Junk Patents

In 2007, Haliburton filed for patent protection – claiming a method of “patent acquisition and assertion by a (non-inventor) first party against a second party.” It looks like the company wants to be able to sue non-inventing entities who try to patent and assert technology against a company who has been using the technology as a trade secret. Bilski wipes cleanly out the claims – except for those claiming the step of “performing research using a computer.” The inventor Clive D. Menezes is a Halliburton patent attorney. The prosecuting attorney is Howard Speight.

49 thoughts on “Junk Patents

  1. Millard – Cheney? I think he has been gone from Halliburton since, ohhh, 2000?

    Now the real question is if this dreck issues, will they be willing to license and can one draft an exclusive license for the field of use of filing a counterclaim against a litigant that has sued for infringement of US 7,654,321, such that one can carve out these exclusivity domains based on what patent is being asserted against licensee?

  2. “Should cost him his license. Filing a false sworn document (oath/declaration) with the USPTO. No way he thinks he actually invented this subject matter… considering it’s what trolls have been doing for almost a decade now. I’m sure the state bar and/or USPTO bar would not think it too funny.”

    Bob, are you familiar with the concept of libel? You might want to actually read the application. I think it’s quite conceivable that the inventor thinks that he actually invented something.

  3. Should cost him his license. Filing a false sworn document (oath/declaration) with the USPTO. No way he thinks he actually invented this subject matter… considering it’s what trolls have been doing for almost a decade now. I’m sure the state bar and/or USPTO bar would not think it too funny.

  4. If they were filing the application to make a public statement, they would have done it much better and sooner by requesting early publication – filed April ’07; published Oct ’08.

  5. JTB wrote:
    >Even if this did pass the machine-or-transformation test, could this still be rejected
    >under 101 for lack of utility, because an application filed using this method would
    >(should) be rejected under 102(f), “he did not himself invent the subject matter sought to
    >be patented”?
    Certainly. Inoperability supports a lack of utility under 101 and is well-established:

    “To meet the utility requirement, the Supreme Court has held that a new product or process must be shown to be ‘operable’ – that is, it must be ‘capable of being used to effect the object being proposed.’ Michell vs. Tilghman, 86 U.S. (19 Wall.) 287, 396 (1873).”
    Carl Zeiss Stiftung v. Renishaw PLC (Fed. Cir. 1991).

    The lack of enablement is a subordinate conclusion here, even though it is often easier to prove by itself. The two are intertwined like so:

    “The questions of whether a specification provides an enabling disclosure under 112, P 1, and whether an application satisfies the utility requirement of 101 are closely related.
    . . .
    To satisfy the enablement requirement of 112, P 1, a patent application must adequately disclose the claimed invention so as to enable a person skilled in the art to practice the invention at the time the application was filed without undue experimentation.

    The utility requirement of 101 mandates that the invention be operable to achieve useful results.

    Thus, if the claims in an application fail to meet the utility requirement because the invention is inoperative, they also fail to meet the enablement requirement because a person skilled in the art cannot practice the invention.”
    In re Swartz (Fed. Cir. 2000). This was the cold fusion patent.

  6. Even if this did pass the machine-or-transformation test, could this still be rejected under 101 for lack of utility, because an application filed using this method would (should) be rejected under 102(f), “he did not himself invent the subject matter sought to be patented”?

  7. In the description of the patent: “The inventor and the assignee of this patent have no intention of applying the techniques described herein offensively but instead intend to use the patent defensively to discourage patent trolls and the like from extortionist practices.”

    I wonder if they’re willing to license this for free to those who actually manufacture goods, should the patent actually be granted.

  8. A coworker happily observed that attempting to patent prior art is usually a bad idea. The sort that can get lawsuits dismissed with prejudice and judicial advice to return the favor with both criminal and civil lawsuits.

  9. ON 102(g)
    ————-
    M. Slonecker wrote:
    >BTW, perhaps I am missing the point, but I do not understand the perceived need to
    >include something “secret” in the claim.
    Because a 102(g) defense can be used in litigation whereby the defendant shows prior invention and diligent reduction to practice without suppression or concealment. If some element is secret, however, then 102(g) may not apply because of suppression. The point of the “junk method” is to “arbitrage” a defendant’s trade secret even if it is invented prior to that of the plaintiff. Essentially the plaintiff insidiously co-opts the defendant’s trade-secret by discovering and patenting it. Since the “junk patent” method claim doesn’t distinguish relative dates of invention (or avoids merited rejections), a 102(f) may preclude obtaining an enforceable patent, as I posted above. Hence the method is not-enabled (one of the steps requires obtaining a patent).

    Note that secrecy of an element by itself to avoid 102(g) is not enough, there must be intentional suppression as in a trade secret:
    “Intentional suppression occurs when an inventor ‘designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public.’ Paulik v. Rizkalla, 760 F.2d 1270, 1273 (Fed. Cir. 1985) (en banc) (quoting Kendall v. Winsor, 62 U.S. 322, 328 (1858)); see also Fujikawa, 93 F.3d at 1567.
    . . .
    See E.I. Du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1436 n.5 (Fed. Cir. 1988) (“Because work is ‘secret’ does not necessarily mean that it has been ‘abandoned, suppressed or concealed.’”)”
    Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 80 USPQ2d 1620, 1624-25 (Fed. Cir. 2006)

    A HYPOTHETICAL
    ————————-
    Now consider a hypothetical that gets to the heart of the matter:

    Are you being harassed by nuisance suits? Are your valuable trade secrets being hijacked? Then consider help from Troll Protection Services (a full service troll exterminator. Fees vary by venue. Investment prospectus available. See our sister company Bilski-proof Claim Drafting Licenses and our financial services company Patent-Infringement-Defendant Credit-Default Swap Services with access to US Treasury):

    Our standard troll-infringement counter-claim (more lethal concoctions available)

    Title: Monetary Arbitrage of Other’s Trade-Secrets

    Secret, but enabling spec.

    Claim 1. A method of altering data stored in a storage system comprising:

    altering a first data on a storage system, wherein said first data represents an account balance kept in a financial institution, and
    wherein said step of altering further comprises:

    1) obtaining an equity interest in a patent filing in a jurisdiction;
    2) identifying a target party infringing said patent filing;
    3) identifying a secret element of said target party’s infringing activities, wherein said secret element is adequately concealed or suppressed to avoid a statutory invalidity rejection against said patent filing;
    4) effecting inclusion of an additional claim having said secret element during prosecution of said patent filing to read-on said target party’s infringing activity;
    5) negotiating with said target party;
    6) receiving a second data represented from the group consisting of a number inscribed on a check indicating an amount of currency and a number in an electronic notice from said financial institution indicating an amount of currency transferred and combinations thereof;
    7) consummating alteration of said first data selected from the group consisting of depositing said amount of currency on said check into said financial institution for the benefit of said account balance and depositing said amount of currency by confirming said electronic notice for deposit into said financial institution for the benefit of said account balance and combinations thereof.

    Claim 2. The method as in claim 1 wherein the step of altering comprises the additional steps of:

    1) buying a credit-default swap on a financial obligation of said target party;
    2) effecting a patent grant arising from said patent filing, wherein prosecution of said patent filing intends to follow ethical and legal requirements in said jurisdiction;
    3) effecting a suit on said target party for patent infringement.

    Claim 3. The method as in claim 2, wherein the step of altering comprises the additional step of:
    issuing a global press release.

    Claim 4. The method as in claim 3, wherein the step of issuing further comprises:
    effecting reporting of said press release in a daily financial media, wherein said reporting distresses financial obligations of said target party.

    COMMENT
    —————–
    Note the attempted anti-Bilski structure of the independent claim grounded in physical transformation, yet still capturing the essence of the benefit. Many financial trading business method patents can follow the same pattern whereby the terminal position can be claimed as something physical which is transformed by at least one physical step such as a transaction. The extra-solution-activity problem is turned on its head by making it the principle of the claim.

    Business methods, essentially designed to make money, should not directly claim the method, but rather the physical changes to financial accounting arising inherently from the method. In other words, don’t claim a method of making money, but rather a method to change the recording of your bank account arising from the method.

    Money is real, because eventually your financial institution says it is. So just prove it to the Federal Circuit and think about claiming that way.

    Paul Gardner correctly suggests we not wallow, but start to find ways around Bilski.

  10. I’m going to file a process patent on the reading and interpretation of flow charts in ridiculous patent applications.

    By the way… everyone on this blog is hereby notified of your infringement for having read and interpreted the flow chart above. Don’t worry, you are welcome to become a licensee. ;-P

  11. Obviously a thinly veiled attempt at humor/satire to try and express a point.

    I do have to wonder, though, what the business execs at Halliburton have to say about this expenditure of corporate monies? Experience informs me that neither the CEO nor COO would be pleased to learn that its in-house counsel are engaging in money-spending efforts such as this.

    BTW, perhaps I am missing the point, but I do not understand the perceived need to include something “secret” in the claim.

  12. I’d agree that this fails both “branches” of the Bilski test, but I have to sort of admire this. I don’t think this was a joke per se, but it’s certainly tongue in cheek. They’re so fed up with trolls and troll lawsuits that they’re going to try to patent what trolls do. Whether it’s to sue trolls for a taste of their own medicine, or use it in a counterclaim, it’s amusing. They can’t really expect this to hold up to an invalidity challenge (and perhaps inequitable conduct as well) but heck, trolls don’t care about that when they file or buy their patents. It’s poetic in its own way.

    Now whether this is also an indirect indictment of the patent system of the past decade, well . . .

  13. Seems like a great idea to me. I think there are workarounds for Bilski in this situation. Also, if any type of coverage is obtained (even if narrow), it may cause the troll to rethink going after Halliburton (easier to go after someone else). It may be worth the cost risk relative to potential payout to a troll.

  14. makes sense. Get a patent, however narrow or unenforceable, to assert in a counterclaim against a troll. Makes trolling more expensive and complicated. Reduces incentive for troll to sue Halliburton.

  15. Forget Bilski, I’ve seen people do this for years, long before Halliburton filed.

    Maybe they got paid by the BSA to do this, so the BSA can then point to this and scream about the need for “patent reform”.

    What a load of @#$%.

  16. “Both the patent attorney inventor and the attorney of record on the case may subject to discipline whether the patent issues or not.”

    Odds of that actually happening: zilcho.

  17. The method, in fact, is tantamount to advocating inequitable conduct. Even though practicing the method would appear not to require disclosure of the secret art according to rule 56 when filing a patent in the US, if such secret art infringes (a requirement to fulfill the benefit of the invention), it also anticipates, because that which infringes, if earlier anticipates, and is, thus inherently previously invented. And because any claim would have to be sufficiently broad to read on the secret art, the contemplated filing should be properly rejected under 102(f) which

    “provides that a person shall be entitled to a patent unless ‘he did not himself invent the subject matter sought to be patented.’ This is a derivation provision, which provides that one may not obtain a patent on that which is obtained from someone else whose possession of the subject matter is inherently ‘prior.’ It does not pertain only to public knowledge, but also applies to private communications between the inventor and another which may never become public. Subsections (a), (b), (e), and (g), on the other hand, are clearly prior art provisions. They relate to knowledge manifested by acts that are essentially public.”
    OddzOn Prods., Inc. v. Just Toys, Inc., 122 F3d 1396, 43 USPQ2d 1641, 1644 (Fed. Cir. 1997).

    This even extends to obviousness:
    “We therefore hold that subject matter derived from another not only is itself unpatentable to the party who derived it under § 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a .combination of §§ 102(f) and 103.” Id.

    Inequitable conduct naturally follows, because the applicant knew (by virtue of he who is substantively involved by writing a claim) that he was not the first true inventor, so there is a clear intent to deceive under 102(f):
    “Once an attorney, or an applicant has notice that information exists that appears material and questionable, that person cannot ignore that notice in an effort to avoid his or her duty to disclose.”
    Brasseler, USA I, L.P.. v. Stryker Sales Corp., 267 F. 3d 1370, 1383, 60 USPQ2d 1482, 1490 (Fed. Cir 2001).

    Furthermore, because of the foregoing, the claimed “junk patent” method is non-operable (you can’t legitimately obtain an enforceable US patent claim under the method described), it is properly rejected under 112 for lack of enablement. You don’t even need Bilski. It is fundamentally junk.

    Finally, a patent publication advocating inequitable conduct before the USPTO should be automatically investigated by the OED. Both the patent attorney inventor and the attorney of record on the case may subject to discipline whether the patent issues or not.

  18. if its satire, then the whole application and definitely the OATH is submitted with the intent to deceive the patent office (because Clive does not really want a patent) … this guy or the Cheney clones that put him up to it should be disciplined, I don’t care if he is Clive Owen himself.

  19. They rediculed Edison too.

    This patent application could be quite valuable. In a world where patent trolls generate billions of dollars, the ability to extract a percentage of the patent troll’s royalties through an aggressive licensing program makes strong business sense.

  20. Steve,

    I would think that electronic filing would amount to “insignificant extra-solution activity.”

  21. Steve,

    I would think that electronic filing would amount to “insignificant extra-solution activity.”

  22. Ahh…so this is what $4/gallon gasoline was paying for. I always thought it was just funding indoor ski slopes in the middle of the desert.

  23. “That application took all of 2 hours to draft. What a joke. Makes a mockery of the profession and the US patent system.”

    Well, if there’s one thing I’ve learned, it’s that patent trolls don’t like to be mocked.

    The trolls are drafting “revenge” applications as we speak, and in 18 months the mockery will be deafening.

  24. “You guys don’t seem to ‘get’ the point of filing this app. The ‘point’ is to push it through the office (because a good portion of examiners will not be able to find art on this I bet) and then, when some particularly annoying troll harrasses you, you counter sue them to harrass them. And you fight to the DEATH in litigation.”

    Please do give all of us the benefit of your vast experience in litigating. We’re all just stumbling around in the dark without your guidance.

    LOL

    “… because a good portion of examiners will not be able to find art on this I bet…”

    But you’ll knock it out with a 5 second google search, amirite? Maybe 10 seconds.

  25. “Do you people not get a satirical point of this action?”

    I doubt that they would have incurred $3,950 in excess claim fees just for satire.

  26. Come on Mooney,

    Haliburton may be the Devil’s corporation, but the only cost were the lawyer’s time and the filing fees. I believe this was filed to make a point.

    However, on novelty grounds alone, it can be knocked out based upon some high-profile cases without some further limitation.

  27. For those interested in viewing this garbage, it is Patent Application No. 11/741,429 and/or Publication No. 2008-0270152 just published on October 30th. It can be accessed at:

    link to portal.uspto.gov

    This junk patent application which includes “performing research using a computer” should be shot down because the computer is being an “insignificant extra-solution activity” towards asserting “a patent property against a second party” as stated in the preamble of claim 1.

    From Bilski:

    “Further, the inherent step of gathering data can also fairly be characterized as insignificant extra-solution activity.”

    As applied to this junk patent application,

    “[T]he inherent step of gathering [research] data [using a computer] can also fairly be characterized as insignificant extra-solution activity.”

  28. I am going to file an application on a method of attempting to patent an application comprising a method of…….obtaining an equity interest…

  29. “Do you people not get a satirical point of this action? Or does it have to be a fur-lined keyhole to be recognized?”

    I think we sometimes forget that Halliburton had a reputation as one of the most witty and satirical multi-national corporations before it embarked on its present career as a serious actor.

  30. “Nice job, throwing money down the toilet”

    That application took all of 2 hours to draft. What a joke. Makes a mockery of the profession and the US patent system.

  31. Do you people not get a satirical point of this action? Or does it have to be a fur-lined keyhole to be recognized?

  32. So how do you find prior art discussing “a secret aspect” of a product? If its published, it’s by definition not a secret, isn’t it?

  33. “I’m worried that one of my patent applications might get posted here, so I’m going to patent a method of ridiculing patent applications on a patent blog.”

    I believe I expressly disclosed that concept here a couple years ago. Seriously.

  34. They filed an IDS citing an article about Ray Niro as “the original patent troll.” Quite the interesting IDS reference.

  35. “The inventor Clive D. Menezes”

    The inventorlol.

    All I can say is: I hope they filed a continuation.

    You guys don’t seem to “get” the point of filing this app. The “point” is to push it through the office (because a good portion of examiners will not be able to find art on this I bet) and then, when some particularly annoying troll harrasses you, you counter sue them to harrass them. And you fight to the DEATH in litigation.

  36. I’m worried that one of my patent applications might get posted here, so I’m going to patent a method of ridiculing patent applications on a patent blog. Hey, blogs need computers, so I’ll pass Bilski. Take that!

  37. Even without the business method aspects, it’s pretty dumb to try to patent something you observe other people doing.

    Proof that some companies have so much money they don’t know what to do with it.

    I wonder if Cheney was involved.

  38. I appreciate the sentiment… but even if this passed the machine-or-transformation test, it would surely fail on novelty grounds.

  39. “The inventor Clive D. Menezes is a Halliburton patent attorney.”

    Nice job, throwing money down the toilet.

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