Patently-O Bits and Bytes

  • The Supreme Court reviewed the certiorari petition of Biomedical Patent Management (BPM v. California Dept. of Health) and asked the Solicitor General to offer the US Government’s views on the issue of when a state waives its Eleventh Amendment Immunity. [SCOTUS Blog] In this case, BPM sued California for patent infringement.

50 thoughts on “Patently-O Bits and Bytes

  1. My good friend RaBeanie (we golf together most weekends when he isn’t writing or composing) noted two non-significant transcription errors in my comment above in the first paragraph I quoted from the CIAS Reply Brief.

    This is the phrase with the typos:
    “… this Court should against CIAS’ for …”
    This is the corrected phrase:
    “… this Court should rule against CIAS for …”
    ————————————
    This is the whole paragraph in CIAS’s Reply Brief, pps. 1-2 with the corrected phrase:
    “Bally’s brief suggests what Bally itself perceives this flexibility to mean – going beyond the merits of the particular prosecution history statements at issue to enable a result-oriented analysis. Thus, just as it did in the District Court and in the Federal Circuit, Bally in effect suggests that this Court should rule against CIAS for reasons totally unrelated to the prosecution history statements at issue, but plainly intended to color the Court’s view of CIAS and incline it toward ruling against CIAS.”
    ————————————

    The full comment above this correction-comment was one of a series of mine regarding the lower courts’ odious result-oriented rulings in CIAS v Bally – rulings in which the lower courts exercised unfettered discretion by Ignoring and Nifonging controlling common and statutory law: The Federal Circuit affirmed and district court’s result-oriented decision which was unduly influenced by the politically corrosive “Patent Troll Talk” atmosphere instigated by horseshit organizations like “Coalition for Patent Fairness” created by members largely comprised of the highly successful software new-comers to America’s computer technology field of art and their largest corporate customers who have been brain-washed just as have some lower courts that comprise our judicial branch, courts that don’t see or dispense blind justice.

    I find it telling that no American University or College, NOT A SINGLE ONE, not even the most distinguished IP Professor Crouch’s MIZZOU, the University of Missouri, one of America’s most preeminent research institutions, is a member or associated in any way with this devastating “conspiracy” against America’s strong, use-to-be-proud(er) patent system.

    Moreover, America’s most reputable and seasoned companies, entities that embody our nation’s historic fundamental inventive achievements and strengths, our very backbone, companies like IBM for example, and pharmaceutical companies that have added decades to life expectancy since I passed on, are not associated with conspiracy coalitions that spread treasonous anti-American patent system propaganda.

    My first comment way above was titled:
    “Carnac the Magnificent” haunts district courtroom – Reexamined patent quashed.
    and is found on this link:
    link to patentlyo.com

    As RaBeanie use to say, “If you shut your door to all errors truth will be shut out”

  2. To continue my strong “DISSENT” briefing I started yesterday…

    One definition of a RESULT ORIENTED DECISION is a decision that has been influenced by “SOMETHING OTHER” than the actual merits of the case that have been argued by the litigants in their briefs and at Hearings.

    The “something other” in this CIAS v Bally case was a proverbial “PINK ELEPHANT” that haunted the lower court rooms. The “something other” was never at issue and never argued in the district court or the Federal Circuit (as described in my comments yesterday, the only issue litigated was whether or not CIAS made a disclaimer of claim scope during prosecution, and that issue alone was the basis of a summary judgment of noninfringement which let Bally off scot-free).

    Inexplicably, in Bally’s Supreme Court Opposition Brief, for the first time Bally argued the PINK ELEPHANT arguments, i.e., Bally argued that Petitioner CIAS had only two employees, the inventor and his wife, and that, in essence, CIAS was a “NON-PRACTICING PATENT TROLL with a BAD “KSR” PATENT.”

    Specifically, Bally argued on page 8 of its Opposition Brief that:
    “Petitioner produces no marketable products.”
    And, specifically, on pages 11 and 12, Bally argued that:
    “The question of patent validity was never reached by the district court because summary judgment of non-infringement was mandated. Had it been reached, however, it is evident, especially in light of this Court’s recent decision in KSR, that the ‘422 patent, if broadly construed to claim systems that ‘check for duplicates’ in a “look-up table” could not survive an obviousness analysis. … ‘known options within his or her technical grasp. … [and] the product not of innovation but of ordinary skill and common sense.’ KSR, 127 S. Ct. at 1742. As such, the construction that petitioner urges leads perforce to invalidity for obviousness, rendering this case even less appropriate for certiorari, if that were possible.”

    The whole truth (verbatim) is found in CIAS’s Reply Brief, pps. 1-3:
    ————————————
    “Bally’s brief suggests what Bally itself perceives this flexibility to mean – going beyond the merits of the particular prosecution history statements at issue to enable a result-oriented analysis. Thus, just as it did in the District Court and in the Federal Circuit, Bally in effect suggests that this Court should against CIAS’ for reasons totally unrelated to the prosecution history statements at issue, but plainly intended to color the Court’s view of CIAS and incline it toward ruling against CIAS.

    “Bally presents a parade of horrors, positing suits by CIAS against others, including ‘the entire U.S. gaming industry’ if the Court should rule in CIAS’ favor. (Opp. Br. at 11, n3). Bally neglects to tell the Court that prior to this suit, Bally proposed that Bally itself might acquire rights in the CIAS patent for purposes of asserting it against others in the U.S. gaming industry. That CIAS may have infringement claims against others is irrelevant to the question of whether or not it made a disclaimer of claim scope during prosecution. But Bally certainly believes that this will have some influence in the application of a ‘flexible’ test to the written record.

    “Likewise, Bally tells the Court that the CIAS patent claims should be held invalid for obviousness under 35 U.S.C. § 103 and KSR Int’l Co. v. Teleflex, 127 S.Ct. 1727 (2007). Yet there was nothing obvious about the patent’s claims when the United States Patent and Trademark Office held the patent claims patentable after reexamination. And others in the gaming industry have acknowledged that the very profitable Ticket In Ticket Out system could only be a long sought dream until the counterfeiting problem was solved – a solution provided by the CIAS patented system. (158a at col. 2, lines 7-17.) Bally’s assertion of obviousness should, as a matter of relevancy, have no bearing on the determination of the prosecution history disclaimer issue presented. Yet Bally here, as it did below, apparently expects that it will.

    “Finally, Bally tells this Court that CIAS ‘produces no marketable products’ and that the inventor, Mr. Storch and his wife are its only employees. (Opp. Br. at 8.) Bally would ignore the fact that Mr. Storch is the inventor on 17 patents and that CIAS has developed gaming products. Bally also would ignore the fact that it is infringers such as Bally that keep individual inventors and small companies such as CIAS from achieving the benefits of their inventive efforts. Bally disparages Mr. Storch and CIAS obviously expecting that the disparagement will influence the courts in applying a ‘flexible’ test for prosecution history disclaimer.”
    ————————————

    RESULT-ORIENTED OPINIONS are in a sense an inverse function of judicial integrity. Result-oriented decisions can and do occur when controlling precedent and statutory laws are “flexible” and/or “twisted” and/or ignored all together.

    This case was decided and dismissed ON THE LAW — facts were not material!
    This case was decided and dismissed by the district court on SUMMARY JUDGMENT of non-infringement after the patent’s claim terms were critically narrowed because an implication the Judge perceived in the minds of the inventors (’s minds) when they described prior art in their Request for Reexamination – Controlling Phillips Precedent was twisted Nifong-style to support this bad decision which lacked judicially integrity.

    Here comes the punch line — contrary to controlling precedent, statutory laws and the notion of Blind Lady Justice, the Federal Circuit affirmed this district court Judge’s mind-reading ruling!

    Anonymously yours,
    I’m offended, Lady Justice: Aesop said “Every truth has two sides; it is as well to look at both, before we commit ourselves to either” & “Appearances often are deceiving”

    Can anyone put in their 2 rupees?
    Anonymously yours, Rabindranath Tagore:
    “If you shut your door to all errors truth will be shut out”

  3. TakeLegalAdvice.com (TLA) is an online legal matching service, free to use for the public (individuals and corporates). They come onto the website, submit their cases filling out a short questionnaire and our software matches them to the best suitable law firm to their case. They will receive then up to 10 law firm responses within 48 hours. (They don’t need to release their contact details before or after they got any response)

    If they would like to instruct any of the law firms they can release their details or contact directly the firms, but again, there is no obligation for them to do that.

    The service is free and confidential.

    In addition we launched our international section in November 2007. Which breaks down into 2 part.

    A UK or International business is looking for a law firm abroad ( currently we represent 52 countries)
    Law Firm to Law Firm partnering – means if a law firm needs another firm somewhere in the world, they can use the service for free (same concept as mentioned above)

    Find a patent lawyer

  4. TakeLegalAdvice.com (TLA) is an online legal matching service, free to use for the public (individuals and corporates). They come onto the website, submit their cases filling out a short questionnaire and our software matches them to the best suitable law firm to their case. They will receive then up to 10 law firm responses within 48 hours. (They don’t need to release their contact details before or after they got any response)

    If they would like to instruct any of the law firms they can release their details or contact directly the firms, but again, there is no obligation for them to do that.

    The service is free and confidential.

    In addition we launched our international section in November 2007. Which breaks down into 2 part.

    A UK or International business is looking for a law firm abroad ( currently we represent 52 countries)
    Law Firm to Law Firm partnering – means if a law firm needs another firm somewhere in the world, they can use the service for free (same concept as mentioned above)

    Find a patent lawyer

  5. “I blame you (and too much grilled knockwurst and sauerkraut) for making me get up last night, and I didn’t even have to p!”

    This one is going directly into the Way Too Much Information file. Even my cat is speechless.

  6. OWH, Jr., I’m confident that I have more sympathetic eyes for this petition than the justices. Still, my sense is that this is something for the CAFC to resolve within the circuit. Perhaps it will require another en banc decision (I don’t claim to know either way).

    Regardless, it does not look like a situation where there is a circuit-wide error that presents a compelling problem.

  7. Mr. Dhuey,

    CIAS v Bally cert petition’s QUESTION PRESENTED is this:
    “Whether the Federal Circuit’s use of patent prosecution history statements in claim construction is so erroneously inconsistent among its own panel decisions and incompatible with its prior en banc decision in Phillips as to make it impossible for the public to know with any degree of confidence the scope of patent claims; and whether that Court’s inconsistent judgment in this case should be reversed.”

    Pp. 6 of the petition notes:
    “Out of 16 district court cases since Phillips specifically dealing with the issue of prosecution history disclaimer, the Federal Circuit has disagreed with the district court on that issue a total of 12 times.”

    And pps. 6 & 7 of the Petition say this (emphasis added):
    “… The result is that the public is left at sea as to what a patent’s claims mean unless and until one or another panel of the Federal Circuit decides how it is going to view these prosecution history statements.

    “In this case, for example, the District Court held that during reexamination of the patent-in-suit, CIAS, in describing a prior art patent system, had “IMPLIED” a particular operation of that system and that the “IMPLICATION” of this description was a limitation to the CIAS patent’s claims. Without explaining how such an “IMPLIED” description and “IMPLICATION” of a limitation could satisfy its own “clear and unmistakable disavowal of claim scope” standard, the Federal Circuit affirmed the District Court’s limiting claim construction and consequently judgment of noninfringement. If all that is required to create a limiting claim construction is an “IMPLICATION” based on a description of prior art, then patent applicants and the public as a whole are placed in an untenable position. VIRTUALLY EVERYTHING AN APPLICANT MIGHT SAY ABOUT PRIOR ART COULD GIVE RISE TO AN “IMPLICATION.” Yet applicants routinely must describe or discuss prior art cited to or by the patent examiner. No one will know whether that discussion will limit the patent’s claims unless and until there is litigation and the Federal Circuit speaks.”

    ——————–

    Doesn’t all this suggest that the Supreme Court ought to do something and provide guidance?

  8. I took a look at the CIAS v Bally cert petition and, as with Translogic Tech. v. Dudas, I see a failure to make a “compelling” case for Supreme Court review. The petition reads much like a CAFC appellant’s brief. That’s probably not going to clear the very high hurdle of the cert pool.

    It’s not enough to show that the CAFC erred. If lower court error were enough, there would be about a thousand Supreme Court cases per year, rather than the typical 80-90. You have to show the Supreme Court that this error is a really big problem, and in my opinion, CIAS failed to do so.

  9. Hi Leo,

    Like Mr. Madman, maybe I’ve got some Denny Crane, Esq. stuff õn my mind my mind.

    I know every time the bastards move the patent goal post back and back and back again I go a bit more bonkers.

  10. “pubicly?”

    Interesting Freudian slip. I’m not sure what it means.

    I’m not sure what it takes to establish a lawyer-client relationship on an anonymous blog. (And other lawyers might yell at me for giving out free legal advice anyway.) So I can’t answer your specific legal question. But, I will say that swearing behind someone else’s application really stinks. Especially if you suspect, but cannot prove, that the other applicant got the idea from you.

    Of course, I’m sure nobody on this blog will blabber your invention pubicly. At least not until they’ve had a few.

  11. Dear Malcolm,

    Re your comment yesterday:
    “Maybe they are just searching for someone to clear the air. You know what they say: before you go looking for dog poop on the carpet, check to make sure that one of the guests didn’t simply break wind.”

    This is a true story.
    I thought your really gross comment yesterday was funny*, really ridiculous because who would make that stubid misteak, but pretty, pretty, pretty funny (a Larry David-ism). Much as I tried, however, I couldn’t think of anything fittingly funny to come back with.

    With that said, here’s the true story: My wife and I let our several cats sleep in our bedroom, and occasionally one will poop something so odorous in the litter it wakes me up and I go scoop the poop. Last night I was awakened by a Just such a stench, and I got up ready to scoop before I realized that I, I — simply broke wind! — So I blame you (and too much grilled knockwurst and sauerkraut) for making me get up last night, and I didn’t even have to p!

    This is not a tall-tale – it really happened last night! Too much Patently-O for me too.

    BTW, what do you think of the OLIVER WENDELL HOLMES, JR. The Great Dissenter’s comment above – it seems more than doubly serious to me — I read Oliver’s second comment about how the district court specifically Nifong-ed en banc Phillips to Nifcuk the small company to let the Big one-arm bandit Business skate free — but you know me, easily excitable, patently passionate.

    In any future infringement case, why couldn’t Bally’s Disavowal-by-Implication defense be cited by any infringer who has no viable defense?

    *In the future, of course, you must try to be funny without being so gro¿õss.

  12. Dear Leo,

    Thanks for your insight. I can see and agree that “it’s a coherent theory.” A quick read of Article III seems to be relevant as well. And I can also see why a strict constructionist reading the Eleventh Amendment may not buy the Alden v. Maine argument.

    Mr. Dhuey’s case, of course, is not controlled by a long shot on this question.

    As I’ve explained why more than once a while ago, I do believe the eBay decision is willy-nilly, and not only to a strict constructionist either, but I’ve got something else on my mind at the moment.

    It is now that happiest of hours – would you care to join me my friend with a bit o’ Bourbon?, while I muse out loud a serious patent-bourbon question? But please, keep it strictly confidential, no public disclosure; let’s keep it between Professor Crouch, you all out there in the Patently-O blogosphere and me. Here’s the question:

    I bought a sophisticated carbonated soda making machine – one large cartridge of compressed gas makes over 100 liters of club soda (I like it—it works great). I’ve been thinking of carbonating bourbon for an extra boost.

    If, arguendo, such “bourbon w/ a boost” were a patentable invention, would I have one year to file a provisional application (assuming we all did not keep the faith and some of youse guys blabbered my bourbon invention all around town, pubicly)?

  13. jaoi ™,

    Yes, I think you’re missing something. But that’s OK. I’m not a Constitutional scholar either, but according to current Supreme Court jurisprudence, a state’s immunity from suit by one of its own citizens has been a given since the framing of the Constitution. Thus, the 11th Amendment only addressed lawsuits by citizens of other states (or countries).

    In Alden v. Maine, the Supreme Court explains:
    “[S]overeign immunity derives not from the Eleventh Amendment but from the structure of the original Constitution itself….”

    Whether you buy it or not (a few of the Justices apparently don’t), it’s a coherent theory. The Supreme Court is not simply ignoring Constitutional provisions willy-nilly.

  14. Dear Mr. Madman,

    You blow my mind in my mind in my mind … but in a way I also think in my mind. And our dreaming mind is separate and apart from our waking mind, and nare the twain shall meet unless we go nuts. And maybe our universe does undulate, of course it does, why not? I’ve thought so for a long time, since time ended and began again.

    However, what do you think patent-wise about a disavowal by a Judge mind reading what’s in an inventor’s mind? Kind’a sucks, don’t you think?, way beyond the pale?

  15. Dear Mr. M. Slonecker,

    Not that I know anything about it in any detail at all, but I assume Alden v. Maine was based on Article I, Sections 8 & 9. The Eleventh Amendment was made a few years later, and thus its explicit language should trump Article I. I assume, of course, the Eleventh Amendment was consistent with Article V.

    Also, on a quick reading of Article I, Sections 9 & 10, I saw nothing in particular in conflict with the Eleventh Amendment.

    Did Article V get annulled somewhere down the line? Is Article V not still part of the Supreme law of the United States? On what authority can any branch, including the judicial’s Supreme Court, and especially the Supreme Court, take a subsequent lawful Amendment over a prior Constitutional provision without a later lawful Amendment?

    I must be missing something. Please help.

    Denny Crane, Esq. certainly seems to go for anything so long as it wears a skirt. I thought I saw Justice Ginsberg blush Just a bit. I think she may carry the day for the innocent slow black Defendant in a 5-4 decision (O¿õ)

  16. Mr. Slonecker, the four justices you mention might be focusing on Justices Roberts and Alito, since they arrived after College Savings Bank and Florida Prepaid. If I had to guess, though, I think that Justice Kennedy is particularly interested in hearing the SG’s views on whether this case presents concerns not addressed in CSB. As I’ve mentioned before, Justice Kennedy has long been concerned about both unfair assertions of state sovereign immunity in litigation (Wisc. v. Schacht), and non-practicing entities’ potential use of heavy-handed litigation tactics (eBay). Our case touches on both of these concerns.

    And Mr. Mooney, thank you for continuing to dismiss our chances. Given your predictions thus far, I’d be alarmed if you became bullish for us.

  17. JAOI,

    Suits in federal courts…Seminole Tribe of Florida v. Florida (1996)

    Suits in state courts…..Alden v. Maine (1999)

    I was entertained watching Boston Legal on Tuesday night, but it did go over the top when Denny Crane started to flirt with Justice Ginsburg.

  18. Dear Jaoi:

    “1) Was that the only mistake Mr. Holmes, Jr. Made?”

    I hope it’s not a mistake.

    “2) Did that mistake confuse your understanding of his comment?”

    On the contrary, it clarified my understanding of his comment and more.

    “3) Do you have anything substantive to say?”

    Yes. To me the concept of a mind within a mind reveals something about the onion-like nature of the universe. Einstein once said that answers only lead to more questions. It’s like those Russian wooden dolls that have smaller dolls within, except there is no smallest doll, rather only decreasingly smaller dolls until a subatomic doll is opened and spontaneously inverts into a dark matter doll (then they get larger as you open more of them). When does it stop? At a universe-sized doll? The so-called god-doll? This is the kind of question that interests me. The minds of inventors’ minds are akin to CIPs of original applications. And as you know, you can have CIPs of CIPs, so the doll analogy is not only really cool, it’s also on point. This whole concept is fascinating to me because my mind thinks that it contains no other minds. At least it didn’t think that it contained another mind until I read that comment. Now I am not so sure.

  19. (Incidentally, again, in the case directly referred to above, I lost a Summary Motion I made on Federal Preemption (not Supremacy, but I think it’s directly related), but at I won the case because the Judge found my product to be an improvement our Mr. 500’s competitive product. My one witness, not counting me, out of 7 witnesses, was the only witness the Judge believed, and he said so.)

  20. Dear Mr. M. Slonecker,

    Thank you for your comment. It sounds remarkably parallel to Alan Shore’s concerns as he presented his case lambasting the Supremes on Boston Legal. I recorded the show and, if I ever get time away from blogging (o¿õ), I’ll make an audio track and email it to Professor Crouch to consider for one of his Bits and Pieces.

    With all due respect, however, I’m still a bit high and dry. I wrote this to Mr. Dhuey:

    Re:
    “ ‘…while the text of the 11th Am. might seem to allow a citizen to sue his own state in federal court, the Supreme Court has held to the contrary.

    “What case? And, moreover, what Amendment would give authority to the Supreme Court to violate the Supremacy Clause? Or is the United States Constitution no longer binding?, like Alan shore, Esq. was suggesting in his stunning lambasting of the Supremes on Boston Legal Tuesday night?

    “If I’m on to something, could this Constitutional position be introduced in the briefing and oral argument down the road a piece?”

    How does the Supreme Court holding contrary to the Supremacy Clause wash with the Constitution??:

    Article. VI. … :
    Clause 2: This Constitution, and the Laws of the United States which shall be made in Pursuance thereof; and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.
    Clause 3: The Senators and Representatives before mentioned, and the Members of the several State Legislatures, and all executive and judicial Officers, both of the United States and of the several States, shall be bound by Oath or Affirmation, to support this Constitution; but no religious Test shall ever be required as a Qualification to any Office or public Trust under the United States.

    (Incidentally, as memory serves, in my first major federal intellectual property case many years ago, I initiated a DJ against a fortune 500 company to get out of a crooked kangaroo Cook County Illinois court that they “bought” to squash me, and Mr. 500 countered in my district court with an allegation of unfair competition under a state statute. I responded with a defense of Federal Supremacy saying when patents run out, no further form of protection is available for the intellectual property.)

  21. “I am not an 11th Amendment scholar,”

    Modern 11th Amendment jurisprudence was created out of thin air by Scalia, Rehnquist and their clerks.

    “no doubt the minority will be focusing their efforts on Justices Roberts and Alito.”

    No doubt, indeed! And these two were selected by folks who believe that States Rights are the most important thing evah (unless the states wants to legalize pot or let gay people marry each other) The two justices were selected, in part, because they were perceived to be extremely loyal to The Party and its premises.

    I don’t think Roberts or Alito will surprise anybody here.

  22. Just an ordinary inventor(TM),

    As Mr. Dhuey notes, the Supreme Court has answered your question in the negative.

    There is an ongoing debate among the justices concerning the 11th Amendment, with 5 generally applying it in favor of state sovereign immunity on matters involving federal law, and with 4 advocating that it be applied much less favorably to the states.

    Interestingly, the initial movement strengthening state sovereign immunity inolved the concurrence of serveral members of the court who have since been replaced by Justices Roberts and Alito. The other three remain of the court, i.e., Justices Kennedy, Thoms and Scalia.

    In contrast, the four justices who have taken an opposite view are all current members of the court. These are Justices Meyer, Souter, Ginsburg and Souter.

    What is really at play here is a continuing attempt by the four justices who are currently in the minority to try and sway just one of the other justices to support their position that the 11th Amendment is not as inflexible as the majority opinions do date have expressed. Doubtless they are “shopping” for a swing vote to their side, and are hopeful that an SG opinion favorable to their position will result from the invitation extended for the SG to weigh in on the issue.

    Please be aware that I am not an 11th Amendment scholar, and make no attempt to even suggest that my comments are definitve . I am, however, one who is quite interested in the dynamics of how justices interact with each other on issues such as the 11th Amendment, and how those dynamics play out in the opinions issued by the court.

    BTW, no doubt the minority will be focusing their efforts on Justices Roberts and Alito.

    As Mr. Dhuey acknowleged in a post several weeks ago, the grant of cert. in this case the minority needs that swing vote. If it succeeds that will likely be the start of a significant turnabout in just how the 11th Amendment is interpreted and applied.

  23. Yes, there is more, a lot more, to it. This comment below is a follow up my comment on this link:

    link to patentlyo.com

    YES “Nifong-ed” or NO, not “Nifong-ed.” What do you, the Reader, think?

    (Nifong, as in the disbarred North Carolina District Attorney who persecuted the Duke University Lacrosse Team. Nifong held back exculpatory evidence.)

    Did the district court “Nifong” the inventors a little bit, just enough to let Bally off scot-free, and did the district court write a blueprint for a “RESULT-ORIENTED DECISION”?

    Did the district court twist the en banc Phillips opinion so an “IMPLICATION” – which the court perceived in the minds of the inventors when they described prior art while negotiating with the patent office DURING PROSECUTION – became a critical “DISAVOWAL” of claim scope thereby tanking an otherwise successfully reexamined patent?

    The district court Judge cited Phillips in footnotes 74 and 75 (27 of the opinion’s 134 footnotes were to Phillips) to support his ruling of a disavowal of claim scope based on what the Judge perceived in the minds of the inventors to be an “Implication.”

    Please bear mind that the Judge found the “Implication” in the minds of the inventors in the PROSECUTION HISTORY, not in the patent’s SPECIFICATION. This is the pertinent distinction Phillips was making in the Phillips quote the district court cited in two footnotes, i.e., the difference between the prosecution history and the specification; and this is the distinction the district court Nifong-ed out of the Phillips quote, i.e., the context of the Phillips quote was critically truncated, but don’t take my word for it, you be the judge:

    This is the full quote from Phillips verbatim (pp. 17):
    link to cafc.uscourts.gov
    —————————————————————-
    “Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent. See Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir. 1992). Furthermore, like the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent. Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.”
    —————————————————————-

    In the district court’s FOOTNOTES 74 and 75 which were used to limit claim scope by a PROSECUTION IMPLICATION, this is what was left AFTER Phillips was “Nifong-ed,” i.e., after the court specifically omitted phrases critical to the distinction Phillips’s taught about the difference between the “prosecution history” and the “specification”:

    Footnotes: Phillips was “Nifong-ed”:
    ———————————————
    “74 See Phillips, 415 F.3d at 1317 (‘Like the specification, the prosecution history provides evidence of how the [] inventor understood the patent. Furthermore . . . the prosecution history was created by the patentee in attempting to explain and obtain the patent.’).” pp.16
    “75 Id.” pp.17
    ———————————————

    By critically truncating Phillips as shown, the district court supported this RESULT-ORIENTED FINDING that lacked judicial integrity!, but please, judge for yourself.
    District court quotes:
    ————————-
    “With that framework in mind, the implication of the inventors’ description is that they understood and claimed the ‘422 patent, in contrast to Shoshani, to use either serial numbers alone or randomly-selected numbers alone.74
    Despite being secondary to the specification, prosecution history can demonstrate ‘how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.’75” (pps 16-17)

    “Accordingly, the Court construes ‘unique authorized information’ to mean information associated with each object, unique to that object and authorized by the ‘422 patent’s system, but excluding information other than serial information alone or randomly-selected information alone.” (pp 18)
    ————————- end quotes.

    What do you think?
    YES “Nifong-ed” or NO, not “Nifong-ed.”

    YES, I ought to know, Mike Nifong (I like the new verb. When you are “The Man” it’s a real “power-rush” to stick it to an innocent of any sort.)

    “Certitude is not the test of certainty. We have been cocksure of many things that were not so.”

  24. Dear Mr. Madman,

    “ ‘…in the minds of the inventors minds…’
    I knew inventors were smart, but not that smart!”

    I have three questions:
    1) Was that the only mistake Mr. Holmes, Jr. Made?
    2) Did that mistake confuse your understanding of his comment?
    3) Do you have anything substantive to say?

  25. Dear Mr. Dhuey,

    Re:
    “…while the text of the 11th Am. might seem to allow a citizen to sue his own state in federal court, the Supreme Court has held to the contrary.”

    What case? And, moreover, what Amendment would give authority to the Supreme Court to violate the Supremacy Clause? Or is the United States Constitution no longer binding?, like Alan shore, Esq. was suggesting in his stunning lambasting of the Supremes on Boston Legal Tuesday night?

    If I’m on to something, could this Constitutional position be introduced in the briefing and oral argument down the road a piece?

    BTW, what do you think of the OLIVER WENDELL HOLMES, JR. The Great Dissenter’s comment above – it seems pretty serious to patent holders, especially to independent inventors.

    Could that precedential CIAS v Bally case be cited to let a big business off scot free when a big business infringer has no viable defense against infringement, and a Troll-hating Big-Business Judge (like some of the Supremes Mr. Shore pointed a finger at on Boston Legal) wants to screw a private inventor?

    Could there be more to it? I mean, OLIVER’s quotes are accurate and in honest context—I checked them.

  26. Just an ordinary inventor(TM), while the text of the 11th Am. might seem to allow a citizen to sue his own state in federal court, the Supreme Court has held to the contrary.

  27. I have to figure no one else read the comment posted above by a “NEW” poster person, “OLIVER WENDELL HOLMES, JR. The Great Dissenter,” now deceased (o¿õ).

    Being forced into semi-retirement, I guess I, Jaoi, have more time to read some Patently-O stuff than most. To me what is so captivating is to see the entire IP profession slowly brick-by-brick be deconstructed at the behest of International Big Organized Business, IBOB. It makes one want to counter-almountate their ingesta.
    link to johnnycarson.com

    And almost nobody seems to give a sheet, as if everybody just caves in except Mr. CaveMan and me. Just how many patent attorney jobs will be lost when patents get further down trodden and crushed into oblivion?

    Professor Crouch, how many readers do you think Patently-O will have as patents slowly become more bother than they are worth. Not to worry – I’m sure you could successfully teach anybody any body of law.

    I read OLIVER WENDELL HOLMES, JR. The Great Dissenter’s comment and checked the quotes – it seems pretty dang strong to me. There must be more to it.

    Anybody?, Anybody?, Bueller?

    PS:
    Heeerre’s Johnny!, another “Carnac the Magnificent” you may like:
    link to johnnycarson.com

  28. Dear Mr. Dhuey,

    I have a general question for you or another interested party.

    My question regards AMENDMENT XI:
    “The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.”

    As I read the Eleventh Amendment, a literal interpretation suggests that a (local) “Citizen” of California can sue California.

    Further, even if there were subsequent common law, or statutory law, other than an amendment to the Constitution, the Eleventh Amendment would be controlling via the Supremacy Clause, Article VI, Sections 2 & 3.

    Is my literal interpretation of the Eleventh Amendment correct?

    Also, the comment made by “OLIVER WENDELL HOLMES, JR. The Great Dissenter” just above seems pretty powerful. What do you think?

  29. “Carnac the Magnificent” haunts district courtroom – Reexamined patent quashed.

    The Precedential CIAS v Bally Federal Circuit Opinion can tank more past, present and future patents than KSR! No other Precedential Federal Circuit Opinion in patent history turned on a
    (i) district court finding an IMPLICATION in the minds of the inventors minds while describing prior art to the PTO during prosecution, and
    (ii) that mind-read IMPLICATION was AFFIRMED by the Federal Circuit.

    CIAS’s Certiorari Petition is pending for “Conference” tomorrow, Friday April 25th in the Supreme Court. There are no amicus brief because CIAS is a small inventor-owner company (CIAS developed and built the world’s first scanning blackjack table).

    If the Supreme Court does not grant cert, the standing Federal Circuit Precedential Opinion in this case will mean that untold thousands of past, present and future U.S. patents are subject to impossible claim construction vagaries raised by IMPLICATIONS an inventor may have had in his or her mind during patent prosecution proceedings with the PTO.

    The district court Judge’s opinion DID NOT ONCE MENTION or even refer to the long-established precedential “CLEAR and UNMISTAKABLE” requirement, or anything similar, regarding a possible claim scope disavowal made by the inventor during the PATENT’S PROSECUTION.

    Instead, the district court Judge in this case READ THE MINDS OF THE INVENTORS and tanked the patent by limiting the scope of the claims based on an IMPLICATION he perceived in the inventors’ minds when they described what they understood about prior art in a Request for Reexamination. Here is what the district court found, verbatim:

    District court quotes:
    ————————-
    “With that framework in mind, the implication of the inventors’ description is that they understood and claimed the ‘422 patent, in contrast to Shoshani, to use either serial numbers alone or randomly-selected numbers alone.74
    Despite being secondary to the specification, prosecution history can demonstrate ‘how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.’75” (pps 16-17)

    “Accordingly, the Court construes ‘unique authorized information’ to mean information associated with each object, unique to that object and authorized by the ‘422 patent’s system, but excluding information other than serial information alone or randomly-selected information alone.” (pp 18)
    ————————- end quotes (links to full opinion below).

    HERE COMES THE PUNCH LINE — the Federal Circuit affirmed this Judge’s mind-reading ruling!

    The Federal Circuit disagreed with the district court on a non-substantive claim construction term. HOWEVER, on the finding of the IMPLICATION that LIMITED THE PATENT just enough to let defendant Bally, the one-arm bandit maker and alleged infringer, off scot-free, the Federal Circuit AFFIRMED the district court Judge’s summary judgment of non-infringement based on limiting the scope of the patent’s claims because of an IMPLICATION the Judge read in the minds of the inventors when the inventors described their understanding of the prior art in a Request for Reexamination. Incidentally, the Reexamination was SUCCESSFUL with only one amendment completely unrelated to the district court’s finding of a claim scope disavowal by “implication.”

    Here is the district court ruling the Federal Circuit affirmed:
    ————————- Quotes:
    This is exactly what the DISTRICT COURT wrote on page 16 of its opinion:
    “With that framework in mind, the implication of the inventors’ description is that they understood and claimed the ‘422 patent, in contrast to Shoshani, to use either serial numbers alone or randomly-selected numbers alone.74”

    And this is exactly what the FEDERAL CIRCUIT wrote in its Precedential opinion:
    “We conclude that although the district court erred in its construction of the term ‘comprised of,’ that error did not affect the construction of the substantive terms that support the judgment of non-infringement. That judgment is affirmed.” (pp 2)

    “We agree with the district court that the reexamination recharacterization of Shoshani requires the construction that the ’422 claims exclude information other than serial information alone or randomly-selected information alone.” (pp 10)
    ————————- end quotes.

    Does this mean that patent infringers can get off scot-free because of something an inventor may or may not have “implied” while describing prior art in patent prosecution proceedings before the PTO?

    Does this Precedential Federal Circuit decision mean that the “CLEAR and UNMISTAKABLE” precedent for claim scope disavowal during prosecution no longer applies? Does this mean that the new standard is “DISAVOWAL” by “IMPLICATION”?

    Does this mean a district court can tank a patent because of what it perceives was in the mind of an inventor when the inventor described prior art during patent prosecution proceedings? And, that the Federal Circuit will Affirm citing this new Precedential case law Opinion?

    Does this mean untold thousands of past, present and future U.S. patents are subject to impossible vagaries unless the Supreme Court elects to rein in such unfettered arbitrary and capricious abuses of discretion in the lower courts?

    link to johnnycarson.com

    Old Hickory, President Andrew Jackson said:
    “Any man worth his salt will stick up for what he believes right, but it takes a slightly better man to acknowledge instantly and without reservation that he is in error”
    and
    “There are no necessary evils in government. Its evils exist only in its abuses.”

    LOWER COURT OPINION LINKS: The Federal Circuit opinion may be found on
    link to cafc.uscourts.gov
    and
    the district court opinion may be found on
    link to nysd.uscourts.gov
    then choosing Southern District of New York on the drop down menu; then Proceed to CourtWeb; then enter CIAS in Caption search; then enter two dates 3/29/06 to 3/29/06; then Run Report: and then click on link under See attached.

  30. Mr. Dhuey,

    I do hope you noticed I did not make any suggestion that I was prepared to prepare “humble pie” to sate your appetite for the obvious reason that it would be presumptuous of me to declare what the Court will or will not do. My comments have been merely to note that the patentee does face an uphill struggle to secure the grant of cert., with the first issue not requiring quite the effort as I believe will be faced by the second issue.

    Much of what I have stated is based upon noting a clear propensity by a majority of the Court to pay greater deference to the 11th Amendment than seems to be the case with the minority. I believe you will agree that the question will ultimately be decided by whether or not the current minority is able to secure a swing vote. If that happens, and the grant of cert. would certainly suggest a perceived success by the minority, then that would seem to bode well for the patentee. Of course, what the SG ultimately posits in his brief could be a decisive factor.

  31. Mr. Slonecker, Atascadero, like College Savings Bank concerns waiver by consent, not by litigation. Lapides is factually distinguishable from our case in many respects, but it clearly teaches that waiver by litigation is a very different doctrine than waiver by consent and the repudiated constructive waiver doctrine.

    There is no dispute that California waived its sovereign immunity in each of the two dozen patent cases it filed (including the DJ action against us). The question of first impression here is the _scope_ of these waivers. No case thus far answers that question, but Lapides teaches that we answer the question based on principles of fairness and consistency.

  32. Dear Mr. Andrew Dhuey,

    BigGuy said what was in my heart and what I would have written had I had his silver tongue. Bravo!

    PS:
    Malcolm,

    You and I are going to have to work much harder writing our missives to match those of BigGuy.

    BTW, what did you guys think of Alan Shore’s stunning lambasting of the Supremes on Boston Legal last night? Man, what a litigator! That show sure has some serious latent legal talent.

  33. Mr. Dhuey,

    Imagine my horror when I discovered that the encomium in my previous missive was besmirched by the presence of an atrocious misspelling. Of course, I meant “labyrinthine.” Please accept my humblest and most sincere apologies.

  34. Mr. Dhuey,

    Notwithstanding and with all due regards to the rather prolix commentary submitted in the preceding commentary, and with all due respect to the author or authors of the aforementioned commentary, it would appear, at least to those of us who do not spend a considerable, or even significant, amount of time on jurisprudential issues rising to the level of review by the highest appellate court in our fair land, that you have earned the right to congratulations, felicitations, and the like, without limitation, for having at least gained the interest of several, if not all, of the august members of said appellate court with regards to your petition. You may consider the aforementioned congratulations hereby enthusiastically rendered, accompanied by a heartfelt desire that you encounter only the best of fortunes as your petition further wends its way through the seemingly labyrnthine processes and procedures of the court for resolution by said august jurists.

  35. “Asking for the SG’s views is an odd way of showing such a lack of interest, isn’t it?”

    Maybe they are just searching for someone to clear the air. You know what they say: before you go looking for dog poop on the carpet, check to make sure that one of the guests didn’t simply break wind.

  36. Mr. Dhuey,

    After considering your reference to Lapides above, I do believe it bears upon the first of the two isues I noted, i.e., the one with the “break” in the litigation. For the argument to prevail, however, will it not be incumbent for the patentee to overcome the counter-argument based upon the Federal Rules of Civil Procedure as noted by the CAFC?

    Turning to the second issue of a “generic” rule, Lapides is not in my view especially helpful, and CSB cuts in the opposite direction urged by the patentee.

    Please understand that my comments are not in any way intended to second guess or criticize the arguments presented in the patentee’s brief. It is an unfortunate fact of “legal life” that we must take cases as we find them and try to present as compelling a case as possible.

    There is a “take away” from Lapides that presents an interesting opportunity…an action filed in state court based upon a state cause of action that the state voluntarily removes from state to federal court. Lapides applies to general rule of “too bad state, it was your decision to make and you made it…immunity waived.” By federal law patents are described as having all the attributes of property, and certainly states are not entitled to take a contrary position by virtue of federal preemption in the patent arena. Accepting the premise that patents are property under both state and federal law, and further accepting that the taking of property is recognized as a compensable act under both the federal and state schemes, then in my view I have difficulty with the notion that because the property happens to be a patent that state takings claim are jurisdictionally limited to just the federal courts. Yes, my view may represent a technical parsing of words, but as we are all well aware technicalities many times are more than sufficient to carry the day.

    Of course I am well aware that a state court may decree that it lacks jurisdiction to hear the case since it involves a matter of federal law for which Title 28 limits jurisdiction to actions in federal court. However, having read the pertinent section in Title 28 it is not at all clear to me that the relevant provision is dispositve of the issue.

    Again, I do look forward to reviewing the SG brief. Call it intuition, which may prove totally off base, but the enhanced deference to the literal provisions of the 11th Amendment leads me to belive the brief will tend to bolster the importance attached by the Court to the 11th Amendment that started in recent years with Atascadero.

  37. Dear Mr. Andrew Dhuey et al.,

    It is interesting to note that Mark S. Davies, Esq. of O’Melveny & Myers LLP wrote an article about Supreme Court review in which he wrote:

    “The Supreme Court granted 77 petitions in the 2006 Term. The 77 granted
    cases were selected from roughly 1,650 paid petitions.

    In 73% of the cases, there was no dissent by the court below.”

    That makes the odds roughly 1 in 21 – not too bad.

  38. Mr. Andrew Dhuey,

    I believe Malcolm is better at handicapping sporting events.
    His humor, like his patent views, are, well, cheesey (o¿õ).

  39. Mr. Andrew Dhuey,

    I believe Malcolm is better at handicapping sporting events.
    His humor, like his patent views, are, well, cheesey (o¿õ).

  40. By the way, Mr. Mooney, you stated in the other thread very confidently that the Supreme Court would show no interest in this case. Asking for the SG’s views is an odd way of showing such a lack of interest, isn’t it?

  41. “If it supports the patentee’s position on both issues, then I will be only too glad to “eat the humble pie” you will undoubtedly and should prepare. However, I am not as yet ready to put out a place setting for such a meal. While I may be presented with an “entree” as to the first issue”, I do harbor substantial doubts that the meal will also include a “main course” as to the second issue.”

    I guess we can skip the cheese course.

  42. Mr. Dhuey,

    The cert petition addresses two issues, one limited to a specific case where there was a “break” in the proceedings (which I posit may find a receptive audience in the court), and a broader issue directed to 11th Amendment immunity based upon state action by engaging in the “patent system” and in various instances invoking “federal jurisdiction” to secure enforcement of its patent rights (which I posit will have a much more difficult time finding a receptive audience in view of CSB, FP and the makeup of the current members of the court). Clearly the former comes close to the line defined by the general rule pertaining to the waiver of 11th Amendment immunity. The latter, however, is not limited to simply one specific case. It calls upon the court to construe such action as “generic” such that “constructive waiver” should pertain in all instances. I belive this issue will be a much, much harder to “sell” to the court. I am sensitive to the issue of “I can sue you when I want, and you cannot sue me when I do not want you to”. It is unfair, and one would be hard pressed to argue otherwise. Even so, ever since Atascadero the 11th Amendment has presented a formidable hurdle, and the direction of the court since then is to retreat from prior decisions that may suggest the contrary.

    I know we briefly discussed a couple of months or so ago the question I posited above concerning an initial state court action. To the best of my recollection there is no case law precluding such a state court action if one accepts the premise that a patent is “property”. If a state wishes to dispute its status, then it is plausible that such a dispute would have to be removed by the state to a federal court in order to present a proper challenge to validity of the patent.

    I look forward to reading the brief that will be submitted by the SG. If it supports the patentee’s position on both issues, then I will be only too glad to “eat the humble pie” you will undoubtedly and should prepare. However, I am not as yet ready to put out a place setting for such a meal. While I may be presented with an “entree” as to the first issue”, I do harbor substantial doubts that the meal will also include a “main course” as to the second issue.

  43. Mr. Slonecker, this case is not on all fours with College Savings Bank – it’s not even on a single hand or foot. CSB concerned a state’s non-litigation commercial conduct. Our case concerns a state’s litigation conduct. In the 2002 Lapides decision the Supreme Court underscored this critical difference and distinguished CSB on that basis.

    We our not assured of winning this, but be assured that CSB does not dictate the result in our case either way.

  44. Mr. Slonecker,

    In regard to your question, does it make a different whether or not BPMC is a “Citizens of another State” in relation to Constitutional issues?

    Article. VI.

    Clause 2: This Constitution, and the Laws of the United States which shall be made in Pursuance thereof; and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.

    Clause 3: The Senators and Representatives before mentioned, and the Members of the several State Legislatures, and all executive and judicial Officers, both of the United States and of the several States, shall be bound by Oath or Affirmation, to support this Constitution; but no religious Test shall ever be required as a Qualification to any Office or public Trust under the United States.

    AMENDMENT XI
    The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

  45. Based upon the decision in College Savings Bank and its approving reference in Florida Prepaid, the broad notion in Parden of state sovereign immunity being subject to “constructive waiver” was relegated to the “trash heap” in the 5-4 majority opinion. Given the current members of the court, I believe that convincing one justice to adopt the minority position will prove to be a daunting task. The first issue positied by the patentee in this case may strike a responsive chord, i.e., the assertion of sovereign immunity in a suit that is for all intents and purposes merely a continuation of a suit in which such waiver has been affirmatively made. The second issue, however, appears to be on “all fours” with College Savings Bank and Florida Prepaid. For the patentee to prevail it seems to me that the court would have to expressly overrule the relevant portion of College Savings Bank, a much more unlikely event.

    Obviously, the brief to be submitted by the SG will likely be instrumental in any cert decision by the court. However, given what was argued by the SG in College Saving Bank and Florida Prepaid I am not sanguine that its brief will come down on the side of the patentee. Unlike CSB and FP where the SG was arguing in favor of upholding the federal statute appearing in Title 35 declaring a blanket waiver of state sovereign immunity in patent infringement matters in which the state is a party, the issues here are materially different. With CSB and FP being the governing law, and with Parden having been laid to rest, I believe that the SG will ultimately side with the state (as unfair as I believe that would be).

    From what I have been able to discern from the inner workings of the court, SG invitations to file a brief are made when 3 or more justices call for an invitation. I have no doubt the minority in CSB and FP are the ones who decided in favor of extending such an invitation to the SG, likely hoping that it will lend a friendly voice to the views of the minority sufficient to sway one of the other justices away from the holdings in CSB and FP. It is difficult to believe that any of the newly added member of the court will align himself with the minority. Stare decisis is a formidable obstacle, and to grant cert and find in favor of the patentee would for all intents and purposes require the court to overrule all or a portion of the decisions in CSB and FP. I just do not see that happening.

    If I may posit a question, what is to prevent the patentee, or any other patentee under similar circumstances, from filing a “taking” action in a California state court (the fact the “property” is a patent is interesting, but in my view not dispositive)? After all, a patent is generally deemed to be “property” and is presumtively valid as a matter of law, and in order to challenge that presumption the state would have to file an appearance and possibly even petition to have the matter moved to federal court.

  46. Andrew,

    Well done and congratulations. I think you’ve beaten the odds on this one. I wouldn’t have given you a “snow ball’s chance in hell” of having SCOTUS accept this one. But with them asking for the U.S. Solicitor General’s views, that bodes very well for your petition for cert being granted.

  47. Congratulations Mr. Andrew Dhuey. Even Denny Craine, Esq.
    ( link to abc.go.com )
    hasn’t made to the Supreme Court – but he will this week according to last week’s “next week on Boston Legal.”

    You must be filled with joy today (this is for Mr. Dhuey only):
    link to youtube.com

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