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:
- Is owned by someone that does not practice the invention.
- Is infringed by, and asserted against, non-copiers exclusively or almost exclusively. By copying I mean any kind of derivation, not just slavish replication.
- Has no licensees practicing the particular patented invention except for defendants in (2) who took licenses as settlement.
- 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.
“…reasoning gets worse and worse and worse with every million patents issued.”
If you (and yours) would only do your job and not expend so much effort and resources trying to ursurp what the Law should be, why we would have patents that meet the Law (for example, 112) and would be beneficial.
Or would you like to comment on the professed standpoint of companies telling their employees NOT to look at patents and what is out there – exactly in line with the “I-didn’t-know” defense?
Better yet, hold your inane comments and just do your job – apply the full Law, leave your version at the curb.
6’s “reasoning” gets worse and worse with every post. Isn’t there a BigGulp somewhere with your name on it?
I should add that the whole “well you could have gone and looked at the patent and then there would have been a benefit” reasoning gets worse and worse and worse with every million patents issued.
Idk man, but it seems perfectly reasonable in this age to give an independent inventor defense. If people aren’t using patents to gain knowledge (i.e. blatantly taking the patentees work) then where is the benefit to society? There really isn’t one. I’ve read J’s tapir lighting, but I don’t think I made it all the way through Madison’s Memo, if that was the work by him that I was reading. Most of what he says is ridiculous at best and I was glad to have Jeff fight his ridiculousness tooth and nail.
JD says: Lie 2790, lol next.
Mr. “6” (and any others who may be interested),
Mr. Chiang is not too subtly trying to lead people down a primrose path that includes, inter alia, recent “research” examining “independent invention” versus “copying” (the “soup de jour” for a few academics).
See, e.g.:
link to papers.ssrn.com
It is easy to get people riled up by using the pejorative term “troll”, but what is at play is an issue much broader than mere “trolls”. It is an effort by some academics to establish a beach head that an “independent inventor” defense is a “must have” within the body of patent law.
What I find quite interesting about efforts such as displayed here is that they stand in stark contrast to the views of Messrs. Madison and Jefferson. While most here are likely aware of Mr. Jefferson’s oft recited letter concerning monopolies (the “tapir-lighting” one), I wonder how many are aware of Mr. Madison’s Detached Memorandum and his discussion of monopolies, patents, and later inventors?
2790-0.
Next.
LOL
“I’m getting ready to retire undefeated.”
Bull crp. Or did you stack the deck in your favor by discounting any loses through some mechanism such as not counting having to file an RCE after having refused to amend initially?
Slone, about the journals, what are you talking about? People talk about the patents collecting dust because people are “supposed” to be concerned about them for fear of infringment and to have learned from them. Nobody cares if a journal article collects dust because nobody necessarily has any incentive to care about it except maybe the author.
curious: because it isn’t trying to gather damages from others actually using the patent? Are you unfamiliar with the tale of the troll that spawned the word?
“I’m getting ready to retire undefeated.”
Bull. Or did you stack the deck in your favor by discounting any loses through some mechanism such as not counting having to file an RCE after having refused to amend initially?
Slone, about the journals, what are you talking about? People talk about the patents collecting dust because people are “supposed” to be concerned about them for fear of infringment and to have learned from them. Nobody cares if a journal article collects dust because nobody necessarily has any incentive to care about it except maybe the author.
is a corporation that obtains a patent only for defensive, possible cross licensing purposes, a so-called “troll”?
If not, why not?
I think Mr. Slonecker, who I know is a silent pair of eyes at PatentlyO, just hit one out to the upper deck.
Bravo.
We all know that professional journal articles written by professors are dust-repellant.
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?
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.
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.
“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.
“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.
“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.
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”?
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
“if you are incredibly self-absorbed, you may have difficulty appreciating the distinction.”
“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.
“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.
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.
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.
“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.
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.
“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.
“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.
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.
“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
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???
“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.
“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.
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.
Speaking of trolls, the CAFC finally came out with In re Ferguson. Scott Harris was slammed rather forcefully. And no, a paradigm is not patentable.
link to cafc.uscourts.gov
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.
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.
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).
“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.”
“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
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.
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.
and gd it typepad spamfilter caught another post.
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.
“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.
“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.
“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.
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?
“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.
“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.
“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.
“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.
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.
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.
“”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.
“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.
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.”
Thank you Mr. Lewis; You have brought tears to my eyes.
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
“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.
“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.
How does one “…withheld his patent…”?
Patents are published and cannot be “withheld”.
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.
“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?
“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.
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
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.
“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.
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.
“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.
“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?
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.
“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.
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.
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.
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.
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.
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.
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.
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.
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.