Therasense Inc. (now Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010)
The Federal Circuit has granted Abbott’s request for an en banc rehearing on the issue of inequitable conduct.
The rehearing will focus on six questions of law:
- Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?
- If so, how? In particular, should the standard be tied directly to fraud or unclean hands? See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945); Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238 (1944), overruled on other grounds by Standard Oil Co. v. United States, 429 U.S. 17 (1976); Keystone Driller Co. v. Gen. Excavator Co., 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?
- What is the proper standard for materiality? What role should the United States Patent and Trademark Office’s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?
- Under what circumstances is it proper to infer intent from materiality? See Kingsdown Med. Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (en banc).
- Should the balancing inquiry (balancing materiality and intent) be abandoned?
- Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context.
Abbott’s en banc brief is due in 45 days from today. The response is due within 30 days of service of Abbot’s brief. Briefs of amici curiae will be entertained and may be filed without leave of court. Under Fed. R. App. Proc. 29, the amicus curiae brief must be filed within 7–days of the filing of the principle brief of the party being supported. If the amicus curiae does not support either party then the brief must be field within 7–days of the petitioner’s principal brief.
Comment: The correct answers to these questions depend upon the purposes of the inequitable conduct doctrine. Namely, is the doctrine intended to the behavior of patent prosecutors is is it intended to catch perpetrators. The major empirical issue is that the doctrine pushes patent prosecutors to over-compensate in ways that potentially harm the system and certainly raise the costs of patent protection.
IANAE,”But even limiting our discussion to the prima facie case case, how can you say a reference that represents the closest known prior art does not make out a prima facie case of obviousness when you know you’re unaware of all the art? How can you say a reference that represents the closest known prior art is not material when you disclose less close prior art? How can you say a reference would not make out a prima facie case if you don’t want the examiner to know about it?”
When does an applicant say these things? All one has to do is state in his oath on filing that he believes he is and inventor and that he has complied with Rule 56. When an inventor files, he has a duty to file claims that are patentable over the prior art. If one actually complies faithfully with this duty, there should be no art that needs to be disclosed.
The background section should discuss the current known state of the prior art. If it does not, perhaps here there might be a problem. This obligation to discuss the art in the background section might be akin to an obligation to disclose the best mode.
Obviously, the facts may change so that if I actually say something that makes what I say inconsistent with the non disclosed art, I have committed IC right there. This implies that if the situation changes, disclosure may become required so that my argument might be based on the “full” record.
This third party view about validity is what was important for the Supremes.
Yes. A third party view. Not the actual invalidity of the patent as found by a court, but the fact that the patentee was informed by a credible source that the patent was invalid (doubtfully valid).
If invalidity were an element of inequitable conduct, it would have to be found by the trier of fact. In this case it was not, and the Supreme Court’s approval of that process is a strong (some might say conclusive) indication that invalidity is not a requirement.
Our differences now are minor since he does now seem to agree that Rule 56 require that a reference establish a prima facie case of unpatentablity.
That is indeed one of the ways a reference can be material under Rule 56.
A reference can also be material if it is inconsistent with a position the applicant takes in asserting an argument of patentability. Like, for example, if you assert that the claims you filed should be allowed, but you know you’re sitting on art that you’d rather the examiner not see before allowing the case.
Conduct can also be inequitable even though it violates no written law or rule, because that’s the entire point of equity and always has been.
But even limiting our discussion to the prima facie case case, how can you say a reference that represents the closest known prior art does not make out a prima facie case of obviousness when you know you’re unaware of all the art? How can you say a reference that represents the closest known prior art is not material when you disclose less close prior art? How can you say a reference would not make out a prima facie case if you don’t want the examiner to know about it?
IANAE, it was not Downie’s opinion that counted. Here is what the case said, once more:
“The patent issued, and plaintiff, contemplating the bringing of an infringement suit thereon against the Byers Machine Company, was advised that the prior use at Joplin was sufficient to cast doubt upon the validity of the patent.”
It is quite apparent that Downie was advised by someone, litigation counsel it appears, that the Joplin reference was invalidating. Knowing how opinion lawyers write, they would say something along the lines of “cast doubt” for some wiggle room.
This third party view about validity is what was important for the Supremes.
Now you emphatically and repeatedly state that a reference may be material under Rule 56 even if it does not render a claim unpatentable.
I do indeed. A prima facie case of unpatentability is not the same thing as unpatentability. A prima facie case is something more akin to “seems unpatentable at first glance”. It’s enough for an examiner to issue a rejection with a straight face, no more.
the issue of whether they are constitutionally capable of holding a reference material when a jury has found it to be immaterial under the standard of Rule 56.
Juries. Don’t. Find. References. Material.
Juries find patents valid or invalid. They find features present or absent in references. A jury can never find, because it is never asked, whether a reference is material to make out a prima facie case of unpatentability.
I’ll grant you that if a jury finds a claim unpatentable over a reference, it can be inferred that the reference is material. But you can’t get more than that out of what the jury has actually found.
IANAE, I rely on the plain language of Keystone Driller.
Great. Quote me that plain language. So far, I haven’t seen any language in Keystone Driller that you could rely on.
Invalidity over the prior use was assumed for the prior use to be material in that case.
All they said was that the patentee thought the prior use might invalidate the patent. That’s a far cry from finding a claim invalid. It’s actually much closer to the standard applied today – if you’d rather the examiner not see it, you have to disclose it.
ping, you are increasingly demonstrating your inability to reason to even think that IANAE has made a slam dunk here. I am slowly, very slowly indeed, demostrating to IANAE my point. He is gradually giving ground. Our differences now are minor since he does now seem to agree that Rule 56 require that a reference establish a prima facie case of unpatentablity. (alone or in combination, of course)
IANAE, I rely on the plain language of Keystone Driller. Invalidity over the prior use was assumed for the prior use to be material in that case. There is nothing in the case to suggest otherwise.
IANAE, you agree that Rule 56 requires the reference make out a prima facie case of unpatentability, alone or in combination, but strongly and repeatedly disagree that a reference is material only if it makes out that at least one claim is unpatentable, alone or in combination. Let’s eliminate the “or in combination” for a moment to make the logic cleaner.
Rule 56 says a material reference (establishes) => a prima facie case of unpatentability.
Rule 56 says prima facie case of unpatentability => Information [that] compels a conclusion that a claim is unpatentable.
Now you emphatically and repeatedly state that a reference may be material under Rule 56 even if it does not render a claim unpatentable. (Alone or in combination.) You define instead a “relevance” standard.
Your reading of Rule 56 is not tenable. What you are reading into rule 56 is its state prior to its wholesale revision in 1992. See Mossinghoff, ex commissioner, address to the ABA in 2002 for more on this. link to oblon.com
Now that the Feds have taken this issue en banc, they need to address their glaring lack of consistency between their standard of materiality and Rule 56, and the relationship of Beacon Theaters to the issue of whether they are constitutionally capable of holding a reference material when a jury has found it to be immaterial under the standard of Rule 56.
And that’s another Slam Dunk by IANAE…
…as Ned nervously looks around at the action, with the realization slowly dawning that the game is not waiting for him to move from the foul line.
“But, materiality is defined much differently by Rule 56”
“Read the friggin Rule please.” Ned – I done already pointed out to you that with the and/or construction, the elements I presented (well before you dismissively demanded proof) support the views taken by IANAE, myself and the rest of the world. Must have been while you were being all spuriously self-evident or somethin.
It requires a claim be unpatentable over the reference, alone or in combination.
No, it most certainly does not.
Nowhere in Rule 56 does it say anything about whether a claim must be patentable over the reference. Only that the reference make out a prima facie case, and not even all by itself. If you don’t know what other relevant art exists and can be combined, particularly if you’re within 18 months of filing, it’s very suspicious to withhold what you believe to be the closest art.
All this leads one to believe that the Federal Circuit “materiality” standard differs from Rule 56 and is more strict, meaning one can literally comply with Rule 56 and STILL be found guilty of IC.
I don’t necessarily have a problem with that either, if it’s the case. This is a question of equity, and if you’ve technically complied with the black-letter rule while clearly manipulating the system you should lose your patent. Like if you disclose a very pertinent reference buried under two thousand less pertinent references.
Given this, I think the holding of the Supremes critically depended upon the independent investigation of litigation counsel that the Downie patent was invalid.
Unless the court found that a claim of the patent was invalid, this does not support your point. If anything, it shows the opposite – that the court determined unenforceability without even turning its mind to the actual invalidity of any claim.
ping, do you really agree with IANAE’s definition of materiality?
IANAE, “Materiality means …the art appears on its face to have some relevance to the patentability of the claims.”
This is indeed the standard that you, ping and the Fed. Cir. seems to be using. Add to this guilty intent and voilà, you have IC.
But, materiality is defined much differently by Rule 56. It requires a claim be unpatentable over the reference, alone or in combination. Mere relevance to this determination is not enough.
I hope you can see that the materiality standard you defined and the materiality standard defined by rule 56 are different; and further, that your standard has a lower threshold.
If indeed your standard is the proper rule, a find of validity is not inconsistent with a finding of IC. There are a lot of folks here who seem to agree that a finding validity over a reference does not negate a finding of IC for non disclosure of that reference (and we are not taking here of any other evidence, such as long felt need, to support validity.)
All this leads one to believe that the Federal Circuit “materiality” standard differs from Rule 56 and is more strict, meaning one can literally comply with Rule 56 and STILL be found guilty of IC.
Regarding Keystone Driller, we have been around this block before. The case was on appeal from a dismissal at the preliminary injunction stage. Given the posture of the case, there was no finding that the Downie patent was invalid.
However, the Supremes did cite the testimony that the Downie was advised by litigation counsel, it appears, that the prior use was invalidating. Downie then set about to suppress the evidence before bringing suit.
Given this, I think the holding of the Supremes critically depended upon the independent investigation of litigation counsel that the Downie patent was invalid. Had the advice been the opposite, I sincerely doubt the result of Keystone Driller would be the same.
That would be a Slam Dunk for IANAE (Ping humbly accepts the assist).
You see Ned, you get side tracked every time with your desire to have a no-harm-no-foul scenario.
“How do we tell whether it should have been disclosed?”
Asked and answered Ned – like a billion times now.
“We look at whether the claim is unpatentable over the reference (alone or in combination). …But, this is the exact same showing that has to be made to invalidate ”
No No No. a billion times – “material” is not the same as “unpatentable” or “invalidating”. Material just means “take a look”.
“you are going to have to explain just how a claim can be both valid…”
Ned, does the word “No”, mean anything to you? I thought you got the difference between validity and materiality. Repetition of the same error is rather spuriously self-evident (and you still haven’t addressed my points).
Jim,
Your post above is only one way of structuring the definition of what it means to be material. I have provided another, equally valid construction of the and/or nature in the Rule. Your dependence on “a matter of the words ‘prima facie.’” is misplaced.
We look at whether the claim is unpatentable over the reference (alone or in combination).
See, there’s your problem right there.
Material doesn’t mean invalidating. Material means, loosely speaking, that the art appears on its face to have some relevance to the patentability of the claims. Basically, if you would prefer that an examiner not know about the reference, you should be telling him about it. If the reference is kinda close, and you’re not sure whether the examiner could find another reference to add the missing feature and make his prima facie case (even though you could traverse said prima facie case), you should disclose it. In other words, the closest art is pretty much always material, because if you’re doing your job you will have claimed as closely to it as you could manage.
Whether the claim is unpatentable, over the withheld reference or otherwise, is of no relevance to the determination of materiality. Still waiting for the quote to the contrary from Keystone Driller.
Ping, the foul happens upon non disclosure which is an act with “foul” intent. The “materiality” is, of course, with respect to a claim and to a reference and to an argument or other evidence. Now, making an argument or filing an affidavit inconsistent with a non disclosed reference is, itself, fraud. But this is not what we are talking about. We are talking about garden variety non disclosure and nothing more.
Jim and Ping, so the patent issues. The reference was never disclosed. How do we tell whether it should have been disclosed? We look at whether the claim is unpatentable over the reference (alone or in combination). This means that all the elements of the claim are disclosed by the reference itself, or when combined.
But, this is the exact same showing that has to be made to invalidate a claim. So, my argument is this: if the jury has found the claim valid (assuming no other evidence of long felt need, etc.), it necessary also found the claim patentable over the reference.
Now if you really disagree with this, you are going to have to explain just how a claim can be both valid and unpatentable over a reference.
Ned and Ping:
Rule 56: “… information is material to patentability when … [I]t establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim.”
It’s not so much a matter of timing, as it is a matter of the words “prima facie.” A later decision that a claim is valid has no bearing on whether withheld information was prima facie evidence of unpatentability. The decision may be a judgement that the prima facie case was rebutted, but if there was a prima facie case at all, the information was “material” as defined in Rule 56.
Ned,
Explain the actual words of the rule from my post at Apr 29, 2010 at 01:13 PM:
“The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined”.
Then explain how you can consider this being so self-evidently spurious that you felt compelled to ingore the words of the actual rule.
I think that you need to show that the legislative intent so explicitly captured is spurious to the point that I am making.
Ned,
Read teh friggin Rule. I don’t believe that how I be reading teh Rule is so self evidently spurious, that your non-response was helpful, much less overcoming the clear reading.
As soon as you realize that Rule 1.56 is in play well before the jury, you will realize that the materiality “as defined in this section” (hint – that’s from the Rule), is specifically talking about a non-jury item. Rather, as I have done esplained to you over and over again, the materiality that the Rule is talking about is at the point in time of the Rule. The Rule is for the examiner to make a call on close items, after the applicant in his judgment has deemed the item close enough (elements given at at May 02, 2010 at 12:26 PM and repeated at May 03, 2010 at 10:56 PM). The foul doesn’t happen down the road. The foul happens at the point of non-disclosure. The foul happens when the examiner is deprived of the reference. Your royal “we” be the ones conflating this point (tis easy to see how Ken did this, he kept on talking about validity).
It’s amazing that you cannot see the plain purpose fo the rule in making sure that the examiner has these “close enough” items in front of him while doing his examination (another hint- this is explicitly spelled out in the Rule. I even posted this portion of the rule for you. You must have thought this part of the rule to be self-evidently spurious).
The Rule is about timing. We are not discussing whether a jury is looking at the reference and determining materiality. You are simply wrong in wanting the timing to be at trial. I understand why you are standing at the foul line. Yous just aint gettin the ball there. The Ref aint coming to you.
IANAE, the Supremes decided Keystone Driller long before they decided Beacon Theaters.
I don’t care when they decided it. You asserted (if I remember correctly) that Keystone Driller stood for the proposition that unenforceability requires a showing that at least one claim was invalid. Show me where Keystone Driller says that.
Now, if the PO had demanded a jury trial on the issue of validity over the prior use, I think today the Supremes would be hard pressed to deny him that trial
Of course one could get a jury trial on validity. But the determination of validity (and the facts underlying it) is not relevant to the question of unenforceability, which is why inequitable conduct can be decided at a bench trial before a jury trial on validity/infringement (see e.g. Star Scientific v. RJ Reynolds).
IANAE, the Supremes decided Keystone Driller long before they decided Beacon Theaters. Now, if the PO had demanded a jury trial on the issue of validity over the prior use, I think today the Supremes would be hard pressed to deny him that trial unless, as you say, the materiality of the prior use was completely beside the point.
Hopefully, someone in the current en banc case will raise these issues.
ping, materiality generally has nothing to do with timing. In contrast, intent does.
Materiality is with respect to claims. If a claim is added or subtracted or amended, it may change the materiality of a reference. Ditto when one makes an argument. But it acts “in rem.” The reference either is or is not material, meaning it has all the elements of the claim, or the elements that, with other references, distinguish the claim over the art.
When a reference refutes an argument made, it becomes material. But, thereafter its status does not change unless a more material reference is disclosed.
The materiality issue is determined at trial. The Office has no independent authority to investigate fraud on the patent office with respect to an issued patent, although the US Supreme Court held in a case against Bell Telephone that the USPTO did have authority to sue for revocation of a patent obtained by fraud.
You seem to conflate when the issue of materiality is determined with when an act of non disclosure is committed. We have never directly responded to your point as it appeared to be self evidently spurious.
I hope this explanation helps explain the issues just a bit more so that we can move on to discussing the elements of proof of materiality without digressing to much.
“elements of proof of materiality, you manufacture a whole new set of facts that allow you to neatly avoid the issue”
Maybe because I asked you first (read teh friggin chain above), and the “manufactured set of facts” came prior to your request for proof and you never answered my points, Ned.
Maybe.
And then maybe because the “issue” you want to focus on isn’t the deciding issue of the Rule (have your read the Rule yet? have you read the portions that I have highlighted for you).
Maybe.
And just maybe you are so caught up in the seriousness of your position that you cannot plainly see that you haven’t addressed my points of materiality (not invalidity) and time (before the examiner and not the jury), because the Rule simply doesn’t support you. And maybe you don’t want to see that the elements as I laid out at May 02, 2010 at 12:26 PM and repeated at May 03, 2010 at 10:56 PM, which you have not addressed. And just maybe that’s why when Ken launches on his (c)onstitutional argument of invalidity, you only too happily jump in step to avoid my points.
Maybe.
Then again, maybe the reds, blues and greens of yours have placed you in that special happy place that prevents anything but IMHO-Ned law to reach you.
The Supremes were operating under the theory that the patent was invalid over the prior use had the case gone forward.
Where in their reasons do they say or imply that?
I’ve always thought of unclean hands as a catch-all term for acts that don’t necessarily rise to the level of being unlawful, but are unsavory enough that we’d rather not reward them. I’m just as likely as you to be reading my personal bias into the case, except that I’ve provided a specific quote in support of my position whereas you have yet to do the same.
IANAE, true, but it was clearly more than “the prior use may have made it more difficult to obtain the patent.” The Supremes were operating under the theory that the patent was invalid over the prior use had the case gone forward.
Ping, I don’t know why I should expend any effort with you, but when I ask you to list the elements of proof of materiality, you manufacture a whole new set of facts that allow you to neatly avoid the issue. Rather than treat the subject with seriousness, you simply play games.
“The patent issued, and plaintiff, contemplating the bringing of an infringement suit thereon against the Byers Machine Company, was advised that the prior use at Joplin was sufficient to cast doubt upon the validity of the patent.”
Cast doubt upon the validity?
Sorry, not good enough. Show me where Keystone Driller says inequitable conduct depends on a claim being found actually invalid. That’s what you claim, isn’t it?
“sustain the holding of unenforceability, both the district court and the Feds had to concluded otherwise”
They only had to conclude that Rule 1.56 was violated. They did not have to engage in the speculation that you think the following the Rule requires. It is not a matter of determiningn what an examiner may have said on the submission, it is a matter that the examiner was not given the chance to say anything.
Again – you are stuck in your no-harm-no-foul mindset.
“Second, the evidence of the prior use was presented to the jury”
Except, Ned, the issue was that such was supposed to have been presented to the examiner. The violation of Rule 1.56 isn’t in play at the time “before the jury”. To quote you: “Read the friggin rule, please.”
The foul call was up the court, not at the time of making the shot.
Step away from the foul line.
IANAE, the Supremes said this in Keystone Driller:
“The patent issued, and plaintiff, contemplating the bringing of an infringement suit thereon against the Byers Machine Company, was advised that the prior use at Joplin was sufficient to cast doubt upon the validity of the patent.”
Note, Keystone Driller involved two court cases, not just one. There was a failure to disclose to the PTO, and active suppression of evidence in the first case. The remedy of dismissal extended to all patents in the second case.
Regarding Avid, there seems to be no evidence of active suppression. Second, the evidence of the prior use was presented to the jury and the patent sustained over it.
The president of Avid stated his belief that the prior use was of a prototype, incomplete. Had it been disclosed to the PTO, it Office could not have entered a rejection based on anticipation. Obviousness perhaps. We do not have enough information.
But that is speculation. The facts are that a jury held the patent valid over this evidence. That is enough to conclude that the examiner could not have sustained a prima facie case of unpatentability over the prior use. But, to sustain the holding of unenforceability, both the district court and the Feds had to concluded otherwise.
This is where the 7th Amendment comes in to bar this conclusion.
Ken,
“What has happened here, which I keep pointing out”
You keep pointing this out and I keep telling you that you are pointing in the wrong direction. And that’s in addition to having to keep untangling your validity/unenforceability problems.
I done told you to listen to IANAE. He has shown you where the authority comes from.
But since you won’t listen to him, you might start at 35 USC 281. You will notice that this is law, rather than rule and you might think about what “civil action” entails.
What has happened here, which I keep pointing out, is that no where has it been shown that the Courts have the power to invalidate, hold unenforceable or otherwise detract from the presimption of validity of a patent absent a showing that the patent violates Title 35 U.S.C.
35 USC explicitly provides a defense of unenforceability. What do you think that means?
IANAE, under Keystone Driller, it originally applied to other, valid claims and to any other patents that covered the products accused of infringement. Since the remedy is so apocalyptic, no one in their right mind would intentionally obtain any invalid claim by slight of hand.
You’d think so, and yet people continue to do so.
Where exactly in Keystone Driller does it say that the finding hinges on the invalidity of one or more claims in the family? The case is summarized thusly in a not-so-much-later Supreme Court case at 294 US 42, footnote 2:
“In General Excavator Co. v. Keystone Driller Co., 62 F.(2d) 48; Id., 64 F.(2d) 39, the same court found that the owner of the patents had attempted suppression of evidence of prior use, so as to render more certain the sustaining of the Downie patent which was involved in the Byers Case, and had then used the decree in that case as the basis of application for preliminary injunction in the General Excavator Case.” (emphasis mine)
Sounds like even then the Supremes thought that concealing prior art to improve your odds, and later asserting the patent, was reason enough to hold the patent unenforceable in equity. With or without a finding of invalidity.
Ping you obviously have difficulties understanding the Constitutional Framework of our government. Although Rule 1.56 provides a rule, Title 35 U.S.C. limits the power of the Courts with respect to defenses for infringement. What has happened here, which I keep pointing out, is that no where has it been shown that the Courts have the power to invalidate, hold unenforceable or otherwise detract from the presimption of validity of a patent absent a showing that the patent violates Title 35 U.S.C.
Please show me where that power is conferred on the courts. As I have said before, it appears that the courts are making law in contranvention to Congressional legislation.
Moreover, the patent and trademark office could no more provide the court with the authority to do this than it could limit the number of continuations that could be filed. What you are advocating is that rule 1.56 amounts to substantive law, if it provides the defense you state it does, and, therefore, is verboten absent Clear Congressional intent to allow the USPTO to promulgate substantive law. Remember the Glaxo Smithkline case? Your interpretation of 1.56 is way off the mark.
You will note that I did solely use the rule, and I provided the elements and the rationale, but somehow (gee), ya missed it.
***************************************************
SAR
“At least IANAE does listen.”
Ned,
I’m not the one being difficult and not listening. I am the one that has to keep pointing you back to the actual rule. You are the one that keeps making things difficult. You concede point after point to both IANAE and me, you just haven’t doubled back to the foul line yet with IANAE (oh, you tried, but IANAE called you on it – “ But why would you bother showing unclean hands if you have already produced a reference that invalidates the claim?“).
ping, the man up lifts himself by his own boots, whose reasoning forms a perfect circle, and who mathematics always ends by multiplying by zero and adding in the right answer.
I wonder why I even try to have a serious conversation with you. At least IANAE does listen.
“Solely using Rule 56, please give me the elements of proof necessary to prove a non disclosed reference is material.
Posted by: Ned Heller | May 03, 2010 at 12:00 PM ”
Elements of proof to prove….
Except, Ned Rule 1.56 is not asking you to prove anything.
Regardless of your faltering sanity, the terms in 1.56, listed in “ands” and “ors” are not merely satisfied only by the quote that you provided and demanded “proof” for. In fact, I had already given you a rendition of those terms that if you took the time to read, may have prompted you not to write your little proof post.
From above,…
Ned,
Just to show you how helpful I can be, here is the section of 1.56 you need to read:
Information is material to patentability when it is not cumulative and it is inconsistent with a position the applicant takes in asserting an argument of patentability.
The argument of patentability naturally being asserted in the imediate case is that the public disclosure does not impact the patentability. It may or it may not (the definitive aspect is not the important point – the important point is that the examiner has to be made aware of it, becuase it “may”
You will note that I did solely use the rule, and I provided the elements and the rationale, but somehow (gee), ya missed it.
aaiiir baaallll.
IANAE, under Keystone Driller, it originally applied to other, valid claims and to any other patents that covered the products accused of infringement. Since the remedy is so apocalyptic, no one in their right mind would intentionally obtain any invalid claim by slight of hand.
For example, I suggest it is unclean hands to withhold a reference that will invalidate a claim.
Clearly. But why would you bother showing unclean hands if you have already produced a reference that invalidates the claim?
We agree that unenforceability is a defense provided by law. Surely it must apply in at least one case where none of the other defenses (e.g. invalidity) apply, otherwise why would it exist at all?
Ken, have you been following enough of my arguments to understand them? For example, I suggest it is unclean hands to withhold a reference that will invalidate a claim. That was the essence of Keystone Driller. Where we get argument from the likes of Ping, IANAE and the Feds is when the reference is not invalidating, but close, perhaps closer than any other art of record. They would hold the claim unenforceable even though Rule 56, by its own terms,does not require its disclosure.
I will agree with you IANAE that the statute does additionally provide for the defense of unenforceability, and this means generally that equity will deny enforceablity under the doctrine of unclean hands.
The doctrine of unclean hands? That sounds a lot broader and more nonspecific than Rule 56.
In any case, you’ll surely agree that a defense only avails if there would otherwise be liability. In other words, unenforceability must be available as a defense against valid patents.
IANAE, generally, one denies infringement. One does not plead non infringement. We on the AIPLA patent law committee concluded that this defense was really intended to be the reverse doctrine of equivalents suggested by Graver Tank.
I will agree with you IANAE that the statute does additionally provide for the defense of unenforceability, and this means generally that equity will deny enforceablity under the doctrine of unclean hands.
The fact is that there are so many arguments against the current practice of the Federal Courts for holding patents unenforceable on equitable grounds absent a showing of factuatl invalidity pursuant Title 35 that they are grasping at straws.
Title 35 provides invalidity as a defense to infringement, and unenforceability as a separate defense to infringement.
Why do you think Title 35 needed to provide an additional defense against invalid claims? Wouldn’t their invalidity be defense enough? Doesn’t the existence of the unenforceability defense logically mean that there could be valid-but-unenforceable claims out there somewhere?
For bonus points, use the same “so many arguments” to demonstrate that non-infringement should not be a defense absent a showing of factual invalidity.
Ken, I’m not so sure they are legislating from the bench, but they are certainly taking the law into their own hands.
They can’t Ned. The fact is that there are so many arguments against the current practice of the Federal Courts for holding patents unenforceable on equitable grounds absent a showing of factuatl invalidity pursuant Title 35 that they are grasping at straws. After these past few days I am convinced that the Courts are legislating from the bench in contravention to Congressional intent. The question is how can they back themselves out of this.
Ned,
It must be sad to see your capabilities slipping so badly.
Ping, IANAE, et al., let’s try this from a different point of view,
Solely using Rule 56, please give me the elements of proof necessary to prove a non disclosed reference is material.
I said, unpatentable. Read the friggin rule, please.
Now show me in Avid where the Feds determined, as a element of proof, that the withheld reference rendered any claim unpatentable (invalid)?
Why do you keep insisting that a reference is only material if it invalidates a claim? And why do you think the courts would ever have a standard that reduces to “invalid claims are also unenforceable”?
IANAE, Tell my how you file an IDS on a public use?
You could file photographs of the public-used article with an accompanying declaration or other documentation available at the time showing the date of use. You could describe it in the background section of the spec, which doesn’t exactly count as disclosing the public use but does make the public use cumulative of all the art on record. There are probably other perfectly good ways. Seems to me you’re trying very hard to find an excuse to not disclose relevant art, almost as if you don’t read recent court decisions on the subject.
Look all IANAE points out is that equity could be used to rener unenforceable invalid patents.
No, all I pointed out is that it would be a pretty dumb rule if that were the case. Unenforceability is only meaningful when it happens to a valid patent.
How can a judge apply rule 1.56 to two parties that never interacted with the USPTO? Take for example a patent that is sold to a party that has never prosecuted a patent. Take an infringer who has never done anything with a patent. I do not believe that a executive rule can be used to regulate the conduct of the citizenry at large, even citizens that have never had any involvement with the execute agency that promulgated that rule. That would be tantamount to a Congressional legislative act. That is patently unconstitutional (pun intended).
“ read for me the words from the rule about materiality…rendered any claim unpatentable (invalid)?”
Oh Ned, you are back standing on the foul line while the game is now at the other end of the court.
I did read you the words from the rule on materiality. Do you at least recognize that?
Your return to the foul line happens when you insist upon “as a element of proof, that the withheld reference rendered any claim unpatentable (invalid)“. You are back to your “no-harm-no-foul” mentality.
aaiiir baaallll
“Can’t find it can you?” – Don’t need to find it Ned. “Materiality” is not the same as “Invalidity”. The Foul is not on invalidity (you do realize that , right?).
There is nothing so blind as a man who refuses to see. You think the judge has no rules, but you are wrong. He has applied Rule 1.56. Try reading it with your eyes open.
Malcolm,
Ned must be heavy in to those reds, greens and blues.
Ken, you are making good points here. So the jury decides a claim is valid over a reference and the judge says, “So what.” I am going to find the claim unenforceable because I, the almighty judge, declare the reference “close” — not close enough to rendered the claim unpatentable, but close enough that we I combine its closeness with the stink eminating from patent owner’s testimony, I think the patent owner has cross the line — an invisible line in the sand that only I can see becuase I have no law, no rules and certainly, no sympathy.”
ping, read for me the words from the rule about materiality, and the defintion of prima facie case. Now show me in Avid where the Feds determined, as a element of proof, that the withheld reference rendered any claim unpatentable (invalid)?
Can’t find it can you?
ping: (yes, Virgina, the applicant is called on to make a value judgment or two)….
That smell that you think is from Denmark is from the bottom of your shoes
Would that be ‘Sweet Virginia’?
I don’t see the big deal.
Report anything that comes close – even remotely close. Remove the doubt and move on.
“Neither should it make a patent nonenforceable.”
Ah yes, some good ‘ol IMHO-Ned Law. Except it aint so, and nuthin you have said makes a compelling case as to your interpretation of things as they really are.
“One can literally comply with Rule 56 as in Avid”
Except they did not comply, did they? Are you regressing in your understanding of what is “material”?
Oops. (aaiiir baaallll).
Ken,
you are still in the weeds. Try to completely drop the validity portion of your argument and focus on enforceability until you understand the distinction. I’m pretty sure that IANAE is pointing out that invalid patents do not need to be held uneforceable. Do not pass Go. Do not collect $200.
The matter of whether valid or not is completely separate and is not the point of the current discussion (and least my discussion and we all know that my discussion is the important one).
Look all IANAE points out is that equity could be used to rener unenforceable invalid patents. In other words, the patent must be first determined to be invalid under the Code. Once that is determined the Courts have no jurisdication to legally review the work of Congress and the PTO. Rather, they use equity to prevent the alleged infringer from being held liable for infringement. That is a far cry from having a cleary valid patent and holding the same unenforceable because of some conduct on the part of a patent holder. The courts have assumed that authority and they aren’t suppose to.
Ping, Congress gave no authority to the PTO to provide substantive rules. Section 282 provides for the defense, in court, of uneforceability. Patent misuse is one ground for unenforceability that has nothing to do with patent office rules and procedures. Another is unclean hands.
Now, ping, consider this: a violation of the rules does not make a patent invalid. Neither should it make a patent nonenforceable. The source of the unenforceability doctrine are the Supreme Court cases involving patent misuse and unclean hands.
Rule 56 is an attempt to “codify” Supreme Court case law. As I said, it somewhat tracks Keystone Driller and for that reason is not ultra vires.
But what the Fed. Cir. has done is go far, far beyond any Supreme Court case and has gone far, far beyond current Rule 56. One can literally comply with Rule 56 as in Avid, and STILL be held to have committed IC.
That is the problem.
“So the question is begged, pursuant to what authority does the court rule the patent invalid, unenforceable or otherwise detract from its presumption of validity. Rule 1.56 does not allow this?”
Dude, up the meds. You keep on begging a question that’s not there. We aint talking invalidity at this point – making the patent unenforceable isn’t saying squat about its validity. You gotta grab that concept.
As to the equity authority – you haven’t been listening none too good either. IANAE esplained this to you. Congress gave the courts this authority. It’s in the Rules. You might have to look beyond 1.56, but IANAE gave you the section to look at. Go back upthread (I’m too lazy).
As to Congress leaving a gaping hole, they might be lazy (happens to the best of us), or they may just realize that following the rules they set up are important, and you will be spanked when you don’t follow them. They then let the courts decide how to spank. If you don’t like it, take it up with your congressman and your senator. I’m sure that your persuasive understanding of the law will make them jump up and slide the corrective language into the Manager’s Amendment (might help if you have lots of bucks behind your lobby efforts too – just an observation).
So the question is begged, pursuant to what authority does the court rule the patent invalid, unenforceable or otherwise detract from its presumption of validity. Rule 1.56 does not allow this? You see the court’s reason appears to be circular. Because a requirement exists, we provide a remedy and because we provide a remedy we are correct and because we are correct we provide a rememdy. No where does the court state from whence the power to deliver this remedy arises. They do not have it, in my opinion. Title 35 makes clears that only violations of the Title can be used as a defense against patent infringement.
This become really interesting when you consider the amount of expertise required to invalidate a patent. We are the only Federal Tribunal in which you must have demonstrated scientific or engineering prowess in order to qualify to represent people before the tribunal. However, it become interesting that many, if no most destruction of patents in Federal Court occur based upon non-technical reasons. In fact they are not even leagl reasons. Rather they are on equitable grounds. An interesting statistic would be to analyze Federal Disctrict court’s patent cases and determine how many invalidity occur due to IC and the technical background of the judge that rendered that opinion, as opposed to case in which a patent was held invalid upon non-equity grounds. This statistic might be most revealing.
Any way, to complete my thought, why would it be that Congress, which has espoused exacting standards for requiring people with technical expertise to advance the useful arts leave a gaping hole to have that advancement placed at risk by allowing non-technical citizens, be they judges or juries, to destroy the incentive for that advancement based upon non-technical, let alone non-legal grounds? It makes absolutely no sense.
There is more going on here with IC than meets the eye.
Ken,
I aint arguing validity. You keep going to that and trying to say the unenforcibility is the same. It aint. You be stuck with ‘ol Ned at the foul line on that.
Courts making rules from the bench? Welcome to the land of equity. Only been happening here and elsewhere for hundreds of years.
Ned,
So they don’t quote it. Do you have a problem with the plain reading of Rule 1.56 (rhetorical question – well, maybe not that rhetorical, you don’t seem to get that plain English even when I give it to ya)?
At least now you are realizing that violating the rule is the basis of IC (and have stepped off of the foul line), and you are slowly, ever so slowly moving to the correct notion that the timing of the violation is not at some time after patent where the land of validity is being decided. Now you just gotta get over your hang-up on the “rubric as guidance for materiality“. Here’s yet another hint from the rule itself: “to be material to patentability as defined in this section“, for this section (b) provides not a checklist, but an opening description (yes, Virgina, the applicant is called on to make a value judgment or two).
Taking one possibility from the wording in (b) yields this:
Information is material to patentability when it is not cumulative and it is inconsistent with a position the applicant takes in asserting an argument of patentability.
The argument of patentability naturally being asserted in the imediate case is that the public disclosure does not impact the patentability. It may or it may not (the definitive aspect is not the important point – the important point is that the examiner has to be made aware of it, becuase it “may”)
Ya simply just got to give the information to the examienr for him to decide.
That’s it. Plain and simple. Once you get it, you’ll wonder why you didn’t see it before.
Keep yourself in the moment of the foul – ya gotta give the examiner a chance to decide. I’ve done shown you that the Rule tells you how (at least you stopped fighting me on that).
That smell that you think is from Denmark is from the bottom of your shoes – you are still tracking around your no-harm-no-foul mentality. It just don’t matta whether the materiality reaches validity changing status or not – that’s not the point of the rule.
Ken, In Avid, the Feds cite Rule 56, the violation of which is IC, but then do not quote it, but merely state “important to the examiner” rubric as guidance for materiality. The patent owner defends on the basis that he has not violated Rule 56 – because the claims were effectively held patentable over the non disclosed reference. He loses anyway.
Something is rotten in the State of Denmark.
Ping:
To place the position in colliquial terms, the Emperor has no clothes. I have yet to see any statement in any court opinion that upholds the current practice of the courts to detract from the enforceability of a patent, on equitable grounds, due to a failure to satisfy 1.56. It just doesn’t exist. In fact, it explains why the court took years, if not a decade, to articulate a test. And now, not three years after they finally decided the test, they are revisiting it. What we have here is nothing more than legislation from the bench. I think we should leave legislative acts to legislatures.
Ping:
No where in that sentece does it state that a patent or any claim may be held invalid due to the failure to satisfy that condition. It might very well be that a practitioner may be disciplined for failing to satisfy that condtion; however, there is authority granted that allows invalidation, holding unforceable or otherwise attentuation the presumption of validity of a patent for a practitioner failing to satisfy that condition. There are several requirements that exist in our culture without a rememdy. In fact many wrongs do not have a remedy. We are saying that the court’s remedy for violation of that provision whereby the unenforceability of a patent results is ultra vires.
Ned,
Just to show you how helpful I can be, here is the section of 1.56 you need to read:
“The duty to disclose all information known to be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98.”
Ya got any case law that says otherwise? Maybe some IMHO-Ned law somewhere?
How can you not just love this sarah? – WTG
Word of caution, tho sarah, if you start picking on 6, he just might go to pieces – he’s so scarred (and scared) by (of) strong (any) women.
Oh Ned you underestimate,
It’s all about my saneness.
I’m not the schizo you presumed,
I may just kick uranus.
Sarah,
Thanks for the suggestion, but I will stay with me (nothin against NWPA, but I need a high flyin style, and NWPA is too close to the ground). I realize that I was being a bit subtle, but I was only toying with 6 and his paranoia. It appears that my constant referring to a bailiff made lil’ 6 frightened. He must equate a bailiff with some sort of power figure, and instead of Grand (night) Court’s Bull, he musta had flash backs to Selma or Roz, and since NAL regularly kicked his bu_tt, he must have had imagined the chick thing.
6,
While you don’t have to worry about any bailiff, there is no Grand Court and no one is coming to get you, that Freudian thing ya got going on with “Mother” is up to you to figure out.
Ned,
“Cite me one patent that lists public use prior art on its face.” you know better – I’s done told you – Homey don’t do answers.
“Ping, try it. The examiner will use his own tool, perhaps now some function of Adobe, to line through your expose and will not consider it”
But Ned, you miss the point completely. It don’t matta if the examiner actually considers your submission, draws a line through it, or draws lovely hearts and smiley faces around it. What mattas is that you gave the examiner the chance to consider it. What the examiner does with his chance is of absolutely no concern and lies outside of Rule 56 (have you read that Rule yet?). The concern is that you have met your duty and submitted it to the Office. Your submission will be on record. Your worries over.
Why you always trying to make things more difficult for yourself?
Malcolm, I’ll bet conversations like that go on all the time, but with the patent attorney arguing for full disclosure and the client saying no. I have yet to see a case where the opposite is true.
ping,
NWPA is very busy, so he says.
Why don’t you pretend to be Him.
6 you lol yourself.
Compare “Even if a lawlyer walked them through it they still probably couldn’t really comprehend half the rejections I send out.”
with
“And fyi, I’d say I have a pretty good comprehension rate amongst my intended audience.”
You must have a funny sense of good comprehension, sunshine. You keep on aiming high for that 50% now.
“well as note that your obsessed tone…”
Close – I’m IANAE. Or was that Orly Taitz, or Winston, or the guy that nuetron nuked that thread (that was pretty darn sweet, wasn’t it).
I told you I was lazy – I will admit that I did steal the hounding trick that was played on NAL, but duuude, her response was way better than yours. She came out all a-fightin. You offer a limp “see my earlier response” (which ya didn’t have one – didnt’ ya see my response to your excuse?)
Anyways, I’m bored with buggin you. I know you didn’t have an answer because you’re just not smart enough. Heck, my idol IANAE wouldn’t touch it (he’s smart that way).
Now, who should I be next…
6: As well as note that your obsessed tone regarding an obviously flawed “gotcha” scenario reminds me strangely of MIA commenter NAL
No way, dude.
Malcolm, does bad intent substitute for materiality?
Interesting question but obviously not relevant for the Avid case.
With respect to IC, I am not sure if the issue has come up. Has there ever been a fact pattern where, say, a bunch of emails were discovered where the attorney is saying “The prior art references in Box A are going to kill our claims to this new drug. Whatever we do, we must not disclose them. If we do, we might as well shut the business down.” And then it’s discovered that Box A contained only the CEO’s wetsuit and a lubriciously coated thermometer? I expect the patent would still be enforceable.
But I would hope that the PTO would bar the attorney for life and also that the attorney’s state bar would take some action as well.
The only answer I’m working on for you Ping is to tell you to go read my previous answer. As well as note that your obsessed tone regarding an obviously flawed “gotcha” scenario reminds me strangely of MIA commenter NAL. Want to go ahead and come clean with us NAL? Or shall we wait until you say something that is so undeniably you before everyone gets to see through your new mask?
“The important point here”
That’s another important point IANAE but not the only one.
“You supposed to write things up so that people understand you”
I’m supposed to write things up so that attorneys who have a degree can understand me. Not Mcdonalds workers. We operate in an intellectually elite group whether you realize it or not. Then we throw many important decisions down to people who may or may not even have graduated highschool. Ridiculous.
And fyi, I’d say I have a pretty good comprehension rate amongst my intended audience.
Malcolm, does bad intent substitute for materiality?
Remember my analogy about the criminal law. You may intend to commit a crime, but if the act you commit is legal, you are not guilty. Stealing one’s own car is a case in point.
I think the Feds need to clarify “materiality” and actually read Rule 56. The way they are applying the rule seems far beyond what the rule requires.
Ned Now in the Avid case, the court did not find IC based on a prima facie case, just that the reference was closer than any other.
My understanding was that the President admitted to wanting to keep PTO in the dark about the public use.
Ping, try it. The examiner will use his own tool, perhaps now some function of Adobe, to line through your expose and will not consider it. This is something like not looking at foreign language art.
Cite me one patent that lists public use prior art on its face.
I think you have to describe it in the background section, with drawings, and label it prior art.
“Avid essentially holds that if you file and claim only the improvements, your claim, while potentially valid, is unenforceable.”
Really Ned? I think the holding may have to do with something else. Oh yeah, not reporting waht may be a material fact. Oops, forgot that, didncha?
“Tell my how you file an IDS on a public use?”
Let me introduce you to a tool I like to call a pen. You take this thing called a pen and you use it to write down what happened in the public use. Now take what you have written and submit it. Problem solved. See, it wasn’t that difficult, now was it?
“The rule should be… which could not be reasonable uncovered by an examiner.”
Hows come people just don’y pay attention to IANAE?
Ken,
IANAE laid it out for you. The onus isn’t all that hard. You are not even required to search for anything; you only have to share what you know, and even that is only the non-cumulative stuff.
As to the taking and the prior art that an examiner could have found but didn’t, well, you do have the clear and convincing standard (the standard that makes the US patent the envy of the world).
So you got that going for ya.
Ping says that the foul is not giving the examiner an opportunity. It makes no sense that my clients pay for a search fee and that a reference which is easily acquired through reasonable preformance of a search by an examiner, by the way which is paid for by the applicant, is not found by the examiner and used to invalidate my client’s patent. To me that smacks as a taking purssuant the 5th Amendment. In short, vis-a-vis Rule 1.56 the USPTO is increasing the cost of filing a patent application by reducing its work load and increasing the burden on the Applicant. The rule should be that Applicants need only provide information that may potentially be material and which could not be reasonable uncovered by an examiner. Examples of this would be offer’s for sale, trade secret information showing unpatentability and the like. If we are to provide all the information then let’s quit paying the search fee. Moreover, I am awaiting the 5th Amendment taking action against the USPTO when a patent is held invalid because of prior art that an examiner could have found but didn’t. That would be a most interesting case.