What is a troll patent and why are they bad?

By TJ Chiang (Professor at George Mason Law School). Professor Chiang wrote the following squib after reading yet another article complaining about patent trolls.

There is much debate and controversy over the term "patent troll." Let me suggest a fairly narrow definition, but one that identifies a category of patents with distinct problems. Moreover, let me suggest that we should talk about individual patents as "troll patents," rather than entire entities as patent trolls. A troll patent is one that:

  1. Is owned by someone that does not practice the invention.
  2. Is infringed by, and asserted against, non-copiers exclusively or almost exclusively. By copying I mean any kind of derivation, not just slavish replication.
  3. Has no licensees practicing the particular patented invention except for defendants in (2) who took licenses as settlement.
  4. Is asserted against a large industry that is, based on (2), composed of non-copiers.

The problem with a patent troll—or, more accurately, the particular troll patent—that fits all four conditions above is that the troll patent does only two things. First, it gathers dust in the patent office. Second, it inflates prices on products. The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent.

These four conditions also rule out a few non-practicing entities; or, rather, many of the patents held by these entities. University-held patents are largely not troll patents, in so far as they are often on substantial advances where the infringers copy. Individual inventors are also not always trolls. An individual inventor that licenses others to commercialize the invention is not a troll; nor where the inventor actually has something significant that gets pirated. But a patent owner who sits in wait to ambush an industry later, with a patent that does nothing otherwise except gather dust, is a troll.

One hypothetical that will surely be thrown at me is the individual inventor who tries to commercialize the invention, but fails, and then sues the industry years later. This inventor is a visionary ahead of his time who was merely unlucky. On the other hand, this inventor still contributed nothing useful to society. It is worth emphasizing the fact that, by my hypothetical, the industry produced the same technology independently, without copying anything from the patent. In the absence of copying by someone else or the commercialization of the product through the patent, I do not see the inventor as having done society much of a favor.

176 thoughts on “What is a troll patent and why are they bad?

  1. I find it quite interesting that in all the discussion of a patent gathering dust on a shelf as representing no meaningful contribution to society, why it is that no one has drawn an analogy to a professional journal article likewise sitting on a shelf gathering dust? Is the former less noteworthy than the latter?

  2. You’re welcome.

    I’m getting ready to retire undefeated. I just want to rack up a few more victories against those tomato can opponents I have over there in stoogeland. 2,789-0 has a nice ring to it, don’t you think?

    But my arms are getting tired from consistently delivering beatings to those pathetic punching bags.

    I don’t need that much sleep though.

    With warm weather comes the opportunity to play golf, so I’ll have to take a (little) break from fighting the good fight.

  3. From a fellow practitioner–

    JD is right on. (Unfortunately.)

    I don’t know how he finds the time in his current position to post so much–maybe this is sufficiently important to him to make it worth losing some sleep over.

    Like when I used to respond to similar things on this blog.

    Thanks JD.

  4. “Of course, it appears that you now only implicitly state that the fact noticed was not substantial evidence instead of explicitly stating that so maybe that is how you feel like your present method differentiates from what I spent a long time telling you to do.”

    BTW, this is typical of your “writing ability.” It’s nonsensical drivel. You are incapable of clearly expressing your thoughts. Your grammar and syntax are simply horrible.

    So good luck on those LSAT’s. But when your law professors read what you write, don’t be surprised to see C-’s. Once they realize the PTO is paying your tuition (LOL), they’ll take pity on you and give you the highest passing grades they can to keep you around, and your PTO tuition checks rolling in.

    I’m sure you’ll be a credit to your school too.

  5. “A request for substantial evidence is different than demanding a reference and you well know it.”

    Uhm, no I don’t. I know the law. You don’t. That is not even debatable.

    What I do know is that I’ve been practicing for almost 10 years (May 3) and I’ve responded to Official Notice in OA’s the exact same way every single time. And I also know that no examiner has ever been foolish enough to stick with Official Notice in any of my cases up through appeal. So I’m confident I’m doing it right.

    “…by the time I’m your age I hope to be running my own place.”

    “If anything a poor job market for attorneys is what would do it. That and the time required. The LSAT’s are coming up in the Summer.”

    You’re gonna be running your own place by the time you’re my age? But you find the time required to actually go to, and complete, law school a bit daunting? And you haven’t even taken the LSAT yet?

    ROFLMAO

    Better get started a little quicker than that. Deprogramming and re-education are slow, and painful, processes. Your’s is gonna be particularly slow. And very painful.

    “And to me that’ll be better than working for anyone, including a national top 10.”

    Your “understanding” of private practice is laughable. I don’t work for anyone except my clients. Which is who you’ll be working for in the extremely unlikely event that you manage to wean yourself off the incredibly easy job you currently have. Keep plugging along. Eventually you’ll reach that crossroad where you’ll have to ask yourself: Do I want to get off my duff and go learn and do something new, or do I just want to stay here and keep punching up form paragraphs and inserting misspellings?

    My guess is you’ll choose the latter. And you’ll become just like the rest of your oh-so-brave anonymous colleauges over there. A slavish lifer stooge mid-level-(mis)manager. One of those brain dead donothingknownothinguselessdeadweightGS-15′s. You know the ones I mean. Those self-professed, happy, well balanced individuals, who post anonymously on this site about how brave they are in the slave meetings with the upper-level-(mis)management slave masters. They “challenge” their slave masters and ask the “tough questions.” But somehow, when the time comes to show a little actual courage, and come on this site and post their opinions using their real names, they suddenly shrink into anonymity.

    Hey, on the bright side, those useless GS-15 positions pay well. And you don’t have to know or do anything. As long as you don’t mind feeling your brain calcifying slowly each day. And as long as you don’t mind living with the gnawing fear that some day some new slave masters are gonna come in and ask why they’re paying you to do absolutely nothing and then order you back to the old production tread mill to earn your bread.

    I think you can handle that.

    Good luck.

  6. “Is that what happens when you make wealth and fame off the Internet”

    I think I understand what you’re saying, but you still might want to turn the Dennis Miller squelch down a bit.

    The fact is people do make wealth and fame off the Internet, isn’t that amazing the people can and do make money, just as people can and do successfully file, prosecute, and enforce valuable patent rights.

    They generally don’t do it simply by slinging code, which is why I don’t think Brian has anything to worry about. If Brian was writing something that was really that important, he’d assuredly know it, and he (or more likely his employer) would welcome some kind of protection.

  7. JSayin : “folks like Brian can go ahead and write lines of code all day – no one will come banging on their door.”

    What is this “banging on their door” you refer to? Is that what happens when you make “wealth and fame off the Internet”?

  8. Mooney,

    Your tortured attempt at logic has escaped me and probably everyone else.

    The point is, folks like Brian can go ahead and write lines of code all day – no one will come banging on their door.

    Unless its Mooney soliciting donations for a proper burial for Che Guevara’s mule.

    /Dennis Miller factor off

  9. “if you are incredibly self-absorbed, you may have difficulty appreciating the distinction.”

  10. “the majority of those lay persons who are squawking about patent law(particularly “software” patents) are those who least have to worry about it.”

    LOL. Brian likely agrees with you and me: lay people and most patent prosecutors truly are not concerned with the inevitable extinction of software patents. Why would we worry?

    Those who “worry about it” do so for the same reason that corporate executives “worry” about whether Congress is going to require them to start behaving like human beings instead of animals. It has nothing to with the “public interest” and everything to do with self-interest. Of course, if you are incredibly self-absorbed, you may have difficulty appreciating the distinction.

  11. “If that’s the innovation patents foster, we want none of it. Copyrights cover software just fine anyhow; patents on what we do are harmful and unnecessary. With patents, the average Joe programming in his room can’t write a thing, because he can never be sure (he can’t afford to hire a lawyer) that he doesn’t infringe someone else’s obvious patents. He’ll never be able to afford to get far enough in court to invalidate the myriad patents against him. What inventor could?”

    As I have said before, Brian is a poster boy for the ill informed computer guy, who has heard about patents, but doesn’t really understand what they are what they do and is afraid if he types a line of code, someone will come after him. Nothing could be farther from the truth.

    “outpaced by countries with more relaxed IP laws”

    …like China? HA!

    Brian, face it you don’t get it. And you have proven my point without even realizing it, that the majority of those lay persons who are squawking about patent law (particularly “software” patents) are those who least have to worry about it.

  12. I should also mention, as to the other points in your post, I agree that solving some of the major problems at the patent office would go a long way toward solving the way patents interfere with my industry.

    I am also not against the idea of the patent protecting the little guy, but these days the little guy is inevitably an “IP protection” firm looking to capitalize on things it never invented, and that the rest of the world would never had used would they have only known it would come back to bite them. You can’t tell me that protecting their “IP” is somehow more important.

    The so-called JPEG patents– we had huge companies with armies of lawyers around the world using JPEG. It turns out it infringed on a patent (which later turned out to be invalid). Why didn’t anybody raise their hand and point it out? Why didn’t anybody on the JPEG committee mention it? They didn’t know, and I doubt it’s for lack of trying.

    I just don’t want to see this same system perpetuate and even encourage this sort of protection racket kind of behavior. That will ruin us, as an industry and as a country, because we’ll be outpaced by countries with more relaxed IP laws.

  13. M.A.D. is Mutually Assured Destruction, a term that implies that, even though we’ve got nuclear warheads pointed at us, we’re safe because we’ve got nuclear warheads pointed at *them*.

    This is how I see the patent industry, because I’ve seen how it’s transformed my industry– software, which did the vast majority of its innovation before patents came along and threatened to stop it altogether.

    In the early days of computing, the people who *invented* the very protocols and languages and systems that made it possible for you to view my comments on this page did so with an eye toward cooperation on standards and innovation. Those people recognized that the concept of owning the critical parts of the web would make the web impossible.

    The walled garden is this arena of litigation that the patenteers say is necessary to make innovation possible. You know, and just go around not infringing on other people’s patents. It’s a load of bullocks. If any group knows what a submarine patent is, it’s those of us in IT, who saw Unisys and Forgent Networks try to shut down major parts of the web and photographic industries with their patents on Lempel-Ziv and (the invalid) one on JPEG. We saw Rambus fool an industry into accepting a standard, which it then turned around and produced a patent for, demanding money.

    If that’s the innovation patents foster, we want none of it. Copyrights cover software just fine anyhow; patents on what we do are harmful and unnecessary. With patents, the average Joe programming in his room can’t write a thing, because he can never be sure (he can’t afford to hire a lawyer) that he doesn’t infringe someone else’s obvious patents. He’ll never be able to afford to get far enough in court to invalidate the myriad patents against him. What inventor could?

    As for patent lawyers costing other industries their jobs (you added the word “real”) I think “malicious bias” is a little strong. I think you have a little proof of your own to do: “Likewise, there is no doubt that both these are smoke screens for political agendas that have little if anything to do with the law.” Like what?

    The RIAA showed us how much an industry had to lose when it picked a fight with its customers. You hear about patent trolls and submarine patents because the system’s customers have had enough of it.

  14. “Uhm, when a request for substantial evidence is made, a reference is what is sought.”

    A request for substantial evidence is different than demanding a reference and you well know it. I’d quote your own gibberish that you used to spout to prove you must straight up lying since you’re not outright stupd but it isn’t worth my time. You call me dumb while telling me that you now do exactly as I told you to do to traverse off notice. A suggestion to which you strongly protested to as being what was required since you didn’t want to do it. You’re quite a piece of work JD, a real credit to your school, when wrong, just act like you’d always been doing exactly what the other side said to begin with even though you just got through arguing that you didn’t have to and did not want to do exactly that. Of course, it appears that you now only implicitly state that the fact noticed was not substantial evidence instead of explicitly stating that so maybe that is how you feel like your present method differentiates from what I spent a long time telling you to do.

    “Congratulations. You’ve achieved the status of the typical bitter and jealous lifer examiner in probably the shortest time ever recorded.”

    Did I say I was jealous? I just said that you need a reason to moan on these boards to keep you around, otherwise certainly you’d just go hang out with irl buds. You’ve been doing less and less moaning over the years I’m surprised you hang around at all. Just because you get to be a big shareholder attorney doesn’t mean I’m jealous, by the time I’m your age I hope to be running my own place. And to me that’ll be better than working for anyone, including a national top 10.

    “Usually one call to the TC Director is enough to shatter such bravado.”

    I’m one of the ones that made you say “usually” instead of omitting that word.

    “personal ethics prevented you from going to law school. ”

    Personal ethics? If anything a poor job market for attorneys is what would do it. That and the time required. The LSAT’s are coming up in the Summer.

    Agent G I don’t think he ignored it, he stated it did not exist iirc.

  15. Tel,

    Your point has absolutely nothing to do with the argument as advanced by Agent G, and is merely a thinly disguised anti-software rant.

    Try to stay on topic and stop making noise.

  16. “Having read those patents, I can’t begin to tell you precisely what they do claim among the 1000+ claims, but I can assure you that none of them claim simply that “email is patentable when sent over a wireless network.” ”

    This just proves my point, no one knows what the patent covers until after the (very long and expensive) court case. Now this is all over we discover that it really does cover sending email over a wireless network, but there never was some simple statement of that fact.

    Thus, I can have my laptop plugged to the Internet via cable and I can do my email and everyone accepts that as perfectly normal and well established industry practice. Then I can take the same laptop and switch it to wireless and send an email and, WOW! we have an amazing patentable invention! But it takes 1000 claims to obfuscate an obvious idea enough that it can seem important.

  17. “Prof. Chiang is choosing to ignore the fundamental exchange of public good in the patent system. That is, public disclosure for the right to commercially exclude others on the claimed subject matter for the patent term.”

    Disclosure of what though? Surely you can’t suggest that all disclosure is of equal value regardless of the material?

    What happens in practice is firstly that amazingly trivial and obvious things get patented and there is no prior art because no one even thought to write down what any fool can see (and there are such a vast array of simple juxtapositions that attempting to write down the full set is a waste of time).

    Secondly, someone unable to make a working prototype will speculatively write down a patent describing what they would like to build, then sit around waiting for someone else to build it, then cash in. This sort of thing is still “disclosure” in the strict sense of the word, but useless disclosure.

    The third thing that happens (often in combination with the above) is people use highly complex ways to describe a very simple thing, making it sound important and technical. Lawyers get to argue for years over the minutiae of what it actually means and finally decide that it really covers all those things that just got developed while the lawyers were busy arguing. No one else in the world had any idea what the patent covered (or what it was even about) up to that point, but now they find themselves infringing and their product belongs to someone else. Again, “disclosure” of this stuff is of absolutely no value to industry nor the public good. It’s a game, and a timewaster but no value-add.

  18. Prof. Chiang is choosing to ignore the fundamental exchange of public good in the patent system. That is, public disclosure for the right to commercially exclude others on the claimed subject matter for the patent term.

    Thus, the value to society is the patent disclosure, by definition, whether it is a troll patent or any other patent. There is nothing within the patent system, which deals solely with intellectual property, that depends on any commercial activity (except perhaps for marketing indicia showing nonobviousness in a few instances). Certainly the subsequent commercial use or nonuse of an issued patent is not a consideration for patentability, and should not be.

    Further, note that those entities complaining loudly about trolls generally have a large number of troll patents in their own portfolios, in areas where they are not practiced. These troll patents bring in licensing revenue, and are used for cross-licensing. Why should this use by large commercial entities be any different than the same use by a non-practicing patent owner?

    The troll argument is a red-herring for large entities who want all the advantages of patents for themselves, but do not want smaller entities to gain the rewards of their own neglect of innovation, which is often stifled in large corporations. Troll patents are also widely misunderstood to be some evil force sucking undeserved value out of genuine business activities. This notion, as supported by Prof. Chiang, is absolutely wrong and contrary to the legal intent of the patent system.

  19. “Changed your tone just a bit did you?”

    No. Like I said, my responses to the taking of Official Notice are the same as ever.

    “Oh but JD, but I thought all you had to do was make a demand for a reference.”

    Uhm, when a request for substantial evidence is made, a reference is what is sought.

    You’re almost too dum to believe some times.

    “…I hope he reopens till the cows come home just so you have some small reason to continue to moan.”

    Congratulations. You’ve achieved the status of the typical bitter and jealous lifer examiner in probably the shortest time ever recorded.

    And all of your colleauges are just like you: real brave when they think nobody is watching, or when they think their anonymity is protecting them. Usually one call to the TC Director is enough to shatter such bravado.

    Ten years from now you’ll be just like the rest of the slavish stooges from the PTO who post here: rationalizing your willful ignorance and laziness with silly pronouncements that your personal ethics prevented you from going to law school.

    Enjoy the rest of your life as an anonymous PTO stooge.

    LOL

  20. What’s happening to this profession. It appears to be evaporating before our eyes.

    Some people appear to take pleasure in these things (e.g., some academics, those examiners Mooney and 6). What’s it all about anymore???

  21. “What I usually get is an acknowledgement that the reference(s) doesn’t teach a feature, and then a “statement” from the examiner that the feature is “well known.”"

    Yes that’s how several primaries like to do it and they teach the young ens that.

    “I haven’t filed an RCE since July, 2007, so I
    figure my responses are working. Of the 10 or so appeals I’ve filed since then, 2 have actually gone to the Board and are pending.”

    That’s why JD plays with the big boys, look at the persuasion, congrats on what must be a big allowance rate. However, that said, I’m not sure if you can continue to moan on this board about things with those good numbers that you’re seeing. Who have you been moaning for on here for the last few years?

    “The re-opened OA was worse than the originally appealed OA.”

    I ha te to say it JD, but given your numbers and given all your moaning I hope he reopens till the cows come home just so you have some small reason to continue to moan.

  22. “Just do your job and stop cutting corners.”

    I should add that a proper inherency statement is hardly cutting a corner. If anything it is making up for the laziness of the author of the reference usually. Who would expect someone to write down the a balloon is water resistant, and rubbery feeling, and is essentially air tight, and …

    “Facts which the examiner attempts to take notice of are not substantial evidence.”

    Keep dreamin’.

    “That is why the examiners are taking Official Notice, because they don’t have substantial evidence to meet their fact finding burden. ”

    Or because substantial evidence has been presented by putting the well known fact on the record. Either or.

  23. It sure is nice to see when I relieve someone of their ignorance about a common issue in prosecution like inherency they’re grateful. YW anon.

    “Same as always, by requesting substantial evidence support.”

    Changed your tone just a bit did you? Oh but JD, but I thought all you had to do was make a demand for a reference. I bet you’ve been having a lot better results with your requests for substantial evidence in terms of your relationships with examiners. From your numbers you put down it looks like you might have started to be persuasive rather than senselessly banging your head against the examination wall like you used to tell us stories about. I bet your blood pressure is even down.

  24. Sorry it was NTP who had the wireless email patent, and the Blackberry was infringing (got that round the wrong way). Who care who owns what? The point is that the patent itself was ridiculous but still fully valid. This is not moving industry forward, it is a swamp.

  25. On face value compulsory license provisions seem like an easy & obvious fix (Forget/ignore changing damages). These are provisions in other countries – admittedly I do not have any experience or knowledge on how well (or if) they work.

  26. I too find the term “troll” derogatory and not very helpful. Under current law, the patent holder is not doing anything wrong here, as there is no legal requirement in the U.S. to work the invention. It can indeed gather dust, if the patent holder so wishes. The patented invention is public knowledge to anyone who looks for it, and in that sense it has already served a public benefit and can be the basis for new inventions designing around the patent.

    It is possible to disagree that this minimal effort is enough to justify a patent grant. However, in that case, one should advocate for introduction of a working requirement into U.S. patent law, as is the case in some countries. It would be necessary to define carefully the parameters of what constitutes sufficient working of a patented invention, time frame and remedies, subject to the limits set forth in the Paris Convention (minimum time of four years from application filing and three years from patent grant, whichever is later; plus, no revocation of a patent for failure to work, but simply some form of compulsary licensing scheme).

  27. “Maybe take a look at RIM’s attempt to patent the idea of typing on a small keyboard with your thumb. Only what people with phones have been doing since keys were invented but suddenly there it is on a patent. Then there was Blackberry claiming that email was patentable when sent over a wireless network because that makes it somehow special email rather than some other sort of network. People in the industry were stunned to even think that it was possible to write such a patent because the idea was so obvious.”

    Boy, it’s easy to throw these assertions around, but I bet it’s a bit more difficult to back them up. Could you please cite the patent application in which RIM attempts to “patent the idea of typing on a small keyboard with your thumb.” I’m aware of patent applications for specific keypad designs, but for the idea of typing itself? If you can show me that, I’m completely prepared to share your outrage at RIM, or at least at its patent attorney.

    Also, you might already be aware that “Blackberry” is a product line produced by RIM, not a separate company. Did you really mean to assert that “then there was RIM claiming that email was patentable when sent over a wireless network”? I’d love to see support for that assertion also. As I recall, it was NTP, RIM’s nemesis, that held patents allegedly covering wireless e-mail. Having read those patents, I can’t begin to tell you precisely what they do claim among the 1000+ claims, but I can assure you that none of them claim simply that “email is patentable when sent over a wireless network.”

  28. “Then there was Blackberry claiming that email was patentable when sent over a wireless network because that makes it somehow special email rather than some other sort of network.”

    ALL THIS IS DONE WITHOUT WIRES OR CABLES!!!!!

    /Karl Wallenda off

  29. I missed this part of DC’s intro:

    “Professor Chiang wrote the following squib after reading yet another article complaining about patent trolls.”

    If Prof. Chiang’s article was truly intended to be satirical, it’s pretty funny how much passionate debate it generated.

  30. Without really discussing the substance of this article … What I did not like was the repeated use of language such as “troll … waste … gathers dust.” If there was a point to be made, I didn’t understand it. What I picked up was a disdain for the system, whereas I prefer to hear about virtues.

    Sure there are people that “take advantage” of the system, but in my eyes you can see right through them.

  31. TJ, you don’t need to spend $5000 a pop doing searches if you run an ongoing patent landscape project. Finding, digesting, and making plans against 35 issuing patents per week would take a department with an annual budget of about $10m. Sounds like a lot, but 35 patents per week is high and is in Google’s technology area, so divide $10m by their $20b annual revenue. That’s 0.05% of revenue to find, read, understand, and draw up contingency plans for a huge chunk of patents. Is $10m per year too much for a small company? Probably, but small companies are not the target of trolls. $10m per year is a drop in the bucket for troll targets. It’s a smart insurance policy. It would take another drop in the bucket to pre-emptily buy or license patents that look like they may become “troll patents.”

    Using your drunk driver analogy, imagine if the pedestrian knew that a drunk lived in the neighborhood, heard the tires squealing, and heard the shouts of passersby as he blindly stepped onto the street. To know there is a danger lurking and to do nothing about it is to remain willfully ignorant. But I suppose for some who wish to remain ignorant, the best thing is to lobby to ban cars.

    I’ve heard many times the excuse that it’s too time consuming or expensive to keep up with patents, but I’ve never seen anyone justify it beyond saying that “7 million is big.” Yes, it’s big. But it’s also organized in such a way that competent companies should see trouble coming a mile away. I’m all ears if you wish to extend beyond 7 million and $5000 to support your argument that reading patents is too hard.

  32. “I’ve been meaning to ask ol’ JD how he’s been responding to Official Notices lately.”

    Same as always, by requesting substantial evidence support.

    “Tell us JD, ever decide to throw a little something in there about the fact noticed not being substantial evidence?”

    The phrasing of your question is horrible, but I’ll try to answer it.

    Facts which the examiner attempts to take notice of are not substantial evidence. That is why the examiners are taking Official Notice, because they don’t have substantial evidence to meet their fact finding burden.

    I challenge every single fact that I think the examiner got wrong. If the examiner actually cites to a portion(s) of the reference(s), and I don’t think that the portion(s) satisfies the burden, I state why the burden is not met. Pretty simple really. Most examiners are under the impression that putting something in the OA to the tune of “see column X, lines Y-Z” will save them. It doesn’t.

    “How are the finals in response to your responses looking?”

    I haven’t had an examiner take Official Notice in an OA in quite a while. What I usually get is an acknowledgement that the reference(s) doesn’t teach a feature, and then a “statement” from the examiner that the feature is “well known.” I respond to that the same way as I do to Official Notice: I request some substantial evidence.

    I haven’t filed an RCE since July, 2007, so I
    figure my responses are working. Of the 10 or so appeals I’ve filed since then, 2 have actually gone to the Board and are pending. There are no Official Notice or “well known” issues in those appeal. The other 8 or so appeals were either re-opened by pre-appeal or after filing the brief. Actually, I had 3 cases where the decision on pre-appeal was to proceed to the Board, and when I filed my brief, the case was re-opened.

    So much for that being something PTO (mis)management figured would be a rare occurence.

    I filed two more appeal briefs last month. One was a second brief filed after a pre-appeal decision to proceed to the Board and the filing of the first brief. The re-opened OA was worse than the originally appealed OA.

    We’ll see how that goes.

  33. “If they’ve shown me to be wrong substantively then I will take out the inherency statement. How is this a problem?”

    The problem is that because of your LAZINESS you attempted to pull one over on the applicant. Your job isn’t just to issue valid patents, it is also to do a proper examination. A proper examination includes not making sh it up. A proper examination includes finding the best references at your command.

    You wonder why the backlog is so big? You’ve got examiners that have to reopen when they are called on BS inherency arguments. You’ve got examiners that, after taking an application to the BPAI, beg their SPE for support when they ask to reopen because they found a better reference.

    Just do your job and stop cutting corners.

  34. “Makes your analysis SO MUCH EASIER when you assume that somebody else would have come up with the idea.”

    Maybe take a look at RIM’s attempt to patent the idea of typing on a small keyboard with your thumb. Only what people with phones have been doing since keys were invented but suddenly there it is on a patent. Then there was Blackberry claiming that email was patentable when sent over a wireless network because that makes it somehow special email rather than some other sort of network. People in the industry were stunned to even think that it was possible to write such a patent because the idea was so obvious.

    The real-world problem that we are facing is that patented ideas get independently reinvented all the time because the vast majority of these ideas really aren’t all that special.

    “Conglomerates hold thousands of patents only a handful of which are viable. If we should penalize owners of intellectual property for failing to practice their inventions, let’s start with the IBMs and Microsofts of the world as they are the biggest offenders.”

    Which ignores the obvious practical situation that large conglomerates hold most of their patents for defensive reasons only. They neither intend to litigate, not produce a product directly out of the patent but they cover all available bases all the time just in case one of their products might happen to stumble into a region covered by patents.

    This brings up the point that no serious product developer (not even the giants like IBM and Microsoft) can ever properly search the patent literature and realistically assess the likelihood of infringement. There are too many patents out there and those are worded too vaguely and cover highly generic concepts. If they do screw up and discover infringement after it is too late, at least their competitors most likely also infringe on something so they can reach a Mexican standoff and make a deal.

    This is why the scatter-gun approach is so popular.

    Microsoft have recently started litigation over infringement for just a small number of their patents, and this is a highly unusual step for them. I guess we will see where it ends.

  35. Thank you all for an interesting read. There are some insightful comments buried in amongst the nonsense from the usual suspects.
    I think the ‘troll patent’ problem, such as it is, stems from the fact that in the computer/software/business method areas innovations can have much broader application than in other areas. To give a hypothetical example, an improved algorithm for perfoming a basic arithmetic function can be incorporated into computers, cell phones, music players, microwave ovens and engine ECUs. I would suggest that 20 year monopoly rights in these sorts of innovations are not appropriate, unless perhaps tied to a specific application.
    Do such patents actually serve the purpose of promoting the useful arts?

  36. “The problem you are going to face is that your statements ARE going to be disputed. ”

    How the f is that a problem? People have disputed my inherency statements before. It wasn’t a problem then, it won’t be a problem in the future. If my statement was factual I might give them an explanation but they’re getting a final. If they’ve shown me to be wrong substantively then I will take out the inherency statement. How is this a problem?

    “However, once anybody disputes your findings you are SOL.”

    Do you really believe that someone disputing MM’s example above makes the examiner SOL? No, you don’t. Do you really believe that he will need to point to extrinsic evidence if the applicant contests his statement? You might, but you’d be wrong. At most what would be required is a little blurb in the response to arguments as to why the balloon is water resistant (iirc that was the inherency statement in the example). Though if the applicant failed to argue substantively in that case rather than blah blah burden bsht then I’d let that one ride without substantive explanation and explain that reasoning is sufficient and is already present in the inherency statement itself. Besides, my boss tells me not to talk down to applicants, my explaining to them like a kindergartener that a balloon is in fact water resistant and why would just get the action sent back to me to delete that part.

    Bottom line is, if my statement is factual I’m nowhere near SOL and I never will be. Deal with it. You don’t know jack about the law on inherency, you cite caselaw like it is your best friend but you don’t understand anything you are citing. You’re like the examiners that are all the time called out by attorneys on here that allegedly cite caselaw without understanding it all the time, except maybe worse, because you’re really confident about using it and examiners (at least the ones I know) aren’t that confident about using it. According to your position you’ll waste your client’s money all the way up to the CAFC it looks like. I wonder how they’d feel if you did go on up, waste that time and money and then if NEWMAN was on the panel,hadn’t taken her meds that day, and ruled in your favor because she was having a standard “the law always benefits the applicant” delusion as usual and then the examiner cites you a common treatise in your art after the case is remanded. I’m sure your client would consider that money well spent :) But but but you didn’t make the case out with the burden and the evidence and the burden, evidence, burden, oh, the client fired me, dam.

    Go read my posts on Robertson or whatever that bs case was that started you down the wrong path to begin with.

    link to patentlyo.com

    There is never a reason to adopt PDS’s attitude. Just say no to that attitude if you’re not her.

  37. “As I recall, your position on Official Notice is obliterated by JD. Repeatedly.”

    That’s because you can’t read. When you decide that you’d like to learn how, then you’ll see otherwise. But you probably won’t until $ comes into the equation. Then your reading skills will all of a sudden jump through the roof. I’ve been meaning to ask ol’ JD how he’s been responding to Official Notices lately. Tell us JD, ever decide to throw a little something in there about the fact noticed not being substantial evidence? How are the finals in response to your responses looking?

    ” – 6, this in no way validates your point and I am pretty sure you realize this. The only thing this validates is that the applicant, for whatever reason, has chosen not to challenge the bogus standing – it does not mean the standing is not bogus.”

    I didn’t put it on there to validate my point. I’m sure you know that I simply put it on there to show how ludicrous his laughing at “stating a fact is finding it” is. As to a standing being bogus I have no comment since you don’t make clear what you mean by “standing”.

    I wrote at length about validating my point as to inherency statements in another thread. I’m sure you’ll come across them, they’re hard to miss lol.

  38. “But unless they made some positive contribution that actually gets to society through a chain of causation (instead of a useless piece of paper that sits in the patent office), they don’t usually get rewarded with money through the judicial process.”

    The rub is how to do you prove (or disprove) that the original inventor’s disclosure, via the patent or other public disclosure, wasn’t somewhere in the chain of causation by which the big company came to develop the infringing product/method?

    The problem with implementing this circumstance as a possible defense is that it would be the #1 defense of every infringer. For the patentee to establish that causation would require an exhaustive amount of investigation and/or luck. If independent inventon can be a defense against infringement, then it will be extremely hard for a patentee to ever win a case.

    A question that was asked earlier, but never addressed, is that if independent invention could be considred a defense against a troll, why shouldn’t it be considered a defense against all other patent holders? If independent invention is so special, then its existence should be used as a defense in all situations.

  39. “When you fill in that definition then we’ll have this discussion, because yes, I do believe that courts across this land routinely accept findings of fact based on statement alone, especially when the statements are not disputed.”

    The problem you are going to face is that your statements ARE going to be disputed. When the Court asks upon what have you based your statement of fact, if the best you can do is “because I said so” you’ll hear peals of laughter so loud that people will wonder if there is a comedy club in the premises.

    If nobody disputes your findings, then you’ve won. However, once anybody disputes your findings you are SOL.

  40. Mr. Lewis:

    You bring up two completely different hypotheticals. Let me address them separately.

    1. The small competitor who is getting beaten to a pulp by the big guys, and asserts his patent. Well, since he is commercializing, he is not a troll. Since (1) in the definition.

    2. The small inventor who is not commercializing, who pitched the invention to a large company, gets nowhere, and sees a variation years later, and decides to sue. If the large company independently produces the invention, what is the value of the patent? What is its contribution except dust at the patent office?

    The main thrust of the argument of those pushing back has been this theme: the individual inventor did nothing wrong-he did everything possible to commercialize and was just unlucky. My point is that people do “nothing wrong” all the time. But unless they made some positive contribution that actually gets to society through a chain of causation (instead of a useless piece of paper that sits in the patent office), they don’t usually get rewarded with money through the judicial process.

  41. 6,
    As I recall, your position on Official Notice is obliterated by JD. Repeatedly.

    I don’t think you want to align fact finding with your position on Official Notice.

    “especially when the statements are not disputed” – 6, this in no way validates your point and I am pretty sure you realize this. The only thing this validates is that the applicant, for whatever reason, has chosen not to challenge the bogus standing – it does not mean the standing is not bogus.

  42. “”Stating a fact is finding it.”
    Hahahahahahahaha. You think ANY court in this land is going to buy that statement?
    The standard of review applied to findings of fact is the “substantial evidence” standard under the Administrative Procedure Act (APA). See In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000).”

    I’ve already been over this with JD in re Official Notice. You don’t even know what substantial evidence is do you? I’ll clue you in, go look at Zurko, SC Zurko that is, and get back to me. When you fill in that definition then we’ll have this discussion, because yes, I do believe that courts across this land routinely accept findings of fact based on statement alone, especially when the statements are not disputed. Routinely.

  43. “Its always the newbies with the false bravado.”

    Hardly false bravado, I have every reason to believe the BPAI will f up any given appeal sent to them. I’ve seen it before, and I’ll see it again. The same goes double for the CAFC. Luckily, there’s always more art should an applicant win the day when he should not so I can always ensure that the overall mission, to issue valid patents, is carried out.

    “When an Examiner relies upon inherenecy, it is incumbent on the examiner to point to the “page and line” of the prior art which justifies an inherency argument. Ex parte Schricker, 56 USPQ2d 1723, 1725 (BPAI 2000). ”

    Um, that’s referring to the reference that the rejection is based on, not the supposedly required outside reference. I know it is really hard for you, but try to read in context, here my context was about pointing to a reference that is supposedly required as extrinsic evidence.

    “Even if corps invests more money (rather than say, pay the CEO even more money or fur line his private toilet) there is no emperical evidence or even suggestion that less legal fees would translate into more real jobs. Brian’s comment would lead to the conclusion that lawyers are sapping real jobs with the patent issue (and one may conclude this sapping is prevalent)- is that a stand that you concur with?”

    I agree, no empirical evidence shows that to my knowledge, it does however stand to reason that corps would logically spend that money as they do other capital, part going to ceos, part going to expansion, etc. etc. I don’t know if I conclude what you assert his comment leads to or not, but I can say that there is a lot of wasted money flowing in the patent field and that every dollar of it would be put to other uses, including very most probably, “real” jobs. The same goes with taxes that are put down for any but basic services required by the people it seems to me.

    I should also say that legal battles are currently overpriced, it seems to me that the restrictions on practicing should be loosened somewhat so that there would be more competition. Corresponding protections for the people practicing that do not have a law degree but are merely advising on legal matters should be put into place. For that matter, malpractice and all that sht needs to go. It should be the clients decision as to what to do, and the attorney should be an adviser only. How did we make this ridiculous system come about anyway?

    Anyone know when malpractice started to get big? I take it that it hardly existed in the 1800′s.

    It appears PO, or D decided to take my huge postings away that I made last night.

  44. Patent troll.

    A derogatory term thrown at independent inventors and patent holders to paint them with demeaning brush.

    Maybe the good professor should look at old postcards with people in cotton fields eating watermelons, or push card vendors on the lower east side, with disheveled beards and huge hooked noses.

    His point of view has an intellectual equivalency to racism.

    And a last point, people talk about “bad patents”, if they ask that question then they should also ask what happens to “good patents”, and how the members of the Coalition for Patent Fairness respond to “good patents.”

  45. Re the article by TJ Chiang of 04 Mar 2009 12:19 PM PST and the alleged evils of “patent trolls”

    It seems to me that the most innovative inventions come from small startups and the guys working out of their basements – who do not feel confined by the pressures of working in a large corporation. What happens to most of their patents, however, is they try desperately to monetize them, but none of the corporate community in a position to buy, sell, or license their invention pay any attention to them. Then years later, someone practices a variation of the invention that is covered by the claims, and the large corporations that refused to give the little guy an ear, calls this inventor a “patent troll.” So what if this new variation does not “slavishly” practice the invention, as long as, it is covered by the claims. The patent system is intended to give the little guy a chance to stand up to the large entity that refused to listen to him and then practices a variation of his invention. Of course, from the point of view of the large corporations that dominate a market, if they could just do away with the pesky patent system altogether. Life would be a lot easier for them, because without pesky patents the large corporations can trounce on their small competitors even when their small competitors have a really neat innovation that the small competitors thought of first, and the result would be a stifling of this country’s best innovations. It seems to me that it is precisely for these “patent trolls” that we have our patent system. – David Lewis

  46. “the hackneyed notion of “overly broad” claims begs the question, if the claims are really “overly broad” why would anyone be afraid of them? They either should not have been allowed, or they should be really easy to defeat with a quick telephone call to plaintiff’s counsel and a casual citation of at least one or two of the appropriate references.”

    Again with the blithe retarded pollyanna nonsense.

    [sprays room with ant-troll air freshener]

    I wish they made an extra-strength version of this stuff.

  47. “Nowhere in yours does it say one small thing about pointing to a reference. Never will, never has, and you won’t be getting any references from me unless I’m so interested in the topic at hand that I feel like looking it up, for my own enjoyment.”

    When an Examiner relies upon inherenecy, it is incumbent on the examiner to point to the “page and line” of the prior art which justifies an inherency argument. Ex parte Schricker, 56 USPQ2d 1723, 1725 (BPAI 2000). In re Rijckaert, 9 F.3d 1531, 1533, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (when the PTO asserts that there is an explicit or implicit teaching or suggestion in the prior art, it must indicate where such a teaching or suggestion appears in the prior art).

    Too easy, way too easy.

    “Stating a fact is finding it.”
    Hahahahahahahaha. You think ANY court in this land is going to buy that statement?
    The standard of review applied to findings of fact is the “substantial evidence” standard under the Administrative Procedure Act (APA). See In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed. Cir. 2000).

    “One with two more pending my not being too lazy to write them, three that have passed pre-appeal conf will probably get appealed.”
    So you are essentially an appeal virgin. Start talking when you got about 50 examiner’s answers under your belt and about 10 decisions from the BPAI. Its always the newbies with the false bravado.

  48. How does one “…withheld his patent…”?

    Patents are published and cannot be “withheld”.

  49. Of Chiang’s words –The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent. — note the words
    –Others had then made the patentee’s discovery and had reduced it to practice in ignorance of what he had done. While he withheld his patent, the public learned from independent inventors all that it could teach. For the monopoly granted by his patent he had nothing to offer in return. The public gained absolutely nothing from his invention, what-ever it was. From the point of view of public interest it were even better that the patent had never been granted. –, which latter words were published in 1911, as discussed in “Looking Backward,” Intellectual Property Today, June 2001.

  50. “You don’t honestly mean to tell us that you’re so stupd as to not realize that corps would invest more money in getting manufacturing/rd/advertising done if they didn’t have to pay attorneys do you?”

    C’mon 6 – and this relates to what I said how?

    Even if corps invests more money (rather than say, pay the CEO even more money or fur line his private toilet) there is no emperical evidence or even suggestion that less legal fees would translate into more real jobs. Brian’s comment would lead to the conclusion that lawyers are sapping real jobs with the patent issue (and one may conclude this sapping is prevalent)- is that a stand that you concur with?

  51. “from my POV the “troll patent” is one that was allowed with overly broad claims, giving the entity controlling it the right to assert it against people who never relied on it.”

    Besides not making any sense, the hackneyed notion of “overly broad” claims begs the question, if the claims are really “overly broad” why would anyone be afraid of them? They either should not have been allowed, or they should be really easy to defeat with a quick telephone call to plaintiff’s counsel and a casual citation of at least one or two of the appropriate references.

    The real answer is, of course, they are not “overly” broad, they are just broad, e.g. broad enough to read on the accused infringing device, method, or manufacture.

    More and more supposedly smart people are simply ignoring the quite legitimate answer that patents ARE valid and DO get infringed.

    Of course you will never read about cases that are successfully held valid and infringed and subject to royalties and/or injunction on PuppetlyO.

  52. While I was bored tonight since my bud’s cousin decided he wanted to just stay in and party at my buds instead of going out I decided to look up this enigmatic In Re Robertson that PDS has been relying on to argue about inherency since idk when. btw, shout out to pds, if indeed the above poster is anyone but.

    Tonight on analyzing the caselaw with 6:

    In Re Robertson

    link to bulk.resource.org

    Upon review of the prior art, and only seeing the parts of the patent application’s claims that the court considered relevant, we note two things:

    1. The reference anticipated the claim without the use of inherency.
    2. The board should not have used inherency since there was no freaking way that an assertion of “”an artisan would readily understand the disposable absorbent garment of Wilson … as being inherently capable of [making the secondary load-bearing closure means] (third fastening element) mechanically engageable with [the other snap fasteners on the fastening strip] (first fastening element)”" would have any extrinsic evidence to support it or was factual at all. There is literally so close to a zero percent chance that there would be any extrinsic evidence to support this inherency statement that it is absurd.

    The court states: “A. The Wilson patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”

    I guess because the examiner/board stated that it did not and because the court apparently doesn’t know how to designate claim terms. As is clear from the publication, the secondary means are means for disposal and they are identical to the first means and thus would have to be mechanically attachable to them and they are capable of the use stated in the patent. Therefor, the wilson patent does expressly include a third fastening means for disposal of the diaper.

    The court asserts: “That means is separate from and in addition to the other mechanical fastening means and performs a different function than they do.” However, the secondary fasteners are separate from and in addition to the first fasteners and they also perform the function in the claim, and the fact that the function of the first fasteners in the claim is different from the function of the third fasteners is irrelevant because the claim does not make it clear that the first fasteners must ONLY have a different function (aka fastening the diaper at closing time) as opposed to having a “different function” (aka fastening the diaper at closing time) and the “same function” (aka fastening the diaper at “fastening” time) as in the patent. In other words the claim does not require that the functions be different, it requires that the two functions be present and they happen to be different, separate functions. I’m using “function” loosely here as it is really just an intended use.

    The court goes on to state that: “Instead, the Board ruled that one of the fastening means for attaching the diaper to the wearer also could operate as a third fastening means to close the diaper for disposal and that Wilson therefore inherently contained all the elements of claim 76. In doing so, the Board failed to recognize that the third mechanical fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of the two other mechanical means used to attach the diaper to the person. The Board’s theory that these two fastening devices in Wilson were capable of being intermingled to perform the same function as the third and first fastening elements in claim 76 is insufficient to show that the latter device was inherent in Wilson. Indeed, the Board’s analysis rests upon the very kind of probability or possibility–the odd use of fasteners with other than their mates–that this court has pointed out is insufficient to establish inherency.”

    which I whole heartedly agree with. The examiner/board needed to designate his fastening means differently, then state that they are capable of performing the intended use, not make a statement of inherency. OUTRAGEOUSLY bad designation and then a tacked on cover up? W T F? Being capable of performing an intended use does not make a basis for an inherency statement. Dear jesus.

    The court says specifically: “In doing so, the Board failed to recognize that the third mechanical fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of the two other mechanical means used to attach the diaper to the person.”

    But snaps on a pieces of fabric respectively on either side of the diaper are most definitely separate and independent of each and every other snap on the entire garment. This kind of analysis makes my head hurt. Looking at Fig. 1, 2, or 6 blatantly shows all snaps are separate and independent from all other snaps.

    Finally, even if we make all the snaps on one little patch of fabric be one “means” then RADER goes on to show why this fails to distinguish the claims over the prior art as well.

    RADER was the only one who got it right, but he affirms on other grounds. Grounds which I can neither confirm or deny, but I would bet that he got it right, because there appears to be a whole lot more to the claim and that is probably why the examiner/board f ed up so badly on how to make the rejection of the snap portion.

    That’s the first time I’ve found myself on RADER’s side when opposed to all others iirc. NEWMAN as almost always, gets it wrong. This FRIEDMAN character is new to me, but I’ll chalk this up as his first blatant error I’ve observed.

    Now to the issue at hand. The quote: “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991).”

    Which, funny enough, comes from a Fed Circ ruling in 1991, a mere one year after the Board’s ruling which I state does not contradict it, but merely compliments it.

    So, since we’ve seen that the court clearly is addressing this issue we should take the little snippet that pds (you don’t mind if I call you her name do you?) relies upon in and make sure it is used in context and otherwise verify its usage.

    “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269, 948 F.2d 1264, 20 U.S.P.Q.2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (C.C.P.A.1981)).
    16

    In finding anticipation by inherency, the Board ignored the foregoing critical principles. The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize. It cited no extrinsic evidence so indicating.”

    Where we see that “The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize. ” as well as “It cited no extrinsic evidence so indicating.” which indicates clearly that the two principles are different. And rightly they should be, as inherency can be established by either. Rational (including a mere statement of an undisputable fact that is easily recognizable to one of ordinary skill), or being supported by extrinsic evidence, evidence that need not even be specifically pointed to mind you because the rational is factual in the first place (based on evidence unseen, but it is none the less factual), but could be cited if for lulz the applicant appealed to a court of law and the court of law did not know that the rational was factually based because it does not have the technical background.

    And so we see that this court has allowed for at least two ways to establish inherency and the office did neither, and asserted something as being inherent that was blatantly not.

    As to the assertion that this case has made, we shall look to the previous case relied upon in Robertson.

    Coming up next on analyzing Fed. Circ. Caselaw with 6:

    Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991).

    link to bulk.resource.org

  53. I should add, that case that is at the board is the same one that my ex spe was concerned about one of my inherency statements. He wasn’t familiar with the art, and I admit, I wasn’t 100% sure that what he brought up would not prove that it wasn’t inherent, but there was only about a bagazillion to one chance that it could or more probably, no chance. Basically, even in his process that he brought up there was simply too much heat and too much reactant in an area for the effect that I alleged was inherent to not take place. The applicant himself did not question this inherency statement as it was pretty much beyond question to anyone of basic skill in the art that it must occur. I did have some fun learning about that process that he brought up though, I had been wondering about it for quite awhile and now I know a lot more about the details of it.

  54. “I knew you would bite on that — classic Examiner ignorance. I rely on FEDERAL CIRCUIT case law dated 1999, and you rely upon a BPAI decision dated 9 years earlier. I’ll give you one guess as to what case controls.”

    The one I say controls controls in my office. In this case they both control because yours is saying the same as the previous one. Nowhere in yours does it say one small thing about pointing to a reference. Never will, never has, and you won’t be getting any references from me unless I’m so interested in the topic at hand that I feel like looking it up, for my own enjoyment. Even then I might or might not send you the reference I find supporting me, but I probably will so that your dmb as might learn something and know it for the next time an examiner tells you that fact.

    “Case closed … defendant is guilty of extreme ignorance. ”

    I’ve watched, heard, and read proceedings of cases before and those mothers could spend all day discussing the meaning of “is” or “motivation”. Judges need to cut the crp and get that sht going it should be (is?) their job to make sure the case is done and over with in a timely manner.

    ” However, for it to be “factual” you need to establish substantial evidence (e.g., external evidence) of that fact. Just because you “think” something is a fact doesn’t mean that you’ve properly established it as a fact.”

    Stating a fact is finding it. Sorry. If you really want to fight about it, and I were feeling playful that day I would simply say that you have not properly traversed my official notice and lol at you for not having done so.

    “No reason to do the job you were paid to do – then again, we have low expectations for you.”

    Just because you believe something is my job doesn’t make it my job. One day you’ll realize that.

    “You seemed to have overlooked “The Patent Office Always Bears an Initial Burden to Establish Proper Reliance on Inherency” Remember when you said that “I won’t start providing them to attorneys”? That failure means you haven’t met your initial burden.”

    No I didn’t and no it doesn’t. Just like in MM’s example, merely saying that the balloon is inherently water resistant (or whatever his example said) is sufficient reasoning to establish proper reliance on inherency because the balloon is plainly water resistant.

    “How many Examiner’s Answers have you written hot shot? Come to think of it, how many applications have you had issued as a patent?”

    One with two more pending my not being too lazy to write them, three that have passed pre-appeal conf will probably get appealed, one of those I should probably reopen to include a 112 to force the claim to make sense (Miyazaki anyone?) before we go to the board, but meh idk, maybe I’ll just let them do it. And the one already at the board is a pretty ez win and to top off the cake they just submitted a new IDS (after the case went to the board) with some jap art that easily gets the ind and probably the rest, so even if they win they lose.

    I’d say around 15? Somewhere between 12 and 20. Out of ~150 cases done, 200+ if you count RCE’s. So around 10% or so. But, to be fair, a lot of the cases I have will eventually issue, I have very few abandonments, probably 8-12 so far.

    Like I always tell JD, gl, I’ll see you on the other side of RCE :) Your tone, or more likely, your applicants tone, will settle right down when the pocketbook gets involved.

  55. I need to shoot myself because for once I’m agreeing with examiner “6″ (3/7 at 6:58pm).

    Clearly there are many here who pontificate without ever having played the game.

    In patents, the devil is in the details. At the time of invention it very difficult to describe the invention because often the language for describing it is not there. Most inventors are neither poets nor portrait artists. So they need help from those who write and draw for a living. Even the process of transferring what’s in their head to the patent drafting attorney or agent is an onerous one.

    Then you have the pressure of the corporation which is paying for the drafting of the patent. They want it cheap and fast. No wonder so many patents are poorly written. You rarely get more than what you pay for.

    On the other side of the equation are the poor examiners who often need to decipher claims written in a foreign language and then badly translated into English, all this in less than 4 hours.

    Finally, the English-as-their-only-major judges get into the picture to declare that signals are only ephemeral transient events not worthy of recognition (In re Nuijten) and that processes must be “tied” (with a shoe lace?) to a machine so particular that only they are wise and insightful enough to know it when they see it.

    So yes, we’ve got a mess. But there is no single silver bullet fix for it.

  56. “Should take a day of hard work at most if everyone comes prepared.”

    Case closed … defendant is guilty of extreme ignorance. The defendant is sentenced to 5 years hard labor in an insance asylum. Oh, he already works at the USPTO? Never mind.

  57. “To fully develop reasons, the Office must provide reasonable support for invoking inherency. This reasonable support requires ‘a basis in fact’ (evidence) and/or reasoning tending to show that an allegedly inherent feature necessarily flows from the teachings of the applied art. (MPEP 2112 (IV), citing Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)).”

    I knew you would bite on that — classic Examiner ignorance. I rely on FEDERAL CIRCUIT case law dated 1999, and you rely upon a BPAI decision dated 9 years earlier. I’ll give you one guess as to what case controls. Another reason all these Bilski-related BPAI decision don’t amount to a bucket of spit.

    “If what I state as being inherent is factual, you lose if you choose to argue.”
    Hey!!!! even a blind squirrel finds a nut. However, for it to be “factual” you need to establish substantial evidence (e.g., external evidence) of that fact. Just because you “think” something is a fact doesn’t mean that you’ve properly established it as a fact.

    “I won’t start providing them to attorneys probably … ever, unless I feel generous that day.”
    No reason to do the job you were paid to do – then again, we have low expectations for you.

    “You badly need to read this page: link to patentablydefined.com
    You seemed to have overlooked “The Patent Office Always Bears an Initial Burden to Establish Proper Reliance on Inherency” Remember when you said that “I won’t start providing them to attorneys”? That failure means you haven’t met your initial burden.

    “If you bring your lulzy arguments to my office I’ll simply approve my appeal numbers on your dime.”
    How many Examiner’s Answers have you written hot shot? Come to think of it, how many applications have you had issued as a patent?

  58. I should add, additional requirements on the disclosure formalities would go a LONG way towards making the stacks of patents more researchable. Even just clear pictures of what is being disclosed on everything (regardless of whether or not it is a pure method) and labeling all parts reasonably (numbers? lol) would go a long way. The rules on drafting are really lax, probably because they are a remnant from days past.

  59. “Your statement in the third paragraph would indicate that you think patent lawyers directly cost “real” jobs. You state this as fact, but have no basis for this, revealing a malicious bias. ”

    You don’t honestly mean to tell us that you’re so stupd as to not realize that corps would invest more money in getting manufacturing/rd/advertising done if they didn’t have to pay attorneys do you? Come on noise, don’t bother to answer if you’re just going to act ignorant of what is blatantly before you.

  60. Idk brian, I used to think the way you do, but now I can see that it is less that you cannot do research in patent literature, and more so that it would be time prohibitive and not easily enough accessible (in terms of good classification). You can do research there if you so choose, but the system has made it such that it probably isn’t worth your time. The exception to this is of course if you are an expert searcher already in which case it might very well be worth your while, barely.

    “Let’s look at the other side of that coin: If a self-employed independent inventor cannot threaten injunction, why would a dirty farkin’ international patent pirate (i.e., big businesses that need to maximize profits so its executives can reap- rape the rewards) take a reasonable license without litigation the inventor can ill afford, especially considering lower damage awards? And under these circumstances, how the hello can the inventor find a contingency firm?”

    Sounds to me like your beef is with the litigation process and cost. Not with the injunction/damages. Take that up with the courts. It is pretty hilarious that you justify a huge payout or a huge blow to a functioning business because of the circumstances of one of the parties. It seems that it would be much better to justify cheap quick and simple patent proceedings. Personally I don’t even understand why the proceedings cost as much as they do other than the lawyers fees. Construct the claims, determine if the claims are valid, then if they are infringed, determine damages if any. Should take a day of hard work at most if everyone comes prepared. If they’re not prepared, let them suffer the consequences. Let the judge speed things up at his discretion. There is no excuse for these long drawn out legal battles. That one inventor that fought ford for 5 years or whatever? Ridiculous, the courts should put a stop to that mess in conjunction with appropriate legislation.

    “I know, I’ve been there and I’ve been royally screwed even with legal representation as good as it gets.”

    Not to be mean to you man, but I really have my doubts as to if you were screwed or lost fair and square. Come on JAOI, you stand to benefit nothing by being anon, show us these court proceedings that show a screwed small inventor man.

    “The patent system is a race. That is how it “promotes” the pace of progress. Without it, we would be on a pleasant afternoon walk. We would get there eventually. But eventually can be a long, long time away.”

    Maybe it shouldn’t be? At least in as much as it shouldn’t be first to file? Everyone here who likes pleasant afternoon walks please raise your hand.

  61. A lot of people suggest that my assumptions of “non-copying” are unrealistic. People, it is not an assumption, it is a condition to the definition. If you think that copying is actually rampant and independent invention is non-existent, you should support my definition. It means there is practically no such thing as a troll because no one would fit the definition. I have no problem with that conclusion at all, since it is entirely an empirical question of how much copying goes on.

  62. I’m on the edge of ceasing to read comments. Too much emotional chaff is burying interesting and thoughtful comments. Why do people feel the need to blow off so much steam in blog comments? Whatever the reason it is unfortunate.

    I like what Leopold Bloom said above, on Mar 06, 2009 at 09:05 AM. And the reasonable tone of his post.

    But this in particular.

    “I understand that the “troll” rhetoric bothers some honorable people, but I think they are poorly served by pretending there’s no such thing, or that there are no “stick-up” patent lawsuits out there.”

    Hear hear. This is the kind of discussion I think Dennis was looking for in kicking off this thread. What IS a productive way to think about this “troll” thing in such a way that allows the problems to be addressed without gutting strong patent protection?

    From my POV the “troll patent” is one that was allowed with overly broad claims, giving the entity controlling it the right to assert it against people who never relied on it.

    What do you all think of that?

    Seems to me that this is what the USPTO and courts have done by raising the bar (maybe too much) on enablement and definiteness and obviousness… I think it would be really hard for a troll to assert a patent with enabled, definite claims.

  63. Another way to look at a “troll” is why such an entity exist. Troll’s exists because inventors lack the resources to license and litigate. Take a look at TIVO, they are still in litigation after how many years. Or Kearns

    link to theautochannel.com

    He shopped his invention around to various automakers but did not reach a licensing deal with any of them. But carmakers eventually began offering intermittent wipers as standard or optional equipment.

    Kearns sued Ford Motor Co. in 1978 and Chrysler in 1982, claiming patent infringement.

    In 1990, a jury decided that Ford infringed on Kearns’ patent, though it concluded the infringement was not deliberate. Ford had contended the patent was invalid because the windshield system contained no new concepts. But Kearns argued a new combination of parts made his invention unique.

  64. Brian,

    You seem to be just aware enough of patents to make some seemingly inane comments. I’m sure that there is more to your story than what is shown in your posting. Perhaps I may offer my perception of what you said (and didn’t say), you can correct or add to my interpretation….

    First two paragraphs:
    It is your view that patent lawyers want the system “as is”, or close to “as is” and hate attempts to “fix” the system. You believe the system is broken and that inventors are not meeting the disclosure portion since a) nobody actually reads patents anyway and b) patents are written in such a manner as to hide ideas behind the invention rather than reveal those ideas.

    IMO, you would be mistaken on a number of levels. (Most) Patent attorneys are passionate about what they do. It is not anger in defense of the patent system as is that you see. It is passion in protecting a legal system from undue corporate influences that would decimate the system for particular gain. The attempted decimation is guised in the folds of improving the system, and this duplicity generates such passion. It is the Office disregarding the rule of Law and taking it upon itself to decide what is law and what is lawLOL (a 6 term), that ignites the passion that you see. It is the indignation of the same large tech firms that hide behind NOT researching what is available (and published patents are clearly available) so as to avoid certain damage levels if/when they infringe other’s property rights that ignite passion – choosing to be ignorant as a business decision – yet you would chastise patent lawyers and remain silent to the actual perpetrators.

    There is no doubt that there are “bad patents” that should not have issued. There is no doubt that the pejorative term “troll” does describe some peoples’ actions. Likewise, there is no doubt that both these are smoke screens for political agendas that have little if anything to do with the law.

    What you see is passion about the law from people that care deeply about the law. If, as you suppose, a patent does not reveal anything about the invention, than that patent application should have been rejected under the Law as the law now stands – 101 and 112 are possible tools for such. The bargain is not broken. The bargain and the law just need to be applied.

    The Office spends an inordinate amount of time and resources on its policy objectives rather than fixing the actual problems. What riles many here is the aim of patent quality being placed everywhere except where it should be – on examination quality.

    You do not seem to have comments on examination quality, time limits of examination, correct application of applicable laws, yet do seem to have a very negative viewpoint of patent lawyers. Your statement in the third paragraph would indicate that you think patent lawyers directly cost “real” jobs. You state this as fact, but have no basis for this, revealing a malicious bias. Can you tell us what you mean by the acronym M.A.D.?

    As to your fourth paragraph, I do not understand what you are trying to say. Who is the party that has the continued diligence and who benefits most from the “walled garden” of the system? What is the despised sharing or cooperation that you refer to? Are you buying into the rhetoric that the applicant should do the examiner’s job? This has never been the case. Why should this doom to failure the system now? What is the pertinence of the RIAA to patents? Are you confusing your forum? What are these submarine patents you refer to? Do you know what a submarine patent is? Do you know the current law and its relation to what is commonly known as submarine patents?

    I welcome your views – just please try to make them less noise and more substance.

  65. A lot of angry people here trying to defend the patent system. You talk about the “original bargain,” disclosing the invention in exchange for the right to control use of the invention, and that anyone may search the patent office for said inventions.

    Who does that? Really. Has anybody here read a patent lately? The original bargain is broken: patents are written to *obscure* the idea behind the invention, not at all to *reveal* it. You could no more do research in the patent office than you could learn English by reading Chinese.

    I also reject the gainful employment of patent-related jobs (read: lawyers) as any sort of gain to society. Yes, these people will have employment, at the cost of the many, many more jobs we could have made if we didn’t follow the M.A.D. model of innovation.

    Any walled garden like this, which despises any sharing or cooperation, is doomed to fail without the continued diligence of those that benefit most from it. The RIAA has been struggling lately to prove its relevance. Surely the lawyers that defend these submarine patents should have to explain just what benefit they are to anyone– besides themselves, that is.

  66. Dear Lionel,

    Re: “The ability to threaten an injunction against a company with a profitable business by an opportunistic patent holder was unfair.”

    Let’s look at the other side of that coin: If a self-employed independent inventor cannot threaten injunction, why would a dirty farkin’ international patent pirate (i.e., big businesses that need to maximize profits so its executives can reap- rape the rewards) take a reasonable license without litigation the inventor can ill afford, especially considering lower damage awards? And under these circumstances, how the hello can the inventor find a contingency firm?

    Moreover, given the stigma inventors must endure, created by incessant covert and overt “lobbying” by international powerhouses like Cisco, Symantec, Google and their ilk in the “Coalition for Patent Fairness” in the mass medias, Congress and Executive agencies including the PTO (at least the management thereof), given all that, and KSR to boot, District, Federal Circuit and Supreme Court Judges and the vast “pool” of jurors – they all have been poisoned against the independent inventor.
    I know, I’ve been there and I’ve been royally screwed even with legal representation as good as it gets.

    Please, please wake up and smell the coffee.

  67. Second to independently invent is like second in a foot race. Nice, but no 1st place trophy.

    The patent system is a race. That is how it “promotes” the pace of progress. Without it, we would be on a pleasant afternoon walk. We would get there eventually. But eventually can be a long, long time away.

  68. What is happening over at George Mason Law?

    I thought we had put to rest the hackneyed notion of trolls. Now troll patents?

    If a troll patent is so dusty and worthless it should be easy to defeat; and why would anyone pay maintenance fees on a worthless patent? Either patents protect something or they don’t.

    All this talk about patent trolls and dusty patents is being perpetrated based on myths and stories from people who have never set foot in a manufacturing plant and who are relying on anecdotes to make their case.

    “In most areas of business, patents are not necessary for a successful new product launch. The first entrant will have a strong market position, and trademark-type rights may be sufficient to retain the position.”

    This is not necessarily true and is not the point. And what does “trademark-type rights” mean in terms of “being sufficient to retain the position?”

    This is what happens when academics start opining on how business works. I can’t think of anyone less qualified to talk about how business works than a professor.

  69. “First, it gathers dust in the patent office. Second, it inflates prices on products”

    How do we know that the alleged infringer did not actually see that patent and try to copy different aspects of it?

  70. Dear Professor CJ:

    This coming from a person of such stature is shocking! I guessed you’ve never invented anything in your life and never fought on your own dime with the big boys who would not pay anything because they knew you can’t afford to sue them! Shame on you!

    Sincerely
    ChrisC

  71. There is an often repeated assumption that patents can be secretive and hidden in the Patent Office, but as we all know patent law assumes just the opposite, namely that once a patent is published it is available and publicly known. How, then, would you ever determine that someone was a non-copier? You cannot know that someone in the organization did not get the idea to “independently make the product” either directly or indirectly through the published patent.

    Why is it that no one ever asks the victims of so-called trolls why they did not perform a freedom-to-operate search to identify potential patents that they should license before going forward with a product? I think it a bit one sided to say that it is always the unsuspecting company that got asked to pay a reasonable royalty for someone else’s invention that is right.

    Comparing this to the realm of real property, your article is a bit like saying that trespass is okay if the owner of the land is not using it and if someone found themselves innocently on the parcel. However, the land owner still has a right to eject others off of his land or to charge a fee for being there, because the deed gives him a bounded area of ownership. Similarly, a patent marks out a bounded region of the invention, and the owner has the right to control the use of that area regardless of his purpose in ownership.

    This is yet another area where too many are quick to allow property rights to be eroded that many fought so hard to obtain just to solve an isolated problem.

  72. TJ Chiang is precisely the type of conceptually clueless academic, stupid really, that will do little more than pollute his students with tripe. The man is dangerous in his utter failure to grasp his professed area of interest.

    Patents hold the promise of accelerating invention. But they don’t perform that function particularly well, having nothing to do with the status of the inventor or patent holder. To blame patent holders for the failure of patent transactions is the equivalent of shooting the messenger.

    As Prof. Crouch noted, patents are published. If the patent system worked as it should, companies would be sifting the patent database for inventions they could use. The interesting question is why that does not happen.

  73. “NEVER and I mean NEVER, after looking at well over a hundred inherency arguments have I seen one as clear cut as the example you provided.”

    Then you haven’t gotten any inherency statements by me. Too bad for u.

    Oh and examiners should never “argue” inherency, a simple statement is always best.

    “The “evidence” is extrinsic to the applied prior art — i.e., it isn’t part of the applied prior art.”

    I know what it means, I figured I’d see if you would bite on the claim construction definition but you just came over to this thread instead.

    To the matter at hand however.

    First I should tell you that I make inherency statements literally every week, if not every couple of days, I’m pretty well versed in them and I deal with the best of the best lawyers that prosecute applications (see your own rankings of law firms). They know how to argue and will argue anything that they can. They do not argue what you propose. Why?

    “To fully develop reasons, the Office must provide reasonable support for invoking inherency. This reasonable support requires “a basis in fact” (evidence) and/or reasoning tending to show that an allegedly inherent feature necessarily flows from the teachings of the applied art. (MPEP 2112 (IV), citing Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)). ”

    Pretty much says it all. Except “evidence” isn’t actually in the MPEP. If what I state as being inherent is factual, you lose if you choose to argue.

    Trust me, I know precisely what is required to make an inherency statement stick. Usually all that I insert as my reasoning is that something exists, or that something must happen because that is all that is required to establish it as a fact and provide reasoning since the applicant is simply claiming exactly what is in the prior art and is simply describing exactly what the prior art is doing in different words or stating a technical fact about what is going on in the reference. Sometimes I get a little technical, but I have yet to provide anyone (except one newbie to my art SPE because I was feeling generous that day and I was genuinely interested to look up that fact) a reference to show that a previously made inherency statement was true. And I won’t start providing them to attorneys probably … ever, unless I feel generous that day.

    You badly need to read this page:

    link to patentablydefined.com

    BTW, going with “1″ on that page = final if the inherency is indeed based on fact and the previous explanation wasn’t wayyyy too simplified. I strongly recommend going with “2″ no matter what. But, that’s your choice. And remember, he inserted “evidence” for “basis in fact”.

    I don’t know what failtastic arts you prosecute in, but when you come to play with the big boys you will find out that an inherency statement most certainly does not mean that you just “won”.

    If you bring your lulzy arguments to my office I’ll simply approve my appeal numbers on your dime.

    As a brief aside, anyone who chooses to argue like Mike at the end of the above article will find themselves with one warning in a final action to address the issue or not have the amendment entered, and then all subsequent amendments not entered until they do. Including ones that come after their inevitable RCE. Assuming that is their only argument that is. This is what I would do personally. Strangely I have yet to see those “avoid the issue” type of arguments again after such actions but you guys can feel free to waste your time all you like.

  74. Hey “stoopit JD”,

    After a very quick search (you are not worth the time for more), here are just a couple of cites that indicate the patent was “improperly” obtained. Plus, remember that it was invalidated because he did not actually disclose what he claimed.

    link to intel4004.com (“was not implementable with the technology available at the time of the invention.”)

    link to datamath.org (“Hyatt never actually built a computer-on-a-chip, but based his claim to the invention on a series of patent applications he filed with the Patent Office in the 1970s and 1980s. In the Patent Office interference proceeding, he claimed he filed the first patent application describing a computer-on-a-chip in December 1970. After a review of tens of thousands of pages of Hyatt’s patent filings, however, the Patent Office determined that Hyatt first mentioned the invention in an application that was not filed until December 1977–six years after TI introduced the product.”)

    Of note, are the quotes that point out that the technology to actually implement what he claimed was not available in 1968 when he originally filed. Would you not call that “improper”?? Or do you suggest that your clients keep applications alive for 20 years (before GATT) & keep adding material that was not around when they filed and claim that they still had it on the original date. Would your “legal ethics” allow that?

    BTW, I did not explicitly say that “he committed fraud” as you state. I said “If not ‘fraud’ outright, at least ‘improper’ in my personal opinion” “Fraud” would be a legal decision decided in a court. He was not convicted of legal fraud. So, for that basis he did not commit “fraud”. Did he do things that were “improper”. Clearly the record is “yes”. If, for no other reason, his patent was invalidated because of his actions and that he could not support what he claimed in his claims.

    MVS

    PS, Thanks for the complement, but I am not LL. We do know each other, but he is more tolerant of you than I. He thinks that all of what you post is just a front & you just like to argue but are reasonable in real life. I think you are a lost cause & just a angry & hateful person who would not want to agree with me or anyone no matter what the discussion.

  75. Ryan Kennedy: I am perfectly well aware of what the patent right contains, thank you very much. I am not advocating that patentees must commercialize. I am arguing that they should commercialize *or* sue people who copy from them. About the only people who are excluded are independent inventors, and note I am not even arguing that all independent inventors should be excluded. I am arguing that when an entire industry is made of independent inventors, the patent made no real contribution.

    And you say that the patentee might not be able to commercialize due to other blocking patents. That is conflicting quite a bit, I would say, with the many people here who think that it would be so easy to find all the blocking patents and then license them ahead of time . . .

  76. Independent invention is not a defense to patent infringement and I am not arguing it should be. I am agreeing that there is a problem with nonpracticing inventors, generating license revenue through lawsuits for ideas already in use by large corporations.

    I personally do not see any solution to that problem that does not create some other harm against the patent system. However, since E-bay changed the practice with respect to injunctions, I am less concerned.

    The ability to threaten an injunction against a company with a profitable business by an opportunistic patent holder was unfair. As long as courts are applying the four-factor test that all other injunctions are subject to, I have a lot less problem with “troll patents”

  77. “I do not need to ‘prove’ to you that the balloon is water-resistant or buoyant before making my inherency argument. I just need to tell you that it is and if you don’t like it, I know where there’s a rolling donut waiting to be made love to by you.”

    NEVER and I mean NEVER, after looking at well over a hundred inherency arguments have I seen one as clear cut as the example you provided. Any monkey can come up with a hypothetical inherency argument that no one reasonable would deny — as you have shown. However, the fact that a MMonkey can come up with a solid hypothetical establishes nothing — except your inability to present solid arguments.

  78. 6notknowing “You obviously don’t know the meaning of “extrinsic evidence.” In the context of an inherency argument, it is evidence (e.g., a patent, a publication, a paper) that supports that the inherent teaching is necessarily found in the applied prior art. The “evidence” is extrinsic to the applied prior art — i.e., it isn’t part of the applied prior art.”

    *sigh* This is the zombie whine about the PTO that refuses to go away.

    Look, assume I’m an Examiner (too funny) and you’re a prosecutor (highly likely).

    If your claim recites a “A floating rocking chair, where said chair is attached to a water-resistant buoyant device” and I have an article describing someone attaching helium balloons to a rocking chair, I do not need to “prove” to you that the balloon is water-resistant or buoyant before making my inherency argument. I just need to tell you that it is and if you don’t like it, I know where there’s a rolling donut waiting to be made love to by you.

  79. I don’t think the professor is very clear on what type of right a patent grant contains. It is not only possible, but likely, that an inventor cannot practice his invention because that’s the law. S/he has the right to exclude others, but not the right to commercialize the invention. The entire patent system is based on the negative rights principle, so all patentees are by definition trolls unless and until they have clearance to operate from every single other negative right (patent) that their product might infringe. The fact that the good professor misses this very elementary aspect of patent law is not reassuring. The Coalition folks prey on this kind of ignorance of the law. Here’s hoping Congress is smarter than that. I jest of course.

  80. “First we have a guy that thinks inherency needs to be supported by evidence in the record while explicitly saying that the supporting evidence that is required is extrinsic.”

    You obviously don’t know the meaning of “extrinsic evidence.” In the context of an inherency argument, it is evidence (e.g., a patent, a publication, a paper) that supports that the inherent teaching is necessarily found in the applied prior art. The “evidence” is extrinsic to the applied prior art — i.e., it isn’t part of the applied prior art.

    BTW — if you don’t like the law, blame the MPEP and the Federal Circuit. Of course, you are an examiner, you don’t have to follow the law — just make it up as you go along.

    Just because the cops in Alabama can ignore the law doesn’t mean that you can too.

  81. Hey MVS (or LL’s sock puppet, whichever you prefer),

    “…it is clear that he did not have support and knew he didn’t have it when he added it to the spec & claims…”

    It is? Says who? You?

    Are you aware there is a difference between a finding that the claims did not have support and a finding that he knew the claims did not have support?

    “Satisfied?”

    No. The “I read it in some articles therefore it is clear he committed fraud” proffer is not, in my opinion, sufficient evidence to support an accusation of fraud.

    SESRQ

  82. “The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent.”

    I must more than disagree with this scholarship – this is just plain crap, from a “scholar” no less. Dozens of unexplained, unsubstantiated, conclusions are wrapped up into a turd ball not unlike what you’d expect to find as a patent law exam answer.

  83. Dweller, your position sounds suspiciously like saying that the pedestrian who gets mowed down by the drunk driver could have avoided the accident too, by being really, really careful and jumping out of the way first. Otherwise, we are “rewarding” the pedestrian for him not taking all possible precautions; just like a company that does not take all possible precautions to search all possible patents.

    The key question is the comparative cost. Is it cheaper for the drunk driver not to be drunk or the pedestrian to jump out of the way? Is it cheaper for the patentee to mail a copy of the patent (again, 42 cents) or for the company to find it through search (last I checked, $5000 per patent)? If searching is nearly as easy as you suppose, then we wouldn’t have a patent searchers making a living on it, nor would we have claim construction problems. For even after you find the patent, it is pretty hard to figure out whether it covers your product. Add to that the possibility of a continuation a la Rambus, and it becomes nigh impossible.

  84. TJ, I don’t know if the cost of independent invention would ever be less than the cost of reading the patent. It takes, what, an hour to read the average patent. It’s easy to say “1 click purchase”, but to think it through and write it down so it can be implemented by Joe programmer, takes more than an hour, I think.

    Perhaps the European system is better at forcing applicants point out what they’ve invented relative to the prior art. A well written patent can be read in 20 minutes.

    7 million sounds like a scary number, but it is quite manageable if you know what technology you’re interested in. A wide swath of computer patents covering databases and search engines issued at a rate of about 35 per week in 2008. Is that really too much for a potential troll target to keep up on?

    Independent invention is a result of ignorance of not having read the first inventor’s patent. Is our system to reward ignorance?

  85. Hey, “stoopit examiners should remain quiet” (JD by another name?? Sounds like his usual ranting),

    As one easy example, how about the patent that Hyatt received for a processor & memory on a single chip (a simplified explanation of the patent)? It later came out (in the various interferences, etc.) that he never had support going back to 1968 (I believe that was the year he claimed he had priority to) for what he claimed & got a patent on about 20 years later.

    Based on most of what you will find out when reading the various articles, etc. on this patent & Hyatt & the various legal proceedings, it is clear that he did not have support and knew he didn’t have it when he added it to the spec & claims (should have been rejected under 112, 1st, but that is another matter). He basically took what was already out there, claimed priority to many (dozens?) of different earlier applications, and said he had support for it. If not “fraud” outright, at least “improper” in my personal opinion (& here I am NOT commenting on the validity of an issued patent, but explaining the background history of a patent that has been legally invalidated).

    In my opinion, someone who claims rights to something that they knowingly or what they SHOULD knowingly) not have rights to claim is “fraudulently or otherwise improperly” receiving a patent for material that is not their own work.

    Satisfied?

    MVS

  86. Oh, and I should add, guys like you will pay for my kids tuition if I stick around here. Or at least you’ll cause some hapless apps to pay for it.

  87. “That’s not the accusation that was made against Mr. Lemelson and Mr. Hyatt. The accusation was that they committed fraud in obtaining some of their patents.”

    And that such a thing made them a troll.

    “What I would consider a “patent troll” is someone that fraudulently or otherwise improperly patents (or even attempts to patent) something to which they are not entitled to. (& I am not talking about just filing overly broad claims). A few examples off the top of my head are some of Lemelson’s & Hyatt’s patents (i.e., those that have been repudiated; can not officially comment on any others or pending applications). ”

    Sir, you are beaten. Learn to read and learn to think before you speak.

    Who’ll bet that it is a 100% certainty that this guy is a lawyer?

    Don’t get me wrong, I love guys like you, you bring the lulz. And dam if you guys don’t bring em in by the truckloads around here.

    Hurry and bring some more guys, I need something to tide me over on the weekend when hardly anyone posts.

  88. Malcolm, if I were one of Google’s 20,000 employees and I was paid a tiny portion of their 20 billion in revenue as salary, and it were my job to read the 10 or so applications published each day that might become a problem should they fall into the hands of a troll, I would recommend doing a third-party submission of prior art against your claim.

    I would search for half a day (while earning an infinitesimal amount of that 20 billion, by the way) or I would hire our friend 6 to find killer art in 5 minutes. Heck as an employee of one of the world leaders in computer software, I would probably have killer art sitting on my desk.

    Voila. Troll bane. It is that easy.

  89. dweller, as you say, someone who reads the patent will save money by not having to independently invent. If so, the big companies should have plenty of incentive to read the patent, whenever the cost of independent invention is less than the cost of reading the patent. Thus, independent inventors occur only when the invention is so easy to re-invent that it is smaller than the (supposedly tiny) cost of reading the patent. If the patent is on such a insignificant invention, what is the contribution of the patent? Also, laziness is a two-way street. The big company is too lazy to search 7 million issued patents, the patentee is too lazy to mail a copy of the patent (42 cents) to the few big companies in his industry.

    And although this is a semantic point, am I really “penalizing” the patentee, or just not throwing money at him when no one else has copied his invention?

  90. Thanks to all the previous posters. I could challenge the factual accuracy of almost every sentence (except the hypothetical statements) and thus the conclusions based on false or faulty premises (premesii?). However, In toto, I believe the previous posts have done so already.

    Patents are property rights. If the big companies really don’t want to be bother by trolls, then don’t infringe or settle cases that survive Rule 11 scrutiny. (disclosure- I work for a big company now and have represented big companies for over 10 years). Akin to real proprty rights, you can’t trespass (legally) because you are bigger or the owner isn’t home. Squatter, infringer, trespasser; all in the same category.

  91. “Anyone who reads his patent (a) saves time and money by not independently inventing”

    This is only true in the instance where learning about the invention takes less time and money than creating it.

    As any honest person will readily admit, a great many software and computer-implemented inventions require as much time to “invent” as it takes to write the claim. This is because, as we were informed so famously by our old friend “pds”, softare and computer-inventions are “pre-enabled.” They certainly do tend to be claimed that way.

    Thus, I can sit here and type, “A method of storing television programming transmitted to a user, comprising: obtaining data corresponding to a televised image; determining if the televised image includes an image of interspecies animal copulation; wherein if said televised image includes an image of interspecies animal copulation, said data is saved to a folder organized in a hierarchical database, wherein said folder is accessible only by a user-specified password.”

    Voila. Invention. It is that easy. Of course, this invention is more useful and better claimed than most in this field.

  92. “Then we have guys who believe that someone needs evidence to consider someone else a troll.”

    That’s not the accusation that was made against Mr. Lemelson and Mr. Hyatt. The accusation was that they committed fraud in obtaining some of their patents.

    You really are stoopit.

  93. “For somebody that prides himself as to knowing which way the wind is blowing, you cannot detect the direction these arguments are headed?”

    There’s a difference between high prevailing winds and the air moving about a room when someone coughs. I don’t see non-practicing entities having their patent rights voided across the board anytime soon. I haven’t seen anybody who matters suggest that as a viable option in the US.

  94. Patent patrollers are individuals who invest in intellectual property for the purpose of enforcing a legal wright they form an alliance with the inventor who signs off on his rights for a sum or % of judgement. This is the inventor recieving sum profit because the companies wont pay him a reasonable sum or he doesent have the money to fight a million doller legal battle or open his own company so this is his only method of any compensation for him.

  95. TJ said “There is the incentive to file a piece of paper, and the incentive to make that piece of paper useful. An incentive to invent that consists of filing pieces of paper that no one will ever read until sued is not too useful.”

    TJ, why do you wish to penalize an inventor (by limiting his rights unless he commercializes) because someone else was too lazy to read his patent?

    Anyone who reads his patent (a) saves time and money by not independently inventing and (b) learns who owns the invention. And if they’re worried about a potential troll, they can license the patent. What’s the problem?

    Is it too much to ask a large company with millions or billions in revenue to read the two, twenty, or two hundred patents granted each week in its technology area? Is that the issue here? There’s lots of dangerous paper out there, but the ostriches don’t want to read it?

  96. “Nobody is proposing that non-practicing entities are going to lost all or even most of their patent rights.”

    For somebody that prides himself as to knowing which way the wind is blowing, you cannot detect the direction these arguments are headed?

  97. Michael Martin:

    I did read the latter part of you comment, but it seemed to me that you didn’t give much credence to other kinds of disclosure.

    Patents are very effective for disseminating knowledge. The problem is that few people take the time to read them. Keeping up with the patent landscape takes work. It’s much easier to ignore the landscape and then complain about trolls.

  98. “I[n] almost all cases they had no idea the patent existed. It is independent invention. That is why they are non-copiers.”

    Do you really think they would admit — “Hey!! We copied that directly from Joe Inventor”?

    They could, even in could faith, say that they indepedently came up with the idea, when the actual fact is that the subsequent independent inventor came up with the idea after overhearing a conversation about something that somebody saw that eventually could be traced back to the original inventor. There are just too many unknowns to consistently prove or disprove independent invention.

    If independent invention is important, then why should it apply to just patent trolls. Instead, shouldn’t it apply to everybody? Of course, that would then be the #1 defense for every patent infringement claim — “we independently developed the idea.”

  99. The Fed Cir wa established specifically to clean up the mess of the other circuits – patents had been upheld almost never in some circuits. I guess we can argue whether it was primarily established for one reason or another – but I know at least one of the resons discussed at the time was increasing patent strength.

  100. “That’s why they’re working at the PTO as anonymous cowards. Like you.”

    I work at the pto as an anonymous coward?

    I’m going to say this one more time. Think before you speak.

    “buy you someone would say that, right?”

    Jaoi, was there something you were wanting to say? Maybe you didn’t think before you spoke?

    You guys are really on your game today. First we have a guy that thinks inherency needs to be supported by evidence in the record while explicitly saying that the supporting evidence that is required is extrinsic. Then we have guys who believe that someone needs evidence to consider someone else a troll. Finally we have people that can’t even make a coherent comeback that has some factual truth.

    Bravo. Encore. I know you want to.

  101. “How come Rule 11 and Antonious v. Spalding don’t take care of the problem you talk about?”

    Because no court is willing to actually grant Rule 11 sanctions, especially the trolls’ favorite Eastern District of Texas.

    Can anyone give me 3 (I won’t take one off the wall decision) cases where sanctions were granted under Rule 11 to a patent defendant?

    Let’s explain how trolls work. They file suit without any prefiling investigation. Then then require the defendant to provide extensive discovery to determine if they have even a colorable claim. They also know that they have next to nothing discoverable themselves, so their discovery cost is marginal. At the same time they offer to settle for less than the cost of providing the discovery. Since they know that no district court judge is going to grant Megacorp Rule 11 damages against small individual “inventor” (Lemelson et al.) it’s a no brainer.

    Just give me 3 decisions of the CAFC enforcing Rule 11 sanctions equal to the defendant’s total costs in the future and a major proportion of troll cases go away.

  102. No assumption that they would have. In almost all cases the alleged infringer had no idea the patent existed. It is independent invented by the alleged infringer. That is why he/she/it is a non-copier.

    Reposted because my original post was a garbled mess.

  103. 6

    Think before you speak.

    That’s pretty funny coming from you, buy you someone would say that, right?

  104. “So, according to the last paragraph, an inventor who tries to commercialize his invention, but fails, is not only “unlucky”, but to add insult to injury, he becomes a troll later when someone else tries to market his invention without taking a license?”

    No, when someone else tries to market his/her/its own invention later without taking a license. The hypothetical is about non-copiers (i.e., 99% of victims in these suits)

  105. “No evidence is required in the court of public opinion.”

    Anonymous cowards from the PTO have never felt evidence is required. That’s why they’re working at the PTO as anonymous cowards. Like you.

    “Think before you speak.”

    You should take your own advice.

  106. @dweller

    “But…a patent enables the patentee to disclose his invention in the form of commercial literature, conference papers, the product itself, etc.”

    Because I’m not sure you read it, that’s what the second half my comment was meant to address.

    “So while nobody is actually reading the underlying patent, they are certainly leaning from the patentee’s work. The quid pro quo still exists, even if zero patents were ever read in the entire history of the patent system.”

    It’s not a quid pro quo for *patenting* in that case the, is it? It’s a quid pro quo for patenting and then working to transfer the knowledge (and at least partially suceeding) through other means.

    But your comment raises the other possibility — supposing that patent disclosures cannot be improved (I assumed the opposite in my comment above), then perhaps remedies for infringement should be predicated on patenting AND engaging in whatever activities ARE effective for disseminating knowledge to the field.

    That, in a nutshell, is what Paul Heald has proposed:

    link to ipfinance.blogspot.com

  107. “And your evidence that Lemley and/or Hyatt obtained their patents fraudulently, or by any other improper means, is what?”

    No evidence is required in the court of public opinion. Think before you speak.

  108. A few responses:

    Dennis: What I am trying to do is distinguish between two types of “incentives to invent” provided by the patent system. There is the incentive to file a piece of paper, and the incentive to make that piece of paper useful. An incentive to invent that consists of filing pieces of paper that no one will ever read until sued is not too useful.

    I’m not sure about your insurance point. In my mind, if the patentee is good at inventing but trailing badly behind a larger company in commercializing, the Coase theorem transaction is negotiate an exclusive license to the larger company ex ante. If the ex ante transaction is not possible, then the patentee can commercialize (however badly, as long as he does it), and then sue and get an injunction. Neither of these scenarios will involve me labeling this person a troll.

    Your point about cumulative invention is an interesting one. As I understand it, you are saying that if I filed a patent on a unicycle and it is completely worthless commercially, I might build on that research five years later and invent the bicycle. Note that the crux of the case is still that *someone else*, say X, independently invents the unicycle and makes the unicycle commercially successful, and then I sue X. So in your scenario, we are using X’s profits on unicycles to subsidize inventing bicycles. If the profits of a patent on bicycles are not enough to warrant its invention and we need the subsidy from the unicycle patent, I am not sure this is fully justified.

    As for the hidden patent point. Yes, the patent might have been ignored. But if it was, what good is the patent doing? The fact that the inventor is not really “at fault” under our system—he has no legal obligation to publicize or commercialize—just means the system could be improved.

    dweller: Yes, the derivation might be from another publication by the patentee, or from the patentee’s commercial product, and not necessarily the patent itself. Consider that a minor amendment to the definition of copying.

  109. Leo: “In any event, I never meant to suggest that Rule 11 couldn’t be used. I actually suggested that perhaps it should be used more often.”

    Leo, other have already noticed this, but your comments today are astute. New coffee beans?

  110. FriendOfTroll: “Investors don’t throw money at startups in expectation of or hoping for troll status.”

    I never said that they do. But you are contradicting yourself and/or trying to have it both ways. On one hand, you want to say that investors don’t have an “expectation” of troll status. On the other hand, you admit (correctly) that they do have such an expectation and are willing to pay for it.

    If, in fact, the backstop of trolling the patent is not worth much to the average investor, then why cry about the backstop being diminished somewhat in size? Because for now that is all that is happening. Nobody is proposing that non-practicing entities are going to lost all or even most of their patent rights.

    “The sale of the patent of a failed startup probably only returns pennies on the investor’s dollars, but at least is softens the blow a bit.”

    Poor babies.

  111. “Is it really that easy to assert frivolous claims or to file suit without a pre-filing investigation?”

    I didn’t say it was easy. Those who do it well are quite skilled.

    By the way, the case you cite doesn’t appear to provide much support for your apparent contention that filing frivolous patent litigation will get you sanctioned. The specific case you cite denies a petition by the sanctioned party for re-hearing. However, the case for which re-hearing was denied actually vacated the sanctions and remanded:

    “We vacate the sanctions order and remand to the district court for further proceedings. To the extent the district court concluded that Finnegan Henderson’s proposed construction of certain critical claim language was frivolous, we hold that the court’s conclusion was legally erroneous. To the extent the district court concluded that Finnegan Henderson’s prefiling investigation was inadequate, we cannot uphold the court’s ruling on that ground because the court apparently analyzed the prefiling investigation in light of its view of the proper claim construction. On remand, the district court must assess Finnegan Henderson’s prefiling investigation in light of Finnegan Henderson’s proposed claim construction and may impose sanctions only if the court determines that the prefiling investigation was inadequate under that claim construction.”

    I haven’t read the case closely, but the above doesn’t sound like a crushing defeat for the plaintiff’s counsel. Rather, it seems to suggest that the plaintiff’s conduct should be assessed against its own claim construction, presumably at the time the litigation was filed.

    In any event, I never meant to suggest that Rule 11 couldn’t be used. I actually suggested that perhaps it should be used more often.

  112. Malcolm said: “Think of the United States as the owner of that garage door. The backstop needs to be taken away. And the kids need to learn how to pitch.”

    I can’t believe that is a serious argument, or maybe you didn’t understand my point. Investors don’t throw money at startups in expectation of or hoping for troll status. The sale of the patent of a failed startup probably only returns pennies on the investor’s dollars, but at least is softens the blow a bit.

  113. “What I would consider a ‘patent troll’ is someone that fraudulently or otherwise improperly patents (or even attempts to patent) something to which they are not entitled to. (& I am not talking about just filing overly broad claims). A few examples off the top of my head are some of Lemelson’s & Hyatt’s patents (i.e., those that have been repudiated; can not officially comment on any others or pending applications).”

    And your evidence that Lemley and/or Hyatt obtained their patents fraudulently, or by any other improper means, is what?

  114. “Makes your analysis SO MUCH EASIER when you assume that somebody else would have come up with the idea.”

    No assume they would have. I almost all cases they had no idea the patent existed. It is independent invention. That is why they are non-copiers.

  115. What many of you say re: “patent trolls” is something that I have long felt & said.

    If you actually invent something & patent it, you should NOT be considered a “troll”. You have disclosed your invention to the public and have the same rights to defend it or manufacture/use it as any other patent holder. That is your right for the disclosure. There is NO requirement in the patent statutes that a patent owner must practice the disclosed invention. And any assertion that there should be is really just an attempt by some/many large corps. to screw-up the system.

    What I would consider a “patent troll” is someone that fraudulently or otherwise improperly patents (or even attempts to patent) something to which they are not entitled to. (& I am not talking about just filing overly broad claims). A few examples off the top of my head are some of Lemelson’s & Hyatt’s patents (i.e., those that have been repudiated; can not officially comment on any others or pending applications).

    Those that did not contribute anything to the public but then try to obtain $$$ from companies that DID are the real “trolls”.

    MVS

  116. “the Federal Circuit was created because of the last bad economic downturn (in the late 70′s and early 80′s)”

    I thought it was created because the Supreme Court’s failure to understand the 1952 Patent Act resulted in inconsistent opinions by the various Courts of Appeal.

  117. FriendOfTroll: “The purchaser of the patent considers options for use of this purchased patent, one of which is asserting it against big companies who use the technology, thus earning the purchaser the title “troll,” when in fact he is providing a funding backstop to the early investors.”

    In other words, the early investors recognize (and therefore advocate for) the inclusion of material and claims in patent applications that could be used to harass established companies, even if the start-up fails (which it usually does).

    You use the term “backstop.” When we were kids, we sometimes played baseball in the street. We didn’t have a backstop so if there was a wild pitch the catcher or some other kid had to chase the ball. It was annoying but that was the way it was. It kept you from throwing crazy pitches.

    Of course, if you sucked at pitching and needed practice, a backstop was more desirabe. So we’d put the catcher in front of a closed garage door in the driveway. Invariably, the owner of the garage would notice all the dents and paint chips on the garage door and tell us to get the sam hill out of there and learn how to pitch.

    Think of the United States as the owner of that garage door. The backstop needs to be taken away. And the kids need to learn how to pitch.

  118. patenttrollmyth “If you thought of an idea, you own it – END OF STORY. ”

    That’s undoubtedly not the end of the story. But the quasi-religious belief of certain folks that it is the end of the story explains quite a bit of the angst around here.

    Dennis writes: “By cutting out classes of inventions that could be protected, you may well be cutting the incentive for beneficial innovations.”

    Maybe. Or innovation would increase in areas where the costs of innovation are signficantly increased by the existence of patents.

    It should be recognized that, in spite of (poorly worded and misguided) statements in the case law to the contrary, our system already “cuts out classes” of inventions and deem them unpatentable. Is America suffering from a lowered rate of innovation of beneficial algorithms, abstract ideas, and mental processes? If we allowed cookbooks and instruction manuals to be patentable, would we have better food and instruction manuals?

    If one effect of the patent reforms is to put the focus (and the money) on developing useful products and methods and away from the generation of paper whose primary value is a ticket to litigation.

  119. The value of a disclosure provided by a patent is greatly diminished where (1) no one ever reads the patent, (2) where others independently developed the invention a few months after the patent application was filed and (3) where the patentee never disclosed the invention other than through cease and desist letters to people who independently knew about the invention already.

    Not all disclosures are created equal, so step off your “disclosure” soap boxes, folks. In some instances, the public is getting short-changed bigtime.

  120. “One hypothetical that will surely be thrown at me is the individual inventor who tries to commercialize the invention, but fails, and then sues the industry years later. This inventor is a visionary ahead of his time who was merely unlucky. On the other hand, this inventor still contributed nothing useful to society”

    This is NOT a hypothetical, but a common occurence. Inventors invent. If aided by financing, they are ideally followed by manufacture, marketing and profits. The invention is taken to market by funding put up by Angel investors, VC’s and subsequently IPO’s. All of those investors are counting on there being substance to the patent that the inventor obtained to protect the venture when it succeeds. And they also are looking at the residual value of the patent in the event the venture does not succeed.

    So, the high-risks startup gets some funding and a patent issues, but the venture fails, for any of a myriad of reasons. The patent is bought out of bankruptcy by someone who pays value for it — value that the otherwise-hosed investors appreciate.

    The purchaser of the patent considers options for use of this purchased patent, one of which is asserting it against big companies who use the technology, thus earning the purchaser the title “troll,” when in fact he is providing a funding backstop to the early investors.

    Bear in mind, also that the inventor often has to go the start-up business route because the big companies that complain about trolls also refuse to talk to individual inventors. The inventors can’t get a straight business deal with those guys, and now those guys are also trying to gut his legal rights.

  121. “But today, outside a very select number of fields (optical engineering? drug research), there are very few fields in which experts consult new patent filings to keep abreast of new work.”

    Yes, fine, true and all that, most people don’t consult patents.

    But…a patent enables the patentee to disclose his invention in the form of commercial literature, conference papers, the product itself, etc.

    So while nobody is actually reading the underlying patent, they are certainly leaning from the patentee’s work. The quid pro quo still exists, even if zero patents were ever read in the entire history of the patent system.

  122. The problem with a patent troll—or, more accurately, the particular troll patent—that fits all four conditions above is that the troll patent does only two things. First, it gathers dust in the patent office. Second, it inflates prices on products. The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent.

    Absurd. Patents are not granted for commercializing an invention or for making a product. The inventor is granted a patent in exchange for disclosing his invention via the patent document. This is his contribution to society. If he would like his invention to collect dust, so be it. It is his right.

    The real difference between “patent trolls” and the conglomerates that seek patent reform is the percentage of commercially viable patents held by each. Trolls hold a small number of patents that are, by their nature, commercially viable. Conglomerates hold thousands of patents only a handful of which are viable. If we should penalize owners of intellectual property for failing to practice their inventions, let’s start with the IBMs and Microsofts of the world as they are the biggest offenders.

  123. I’m going to try and cut a Gordian knot here and say that an underlying source of disagreeement is over how much the public domain is enriched by the disclosure of patent applications. Since Mansfield this has been recognized as the quid pro quo for patenting. But today, outside a very select number of fields (optical engineering? drug research), there are very few fields in which experts consult new patent filings to keep abreast of new work. That, in my opinion, is what has to change in order to avoid the problem of the lone inventor, ignored by the field. So long as it remains more efficient for engineers or scientists to ignore patent filings and independently invent, there will be redundancy in work and “troll patents.”

    Now it should be recognized that wholly aside from the teaching of the disclosure, patenting a technology may facilitate the quicker dissemination of a new technology since it gives patent owners some modicum of comfort in collaborating with other entities when their only protection otherwise would be contract or tort. But this, I believe, is why Prof. Chiang distinguishes “patent trolls” from “troll patents.”

  124. looks like Dennis is filtering content…
    Let me repost.
    PATENT TROLL is DEROGATORY NAME CALLING by large corporations. If you thought of an idea, you own it – END OF STORY. There’s more but Dennis does not want it posted.

  125. Dear anonymous,

    (Pardon my misspelling – it was the excitement of your revelation.)

    You have made my year. I, and everyone else onboard, owe you.
    A round of drinks, drinks all around to celebrate Mr. anonymous.

  126. Dear anonymous,

    (Pardon my misspelling – it was the excitement of your revelation.)

    You have made my year. I, and everyone else onboard, owe you.
    A round of drinks, drinks all around to celebrate Mr. anonymous.

  127. UHHM, NO. Patents ARE PROPERTY just like real estate. If you thought of it YOU OWN THE IDEA, just as if you bought land YOU OWN IT REGARDLESS OF WHETHER YOU CAN AFFORD TO BUILD A SHOPPING MALL ON IT.

    The analogy is simple and at least addressed in the last paragraph by Mr. Chiang. Yes, if you cannot afford to develop your idea BECAUSE YOU CANNOT AFFORD financing, it does not make your idea any less powerful, just as your prime piece of real estate which cannot be developed into a retail shopping mall because you cannot afford financing. They tried to “contribute to society” but failed because LARGE CORP is getting all the money for innovation.

    So, a PATENT TROLL is a mythical creature, and is DEROGATORY NAME CALLING created by LARGE CORPORATIONS that can get financing. Large corp would NEVER pay for something they could get away with copying…

  128. Dear anonymoun,

    To promote the
    Progress of Science and useful Arts, by securing for limited Times
    to ————- Authors and Inventors the exclusive Right to their
    respective – Writings and Discoveries;

    Viewed this way, it is soo so obvious, yet soo so obscure; Brilliant!

    Amazing that no one on Patently-O noticed this before, Just amazing!

    Incidentally, obvious, but obscure inventions have always been my favorite.
    That’s what intellectually challenged KSR folk cannot comprehend.

  129. I do not agree with all of this attention focusing on the types of patent holders. I think we are missing the point. There are individual inventors and even little R&D companies who do manufucture items that embody their inventions, but they do contribute to innovation. I am not even opposed to those entities that purchase older patents for the sole purpose of suing companies. I am more concerned with the latter companies being able to completly exploit the system. It seems to me that the problem is that, through certain law firms, these companies can use questionable legal tactics and take some borderline invalid patents, twist the claims around to cover anything under the sun, sue a large coporation, put relatively little work in the beginning (if you have seem some of their claim charts in litigation regarding how some of the accused products infringe – its obvious they aren’t even trying), use the threat of an injunction and a ridiculously large initial damages sum (since they can go back six years), settle for a sum that is slightly less than the cost for the defendant to litigate (still usually at least in the seven figures), and then move on to the next company. I think any patent reform should look at how these entities and their attorneys are able to exploit the system. instead of merely carving exceptions for certain patentees. Ebay and the injuction correction was a good step since I don’t see a reason to give an equitable remedy when the patentee is clearly only seeking a monetary award (this could be considered somewhat of an exception, but I think injunctions should be more in line with the usual standards for equitable remedies which is generally when monetary awards are inadequate). I lke KSR as a start for crappy patents. However, I think we need tougher sanctions for questionable patent infringement filings. I’m not concerned with entities asserting valid, infringed, yet old patents as much as I am with asserting questionably valid patents that really do not cover the product without any fear of retribution since sanctions for that is relatively unheard, yet still be settle for large sums that are a “bargain” since they are comparable to the cost of defending the litigation. I also think we could change the damages provision to actual notice or up to six years only if any product has been marked properly, thus not let non-practicing entities go back six years. I think this gives a non-practicing entity incentive to wait longer to bring a lawsuit to increase their damages, which, is the wrong incentive. I think the incentive should be to give notice to the infringer sooner rather than later.

  130. Dear anonymous,

    As my mentor, Science Office Spock, would say, Fascinating!

  131. Just an ordinary inventor(TM),

    I have a slight correction for you. The point of patents are to “promote the Progress of . . . useful Arts.” Copyrights are to “promote the Progress of Science.” Common day understanding of these words have changed quite a bit since the Constitution was written.

  132. “Quesion from a rookie: Why doesn’t summary judgment weed out bad claims like this? Or is it simply that discovery is necessary (as long as the claim survives Rule 12(b)) and the costs are so large even at that embryonic stage that the defendants find it cheaper to cut and run?”

    You answered your own question, smashmouth. For instance, electronic discovery across a few R&D, sales, and marketing sites for an international company can be very expensive, especially if the plaintiff’s counsel is skilled at raising endless controversies over the production. Although judges appear to be getting a little bolder about summary judgment in patent cases (KSR, in my view, was a clear invitation to district court judges to invalidate patents on summary judgment), but skilled plaintiff’s counsel can often maintain a jury question. In any case, even if you want to publicly spank the plaintiff, your recommendations to the corporation must include the pragmatic alternatives. Notwithstanding the recent travails on Wall Street, corporate managers are generally pretty risk-averse, in my view.

  133. I submit that to completely ignore this work of writing would be a more powerful denunciation of it than is addressing its “substantive” elements.

    The more I think about it, the less I am convinced that the author’s aim was related to the “substance” of the writing. It sounds more like baiting to me.

    And the baiting seems to have worked.

  134. Doesn’t this four point definition cover every large company that (for example) patents two things, practices one, and sues people who practice the other.

    For example, if I am Ford, and I patent two transmissions, and I practice transmission one, and sue to keep people from practicing transmission two (to keep consumers buying my transmission one), then I am a troll? Another academic who attempts to come up with a definition that covers every company.

  135. “The above is ridiculous. Since when is having and expressing an opinion unethical?”

    Leo, are you using an overly literal interpretation of my comment because you are lazy, pedantic, or do you have some other, perhaps more useful, reason for doing so? Worst case of drive-by Internet criticism. Ever.

    –Supporting– the above is shamelessly unethical.

    There. Happy?

  136. Good professor – the Federal Circuit was created because of the last bad economic downturn (in the late 70′s and early 80′s) – why not figure out they did that and why strong patent protection is viewed as a job creator not a job killer?

  137. “One hypothetical that will surely be thrown at me is the individual inventor who tries to commercialize the invention, but fails, and then sues the industry years later. This inventor is a visionary ahead of his time who was merely unlucky. On the other hand, this inventor still contributed nothing useful to society.”

    So, according to the last paragraph, an inventor who tries to commercialize his invention, but fails, is not only “unlucky”, but to add insult to injury, he becomes a troll later when someone else tries to market his invention without taking a license?

    And how can you say that he contributed nothing to society? Someone thought his invention was worth practicing!!!

    And there is simply no basis for your statement that “the industry produced the same technology independently, without copying anything from the patent.” Businesses intelligence and market analysis are highly developed fields nowadays, and patents are a part of that analysis. It is very difficult (nearly impossible, really) for two commercial entities to develop the same thing truly independently, with no knowledge of each other.

    I’m sorry, but your squib does nothing but expose bias, tortured logic, and lack of analytical thinking.

  138. Another suggestion comes to mind in response to this comment:
    “For instance, it seems to me that a few of the cases I’ve seen could have used a little bit of Rule 11 enforcement, but judges appear unwilling to use that tool.”

    Under your hypothetical, it should also be incumbent on the judge to entertain a motion for fee shifting under 35 U.S.C. 285.

  139. The fact that this person holds a teaching position in an institution of higher education is a testament to the deteriorated state of the American academic system as a whole.

    What an embarrassment for all.

  140. Leopold Bloom said:
    “Back in my in-house days, I was on the receiving end of lawsuits based on patents that I would never have dreamed could be asserted against our products, despite 20 years of technical experience. Now I know better.”

    Quesion from a rookie: Why doesn’t summary judgment weed out bad claims like this? Or is it simply that discovery is necessary (as long as the claim survives Rule 12(b)) and the costs are so large even at that embryonic stage that the defendants find it cheaper to cut and run?

  141. “I find it hard to believe that anybody can be ‘ambushed’ when the patent is issued, it is available for anybody to find it. Any prudent manufacturer should investigate whether their new product infringes any patents – including those held by the ‘good trolls’ or practicing entities. As such, if anybody is ambushed, it is their own fault.”

    The problem with this response is that it assumes that the “troll patent” actually reads on the accused product. If it did, then the “prudent manufacturer” you describe might actually have found it. However, if you look below the surface of a number of troll lawsuits, you’ll find that a claim that clearly, or even arguably, reads on an accused product is by no means required to file a lawsuit and collect half-million dollar settlements. (Multiply that by 10 defendants, and you’re talking pretty good money. Multiply that by a few dozencases, and you’re talking private airplanes…) Back in my in-house days, I was on the receiving end of lawsuits based on patents that I would never have dreamed could be asserted against our products, despite 20 years of technical experience. Now I know better.

    I understand that the “troll” rhetoric bothers some honorable people, but I think they are poorly served by pretending there’s no such thing, or that there are no “stick-up” patent lawsuits out there. A more productive response might be to point out that perhaps the problem isn’t quite as big as some make it out to be, or that the problem might be addressed via some very modest litigation-based reforms. For instance, it seems to me that a few of the cases I’ve seen could have used a little bit of Rule 11 enforcement, but judges appear unwilling to use that tool. Ideas that might be worth considering including tweaking venue law a bit, maybe allowing interlocutory appeals of claim construction. These ideas shouldn’t harm legitimately harmed inventors or patent owners, but might reduce the “hold-up” value of an infringement. Just a thought…

    “The above is shamelessly unethical.”

    The above is ridiculous. Since when is having and expressing an opinion unethical?

  142. ‘So what if not all patents “promote the Progress of Science.”’

    . . . Then it is beyond the authority of Congress to authorize the patent grant. It is important to remember that it is the promotion of innovation that forms the actual power grant to Congress in Art. I, Sec. 8 of the Constitution.

    “Congress shall have the power . . . to promote the progress of science and the useful arts . . . .”

    Are “troll patents” unconstitutional? I don’t know if it should go that far but the authority to issue patents does have a Constitutional basis that should not be ignored.

  143. Let’s see – do I trust an accountant who is an IP prof, and Laemley – another prof who I do not think even qualifies to take the patent bar – or do I trust the Chief Judge of the Federal Circuit? I guess I go with Chief Judge Michel who says the good prof is perpetrating myths based on complete abject lack of factual analysis:

    link to cafc.uscourts.gov

    A quote from the judge:
    “How do such myths survive? They are repeated so vociferously so many times,
    they simply become accepted as true despite the absence of support in the form of
    representative examples and statistics. Who perpetuated such claims and why: A dozen
    or two companies, mostly from Silicon Valley or Wall Street, that wanted lower damages
    and litigation costs when they were sued. All claimed that likely litigation results forced
    them to settle for plainly exorbitant amounts. But the University of Houston Law
    School’s examination of all actual jury verdicts in calendar years 05-08 fails to show any
    award against most of those companies, much less exorbitant awards. Two companies
    did suffer large awards, but the markets were large; large size does not prove undue
    size.”

    An another:

    “I suggest we all bear responsibility to assure Congress gets the truth, the whole
    truth, and nothing but the truth; as the common cliché puts it: “everyone is entitled to
    their own opinion, but not their own facts.” Once the full facts are presented, both
    Congress and courts can do their respective parts to make necessary improvements,
    but still do no harm. I, for one, place great hope in all of you informing the Congress and
    the Federal Circuit, both directly and through on-going proceedings in the Federal Trade
    Commission.”

    NOW – ALL YOU SLEEPING PRACTITIONERS! WE NEED THE SAME FORCEFUL ATTACK ON THIS STUPIDITY AND THE PATENT REFORM IT IS DRIVING THAT WE HAD FOR GSK!!! GET TO WORK!!! CALL YOUR CONGRESSMAN AND SENATORS AND DEFEAT THE PATENT TROLL MYTH AND THE “REFORM” IT IS DRIVING!!!!

  144. I’d like to see what the VC’s would do when presented with the scenario of investing in a great new start-up without the security of IP.

    If non-practicing entities can’t enforce IP, irrespective of where it came from or who owns it, there is no value left to the remaining IP and no investor will take the risk of investing in an environment where anyone can steal ideas.

    Let’s see where that leaves us.

  145. Even if a patent “gathers dust” in the patent office it is likely to be used as a piece of prior art by patent examiners to reject future patent applications (provided that it includes a truly novel, nonobvious teaching). This has the effect of raising the bar of innovation on the future patent applicants attempting to claim the same idea and provides incentive for the future patent applicants to work around the patent which is “gathering dust” once they find out that their patent application is rejected by the dust collecting patent. If work arounds are possible this may result in even better (or at least more diverse) solutions and thus such dust-collecting patents can indirectly promote innovation even if the disclosed technology is never developed.

    On an unrelated note information on licensing my patented technology related to memristor crossbars is available at link to knol.google.com

  146. Patent Troll, defn: pejorative term, a largely mythical creature, a sub species of homo bogeyus, not unlike Goldstein in 1984, a propaganda tool, against which prejudice is raised and at which invective is hurled, without an examination of whether an underlying factual basis actually exists. The most famous “trolls” at which those in favor of destructive patent reform point, can be counted on the fingers of two hands, have patents (a very small number when taken over a total of more than 7 million issued cases) that almost invariably should not have issued, and would not have issued had they been examined properly in the first place under the existing law. Used to justify extremist positions in favor of gutting US Patent law, most often by people who have no idea what they are talking about.

  147. “On the other hand, this inventor still contributed nothing useful to society. It is worth emphasizing the fact that, by my hypothetical, the industry produced the same technology independently, without copying anything from the patent.”

    The above is shamelessly unethical.

    Analogy:

    -Here is your civil service award for saving someone’s life

    -(2 years later) Give us back that award because someone on the other side of the country just saved someone’s life and it’s not so special anymore.

    Give me a break.

  148. Imperfect knowledge yields imperfect analysis.

    His undergrad was in accounting and finance and he practiced as an associate in a business litigation firm.

    Do you think he’s been around inventors? Do you think he has been in an environment where R&D takes place? Do you think he understands the economics of taking a patentable idea and taking it to market?

    Really, when you are atop the ivory tower, it is difficult to understand the trials and tribulations of the little people.

    So don’t blame Chiang for his opinion, he cannot help it if his knowledge base is a little imperfect.

  149. Think about this smart professor – think of all those patents protecting all those research jobs and all those new products. Let’s get our heads out of academia and really think about the implications of misguided, and small minded posts such as this:

    “In the U.S., a typical ratio of research and development for an industrial company is about 3.5% of revenues. A high technology company such as a computer manufacturer might spend 7%. Although Allergan (a biotech company) tops the spending table 43.4% investment, anything over 15% is remarkable and usually gains a reputation for being a high technology company. Companies in this category include pharmaceutical companies such as Merck & Co. (14.1%) or Novartis (15.1%), and engineering companies like Ericsson (24.9%).[2]”

    You really want to risk this? You really think patents don’t protect true innovation?

  150. “The patent itself contributes nothing useful to society, in so far as the people who actually make anything useful would have done it equally in the absence of the patent.”

    Makes your analysis SO MUCH EASIER when you assume that somebody else would have come up with the idea.

    If somebody else “would have done it equally in the absence of the patent,” why should we grant a patent in the first place?

    The original bargain is the person who publicly discloses the idea obtains the patent, not the person who practices the idea obtains the patent.

    In some industries, it is just impractical for anybody other than the current market entrants to practice the invention. Should economic barriers to entry preclude obtaining a patent in that particular industry?

    “But a patent owner who sits in wait to ambush an industry later, with a patent that does nothing otherwise except gather dust, is a troll.”
    I find it hard to believe that anybody can be ‘ambushed’ when the patent is issued, it is available for anybody to find it. Any prudent manufacturer should investigate whether their new product infringes any patents – including those held by the “good trolls” or practicing entities. As such, if anybody is ambushed, it is their own fault.

    “This inventor is a visionary ahead of his time who was merely unlucky. On the other hand, this inventor still contributed nothing useful to society.”
    So says you. Many people would vehemently disagree. If I found the key that unlocked commercially viable fusion power, but I didn’t have the 10 billion needed to commercialize it, I would still expect the Nobel prize in physics to come my way. In such a situation, I think I would have contributed something useful to society.

  151. Dear Professor Crouch,

    Re: “Your troll patents may only be hidden because no one has looked for them or because they were ignored.”

    How true. I’ll add to your insightful comment if I may.

    From a professional independent inventor’s view, a big problem is international corporate arrogance. Not that I have specific experience with Google or Cisco, by companies such as those in the Coalition for Patent Fairness routinely tell inventors whose patents they are infringing, when they are offered a reasonable license, to:

    “pss off, we don’t need no dam license from you, you are too little to sue us, and if you do sue, we can out litigate you till you drop dead – cause nobody likes independent inventors anymore – haven’t you been listening to our incessant successful ‘troll propaganda lobbying ’ for years?”

  152. Folks like this seem to miss that patents have been around since the Greek city states to promote innovation – and their is a huge weight on the other side of the scale as patents protect actual products and actual jobs. There are not many patent trolls, patents are hard to assert and win, and a few trolls are the cost to the system of protecting the gigantic R and D investments in this country.

    Let’s not throw the baby out with the bathwater – the Leahy bill’s damages provision will hasten this downturn, hurt this country, and cost real jobs. Is it worth that to get rid of a few trolls?

  153. In a world of growing unemployment, isn’t keeping patent professionals, including all those at the patent office, gainfully employed, worthwhile in and of itself?

    So what if not all patents “promote the Progress of Science.” Even those patents provide gainful employment. So do cigarette factories. Which does society more harm?

    If companies like international pirate companies like Google, Cisco and others in the abomination called Coalition for Patent Fairness don’t like independent innovation to threaten them, let them managed the patent landscape as IBM has done for many decades – beat the independent inventors to the punch, invent all kinds of stuff before independent inventors do. Now that approach promotes “the Progress of Science.”

    I say, get a life, live and let live.

  154. TJ, Thank you for this post. However, I think that you miss a few issues.

    Patents are necessarily considered in a dynamic marketplace – patents involve new products and methods and only become valuable when the old ways are displaced by a shifting market.

    It is important to consider the incentive role of patents. The point of protecting patents today is to provide an incentive for future developments. By cutting out classes of inventions that could be protected, you may well be cutting the incentive for beneficial innovations.

    In most areas of business, patents are not necessary for a successful new product launch. The first entrant will have a strong market position, and trademark-type rights may be sufficient to retain the position. In those markets, I like to think of patent rights as something more like insurance. Patents are a way for the innovation to pay-off when the patentee is unable to lead in the marketplace. This insurance helps provide the incentive to innovate in the first place.

    You implied that secret innovation that failed in the marketplace is worthless. I would challenge that notion, and will write more about why in a future post. One idea to consider here is the currently popular notion of Edison’s multiple failures leading to eventual success.

    Finally, the troll label places the blame on the patent holder for not informing the world of the patent rights. Of course, information flow requires two parties, and both the speaker and listener must be active. Your troll patents may only be hidden because no one has looked for them or because they were ignored.

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