Inequitable Conduct Based on Petition to Make Special

Scanner Technologies Corp. v. ICOS Vision Systems (Fed. Cir. 2008)

There are many companies that value quick prosecution and issuance. Yet, few have taken the PTO’s offer of accelerated examination (AE). Potential applicants avoid the accelerated examination program for several reasons – most of which are associated with the AE requirements to (i) search for prior art; (ii) identify all claimed elements found in each relevant reference; and additionally (iii) prepare an explanation of why the claims are patentable over the references. These AE requirements are costly and potentially open the applicant to charges of inequitable conduct (as well as narrow claim scope).

In this case, Scanner saw ICOS products at a trade show and subsequently filed a petition to make special in the hopes that its patent would issue more quickly. The petition argued that the petition should be granted based on ICOS products. The petition was granted and the patent issued within the year.

After Scanner sued for infringement, the district court found the patent unenforceable due to inequitable conduct in filing the petition to make special. On appeal, the CAFC reversed – but in the process revived aspects of the inequitable conduct inquiry. The particular conduct at issue included statements in the petition that infringement was clear even though the accused product had not been fully inspected.

Broad Concept of Materiality: Although inequitable conduct issues often focus on whether the misconduct was “material to patentability.” The CAFC began by quoting its own 1994 GE v. Samick opinions holding that a false statement in a petition to make special should be considered “material” if “it succeeds in prompting expedited consideration of the application.” This broad consideration of materiality follows the Nilssen decision holding that misrepresenting an applicant’s status as a small entity (in the payment of post issuance maintenance fees) may also be considered material.

“[W]e must reject Scanner’s view that inequitable conduct cannot be shown absent a misrepresentation that bears on the patentability of the claims in the application. When the setting involves a petition to make special, as is the case here, we reaffirm that a false statement that succeeds in expediting the application is, as a matter of law, material for purposes of assessing the issue of inequitable conduct.”

Reasonable Inferences Favor Patentee: Although the CAFC agreed that the type of conduct here could be inequitable conduct, this case did not present sufficient evidence. Because materiality and intent must both be proven with clear and convincing evidence, the appellate panel requires that all reasonable inferences be given weight:

“Whenever evidence proffered to show either materiality or intent is susceptible of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor of another equally reasonable inference.”

Because the CAFC found potential reasonable explanations for the claims of infringement, it held that those statements could not be considered false or misleading, and thus not material.

By clearing the inequitable conduct charges, Scanner avoids paying ICOS attorney fees. However, the CAFC affirmed that all claims of the patents were invalid and not infringed.

Notes:

  • Interesting statement: “We also affirm the district court’s judgment invalidating all claims of the patents in suit given the stipulation between the parties that the case would be tried on a representative claim.”

89 thoughts on “Inequitable Conduct Based on Petition to Make Special

  1. The Fig_3A has a flaawed theory, the plane 38 makes 90 degrees perpendicular to optic 32, and the another line that goes to optic 36 is flaawed, why not is it perpendicular as to 32?

    That’s a claimer very stuupid!

  2. I haate wait 18 years for being proohibited to implement an owned thing and another 18, it’s 36, for the same older modified lately.

  3. Why some derived patents have 18 years of life?
    Why foocked 36 or more years for some derived and renewed patents?

  4. I’ve a dude, when a patent is marked as new invention for 18 years of life or marked as derived for 10 years of life?

  5. Post that should have gone up the other day but apparently didn’t have post pushed.

    If you’re trying to say that something with functionality akin to that of a flash drive is not a device you’ve gone completely off your rocker. When I come up with a piece of paper that will fly you to the moon and back will it be a device yet? Face it, it’s a device already, even if only a device suitable to hold down the dust on my desk.

    Mr. Webster says:

    1: something devised or contrived: as a (1): plan, procedure, technique (2): a scheme to deceive : stratagem, trick b: something fanciful, elaborate, or intricate in design c: something (as a figure of speech) in a literary work designed to achieve a particular artistic effect darchaic : masque, spectacle e: a conventional stage practice or means (as a stage whisper) used to achieve a particular dramatic effect f: a piece of equipment or a mechanism designed to serve a special purpose or perform a special function

    link to merriam-webster.com

    It’s no stretch to put paper in 1b, 1c, and 1f. Paper most assuredly is something devised or contrived as a mechanism designed to serve a special purpose or perform a special function. I garuntee that without the mechanism of paper to advertise you will not be getting junk mail in your mailbox anymore.

    Bottom line is that you have such a blase attitude towards paper that you fail to see it as the marvel that it really is.

  6. Oh, I looove the turn this conversation is taking. Semiotics, ontology, synecdoche. [The PatObv spell-checker doesn't even recognize synecdoche. The shame. And Dennis an academic, too.]

    I would argue, if I had even the the slightest hint of what I’m talking about, that synecdoche, from Greek συνεκδοχη,is or should be verbotten in claims. (I’m not kidding about the Greek.) For instance using the part of a thing to claim the whole, or using one species to claim the entire genus. Tsk, tsk, tsk — out you go on a 112 indefinite rejection.

    On the other hand (which is itself a synecdoche) the use of metonymy is to be encouraged (The spell checker actually knows that one!) Especially where a term has been fully and explicitly defined in the spec, the term can then be used as a referrant to the subject matter thus defined. “Flying off the handle” could be a claimed process step, for instance, where it was adequately defined in the spec — getting heated, rising BP, constricted pupils, raised voice — all encapsulated in the 4-word term. Incidentally, metonymy is from the Greek μετωνυμία. I knew you were going to ask.

    But, of course, since synecdoche is a subclass of metonmy, how can one conclude that metonmy is OK, while synecdoche is not? Where the genus is verbotten, should not the species also be? I’m fishing for an answer to that one. (That’s metaphor, not metonmy.)

    Aint’ it amazin’ what a little Wiki can do fer ya’? When I woke up this morning, I didn’t even know there was such a thing as metonymy or synecdoche.

  7. Agreed immediately, Umberto, that it doesn’t affect your point. I wasn’t meaning to get after you. I loved your “semiotics” and “ontology” and wanted to get in “synecdoche” in response. I was thinking that “Synthetical Propensity” isn’t a million miles from “purposive construction” and both reflect Jacob LJ’s point, that a mere word, on its own and without a surrounding context, has no useful meaning at all.

  8. Chair/stool, I knew someone would pull me up for that! Doesn’t actually affect my point though.

    I’m not sure that synthetical propensity is really the issue here.

  9. “We also affirm the district court’s judgment invalidating all claims of the patents in suit given the stipulation between the parties that the case would be tried on a representative claim.”

    I understand why representative claims make sense for appeals. I don’t understand why one would be used in litigation. Why not just assert a single claim? Why risk all of your claims on validity, but receive no value from the risk on infringement?

  10. –”In making the petition to make special, I see no requirement that the patent attorney’s opinion of both patentable subject matter and infringement must be agreed to and upheld by a court. That’s why it doesn’t stink to my nose.”

    My point is it’s the Petition rules themselves that stink because they allow this sort of bad behavior.–

    MM, I don’t understand your point. Are you saying that bad behavior occurred because a petition to make special based on infringement was filed, or because the court later disagreed that infringement had occurred?

    A different example – Scanner Tech files a petition based on infringement, a patent issues, and they later do not sue ICOS b/c they determine that the allowed claim scope does not cover ICOS’ product. In other words, the allowed claims did not have the scope the attorney originally thought they did. Did bad behavior occur there?

    Continuing the different example – Scanner Tech, 10 years later, sues Acme for infringing the patent. Should Acme win on a defense that inequitable conduct occurred in filing the petition to make special based on infringement?

    If you’re saying intent matters, I can’t argue with you. But “bad” intent shouldn’t be considered inequitable conduct if it’s allowed by the rules.

    –This is because some entities are not interested in “settlements”… there are many folks out there who insist that there is no such thing as a “bad patent.”… **any** patent will suffice for achieving certain goals because the odds of being found guilty of a frivolous filing are close to nil.–

    When you refer to frivolous filing, I assume you are referring to the complaint/lawsuit, not filing the patent application. Why shouldn’t an issued patent give you a reasonable basis for filing your complaint? That’s all you need to avoid sanctions for a frivolous filing. (I suppose in this sense at least, yes, there is no bad patent.)

    As to the filing, that’s the way all patent systems are set up – you exclude others from make/use/sell/offer by suing them if they won’t settle. I can’t think of a patent system where a dispute between two parties won’t end up in court (or arbitration, mediation, etc.) if the two parties disagree.

  11. –”Paper is a computer accessible storage device.”

    Wrong. A punch card is not a device. The punch card reader is the device. Scantron forms are not a device. The reader is the device. Same for scanned documents. –

    Ahem, I’m not Mooney. Unlike him, I keep changing names. I could be Legion, I guess.

    Working from the first sentence, the punch card is the device. The punch card reader is the computer. Where’s the problem in this reading? I think paper would meet the “broadest reasonable interpretation” requirement of the MPEP.

    –My Websters says a device is a piece of equipment or a mechanism for a special purpose.–

    What makes paper not a piece of equipment? I agree though that definitions aren’t going to resolve this issue. What is a special purpose and what is not? I think storing data (on a punch card) will qualify as a special purpose.

  12. Can a chair have no back? Umberto, your table top is a stool, isn’t it? Wiser heads than mine (synecdoche), just keep things simple, and stick with the good old, tried and tested Principle of Synthetical Propensity, as invoked in EPO Decision T_0190/99 (and many others) in order to get to a robust conclusion, on any issue of fact or law, that accords with the common sense of the PHOSITA.

  13. If you’re sitting on a table is it still a table or is it a chair?

    There’s plenty of room for semiotics and ontology in the realm of patents. The relationships between words and things are not always simple.

    What a piece of paper *is* depends on what it is being used for.

    Paper+pencil = writing equipment, or drawing equipment, or a sail for a toy boat.

  14. Does disclosure in a patent application of a piece of paper then provide support for later claiming “equipment”? (And a dependent claim … wherein the equipment is a piece of paper?)

  15. Absolutely right, Noah.

    A piece paper is equipment. Any judge would see it that way. GMAB. What distant planet are you folks sending these messages from? Alexandria?

    Then again, you could have some crack-head patent lawyer being his own lexicographer (not that you weren’t a great one, Noah) who defines a piece of paper as “equipment” and then evokes the “equipment” definition for “device.” QED, eh? Anything is possible when you’ve got a sky’s-the-limit lexicographer rule.

    But short of re-writing the English language, a piece of paper is not equipment. And if it is in certain contexts, then it’s still not in the context of being a computer accessible storage device. Since when is paper used to equip someone with a computer accessible storage device.

    BTW, defining “equipment” as things needed to equip a person is a bit tautological, don’t you think? Now you have to find us a definition for “equip.” You guys just keep digging it deeper, Looney.

  16. My Webster’s says that equipment is “the set of articles or physical resources serving to equip a person or thing: as (1): the implements used in an operation or activity.”

    So why can’t a piece of paper be equipment, and thus a device?

  17. Public Searcher,

    I don’t anyone who would pay for a validity search for Accelerated Examination. A patentability search should do fine.

  18. Don’t get too excited about the rainbows, E6. Not yet. Wiki points out that there are a lot of doubts about this one.

    “Following the wide media attention this news received, some of the claims have been debunked by various experts; however, Abideen says that the articles are all based on misunderstandings.”

    But let’s say its bona fide. Colored triangles on paper are no more relevant than Looney’s bar code example. So the rainbow example, fascinating as it may be, adds nothing to the discussion.

    My Websters says a device is a piece of equipment or a mechanism for a special purpose.

    Paper — equipment? A mechanism? The gear that reads the rainbow or bar code, sure. The paper? Keep diggin’ deeper, you’re not going to strike oil, but at least you’re staying busy.

  19. “Wrong. A punch card is not a device.”

    Did you just say that MM?
    ——————

    I was quoting someone else but using html formatting so it only **appeared** as if I said it. I apologize for the confusion. Of course a punch card is a device, as is a piece of paper, as is a magnetic tape of cassette: all examples of computer-readable mediums that are also devices.

    Oh, and audio and electromagnetic waves, while comprehensible to computers, are neither. BWAHAHAHHAAHHAHAA!!!

  20. MM wrote: “There really are two types of claims with computers: claims for new computers that describe the processing machinery in detail, and claims where the computer (or the internet) is simply chucked in to make an alleged “invention” out of a bunch of old, obvious art. The latter claims are quintessential garbage patents and — you may want to sit down for this — there are quite a few of them out there.”

    I disagree on this point.

    In my experience, the vast majority of applications describe an invention, and that includes software patents. The problem is that many software claims received a minimal search from the USPTO due to lack of time and examination resources(i.e. the USPTO should probably increase searching time in the software area by x10), so the allowed claims were so broad as to be easily invalidated in litigation.

  21. Although I wouldn’t go so far as to say paper is a device, I would say that paper qualified as a computer readable storage medium. Whether we are talking about punch cards or just scanned paper.

  22. e6, if you’re rejecting applications by applying this kind of fuzz-ball “thinking,” you are headed for the top in the USPTO.

    Keep it up, you’ve got the right stuff.

    A piece of paper as a computer-accessible storage device — ha, ha, ha.

  23. “Wrong. A punch card is not a device.”

    Did you just say that MM? Have you got to be shting me? They were THE ORIGINAL computer accessible storage device iirc, computer buffs can correct me if they were the original or not.

  24. “Scantron forms are not a device.”

    You have got to be shting me. How can someone argue this? Allow me to clue you in, every dictionary available to me, including technical ones, all agree:

    1. a thing made for a particular purpose; an invention or contrivance, esp. a mechanical or electrical one.

    “A thing made”. Period. A club is a device. Paper most fin assuredly is a device. They just got through addressing this issue of devices that are falling out of the current definition of device in a case not long ago. “Is a baseball a device?” “Is a method of throwing a baseball patentable?”. Iirc they answered a definite yes on the first and a maybe on the second.

    Imagine yourself living in a cave wanting to communicate with someone by runner. Is paper a device? Yes. By the same token, is scan tron paper “a thing made” allowing you to communicate answers to a remote party? Yes. Was it created to do that? Yes. It is a device. End of story. There is no argument here.

  25. Wrong. A punch card is not a device.

    Unless you’re sueing someone who is using punch cards. Then it’s clearly a device. Or an equivalent of one.

    Welcome to the world of high tech patent trolls.

  26. PS – group hug while we contemplate what it is to be human in C21.

    Now go watch Fight Club, Repo Man and Dead Man, then Apocalypse Now!

    Sláinte Mhath

  27. I must be tripping, because I’m about to go in to bat for the Lunar one…

    A piece of paper is a computer-accessible device, by virtue of the existence, nay ubiquity, of paper scanning devices.

    By the same logic, 4D concensus reality itself is computer accessible, by virtue of any recording device of any sort at all. But “4D concensus reality” is not itself a device, it is the aether in which we exist/perceive ourselves.

    If you earn your living from “intellectual property” and don’t grapple with such notions, you ain’t worth yr shingle…

  28. and oh, yes, the rabbit’s ode to the Mooner/Suzy was awesome. Is the rabbit a white rabbit?

    Now you see what I went and did? Now I have to explain that the white rabbit thing is about the Airplane’s song of the name “white rabbit”, and not anything of any racial significance, for (deity of your choice, even if your choice is the absence thereof)’s sake, thereby destroying the whole notion of extemporaneous wit. But that’s a small price to pay for avoiding the possibility of offending any one of the, what, about 6 billion people on the planet.

    OK, OK I’m going now…

  29. “Gopogle” – typo – go figure. 00:18 here (in Scotland…), and it was my wee boy’s 7th birthday up unitil 18 minutes ago, so please excuse these departures from the lofty heights of IP wisdom [sic ipso facto ad infinitum, quid pro quo nil carborundum, etc.].

  30. MM & JAOI
    as the only two here with the duderosity to acknowedge a heartfelt appeal to the higher primate in all of us, I salute you.

    Gong… man, Steve Hillage is up there, and still happening, go Google(TM, used here in the verbal sense implying actual Googling and not the use of any other and/or inferior search engine) him if you don’t already know.

    Chivas… OK, I will not decry it. But it’s a blend, not a single, which is not to say that any old single malt is better than the best blend. If it has to be a blend, then $ for $ the Famous Grouse is to be highly recommended, containing as it does two of my favourite singles, MacCallan and Highland Park (the latter from Orkney – go there on Gopogle Earth at least, and IRL if you possibly can)

    And BTW, if you’re a US golf visitor in Scotland, it’s not impressive at the 19th hole to go for the most extreme smoky/peaty Islay malt known to man. It’s not a competition. Word to the wise.

    It’s raining here on the west coast (of Scotland) on the longest day. But it’s summer rain, which smells different from other kinds of rain, of which we have many in Scotland. Did I mention that I’m from Scotland?

    My name is legion, for in cyberspace no-one can call you multi-polar (i.e a human individual characterised by a plurality of personalities).

    Peace, and respect to Dennis the Menace.

  31. Sorry, aka Mooney, said:

    “On this point, I agree that Mooney’s correct. Punch cards are well known, though rarely used anymore. I used Scantron pieces of paper for the LSAT and the MPRE that stored my answers and were accessed by a computer. I also bet many of us have scanned papers and used OCR software to convert them into electronic documents. Paper is a computer accessible storage device.”

    Wrong. A punch card is not a device. The punch card reader is the device. Scantron forms are not a device. The reader is the device. Same for scanned documents.

    There’s not a judge in the whole USDC system who would see a piece of paper as a computer accessible storage device, regardless of how or whether its contents get into the computer.

    Give it up, Mooney

  32. “In making the petition to make special, I see no requirement that the patent attorney’s opinion of both patentable subject matter and infringement must be agreed to and upheld by a court. That’s why it doesn’t stink to my nose.”

    My point is it’s the Petition rules themselves that stink because they allow this sort of bad behavior.

    “let’s remember that infringement in reported cases will always have a gray issue because the black-and-white cases aren’t going to court; they’re getting settled”

    Like the case with the claim that recited a “handset with a handle” and they sued the company for selling a device without a handle? That seemed black and white to me. This case as well. At what point do you think ICOS informed Scanner Tech about how their device worked, leaving no uncertainty whatsoever that they didn’t infringe and that, even if they did infringe, Scanner Tech’s claims were invalid? I’m guessing rather early on in discovery, if not well before that point.

    Yet there was no settlement.

    This is because some entities are not interested in “settlements”. They are interested in causing pain. If the business benefit from causing that pain outweighs the costs of litigation, then the entity will go right ahead and sue. The only deterrent is sanctions and/or paying the defendant’s costs.

    With this in mind, you can begin to understand why there are many folks out there who insist that there is no such thing as a “bad patent.” If you’ve got a likeable attorney who isn’t going to piss a judge off unnecessarily, **any** patent will suffice for achieving certain goals because the odds of being found guilty of a frivolous filing are close to nil.

  33. I plan to file a utility application pro se. I’m over 65. Is there any reason I shouldn’t ask for an accelerated exam?

    I can’t find any specific form or detailed instructions other than MPEP 708.02 Petition To Make Special [R-6].

    How would this letter do:

    Petition To Make Special
    Accelerated Examination
    Based on Applicant’s Age

    To:
    Commissioner of Patents
    P.O. Box 1450
    Alexandria, VA 22313-1450

    Sir:
    The applicant herein, Just an ordinary inventor(TM), hereby requests an accelerated examination – I am over 65 years of age. Attached hereto please find a copy of my birth certificate.

    Respectfully submitted,

  34. “I forgot to add: with respect to this case, it should give one a great deal of pause to recognize that a Petition to Make Special was granted based on the alleged infringement of claims that were so broad they were invalid and yet they were STILL not infringed!

    I don’t see why that doesn’t stink in every sincere patent attorney’s nose.”

    In making the petition to make special, I see no requirement that the patent attorney’s opinion of both patentable subject matter and infringement must be agreed to and upheld by a court. That’s why it doesn’t stink to my nose. I already know that the USPTO’s search is not going to be as good as a litigant’s search.

    The Federal Circuit got this one right in saying that inequitable conduct doesn’t arise simply because inferences could be made in favor of i.c. if inferences could also be made against i.c. This looks like a burden of proof question, i.e. the burden wasn’t met.

    The USPTO issued the patent. As many have said in conversations with e6k, the job of the USPTO is to do a reasonable search and allow the claims if nothing is found. That seems to be what happened. Better “prior art” was then found in litigation (the expert’s testimony). This is the kind of “prior art” that the USPTO can’t find. Don’t hold this fact against the patentee.

    Also, let’s remember that infringement in reported cases will always have a gray issue because the black-and-white cases aren’t going to court; they’re getting settled.

  35. If you knew Mooney
    Like I know Mooney
    Oh!, Oh!, Oh!
    What a guy

    There’s none so snarky
    As this smart assie,
    Oh!, Oh!, Oh!
    What a Wit.

  36. “Once you get him cornered he will start spewing gems like:
    A piece of paper is a computer accessible storage device…”

    On this point, I agree that Mooney’s correct. Punch cards are well known, though rarely used anymore. I used Scantron pieces of paper for the LSAT and the MPRE that stored my answers and were accessed by a computer. I also bet many of us have scanned papers and used OCR software to convert them into electronic documents. Paper is a computer accessible storage device.

    Of course, that Mooney’s correct once doesn’t mean he’s always correct. I also agree that Mooney is just snarky and adds little to most discussion.

  37. MM

    So if the answers to the questions are no and no, why should “it give one a great deal of pause”?

  38. Regarding those “couple of questions”, the answer is “no” and “no” I believe. I respectfully submit that the petition is a farce and if no inequitable conduct can be found under these circumstances, then you are likely immune from attack unless you unwisely write some unsavory stuff down and produce it during discovery.

    Happy Solstice! Truly a magical night here on the West Coast. I may have to bust out one of those old Gong records.

  39. Nice to see you attacking & eating your own for a change. :) Keep it going. It’s enjoyable reading.

    ‘nite all.

    MVS

  40. Tyrone, I’m fresh out of Talisker. Will Chivas do? I just inherited about a case.

  41. MM

    You write “it should give one a great deal of pause to recognize that a Petition to Make Special was granted based on the alleged infringement of claims that were so broad they were invalid and yet they were STILL not infringed!” A couple of questions

    (1) does the PTO determine whether “claims are so broad that they are invalid” as part of their process of deciding whether or not to grant a Petition to Make Special?

    (2) does the PTO determine that the claims before it are infringed as part of their process of deciding whether or not to grant a Petition to Make Special?

  42. oh, and btw, happy solstice mofos

    you see, some things are more real and less uncertain and defiant of “construction” than others.

    Read the news. Time to get real, bros.

    JAOI, if you’re there, raise a glass of Talisker with me to the possibility of future goodness.

    Love, peace, harmony to all, even the MMalster

  43. “There really are two types of claims with computers: claims for new computers that describe the processing machinery in detail, and claims where the computer (or the internet) is simply chucked in to make an alleged “invention” out of a bunch of old, obvious art.”

    You were making some kind of sense there, and then this happened. Please, who the hell is this person? You see, when it comes to computers and patents, it’s really all about functionality.

    This has been an announcement from the cosmic unconsciouscness.

    Maaaaaaaaan.

    Albert Hofmann, RIP

  44. WTF?

    OK, listen, nothing is “true” in the state of judiciary, it’s all shades of grey. So everyone off their horses and let’s get serious about probabilities instead of presumptions.

    This has been an announcement from the cosmic unconsciouscness.

    Maaaaaaaaan.

    Albert Hofmann, RIP

  45. I forgot to add: with respect to this case, it should give one a great deal of pause to recognize that a Petition to Make Special was granted based on the alleged infringement of claims that were so broad they were invalid and yet they were STILL not infringed!

    I don’t see why that doesn’t stink in every sincere patent attorney’s nose.

    The big money question is: did Scanner Technologies nevertheless achieve all (or most) of what they set out to achieve, in spite of the “loss” on the merits of the case?

  46. “Oh, come on. For one, I believe the legal definition of malpractice requires that someone actually be harmed. So your assertion is facially invalid. (And I didn’t even review the prosecution history.) Besides, nobody ever said that he could spot EVERY invalid claim without reviewing the file. ”

    Leopold Bloom somehow manages to see through the strawmen and other garbage being tossed about. Well done, LB!

    Isn’t odd that so many here who behave as if they are gods gift to patent law go apeshxt over strawmen of their own design? You’d think they’d be more sensitive to such issues, as they are very similar to the issues that arise during claim construction.

    Friends, ridiculously broad claims have issued in the past and they continue to be issued for a variety of reasons that I and others have articulated dozens if not hundreds of times. Yes, in fact, some of these claims are so broad that it takes seconds or minutes at most to determine that they are anticipated, obvious, indefinite or not enabled.

    Does it take seconds to write the formal opinion stating all the reasons? No. But it takes seconds to reach the conclusion. Just a few seconds and some confidence in one’s legal abilities. What exactly is your client paying you for anyway? Mine want to hear the bottom line, with the caveats, as soon as possible. Do they want or need a full-blown written legal opinion for every legal question? Nope. And they don’t need one. They just need someone with the proper legal background. Often the client is a patent lawyer herself and believes that the claim is garbage or irrelevant and they simply want someone to confirm that they aren’t crazy. If the claim looks like a pile of doo-doo, what’s wrong simply saying so to the client: “yes, I agree it’s a pile of doo-doo. If you’re really worried, we can look in the prosecution history to see if somehow they managed to rescue this thing.”

    But as another person with both feet on the ground wrote, “In my experience, the file history provides most, if not the vast majority, of **invalidity** arguments.”

    That is my experience as well. And this is as it should be. As the CAFC set forth in Phillips, you start with the claims themselves, and the specification. The prosecution history can be used to bolster the conclusions but it is an extraordinarily rare case where the prosecution history can easily be used to change the ordinary meaning of the words of the claims themselves. And even in those extraordinary cases, what is REALLY happening most of the time is that the applicant is engaging in inequitable conduct, contradicting his or herself and kicking up dust in the Examiner’s face in order to avoid being tanked by the prior art.

    There really are two types of claims with computers: claims for new computers that describe the processing machinery in detail, and claims where the computer (or the internet) is simply chucked in to make an alleged “invention” out of a bunch of old, obvious art. The latter claims are quintessential garbage patents and — you may want to sit down for this — there are quite a few of them out there. And then there’s the pending applications.

    In my view, and the view of a great many other people in this country, this is a problem. You can try to wave it away or blame the NYTimes and its “anti-patent” stance for creating a bogeyman, but that’s just spitting in the wind. KSR is blowing the other way and there’s still a lot of patent bubble left to be popped.

  47. “Finally, invalidity is such a tricky business that you can usually only be slightly more confident about it after reading the prosecution history than before.”

    Only “slightly more confident”? I must disagree. In my experience, the file history provides most, if not the vast majority, or invalidity arguments.

    And yes, I’m a lawyer at a large firm (600+), I’m on the ethics committee, and I’ve been fortunate enough to split my time between prosecution and patent litigation.

    Then again, maybe I’m just practicing law the wrong way.

  48. Malpractice does not require actual harm to the client. Malpractice exists regardless of whether there is a malpractice judgment – in fact, most malpractice is never discovered, or is discovered too late. For example, a breach of any one of the numerous duties owed by attorneys to their clients can qualify, such as a failure to communicate or engaging in a conflict.

  49. “IMHO, just reading a claim and telling a client that the claim is invalid is malpractice.”

    Oh, come on. For one, I believe the legal definition of malpractice requires that someone actually be harmed. So your assertion is facially invalid. (And I didn’t even review the prosecution history.)

    Besides, nobody ever said that he could spot EVERY invalid claim without reviewing the file. In any event, such a claim would only be slightly more ridiculous than the assertions some seem to be making, i.e., that you can NEVER spot an invalid claim without reading the prosecution history. Finally, invalidity is such a tricky business that you can usually only be slightly more confident about it after reading the prosecution history than before. I hope you’re telling your clients about the uncertainty, otherwise you may be committing malpractice…

  50. Malcolm does not need to bother with issues such as facts or evidence, he just relies upon his gut to see him through.

  51. I’m not raising my hand. IMHO, just reading a claim and telling a client that the claim is invalid is malpractice. Patents are presumptively valid, not to mention PHE, admissions, DOE equivalents, and 112p6 structure and equivalents not only for the patent at issue, but for/in any related applications or patents as well.

    MM does not practice law, and if he does, it’s by himself. Such ignorance of patent basics would either be immediately corrected by a more senior attorney, or MM would be canned.

  52. Malcolm,

    Has there ever been a case involving inequitable conduct discussed on this site where you didn’t agree that the applicant and/or attorney committed inequitable conduct?

    Ladies and Gentlemen, meet St. Malcolm. The only patent attorney who’s never committed inequitable conduct.

  53. “And my point again is that if it’s sufficient to point to a computer as reasonable grounds that the computer is doing what is required by your claims, then your claims are obvious.”

    Wow. That’s some in depth analysis. Check mate, I guess.

    And you know that patentee’s attorney merely pointed to the processor of the accused device as his reasonable grounds how?

    Oh, that’s right, you ordered up the file history to settle our bet.

    So what did the petition say?

    Can I get a show of hands from all the attorneys in the audience who have told a client, after doing nothing more than reading the claim, “Don’t worry about it, it’s invalid.”

    I see Mooney’s hand.

    Anybody else?

  54. “I would never share a “first impression” of mine, that was based on nothing more than a single, bare reading of the claim at issue, with a client.”

    Friends, meet St. John Darling, aka “the quiet attorney.”

  55. “So you don’t need a computer forensics expert to avoid a charge of inequitable conduct. A review of the accused infringer’s product literature, which may describe how the accused device works, is sufficient.”

    And my point again is that if it’s sufficient to point to a computer as reasonable grounds that the computer is doing what is required by your claims, then your claims are obvious.

    Given that’s the case, why should a broad obvious claim grounds for a Petition to Make Special? It’s a silly reason to go to the head of the queue. Sort of disgusting, actually.

  56. Mooney poooops on one contributor for misspelling “judgement” and then he drops this one:

    “My understanding is that their are computer expert types who can exract the type of information we are discussing here.”

    Their are????? exract???? Ha, ha, ha

    His hit tactic it to allege that one element or step of an allowed claim is obvious and from that he concludes not just that the whole claim is obvious but that whole patent is invalid. This guy is not just ill-bred, he’s socially and cerebrally impaired. He’s probably an examiner, too. The two are not synonymous, it’s just that examiners tend to think the way Mooney does. And only examiners have so much time to p$$ away. If he’s a prosecutor, he’s obviously got no business.

    Once you get him cornered he will start spewing gems like:
    A piece of paper is a computer accessible storage device. Or,
    the use of the word “acquires” renders any claim indefinite.

  57. “Your lengthy response somehow omitted a direct answer to my question. What’s the problem?”

    I would never share a “first impression” of mine, that was based on nothing more than a single, bare reading of the claim at issue, with a client. Despite your facile posts, I doubt you would either. At least I hope you wouldn’t.

    I would never formulate a “first impression” of a claim’s validity based on single, bare reading of the claim. Or on the belief that every single claim issued between 1994 and 2004 that included the term “processor” was “facially invalid.” I would review the evidence and make a legally objective conclusion.

    Direct enough for you? Or too long?

    “No thanks. Based on the language in the opinion, it sounds like I’m probably right about it’s failure to disclose what the processor was doing.”

    Lame. And wrong.

    Paragraph spanning pages 16-17, the court clearly states: “In sum, the district court’s inference that Leone misleadingly suggested he saw the ICOS device, when weighed against a [sic] equally reasonable inference of good faith that the plain words of his statement and supporting material engenders, does not support the conclusion that the attorney’s statement is misleading or false under the clear and convincing evidentiary standard.”

    That “supporting material” they refer to is Exhibit C, i.e. the accused infringer’s product literature.

    Seems to me the Fed. Cir. said that Leone’s reliance on the product literature in his “rigid comparison” of the accused device and the claim was reasonable enough to support the petition to make special. Or at least reasonable enough to infer that he wasn’t misleading the Patent Office.

    Your notion that a computer forensics expert is needed is also shot down by the language of the decision. Page 15: “While it is not unreasonable to infer or expect that a rigid comparison could call for a physical inspection, a contrary inference of intended compliance with the PTO’s regulation can just as easily be drawn.”

    So you don’t need a computer forensics expert to avoid a charge of inequitable conduct. A review of the accused infringer’s product literature, which may describe how the accused device works, is sufficient.

    Opinions based on product literature, user manuals, etc., get issued by patent attorneys pretty routinely. Nothing inequitable about it. Are those opinions perfect? Probably not. But they’re not required to be. They’re required to be reasonable.

    Would you take the bet if I offered you some odds?

  58. All joking, japes and banter aside: Given a client faced with a potential infringement problem, the subject matter of the patent might be such that I can look at the claim and take an immediate view on its validity. Whether or not I would share that immediate view with my client would depend on (a) my degree of confidence in my unsupported opinion and (b) my relationship with the client. But the cases are vanishingly rare where I would consider it professionally responsible to read an independent claim in isolation and state that it was invalid and/or not infringed (assuming that there was any real cause for concern in the first place).

    Am I normal?

  59. “Where I come from, “judgement” is correct. Funny, never noticed before that US spelling was different.”

    Pending Dennis’ confirmation of your origins, I retract my correction.

  60. JohnDarling

    “exactly how was patentee’s attorney (who drafted the petition) supposed to ascertain what calculations the accused device’s processor performed based on a physical inspection? What was he gonna do? Rip the processor outta the accused device and put it under a microscope?”

    Typically the attorney employs an expert to do this sort of forensic work. At least, that’s what an attorney does if he/she is interested in avoiding an inequitable conduct charge. My understanding is that their are computer expert types who can exract the type of information we are discussing here.

    “So then why did you post this? ‘And how would one have any clue what was going on in the processor without inspecting the device?’

    I posted the question because I wasn’t sure of the answer. Was that wrong?

    “If you were looking at claim 1, are you telling me you’d need to see the prosecution history to formulate a first impression opinion of invalidity?”

    Your lengthy response somehow omitted a direct answer to my question. What’s the problem?

    “You can order up the file history and take a look at the product literature (Exhibit C).”

    No thanks. Based on the language in the opinion, it sounds like I’m probably right about it’s failure to disclose what the processor was doing.

    “take a first image of a ball array device with the first camera, and take a second image of the ball array device with the second camera, and then apply triangulation calculations of related measurements of the first image and the second image to calculate a three dimensional position of the at least one ball with reference to a pre-calculated calibration plane, as was required by claim 1. The Projector system clearly did not do this.”

    Then it’s even more baffling to me that the petition to make special was granted on these flimsy grounds. Anybody can file a broad claim to cover an accused infringer’s product. Why should that be grounds for special treatment by the PTO?

  61. “Since I’m a lowly chemist type, can you tell me what other kind of calculation could be used to calculate the position of an object using data from two cameras?”

    One more time: the court’s decision answers this question if you’d bother to read it. The paragraph spanning pages 24-25. The Projector system (which was the accused infringer’s prior art device that the trial court found invalidated the claim) had 2 cameras, but used “Z calibration,” i.e. calibration with reference to a Z plane, to peform the calculations. The accused infringer’s expert testified that the Projector system had two cameras, but had a flat glass or plate, which the accused infringer called a caliber, that they used as a “plane” which they put under the field of view of both cameras and then carried out the calibration process. See page 25, lines 1-7, of the decision.

    So the Projector system (the prior art device) had 2 cameras, but did not take a first image of a ball array device with the first camera, and take a second image of the ball array device with the second camera, and then apply triangulation calculations of related measurements of the first image and the second image to calculate a three dimensional position of the at least one ball with reference to a pre-calculated calibration plane, as was required by claim 1. The Projector system clearly did not do this. It used a flat glass plate that was under the field of view of both cameras to calibrate with reference to the plane defined by the flat glass plate.

    The Fed. Cir. clearly acknowledged that the Projector system operated differently than the device recited in claim 1. See page 26, lines 4-7 (“We recognize…). As I explained above, however, the Fed. Cir. found the testimony of the accused infringer’s expert, which was unrebutted, closed the relatively small logical gap between the prior art (the Projector system’s Z plane calibration) and the claim (stereo vision triangulation) in this case as it was apparently nothing more (in the court’s opinion) than a person of ordinary skill in the art pursuing known options within his/her technical grasp. Page 26, lines 7-10.

    “I don’t doubt that the information in the product sheet was ‘sufficient’ to determine what the processor was doing.”

    So then why did you post this?

    “And how would one have any clue what was going on in the processor without inspecting the device?”

    You may want to review the paragraph spanning pages 15-16 of the decision, where the court discusses the product literature, which was submitted with the petition to make special as Exhibit C. See also page 16, lines 3-7, where the court states that a physical inspection of the device may not provide any more information than what can be ascertained from review of the product literature.

    And exactly how was patentee’s attorney (who drafted the petition) supposed to ascertain what calculations the accused device’s processor performed based on a physical inspection? What was he gonna do? Rip the processor outta the accused device and put it under a microscope? Like I said, you’re outta your element on this one.

    “In large part, that’s because the claims were absurdly broad.”

    We’re all aware that you regard every single claim ever issued that recites “a processor” is “facially invalid.”

    “You seem to be familiar with this art. If you were looking at claim 1, are you telling me you’d need to see the prosecution history to formulate a first impression opinion of invalidity? That surprises me.”

    I am familiar with this art. Reviewed a couple hundred such inspection type apparatus patents for an opinion project that spanned about 6 months.

    Despite your glib responses in other threads that you would tell a client, upon a single reading of a claim, “Yeahh, that claim’s invalid,” I gotta believe that even you are more responsible than that. Just the potential embarrassment of having to go back to the client and say, “Gee, on a second look it may be valid” should be enough to temper your impulsive desire to declare every patent not personally prosecuted by you to be a facially invalid piece of cr#p that was secured by inequitable conduct.

    So no, you shouldn’t be surprised that I would tell my client, “Let me take a look at the pros history and get back to you.” I would hope all of us would take that approach.

    And yes, I realize your question was directed to my “first impression.” As much as I would love to tell all of my clients that every potential problem patent they face is, at first impression, a facially invalid piece of cr#p, I try to temper that enthusiasm with some caution that you never know.

    Still want that wager?

    You can order up the file history and take a look at the product literature (Exhibit C).

    If I’m wrong, you can send me a bill for the file history. Send me Exhibit C though too.

    If you’re wrong, you can just send me a check. Leave the amount blank. I’ll fill in an appropriate amount.

  62. “The worst excuse for the petition to make special is the one utilized here: “someone’s infringing the invalid claims I filed!!!” Boo hoo hoo hoo.

    The law accounts for this scenario by allowing patentees to collect for infringement of their “intervening rights.” That’s more than enough.”

    Have you ever picked up the MPEP????? Do you have any idea as what you are talking about or are you like 6K and disconnect your brain from your fingers when you type? Let me give you a hint:

    link to uspto.gov

    You’ll notice that one of the subsections includes this heading in large font and in bold of “INFRINGEMENT.” Complain all you want, but infringement is one of those circumstances that are permitted when making a petition to make special.

    I’ll disagree with JD inthat I find very few of your posts amusing or having insight. Instead, I find your posts full of snarkiness that very rarely adds anything to the discussion. However, I do agree with JD that you are hopelessly out of your element when it comes to electrical/mechanical cases … actually, I know I’ve made the same point before. Writing, claiming, and prosecuting a biochemical/chemical application is much different than an electrical/mechanical application. We rarely deal with manufactures or compositions of matter. Similarly, a biotech attorney doesn’t get a lot of experience describing or writing claims to a device.

  63. and
    “Examiners do this every day. It’s not that big of a deal.”

    OK, we’re used to examiners making ill-informed judg(e)ments on a routine basis – so what?

  64. Where I come from, “judgement” is correct. Funny, never noticed before that US spelling was different.

    Colour me impressed.

  65. “The claim requires that the processor applies triangulation calculations on related measurements of the first image and the second image to calculate a three dimensional position.”

    Since I’m a lowly chemist type, can you tell me what other kind of calculation could be used to calculate the position of an object using data from two cameras? I don’t doubt that the information in the product sheet was “sufficient” to determine what the processor was doing. In large part, that’s because the claims were absurdly broad. You seem to be familiar with this art. If you were looking at claim 1, are you telling me you’d need to see the prosecution history to formulate a first impression opinion of invalidity? That surprises me.

    The worst excuse for the petition to make special is the one utilized here: “someone’s infringing the invalid claims I filed!!!” Boo hoo hoo hoo.

    The law accounts for this scenario by allowing patentees to collect for infringement of their “intervening rights.” That’s more than enough.

  66. Accusations of inequitable conduct have come up before in the context of a petition to make special.

    link to cafc.uscourts.gov

    In that case, the district court found no inequitable conduct and the accused infringer failed to convince the CAFC that the district court erred.

  67. “And you think the product literature disclosed the logic of the algorithm used by the processor? I don’t think so. Perhaps a wager is in order.”

    The Fed. Cir. seemed satisfied with the notion that it was sufficient for patentee’s petition to make special.

    And the claim doesn’t require that the product literature disclosed the logic of the algorithm used by the processor. The claim requires that the processor applies triangulation calculations on related measurements of the first image and the second image to calculate a three dimensional position. I’d be willing to bet the product literature said enough to justify patentee’s petition. And their reasonable basis under Rule 11 for filing an infringement suit.

    So how much you wanna bet?

    So for every opinion you’ve ever written, you’ve had the actual patented article/composition right there? What? Sitting on your desk? Is your office a friggin’ museum or something?

    You ever written an opinion on a method? You actually saw the method being practiced?

    Like I said, really love your posts. About 1/3 I agree with completely. About 1/3 I think you’re on something. The last 1/3 I just don’t have a clue what you’re talking about. I usually get a good laugh out of all of them though.

    And you seem pretty knowledgeable in your own technological “niche” (to use one of 6k’s catch phrases). Biotechnology, chemistry, whatever it is. But for most of the mechanical/electrical cases, you are hopelessly, and comically, out of your element. Like this one.

  68. “Perhaps if patentee’s counsel had bothered to make any rebuttal of the invalidity arguments/evidence they could have saved the claim. Perhaps.”

    Perhaps they didn’t have a credible argument and, unlike some, were unwilling to suck the muck from the bottom of the pond in order to develop one. Is that a possibility?

    I think it is a possibility.

    “Uhm, patentee’s attorney reviewed the accused infringer’s product literature.”

    And you think the product literature disclosed the logic of the algorithm used by the processor? I don’t think so. Perhaps a wager is in order.

  69. Haven’t you been paying attention? All Mooney has to do is look at the title and sniff the file and he can tell whether its obvious. Reading the claims is just a formality. Alternatively, you can just give him an image of the file history (not the papers themselves, just a picture of the file) and he can tell you whether it should be patentable. He is THAT good.

  70. “Note the awesome idea of using a processor to do the calculations!!!! Wow. That’s so cool. What an advancement. Mindblowing, really. Who came up with that? Genius at work, baby.

    Seriously, does anyone want to argue that (on planet earth in 1998) the patentability of this invention could lie anywhere but in clause (d) of the claim?”

    You may want to read the decision. Just a suggestion.

    In particular, page 26, lines 4-10. The differences between the claim and the prior art are clearly spelled out by the court. Something about triangulation of measurements using a first image from a first camera and a second image from a second camera versus tiangulation of related measurements from images from only one camera. Not simply the “awesome idea of a using a processor to do calculations.”

    But the court concludes that “the trial testimony” of the accused infringer’s expert, which was unrebutted by the pantee (D’oh!!!!), closed the relatively small logical gap between the prior art and the claim. (The courts words, not mine.) Perhaps if patentee’s counsel had bothered to make any rebuttal of the invalidity arguments/evidence they could have saved the claim. Perhaps.

    “And how would one have any clue what was going on in the processor without inspecting the device?”

    Uhm, patentee’s attorney reviewed the accused infringer’s product literature. Kinda the same way that many, many opinions get written.

    Again, maybe read the decision first.

    Really do love your posts.

  71. “Tell me if you CAN how it is possible that you CAN make such judgements based only on the bare wording of a claim. If you CAN do that, you must be a super-psychic genius who CAN do anything.”

    Examiners do this every day. It’s not that big of a deal.

    By the way, you spelled judgment wrong.

  72. “The PTO’s rules for the contents of a petition to make special require recitation of those words.”

    How onerous!!!

    [clutches pearls]

  73. From page 16 of the decision:

    “Furthermore, the district court did not credit the fact that the ‘rigid’ comparison words ar not of Leone’s creation. The PTO’s rules for the contents of a petition to make special require recitation of those words.”

    Magic words, anyone?

  74. MalMoon
    Tell me if you CAN how it is possible that you CAN make such judgements based only on the bare wording of a claim. If you CAN do that, you must be a super-psychic genius who CAN do anything. So what are you doing here?

    With you on the presumption of validity tho’…

  75. To 2600Examiner,

    I’m a public searcher (thus my clever name today), I can tell you that the pool of searchers is deep since a junior-high graduate can put that shingle out there, but the talent is super shallow. Most of the good public searchers are busy working on invalidity (litigation) cases and performing clearance work (or quitting to go to law school). The only folks left to do the patentability searches that you see the results of are the newbies and un-talented searchers.

    The Accelerated Examination search is a validity of the applicants claims and costs what a validity costs, not what a patentability costs. Plus, based upon my dozen AE searches performed, will get rejected for something silly no matter what, which starts the 1 month response or else timeline. Additionally, there is no boilerplate that is safe from the OED these days.

  76. I know why the requirements are so onerous. Everything you say can and will be used against you in the charge of inequitable conduct. Every statement the attorney makes will be examined and misrepresented to show that the Examiner was intentionally mislead. And that is after thousands upon thousands of dollars are spent carefully searching and reviewing the petition. Because for every dollar spent in preparing the petition, during litigation 10 or 100 will be spent trying to mischaracterize what the prosecutoring attorney said. That is why relatively few petitions to make special are filed, and that is why the ESD/ADS is so highly disfavored.

  77. “What about these requirements are so onerous?”

    I don’t know.

    Why doesn’t PTO (mis)management tell us why 80+% of the petitions to make special are initially denied on the grounds that the search is insufficient?

    Why did PTO (mis)management state that a search conducted by, for example the EPO or JPO (i.e. competent searching authorities, certainly more competent than the USPTO), would not be sufficient?

  78. “(i) search for prior art; (ii) identify all claimed elements found in each relevant reference; and additionally (iii) prepare an explanation of why the claims are patentable over the references. These AE requirements are costly and potentially open the applicant to charges of inequitable conduct (as well as narrow claim scope).”

    What about these requirements are so onerous? There seems to be plenty of search services out there. A search done by an external person with knowledge of the relevant art followed by an explanation with a standard boilerplate discussion of the references found seems like enough to avoid inequitable conduct.

    I don’t know what kind of public searchers are out there (based on the applications I get I’d guess either the talent pool isn’t too deep or attorneys don’t use them), but if accelerated examination was more popular searching might be a good business to get into.

  79. “The particular conduct at issue included statements in the petition that infringement was clear even though the accused product had not been fully inspected.”

    Here’s claim 1:

    1. A three dimensional inspection apparatus for ball array devices having a plurality of balls, wherein the ball array device is positioned in a fixed optical system, the apparatus comprising:

    a) an illumination apparatus positioned for illuminating the ball array device;

    b) a first camera disposed in a fixed focus position relative to the ball array device for taking a first image of the ball array device to obtain a characteristic circular doughnut shape image from at least one ball;

    c) a second camera disposed in a fixed focus position relative to the ball array device for taking a second image of the ball array device to obtain a side view image of the at least one ball; and

    d) a processor, coupled to receive the first image and the second image, that applies triangulation calculations on related measurements of the first image and the second image to calculate a three dimensional position of the at least one ball with reference to a pre-calculated calibration plane.

    Note the awesome idea of using a processor to do the calculations!!!! Wow. That’s so cool. What an advancement. Mindblowing, really. Who came up with that? Genius at work, baby.

    Seriously, does anyone want to argue that (on planet earth in 1998) the patentability of this invention could lie anywhere but in clause (d) of the claim? And how would one have any clue what was going on in the processor without inspecting the device?

    Unless of course those calculations are really obvious.

    Maybe the inequitable conduct wasn’t in the petition. Maybe it was somewhere else. Maybe there was just a routine violation of Rule 56 of the sort that nobody cares about. Only one piece of non-patent art cited on the patent, i.e., the allegedly infringing product.

    I agree with those who favor removing the presumption of validity, or at least getting rid of the “clear and convincing” standard for establishing invalidity. The public’s time and money is being wasted.

  80. “Although the CAFC agreed that the type of conduct here could be inequitable conduct, this case did not present sufficient evidence. Because materiality and intent must both be proven with clear and convincing evidence, the appellate panel requires that all reasonable inferences be given weight:”

    Ha, ha, ha . . . this case just confirms what a muck-up Nilssen was. Where was the analysis of materiality and intent in Nilssen? Where was the showing of clear and convincing evidence? Lourie/Mayer simply said “If the trial judge said so, must be.”

    I just hope Obama doesn’t put Michel or Newman on the USSCt. Our bacon’s cooked if he does. (It’s already in the pan after Nilssen.)

    Bab

  81. “Although the CAFC agreed that the type of conduct here could be inequitable conduct, this case did not present sufficient evidence. Because materiality and intent must both be proven with clear and convincing evidence, the appellate panel requires that all reasonable inferences be given weight:”

    Ha, ha, ha . . . this case just confirms what a muck-up Nilssen was. Where was the analysis of materiality and intent in Nilssen? Where was the showing of clear and convincing evidence? Lourie/Mayer simply said “If the trial judge said so, must be.”

    I just hope Obama doesn’t put Michel or Newman on the USSCt. Our bacon’s cooked if he does. (It’s already in the pan after Nilssen.)

    Bab

  82. “Although the CAFC agreed that the type of conduct here could be inequitable conduct, this case did not present sufficient evidence. Because materiality and intent must both be proven with clear and convincing evidence, the appellate panel requires that all reasonable inferences be given weight:”

    Ha, ha, ha . . . this case just confirms what a muck-up Nilssen was. Where was the analysis of materiality and intent in Nilssen? Where was the showing of clear and convincing evidence? Lourie/Mayer simply said “If the trial judge said so, must be.”

    I just hope Obama doesn’t put Michel or Newman on the USSCt. Our bacon’s cooked if he does. (It’s already in the pan after Nilssen.)

    Bab

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