Orion and Taurus: NPEs at the Federal Circuit

Erich Spangenberg has at least two pending appeals at the Federal Circuit: Taurus IP v. Daimlerchrysler (and Hyundai) and Orion IP v. Hyundai Motor. In the Taurus case, the Wisconsin District Court found the asserted patent (6,141,658) invalid and also asserted jurisdiction over Spangenberg and Orion IP via a veil-piercing theory. In a recent order, the Federal Circuit properly refused to allow Chrysler and Mercedes to present argument and documents “in camera” in that case. [Link] In the Orion case, a Texas court found Hyundai liable for infringement of the asserted patent (5,367,627) and awarded $34 million in damages. Hyundai has posted $25 million bond to stay the full payment until the appeal is concluded. [LINK ]. The general rule is that money damages will be stayed pending appeals if bond is posted, and that injunctive relief might be stayed.

The ‘627 patent is patent reformer’s poster child for damages reform. The patent covers a method that helps a sales clerk properly order the parts that match a customer’s needs. It is hard to know what the value of the incremental invention as compared with the prior art back in 1989 when the original application was filed. I will note that the $34 million patent has only 15 claims and includes means-plus-function language in the claims. Claim 1 of the patent is reproduced below:

1. A computerized method of selling parts for particular equipment specified by a customer, comprising the steps of:

a) receiving information identifying a customer’s parts requirements for the equipment, comprising the step of receiving equipment application information, comprising an identification of the equipment with which one or more parts are to be used;

b) electronically specifying information identifying a plurality of parts and specifications for the parts;

c) gathering parts-related information for one or more parts within the plurality of parts which meets the customer’s requirements, comprising the step of electronically associating at least one of the parts within the plurality of parts with the received equipment application information; and

d) receiving the gathered parts-related information and compiling the parts-related information into a proposal meeting the customer’s requirements.

Although the ‘658 patent does not claim priority to the earlier ‘627 patent, it does have one overlapping inventor and a large amount of overlapping scope.

65 thoughts on “Orion and Taurus: NPEs at the Federal Circuit

  1. 65

    There is much discussion in cases like this one aobut how the patent should never have been issued or is clearly invalid. But what does that have to do with damages? If the patent is invalid, then the defendent should be able to prove that in court (whether patent examination should be better is a different issue as well). In fact, the defendent tried and failed to invalidate the patent. In the face of this, how can it be said that the patent is clearly invalid? Regardless, what may be needed in cases like this is “invalidity proof” reform (but again, if the patent is so clearly invalid, why can’t the defenant easily prove it?), but not damages reform.

  2. 64

    Jaoi, I restrained myself from railing. I am repetitively criticised for being repetitive, and if I get boring nobody will read me. That doesn’t mean I’ve given up though, on persuading you (and other readers) that the EPC is the cleaner way, that’s fairer to independent inventors. As to judges, I wish them integrity and wisdom, and a law that is so clear on its face that they can’t mess it up, even under the stress of stare decisis and of trying to do justice in real life difficult cases, where both sides have good grounds for believing that they are in the right of it.

  3. 63

    Max,

    I was quite happy to see you weren’t leading toward an opportunity to rail against our First to Invent system.

    Re: “Your suspicions about Duffy: they come from reading his Paper, do they?”

    No. My only gripe v. Professor Duffy was his endorsement of Professor Kimberly Moore for the CAFC bench. Perhaps I read too much into that, and perhaps I’m too outspoken.

    Just a note: “Scholarly” and “integrity” are different qualities – neither implies the other to any degree. Although I like to think most scholars, and most people, have integrity.
    When considering judgeship qualifications, integrity leads the list.

  4. 62

    The Winslow Boy? I know the title but don’t remember the point about the film. Bit like Kipling’s boy on the burning deck is it. Imposters /triumph/ diaster, that sort of thing?

    Coming to patent law from university studies in science, I see the fundamentals of patent law more in terms of science and mathematics ie pure logic rather than in terms of an “agenda”. I fondly suppose that not everything is subjective, and not everything is relative. To be provocative, I think one unique feature of US patent law is harmful to it: that its practitioners are first and foremost attorneys at law. Every other country has two proudly distinct professions of equal rank: patent attorney and attorney at law. Hardly anybody has both qualifications. Each is as tough as the other to master. But only the patent attorneys have the university grounding in science or engineering, and this grounding nurtures them, and is drawn upon, throughout their professional career as a patent attorney. Here in Europe, patent attorneys who are chemists don’t do gearboxes, and mech eng doesn’t do pharma. I want a Patent Statute that allows any patent law issue to be tested on the touchstone of the skilled person ie not a juryman and not a lawyer. I want a Statute that ordinary inventors, scientists and engineers can accept, when they have no interest in legal matters, and which is not gobbledygook, and doesn’t render the law to them nothing more than a (Dickensian) ass.

    Your suspicions about Duffy: they come from reading his Paper, do they?

  5. 61

    Are you familiar with 1999’s “The Winslow Boy” movie (I’d like to see the 1948 version, I’d bet it would be memorable).

  6. 60

    Max,

    To which statue(s) do you refer?

    I have no doubt that Professor Duffy is a scholar — but I suspect he and I have different values and different agendas. Perhaps he has principles to which he adheres; I don’t know anything about him, except that I have no doubt Professor Duffy is a scholar. I know I have my own principles to which I adhere as best I can. And I do know a bit more about her Honor Judge Moore than I know about Professor Duffy.

  7. 59

    Jaoi, my point about novelty being superfluous in the USA is that the US patent statute allows unpublished pending US patent applications to be used to source obviousness attacks. If the US is willing to do that, it doesn’t need a novelty provision at all. I think that the US patent statute muddles the logical basis of the obviousness attack. To me, it is fair only if the state of the art (for obviousness purposes) is confined to what the public could conceivably have found out about, by the date in question. But we need Dennis, or the good Professor Duffy, to respond to that attack on the US patent statute, no?

    I think it’s not my place to comment on particular judges. My interest is in the statutory provisions, ie, the law itself, rather than the individual lawyers.

    Sorry you found the Duffy Paper disappointing. It is certainly an impressive work of scholarship.

  8. 58

    Ooops, make that three-branch government.

    I only wish we had a three party system.

  9. 57

    BTW, Professor Duffy and her Honor Judge Moore seem to be in league to decrease the value of American patents – they are not my favorite people, to the contrary.
    link to patentlyo.com

    Moreover, I believe Judge Moore takes less heed of her Oath of Office than is required of her.
    She may be brilliant, and I find her quite attractive, but, in my humble opinion, Judge Moore lacks sufficient judicial integrity to be a Judge; she has rendered glaringly result-oriented opinions despite her clear understanding of well established precedent and our patent statutes.
    In my view, as a Judge, Judge Moore has compromised herself in favor of political correctness and or personal prejudice versus rendering opinions consistent with prevailing patent law she so well understands.

    If I couldn’t document my opinions, I would not criticize a Justice in the Court of Appeals for the Federal Circuit, but I’m not about to do so under a pseudonym.

    My advice to all Justices, nay, my demand of all Justices, from your Honorable Country Magistrates to the nine Honorable Supremes, whether you are adjudicating a traffic ticket or a fundamental Constitutional issue, abide your Oaths at all costs – that is what you are obligated to do, what you are paid for and what We the People deserve and demand.

    For the American three-party government to survive under Constitutional rule, integrity from our nation’s judicial benches is an absolute requirement.

    Judges who don’t abide their Oaths and faithfully render their opinions according to Hoyle are in significant part responsible for the world-wide morass we are in today.

    Anyway, that’s my story and I’m sticking to it.
    Think about it — you’ll thank me in the morning.

  10. 56

    Dear Max,

    Insofar as I follow your question, I suspect for a similar useful function a novelty test serves in Europe.

    Professor John Duffy’s 06/21/06 article
    was less information regarding the merits of the obviousness question than I’d have hoped.
    link to utexas.edu

    Excerpt:
    “Inventing Invention: A Case Study of Legal Innovation

    “[T]he so-called patentability requirement was invented by the Americans, in
    particular the Justices of the U.S. Supreme Court in the famous case Hotchkiss v.
    Greenwood in 1850.”1

    This is a story about innovation — legal innovation. At the beginning of the nineteenth century, all countries having patent systems generally required patentable inventions to be both new and useful. Those two requirements have now been joined by a third: Patentable inventions must be new, useful and nonobvious. This development is not unique to the law of the United States. Every nation in the World Trade Organization applies these three standards in awarding patents.2”

    Also see the Wikipedia article:
    link to en.wikipedia.org

  11. 55

    OK, Max, I’ll mull it over cocktails. I’ll try to get back to you over the weekend. Enjoy.

  12. 54

    Jaoi, let’s forget the st00pid plate. We are going nowhere with it. Professor John Duffy published less than a year ago (Texas Law Review perhaps) a scholarly Paper about the history of obviousness law. It is as you say: it came in about 100 years ago. Before then, nothing else but novelty. But I think you agree that obviousness is necessary. Otherwise, people patent what’s lying in the road, impeding technical progress. The more interesting question is: Given an obviousness hurdle, what’s the point of retaining a novelty test, as well. I know why we need it in Europe (it’s to adjudicate between rival Applicants, both filing before anything is made available to the public, and only the first shall get the monopoly), but not what useful function it serves under US patent law. Care to enlighten me?

  13. 53

    Dear Max, (please pardon my delay)

    What is obvious and what is not, is to me the holy grail of IP interests.

    Measuring what’s in notional PHOSITA’s minds on a given issue, and expecting to find the same objective reasoning, is folly.

    The TSM test at least purports to require tangible evidence of some sort. Even so, people willl argue about what any given evidence means.

    About a year or two ago, someone posted on Patently-O a comment that, at some point in American history (maybe in the 1930’s?), almost everything was patentable – obvious testing didn’t enter into it. As I recall the gist of the comment, although I don’t think the comment referred to this patent statue, if there was no 35 USC 102 rejection, the patent was issued. I really would like to re-read that comment, but I’ve never been able to retrieve it.

    Be that as it may, re: “the 5 1/2 plate claim is a testpiece”

    There may not be a teaching or suggestion to make a 5 1/2 inch plate, but I don’t see how one can even hypothecate there not be motivation to do it (to fit different size foods; Mr. Monk, e.g., would insist on a correct size plate for each course) even in a hypothetical testpiece.

    But, given your hypothetical 5 1/2 inch plate testpiece, the answer is that No, nobody can say the claim is obvious – because you have ruled out possible obvious rejections.

    Delivering a non-obvious verdict in a dispassionate objective way does indeed dispatch the issue cleanly.

  14. 52

    I myself don’t mind whether it’s Mr Petition or some other champion of this subject matter that is “characterized in that it’s computerized”. I had thought it trite law, that 1) when it comes to claim 1, there are no superfluous words and 2) putting “computerized” in claim 1 won’t make it a patentable invention. But I suppose we will now be told that argument in these pages is prejudicial to the chances of winning in court so, sorry, I can’t come out to play with you today. Oh and: cue Puppets 1 and 2.

  15. 51

    Mr. Petition: “Perhaps, just perhaps, the limitations in the claims, interpreted in light of the specification are drawn to an invention that is not anticipated nor obvious”

    Gosh, if only I had nickel for every time I heard this excuse floated here to defend a crap computer-implemented invention. Instead of whining about people expressing their reasoned opinions, how about you explain to us what terms are to be limited and why? Because every time this excuse of yours is raised and I go to the spec, there is nothing helpful there. If anything, it’s worse.

    Just open your eyes. The claim is method of doing something old, except using a computer to help. How is that not obvious?

  16. 50

    I’m enjoying this Jaoi. I wonder if we have any readers following it.

    The point of the claim to the plate is that everybody without exception can see instantly, without reflection, that the claim ought to be found obvious, but is our method of handling obviousness up to the task of delivering that verdict in a dispassionate objective way? A system which handles it thus: “It’s obvious because I say it’s obvious” is unsatisfactory. So, the 5 1/2 plate claim is a testpiece, to test whether our “approach” is up to the task of despatching it cleanly.

  17. 49

    Max,

    At least to me, the hypothetical “five and a half inch plate” exercise to test a legal approach, is a hopelessly conflicted excercise. If novel is given, and there is no TSM, I don’t see what else there is to say. Let the patent issue.

    Why then, would EPO-PSA say it is obvious? What am I missing?

    Re: “Employ me as your EPO attorney. First thing I would assert is that the claim is a problem invention, by which I mean, it is already an invention to perceive the problem and to task R+D with finding a solution.”

    My sentiment exactly!, well said – I’ve never heard it expressed so concisely before.

    Re: the “learned Paper in the Journal of Perception”
    I agree; I don’t think it is relevant.

  18. 48

    Hallo Mr Petitions. Your point is that the patent was duly issued, and is therefore (despite its being back in re-exam) entitled to respect, and a full presumption of validity, I think we all appreciate that. Still, you wouldn’t deny us some fun with it though, would you? Does it matter what anybody writes as their opinion, on this blog? It’s a free country, isn’t it? Myself, I’m always suspicious, when I see claim 1 replete with adjectives like “computerized” and “electronically”. I can’t help wondering how much of its validity depends on those little fellows.

  19. 46

    The patent is in fact undergoing reexamination. Why don’t you educate yourselves as to what is disclosed and what is claimed before you attack the validity of a patent based on a 10 minute superficial reading of a claim? Perhaps, just perhaps, the limitations in the claims, interpreted in light of the specification are drawn to an invention that is not anticipated nor obvious over the prior art that existed at the time of the invention. Unless you happen to have a soft spot in your heart for the patent infringers, why not wait until the PTO and the Court decides this issue?

  20. 45

    Max, (I have not yet read your 8:49 AM comment yet. This was written regarding your previous comments.)

    Here’s another thing about Agrevo and Squash balls:

    A “the notional ‘person skilled in the art’” of Squash balls WOULD NEVER STOP TO THINK that one could improve a Squash ball so one plays a higher level game with an improved ball.

    If the notion (about an improved Squash ball so one plays a higher level game with an improved ball) were raised with a “the notional ‘person skilled in the art’” of Squash balls, then he would stop to think about it.

  21. 44

    Jaoi, really, you do surprise me. A five and a half inch plate not novel. Who would have thunk it?

    And, you mean to tell me the TSM arises because there are “foods” for which a 5 incher is too small and a six incher is too big. Get away. You cannot be serious.

    The point of these exercises is to test the legal approaches in hypothetical cases. My terms of reference included the hypothetical that a such plate is “novel”. Start from there. Or, if you like, don’t bother. Over here it’s already been debated to death.

  22. 43

    To continue with the blue ball case. The facts are these:

    1. Father plays squash every Sunday, with his brother. Kids mischievously colour blue all the squash balls in his bag. Father has no choice but to play with a blue ball. But, you know what, he and his brother find themselves playing to a higher standard. So they file an app, in which they claim the blue ball and (important) tell that it gave them a more satisfying game.

    2. PTO Exr searches, keywords, with hindsight. Finds a learned Paper in the Journal of Perception, which reports that subjects could detect faster a small fast moving object against a white background, if it is blue rather than black. Exr says, You’re rejected.

    3. In the EPO one would look for the objective technical problem “How should I modify a black squash ball, in order to achieve a game played at a higher standard”.

    4. Imagine the R+D dept at the squash ball manufacturer. Give it that problem to solve. Any TSM?

    5. Employ me as your EPO attorney. First thing I would assert is that the claim is a problem invention, by which I mean, it is already an invention to perceive the problem and to task R+D with finding a solution.

    6. Second thing I would assert is that “speed of detection” is not relevant. Players hardly ever lose sight of the ball. No hint in the Paper that blue will improve your game. BUT, the learned Paper does make plausible the non-obvious technical effect actually discovered and actually reported in the app as filed so, Thank You Examiner.

    7. As I keep on saying, once your app is on file, your “objective technical problem” is outside your control. It is irrevocably fixed as the “delta” between the D1 reservoir of disclosure and the reservoir of your disclosure in your own app. Hindsight, bye bye.

    8. I grant you that “improved squash playing” is close to the edge of “technical” but the right side for patentability (I think). Never mind that, it’s still a useful example for debating PSA.

    9. Peter Purdy. Who he? Must I Google him now?

    10. Meanwhile, back at the USPTO…….? You tell me.

  23. 42

    Max,

    Re: the “five and a half inch plate”

    No, making different size plates is not novel, and there is motivation to do it to fit different size foods.

  24. 41

    “I have to assume this was pre-KSR and the patent-lovin’ Texas judge let himself be rolled by the plaintiffs, perhaps with help from some unimaginative defense attorneys.”

    you’d be wrong AND annoying at the same time, not that’s anything new…

  25. 40

    Dear Max,

    It is hard for me to reconcile your 4:58 PM comment with rewritten (with emphasis) Agrevo T_0939/92, 2.4.2:
    “… In other words, the notional ‘person skilled in the art’ is PRESUMED to seek to perform a particular act WITH some concrete technical reason: he must NOT, rather, be assumed to act out of idle curiosity but WITH some specific technical purpose in mind.”

    However, I totally agree with your point about the way it should be:
    “the point about” any OBVIOUSNESS “… test is that it is objective, effective and fair. It has absolutely no interest whatsoever in any of the (subjective) circumstances surrounding the invention by the inventor, much less the mindset of the inventor.”

    Re: Your “Squash racquets ball, colored blue” claimed invention.

    It is hard for me to get my head around something so seemingly implausible, but, I suppose the invention should be credited with the grant of a patent. If it were mine, I’d be embarrassed to file it unless I was able to explain “how it comes to pass, that you get a better game with a blue ball.”

    If the prior art includes disclosures that reveal how it comes to pass, that you get a better game with a blue ball, then, of course, a patent is foreclosed to the late comer inventor.

    Here’s the thing about Agrevo and Squash balls: What kind of “technical purpose” would the “the notional ‘person skilled in the art’” of Squash balls have to determine whether blue balls were obvious?

    The subject blue balls inventor invented “by chance.”

    If the “the notional ‘person skilled in the art’” of Squash balls had “technical purpose”, it would at least partially let the cat out of the bag.

    Are these examples of “technical purpose” for “the notional ‘person skilled in the art’”:
    a) Squash balls can be improved so one plays a higher level game with an improved ball; how would you do it?

    b) Can you improve Squash balls so one plays a higher level game with an improved ball?

    * * * * *
    PS: An idle question: Have you ever heard of Peter Purdy?

  26. 38

    Jaoi, another example from Europe, namely, the “five and a half inch plate”. The prior art includes 5″ plates and 6″ plates. A five and a half inch plate is novel. Further, there is no TSM in the prior art, to make a five and a half inch plate. Is it obvious? It seems not. But, under EPO-PSA, it is. Thoughts?

  27. 36

    Jaoi, here’s another thought. It’s based on a real case, with a claim found valid. Suppose you are a good squash racquets player, By chance, you discover that you play a higher level game when you use a blue ball, instead of the classic black one. Your Claim 1 reads:

    Squash racquets ball, colored blue.

    6 (or his colleague) rejects your claim as obvious. Question 1: Can you get your claim ratified, as not obvious? Question 2: how would all this play out, at the EPO? Question 3: would it make any difference if the prior art includes disclosures that reveal how it comes to pass, that you get a better game with a blue ball?

  28. 35

    Seems like a perfect opportunity for the CAFC to pick up where it left off in Comiskey.

    Recall that the revised Comsikey opinion remanded the case to the PTO to determine if mere inclusion of a machine to an otherwise mental process satisfied 101. But the CAFC’s reason (out) for punting was that Mr. Comiskey did not have an opportunity to argue the 101 issue to the examiner (because it had been raised sua sponte on appeal), since he should have the opportunity to amend his claims. Not so here.

    Heck, who needs Comiskey… just Bilski it. There’s no particular machine there.

    We’ve seen the CAFC bring 101 on its own once… why not again here?

  29. 34

    JAOI, the point about the EPO test is that it is objective, effective and fair. It has absolutely no interest whatsoever in any of the (subjective)circumstances surrounding the invention by the inventor, much less the mindset of the inventor. All that is totally irrelevant to it. Instead, it postulates (presumes?) a notional PHOSITA (who has, as we all know, a totally unrealistic and unfeasible relationship with the state of the art). It then tests the subject matter of the claim (according to the app, not the testimony of the inventor years after the filing date, or the lab notebook before the filing date) against the objective art through the objective prism of the notional PHOSITA. So, I would say, it agrees totally with the “manner” prohibition in 103. I welcome your interest in the EPO obviousness test.

  30. 33

    More follow up:

    I’ve rewritten with new emphasis Agrevo T_0939/92, 2.4.2 so is clear and easy to understand even to people like me, i.e., with dyslexia:

    “… In other words, the notional “person skilled in the art” is PRESUMED to seek to perform a particular act WITH some concrete technical reason: he must NOT, rather, be assumed to act out of idle curiosity but WITH some specific technical purpose in mind.”

  31. 32

    Max, furthermore, I do not appreciate the awkward double negative in the language — new emphasis added:

    “… In other words, the notional “person skilled in the art” is NOT to be assumed to seek to perform a particular act WITHOUT some concrete technical reason: he must, rather, be assumed to act not out of idle curiosity but with some specific technical purpose in mind.”

    I think the language is pretentious.

  32. 31

    Follow up: Once, I invented something – something I had been thinking about on and off for 20 years – in my sleep.

  33. 30

    Aside from the 102/103 issues others have addressed, there are no “means plus function” statements in the claims. I only see “storage means” without any “for . . .” in some of the dependent claims. “Storage means” probably was a non-issue, and if it were the court could have properly construed the expression as memory or simply “storage” and still found infringement. So, I do not see this case as either endorsing or condemning means plus function claims.

  34. 29

    Dear Max,

    I read your reference, i.e., Agrevo T_0939/92, 2.4.2 (emphasis added):

    “… In other words, the notional “person skilled in the art” is not to be assumed to seek to perform a particular act without some concrete technical reason: he must, rather, be assumed to act NOT OUT OF IDLE CURIOSITY but with some specific technical purpose in mind.”

    Thus, Agrevo’s 2.4.2 is in tension with 35 U.S.C. 103:

    “… Patentability shall not be negatived by the manner in which the invention was made.”

    In my on-going study of Just how does an inventor invent stuff, I found that “idle” curiosity is a most productive kind of curiosity – I have patents comprising hundreds of claims that resulted from my idle curiosity.

    Curiosity, whether idle or not, is a powerful inventive tool.

    I also have patents comprising hundreds of claims that resulted from my intense research, 20 hour work days, over extended periods, even years.

    In other words, inventions can occur any time a curious person is idly thinking, sort of like a flash of genius. Inventions should not be negatived by the manner in which the invention was made.

  35. 28

    I believe that to invalidate this set of claims, one can easily refer to the logic in the KSR case. In those days (when this pat. appln. was filed), replacing everything that was mechanical, that could be done by electrical/electronic was a rage. Take out the mechanical feedback loop/part – put in the electrical electronic part – it is cheaper, lighter and more efficient.
    All I am saying that the entire auto industry was being revolutionized by “e” device/process characteristics. So wouldn’t the PHOSITA be encouraged to automate the process as described in ind. claim 1. This case should be a poster child for a rejection based on 103.

  36. 27

    Max,

    As I am sure you are aware, the US Patent economically discourages multiple dependent claims, which is why having 15 claims is a problem. If I could freely use multiple dependent claims with no cots to my client, then most of my applications could come in at 10 – 12 claims.

  37. 26

    “Angry at 6k”

    You’re angry at me!?!? Let me quote myself from last fri night talking to someone I was going to bmore with: “I’m angry right now, but it would be rude of me to bring up why”. And no, this didn’t have anything to do with postings on PO.

  38. 24

    If applicants were prone to filing crap business patents back in the early part of the 20th century, we’d probably see identical claims except instead of “electronic specifying information” we’d see “specifying information with a POWERFUL BALLPOINT PEN.”

  39. 23

    Dennis “In the Orion case, a Texas court found Hyundai liable for infringement of the asserted patent (5,367,627) and awarded $34 million in damages.”

    I have to assume this was pre-KSR and the patent-lovin’ Texas judge let himself be rolled by the plaintiffs, perhaps with help from some unimaginative defense attorneys.

  40. 22

    “I worked in the parts department of a Mercedes dealer in the summer of 1986. The only thing in claim 1 that we didn’t do in ordering parts was “electronically associating at least one of the parts within the plurality of parts with the received equipment application information” – we did that manually; but why it wouldn’t have been obvious to do it on a computer when the technology existed, as it certainly did by 1989, is something only the Texas court can explain”

    Nobody could have expected how much more efficient ordering parts could be with the help of a POWERFUL COMPUTER BRAIN!!!!!!

    And LOL — I typed this up before I read Max’s comment at 9:21.

  41. 21

    Max, follow up;

    Couldn’t find a non-login version of the nine page paper and don’t need a copyright attorney yelling at me for hosting it myself, but here is the page 9 conclusion from the paper that I agree with 100%:

    “The US and IPC classifications do things differently, and the skilled information scientist should spend some time getting to know both systems in their particular technical field.

    The US system appears to be generally more responsive to subject matter changes

    Frequent revision periods of the USC affect a substantial proportion of documents”

    Unfortunately, the US is seemingly discontinuing this practice and moving towards harmonization as evidenced by the E subclasses within Class 257, Class 348 and the complete cribbing of US Class G9B (yes, it exists!)

  42. 20

    Max,

    The two classifications are definitely different and both should be reviewed by examiners on each side of the pond. ‘Course we both know that doesn’t happen, because a person uses the tools they are familiar with. Often, art that falls in the cracks of one system is very well classed in the other.

    My main complaint about IPC’s would be the non-retroactive reclassifications. The G06F17/60 subclass where biz methods live has over 100K references. No one has the time to go through all of those, even for big budget validities.

    Re: Adam’s paper. Stephen is usually well spoken and knowledgeable about his subject matter, so I won’t even try to gainsay his words! The PIUG search community loves him, so I’ll definitely say nothing bad.

    Geez, I’m getting nothing done/billed today. Too many posts of interest to a searcher.

  43. 19

    “Using a database system to match a customer’s requirements to available options”.

    $34 million.

    Sigh. Weep. Wibble.

  44. 18

    Noise, I feel sorry for USPTO Examiners. If management messes them about that’s one thing. But if the courts make their lives miserable, that’s another.

    You can’t say whether any given Trademark (word mark) is or is not “descriptive” till somebody tells you what are the goods. Likewise, you can’t say whether any particular claimed subject matter is “ob-vi-ous” till you know what technological “road” (the “via”) you are travelling on (the “ob”). That’s the function of EPO-PSA. See me at 10.45 above. Without it, the Examiner is lost without a compass. No wonder people i) get angry and ii) resort to hindsight. Don’t just blame the Examiners. Give some of the blame to the judges.

  45. 17

    Thanks JCD,

    “I have posted this countless times, but the problem of bad patents issuing and the problem of bad rejections are just two sides of the same coin. Examination quality is poor.”

    This should be emblazoned in gold and submitted as the first paragraph in any referendum on “Patent Reform”.

  46. 16

    Would Public Searcher care to comment on a Paper by Adams in World Patent Information 23 (2001) pp 15-23 entitled:

    Comparing the IPC and the US Classification Systems for the Patent Searcher

    I can’t find a link, but if s/he were to post one I expect other readers would be grateful. The Paper explains to searchers the practical differences between the IPC (German)”application oriented” classification and the US “function orientated” classification. Might this explain the different (and often superior) results achieved at the EPO?

  47. 15

    Thanks JCD. My point is efficiency. Without EPO-PSA, Exrs can be bamboozled by clever claim drafting. EPO Exrs MUST as their first step sort the claim like I just described. Many times I have had the experience of an American attorney on the phone, faced with the EPO Exr’s division of the technical features of the claim, and:

    1. unable to find fault with the Examiner’s division of features and

    2. unable to say why the Exr’s obviousness logic is not well-founded.

    Case over. In about half an hour. Next case please. Backlog managed.

    Mind you, civil law mainland Europe has a brutal way with secondary factors and post-generated affidavit evidence. That does also help to “manage the EPO workload”.

  48. 14

    And if our Ricky of 35K fame is reading… start your search in US Class 705, sub 29 or IPC Class G06F 17/60 .

    The ‘627 patent is classed in 715 for some bizarre reason, but that’s irrelevant these days. (Lot’s of bitterness in that statement).

    Hmmm, I might have to spend less time reading blogs and more time following my own advice…

  49. 13

    I’m certainly not going to argue that the patent is valid, but in the PTO’s defense, where would they find relevant art in the late 80’s. The examiner had one resource back then, a shoe full of paper patents. No Google, no IEEE Explore, no ACM portal, and no helpful patentlyo posters actually citing published art rather than recollections.

    I think Hyundai would gladly pay any of us 50K to take this monkey off their back and your firm would look very good if you did so! Who needs Article One, just wait for the judgements to come down. If they can afford Super Bowl ads, they can afford a paltry 50K.

  50. 12

    Max, at times I think you are perhaps too quick to extol the virtues of EU law without a full consideration of the pros and cons on both sides of the pond, but here your post is both insightful and spot on.

    That being said, it is not unlikely that the same result should obtain under an obviousness analysis. (Note that I have not reviewed this patent or any prior art, and unlike some, am not about to summarily conclude this patent is invalid, rather I merely think that if Max’s assumptions are correct, then his logic is laudable.)

    I have posted this countless times, but the problem of bad patents issuing and the problem of bad rejections are just two sides of the same coin. Examination quality is poor. Those who litigate notice it more in the bad patents that issue that should not, those who prosecute notice it more in the bad rejections they have to deal with, but everyone who deals with the system for any length of time notices it. Individual examiners are not always to blame. They frequently do not have adequate tools or adequate time, and often lack adequate training or experience as well.

    It always strikes me as absurd that the PTO, the agency tasked with nurturing innovation in this country, actually has money taken OUT of it. If all of the money generated by maintenance fees was used to attract more skilled examiners, retain experienced examiners, and provide examiners more time for lengthier and more complicated applications, then, I suspect, at least some of these troubles would be less pronounced.

  51. 11

    “The ‘627 patent is patent reformer’s poster child for damages reform. The patent covers a method that helps a sales clerk properly order the parts that match a customer’s needs. It is hard to know what the value of the incremental invention as compared with the prior art back in 1989 when the original application was filed.”

    Weren’t the defendants free to point out how little value the invention had over the alternatives and how that would affect the hypothetical negotiation?

    Isn’t the problem that the defendants failed to make their case, not that the patent laws need to be reformed?

  52. 10

    ….JAOI, I think the answer to your question is

    ….the imputation to the PHOSITA of the “specific technical purpose” mentioned in para 2.4.2 of the EPO Decision T_0939/92 (the “AGREVO” Decision)

    …but others might differ. Paul?

  53. 9

    Max,

    Please complete this sentence:

    The difference between the US “TSM” and the EPO “PSA” is characterized by …

  54. 8

    Smash, this might be a case where the EPO 2-part form of claim would have exposed the paucity of the “contribution” to the art. You sort out the words of the claim into that which D1 discloses and those which “characterize the claim over D1”. Here I suspect the characterizing clause would be rather short, simply reading

    “characterized by computerizing it (electronically)”

    Now apply EPO-PSA to settle obviousness.

    Q: What is the technical effect of “Computerizing it, electronically”?

    A: Well, the computation gets done outside the human brain (more reliable, more comprehensive search,faster perhaps).

    Next question: In the state of the art in 1989, was there already anything published that was giving people a hint what to do, if their need was to compute something quickly and reliably, using something other than the human brain? Well actually, Yes. Already by then the state of the art was hinting that what you should do is…..computerize. Next case please.

  55. 7

    “Why screw up the law of damages when it’s pretty clear this patent never should have issued in the first place?”

    Agreed. This patent will never survive at the CAFC anyway.

  56. 5

    “The ‘627 patent is patent reformer’s poster child for damages reform.”

    Why screw up the law of damages when it’s pretty clear this patent never should have issued in the first place?

    Humorless Democrat–
    I worked in the automotive parts business back in that same time period and I can tell you this claim basically describes what every jobber did at the time. In fact, every business software vendor sold their system precisely on the same basis. To give anyone a 20-year (then I guess it was 17 years from issuance) monopoly for this patently obvious method is literally crazy and gives the entire patent system a bad name.

  57. 4

    Malcolm Mooney, where are you when I want a laugh? This is surely a perfect classic one of your POWERFUL COMPUTER BRAIN patents, isn’t it?

  58. 3

    We see here that what is remarkable for Dennis is that 1) the claims of the asserted patent include means plus function language and 2) there are only 15 of them. For non-US readers, accustomed to genuine big hitter patents favouring M+F and <15, that will be striking. The educational function of this blog is not to be underestimated.

  59. 2

    Have the claims of this patent been subject reexamination? If not, why not? The Director has the right to initiate re-examination himself. It is cases like this that bring the patent system into disrepute, and prompt calls for “patent reform”. We do not need hasty, ill-considered reforms. We do need the existing law to be applied properly.

  60. 1

    I worked in the parts department of a Mercedes dealer in the summer of 1986. The only thing in claim 1 that we didn’t do in ordering parts was “electronically associating at least one of the parts within the plurality of parts with the received equipment application information” – we did that manually; but why it wouldn’t have been obvious to do it on a computer when the technology existed, as it certainly did by 1989, is something only the Texas court can explain. I hope the CAFC shoots this one down when it hears the case.

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