such a principle is asserted or deduced it can then be applied to any fact situation by the authors or lawyers for solution of as yet undecided matters. The author, accordingly, uses the particular as illustrations of application of the general and he rejects as unsound that which he cannot explain within his theory or principle. Allison Dunham, Book Review: Nichols' The Law Of Eminent Domain, Third Edition, 60 Yale L.J. 749, 751 (1951).
4/7/2014