How to Manage Outside Counsel (A patent).

First there was the patented mock jury, now we have a patented method and apparatus for managing outside counsel.  U.S. Patent No. 7,076,439, titled “Method and Apparatus for Managing Multiple Projects,” is assigned to LSI Logic. Claim 8 reads as follows:

8. An apparatus comprising:

a memory configured to store (i) a membership information database, (ii) a global events database, (iii) a calendar database and (iv) an events engine database; and

a database management system configured to:

(A) assign from a membership information database (i) an in-house council and (ii) an outside council to a project based on a first input from an individual;
(B) receive a document having an initial date;
(C) store in a global event database (i) said document and (ii) said initial date based on a second input from said individual;
(D) calculate a due date based on both (i) a type of said document and (ii) said initial date;
(E) store in a calendar database said due date;
(F) select said outside council to perform a first task for said project;
(G) receive from an events engine database as selected by said in-house council an authorization response for said outside council to perform said first task;
(H) send automatically to said outside council both (i) a work authorization defined by said authorization response and (ii) said document when an authorization event occurs;
(I) receive from said events engine database as selected by said in-house council a first conditional response for said first task, wherein said first conditional response is (i) set when said authorization event occurs and (ii) performed if set when a first reminder event occurs;
(J) calculate a first reminder date for said first reminder event;
(K) store in said calendar database said first reminder date; and
(L) send automatically on said first reminder date to said outside council a first reminder email to complete said first task if said first conditional response is set, wherein a supervisor does not receive said first reminder email;
(M) receive from said events engine database as selected by said in-house council a second conditional response for said first task, wherein said second conditional response is (i) set when said first reminder event occurs and (ii) performed if set when a second reminder event occurs;
(N) calculate a second reminder date for said second reminder event; and
(O) send automatically on said second reminder date to both (i) said outside council and (ii) said supervisor, a second reminder email to complete said first task if said second conditional response is set.

The prosecution history includes an appeal brief filed by applicant that resulted in a new rejection based on a new search . . .

26 thoughts on “How to Manage Outside Counsel (A patent).

  1. Perhaps if there’s a way to leave a diagram on this site, we can illustrate via simple pictures for our disadvantaged brethen that the stringent obviousness standard has led to the issuance of “garbage” patents that lead to extortion practices by “trolls”.

    It’s ludicrous to fault the big companies for not “doing their homework” when they don’t believe in patenting everyday knowledge — which is not what the patent system is for.

    If we were to live in our disadvantaged brethen’s world, we would have to document how to wipe our fannies in some prior art (perhaps in the form of toilet paper) in order to avoid someone from patenting the everyday knowledge and suing everybody’s behind in the future.

    What we need is a an approach that would balance both sides. Eliminating any form of motivation requirement would be extreme and may have the most negative impact on the small inventors due to their limited resource in pursuing their position.

  2. PDS and Mr. McDonald are spot on. So tell me again why we need a more rigorous (read arbitrary) obviousness standard again?

    Big companies that didn’t do their homework patent-wise or are sleepwalking through the minefield with their cross-licensing practices are now upset at “patent trolls.” This is not a problem that stems from the obviousness standard, it stems from deeply ingrained characteristics of our justice system (viz contingent fees and “cost of defense” settlement).

    We don’t need a new obviousness standard. Period.

  3. That’s the contingent IP firm theory of practice. Find a weak, broad patent, sue everyone in sight, and offer to settle for less than the cost of litigation. It’s a racket that’s been going on for years, instituted by Lemelson and his lawyers and copied by others.

  4. ***If you don’t think “garbage patents” are being asserted, take a look at the Solia-Rockwell litigation or almost any litigation being instituted by the contingent fee IP litigation firms. I’d even put the Blackberry case in this category, but some may differ.***

    What is it about “being instituted by the contingent fee IP litigation” firms that makes a patent garbage? I thought we were discussing patents, which many people presume, would have been rejected as obviousness if the obviousness standard put forth by the Federal Circuit wasn’t as strict with regard to requiring a factual basis for the motivation/teaching/suggestion to combine. I don’t see the connection between whether or not the patent should have been obvious (i.e., a “garbage patent”) and the type of law firm that brings the suit.

    From my readings, it appears that there are two camps within the crowd looking to lessen the obviousness standard. The first camp (and what appears to be the minority) are those that truly believe the Federal Circuit has gotten the standard wrong. The second camp (and the majority) are those that are just generally hostile to patents and will favor any system that allows more patents to be rejected by the USPTO or invalidated by the courts.

    What I have seen little of is a decent analysis, which takes into account both 35 USC 103 (as codified) and the case law surrounding obviousness rejections, that argues against the position established by the Federal Circuit.

  5. If you don’t think “garbage patents” are being asserted, take a look at the Solia-Rockwell litigation or almost any litigation being instituted by the contingent fee IP litigation firms. I’d even put the Blackberry case in this category, but some may differ.

  6. ***pds:
    when an attorney gets a dubious rejection, they can appeal. when garbage patents get issued, the claims will get circled throughout the media (and in the blogosphere), and then it takes a court to invalidate it.

    if your “dubious rejections” were so dubious, then why don’t you appeal them and get them reversed at the board?

    mel b***

    Funny you should ask that question. I was just looking at my docket this morning, and it looks like I’ll be filing at least 16 appeals within the next 3 months (there are several office actions that are ripe for appeal that I haven’t looked at yet, which may be appealed).

    The problem with an appeal is it wastes a lot of time, my time, the examiner’s (and his/her supervisor’s time), and the client’s time. Fortunately, most cases don’t make it past the appeal conference. With that much time being wasted, however, it still means that a lot of money has been wasted on overcoming “dubious” rejections. What is particularly frustrating these days is that even if we win at appeal (or after the appeal conference) the examiner will likely come up with a new rejection. I must admit, however, is that I get far more offers for proposed amendments to put the claims in allowable condition after I appeal than I get prior to appeal.

    As for the “garbage patents” that get issued (and reported on in the media), how many of those actually get asserted?

    To me, it appears that many people are trying to formulate patent law by focusing on the extreme outliers with regard to issued patents while ignoring how the “new patent law” would affect the vast majority of “good” patents.

    I would be willing to wager that the intrinsic value of the 16 or so patent applications that I will appeal (and the 16 or so patent applications that I currently have on appeal) is greater than the sum of the intrinsic value of the “garbage patents” reported on in the press. Extrapolate that out over the rest of the corp of patent attorneys/agents, and you get a rather large number of dubious rejections.

    I think the problems of “garbage patents” and “dubious rejections” would BOTH be better solved by better searches (e.g., more time given examiners, more resources), more training to examiners, and more time for the examiners to examine.

    If a good portion of the fees the users of the patent system weren’t diverted, then this could be possible.

  7. pds:
    when an attorney gets a dubious rejection, they can appeal. when garbage patents get issued, the claims will get circled throughout the media (and in the blogosphere), and then it takes a court to invalidate it.

    if your “dubious rejections” were so dubious, then why don’t you appeal them and get them reversed at the board?

    mel b

  8. USPTO Exrs are making obviousness objections without a basis in evidence. I think I know why: it is because the USPTO envies the clinical efficiency with which the EPO sweeps away undeserving claims. This has prompted USPTO management to coach its Exrs in the EPO’s Problem and Solution Approach.

    Only problem is: in the EPO, P&S is a rigid template imposed at the highest level of appeal, which works because all parties are adhering to it so automatically that they don’t even think about it any more. Conversely, in USPTO prosecution, nobody understands it, so it doesn’t work.

    P&S is like learning to ride a bike. Until you get the hang of it, it is a mystery. However, once you have “got it”, you marvel at its power, and wonder why you ever had a problem to learn it.

    P&S runs of course on a “Motivation” test. For those unfamiliar with EPO P&S, that disqualifies it from serious consideration. But not those who do understand it.

    Is there a reader out there, who is from within the US profession, but who does have a deep understanding of P&S? If so, can he/she explain to my why it is incompatible with the common law of the USA?

  9. ****Let’s see some evidence for this extraordinary claim, Mr. Factual Basis.****

    If anybody (including academic types) would like to look at some real world examples of “dubious obviousness rejections,” please contact me off the board, and I’ll be happy to point out some publicly accessible patent applications where an examiner has come up (in my mind) with an obvious rejection that has no basis in fact (or some other defect).

    If you can point out all the “bad patents” that have been reported on, I guarantee that I (by myself) can easily find 10x that number of applications that have faced dubious rejections.

    I’m being very conservative when I say that 85% of the asserted motivations to combine that I have seen the last year or so falls under one of the following categories: 1) not factually supported in the prior art; 2) factually supported but there isn’t a connection between the asserted benefit and the proposed modification; 3) the proposed combination would not even produce the claimed invention; or 4) the proposed motivation to combine is so garbled so as to be unintelligible.

    Honestly, if I could appeal after the first action, I would probably appeal at least 75% of the cases I get because dealing with new examiners appears to be a lost cause (the group I’m working with the past year or so has about 40% of the examiner with a year or less of experience).

    The problem I have with any ruling that allows an examiner to base a rejection on some nebulous obviousness standard is that it is a loophole you can fit an elephant through. Any examiner with more than a couple of cases under his/her belt should be able to come up with a reasonable motivation to combine for almost any claimed invention. All you need is to find references that teach (in total) all of the claimed features and then make up a motivation to combine (faster, quicker, better, lighter, smaller, more efficient, whatever … the list goes on). If an examiner can make up (“invent”) these motivations to combine without a factual basis, the only recourse a prosecuting attorney/agent has is to argue teaching away, non-analogous prior art and/or some indicia of non-obviousness, which is a crapshoot at best.

    As a practical matter, how is the BPAI or the Federal Circuit going to review these types of obviousness decisions? Will the examiner be deposed to determine his/her level of skill in the art? How can a court determine if the Examiner’s proposed motivation to combine wasn’t the result of the examiner not liking the attorney/firm/client? Personally, I think it would be a nightmare of a system for the courts to review. Also, I think such a system would be rife for abuse.

    ***PDS says what I want to say without becoming enraged.***
    Trust me, there are times when I get enraged thinking about it (or seeing it everyday while I practice).

    BTW: Don’t even get me started about 101 rejections, I thought we solved that problem with Ex parte Lundgren, but since then, I’ve been getting just as many 101 rejections.

  10. Now with formatting! :)

    “However, for all these “garbage” patents that get reported on, there are probably 10x -1000x more good patent applications that don’t issue based on dubious obviousness rejections.”

    Let’s see some evidence for this extraordinary claim, Mr. Factual Basis.

    “the motivation requirement is what makes this case allowable.”

    What it is about the nature of the problem to be solved here (“keeping unnecesary paper off a superviser’s desk”) makes the motivation and solution proposed in the claim non-obvious?

  11. However, for all these “garbage” patents that get reported on, there are probably 10x -1000x more good patent applications that don’t issue based on dubious obviousness rejections.

    Let’s see some evidence for this extraordinary claim, Mr. Factual Basis.

    the motivation requirement is what makes this case allowable.

    What it is about the nature of the problem to be solved here (“keeping unnecesary paper off a superviser’s desk”) makes the motivation and solution proposed in the claim non-obvious?

  12. PDS says what I want to say without becoming enraged. The people inhabiting the PTO these days must live in some alternate universe to the one I’ve been practicing in for the last 15 years.

  13. >>>

    I think the old expression “throwing the baby out with the bathwater” applies to suggestions like this. Anybody who advocates “[giving] more power to the examiner for obviousness interpretation” isn’t dealing with the same patent office that I’m dealing with, or he/she wants a drastically reduced number of patents to issue.

    Patent examiners already ROUTINELY come up with obviousness rejections that have no factual basis in the applied prior art. For those of us who practice before the USPTO, I think it is no secret that the “reduced standard” with regard to obviousness is the defacto standard with many examiners, and it takes an Appeal to get the standard described by the Federal Circuit.

    Also, I have seen multitudes of obviousness combinations made out of references, which if I had pointed out the cited passages in the applied references to 100 persons “skilled in the art,” not one of those skilled in the art would have arrived at the claimed invention.

    I see (and read) a lot of people getting upset over these types of patents being issued. However, for all these “garbage” patents that get reported on, there are probably 10x -1000x more good patent applications that don’t issue based on dubious obviousness rejections. Unfortunately, these patent applications don’t get the press received by the bad patents.

  14. All of you that are speaking to obviousness (or inventive step in the case of the EPO) are missing a huge point. Simply being able to find an infinite number of references (especially when the references are unrelated) is not enough. In many, many cases the applicant cannot really figure out what the examiner is thinking without have a reason WHY these reference can be combined (especially when the references are unrelated). Reasoning as to why certain reference may not be combinable may be a critical feature, which the examiner may have a fundamental misunderstanding, and having the motivation to combine allows the applicant to understand the examiner’s point of view. This is the reason for the motivation to combine.

    The fundamental problem that I have with the motivation to combine is that it is arbitrary. As everyone knows that there are three place where a motivation to combine can be found: prior art, nature of the problem, and one of ordinary skill in the art. Most of the time, the examiners will rely on their knowledge (being one of ordinary skill in the art) to cobble up some motivation. (Now here is the problem.) Fundamentally, this is a fact issue, and something which practitioners and examiners argue about extensively. If the examiners are going to have a motivation to combine, I want a declaration setting forth facts and precise reasoning for the combination, not simply “because it is better that way.”

    The USPTO should be responsible for telling applicants in precise terms why they are not entitled to a patent. And if someone wants to complain about the burden on examiners, then the PTO needs to start paying examiners more money (and Congress needs to stop raiding the PTO for funds when they start spending in excess).

  15. Unless there’s a basis for a Certificate of Correction changing “council” to “counsel”, this patent is worthless as it does not recite what it purports to claim.

  16. Thank you so much for putting up this item for debate. The EPO would have had no difficulty whatsoever in killing this one stone dead, in short order, from the get go. UK Govt has looked exhaustively at the patentability of non-“technical” subject matter, in a massive opinion-gathering exercise, and has concluded that the UK public is not helped by patenting non-technical stuff. In other words, the current EPO standard gets the right balance.

    One of your correspondents want checks and balances on the freedom of Exrs to reject such non-technical stuff. Fair enough. How to do that, without clogging up the whole system? Answer: borrow some more of the ways the EPO does business (eg civil law, no binding precedent). It’s what the world uses, except for England and USA.

    Readers will chant the mantra that the EPO is slow, but do those critics understand PACE, Art 67 EPC and how to get their oppositions fast-tracked? Most Applicants, most of the time, are in no hurry to get to closure on their claim wording.

  17. A look at the prosecution shows a serious attempt by what appears to be a junior examiner in 3600 to reject the application in a decent prosecution. While a TC1600 examiner might have been more aggressive on obviousness(which does not seem to be endearing to most attorneys), the motivation requirement is what makes this case allowable. Any invention of selection, where the applicant just selects particular known elements out of the prior art, can be difficult to reject without resorting to a generic, everything is obvious argument. Maybe KSR will change this, but I’m not sure a regime in which examiners have to decide obviousness without needing motivation would be better.

  18. With regard to art, I think we all know that programs like ACT! and others perform most if not all of these functions and have for many years, not to mention mainframe and mini-computer applications (very likely prior to January 10, 2000, the critical date for this patent). However, since the software industry was notoriously bad at documenting its work, an Examiner is fairly hapless to prove what programs such as ACT! did and when.

    Illustrating my point, look at the non-patent references cited by the Examiner. She struggled mightily to find some descriptions of the prior programs and applications that he KNEW were out there, but could not, or not at the level of detail required to reject claims. That is what I mean by we need better art. This problem is ENDEMIC in the software TC’s.

  19. We can all agree that this is a prime example of garbage that should be invalidated. I would like to hear what “better art” is being referred to in the statement that seemed to presume there’s a documented art to be found for every insignificant detail. Such naive presumptions contribute to the issuance of such garbage patents. SCOTUS should give more power to the examiners for obviousness interpretation to combat such absurdity, but there has to be some check against the potential abuse of that power.

  20. We don’t need a new obviousness standard to invalidate this piece of crap, we need better art.

  21. I’m guessing that the point of novelty of this piece of garbage is the part about the supervisor receiving only the second reminder email.

    I think it would take a few minutes to find some publication which teaches that supervisers typically do not want their inbox flooded with non-urgent information that other employees are responsible for handling. But then the applicant will wave his hands around and say that teaching isn’t specific enough to render the claim obvious.

    I welcome a decision from the Supremes smacking this obvious nonsense.

  22. I haven’t looked at the patent spec, but it seems to me that since patent terms are given their plain and ordinary meaning, that nobody would infringe, since people appoint in-house or outside “counsel,” not “councils”. Superior Fireplace and all that. :)

  23. So now the USPTO has allowed a patent on a computerized tickler system.

    I repeat what I said with regard to the US Map baked goods patent: And we wonder why the PTO gets criticized for doing bad work?

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