Judge Rader on Judging (An Interview with Gene Quinn)

In six weeks or so, Judge Randall R. Rader will take-over as Chief Judge of the Court of Appeals for the Federal Circuit. Gene Quinn recently sat-down with Judge Rader to discuss the Federal Circuit and his new role as Chief Judge. Gene has published the entire interview here. The content of the interview is interesting as is the fact that Judge Rader was willing to sit-down to record an unscripted give and take with Gene (a blogger and avid critic).

I have posted a few excerpts below:

On the Process of Deciding Cases:

Quinn: [Question about deliberations.] 

Judge Rader ("Rader"): When we come off of the bench we immediately sit down as a panel of 3 and convene our conference. The junior Judge most always speaks first, and we do that for two reasons. One is to ensure a kind of judicial independence. The junior Judge cannot defer to the more experienced senior Judges, but must prepare his or her own independent opinion, which will be presented first in an oral fashion. And there is another reason for it, and that is if the first Judge and the second Judge differ then the presiding Judge can kind of rock back in his or her chair and listen, let the two Judges represent the case and receive the benefits of that revisitation of the issues before making a decision that will decide the outcome of the case.

. . . We do not discuss the cases in advance. Now, I've worked with everyone on this Court for many years and I generally predict with some degree of accuracy how they are going to vote. So I will often predict when we will have a split, but I am not always accurate on that. The conference is when we really decide and we discuss and come to a resolution. The second order of business, after we have discussed the outcome, is to decide how to resolve it. We decide whether to issue a simple Rule 36 affirmance, which is a standard 1-page order that affirms on the basis of the judgment below. The second way of dealing with it is a non-precedential opinion, which is a short 5 page opinion written solely for the benefit of the parties that is not binding on the Court in the future. Then there is the standard precedential legal opinion that you see regularly and discuss and which you see in case books. By the way, I think we tend to do about one-third of each; one-third of summary affirmance, one-third of non-precedential opinions and one-third of full-blown precedential opinions.

After we have decided the outcome and how we are going to decide it, then we assign the opinion. The senior Judge in the majority assigns the case. If the Court has been unanimous in the outcome then it is the presiding Judge making the assignment. Usually the assignment is not a very formal process. Usually it is kind of a volunteers-accepted situation where Judges speak up and say "I'll take that one," and we distribute the cases amongst ourselves. But then in other instances the presiding Judge may have a preference. He or she usually gets to speak first and will pick those cases the presiding Judge wishes to author and then assigns the other cases to the remaining Judges.

At that point by the way, you started talking about dissenting, it's at that point that the Judge who has voted against the outcome would express whether they are going to write a dissent and that is always good notice to have.

The difference in writing a dissent is very clear. Take a look at my dissents versus majority opinions. And that is probably true of any other Judge as well. When you are writing a dissent you don't have to discipline yourself to be as clear, concise and brief in discussing the Court's precedents and the Court's law. You are able to say pretty much what you want in the way you want. It becomes more colorful, more metaphors, more analogies, more fun. [laughter]

Quinn: [Question about audience for dissenting opinions.]

Rader: Dissents tend to have two or three audiences. One audience is, of course, the Supreme Court, if it is a case of sufficient importance that the Court might take it. For instance, in Bilski I figured I was writing for the Supreme Court. A dissent is also written to other members of the Court. I have had a pleasant experience several times of writing a dissent that became the majority because it was written with enough impact to cause one of the other Judges to change their vote. That happened just recently in one of my opinions. One of the Judges initially voted one way, read the dissent and it was strong enough to convince that Judge to change his vote and became a part of the majority. So that is another audience. You usually know when there is a chance of changing someone, so you write with that audience in mind. More often the audience is the bar and practitioners in general and your idea is to preserve what you think is the wiser course of action and present it in a way that may come back to the Court in another time and another case and may perhaps become in the future a majority. I've had that happen on occasion as well.

On Trial Experience for Appellate Judges

Quinn: [Question about the value of appellate judges occasionally hearing jury trials in patent cases.]

Rader: I think particularly other members of the Federal Circuit would benefit from that experience. . . . The job of an appellate Judge is to review a record for reversible error; to correct errors. In order to correct errors based on a record you need to understand the challenges of making a record, you need to understand the challenges of administering a trial and narrowing issues. As an example, I see very often in appellate practice where the losing case will seize on some minor issue and try and elevate that to an issue of great importance before the Court of Appeals when in fact all of the parties had dismissed it as of marginal significance when before the trial court. So the Appellate Court ends up considering and making decisions on something which was only marginally considered by the court below.

It strikes me that we ought to be reviewing the decisions that were made below. We should not allow parties to present to us as if they were major decisions, things that were part of the narrowing exercise, which a trial court must necessarily do. The value of sitting as a trial judge is you can recognize this. When you have done it yourself you know what a challenge it is to narrow issues and have developed a record that reflects your accurate decisions.

 [Aside: Gene Quinn asked me to take-down most of my excerpts of the interview and I have done so.]

188 thoughts on “Judge Rader on Judging (An Interview with Gene Quinn)

  1. “That is, in the instant case, we could acheive the same argument applying by the applicant having claimed:

    A method comprising:
    baking a cake;
    placing icing on the entire top of the cake;
    removing icing to form a human face shape in the middle of the cake; and
    not performing a second step to remove icing from the edge of the cake.”

    That’s not what the applicant claimed. You’d be better off examining the claim that was actually presented, instead of re-interpreting it and then trying to apply the prior art.

  2. “Just because the reference only mentions one removal step doesn’t mean the method of the prior art reference NECESSARILY includes one and only one step.”

    Ok, now we’re getting somewhere. Alright, if that be true, where, prey tell, does the other reference mention this hypothetical other step? The answer is: nowhere.

    So, this has in essence all boiled down to the ol’ “but the reference doesn’t specifically say there isn’t another step so there could be another step” argument which frequently arises when someone uses a negative limitation to preclude prior art that shows exactly what they showed in their application except they specifically noted that the second step doesn’t take place in their method.

    That is, in the instant case, we could acheive the same argument applying by the applicant having claimed:

    A method comprising:
    baking a cake;
    placing icing on the entire top of the cake;
    removing icing to form a human face shape in the middle of the cake; and
    not performing a second step to remove icing from the edge of the cake.

    The same argument can be made for this claim as can be made for the actual claim above. It relies on the same “but the reference doesn’t explicitly say that there is no second step” to preclude anticipation. This argument is bogus in both situations.

    To demonstrate, were this argument to be proper and to hold weight then it would make a mockery of the entirety of method claims. All one would need to do is find an old, valuable method patent, add in the non-step of “not going to the moon” or “not punching someone in the face” and wallah, you have precluded anticipation of your new application based on the old patent (hopefully you picked a valuable one) and so long as you can avoid 103 (pretty ez really) you can now sue all infringers of the other, hopefully valuable patent, except of course for those people who go to the moon while baking a cake.

    This sort of nonsense cannot stand.

    I note that more importantly than the above is the fact that it is at least implicit that at least one disclosed embodiment in the reference includes not performing more steps in between the related steps. That goes double in view of the fact that it is explicitly laid out.

  3. “What about the explicit/implicit features of the method step at issue that would/must have occured to have formed the human face in the reference as a result of the one removal step?”

    “The only icing removal step stated in the reference was the one mentioned already.”

    Just because the reference only mentions one removal step doesn’t mean the method of the prior art reference NECESSARILY includes one and only one step.

  4. What in the world would make you think I work in semiconductor processing? They don’t bake cakes do they?

    They deal mostly in wafers, I think.

  5. “6, we all figured out you are in the semiconductor process (AKA cake baking) art unit a long time ago.”

    Broje, not a few months ago I was supposedly Mr. Johnson? from pre-examination processing. What in the world would make you think I work in semiconductor processing? They don’t bake cakes do they? Either way, I wouldn’t put all my eggs in either of those baskets if I were you.

    “I know who you are.”

    You and plenty of others. Like I told you guys, I haven’t been really anon to anyone who’s anyone for quite some time.

    In any case, let’s hear opinions about the claims foos.

  6. ******
    I risk giving away what AU I’m in just by providing the hypo
    ******

    6, we all figured out you are in the semiconductor process (AKA cake baking) art unit a long time ago.

  7. Well let’s be clear ping, my hypo is astonishingly close to the actual claim and the situation in the reference. Like, a mirror image. In fact this is so much so that I risk giving away what AU I’m in just by providing the hypo. So, if the hypo seems fishy, so would the actual case.

    “Because the claim is to a method (not to the end result of the method), and the method is different (explicit or implicit result is a red herring).”

    I’m not really talking about any implicit result. What about the explicit/implicit features of the method step at issue that would/must have occured to have formed the human face in the reference as a result of the one removal step?

  8. 6,

    Your hypo seems a little fishy.

    Any particular reason as to why?

    Because the claim is to a method (not to the end result of the method), and the method is different (explicit or implicit result is a red herring).

    I do see a parallel with pbp, especially with the yummy inherency icing.

    Can I have a piece of the red herring cake?

  9. “6, I have a question. Was the feature “simultaneously” explicit in the app as filed, or did Applicant add it during prosecution? If the latter, does the amended claim meet the “written description” requirement?”

    The claim is definitely an amended one, but I don’t remember off hand if simultaneous was in the spec. I do know it wasn’t in the original claims.

    Let’s assume it meets WD max.

  10. I know someone that was told they could only have 3 drawings in their Application. That is all that was allowed. Why even their Search showed only three drawings. They were even told which ones to draw.

  11. 6, I have a question. Was the feature “simultaneously” explicit in the app as filed, or did Applicant add it during prosecution? If the latter, does the amended claim meet the “written description” requirement?

  12. which word?
    any word?
    The word?

    Who supplies the art?

    Trick question! pong may feel that only the examiner supplies the art. But my man IANAE is sly and knows that even after the examiner has doen his bit that others can also supply the art (if the patent is challenged in court).

    IANAE is right again. People have got to learn to listen.

  13. “I’ve read it. It says ‘unless’, not ‘unless the examiner says that’.”

    A distinction without a difference.

  14. You may want to read the first sentence of section 102 again.

    I’ve read it. It says “unless”, not “unless the examiner says that”.

  15. “No you won’t. You’ll argue that his rejection is wrong, which isn’t the same thing.”

    Yes it is.

    “You don’t need 6′s help to argue that the invention isn’t anticipated. All you need is the claim and the art.”

    You may want to read the first sentence of section 102 again. Or maybe for the first time.

  16. When I see this rejection from 6 explaining how the prior art discloses the identical invention claimed, I will.

    No you won’t. You’ll argue that his rejection is wrong, which isn’t the same thing.

    You don’t need 6′s help to argue that the invention isn’t anticipated. All you need is the claim and the art.

  17. “Your job is to argue that it isn’t, not to baldly state that it isn’t.”

    When I see this rejection from 6 explaining how the prior art discloses the identical invention claimed, I will.

  18. After reading 6′s posts on “comprising” in PBP claims, it is clear that no specific product is covered by such a claim. Under these circumstances, I would agree that one would have to employ the steps in the process to infringe.

    Again, I cite the words of Lourie, PBP claims do not readily admit of general rules.

  19. Because it’s my job to argue that it isn’t.

    Your job is to argue that it isn’t, not to baldly state that it isn’t.

    Also, if it turns out that it is, your job is to rewrite it so it isn’t.

  20. ping, EG, IANAE, et al, on the “enablement” vs. DOE issue, please consider Westinghouse v. Boyden Power Brake Co.
    link to supreme.justia.com. This case is the case that originated the rule of construction that is not enacted as Section 112, p. 6.

    But what was this case about? It was about two train brakes that accomplished the same thing but with substantially different means. The accused brake was invented independently of the patented brake, and was not an artful knockoff as in Winans v. Denmead, the first DOE case.

    The Supreme Court held the later independent invention of another who accomplished the same result as the disclosed brake was not an “equivalent” and therefor not an infringement.

    What are we to learn from comparing and contrasting Winans and Westinghouse? That to be an equivalent, the accused device, if invented later, cannot accomplish the same function in a substantially different way.

    Circling back to “enablement,” I would think this is also part of the thinking of the Supreme Court. If the later invention did not use any part of the same means disclosed, clearly the later invention was not enabled by the disclosure.

    Anywho, I hope this helps the conversation.

  21. A couple of comments from earlier this week:

    “As far as I’m concerned, what SCOTUS generally says about patent law is intellectual drivel and rhetorical nonsense. I agree that the Federal Circuit doesn’t always get it right, but they at least try to grapple with the patent statutes which SCOTUS gives, at best, lip service to. They were also the court intended by Congress back in 1982 when the Federal Circuit was created to be the keeper of patent law jurisprudence, not SCOTUS. In fact, up until 2007, SCOTUS appeared to recognize that was the intention. I frankly grow weary of the unhelpful upheavel and chaos SCOTUS has created in its wake and the collateral damage they’ve caused in our area of the law.

    Posted by: EG | Apr 14, 2010 at 10:33 AM

    “I generally agree with the Supreme Court”

    And you dislike Rader,

    Ned, I just sent my cancellation notice to the president of your fan club.

    Posted by: RWA | Apr 14, 2010 at 10:36 AM”

    The Supreme Court has been developing the patent law in the United States for 200 years. Our system works well because of their decisions and not because of anything else, IMHO. Now, I do agree that certain decisions seem wrong, e.g., Mercoid and Benson, these are aberrations and history has shown that they can and will be corrected. (I have some wishful thinking here regarding Benson.)

    With this in mind, the 1952 Patent Act was intended to codify Supreme Court case law. To the extent the Federal Circuit or any other circuit court has strayed from pre-1952 precedent, the Supreme Court can and will bring the law back into alignment. I think the opiners here think the Supreme Court is deviated from the ’52 Act, they have it backwards.

    As to the Federal Circuit, it was created to end forum shopping and also to integrate appeals from the patent office with appeals from the district courts. It has been successful in both, but at a cost that may be the result of the Federal Circuits own rule that a first panel decision on a topic becomes the law that must be followed by subsequent panels. What this seems to incent is for judges to write more broadly than necessary to decide the case before them. This, IMHO, has distorted the development of patent law to a great degree.

    Back to the Supreme Court, their decisions are not drivel. They are generally well reasoned and well thought out. Supreme Court cases are generally well briefed and are supported by well drafted and reasoned amicus briefs. When they decide an issue, they have the best legal thinking and arguments in the country to consider. Their decisions, as a result, are generally right.

  22. The scope as written by our founding fathers was all-inclusive. The Courts have only served to narrow the scope.

    And with that bit of patent teabaggery, the thread is now officially dead.

  23. “Is that because you’re believing that it is a claim I’m using to anticipate or because you feel the subject matter does not anticipate?”

    The latter.

  24. “Who cares what the claim of the reference recites? What does the reference disclose?”

    I was very careful to not state that it claimed that, I just put what it disclosed in claim format.

    “Not.”

    Is that because you’re believing that it is a claim I’m using to anticipate or because you feel the subject matter does not anticipate?

  25. expanded the scope of patentability“.

    No cases expanded the scope of patentability. None.

    The scope as written by our founding fathers was all-inclusive. The Courts have only served to narrow the scope. Now if you count the un-narrowing of a previously court-narrowed scope, that would be technically “expanding”, but not in the overall philosophical sense.

    Or is that (C)ents?

  26. “A method in an asserted 102b reference comprises baking a cake;
    placing icing all over the top of the cake; removing icing from the cake to form the shape of a human face; (and in a later figure you can clearly see that all the icing around the edges has been removed, only the human face shape remains on the cake). The only icing removal step stated in the reference was the one mentioned already.”

    Who cares what the claim of the reference recites? What does the reference disclose?

    You’re examining the claim of the application. The issue you need to be concerned with is whether the reference discloses the identical invention of the claim you are examining, not whether a claim of your reference “anticipates” the claim you are examining.

    Do you really not get that?

  27. EG That’s pretty strong evidence that SCOTUS doesn’t like patents and tolerates them only to the extent it has to.

    No. The cases I cited weigh strongly against your theory as they expanded the scope of patentability far more than any of the cases you cited restrict it.

  28. In other words, you can’t talk about DOE without PHE, and vice versa.

    Sometimes you can. Your complaint is that DOE equivalents make the claim too broad, because they extend the claim to non-enabled (and by logical extension, to non-written-described) matter. PHE only narrows the scope of equivalents, and you appear to understand that. The (in your opinion) undue breadth of DOE is therefore completely unrelated to PHE, because PHE never broadens a claim, and you have the same issue in cases where PHE does not apply.

    Sure, if you had your way, PHE would happen to cancel out the perceived 112 problem in cases where PHE applies, but it wouldn’t resolve the fundamental issue that you think DOE makes claims broader than the specification supports.

  29. Repost

    Let me go ahead and get your opinion, or anyone else’s, on one other thing, if you don’t mind taking a moment.

    A method in an asserted 102b reference comprises baking a cake;
    placing icing all over the top of the cake; removing icing from the cake to form the shape of a human face; (and in a later figure you can clearly see that all the icing around the edges has been removed, only the human face shape remains on the cake). The only icing removal step stated in the reference was the one mentioned already.

    Applicant comes in with an admission of prior art in their background. It states that as their admitted prior art there is:

    a method comprising: backing a cake; placing icing all over the top of the cake; removing icing from the top of the cake such that a human face shape is formed in the middle and a ring of icing is left around the edge of the cake; removing the ring of icing around the cake in a second removal step; and plainly only the human face shape remains.

    Applicant then submits as his claim:

    A method comprising:
    baking a cake;
    placing icing on the entire top of the cake;
    forming a human face shape in the middle of the cake simultaneously with removing the icing from the edge of the cake.

    Anticipation by 102b or not sir? Furthermore, would you classify the anticipation as being implicitly or explicitly?

    Assume that we don’t care about 103 at the moment.

  30. “I don’t know why you keep bringing up PHE, because this issue has nothing to do with PHE.”

    IANAE,

    Because PHE is one side of the same coin with DOE being the other side. If you flip to the PHE side of the coin, you can’t see DOE side (i.e., DOE doesn’t exist for the claim that is subject to PHE). In other words, you can’t talk about DOE without PHE, and vice versa. They’re inseparably linked, and when one is in play, the other is not. That’s why I use the coin analogy.

  31. the concept of “unforseeable” equivalents avoiding PHE epoused by SCOTUS in Festo is inconsistent and incongruent with what 35 USC 112, first and sixth paragraphs require of the applicant, namely that you must enable that which you claim and cover.

    I don’t know why you keep bringing up PHE, because this issue has nothing to do with PHE.

    Equivalents are pretty much always things you didn’t written-describe, and often things you didn’t enable. Because they’re not within the literal scope of the claim and therefore not likely in the spec. Whether PHE applies or not, equivalents will extend the scope of the claim outside of the range that 112 support can sustain.

    If you don’t like the fact that equivalents take the claim outside 112, you don’t like the Doctrine of Equivalents. Full stop.

  32. sarah,

    you of all people should realize the prerogative of being one’s own lexiconagrapher.

    Blimey as a noun is my derivative for a (somewhat) negative Brit and the purposeful mixture of “limey” (as a Brit) and “gawd blimey” (which you can dakota as slang for “oh my goodness”! or as sometimes abbreviated to “blimey”. It should be noted that this is not as offensive as “bloody hell”, because I simply do not take Maxie so seriously).

    Pong – well played (in fact, I would call that a smash).

  33. ping – “You of all people should realize that anticipation cannot be done with a mixed statutory class – product v. method. A prior art claim to a method can only anticipate a method. Method claims do not anticipate product claims.”

    6- “Nor have I ever had anyone argue this point before me.”

    That’s because ping’s “point” is bullsh!t. It’s meaningless drivel. Prior art claims don’t “anticipate” claims being examined. What a prior art reference claims is totally irrelevant to the question of anticipation.

  34. “Do you honestly believe that the Court doesn’t address the “innovation promoting” role of patents in those decisions?”

    Malcolm, Malcolm. Let’s face it, we see this issue differently. SCOTUS, at best, gives lip service to the “innovation promotion” concept of the Patent Clause. Look at the SCOTUS case holdings in the patent area since 1950 that deal strictly with patent validity: one case (U.S. v. Adams) upholding validity, at least 5 cases holding patents invalid (and overturning appellate court decisions of validity), and absolutely NO CASES overturning lower court rulings of invalidity. Relying upon “cert denials” is also a pretty feeble reed, especially when SCOTUS has NEVER, at least since 1950, overturned ANY invaldity rulings, has affirmed only ONE validity ruling, and has overturned at least FIVE appellated court validity rulings. That’s pretty strong evidence that SCOTUS doesn’t like patents and tolerates them only to the extent it has to.

    Admittedly, not all of the current SCOTUS Justices have shown bias against patents. For example, Thomas seems to be fairly neutrual on patents. I’m still trying to figure out where the Chief Justice stands, and there’s no info on Sotomayor who is at least IP savvy, so there’s hope in her case for patent-fairness. But Kennedy, Stevens (for the most part), Scalia (an admittedly conservative Justice, so this isn’t just a “liberal v. conservative” thing), Ginsburg, Alito (based on what I read in his concurrence in Microsoft v. AT&T), and especially Breyer are openly hostile in what they say in their opinions about patents. If you read what these last 6 Justices say about patents, the lack of impartiality on patents just jumps out. In fact, it reminds me of the virulent hostility to patent rights during the 70′s with the Warren Court.

    It’s also OK for us to agree to disagree on this issue. And thanks for the debate Malcolm.

  35. Maxie,

    Sorted. End of story.

    just like the EP can do with adopting to the “Gold Standard of the US Provisional practice.

    6,

    They’re simply mixing stat classes like they’re always doing

    Amen – a very very bad thing to do, eh Malcolm?

    or 3. you find nothing much of interest and allow it.

    lolz – only in the new Kappos reject-really-isn’t-quality era (wink wink).

    but that’s the ugly truth.

    Now 6, really going on like this about Malcolm isn’t nice. I know he’s thrown you under the bus on more than one occasion (and you are not even a blimey to boot), but still, can we not just get along?

    it means “air quotes” “comprising”

    lolz – just like lawlol. Or maybe the fact that what is not stated in a comprising claim cannot change what is stated…

    back to Maxie,

    I’m interested to apply EPO examining techniques to it.

    oh joy, more nonsense mixing of “universal” patent law.

  36. IANAE,

    I see your point, but I simply don’t agree with it. As far as I’m concerned the concept of “unforseeable” equivalents avoiding PHE epoused by SCOTUS in Festo is inconsistent and incongruent with what 35 USC 112, first and sixth paragraphs require of the applicant, namely that you must enable that which you claim and cover. To allow PHE to be dodged because you didn’t describe it and had no concept of how to describe it (because it was “unforseeable” at the time the application was filed) is just plan bizarre. Moreover, the Federal Circuit has yet, to my knowledge, to find in favor of a patentee dodging PHE based on this “unforseeable” equivalent, and probably never will for the very reasons I state. I would also suggest (again) that we simply agree to disagree and leave it at that. In fact, we’ve completely digressed from my main point, which is that SCOTUS is not the place to find good expositions on what patent law is or should be. But thanks for the debate nonetheless.

  37. 6, where do I find your “cake” claim? Or will you repeat it here? I’m interested to apply EPO examining techniques to it.

    And thanks for your tales of life at the coalface. You write of incompetent patent attorneys and, in so doing, use the word “few”. Do I see it right, that the vast majority are competent but that the “few” incompetent ones annoy you disproportionately heavily.

  38. “You’ll have to remind me what your AU is”

    Sht did I forget to mention that? My bad.

    “although I realize that others use them as well, for reasons that are even more stupefying”

    Mainly they use them because they’re too stupd to write a real claim and don’t even realize they’re writing a pbp claim. They’re simply mixing stat classes like they’re always doing but they just happen to get lucky and they’re mixing product and process which happen to be an exception to the normal mixing taboo. 99% of the time or more that’s the case. At least in my unit.

    You call them on the phone and tell them that it’s a pbp claim and the first thing they say is: “Osht, mah bad, how should I amend it?”. Then I look down and think to myself: “who would hire this mor on, or his firm?”

    “I think treating them *only* as product claims is a big mistake on the PTO’s part, and a huge one. ”

    Ya got to, or else even bigger problems arise. Trust me, it’s probably for the best.

    “How do you search a composition that isn’t described?”

    Generally speaking examination proceeds in one of three ways: 1. you find the same product as is described structurally being made by the same process or 2. you find the product (so far as has been described) made by another process and you then call the attorney and say “hey, these two products seem to be the same, would you like to clue me in about what “one of ordinary skill” would recognize as being different?” or 3. you find nothing much of interest and allow it. Occasionally you’ll make a combination, but generally the big 3 when it comes to pbp because they tend to make the product part read all over the prior art, so they’re 102′s for that part ez.

    When 2 happens and you’re talking to the attorney he says: “oh, hmmm, let me get back to you” then he calls you back and says “we (him and the client) can’t think of anything that would be different, or recognized as such. I didn’t write this claim and what was supposed to have probably happened was [we were supposed to write a decent claim]. [MAH BAD]“. Then they want to know what they should do to put it into condition for allowance. Wuuu Teee Efff? Submit plainly anticipated claim and then ask what to do to put it into condition for allowance? Mhhhmmmmm. I see. I think I should get paid whatever they’re getting paid to write the claims. Heck, mine are even decent, directed to one stat category.

    Maybe that was more than you wanted to know, but that’s the ugly truth. And yes, this has happened more than a few times.

    “And if the claim recites only comprising language, then how do you account for all compositions encompassed by the scope of the claim that are not shown in the specification (i.e., all the compositions that can be obtained by adding additional steps to those that are recited)?”

    There are two schools of thought on this that I’m aware of. One, that the “comprising” doesn’t really mess up the claim because [no reason]. And two, “comprising” doesn’t really mean comprising in this context it means “air quotes” “comprising” (used in some bs fashion that has to be “reasonable” when considering what they’re “trying to claim”. That is, it doesn’t cover every method merely including those steps, and thus infinite? products, it means every method that would reasonably be understood to include those steps. The difference between the normal and the special “interpretations” is hand waving). I’ve had that same discussion with attorneys who mistakenly wrote such claims when they brought up that same issue “what does the claim really cover when you read comprising”.

    Now about my cake appeal…

  39. Thank you all for a fascinating tour of pbp law in the USA. Reminds me of the debates in the UK, until the Supreme Court got a grip, and aligned British law with the long-settled pbp jurisprudence of the EPO. Sorted. End of story.

    The cognoscenti will know that a pbp claim at the EPO is characterized by the word “obtainable” and gets through to issue relatively rarely. Such claim is a product claim, right Malcolm, Ned, ping? I imagine that many readers will be able to quote the recent CAFC case in which such a claim was construed.

    Of course, pbp claims are not so important in Europe, because the EPC contains a statutory provision that, if it’s a method that’s claimed, well then the scope of protection automatically extends also to the direct product of the patented process.

    Now, I wonder what it was that prompted the international troop of Founding Fathers of the EPC, from countries like England and Germany, to come to the idea of including such a provision in the Statute they were crafting. Clarity, I would say.

  40. 6: “How can this not be the case?”

    (reference) A method of forming a TV comprising:
    providing metal.

    (claim) A bicycle formed by a process comprising:
    providing metal.

    You see the problem.

    I see a lot of problems. ;)

    Actually that is the opposite of how we have to treat them in my AU. They must be treated as products.

    You’ll have to remind me what your AU is. I’m thinking of the chemical art units mainly when I think of pbp claims (although I realize that others use them as well, for reasons that are even more stupefying). I think treating them *only* as product claims is a big mistake on the PTO’s part, and a huge one.

    How do you search a composition that isn’t described? And if the claim recites only comprising language, then how do you account for all compositions encompassed by the scope of the claim that are not shown in the specification (i.e., all the compositions that can be obtained by adding additional steps to those that are recited)?

  41. Maybe you guys could stop arguing about the pbp claim situation (which is never going to change in the forseeable future) and do something useful by giving me an opinion on something halfway interesting/important: the cake example I provided far above.

  42. “because the claims are statutorily different”

    But information (implicit information included) in references doesn’t swing that way son. Insert evil laugh here.

  43. “Is there case law to the contrary? ”

    No, there is caselaw that supports such although I cannot remember which case it was. I have in fact had to use it on occasion, even though nobody in my art ever puts up that particular fight since the process always blatantly results in the product being claimed. Perhaps check the decision by Judge Rader to find some caselaw.

    “I’m not because in most instances pbp claims are written using “comprising” language which means that it would be impossible to identify “the” product. ”

    You are correct, yet one more vice of the pbp claim (abomination) format. Occasionally though you’ll find an app that doesn’t use comprising language.

    “How can this not be the case?”

    (reference) A method of forming a TV comprising:
    providing metal.

    (claim) A bicycle formed by a process comprising:
    providing metal.

    You see the problem.

    “You must understand: product-by-process claims are, for most purposes, method claims. Perhaps for all purposes. Future cases will sort that out.”

    Actually that is the opposite of how we have to treat them in my AU. They must be treated as products. I kind of agree with treating them as products, but I take no issue with Rader’s ruling based upon this. His ruling is based on solid grounds that Ned will never overturn and I don’t worry one bit about that ever happening.

    “Malcolm ol buddy, your statement of my statement being false is false. You of all people should realize that anticipation cannot be done with a mixed statutory class – product v. method. A prior art claim to a method can only anticipate a method. Method claims do not anticipate product claims. My earlier observation on “product” is still “there.””

    I have not found such to be true at all. Due mainly to implicit or inherent information contained within the methods disclosed in the references (i.e. that a certain product is made). Nor have I ever had anyone argue this point before me. They could try, and I would enjoy shutting them down right fast and sending up an appeal on a semi-interesting subject then watching them lose and my name being associated with that case for all time :)

  44. EG OK, one more comment by me. First, aren’t we talking SCOTUS precedent here? State Street is Federal Circuit, not SCOTUS, so you’re down to 2 cases.

    Fair enough. But I’ve more than a few additional cases to choose from. Those poppped up immediately. Do you honestly believe that the Court doesn’t address the “innovation promoting” role of patents in those decisions?

    By my count, that’s 5 patents deemed invalid by SCOTUS, and only 1 deemed valid in the last 60 years, and NONE where SCOTUS overturned a lower court patent invalidity ruling. Those are pretty grim odds for patents being held valid at the SCOTUS level. Could it be that there’s a bias against patents by SCOTUS?

    Yes, it “could be” but you left out the denials of cert (e.g., State Street). That and the holdings in Diehr and Chakrabart very strongly argue against any “anti-patent” bias. The other cases suggest only that the Supreme Court has an anti-”crxppy patent” bias, which is a perfectly acceptable bias in nearly everyone’s opinion.

  45. the incorrect and mythological “policy” rationale promulgated by Newman that a mechanism is needed for “inventors” to obtain patents on compositions that they can not describe.

    Can you cite some sort of authority for this seemingly arbitrary requirement of yours that the specification contain a sufficient written description of the invention, and that invention be distinctly claimed?

  46. ping: “How can this not be the case?” – because the claims are statutorily different.

    So according to your logic, a composition can’t anticipate a means-plus function claim because they are “statutorily different”? Is that your theory?

    I’m talking about anticipating a product-by-process claim, which is treated as a method claim, and which can be anticipated by a prior art method. Pretty straightforward stuff. Not sure why you’re resisting. Perhaps you’ve given your clients some bad advice?

  47. Ned: This is a summary of what Lourie had to say in his dissent to taking the issue “en banc.”

    The Federal Circuit did everyone a favor by hearing the decision en banc. Why wait? The question was begging for an answer for years. And nobody is complaining about it now except perhaps the patent teabaggers (who complain about every case that doesn’t uphold validity) and you (for reasons that seem petty, at best).

    If there was an error in Judge Rader’s reasoning in the case, you might have some justifiable reason to be upset. But you have shown none. On the contrary, you have only repeated the incorrect and mythological “policy” rationale promulgated by Newman that a mechanism is needed for “inventors” to obtain patents on compositions that they can not describe.

  48. “You of all people should realize that anticipation cannot be done with a mixed statutory class – product v. method. A prior art claim to a method can only anticipate a method. Method claims do not anticipate product claims.”

    You clearly have no understanding of anticipation. It is irrelevant whether the claims of a prior art reference “anticipate” a claim of an application. Anticipation requires that the prior art reference disclose the identical invention being claimed.

    When you are examining an application on your docket, do you only reject claims that are “anticipated” by the claims of a prior art reference? Or do you review the entire prior art reference and determine if it discloses the identical invention claimed in the application?

    It is beyond irrelevant whether the claims of the prior art are to a different statutory class from the claims of the application.

  49. Ned Heller, on product-by-process claims, writes, asks, “So, what does a defendant do if I prove is product is identical — demonstrate a different process? Why in the world should that get him or her off the hook?”

    Fer cryin’ out loud, because he does not infringe your product-BY-PROCESS claim.

    If your product itself is truly new/inventive, find some way to claim the product instead of settling for PBP claims in the first place.

  50. Malcom,

    Repeating your error doesn’t change the error.

    How can this not be the case?” – because the claims are statutorily different.

    You must understand: product-by-process claims are, for most purposes, method claims.

    What I must understand is that you will persist in your error. What you must understand is that I don’t care is you do persist. I ain’t here to change your mind.

  51. here’s my problem with “unforseeable” equivalents in Festo and why it conflicts with at least the sixth paragraph of 35 USC 112

    You’re talking about two completely different kinds of equivalents. They don’t have to be consistent or coextensive with each other.

    Even allowing “unforseeable” equivalents to infringe (under DOE) a non-”means plus function” limitation added to a claim makes a mockery of 35 USC 112, first paragraph, especially in view PHE.

    Let’s put PHE aside for the moment. Suppose an original claim issues on the first action, and you’re in court arguing for equivalents. Do you find yourself arguing for:

    1) Equivalents that are 112-enabled by the specification;
    2) Equivalents that are 112-written-described in the specification; or
    3) Equivalents that are neither, because they were not foreseeable when the case was filed?

    To my mind you will always be in category 3. Anything that is enabled or described in the specification should be literally claimed if you want it. For that matter, anything foreseeable should probably be enabled, described, and literally claimed if you want it. If you described it and didn’t claim it, it’s too late to argue it back into the claim now.

    If that makes a mockery of 112 for you, no possible doctrine of equivalents will make you happy. The doctrine of equivalents exists to capture later-developed equivalent technology that could not have been foreseen by the patentee, because there was no opportunity for him to literally claim it.

    Now, let’s turn to PHE. We agree, presumably, that scope given up by amendment can’t be recaptured by argument. This is a kind of estoppel, so it relies on an implied admission that the patentee has disavowed some claim scope. The important question is what claim scope has been given up by the amendment. Obviously it’s some aspect of the amended limitation, that would broaden the claim in the direction of the previous wording. The problem is, how can you say the patentee is giving up scope he could not have foreseen, because his entitlement to that scope will only become clear once the equivalent is developed and he finds himself before a judge? If the entire point of the DOE is to cover later-developed equivalents, how can the patentee impliedly give up claim scope that does not yet exist?

  52. Folks, here is a snippet of an analysis piece on the PBP controversy. This is a summary of what Lourie had to say in his dissent to taking the issue “en banc.”

    “In his dissent from the denial of rehearing en banc, Judge Lourie pointed out that claim construction was not an issue in Atlantic Thermoplastics, in part because the patentee admitted that his product-by-process claim was limited to the process.(5) Thus, the Atlantic panel undertook a restatement of the law when it could have decided the issue more simply. Particularly, Judge Lourie criticized the Atlantic panel as setting out a broad based rule of law mostly affecting complex chemical cases, when the fact situation before the Atlantic panel involved a shoe innersole (less complex technology).
    link to sughrue.com

    Now, circle back to my essential criticism of Rader. He writes far beyond the case at hand, pursues agendas and not justice, and beyond all this, is wrong most of the time.

  53. Method claims do not anticipate product claims.

    I believe a prior art method can anticipate a composition claim if it can be demonstrated that it inherently produces the claimed composition. Is there case law to the contrary?

    But a prior art method for producing a product that includes the same steps as those recited in a product-by-process claim (using comprising language) surely anticipates the product-by-process claim. How can this not be the case?

    You must understand: product-by-process claims are, for most purposes, method claims. Perhaps for all purposes. Future cases will sort that out.

  54. IANAE,

    Ok, since you dared me to do so, here’s my problem with “unforseeable” equivalents in Festo and why it conflicts with at least the sixth paragraph of 35 USC 112 (let’s end our discussion of the first paragraph for reasons discussed below). Suppose you put a “means plus function” limitation in the claim. Under Federal Circuit case law, that “means plus function” limitation only covers the exemplified equivalents. But if the equivalent in the alleged infringing device is “unforeseen” by the spec, it is also not exemplified by the spec. That means the “unforeseen” equivalent cannot infringe the claim with the added “means plus function” limitation literally or under DOE.

    Even allowing “unforseeable” equivalents to infringe (under DOE) a non-”means plus function” limitation added to a claim makes a mockery of 35 USC 112, first paragraph, especially in view PHE. What it would allow, in essence, is impermissible recapture of scope that was given up in the original claim. What’s even more bizarrre is that by amending the claim to give up scope which you couldn’t even literally support under 35 USC 112, first paragraph, with regard to the “unforeseen” equivalent, you now suddenly get the scope to cover that “unforeseen” equivalent after amending the claim that should have very restricted, if any, DOE scope under PHE. That makes no logical sense to me (even as one who is often accused of a having a “pro-patent” bias) under PHE.

  55. Malcolm ol buddy, your statement of my statement being false is false. You of all people should realize that anticipation cannot be done with a mixed statutory class – product v. method. A prior art claim to a method can only anticipate a method. Method claims do not anticipate product claims. My earlier observation on “product” is still “there.”

    IANAE,

    While you are still my hero with your “ Your insistence that equivalents be enabled under 112 is truly puzzling. If you could enable them, you’d have claimed them and you wouldn’t need DOE at all. stunning rebuttal, I have to admit that I cannot understand the basis for your selection of important questions at 2:45 PM. “ The only important questions are in what areas we should impede competition, and to what extent.

    As far as I can tell, neither the type of area nor the level of extent has any basis in the Congressional record (or Constitutional (R)ecord, for that matter) for such designation as “the only important questions”. Sure, there are congressional records of certain technologies receiving extra umph (for example super conductivity and “green” technology), but the basic patent premise is the same even if the process of getting “there” has been modified.

    I would observe that this seems like an open invitation to inject unwarranted ideology. I may have missed where you posted the answers, because I know that you are the man with the answers and you have surely have a reason why these questions are the only important ones in patent law.

    Also, since you just got done explaining that such impeding is actually encouraging, shouldn’t the only important questions be “In what areas should we encourage innovation?” and “How much should we encourage innovation?”?

  56. MM,

    OK, one more comment by me. First, aren’t we talking SCOTUS precedent here? State Street is Federal Circuit, not SCOTUS, so you’re down to 2 cases.

    Second, given that Graham is viewed as pretty important precedent in our area of the law, treating it as “very old” is hardly a fair characterization.

    Third, with the exception of U.S. v. Adams (part of the trilogy of cases with Graham), SCOTUS has never upheld the validity of patent (not patent application as in Chakrabarty or Diehr and Dann v. Johnston which held the patent application invalid) when that issue was squarely presented in the last 60 years, starting with the great A&P case in the 50′s, including Graham (and the Colgate case in the triology), including Anderson’s Blackrock and Sakraida v. Agpro in the ’70s, and ending with KSR International in 2007. By my count, that’s 5 patents deemed invalid by SCOTUS, and only 1 deemed valid in the last 60 years, and NONE where SCOTUS overturned a lower court patent invalidity ruling. Those are pretty grim odds for patents being held valid at the SCOTUS level. Could it be that there’s a bias against patents by SCOTUS? You tell me what these “case facts” tell you.

  57. EG Not made up. My primary evidence is the seminal case of Graham v. John Deere

    You cite one/ case to support your assertion that:

    a major problem of SCOTUS in interpreting patent law on a “policy level” is that they myopically focus on patents as impeding competition and technlogy development. Rarely, if ever, does SCOTUS discuss patents as encouraging disclosure of technology, and especially innovation

    ??? Sorry, EG. Doesn’t work that way. What about Diamond v. Diehr? Chakrabarty? State Street?

    Feel free to express you view, but as I suggested to IANAE, let’s realize you won’t agree with me and I likely won’t agree with you. That happens.

    It’s not a matter of opinion. It’s a question of fact. Unless you have a special definition for “rarely”, you are right or wrong in your assertion. The assertion strikes me as incorrect, frankly, which is why I asked you for evidence. You provided one very old case. I provided three more recent ones to show that you’re incorrect. I win.

  58. I’m willing to give him the benefit of the doubt that later-developed technology permits unambiguous identification of the product created by the claimed process.

    I’m not because in most instances pbp claims are written using “comprising” language which means that it would be impossible to identify “the” product. Under the regime which Rader destroyed, such claims covered an infinite number of different products with an infinite number of different properties.

    Possibly Ned wants to pbp claims to only cover products *actually made* by the patentee. That’s why the products *actually made* by the patentee are required to be deposited with the PTO for public inspection by those seeking to avoid infringement. Right? Wrong.

    Ned: I understand that certain isolated DNA can be isolated by more than one method. If I am first to isolate the DNA, I am told that I can claim the isolated DNA as a composition of matter. But, lets assume I cannot describe it, just the process of isolating it.

    Now, you say that I am not entitled to the composition claim solely because I cannot describe it

    Pretty much. Not sure why this seems to bug you. Earlier you seemed to indicate that Rader’s holding was somehow surprising. It wasn’t. The writing was on the wall for years.

  59. EG, as much as you apparently dislike the direction the Supremes have taken in patent cases, you should note that patent cases very rarely raise constitutional issues, and therefore Congress is free to override a Supreme Court precedent at any time. Assuming all this business about the Supremes really is the opposite of what Congress wanted.

    Also, before you commit to being done with our DOE discussion, try to come up with a single example of a DOE equivalent that has full 112 support (you can even skip the “distinctly claim” part of 112) in the spec but is not within the literal scope of the claim. Maybe then you’ll understand why I say the DOE only ever covers features that do not meet 112, and it was designed for that very purpose.

  60. IANAE,

    Again, I think we’re having a semantics battle about what Festo says. Obviously, I’m not persuading you, and you’re not going to persuade me. Rather than spilling more Internet ink, we might as well agree to disagree and leave it at that. Feel free to add any further views you might have, but I’m done.

    “Is this something you just made up or do you have evidence to support this statement?”

    MM,

    Not made up. My primary evidence is the seminal case of Graham v. John Deere which talks at the beginning incessantly about Jefferson’s views on the patent rights and how Jefferson viewed patents negatively. As law professor Adam Mossoff correctly observed (WHO CARES WHAT THOMAS JEFFERSON THOUGHT ABOUT PATENTS), SCOTUS has created in Graham the mythology known as the “Jeffersonian story of patents.” (SCOTUS too often deals with historical mythology in its decisions, especially when it comes to Jefferson and how our Constitution should be interpreted, and not enought in historical reality, patents being the only one example of this problem.) SCOTUS would have done better to have considered Federalist Paper No. 43 (the only one discussing the Patent/Copyright Clause) written by James Madison (who attended the Constitutional Convention, not Jefferson) and which explains the importance of patents as property rights (referred to as “privileges” then and misconstrued under the modern definition.

    Feel free to express you view, but as I suggested to IANAE, let’s realize you won’t agree with me and I likely won’t agree with you. That happens.

  61. “I understand that certain isolated DNA can be isolated by more than one method”

    I understand that certain isolated DNA cannot be patented by exclusion under 101. See Ned, these are the types of situations that pop up when you start allowing “inventionlols” into the realm of inventions. Inappropriate application of the lawl in the first instance leads to problems down the line.

  62. Now, you say that I am not entitled to the composition claim solely because I cannot describe it

    See Ariad, for example.

    that others who later invent different ways of isolating the same DNA do not infringe?

    That’s right. They’re entitled to look at your claims, see that infringement means producing a product identifiable only by the claimed process, and avoid infringement by not doing that process. It’s called the “public notice function of the patent”.

  63. IANAE, huh? I understand that certain isolated DNA can be isolated by more than one method. If I am first to isolate the DNA, I am told that I can claim the isolated DNA as a composition of matter. But, lets assume I cannot describe it, just the process of isolating it.

    Now, you say that I am not entitled to the composition claim solely because I cannot describe it — that others who later invent different ways of isolating the same DNA do not infringe?

  64. “I’m willing to give him the benefit of the doubt that later-developed technology permits unambiguous identification of the product created by the claimed process.”

    Indeed, so am I. However, were the patent lawls drafted today we could probably explicitly axe pbp claims in total. If you can’t describe your structure just yet then by all means, wait until you can to file. The exception that gave rise to these abominations has long outlived its need. Thankfully Rader did a decent job of crushing the pratice. No longer can you claim that you’ve invented a structure that you couldn’t even put the public on notice was off limits.

  65. How do you show that they are identical if you can’t describe your product, Ned?

    I’m willing to give him the benefit of the doubt that later-developed technology permits unambiguous identification of the product created by the claimed process.

    But that still doesn’t change the fact that if you claim a product made by a specified process, no product in the world made by a different process infringes that claim.

  66. “But I cannot win, I cannot obtain an exclusion order and I lose because of what reason?”

    Because you were not able to cry hard enough to the foreign government. Also because you couldn’t be arsed to describe/distinguish your product in the first instance in terms of its structure.

    Also, the all knowing patent god Radar, or his brother Rader.

  67. Ned: Imagine products produced in a hypothetical totalitarian state without a functioning legal system where I have no legal way to show what process was being used. Those products are imported into the United States. They are identical to the products produced by the patented process.

    But I cannot win, I cannot obtain an exclusion order and I lose because of what reason?

    You lose because you didn’t file a composition claim. Sue your attorney.

  68. So, what does a defendant do if I prove is product is identical — demonstrate a different process? Why in the world should that get him or her off the hook?

    Your claim: A product made by process X

    My product: Made by not-process-X

    Do I really need to explain why that’s not infringement?

    But I cannot win, I cannot obtain an exclusion order and I lose because of what reason?

    Because you were unwilling or unable to describe your product when you drafted the claim. Your claim defines your invention in terms of process steps, so if someone uses different process steps that’s not your invention.

  69. EG a major problem of SCOTUS in interpreting patent law on a “policy level” is that they myopically focus on patents as impeding competition and technlogy development. Rarely, if ever, does SCOTUS discuss patents as encouraging disclosure of technology, and especially innovation

    Is this something you just made up or do you have evidence to support this statement?

  70. Ned: I would start by using the claimed process to generate a product. I would then compare the generated product to the defendant’s product. If I could show they are identical, I should win.

    How do you show that they are identical if you can’t describe your product, Ned?

  71. The whole idea of DOE is that the equivalent would be “forseeable” (in view of what the spec teaches), not “unforeseeable” as SCOTUS says in Festo.

    No, the whole idea of DOE is that the equivalent might not be pre-existing or foreseeable, but you want the claim to cover it anyway because otherwise your claim would become worthless as peripheral technology advanced.

    Your insistence that equivalents be enabled under 112 is truly puzzling. If you could enable them, you’d have claimed them and you wouldn’t need DOE at all. If you had described them but not claimed them, they’d be dedicated to the public. DOE by its very nature expands the claim to cover equivalents that are neither described nor claimed. You will never have 112 enablement or 112 written description for an equivalent, and that’s never been a problem in the entire history of the doctrine.

    a major problem of SCOTUS in interpreting patent law on a “policy level” is that they myopically focus on patents as impeding competition and technlogy development. Rarely, if ever, does SCOTUS discuss patents as encouraging disclosure of technology, and especially innovation

    That’s what patents do. Patents impede competition on the thing you’ve invented. That’s the mechanism suggested by the Constitution for encouraging people to invent things and claim them, the claim requiring a published written description to be enforceable. If you impede competition in that way, you reward innovation and disclosure, and ipso facto encourage same. The only important questions are in what areas we should impede competition, and to what extent.

    In fact, because SCOTUS in KSR International miserably fails to provide any practical rules or guidelines on determining obviousness under 35 USC 103, these 6200+ examiners on pretty on their own as to what the standard for obviousness is. As a result, we’ve had a chaotic and inconsistent patent examination process in the USPTO for several years which is fortunately being slowly reversed,

    New Supreme Court decisions always create uncertainty. They do so as much in private practice as in the PTO. It always takes some time to sort out the new rules, and it shouldn’t surprise anyone that a large examining corps would require training and experience whenever the law changes. Bad policy would be for the Supremes to refuse to make rulings because people three or four levels of appeal below would have to get used to them and apply them.

    Also, maybe the PTO would have an easier time with KSR if we practitioners didn’t run around all the time screaming that KSR changed the whole world. It really didn’t.

  72. In fact, rulings such as KSR International by SCOTUS not only greatly undermine the value of patents, but could have and likely will have very negative impacts on the competitive ability of innovative American businesses (especially innoative small American businesses) to compete not only in the US, but also globally.

    Very negative? More likely “undetectable.” Certainly there has been no evidence to date that KSR has had a “very negative impact” on the the competitive ability of “innovative” American businesses (whatever those are). Keep wanking, though.

  73. How do you prove infringement without demonstrating that the defendant used your process?

    I would start by using the claimed process to generate a product. I would then compare the generated product to the defendant’s product. If I could show they are identical, I should win.

    But not according to Radar.

    So, what does a defendant do if I prove is product is identical — demonstrate a different process? Why in the world should that get him or her off the hook?

    Imagine products produced in a hypothetical totalitarian state without a functioning legal system where I have no legal way to show what process was being used. Those products are imported into the United States. They are identical to the products produced by the patented process.

    But I cannot win, I cannot obtain an exclusion order and I lose because of what reason?

    The all knowing patent god Radar.

  74. IANAE,

    We’re having a semantics problem. Let me rephrase: if a claim can be interpreted to be broad enough (under DOE) to encompass “unforeseeable” equivalents, how can that claim be deemed “enabled” to satisfy 35 USC 112, first paragraph? The whole idea of DOE is that the equivalent would be “forseeable” (in view of what the spec teaches), not “unforeseeable” as SCOTUS says in Festo. That’s why this concept of “unforeseeable” equivalents for avoiding PHE makes no logical patent law sense.

    If you believe that SCOTUS appropriately determines patent cases on a “policy level” that is other than in a vacuum and completely divorced from reality, you’re living in Alice in Patentland. Besides generally giving lip service to the patent statutes, a major problem of SCOTUS in interpreting patent law on a “policy level” is that they myopically focus on patents as impeding competition and technlogy development. Rarely, if ever, does SCOTUS discuss patents as encouraging disclosure of technology (thus adding to our knowlege bank), and especially innovation (thus increasing encoomic growth in America). In fact, rulings such as KSR International by SCOTUS not only greatly undermine the value of patents, but could have and likely will have very negative impacts on the competitive ability of innovative American businesses (especially innoative small American businesses) to compete not only in the US, but also globally. Does SCOTUS ever consider or even mention these potential adverse economic effects? Not at all, and that’s why their view of “policy” in the patent law area is completely divorced from reality.

    In addition, SCOTUS’ “tunnel vision” in KSR Interationsl overlooks a significant segment that must apply its ruling: over 6200 non-legally trained patent examiner. In fact, because SCOTUS in KSR International miserably fails to provide any practical rules or guidelines on determining obviousness under 35 USC 103, these 6200+ examiners on pretty on their own as to what the standard for obviousness is. As a result, we’ve had a chaotic and inconsistent patent examination process in the USPTO for several years which is fortunately being slowly reversed, in spite of SCOTUS’ unhelpful and unworkable ruling in KSR International on how to determine unboviousness in view of 35 USC 103. That’s pretty poor on a “policy level.”

  75. How do you know the glue is the same if you can’t describe it?

    Because it was made by the claimed proc… I mean, because it contains the claimed struct… I mean…

    Okay, you might have a point there. Curse you, Rader, with your hard-to-spell name!

  76. “How do you know the glue is the same if you can’t describe it?”

    That gets me every time. So hilarious.

    In any event, iirc Ned Rader had a very good reason for holding how he did. And I concurred with his reasoning.

  77. Ned: So I claim a new glue made by a conventional process, but with a twist. The glue is the invention.

    Really? Is the glue new? What’s new about it? Oh wait — you can’t tell me for some reason, but you still want the patent on the glue.

    Along comes some genius who can make the same glue differently. Radar denies me infringement.

    How do you know the glue is the same if you can’t describe it?

  78. ping: I have to agree with JV when he posts “The problem is that current law requires that we treat product by process claims differently for infringement purposes than for validity.”

    That is false. A product-by-process is anticipated by a prior art method comprising all of the steps recited in the product-by-process claim, just as the claim is infringed when all the steps are carried out by an accused infringer.

  79. Mooney, what if I can show that the product by a different process is in fact the same?

    How can you do that if you can’t describe your own product?

    Seriously, Ned: you can’t defend Newman’s paradigm. All you can do is spin your wheels and whine about imaginary inventions that won’t be patented, just like Newman did in her dissent.

    Rader was right. You are wrong.

  80. And the setting up of the Federal Circuit in 1982 was intended to create a uniform body of patent law jurisprudence by the Federal Circuit who is far more technologically savvy than SCOTUS is or ever will be.

    That’s why the Supremes tend to decide cases on a policy level and not a technological or case-specific level. The Supremes defer to nobody in matters of policy.

    I note also that the previous court had “patent” right in its name for decades. How deferential were the Supremes back then?

    How can you infringe a claim which isn’t enabled under 35 USC 112, first and/or sixth paragraph?

    If the claim isn’t enabled for its literal scope, then by all means invalidate it. If the claim is enabled for its literal scope but not for the equivalents, you’re free to see that as a problem, but you might also want to consider whether equivalents satisfy the written description requirement, and whether any of this matters at all since these “problems” are inherent in the doctrine of equivalents, and the doctrine is quite well-established and accepted by the judiciary.

    But you didn’t say “infringe a non-enabled claim”. What you said was this:

    “a violation of 35 U.S.C. § 112 … can … infringe the patent”

    Which is way more nonsensical than anything I’ve ever said.

  81. “I guess Congress changed their mind about that when they later provided for the Supreme Court to review the Federal Circuit’s decisions by certiorari.”

    IANAE and ping,

    You’ve mischaracterized what I said. I didn’t say SCOTUS is prohibited from reviewing Federal Circuit decisions. I’m just commenting on what might be advisable for SCOTUS do which it did prior to 2007. And the setting up of the Federal Circuit in 1982 was intended to create a uniform body of patent law jurisprudence by the Federal Circuit who is far more technologically savvy than SCOTUS is or ever will be.

    BTW, even SCOTUS has acknowledged, as Justice Frankfurter most recently stated in National Insurance Co. v. Tidewater Co., 337 U.S. 582, 655(1949)) that Congress “need not give this Court any appellate power; it may withdraw appellate jurisdiction once conferred.” Some have referred to this statement as “dicta” but after all its SCOTUS dicta. I also know the thought that SCOTUS could be “stripped” by Congress of appellate jurisdiction not written into the Constitution may offend some, but that, afterall is SCOTUS’ view.

    “I thought only the patent specification could violate 112 1st. How can the patent spec infringe its own claims?”

    IANAE,

    What you’ve suggested, like SCOTUS, makes no logical sense in view of 35 USC 112, first paragraph and especially sixth paragraph. How can you infringe a claim which isn’t enabled under 35 USC 112, first and/or sixth paragraph? That’s exactly what SCOTUS said when they suggested “unforeseeable” equivalents could avoid prosecution history estoppel when the claims are amended. What SCOTUS said in Festo is completely inconsistent 35 USC 112, first and paragraphs.

  82. Double bonus for me!

    They come from the word “obvious” in 103

    Except they don’t. The word obvious is determined by the legal construct PHOSITA without any dependence on “market” or “marketplace” which are business derivations (not art derivations).

    I guess Congress changed their mind about that when they later provided for the Supreme Court to review the Federal Circuit’s decisions by certiorari.

    Except it wasn’t Congress per se, but the Constitution which set up one Supreme court and all courts set up by Congress have to be inferior. Someone metnioned previously that this is the eternal urinary battle.

    I guess that makes the CAFC all wet.

  83. Remember, SCOTUS said in KSR International that we should consider “the marketplace” and “other market forces” in determining obviousness. Where in the world do “market” or “marketplace” come from the language of 35 U.S.C. § 103?

    They come from the word “obvious” in 103. If market forces direct you toward a particular change, that change is just as obvious as if you had been directed there by your knowledge in the art.

    In other words, a violation of 35 U.S.C. § 112, first paragraph, can be deemed to infringe the patent.

    I thought only the patent specification could violate 112 1st. How can the patent spec infringe its own claims?

    Even Festo which is one of SCOTUS’s better efforts says that the patentee might avoid prosecution history estoppel if the equivalent is “unforeseen.”

    That actually makes sense to me, as long as the foreseeability is objective. If you couldn’t foresee the equivalent, how can the court say you meant to give it up by your narrowing amendment?

    They were also the court intended by Congress back in 1982 when the Federal Circuit was created to be the keeper of patent law jurisprudence, not SCOTUS.

    I guess Congress changed their mind about that when they later provided for the Supreme Court to review the Federal Circuit’s decisions by certiorari.

  84. “I generally agree with the Supreme Court”

    And you dislike Rader,

    Ned, I just sent my cancellation notice to the president of your fan club.

  85. “I have long felt the best patent cases I have ever read are Supreme Court cases.”

    Ned,

    Oh, give me a break! For example, do you really think Anderson’s-Blackrock and Sakraida v. Agpro are “good” patent law? As former Justice Jackson once remarked, “the only valid patent is one this Court hasn’t got it’s hands on.”

    As shown by the recent KSR International case, SCOTUS simply adopts its own version of “federal common patent law” and generally ignores what the patent statutes say, especially 35 USC § 103. Remember, SCOTUS said in KSR International that we should consider “the marketplace” and “other market forces” in determining obviousness. Where in the world do “market” or “marketplace” come from the language of 35 U.S.C. § 103? About on par with SCOTUS’ comment about “common sense.”

    Even Festo which is one of SCOTUS’s better efforts says that the patentee might avoid prosecution history estoppel if the equivalent is “unforeseen.” In other words, a violation of 35 U.S.C. § 112, first paragraph, can be deemed to infringe the patent. Is SCOTUS really paying attention to what the patent statutes say? I doubt it. And what about MedImmune which shows no “common sense” (to use SCOTUS’ ill-advised phrase from KSR Interantional) about the realities of patent licensing.

    As far as I’m concerned, what SCOTUS generally says about patent law is intellectual drivel and rhetorical nonsense. I agree that the Federal Circuit doesn’t always get it right, but they at least try to grapple with the patent statutes which SCOTUS gives, at best, lip service to. They were also the court intended by Congress back in 1982 when the Federal Circuit was created to be the keeper of patent law jurisprudence, not SCOTUS. In fact, up until 2007, SCOTUS appeared to recognize that was the intention. I frankly grow weary of the unhelpful upheavel and chaos SCOTUS has created in its wake and the collateral damage they’ve caused in our area of the law.

  86. did what the claim says.

    Is the claim to a product? How do you “do” a product? Shouldn’t a claimed product have protection for all its inherent characteristics? Inother words, once you get “there“, shouldn’t that “there” be the driving force? Why should this particular “there” be any less forceful? How does the courts exactly go about creating such tin-plated patents absent any Congressional intent to have such a different level of patent?

    I have to agree with JV when he posts “The problem is that current law requires that we treat product by process claims differently for infringement purposes than for validity.” Such seems like such an unecessary complication.

  87. MM: Let’s just pick people off the street and let them decide if the patent is valid or if there’s infringement based on their own reasoning, totally unpolluted by any silly Federal Circuit decisions.

    Unlike the patent itself, getting to do that actually is a constitutional right.

    Ned: Even so, one still has to prove infringement, and if there is no other way to prove it, one must demonstrate the use of the process steps.

    I agree. If you’re at a complete loss for any other way to show infringement of the claim, as a last resort you might try showing that the defendant did what the claim says.

  88. Just Visting, I think Judge Lourie had the better view: there is no clear Supreme Court precedent requiring proof of the process steps if it can be demonstrated that the same, novel product was produced by a different process. Even so, one still has to prove infringement, and if there is no other way to prove it, one must demonstrate the use of the process steps.

    But it is exactly these kind of nuances that seem to evade Radar. Makes one kinda gag.

  89. “A simpler procedure would to simply say the claim is anticipated regardless of the process steps.”

    This is of course has always been the law. The problem is that current law requires that we treat product by process claims differently for infringement purposes than for validity. The FC’s current interpretation which neither you or I seem to agree with is supported by Supreme Court precedent.

  90. Mooney, what if I can show that the product by a different process is in fact the same?

    Radar’s view of product by process claims flies in the face of Supreme Court authority that they are OK because in some cases one cannot describe the product except by the process by which it is made. But the corollary is that if, in fact, I can show that the product is made by a different process, I should be able to prove infringement.

    If the product is old, the invention rather is in the process. This is an entirely different kettle of fish. One might argue, with some force, I might add, that if the product is old and the process new, then a product by process claim is improper under Section 112, p. 2 as not properly claiming the process. A simpler procedure would to simply say the claim is anticipated regardless of the process steps.

    So I claim a new glue made by a conventional process, but with a twist. The glue is the invention. Along comes some genius who can make the same glue differently. Radar denies me infringement.

    Radar is wrong.

  91. Ned: But in my view, if the product is new, it makes no difference by what process it is made.

    How can anyone know if it’s “new” or not if you can’t describe it? How do potential infringer’s know if they made this “new” product by another process if you can’t describe it?

    The answer to these questions is: they can’t know. Which is why Judge Rader’s “view” is the only correct view. Nobody should feel sympathy for any “inventors” who are precluded from obtaining composition patents on compositions they can not describe. Enjoy the method claim, though (even in product-by-process claim format).

    Take the product by process case. Radar takes a view not held by many

    What?

  92. Mooney, so I argue for better quality judges to judge patent cases and you suggest that I favor what amounts to the Paris mob of the Reign of Terror judging patent cases?

    Take the product by process case. Radar takes a view not held by many, calls for a quick en bank review without comment from the public, and changes the law without comment or appeal, and you think he is a god. Truly, Radar fits quite readily into his role as a later-day Robespierre, arranging verdicts to suit his agenda.

    My compliments on your selection of virtuous judges.

  93. Malcolm, I wasn’t posting here at the time of Radar decision. But in my view, if the product is new, it makes no difference by what process it is made.

    One man’s view.

  94. Ned: I think the Fed. Circuit would be better to adopt a rule for this circuit that would suggest that panel decisions lacked binding authority on other cases. This would allow panels to disagree with each other and would allow much better development of the law.

    In fact, who needs judges? Let’s just pick people off the street and let them decide if the patent is valid or if there’s infringement based on their own reasoning, totally unpolluted by any silly Federal Circuit decisions.

    Awesome idea. Right out of the Old West, or some Robert Heinlein book.

  95. Case in point, Mooney.

    Posted by: Ned Heller

    Serious? I don’t remember you flailing around trying to defend Newman’s position when the case came out. I won’t bother trying to make you defend it now. Just rest assured that you can’t do it without mocking the patent system itself.

  96. I think the Fed. Circuit would be better to adopt a rule for this circuit that would suggest that panel decisions lacked binding authority on other cases.

    The more I think about this ridiculous suggestion, the more I wish Gene had asked Rader how they decide if a particular decision will be precedential or not.

  97. when one circuit is free to disagree with another, we get much better reasoning.

    Just like we get much better reasoning when a junior judge is allowed to freely express his opinion before the senior judge expresses his, right?

    Oh wait, that would mean you’d have to agree with Rader on something.

  98. IANAE, yes en banc cases are better than panel decisions, true, but when one circuit is free to disagree with another, we get much better reasoning. I think the Fed. Circuit would be better to adopt a rule for this circuit that would suggest that panel decisions lacked binding authority on other cases. This would allow panels to disagree with each other and would allow much better development of the law.

    On the point about quality, I think it might be related to the limited jurisdiction of the court. They would not get the best judges nor the best law clerks for this simple reason.

  99. On Radar, I have a long memory and rarely agree with his opinions. He has been a strong advocate on several legal theories. I cannot think of any I agree with.

    Abbot v. Sandoz (product-by-process claims limited to the process)? One of the best-reasoned cases ever written. It will never be overturned.

  100. But we get those kind of cases from the regional circuits all the time because they are free to disagree with each other leaving the final decision to the higher court.

    Well then, that’s not because the judges in the regional circuits are any smarter or better. It’s because the Federal Circuit can resolve any circuit-level disagreement by hearing a case en banc, and there’s no mechanism available for a Federal Circuit “circuit split” to even make it as far as the Supreme Court.

  101. Just visiting, I generally agree with the Supreme Court. I have long felt the best patent cases I have ever read are Supreme Court cases. Outside the Supreme Court, we hear of Learned Hand and Judge Rich. But of few others.

    Remind me of any landmark decisions of the Federal Circuit that have persuaded the Supreme Court to change direction on any issue? But we get those kind of cases from the regional circuits all the time because they are free to disagree with each other leaving the final decision to the higher court. They decide cases narrowly and they support their views with first class reasoning.

    Now that said, the Supreme Court can be wrong, and I think they were wrong in Benson and Flook.

  102. I’ve been reading for years and I can get all kinds of FREE information and he’s never once asked me for a dime for it.

    Sure he has. He asks right on the blog website. He advertises services to the exact same demographic as the target audience of his blog.

    I don’t care whether or not you gave the “suggested donation”, but don’t go playing up his blog as an altruistic gesture toward the oppressed independent inventor.

  103. On Radar, I have a long memory and rarely agree with his opinions. He has been a strong advocate on several legal theories. I cannot think of any I agree with. He tends to rule broadly, not narrowly. He has provided rough justice to many.

    He is not my kind of judge from any point of view.

  104. Ianae,

    Do you provide a service or products in your work? Do you get paid for it? Of course he invoices people. He’s got to make a living. 6 even pointed out that he has a family. He’s an attorney for goodness sake. Attorney’s offer services. Attorney’s get paid for services. But he does not say “OK, I’ll give you this free advice but first you have to give me your info so I can bug you to buy my services.” I’ve been reading for years and I can get all kinds of FREE information and he’s never once asked me for a dime for it. My goodness, he’s being judged for trying to support his family? This is unreal.

  105. Ned, which of the current Supreme Court Justices would you like to see deciding patent cases. I’m not sure the fact that you would not like to see any of the Fed. Cir judges on the Supreme Court says anything in particular about how good the Fed Cir judges are at their assigned task.

  106. That and his incredibly annoying fanclub.

    It just got more annoying, now that he has the attention of the Rader Nation.

  107. “a lot better judges”

    Ned, please put forth a “dream team” of candidates, even fictional ones, that would satisfy your exceedingly high standards…

    I don’t understand your animus toward Rader. Please explain.

  108. While this is not exactly on topic, but in all this discussion regarding a replacement for Stevens, I was struck by the cold feeling that it would be a very cold day in Hades before anyone on the Federal Circuit would ever be considered for the court.

    Now, this is obviously true. But it also leads one to wish that we had a lot better judges on the Federal Circuit than we have, and/or that patent cases be decided by a lot better judges. The latter thought implies returning jurisdiction over patent cases back to the general jurisdiction circuits.

  109. “But the opinion of the inexperienced and uninformed is dangerous”

    That’s what I keep saying about posters like Mooney and 6.

  110. So he’s opinionated, big deal. What should matter is the substance.

    The “substance” is pretty much why I can’t abide the dude. That and his incredibly annoying fanclub.

  111. Ned: But the opinion of the inexperienced and uninformed is dangerous.

    They’re judges. Their opinion is their job. They were hired to have it and to voice it, and this isn’t their first time doing it.

    Besides, their opinion is only inexperienced and uninformed relative to a more senior judge on the panel, and even then only presumptively so, which doesn’t necessarily make them raving lunatics. It’s not nearly as crazy as, say, convening a dozen random citizens off the street and asking them to decide who should win the case.

    Ned: The opinion of junior party might deflect the whole discussion into irrelevancies.

    If that happens, I fully expect the senior judge to focus the discussion on the important points when it’s his turn to speak. It’s better than if the senior judge takes the discussion off on a tangent and the junior judge is too intimidated by his rank to contradict him.

    Curious: What I like most about Quinn is that he cares. He cares about the small inventor (like me) and does not ask for anything in return.

    Actually, he offers patent services to small inventors through his blog, and he will invoice you. Max may say “all credit to him”, but he’d probably also take cash.

  112. EG, MaxiDrei and Paul Morgan, thank you for adding substance to this discussion. I agree, Quinn got the interview because he asked and no one else did. And it was a well thought out, prepared interview. He is respectful of those he interviews because it seems he only posts what it is they are willing to have on the record. What I like most about Quinn is that he cares. He cares about the small inventor (like me) and does not ask for anything in return. He is not just a blogger, if he were only seen as a blogger I highly doubt that he’d have been given full press credentials to the Bilski court hearings. And I doubt that was a lie he’d post on his blog.

    So he’s opinionated, big deal. What should matter is the substance. Just because someone does not agree with you does not make them “out of it” or egotistical. I respect Gene because he does so much to support the small inventor and frankly seems to be someone who is making a difference in the patent world. That is why he as granted the interview with Rader, and Folcarino and others. In fact Dennis posted the letter the Michelson sent to congress here on Patently O, but Gene went a step further, interviewed Michelson and delved into why he wrote the letter and what were his thoughts behind it.

    Not a Quinn Fan, are you an avid follower of the IPWatchdog Blog? if you follow the blog you will recall that the comments you refer to were comments made to an article he wrote about his pending lawsuit with ISC. Did you ever stop to think that maybe the comments were removed because of the pending case? That was the first thing I thought. And beyond that, unlike this blog, Quinn does not leave comments on his blog that are nothing but insults and “flame throwing” such as the “douchebag” comment you refer to in the ;link you provided above.

    I can’t find the article he wrote this comment in but he even says in at least one of his blogs that if all you are going to do is flame through and not add anything to the discussion, then they are not welcome to comment. He does not remove the comments of those who disagree, only those who name call and bash him or others and act like children. I think it’s classy really.

    For those of you who just bashed him in this thread alone, while adding no substance to this discussion, you must have either been bullied in school or done the bullying yourself. Whether you like Quinn or not, agree with his political stances or not, he gets the job done. Do I agree with everything Quinn posts, no of course not. But he does not just post what others write and he does not make assumptions to what others think and feel. He does his research and reaches out to those of power within the patent world and is making a difference for the betterment of all of us individual inventors. How can you not have respect for that?

  113. INANE, perhaps. But the opinion of the inexperienced and uninformed is dangerous.

    If Rich were on a panel, for example, I would like to hear his opinion first. The opinion of junior party might deflect the whole discussion into irrelevancies.

  114. Junior judge goes first.

    That should bother people.

    Why should it bother people? I completely agree with the principle that the junior judge should speak first, for exactly the reason Rader gave. It’s the best way to get all three judges’ opinions, instead of one opinion and two concurrences.

  115. “burden of persuading him/herself”

    Right, so the burden of persuasion is merely the burden of persuading myself.

    Now, lets say on appeal, appellant accused me of improperly switching the burden of persuasion to them. I’m not sure how my persuading myself of something could be called “improper”. And since before appeal I was simply persuading myself by the reasoning given, how would I now be improperly switching the burden of persuasion over to them? That said, of course it is up to the board to either be persuaded by me or not, and it is up to me to persuade them. I’m not sure how my doing so would be “improper”.

    I’m decently good at persuading people, and I think that the attorney sees the writing on the wall. This attorney appears to be floundering in their latest reply in my case. It’s quite funny and I can only imagine that their client is pushing them hard to continue the appeal.

    Let me go ahead and get your opinion, or anyone else’s, on one other thing, if you don’t mind taking a moment.

    A method in an asserted 102b reference comprises baking a cake;
    placing icing all over the top of the cake; removing icing from the cake to form the shape of a human face; (and in a later figure you can clearly see that all the icing around the edges has been removed, only the human face shape remains on the cake). The only icing removal step stated in the reference was the one mentioned already.

    Applicant comes in with an admission of prior art in their background. It states that as their admitted prior art there is:

    a method comprising: backing a cake; placing icing all over the top of the cake; removing icing from the top of the cake such that a human face shape is formed in the middle and a ring of icing is left around the edge of the cake; removing the ring of icing around the cake in a second removal step; and plainly only the human face shape remains.

    Applicant then submits as his claim:

    A method comprising:
    baking a cake;
    placing icing on the entire top of the cake;
    forming a human face shape in the middle of the cake simultaneously with removing the icing from the edge of the cake.

    Anticipation by 102b or not sir? Furthermore, would you classify the anticipation as being implicitly or explicitly?

    Assume that we don’t care about 103 at the moment.

  116. As I said before, let’s not lose sight of the fact that this interview with Judge Rader has given us an very informative view into how the Federal Circuit considers and decides cases. Rader was very candid about what goes on during Federal Circuit deliberations and giving us his “judiicial philosophy” about how he views opinions, especially dissenting opinions. We all owe a big tip of the hat to Gene for getting this interview, and as Paul Morgan correctly observed, providing thoughtful questions beforehand so Rader could give us thoughtful (not flippant) answers.

  117. 6:

    At examination phase, the examiner bears every burden you can think of – coming forward on all elements of prima facie case (for example, for obviousness, showing that every claim element is known, and one of the seven recipes of MPEP § 2143, and the burden to support all with substantial evidence), burden of persuading him/herself, and the burden to answer all material traversed, etc. Applicants have no duty to serve, only to volley.

    On appeal, only the burden of coming forward shifts to the applicant – burden of persuastion and burden of supporting by substantial evidence remains with the examiner. If the examiner did indeed make out all elements of a prima facie case, then the burden shifts to come forward with rebuttal on secondary factors.

    That’s the law. In practice, a smart applicant puts in some evidence on issues of fact where the Board could readily misinterpret the evidence.

    This is a reply thrown together quickly — there may be corner cases I neglected.

  118. Good point Paul. Protecting small inventors from being led astray is a very valuable public function. All credit to anybody who succeeds in that worthy endeavour.

  119. Quinn not only asked for the inteview, he sent respectful written questions in advance, as the full transcript indicates, which I suspect was a big help in his getting the interview.
    P.S. Quinn’s blog, for all its faults, is primarily pitched to “small inventors” and their protection from crooks and missinformation [not really pitched to patent attorneys], and thus does serve a publicly useful purpose.

  120. Mooney’s Mom,
    Did you pass that to him? Or is all DNA unpatentable. Thankfully there will be a choice. Marbles or Tennis.

  121. Maxie,

    I shudder to think which camp you place me in.

    Wait. No I don’t. Your opinion of me doesn’t matter.

    But we still have fun together, don’t we?

  122. NWPA,

    A tip of the hat to you! And yes, the others are envious that Gene simiply asked and got the interview.

  123. Not, thanks for that. Fits with my experience. The way I see it is that Rader has to be careful not to be seen to have a favourite law professor in the classroom. Example, how could he have given an interview only to Dennis? Would that not have been a slight to certain others?

    But can anybody possibly suppose that Quinn got the interview because Rader holds Quinn to be the nation’s “leading” patent law blog.

    This reminds me, I must check out in Wikipedia the concept of the “useful 1d1ot”.

    If I’m right, you wouldn’t want Dennis to be the blog-runner that Rader favours. He’s no “teacher’s pet” is he?

    I speak as somebody who was once, a long time ago, on the receiving end of Quinn’s rudeness. Readers, you will gather that I think there’s a difference between being provocatively opinionated and simply being unpleasantly and unnecessarily rude.

  124. >>Rader chose to talk to Quinn, the Fox News of >>patent blogs.

    Probably for one reason–he asked J. Rader and the other blogs did not.

  125. You have to respect J. Rader. He isn’t afraid to mix it up with people. He is a lot of fun to argue with.

  126. Curious, a lot of the dislike for Quinn stems from the way he handles his blog. He loves to say controversial things (if you read his blog, then you’re well aware that he likes to try to provoke the folks who are for open software or weaker patents), and then moderate or delete any criticism he stirs up. I just now went looking for my all-time favorite ridiculous Quinn quote only to find that the entire post has been deleted. Not only that, but his reactionary freakout post to the comments in that post has also been deleted (see here: link to patenthawk.com – note that the referenced IP Watchdog post no longer exists). Is this, i.e. provoking people and then deleting the mess if it turns into a fiasco for you, an intellectually honest way to run a blog?

    And no, to whoever suggested it, it’s not envy (we don’t have blogs, what basis for envy do we have), it’s annoyance that of all the patent blogs out there, Rader chose to talk to Quinn, the Fox News of patent blogs.

  127. Folks,

    Do I sense a bit of “envy” here that Gene got an interview with the soon-to-be Chief Judge of the Federal Circuit? Just be glad Gene got this interview with Rader. Some of the insights into the workings of the Federal Circuit are quite interesting.

    Yes, Gene has some strongly held beliefs and opinions, some of which I’ve disagreed with (and he’s still respected me for disagreeing0, but many of which I do agree with.

  128. I don’t always agree with Mr. Quinn, but I’m not sure why anyone should dislike him? I used to work for John White, for the sake of full disclosure, but all the posts there now seem to be by Quinn these days.

  129. Dennis thank you for your answer to my question. What I don’t understand is why everyone commenting on this post is just throwing daggers at Gene Quinn but is not adding any kind of substance to the discussion. I read both blogs and find both to have very insightful information but up until now I have never had the desire to make my opinion known.

    Gene’s writings are often quite opinionated, but that is what so many people that I talk to like about him. He’s not afraid to share his opinion. Although this is not the first time I have seen such inappropriate comments to other people you mention on your blog, this is by far one of the more blatantly hostile. Frankly your allowing all of this dagger throwing, condesention and non substance is really starting to turn me off of your blog.

  130. C – Good question. No hidden message intended. My only point is that Judge Rader is very willing to engage in open discussions and by talking with Gene (a blogger + critic), Judge Rader is showing that he’s also willing to step outside of the normal channels.

  131. Dennis,

    I read both this blog and the IPWatchdog blog, so I have a question in regard to your comment in your opening paragraph “The content of the interview is interesting as is the fact that Judge Rader was willing to sit-down to record an unscripted give and take with Gene (a blogger and avid critic).”

    Why do you find it “interesting”: that Judge Rader was willing to sit down and go on record with Gene. Is there a hidden message there? Are you trying to say something?

  132. I note that Dennis doesn’t have a link to IPwatchdog.com as one of his “friends” (on the right column) anymore, so something must have happened between the two guys

  133. I once tried to kill Gene’s family by starvation if you listen to him tell it. But in any case, can someone help me out with this burden of persuasion stuff?

  134. Guys, I have a question, does the office bear the “burden of persuasion” in prosecution at the beginning or do we only bear the “burden of going forward”?

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