Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct

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:

  1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?
  2. 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?
  3. 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?
  4. 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).
  5. Should the balancing inquiry (balancing materiality and intent) be abandoned?
  6. 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.

En Banc Order

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.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

324 thoughts on “Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct

  1. 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.

  2. 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.

  3. 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?

  4. 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.

  5. 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.

  6. 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)

  7. 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.

  8. 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.

  9. 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.

  10. 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.

  11. 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.

  12. 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.

  13. 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.

  14. 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.

  15. 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.

  16. 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.

  17. 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.

  18. 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).

  19. 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.

  20. 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.

  21. 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.

  22. 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.

  23. 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.

  24. “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?

  25. 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.

  26. 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.

  27. 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.

  28. 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.

  29. 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?

  30. 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.

  31. 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.

  32. 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

  33. 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?“).

  34. 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.

  35. 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.

  36. 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.

  37. 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?

  38. 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.

  39. 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.

  40. 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.

  41. 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.

  42. Ken, I’m not so sure they are legislating from the bench, but they are certainly taking the law into their own hands.

  43. 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.

  44. 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.

  45. 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”?

  46. 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.

  47. 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).

  48. 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.

  49. 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.”

  50. 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?

  51. 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’?

  52. I don’t see the big deal.

    Report anything that comes close – even remotely close. Remove the doubt and move on.

  53. 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).

  54. 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.

  55. 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.

  56. 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).

  57. 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.

  58. 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.

  59. 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.

  60. 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.

  61. 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.

  62. 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?

  63. 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.

  64. Oh Ned you underestimate,
    It’s all about my saneness.
    I’m not the schizo you presumed,
    I may just kick uranus.

  65. 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?

  66. 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.

  67. 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…

  68. 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.

  69. 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.

  70. 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?

  71. “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.

  72. 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.

  73. 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.

  74. 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.

  75. 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?

  76. 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.

  77. 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.

  78. No this was first draft. There were drawings on the one that was applicated. i was just asking a hypothetical question ….. ^o^

  79. Sarah, no drawings, but the specification refers to drawings? As TINLA says, perhaps this is a clerical error. But, if it is not and the drawings were not filed, you do not have a filing date. The patent is invalid under Section 111. See, Section 282[a](2)

  80. I am happy today. I was looking and saw something that was not there before. Earlier years ago, a lot of Data was on the USPTO web, that obviously wasn’t real.I hadn’t looked for ages. But, today I did look. Now the real Data showed me the little boy needed his daddy mamma to do things. And his daddy mama is now going to be a big bad man’s mama I hope.

  81. If BRI truly enters into the equation, then it is an element of proof, not so? Does the court have to conduct a separate Markman hearing on BRI?

  82. IANAE, Tell my how you file an IDS on a public use?

    Drilling deeper:

    Your client asks you to file for an improvement on a product in public use. The product is not described in a printed publication. Avid essentially holds that if you file and claim only the improvements, your claim, while potentially valid, is unenforceable.

    Now, if you include in the claim, elements of the prior art product without admitting in some fashion they are prior art, such as by putting those elements in Jepson form, I would tend to agree that, without more, your original claims may violate your oath. In particular, you have not complied with Section 112, p. 2.

    Ned

  83. **********
    A hypothetical that begs an answer.

    There are these pages of a drafted application. they say Figure 1 is xx of xxx. Figure 2 is xx of xxx. But there are no drawings. Does anybody have any idea what xxx or xx is?
    **********

    IDK for sure, but my best guess is that the patent draftsperson was using an application template that had that drawing description present. So the XXXXXXX business is just a ________ to be filled in. Since there were no drawings, the template drawing description should have been deleted, but the draftsperson forgot and nobody caught it before it was filed(or maybe you are catching it now).

    It is very rare for a patent applicaiton to have no drawings. The only type of patent applicaiton I know of that specifically does not have to have drawings is a software patent application. For those, you can get away with using psuedocode, but detailed flow diagrams are usually preferred.

  84. I will agree that if “evidence” is submitted to support validity, the jury needs to find, under the rule, that but for this evidence the claim is invalid over the art.

    You can’t agree to that, because I didn’t say that.

    A jury will never be asked to find that fact, because that fact is not relevant to the determination of validity.

    In the picture frame hypo, the art was distinguished by argument: that adding glue to a screw amounted to reconstructing the references using hindsight. The combination of glue and screw to suggest a bolt was not a proper combination. If the reference was before the Office, the examiner could not have used it to make a prima facie case.

    The examiner would have used it to make a prima facie case, and you would have rebutted that prima facie case.

    Ignoring the rule for a moment, if you’re about to file the application and you see that art, you know full well that any examiner seeing that art would use it to reject your claims. That’s your cue to disclose the reference. The fact that you’re searching for hairs to split is exactly why the courts keep insisting that you disclose art in borderline cases. People like you are the reason we can’t have nice things.

    Note also the requirement to use BRI? Can you imagine a court doing that? But that is what the rule seems to require.

    Exactly! The court doesn’t use BRI to determine invalidity. The PTO does use BRI to make a prima facie case. Therefore, a jury determination of validity of a court-construed claim does not mean there is no prima facie case of invalidity of a broader BRI claim.

    As to the difference in levels of proof, what does this mean in the context of prior art whose disclosure is uncontested.

    It means exactly what you’d expect. The case doesn’t have to be as convincing. Or as clear, I guess.

    But this case, AVID, throws all of them into jeopardy due to non disclosure of the base product. The implications of AVID are enormous.

    The implications are far from “enormous”. All you have to do is disclose the closest prior art. At worst that’s a single reference, and at best that single reference is cumulative to admitted prior art in the background of the application you drafted.

    sarah: Does anybody have any idea what xxx or xx is?

    Evidence of careless drafting.

  85. A hypothetical that begs an answer.

    There are these pages of a drafted application. they say Figure 1 is xx of xxx. Figure 2 is xx of xxx. But there are no drawings. Does anybody have any idea what xxx or xx is?

  86. IANAE, now we are actually talking.

    As to 3) note it says “evidence.” I will agree that if “evidence” is submitted to support validity, the jury needs to find, under the rule, that but for this evidence the claim is invalid over the art.

    But you add something that is not present in the rule: argument. In the picture frame hypo, the art was distinguished by argument: that adding glue to a screw amounted to reconstructing the references using hindsight. The combination of glue and screw to suggest a bolt was not a proper combination. If the reference was before the Office, the examiner could not have used it to make a prima facie case.

    Note also the requirement to use BRI? Can you imagine a court doing that? But that is what the rule seems to require.

    As to the difference in levels of proof, what does this mean in the context of prior art whose disclosure is uncontested. In AVID, the court agreed that the prototype demonstrated at the trade show did not contain the new matter added to the specification and claimed. But it was still material even though it did not render the claimed subject matter obvious.

    Now think.

    How many times in real cases do patent cover “improvements” to products? I would suggest the vast majority. But this case, AVID, throws all of them into jeopardy due to non disclosure of the base product. The implications of AVID are enormous.

  87. Ned: “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable….”

    You left out the most interesting parts of the rule.

    “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable (1) under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its (2) broadest reasonable construction consistent with the specification, and (3) before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.”

    Three good reasons why a finding of validity in court carries no implication that a prima facie case did not exist.

    Regarding (3), you’ll recall that the case is “prima facie”, or on the face of the document. In your picture frame hypothetical, the art was relevant-to-anticipatory on its face, but only failed to invalidate the patent because of additional arguments or evidence you might have presented about the differences between wood and metal. Note also that your non-disclosure of the reference prevented those arguments from being made of record in the file history, and may thereby have secured your client a broader patent than he otherwise would have gotten, even though the claims happen to be valid and unamended.

  88. Lionel, et al., I do not disagree that some rejections can be rebutted by evidence. For example, obviousness can be rebutted in any number of ways. But typically, one argues that the examiner has not established a prima facie case because he has not demonstrated all claim limitations in the prior art. Rule 56 requires a prima facie case for materiality, meaning that the non disclosed reference must supply either all the limitations, or some crucial limitations not supplied by other references.

    Rule 56 states it this way:

    “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable….”

    Now, aside from evidence of long felt need, etc., just how is a determination of unpatentability materially different from a determination of invalidity?

    I think the Feds. artfully misstated the issue of materiality in Avid when it characterized the argument on appeal is that the non disclosed reference is material only if it disclosed all the limitations of the claim. That was not the entire point being argued on appeal. It was also argued that the reference was placed before the jury and the jury found the claims valid over the reference. This is tantamount to a finding that the claims were patentable over the reference.

    Can a claim be both valid and unpatentable?

    Please explain that?

  89. Something seriously has to be done with the ha_te filter.

    Ned, Read rule 56. When does Rule 56 apply? It applies during prosecution. When is the foul call? It is well before the attempted shot. No basket and one for you.

    You keep on asking about the jury. The jury don’t matta for the question of the foul. The foul is not that a jury finds materiality or validity. The foul is not about the court finding materiality at the time of trial. You keep trying to compare validity of a patent with the point of time of an application. Validity as your second half of “common set of facts” simply don’t matta.

    The foul is that the applicant did not give the examiner the opportunity.

  90. Ned,

    Seriously, are you being deliberately disingenuous? Are you just honing your debate skills? You keep ignoring the huge hole in the foundation of your argument.

    A prima facie case can be rebutted. Evidence used to support invalidity can be rebutted. Ergo, the finding that a patent is not invalid does not mean the prior art being asserted is immaterial.

    Your argument effectively means all the art cited by the Examiner during prosecution was immaterial, when clearly, it wasn’t.

  91. the jury finding that a reference is not “material”

    When did the jury (or any jury, for that matter) ever find that particular fact in the course of determining infringement?

  92. ping, well, making a rejection and having making a prima facie case are not the same thing.

    Timing?

    What has that to do with the common set of facts? Are you suggesting that regardless of the jury finding that a reference is not “material” that a court may nevertheless find it material?

    Do you understand Beacon Theaters?

  93. Now, it is said that invalidity and prima facie case are not the same thing. However, they do share a common core of fact issues.

    Okay, so they share a common core of fact issues. The same facts can establish both a prima facie case of art-based invalidity, and validity over the same art. We see it happen every time we argue over a reference without amending. That’s why the finding of validity (non-finding of invalidity) is irrelevant here.

    That, and “all your invalid claims are unenforceable” is a dumb rule for inequitable conduct.

  94. demonstrate why the references can be combined

    Have you seen recent Office Actions, Ned?

    The “demonstration” is often as simple as the proffered reason of the invenetion itself. Not a terribly high hurdle to jump over (about as high as one’s foot raises in the normal course of taking a step).

    they do share a common core of fact issues.

    Ned – what about timing? Did you read about that (yet) in Rule 56? I even posted it for ya (sometimes I like to make it easy, just the kinda guy I am).

    On its face, I’d say your logic continues to be flawed. Seriously flawed.

  95. Jim, Lionel, et al., it is my understanding that in order to make a PF case, the examiner must demonstrate each and every limitation in a claim in the prior art. When the limitations appear in more than one reference, he has to demonstrate why the references can be combined.

    These are the identical elements of proof to render a claim invalid. A jury will have to find each and every limitation of a claim in the prior art, etc.

    Now, it is said that invalidity and prima facie case are not the same thing. However, they do share a common core of fact issues.

    Now, what is the 7th Amendment all about? What does Beacon Theaters actually hold?

    Read the case if you need further help. But what is clear is that if a legal issue and an equitable issue share common facts, the legal issue must go to the jury first and the common facts, found by the jury are established and cannot “reexamined” by any court.

    7th:
    “and no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, ”

    Now, please guys, slow down and explain to me just how a court can decide IC in a case where a jury had decided that the claim limitations are not present in a non disclosed reference and/or that the claim is not obvious over that reference. Under these circumstance a court cannot find that the reference created a prima facie case — required by Rule 56.

    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. We are left hanging though, because without knowing whether the reference could create a prima facie case, we really have no information as to whether the reference was material.

    But, since the jury was presented with that evidence and found the patent valid, we know the answer.

    Avid, on its face, seems flawed. Seriously flawed.

  96. 6: or you severely overestimate the power of a jury to get validity correct.

    It’s not about whether the jury got validity correct. The jury’s decision on validity is correct as a matter of estoppel.

    The important point here is that the jury’s decision is not a “prima facie case”, the jury never considers whether there is a prima facie case, and an ultimate finding of validity does not logically imply that a prima facie case could not have been made, and then rebutted by argument or secondary considerations like we do every day.

    Ken: (1) Noninfringement, absence of liability for infringement, or unenforceability,

    Am I missing something here?

    Yes, you are missing something.

    Ken: Please show me in the statues where a court has the authority to make a patent unenforceable.

    See above. 35 USC 282. Unenforceability is a defense in any action for infringement, and shall be pleaded. Where do you suppose it gets pleaded, and who do you suppose has the authority to rule on the question?

  97. Jump on Ned time. Who can bounce the highest.

    Ken,

    So you do see a difference between unenforceable and invalidated? Good, I was beginning to think you had borrowed Ned’s dictionary of IMHO-Law. I think the statuta does have something about the courts doing what they will in equity (35 USC has the word “equity” in five places, and I’m sure that CXase law has a word or two)

  98. If that short canadian had a yellow page ad, that I used, stating he was licensed with the USPTO as a Registered Patent Atty. And that he also marketed, etc. Then if he wasn’t all he claimed what do you call that NED?
    So also, if the Trademark was done for me but illegally, until he got his hands on the next morsel, what’s that NED?
    And then iy is stolen, and hidden from sight at the USPTO, what is that NED?

  99. Ned,

    What part of “prima facie” do you not understand.

    There is obviously no requirement that a patent be invalidating on its own or in combination with other references, just that it appears to be invalidating, especially in view of the record at the patent office. If the inventor would have had to make new arguments that weren’t made in the original, then the prior art is material.

  100. Ned:

    The materiality test only requires that the reference establish a prima facie case. The fact that the claims are later found patentable doesn’t mean there was no prima facie case.

  101. Ping there is even less support for the Courts to make a patent unenforceable. Please show me in the statues where a court has the authority to make a patent unenforceable. I raise this issue, because in the bankruptcy arean the equity powers of the bankruptcy courts are being challenged as going beyond their authority. We live during a time when we finally take a very close look at the equity powers of the Federal Judiciary.

  102. still probably couldn’t really comprehend half

    Not something to be proud of, son.

    You supposed to write things up so that people understand you. Less likely that you will be overturned that way (course, from your earlier cake example, you don’t seem to care much that judges won’t see things like you see ’em).

  103. The ha_te filter strikes again. Man I ha_te when that happens.

    Ken – we’ve pointed this out for you already – drop the “make invalid”, replace with “make unenforceable”. Do you see the difference?

    Ned – don’t be ha_ting me cause my points are beautiful. The action has moved down the court. You look pretty silly standing there all by your lonesome at the free throw line. Get back in the game.

    6 – Wassup bro? You be hiding from Bull? You know, that big guy from the Grand (night)Court? Those answers you working on must be mighty special. Or maybe you here to pick up a few pointers from Ned? I here he’s got a special on IMHO-Law.

  104. “This obviously is not true.”

    Ned, a lay jury wouldn’t have a clue how to make a rejection like the ones I routinely issue. Even if a lawlyer walked them through it they still probably couldn’t really comprehend half the rejections I send out.

    You either practice in the toilet paper art with JD or you severely overestimate the power of a jury to get validity correct.

  105. “A jury verdict of validity is not relevant to the question of whether the examiner could have entered a prima facie rejection. ”

    This obviously is not true.

  106. Look I must be missing something or you people just don’t get the concept of jurisdiction. 35 USC 282 states the following with respect to invaliditity.
    The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

    (1) Noninfringement, absence of liability for infringement, or unenforceability,

    (2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,

    (3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,

    (4) Any other fact or act made a defense by this title.

    In each of the foregoing paragraphs Congress makes clear that invalidity is based upon statutory grounds. Now where do I read that general Federal Common Law may be employed or any other Title may be employed to invalidate a patent. Please assist if I am missing something here. The equity powers of the Federal Judiciary, if I am not mistaken, are found in Title 28 United States code. Nothin in 35 U.S.C. section 282 allows invalidating a patent pursuant to Title 28 United States Code. Am I missing something here?

  107. waits for updated hypothetical]

    Malcolm, do we really want to wait? Ned seems incapable of budging from the foul line while the ref is over standing by the sideline.

  108. Even so I argue on appeal that even if the examiner had the screw reference, he could not have entered a prima facie rejection over the screw reference. My primary evidence of this is the jury verdict of validity,

    Does not compute. For starters, the jury verdict of validity can take into account secondary factors that would rebut a prima facie case. That doesn’t mean that the prima facie case is any less of a prima facie case.

    [waits for updated hypothetical]

  109. Even so I argue on appeal that even if the examiner had the screw reference, he could not have entered a prima facie rejection over the screw reference. My primary evidence of this is the jury verdict of validity,

    A jury verdict of validity is not relevant to the question of whether the examiner could have entered a prima facie rejection. Surely you are aware of that. Same goes for whether the prior art teaching of a bolt requires hindsight. Those are all hurdles that you should have had to clear before you got your patent and inflicted litigation on the defendant.

    You are supposed to disclose art when you become aware of it, which is often long before you see what other art the examiner cites, or what art unknown to you might be combined to make out a prima facie case of obviousness. Whether or not the examiner can find the differences in the rest of the prior art is not determinative of materiality.

    If you claim a metal frame attached with bolts, there is no doubt in my mind that a wooden frame attached with screws is relevant art. The only real difference is a choice of material, which usually isn’t a patentable distinction. Drawings of both devices would be indistinguishable. Your clever reasoning about why it’s not as relevant as it seems should be made of record, if the examiner thinks the reference is as close as it appears at first glance.

    It’s not even a borderline case.

  110. IANAE, let’s take an example.

    The claim is to a metal picture frame attached at its corners with bolts. I disclose a bolt as comprising a headed, threaded shaft with a rotatably attached nut which is rotated into frictional engagement with the frame. I disclose an unexpected result from using bolts vs. the prior art nails in that picture frames with bolts allow the use of metal frames, an advantage not allowed with nails and not heretofore known for bolts in other applications. (Assume for the moment, this is true.)

    I am aware of, but do not disclose, a wooden picture frame attached at its corners with screws. I reason that screws, like nails, cannot be used with metal frames.

    The examiner finds a reference to a metal picture frame joined at its corners with glue. He rejects. I argue, that even so, it would not be obvious to use bolts. I get the patent.

    I sue. The defendant demonstrates that if one places glue on the threads of a screw one would have, in effect, a bolt and the screw-glue combination could be used with metal frames. They argue invalidity based on obviousness.

    However, the jury decides my patent is valid over the reference with the screw attachments in view of the glue reference.

    The district court then holds my patent unenforceable on the grounds, similar to Avid, that the screw reference was closer prior art than both the disclosed nail and the examiner-discovered glue reference in that the examiner could have combined the screw and glue references to suggest the obviousness of using bolts.

    Intent to withhold is admitted. Even so I argue on appeal that even if the examiner had the screw reference, he could not have entered a prima facie rejection over the screw reference. My primary evidence of this is the jury verdict of validity, but secondarily I argue that the judge is simply reconstructing the references using hindsight to come up with the suggestion to use a bolt. This is the same argument I presented to the jury and it apparently was accepted.

    You sit on the appeal. How do you decide this case and why?

  111. But, let us say we could have courts sitting in equity that could throw the book at you regardless of the law because they didn’t like the way you behaved.

    At that point, we would just point out that we have (C)onstitutional (R)ights that would protect us from such scurrilous behavior.

    I really, really, really urge you to read Keystone Driller

    Ned, I really, really, really urge you to read 37 C.F.R. 1.56. And step away from the foul line.

    Max, there is a lot to like about English common law.”

    Even more reason to poke fun at you – a blimey lover.

  112. People, I tell ya, ya gotta listen to IANAE.

    If for nothing else: “ Max, there is a lot to like about English common law.
    From which, I hasten to add, both equity and patents are significant departures.
    ” (get that Maxie? – significant departures – and IANAE is not wrong).

    I’d hasten to put as much distance between me and the Blimies as I could too. There’s a reason why we broke away some 200 + years ago and have outdistanced them ever since. Good ‘ol Maxie is just trying to tear down our system in utter revenge.

    Ken, Yous talking to me?

    I think you are directing an argument at me by mistake. I have no misconception regarding jurisdiction and it was IANAE that pointed out your flaw between the court “invalidating” – which it is not doing, and “holding unenforceable” – which it is doing. So while I am not dead wrong, I did enjoy your little history lesson, even if you are speaking to the wrong person and using the wrong verb.

    Ned,

    You keep on avoiding the flaw in your argument. Not that I terribly mind seeing you spin in little circles, but are you ever going to address the fact that the rule in question explicitly talks about action before the examiner?

    In my view of things, one’s duty is clear.

    I actually have two witty responses (one each to poke you in each eye):
    1) – ONLY IN HINDSIGHT, but then, everything is clear in hindsight. The object of the whistle call aint for something in front of the jury, the object is behavior that should/should not have happened in front of the examiner. You keep on walking up to the free throw line and the ref keeps on pointing you to the sideline. It’s quite humorous to see you out of touch with reality.

    2) It don’t really matter then what lil ol humble me (nor not-so-humble-IMHO-Ned-Law you) thinks, now do it? Since that section of the law clearly indicates the appropriate time (I wonder why you have such difficulty seeing that?) And as IANAE correctly points out, it aint so tough – when in doubt, submit it – aint no skin off your back, and there’s nothing wrong with loadin up the examiner (all that paper makes a cushy mattress when expertly crumpled up). Heck even Malcolm i sjumping on the bandwagon and pounding Ned. It’s a pound-Ned-athon!

  113. You aren’t required to do a search, only to disclose what relevant art you already know of.

    Actually the duty is far below that. It doesn’t include non-cumulative art, which is pretty much 99.9% of the art in any sub-field once you’ve identified the most relevant references.

  114. IANAE, the problem you have is that you can not even tell me what my duty is with respect to particular references and how you came to arrive at your decision.

    Be that as it may, it’s far easier to tell whether a reference is “close” or “material” than whether a claim is “invalidating”. Especially when you can easily satisfy your duty by disclosing any reference whose materiality you’re unsure about. You don’t need a 20-page written opinion on the pertinence of a particular reference to know whether you should disclose it. If you’re even contemplating a validity assessment for a particular reference, throw it in the IDS and you’re done.

    “Close, and if you’re not sure disclose it anyway” is an easy standard for an agent to apply. Possibly the easiest.

  115. Ken: t is my position that the courts simply do not have the constitutional authority to invalidage a patent on any other premise than constitutional grounds or authority provided by Congress in the patent statute.

    35 USC 282, an act of Congress, explicitly provides a defense of unenforceability. Not even in the same paragraph as the defense of invalidity.

    Clearly, invalidity and unenforceability are not coextensive defenses, or the statute wouldn’t need to provide for both. So what do you suppose is a valid basis for declaring a patent unenforceable?

  116. IANAE, the problem you have is that you can not even tell me what my duty is with respect to particular references and how you came to arrive at your decision.

    This was the problem we had with the DOE, an equitable remedy, and recapture. No one knew the scope of a claim.

    We have the same problem today with “close.” We really have no actual rules. Everything is in the eye of the beholder. Everything is arguable. What we have is chaos and tyranny.

  117. Max, there is a lot to like about English common law.

    From which, I hasten to add, both equity and patents are significant departures.

    The duty of disclosure isn’t as draconian as you make it out to be. You aren’t required to do a search, only to disclose what relevant art you already know of. It’s not that hard to comply with, and the PTO even provides a simple form for that very purpose. What’s more, if you’re unsure about your obligation to disclose a reference, throw it in there. You won’t be penalized for an abundance of caution, and for bonus marks it saves you reviewing the art in any meaningful level of detail.

    Do you really have something against the duty of disclosure, or are you simply that big a fan of harmonization with European patent law?

  118. NO. Ping you are dead wrong. The entire problem is jurisdiction. It is my position that the courts simply do not have the constitutional authority to invalidage a patent on any other premise than constitutional grounds or authority provided by Congress in the patent statute. There is nothing in the 1789 judiciary Act, which is from where the equity powers arise, that gives the courts the authority to invalidate a patent. Federal District and Circuit courts have NO power to adjudicate ANYTHING, unless Congress specifically grants it. They have NO inherit authority over anything. Much of your misconception stems from the fact that it appears you believe that the Federal Courts have inherit authority. Only State Courts have such powers, because they are a species of a sovreign. The Federal Government is not a sovreign. It exists at the leisure of the statues. The states have spoken . . . the only Federal Court that has inherit authority is the Supreme Court of the United States. All other Federal Tribunals must look to Congress for authority.

  119. Max, there is a lot to like about English common law. The more we stray from its basic principles, the more chaotic and unreasonable things become. Now any fair observer from England, such as yourself, can see just how crazy and literally insane US practice has become because of Rule 56 that imposed “duties of disclosure” on applicants far beyond that imposed by the Supreme Court and clearly far beyond what English courts would have imposed.

  120. Close is in the eye of the beholder.

    So are “novel” and “non-obvious”. To borrow a British expression, that’s a cop out. We’re professionals and we make these determinations all the time. All we need to do is exercise our usual reasonableness, caution, and thoroughness.

    So, you are not convicted of a crime. But the judge fines you anyway because in his opinion the issue was close?

    Didn’t that exact thing happen to OJ?

    You’re conflating two “crimes” – (1) obtaining an invalid patent and (2) obtaining a patent by inequitable conduct. They depend on different facts, and it’s perfectly plausible that you might trigger either without the other, in much the same way that you could be fined for speeding even though you passed a breathalyzer.

    You’re not penalized for almost doing something wrong, you’re being penalized for doing a different thing wrong.

    The remedy was to render unenforceable all patents on the machine held by the malefactor. Now, this was a pretty harsh remedy for obtaining one patent for based on non disclosure.

    What if you filed every single claim in a separate continuation? You could argue that inequitable conduct didn’t apply to the claims that were valid over the undisclosed art, so that inequitable conduct would have no greater consequence than invalidity. On those facts at least, declaring the entire family unenforceable is the only logical remedy.

  121. When I obtain an invalid patent by deceit, I have committed a willful violation of the law. Equity should here should provide relief.

    Except that the law already provides relief in that case. You obtained an invalid patent, so the patent will be duly invalidated at law. You don’t need equity for invalid patents.

    But if I obtain a valid patent without any misrepresentation (or related violation of law), it would be, IMHO, tyranny to to find that patent unenforceable.

    Fair enough. But there’s a third case – if you obtain a valid patent (or a presumed-valid patent whose validity has yet to be tested) by misrepresentation. Shouldn’t equity step in at that point?

  122. IANAE, I really, really, really urge you to read Keystone Driller. The remedy was to render unenforceable all patents on the machine held by the malefactor. Now, this was a pretty harsh remedy for obtaining one patent for based on non disclosure.

  123. “Close?”

    A loosey-goosey standard if any. Close is in the eye of the beholder.

    So, you are not convicted of a crime. But the judge fines you anyway because in his opinion the issue was close? C R A P.

  124. I have a legal duty not to violate the law. But, let us say we could have courts sitting in equity that could throw the book at you regardless of the law because they didn’t like the way you behaved. That certainly would get people behaving in a PC fashion, but most of us agree that it such a system would be, in fact, tyranny.

    A patent is invalid for violating the law. When I obtain an invalid patent by deceit, I have committed a willful violation of the law. Equity should here should provide relief. But if I obtain a valid patent without any misrepresentation (or related violation of law), it would be, IMHO, tyranny to to find that patent unenforceable.

  125. the problem with your view is that one can never determine what his or her actual duty is. A reference becomes material even if a claim is patentable over the reference.

    It’s not as unclear as you make it out to be. We’re all capable of making reasonable determinations about which art is “close”. If you had to draft around it, disclose it. If you had to think about what arguments you’d make if the examiner cited it, disclose it. If it’s closer than any other art you know of, disclose it.

    Unless it’s your position that you need a validity opinion over each reference before deciding which ones belong in an IDS. Because that makes compliance just as hard (if not harder), and you’d never file anything at all in an IDS because you’d always file claims you thought were patentable over all known art.

    I have a duty not to obtain an invalid patent based on non disclosure;

    See, my problem with this sort of rule is that you arguably have a duty not to obtain an invalid patent in any event. And you won’t be able to enforce an invalid patent in any event. And you could get around the “a single invalid claim kills them all” rule by filing each claim in a separate parallel continuation, so that only the invalid claim would be unenforceable. So what’s the point of saying that inequitable conduct should declaw an already-invalid claim?

  126. ping, the problem with your view is that one can never determine what his or her actual duty is. A reference becomes material even if a claim is patentable over the reference. That is your rule. But what kind of rule is this when there is nothing one can reasonably do to comply with it?

    In my view of things, one’s duty is clear.

    I have a duty not to obtain an invalid patent based on non disclosure; or

    I have a duty not to willfully misrepresent material facts regardless of whether the patent is valid.

  127. Do not confuse non disclosure of a reference that does not affect validity with fraud.

    I’m not. I was using “fraud” in the same sense you were using “fraud”, i.e. to mean something other than fraud.

    Do not confuse non-disclosure of a reference that does not affect validity with non-disclosure of a reference that is not material to validity.

  128. IANAE, “fraud” is an entirely different matter and involves affirmative misrepresentations of fact.

    Do not confuse non disclosure of a reference that does not affect validity with fraud.

  129. And this was when I was being handled by the Law firm that filed the quick and dirty provisional. thst I paid approx. 4,000.00 for in 1995.And they too knew about the ART. And that is why I contacted OED and fired the Atty.

  130. The timing aspect boils down to the fact that “§ 1.56 (b)(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim” is not about whether a jury is determining prima facie, but rather, whether the examiner has the chance to do so. Depriving the examiner of this chance is the foul.

    This does necessitate the unforeseen consequence of playing it safe and providing every single thing that a person might consider an examiner may want to see – and with the super (KSR) powered PHOSITA 103, thems a pretty big list.

    Not that the examiner will actually look at the stuff, but ya got to give it to the examiner.

  131. ping: You just don’t get the basket and one when the foul is so far ahead of the shot.

    This basket case makes a very good point.

  132. I suggest, therefor, that a required element of proof of IC based on non disclosure is that at least one claim is invalid over the non disclosed reference.

    More lol-IMHO-Ned law.

    If a determination of invalidity is so much as plausible, the reference is probably material whether or not invalidity was the ultimate conclusion.

    IANAE is right again, Ned.

    Ned, you keep on forgetting one tiny little thing – the activity in question and the point of the dilemma covered by the Rule – the violation – is at the time when the application is in front of the examiner, not when the patent is in front of the judge.

    You keep wanting a no-harm-no-foul type of holding and keep missing the point that the foul is four steps before the shot (for those basketball purists that cringe at the liberal interpretation of some NBA refs).

    Let me challenge your love of pulling quotes from case law to comment on quotes from the legislative law:
    The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined,

    and

    However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.”

    The second quote puts a little different spin on this. The penalty isn’t necessarily because the material art was invalidating or not, the whistle is on the foul of intentional misconduct. You keep wanting to focus on IC of a shot, but the shot never “really” happened. You just don’t get the basket and one when the foul is so far ahead of the shot.

  133. “All patent office rules are unconstitutional! I have a Constitutional right to a patent on my inventions!”

    /Actual Inventor off

    Whatever happened to that nitwit?

  134. What the Supremes were attempting to prevent is the willful acquisition by “fraud” of invalid patents.

    Are you okay with the willful acquisition by “fraud” of valid patents? If people want patents, I’d prefer they fairly demonstrate their entitlement to the PTO according to the law, not get what they can by any means and try to justify it in court after the fact.

    Regarding attempt in the criminal analogy, if the act attempted is in fact legal, there still is no crime.

    Granted, but if the act attempted is to withhold a material reference during the prosecution of a patent that one has an obligation to disclose (i.e. actively not-withhold), it doesn’t sound very legal to me.

  135. “Thomas Paine would have hated the doctrine of inequitable conduct!”

    Let’s just cut to the chase.

  136. IANAE, remedy in Keystone Driller was to render unenforceable perfectly valid claims in related patents. What the Supremes were attempting to prevent is the willful acquisition by “fraud” of invalid patents.

    Now, you say in a particular case that I committed IE by withholding a reference that does not invalidate any claim. I say to in you in rejoinder is that I have committed no illegal act, that I did not in fact obtain an invalid claim.

    Regarding attempt in the criminal analogy, if the act attempted is in fact legal, there still is no crime.

    Example. I am arrested for attempting to open a locked car on the street. My defense is that I own the car. Is that an adequate defense?

  137. IANAE, I put “invalid” in quotes for a reason.

    I know. It’s the same reason the rest of us use a word other than “invalid”. Because the patent is not being invalidated.

    I don’t understand your insistence that the standards for invalidity be applied to a process that does not invalidate the patent.

    It holds that equitable defenses having common issues of law and fact cannot be decided before a jury trial on the common issues, and that thereafter the court cannot decide the common issues differently.

    There aren’t as many issues in common as you think. Equity doesn’t care whether the patent is actually invalid. Equity doesn’t even get to look at the patent if it’s actually invalid. Equity cares whether the art is material, which is not the same question as whether the art is invalidating. Invalidity is a question of law anyway, so the 7th Amendment wouldn’t even apply, except perhaps to the facts underlying the determination of invalidity.

    If a determination of invalidity is so much as plausible, the reference is probably material whether or not invalidity was the ultimate conclusion.

    There is an analogy in the criminal law. If I intend to commit a crime, but the act I perform is in fact legal, I have not committed a crime at all regardless of my intent.

    You can still be convicted for attempt. In any case, the attempt to secure a patent by inequitable conduct is exactly what we’re trying to discourage here. If the patent turns out to be actually invalid, the court can invalidate it under the law. This is a whole other remedy for a whole other situation. People shouldn’t be able to conceal a borderline reference and then argue “no harm, no foul” later in court.

  138. I like the line of argument from Ned. But then I would, wouldn’t I, given that it fits with my understanding of how the patents courts in England manage the IC issue. Maybe some scholar can tell us how US law and English law on this issue came to diverge, after independence.

    I still remember SCOTUS opinions on Markman v Westview, and the depths they descended to, to find out whether 18th century England allowed jury trials in patent cases. So I look forward to reading similar legal history, when it comes to IC.

  139. IANAE, I put “invalid” in quotes for a reason. Rule 56 requires a reference be “invalidating” in order for it to be material. The Rule actually uses the PTO equivalent term, “unpatentable.”

    Lionel and IANAE, I suggest, therefor, that a required element of proof of IC based on non disclosure is that at least one claim is invalid over the non disclosed reference.

    Now assuming this, and I think this much is clearly established by the rule and by Supreme Court case law such as Keystone Driller, Dairy Queen comes front and center. It holds that equitable defenses having common issues of law and fact cannot be decided before a jury trial on the common issues, and that thereafter the court cannot decide the common issues differently.

    The ONLY reasonable conclusion from this is that it is required to find a patent claim invalid over a non disclosed reference before one can further decide the issue of IC. But, if the jury decides, as it apparently did in Avid, that the claims are valid over the non disclosed reference, it would be a direct violation of the 7th Amendment to decide the reference was “material” and that IC was committed by not disclosing it.

    There is an analogy in the criminal law. If I intend to commit a crime, but the act I perform is in fact legal, I have not committed a crime at all regardless of my intent. Here I willfully do not disclose a reference that a jury holds does not invalidate any claim. Regardless of the closeness of the issue, I have committed no illegal act. This should decide the issue.

  140. I am not trying to move the country into the trash, it is already there. I have something to say to the american people.about our (NON) rights. And how all they do is give special attention to nothing.
    It’s all about the quid. Imagine being free of the chains for a moment, and then allowed to file bankruptcy because you have been robbed of all you had. And the only connection to putting you back in chains has to come from Tennessee. And no matter who you fire you are still in chains. Well the only connection to PHK&K is AKIN GUMP. And I have just closed that hole. I alsways thought Krieger was kicked out like Lehman. But Krieger left because of it.

  141. The court of equity could not find, for example, a patent “invalid” over a reference where a jury had just found the patent valid.

    Right. A patent is never found invalid in equity, because all the grounds of invalidity are statutory.

    Equity finds a patent unenforceable, in much the same way the bank may hold legal title to your house but be prevented in equity from booting you out and moving its own stuff in.

  142. Ken: IANAE states (etc.)

    I was quoting Ned. Note the italics and my immediate subsequent contradiction of that statement.

    EG: Quite true. But equity is also a balancing act. The problem with inequitable conduct is that there is no balancing on the remedy (Star Scientific is the exception). There’s only the “death penalty.” That doesn’t sound at all like equity.

    That sounds completely like equity. Look at mortgages, constructive trusts, injunctions. Injunctions against enforcing common law court judgments, even. Equity is all about saying “it’s not fair to let you have that, so you can’t have that”. It’s not just haggling on price. A lot of the classic equitable remedies aren’t available in half-measures. The balancing act determines entitlement, but once you’re entitled you get the equitable remedy and that’s that.

  143. Ms. McPherson:
    If the bankers can get away with what they have done to the United States . . . do you think that any book about anything will move this culture in any direction? If I recall, George Washington abandoned the use of free speech to protest his lawful government’s oppression. However, I could be wrong on that point.

  144. Ken you oughta see what I got. I am writing a Book. And the good thing there is so much evidence for fill, that it may be a double series.
    And like Judge Judy says if it’s true they can’t do anything. And with the evidence I have to back it up, it will be awesome. and all I have to do is get it printed in book form. and buy a bunch of them to sell. Selling thwm won’t be a problem.

  145. Ping
    Did you earn a 1 million dollars to sink my case?
    What are you crying about? One of those Lexus’s on recall?

  146. MaxDrei:
    Frankly I am more interested in individuals acting under the color of government authority to follow the rules than to use the authority to oppress the rights of individual citizens in violation thereof.

  147. You must mean the shark with lasers, that I told to SUE me for the rest after I realised he was charging me for marketing.. nothing! And the worst part is the Examiner allowed a Patent application to be intertwined into the 2nd Patent, adding all kinds of words like device, and that application was not even supposed to be allowed. It was abandoned. so how was the Examiner legally able to do that? He wasn’t! I fired the shark with lasers along time earlier. So if you ask me the Examiner was already working for the shark with lasers. And I was out of the equasion! so why do i have the Patent Grant, even though it is in an aliens name,And more than likely others.
    Now the Examiner is gone! Or hiding under a rock. or in the basement with Malcolm.

  148. “Preventing the exercise of a legal right, or of a remedy granted by the courts of law, is a big part of what equity does.”

    IANAE,

    Quite true. But equity is also a balancing act. The problem with inequitable conduct is that there is no balancing on the remedy (Star Scientific is the exception). There’s only the “death penalty.” That doesn’t sound at all like equity. Even patent misuse allows that misuse to be “purged.” The Rohm & Haas case says that inequitable conduct (or as it has sometimes been called “fraud on the Patent Office”) can be “purged” but it’s really a canard as no one to my knowledge has ever been able to meet it.

  149. Malcolm,

    I checked my computer folder of cases on inequitable conduct and from what you describe, Scanner Tech looks like the one you’re talking about (it reversed an inequitable conduct ruling based on a false petition to make special). It’s definitely not Star Scientific.

  150. Wow- this post has certainly sparked some interesting debate! For someone who specialises in a different area of law as I do, it is interesting to hear about the complexities of other areas and compare the problems faced.

  151. Ned,

    I cannot believe you quoted that passage to support your argument

    From the language you quoted prior art only has to be prima facie evidence. Prima facie evidence does not equal invalidating evidence, (or have you never successfully rebutted prima facie evidence?).

    (2) non-cumulative

  152. Ned writes:

    “it might be time to put to rest the ill-conceived notion of invalidity based upon equitable principles”

    But I’m more interested in the use of those principles to deny to a patent owner relief from infringing acts (without even discussing whether or not the asserted claim is valid). May I ask, are you against that use, Mr Brooks?

  153. Let us be reminded that the grant of a patent brings with it powerful usurpation of streams of commerce. Coupled with the international implications of patent protection it comes as the single-most invasive act a non-United States entity can legally undertake in our nation. In short it is a surrender of a small part of our nation’s sovereignty by Congress. We freely allow foreign powers to control and exact taxes, i.e., royalty, from the citizens of the United States. Before the Courts decide to hold unenforceable, invalidate and or in any manner attenuates the presumption of validity of a patent the Courts should clearly consider the international consequences of such an act coupled with the limits on their powers for the reasons I discussed above. It is without question that the Executive Branch has plenary power in foreign affairs. A grant of a patent to a non-U.S. entity is definitely a foreign affair. Given the international implications of today’s patent protection it might be time to put to rest the ill-conceived notion of invalidity based upon equitable principles. This is not to say that a patent could not be held invalid by a Court. Were material information not provided to the Examiner during prosecution of the patent application and it demonstrated a lack of novelty or obviousness, then so be it, the patent may be invalidated based upon statutory grounds. Were the act upon the individual that failed to bring the reference sufficient egregious then statutory fraud charges may be brought, e.g., criminal fraud.

  154. IANAE states “Unclean hands traditionally should only be operable to deny a plaintiff an equitable remedy. It should not operate to deny a plaintiff a legal remedy; but the Supremes seem to sanction equitable defenses to legal remedies.”

    Firstly that is incorrect. Law has always trumpted equity. If a statue works unfairness equity must yield to the policies of the body politic. To further undermine the courts power here: Federal Tribunals are courts of very limited jurisdiction. Congress dictates the jurisdiction of the Federal Courts. They do not sit as state courst of general jurisdication. Having litigated in both Federal and State courts here in California I note that there is a marked difference between the two jurisdictions especially when dealing with the common law and, as we call equitable relief here in California, common counts.
    In short, a Federal Court would certainly avoid rendering equitable relief in violation of statutory or common law.

  155. “Malcolm’s point about the ARK”

    not to worry, faux news surely fact-checked that this artifact is made out of gopher wood before reporting.

    meanwhile, we all need to get back to the court decreed obligation to hound the ceo’s of our clients about their every move and whereabouts to avoid IE. hello, this is your patent attorney AGAIN and ….hello?…hello?

  156. Sarah,

    The only painting I wear is the paint you yourself have applied, or would like to apply.

    Did sarah say “Sharks“? Would that be Sharks with friggin lasers attached to their friggen heads?

  157. Sarah, you must know that I was referring to Malcolm’s point about the ARK when I brought up the matter of atheists and the French Revolution. It had nothing to do with you.

  158. IANAE, true to a degree. But since the trial on jury issues went first, facts found by the jury were binding on the courts of equity. The court of equity could not find, for example, a patent “invalid” over a reference where a jury had just found the patent valid.

    (I place the “invalid” in quotes, because the issue in equity is whether the reference would make the patent invalid as a necessary predicate to whether there was a duty to disclose.]

  159. The only thing that really gets me Ned.
    Is I have never been given the chance to show my evidence. I have never been allowed before the court to voice my side.
    So Ned without sounding like a really sore loser that never got a chance to voice, in a Court. Stick your million dollar head where the sun don’t shine. Ned, you scare me. You make me think back to the man that forced me from my home with his skin head mind set. You charge at me like a Shark that smells blood, no matter what I say. Get over yourself haven’t you been paid already?

  160. IANAE, check FN 3.

    Still only seeing the jury thing. Please quote the text from the case that you think supports your point that “a case in law ousted equitable jurisdiction entirely”.

    As opposed to the older-than-dirt practice of getting your case duly tried in a court of law, and then running to the court of Chancery to complain about the result, which practice was only reinforced by the constitutional right to a trial by jury.

  161. IANAE, according to Dairy Queen, until the merger of law and equity, a case in law ousted equitable jurisdiction entirely.

    Can you point out exactly where in Dairy Queen it says that? All I see is the narrow procedural point that common issues of fact between the legal and equitable cases are entitled to a jury trial.

    It’s absolutely trite that when law meets equity on a substantive point, equity always wins. Been that way for centuries.

  162. Sarah,

    Who is the painted whore, she asked?
    Who is the painted whore who danced?
    Who is the painted whore of yore? The one who danced in Notre Dame?
    Why, it is the Goddesses of Reason. She was the whore danced that day in Notre Dame.

  163. This is 2010, Ned. And paying people such as you, yourself, and Ping, to provoke me take on water, so that the provacatour remains unharmed and still able to rule those that rule… well then

    Ned who is the Painted Whore(s) if it is not you and Ping?
    Who is the painted Whore, that prefers to blame the king?
    Who is the painted Whore, that knows what he has done?
    He is the Whore the painted Whore that benefited no one.

  164. IANAE, according to Dairy Queen, until the merger of law and equity, a case in law ousted equitable jurisdiction entirely. link to supreme.justia.com

    So I am not so sure that historically that one could interpose an equitable defense to a legal action.

    But, since Beacon Theaters, link to supreme.justia.com
    equitable defenses that include common questions of law and fact with legal issues cannot be tried first, and the findings of fact found by the jury are binding on the court when considering the equitable defenses.

    What this suggests to me is that it is unconstitutional to decide that a patent is both valid over a reference and unenforceable for failure to disclose that reference to the PTO.

    I think the Feds ought to look into Avid en banc.

  165. EG Why do you find Star Scientific so offensive, Malcolm? All it says is that a finding of inequitable conduct doesn’t automatically mean patent unenforceability.

    I looked at the case again and I think it’s actually Scanner Tech and not Star Scientific that is the source, so I misspoke, although Linn cites both in his dissent. It’s the rule about the “single most reasonable explanation”, which Linn morphed into a rule that any “alternative credible explanation” is sufficient to defeat a finding of IC. This is the “get out of jail free” card I referred to upthread and, I believe, this is what Judge Linn relied on mainly in his dissent in the original Therasense decision.

    Taken to the limit, the rule is that if you can’t prove that applicants did not believe their own bullcrxp, then you can’t find IC. And if you are someone like Linn or possibly Rader that needs a video of the bullet coming out of the gun held by the patentee to find intent, then there is no way to prove IC because you can always come up with a “plausible” “alternative” explanation that is believable to *somebody* who really, really wants or needs to believe in that explanation. According to Linn: The question, thus, is not whether it is plausible that the information is immaterial—a question asked under the objective materiality prong—but rather, whether it is plausible that the individuals subjectively believed that the reference was immaterial at the time they withheld it—a question presented under the subjective intent prong.

    This, friends, is a ridiculous standard.

    The district court judge in Therasense, to his credit, did a great job of laying out the facts regarding the witness demeanor etc that informed his decision. Unfortunately, those facts were ignored by Judge Linn. Why? One “plausible” “alternative” explanation is that he simply liked the plaintiff’s shoes.

  166. The communards advocated violence against the enemies of the revolution, atheism, price controls, high progressive taxation, etc., etc., etc. In truth, they were the original far left, the original communists.

    The originals? In 1793, you say? It would seem the far right has a much longer pedigree. Not to mention ruthless efficiency and nice red uniforms.

  167. “Which practically begs for the re-rejoinder that Republicans would not be sufficiently entertained without a second dancer.”

    jimmy carter volunteered.

  168. Sarah, during the Reign of Terror, the followers of Hebert, leader of the communes, proclaimed atheism. They ransacked churches and killed priests on sight. On Nov. 20, 1793, they dressed up a prostitute and had her dance in Notre Dame as the Goddess of Reason.

    The followers of Herbert were known as “Communards.” They were more radical that the socialist Jacobins who followed Robespierre. They ruled Paris through the communes. The communes were districts of Paris. The communes were governed by committees elected by the proletariat who were actually paid to attend meetings.

    The communards advocated violence against the enemies of the revolution, atheism, price controls, high progressive taxation, etc., etc., etc. In truth, they were the original far left, the original communists.

  169. Can you point to any other area of law where equity mandates only one remedy that’s similar to unenforceability of the entire patent due to inequitable conduct?

    History is full of examples. Look at mortgages, where the mortgagee’s legal title was essentially completely unenforceable due to the mortgagor’s equitable right, and there really wasn’t any middle ground.

    Preventing the exercise of a legal right, or of a remedy granted by the courts of law, is a big part of what equity does.

  170. “A great opportunity to clean up the ridiculous mess left by the majority in Star Scientific.”

    Why do you find Star Scientific so offensive, Malcolm? All it says is that a finding of inequitable conduct doesn’t automatically mean patent unenforceability. Isn’t that consistent with inequitable conduct being part of “equity” (afterall it contains the root word)? Or do you believe inequitable conduct is part of some other branch of jurisprudence?

    I also thought “equity” meant there could be more than one remedy. Why should a finding of inequitable conduct have only one remedy (unenforceability of the entire patent)? Moreover, I thought SCOTUS in eBay said that equitable remedies (e.g., permnaent injuctions) shouldn’t be treated differently in patent law versus of other areas of law. If that’s true, then why is inequitable conduct in patent law treated differently from other equitable doctrines? Can you point to any other area of law where equity mandates only one remedy that’s similar to unenforceability of the entire patent due to inequitable conduct?

  171. I think you’re unfamiliar with the entire concept of courts of equity.

    6, Are you familliar with the entire concept of “in contempt”? The grand court is waiting for you.

  172. I could rejoin that Democrats would feel very comfortable during the French Revolution where a painted whore danced in Notre Dame

    Which practically begs for the re-rejoinder that Republicans would not be sufficiently entertained without a second dancer.

  173. “I could rejoin that Democrats would feel very comfortable during the French Revolution where a painted whore danced in Notre Dame and the mob tore priests limb from limb.”

    Have you ever worn a medieval smock? I assure you they would not be comfortable.

    “It should not operate to deny a plaintiff a legal remedy;”

    I think you’re unfamiliar with the entire concept of courts of equity.

    link to en.wikipedia.org

  174. Unclean hands traditionally should only be operable to deny a plaintiff an equitable remedy. It should not operate to deny a plaintiff a legal remedy; but the Supremes seem to sanction equitable defenses to legal remedies.

    Equity has always been in the business of standing in the way of legal remedies.

  175. Malcolm, re your ARK comment, I could rejoin that Democrats would feel very comfortable during the French Revolution where a painted whore danced in Notre Dame and the mob tore priests limb from limb. However, I will not say that as it would be bigoted and offense.

  176. And as for making a point (legal)in this country.
    There are none to be made. This is the United States of the pointless Forest.
    And if you don’t ride with Robin Hood and his merry men, with a twist. FAHHGETT ABOUT IT. YOU LOSE.

  177. Ken, while unenforceability is a statutory defense, I still wonder about the use by the Supremes in cases such as Keystone Driller of the unclean hands doctrine the way it did. Unclean hands traditionally should only be operable to deny a plaintiff an equitable remedy. It should not operate to deny a plaintiff a legal remedy; but the Supremes seem to sanction equitable defenses to legal remedies.

    I would be interested to see just when the Supreme Court began to recognize such defenses.

  178. Malcolm, for the sake of argument, how would a court demonstrate a “prima facie” case of unpatentability after a jury had found as a matter of fact that there is no such prima facie case.

    The court would have to find, for example, that each and every limitation was in the reference, if not, was in a second reference but obviously combined. Now, I would hope when IC is at issue that the court ask the jury specifically whether the reference has the all the limitations not in the secondary reference. If the jury so found, there is still the problem that they also found that combination with the other reference was not obvious.

    Now in face of all this, just how is it possible for a court to demonstrate that the non disclosed reference could be used to make a prima facie case of unpatentability when a jury has just held the opposite? Remember, we have a 7th amendment that forbids a court, any court, to reconsider facts found by the jury.

  179. Face it boys. When a Lawyer has the quid he can buy his way through it all. No matter what he does, says, or lies about! Nillhistic is correct about the quid.
    All you small firms don’t have chance in H@ll. The poor sucker will sell his Idea to the company that fits best his Idea. And he won’t need to wonder if the Lawyer or the PTO are being honest.
    As the Airlines and the Car companys shrink. So shall you. To bad you didn’t all file a class action, if that is possible against those that turn the cheek. But it’s way too late now.
    And to think I sent the Art from a catslog that showed my claims being sold right after it came out in Winter 1996. I literally gave it to OED at the PTO.
    And on my CIP I sent in another drawing of what I was told I couldn’t have and they just steal it! And because this one did this. And that one did that. hahahaaaa.
    How can you win being honest. You’d better get on that train going the other way. But even then you must be able to carry some of the little guys for income. But they will know what they are up against. And why bother taking that chance with Lawyers or the PTO.
    It’s all about the Quid Baby. Imagine They were charging me for marketing,WHAT?
    Well JD at least you have retirement.

  180. Ken I simply do not believe that the invalidity of patents based upon equity is constitutionally sound.

    Yo, Ken: patents aren’t invalidated by a finding of IC.

    More importantly, Fox News is reporting on its Science and Technology website that Noah’s Ark has been discovered!

    link to foxnews.com

    This is great news for Republicans.

  181. I find it absolutely mind boggling that a doctrine of equity could be used by an Article III tribunal (federal Courts) to invalidate an act undertaken by the combined efforts of Article I (Congress) and Article II (The Executive Branch) tribunals. Quite simply put, the Great Chief Justice stated the courts could say only what the law was and that laws could be held unconstitutional. In the patent world we have this anomaly in which the courts say that the combined act of Article I and Article II tribunals will be nullified based upon an equity. That makes absolutely no sense. Where do the courts get this power? It completely undermines the Separation of Powers framework of our Federal Government. There are much larger issues presented by inequitable conduct than simply allowing an individual to prosper from malfeasance-the very foundation upon which our nation is based. I know for many techies out there this appears arcane and confusing, but some of us still believe in the Republic and that it should be preserved.
    I believe that the Federal Courts have quite simply overstepped their authority. Can someone point me to the Supreme Court case or statue that authorizes the courts to invalidate any act of the Executive Branch or Congress by the courts that is based upon the Constitution or a statutory grant of authority? Look at the Steel Seizure cases for guidance. As Justice Jackson state “the president’s powers are at their zenith when exercised to execute a law that Congress has enacted”. That is exactly what is happening when a patent is issued. However, the Courts think nothing of invalidating that act, as if on a whim, for intentional and sometimes arguable negligent malfeasance of those involved in the prosecution of the application.
    Now look at 35 U.S.C. section 283. It pretty much limits the court’s ability to invalidating patents. In fact, it articulates specific defenses that may be asserted and even precludes some and requires specificity for others. Clearly this indicates a desire by Congress to control the defenses afforded to infringers.
    Now look at section 284. Injunctive relief based upon equity is allowed to secure patent rights . . . not to detract from them.
    I simply do not believe that the invalidity of patents based upon equity is constitutionally sound. It might be a manner by which to avoid having to decide the very difficult cognizable issues that are presented in patent cases. In summary, when the President grants a patent, the Executive Power is at its greatest; yet, the courts will strike that act of the President based upon the act of a single individual without recognizing that Congress has limited the defenses that could be asserted in any patent infringement action. I think the courts are on very tenuous grounds here.

  182. Ned Now consider that a court has determined that the particular reference, not cumulative, does not itself or in combination render a claim invalid.

    Rule 56 states that a prima facie case of obviousness is sufficient to find materiality.

    A finding of validity should operate as a legal bar to a finding of unenforceability due to non disclosure of prior art.

    Nah, I don’t think so. Certainly a fact that should be taken into account, but as a per se matter? No way.

    EG In fact, I can’t recall a case where “substantially involved” even remotely went this far up the “food chain.

    Huh? There are definitely cases which discuss CEOs and/or VPs and/or other board members being involved in prosecution. Don’t remember the names of the cases, but I certainly recall the issue arising.

  183. Ping, well let’s hope the Feds resolve this issue as well. It would be quite helpful to have a clear rule for the court to decide cases.

    Again, I would not even hold a hearing on IC for non disclosure issues until the issue of validity is determined. A finding of validity should operate as a legal bar to a finding of unenforceability due to non disclosure of prior art.

    Now the flip case should be easy. If the jury finds a claim invalid over a willfully non disclosed, non cumulative reference, IC should be found.

  184. Ned,

    You still miss the part about timing.

    The time of submission is when the application is before the examiner. The reason for this is for the examiner to be aware of the reference and for the examiner to make the call.

    Your standard of post-grant-in-litigation-the-judge-says-it’s-OK-“no harm no foul” is simply too late.

    Just an observation.

  185. Lionel, I am talking here now about how a judge is to decide the issue.

    Re your proposed standard, though, consider rule 56 itself:

      “b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

      (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim.”

    Now consider that a court has determined that the particular reference, not cumulative, does not itself or in combination render a claim invalid. I suggest that it is NOT legally possible to find IC for non disclosure of that reference.

    I should note that the current Rule 56 standard somewhat tracks Keystone Driller and is for that reason not ultra vires.

  186. Ned,

    I disagree with your standard. A finding that prior art does not invalidate a patent does not mean the prior art is not material. I believe the standard should be if it raises a nontrivial question of validity after issue, even if the ruling is eventually in the patentee’s favor.

  187. Such a finding is equivalent to a finding that the disclosure or non disclosure of the prior art to the examiner was not material to the patentability of the claims.

    Except for one little thing, Ned. Timing.

    You are asking (well, telling) that the decision point on materiality be put off until after grant, and if, after grant non-materiality is found, well then, no harm no foul.

    Except that’s not the way the rule works. You have to put it before the examiner and let him decide. You don’t get to roll the dice.

    The silly thing is, the same people who complain about applicants burying examiners with monster IDSs want to hang those who do not supply a particular item discovered after teh fact. With the level of unknowns concerning future business contexts and litigation, the only way to play it safe is to disclose everything, including the kitchen sink.

    Just an observation.

  188. Ned,

    You bring up a good point about the non-disclosed “trade show demo” being deemed “material”. That might be another reason why this case gets an en banc hearing.

    However, the big issue in Avid is who is in the “target zone” (as I call it) for owing the “duty of disclousre” under 37 CFR 1.56. Prost and Mayer said the president of the patentee was in the “target zone”, i.e., “substantially involved” within the meaning of 37 CFR 1.56(c)(3) and thus owed the “duty of disclosure” to the PTO regarding the “trade show demo.” That’s pretty high up the “food chain” (even in a small business), which is why Linn dissented, and which makes this case “ripe” for en banc consideration. In fact, I can’t recall a case where “substantially involved” even remotely went this far up the “food chain.”

  189. EG and Paul, that Avid case is a problem, not so much because it was about the president of the company, but because the non disclosure of the “trade show.” The Feds noted the trade show was “prior art” under 102(b), as if that made any difference whatsoever to the finding of IC. As Paul noted, the trade show was considered in the district court, and the patent’s validity there-over confirmed.

    Now, I have argued here before and I will argue again now: a finding of validity should decide the materiality question when non disclosure of prior art is the issue. Such a finding is equivalent to a finding that the disclosure or non disclosure of the prior art to the examiner was not material to the patentability of the claims.

    I do not know the particulars of the Avid case, but most patent attorneys aware of a prior public disclosure, will ascertain what was invented after the public disclosure and describe and the claim only the new matter. That is apparently what happened here based on the inferences.

    This case may present problems for many many patents in similar fact situations.

  190. Malcolm, I think the answer to Q1, where the statement to the PTO is false, is that the disclosure to the EPO should not act as a “cure” in any respect. However, I believe the Feds have held in the past that such disclosures are evidence of good faith and can, in some cases, weigh against a finding of IC.

    This is one of the reasons practitioners err on the side of disclosing everything.

    With respect to Q2, where the statement to the PTO is demonstratively true, failure to disclose contrary statements to a foreign jurisdiction should not result in a finding of IC. The same may not be true if the statement were made to the PTO in another proceeding or to a US court, because such a contrary admission of fact or argument may operate as an estoppel. Here failure to disclose the contrary statements may be material and rise to the level of fraud regardless of the truth of the statements made in the current proceedings.

  191. I forgot to give credit to Jim Demers above too.

    The fact that no one posted an answer (at least one that will not get you arrested here in the States) is veddy veddy interestink.

    As far as I know the USPTO code of ethics does not control (or even attempt to control) what anyone tells to a foreign patent office.

  192. Is the bizarro universe a matter of sovereignty?

    Let me take a stab at where I think Ned is going:

    Does it really matter to the United States Patent and Trademark Office what anything anybody says about anything in a foreign country (patent or not)?

    Why should I not be allowed to lie my _ss off to someone outside the U.S.? Does the sovereignty of the US extend to foreign patent offices? This is completely different than receiving a foreign search report which tells you of prior art, because you are required to report that type of information to the USPTO – and there is an express disavowal of “patentability” built into the IDS statement (rather conveniently, I might add). If you, on the other hand, completely fabricate something and tell that to someone outside the US, what the __ business is it of the US? That lie is affecting a foreign government’s patentability requirement, not the U.S.’s.

  193. Now I ask you this. Assuming that it was false, how does disclosing the EPO prosecution history of the reference “cure” the problem?

    One would expect (hope?) that the Examiner in this case would wake up from his/her slumber, disregard the self-serving declaration, and not allow the claims. Problem cured. Also, had it been disclosed, there would be one less piece of evidence in support of an effort to deceive the PTO into allowing the claims. In my personal opinion, the declaration and accompanying statement by the attorney was enough by itself to find IC, insofar as both were so plainly full of crxp.

    Assuming the statement was true and demonstratively so. For example, let us assume that Abbott produced a number of renowned experts that uniformly testified that it was believed that a membrane was required for blood of all types to prevent clogging. Would you still argue that IC was committed if the EPO prosecution history was not disclosed?

    Honestly, I’m having difficulty entering the bizarro universe here. If Abbott knew that the statements before the EPO were false but, on their face, it was not obvious that they were false and, on their face, the statements were material to the US case, then they should be disclosed and their falsity addressed during prosecution (sounds like an easy task, with all those Nobel laureates lining up to sign the declarations). Is it IC to fail to follow through like this? Maybe. Letting it slide seems to set up a slippery slope: “We didn’t disclose the reference because even though it looks like a killer, we knew we would be able to overcome the issue with a declaration if we had to.”

  194. MM: My proof is that the US is the most popular country for filing patents, by a long shot if I’m not mistaken. The conclusion about the higher stakes leading to increased temptation to engage in deceptive conduct follows from applying basic logic to the well-known shortcomings of the human condition.

    Could not agree more.

    Jim Demers: I have to agree with Ned Heller that the principal problem presented by this decision is the notion that something said by the applicant in another jurisdiction is in any way “material” to a US examiner. The only question should be, were the representations made to the US examiner factually true, or were they not?

    What was said before the EPO might be different for a variety of reasons, ranging from an outright lie to a different argument (made with respect to different legal and procedural standards) to different connotations attached to words (MaxDrei’s point re “optional”). But even an outright lie made in the EPO is not a fraud on the USPTO, does not cheat the US public, and does not lead to a US patent on the unpatentable. There’s a practical aspect to this (do we really want to be dropping complete patent family file histories from EP, JP, CN, KR, CA, AU, TW, etc. etc. etc. on our examiners?), but there’s a jurisdictional problem as well: can/should we be punishing sleazy applicants for deeds done abroad, if everything done before the USPTO was on the level? (I’m not saying that was the case here; just arguing the principle – I think it’s up to the EPO to tear up the applicant’s European patent.) And in the absence of jurisdiction, what is it about statements made abroad that could possibly be “relevant” to a US examiner?

    In this case, the statements were statements of fact about a reference, and no argument could be made that the laws in the U.S. or Europe warranted a different statement to the EPO from that to the USPTO. Jurisdiction is not the issue. The issue is what information material to patentability does the applicant know about. It does not matter how that knowledge comes about.

  195. Malcolm, next question: Assuming the statement was true and demonstratively so. For example, let us assume that Abbott produced a number of renowned experts that uniformly testified that it was believed that a membrane was required for blood of all types to prevent clogging. Would you still argue that IC was committed if the EPO prosecution history was not disclosed?

  196. OK, Malcolm. I will agree that there was IC here if the statement of fact made in the affidavit was false.

    Now I ask you this. Assuming that it was false, how does disclosing the EPO prosecution history of the reference “cure” the problem?

  197. Ned: The only statement of fact that I can find in this case is the statement by Abbott’s doctor-affiant that one of ordinary skill at the time of the patent believed that membranes were required and not optional for whole blood

    Right. Even though Applicants’ own application says that membranes are optional, the claims in that specification cover fluid generally and do not require membranes, and Applicant told the EPO that the specification was “unequivocably clear” that membranes were optional, even when used with live blood (which has erythrocytes, just like whole blood). In comes this Abbott scientist (not an inventor on the patent and not one skilled in the art at the time of the invention) with an utterly self-serving declaration that “based on his historical knowledge” one skilled would have understood that a protective membrane was necessary with whole blood.

    And then the attorney jumps in with his “mere phraseology” bullcrxp. Is that “argument” or a “misleading statement of fact”? Sounds like a misleading statement of fact to me. How can a statement be both “unequivocalably clear” and an example of “mere patent phraseology”? You can read the ridiculous response of the attorney to the judge’s question about this on page 29. That’s just a taste of what went down, as the Fed Cir opinion notes.

    We have nothing in the record that I know of that refutes this statement of fact as being false

    Is this an “argument” of yours, Ned, or just another “misleading statement of fact”? Pages 9-11 of the Fed. Cir. opinion summarize the evidence refuting the Abbott scientists’ declaration. In addition, one of the inventor’s on the patent testified that the Abbott scientist was “completely wrong” and if he had “been around in the field, working in the field in 1983, and he had seen our patent specification, I believe he, as a person skilled in the art, would have concluded that the membrane may not be necessary.” (page 30) Unlike the Abbott scientist, this guy was deemed credible on the stand.

    As noted by the Federal Circuit, this was not a close case, Ned. Apparently it’s a difficult case for you to read in its entirety (you seem to have stopped at page 8), but it was not a close case.

    let alone, knowingly false.

    The intent was inferred from indirect and circumstantial evidence, which is perfectly proper. Moreover, the district court judge was able to watch both the Abbott scientist and the prosecutor soil themselves on the witness stand as they attempted to justify their bizarre statements:

    “The district court judge had the opportunity to observe both Pope’s and Dr. Sanghera’s testimony during the bench trial and found their explanations neither plausible nor credible. In fact, the court explicitly noted that “Attorney Pope did not prove to be a convincing trial witness.” Trial Opinion, 565 F. Supp. 2d at 1113. The district court similarly found Dr. Sanghera’s testimony not to be credible, expressing twice in its opinion that his demeanor was unconvincing. See id. at 1115 (“As a trial witness, it must be said that Dr. Sanghera was impeached on substantive points with his prior inconsistent statements and exhibited an unconvincing demeanor.” (citation omitted)); id. at 1116 (“His unconvincing trial demeanor has been a factor in this determination.”).”

  198. “Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?”

    The answer to that question is a definite “no.” How could one possibly know that? Also, how could one possibly prove that?

  199. Mooney, if a lawyer makes an argument that a reference does or does not teach something, even if he is wrong to the extent most people of ordinary skill would not agree, is that a misstatement of fact? Can he prosecuted for perjury?

    Abbott’s own lawyers during litigation made arguments about what the ‘382 reference taught. Are these arguments misstatements of fact just because their prior attorneys made contrary arguments? Can these attorneys be prosecuted for perjury?

    Making contrary arguments to two different tribunals goes to credibility. But it is not perjury. However, willful misrepresentation of facts is perjury. All the Supreme Court cases cited by the Feds in its en banc order are cases involving perjury.

    The only statement of fact that I can find in this case is the statement by Abbott’s doctor-affiant that one of ordinary skill at the time of the patent believed that membranes were required and not optional for whole blood. We have nothing in the record that I know of that refutes this statement of fact as being false, let alone, knowingly false.

    We seem to be mixing attorney argument with statements of fact in a loosey-goosey mishmash. But the law requires willful misstatements of material facts in order to amount to perjury, and perjury is required, not optional, for proof of fraud in the procurement of a patent so as to render it unenforceable under unclean hand according to the Supreme Court.

  200. JV That said, I agree with the dissent that the statements made to the EPO and the PTO were reconcilable.

    Anything is reconcilable if you really want to believe that it is reconcilable.

  201. Let’s use an analogy. Sometimes those help.

    Unless of course the analogy is from Malcolm.

    You misunderstand ping. Let me break it down: The claims are invalid. They were issued by mistake, with help from the applicant. Do you understand why the patentee requested only a rehearing with respect to the inequitable conduct issue?

    Well Malcolm, it seems that you misunderstand me.

    You said:
    You do understand that the claims at issue were found invalid, regardless of the IC findings? The patent was mistakenly granted, with help from the applicant.

    I said:
    If the patent was found invalid regardless of the IC findings, then the patent was mistakenly granted without help from the applicant.

    Let me break it down for you:

    When the item is found invalid regardless of the IC, that IC don’t matta – the patentee has lost the patent no matta what. In fact, your re-break makes less sense – the patentee should request a rehearing only on the item that can turn his patent around and avoid the IC matta if he can. What happen to the patentee if the IC matta is overturned. Great, his lawyer is not sanctioned – but his patent is still invalid.

  202. I’m replying to MM’s text:
    ,,,,,,,,,,,,,,,,,,,,,,
    MD “one could argue (credibly, in my opinion) that when D1 recites “preferably” it is actually speaking “necessarily” to the reading PHOSITA.”

    I’m not aware of such an argument ever being accepted by any patent court, anywhere. Are you?

    In this case, of course, it’s moot because the applicant admitted in proceedings before the EPO that it was “clear” and “unambiguous” that preferably did not mean “necessary”
    ,,,,,,,,,,,,,,

    Am I? No, MM, I’m not, but I don’t exclude the possibility of it happening sometime.

    Is there not tension between those who report that statements Applicant made to the EPO ought never to be of any interest in the USA and MM, who here reports that Applicant’s “admission” to the EPO ought to be held against him in US proceedings?

  203. JV

    Whether the statements were reconcilable is an issue of fact of no interest except to the parties. If the judges got it wrong, that is of no significance for subsequent cases.

    If they went wrong in principle, of course, that is another matter.

  204. “I have to agree with Ned Heller that the principal problem presented by this decision is the notion that something said by the applicant in another jurisdiction is in any way “material” to a US examiner.”

    I’d submit that Therasense is a case where what the applicant said in another jurisdiction does matter. The applicant made statements about what the disclosure in his own patent meant. I’d does seem a bit hokey to me that the applicant would say that the disclosure actually meant something else when it was that patent was applied against the applicant as a reference.

    That said, I agree with the dissent that the statements made to the EPO and the PTO were reconcilable.

  205. Ned: Money, is it your opinion, then, that the good doctor who filed the affidavit for Abbott could be successfully prosecuted for perjury for stating that one of ordinary skill at the time of the patent believed membranes were required for use with blood?

    Could be? I suppose it’s possible. Heck, a jury acquitted OJ.

    Is the goalpost heavy, Ned?

    Mooney, you list repeatedly uses the phrase “misleading statement.” Do you mean by this “misleading statement of fact.”

    I’m not sure. In your opinion, what is the difference between a “misleading statement” and a “misleading statement of fact”, Ned? You seem to believe there is one. Explain the difference to me.

  206. Ned, the case law (and the statute itself) requires the examiner to determine what is the level of one of ordinary skill in the art. If the examiner were a PHOSITA, then such a determination would not be necessary – what the examiner said/knew would be identical to what a PHOSITA said/knew. Further, if the examiner were a PHOSITA, then the legal construct of a PHOSITA would not be necessary, because, again, what the examiner said would be identical to what a PHOSITA said.

    Perhaps you should have said “the examiner is skilled in the art” instead. Be careful when you casually use specially defined terms like “ordinary skill.” I know it’s just a blog comment but it’s a bad habit to have in general.

  207. Mooney, you list repeatedly uses the phrase “misleading statement.” Do you mean by this “misleading statement of fact.” Or do you mean something different?

  208. Paul: As I tell my clients to illustrate the point, there is a blue flower pot just outside my office and no amount of legal argument will change that fact,

    I’m sorry, Paul. This lease proves that you merely rent the office and do not own it.

    In addition, one skilled in the art would understand that “just outside” means between 0 and 2 feet. The flower pot is 2 feet and 2 inches away which one skilled in the art would understand to be “nearby” but not “just outside.” I have here the sworn testimony of two office decorators to support this construction. They stake their reputations on the veracity of their statements. I pay them $750/hr, including travel time.

  209. Money, is it your opinion, then, that the good doctor who filed the affidavit for Abbott could be successfully prosecuted for perjury for stating that one of ordinary skill at the time of the patent believed membranes were required for use with blood?

  210. Chris, while it is theoretically possible to have patents examined by the completely uneducated, typically, examiners do have degrees in the very fields they are examining and typically they are people of ordinary skill in the art they are examining.

    We might have a debate on this issue at some time.

  211. The only interesting questions posed by the Federal Circuit are those in (3), IMHO.

    1. Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?

    No. But the Star Scientific “get out of jail free” card needs to be torn up and flushed down.

    2. If so, how? In particular, should the standard be tied directly to fraud or unclean hands?

    See answer to (1).

    3.a What is the proper standard for materiality?

    A proper standard would be one that is very similiar to the present version of Rule 56, which is more specific but not really any different from the standard set forth more generally in the “old” Rule 56.

    3b. What role should the United States Patent and Trademark Office’s rules play in defining materiality?

    If the Federal Circuit is confused about what is material, it should look at what the USPTO considers to be material (i.e., the definition in Rule 56). The USPTO’s definition is reasonable.

    3.c Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?

    A better test would be “may not have issued if properly examined in light of the withheld information or in the absence of the misleading information”. Proving that claims “would not have issued” had the misconduct not taken place is nearly impossible given that the PTO, in the absence of any apparent misconduct, routinely issues claims that should not be issued.

    4. 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).

    It is never proper to infer intent solely from the materiality of an omitted dislcosure. With respect to an omitted reference, intent can be inferred from other evidence, e.g., evidence that there was knowledge of the reference/statement, evidence that the importance of the reference/statement was known, evidence that steps were taken to prevent knowledge of the reference/statement from being discovered (e.g., emails urging that discussion of the reference not be put in writing). With respect to an affirmatively misleading statement, intent can be inferred based on the degree to which the statement is shown to be contradictory with facts known to either the party making the affirmative statement or to those skilled in the art.

    5. Should the balancing inquiry (balancing materiality and intent) be abandoned?

    This is the same question as (1). See answer to (1).

    6. 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.

    Of course they do.

  212. Ned Heller said, “The examiner is one of ordinary skill.”

    The examiner is a PHOSITA? Not according to any of the case law I’ve ever seen (Graham v. Deere, In re Wands, KSR, etc., etc.)

  213. “I have just seen the Avid case, though. A rational en banc discussion is clearly essential, and the “material” standard is clearly over-generous and should be reconsidered.”

    Paul,

    I just commented to another patent attorney that this would be a “ripe time” for the Federal Circuit to consider Avid en banc now that they’ve already got Therasense en banc on related or potentially overlapping issues. The moon is definitely full in the area of inequitable conduct.

  214. I agree with what I believe Malcolm is saying: there is objective reality and argument will not change it. As I tell my clients to illustrate the point, there is a blue flower pot just outside my office and no amount of legal argument will change that fact, though if sombody moves the flower pot, objective reality will have changed amnd I will have to say someting different. As Dick Feynman famously said, nature is not fooled.

    So if you tell the USPTO that a component is essential and it is not, and you get caught saying elsewhere that it is not, adverse consequences are likely to follow.

    I have just seen the Avid case, though. A rational en banc discussion is clearly essential, and the “material” standard is clearly over-generous and should be reconsidered

  215. ping If the patent was found invalid regardless of the IC findings, then the patent was mistakenly granted without help from the applicant.

    You misunderstand ping. Let me break it down: The claims are invalid. They were issued by mistake, with help from the applicant. Do you understand why the patentee requested only a rehearing with respect to the inequitable conduct issue?

  216. EG I’m not trying to be Chicken Little, but the sky may be falling as it relates to inequitable conduct.

    I never believed it was falling until this recent decision but now I see the blue shards raining down everywhere I look.

    I just called every employee, including the janitors and secretaries, of every company I prosecute for and demanded that they provide me with a minute-by-minute account of their whereabouts for the last twenty years. In light of this recent decision, this is the only way to avoid having a patent rendered unenforceable.

  217. Ned is the statement made to the PTO an argument or a statement of fact? We have a reference that the examiner can read for himself. The examiner is one of ordinary skill.

    The Examiner was rolled by the bo-gus declarations, Ned.

    Let’s use an analogy. Sometimes those help. Let’s say Reference A teaches a superplane and claims a superplane, without a heat shield, for general flying use. In the EPO, the Examiner says: “It seems like a rigid shield is necessary at least outer space travel using this superplane.”

    Applicant: “No, it’s not. Look at the statement in the spec. It’s clear that the rigid shield is optional, although preferred for space travel in order to keep debris from entering the capsule.”

    Then in the US, Applicant wants to claim a method of flying the same superplane in the sub-space atmosphere without a rigid shield. The Examiner cites Reference A as teaching that a superplane in the sub-atmosphere without a rigid shield is obvious.

    Applicant gets the Office Action and is very concerned. Several meetings are held to figure out what to do. The situation is tense because there is a lot of money on the line. At one of the meetings, someone shouts: “I’ve got it! Birds!”

    A declaration is prepared: “At the time of filing, one skilled in the art would understand that Reference A teaches that a rigid shield is necessary for sub-space travel because of the presence of birds in sub-space. In addition, the statement regarding “optional but preferable” is mere patent phraseology and would be understood by one skilled in the art — at the time — to mean that the shield is essential for space and sub-space travel.”

    The Applicants’ previous statements before the EPO are not disclosed to the Examiner. The Examiner sees the declaration and thinks, “Wow, this sounds like a pile of horseshxt but they signed it under oath. Would they really make something like this up? Really tired of this case, though … screw it, I’ll just allow and they can deal with it. Otherwise they’ll just run to the blogs and whine and complain about how I don’t have authority to question their declaration.”

    And the rest is history until some blog commenter who really has no idea what he’s talking about says that a statement about a rigid shield being optional for space travel is “inapplicable” to determining whether a rigid shield is required for sub-space travel.

  218. To all,

    Ironically, a decision just came out today from the Federal Circuit (Avid Identification Systems v The Crystal Import Corp.) holding that the president of the patentee was “substantially involved” within the meaning of 37 CFR 1.56(c)(3) and thus owed the “duty of disclosure” to the PTO regarding a potentail “public use” (trade show demo) that was deemed not invalidating under 102(b) but nonetheless “material” to support a finding of inequitable conduct. See link to cafc.uscourts.gov . Prost wrote the opinion with a dissent by Linn on the “substantial involvement” question. I’m not trying to be Chicken Little, but the sky may be falling as it relates to inequitable conduct.

  219. If the patent was found invalid regardless of the IC findings, then the patent was mistakenly granted without help from the applicant.

    Isn’t that what you meant to say Malcolm?

  220. MD one could argue (credibly, in my opinion) that when D1 recites “preferably” it is actually speaking “necessarily” to the reading PHOSITA.

    I’m not aware of such an argument ever being accepted by any patent court, anywhere. Are you?

    In this case, of course, it’s moot because the applicant admitted in proceedings before the EPO that it was “clear” and “unambiguous” that preferably did not mean “necessary.”

    Demers The only question should be, were the representations made to the US examiner factually true, or were they not?

    That issue was litigated extensively at trial and the conclusion of the trial court judge was that the representations made to the Examiner were incredible and unsupportable. Likewise, the testimony before the court during litigation was also deemed not credible.

    Ned: Malcolm, or anyone, is what was said to PTO, that the sentence in the reference concerning “live blood” not being applicable to “whole blood,” false?

    Correct, Ned. That was already explained to you. Again: not difficult. Also, the sentence refers not just to live blood but to other fluids. Remember, the membrane is preferred (not required) in live blood, but optional generally. That is clear and unambiguous.

    You do understand that the claims at issue were found invalid, regardless of the IC findings? The patent was mistakenly granted, with help from the applicant.

  221. Malcolm, or anyone, is what was said to PTO, that the sentence in the reference concerning “live blood” not being applicable to “whole blood,” false?

    Now, I’ve seen your explanation and do not buy it at all. The reference said it was talking about “live blood.” Why would the statement say that at all if it made no difference whatsoever whether the strip was in live blood or whole blood?

    Second, is the statement made to the PTO an argument or a statement of fact? We have a reference that the examiner can read for himself. The examiner is one of ordinary skill. When you talk to him about what a reference teaches, are you making statements of fact or are you arguing?

  222. Examiner: *punches attorney in face*. “Would you care to reconsider your position?”

    6, not only do you really really want the bailiff to come after you (the grand court is losing patience), now you want an arrest warrant for assault and battery?

  223. “However, unlike the UK courts the US courts do not normally award costs. So perhaps inequitable conduct is sometimes needed to do justice in particular cases and compensate defendants for costs to which they should not have been subjected.”

    Paul,

    You’ve hit on one of the key reasons why inequitable conduct allegations are a “plague” in patent litigation in the States. If there’s a case where an inequitable conduct allegation that wasn’t proven and was deemed “frivolous” resulting in sanctions under our FRCP 11 or an “exceptional case” under 35 USC 285, I don’t know of one (not to say they don’t exist, but if they do, they’re extremely rare). In other words, there’s almost no risk in making a “frivolous” inequitable conduct allegation that backfires during litigation in the States.

    Another huge contributor to the inequitable conduct morass is our almost open-ended discovery rules. You don’t have to win on the inequitable conduct allegation if you can bury the patentee in enough discovery “red tape” to make it so costly that the patentee says “uncle.” Also “fact slanting” is considered good advocacy here in the States, so you can turn even the most innocent circumstances into something more “sinister”. By contrast, I know that in the UK, a British barrister will be called on the carpet by a British judge if dare do this.

    Again, until the litigation climate changes in the States, inequitable conduct is a doctrine we simply can’t afford anymore.

  224. Examiner: “You’re telling me this reference teaches X.”
    Attorney: “Yes.”
    Examiner: “But you told the EPO that the reference teaches Y.”
    Attorney: “I lied. It teaches X.”
    Examiner: *punches attorney in face*. “Would you care to reconsider your position?”

    That assumes of course the examiner wants the ref to say Y as opposed to X.

  225. Of course, that assumes that examiners read specifications critically…

    wait a minute, you want me to actually work?

  226. Paul thanks. I often think that what keeps hands clean at the EPO is the prospect of litigation in an English law country (primarily the USA but also England). This is one very good reason why litigants choose England over Germany, despite the higher cost, and not just in blockbuster pharma cases. Take, for exampole, Chapman v McAnulty (camera dollies, 1995) and Michael Silverleaf’s classic cross-examination of the infringer’s CEO concerning the altered dates on the engineering drawings.

    I don’t like to think what bamboozlement might routinely go on at the EPO but for the encouragement not to cheat that the English common law system has provided for the last few hundred years. How many times does an Applicant at the EPO file comparative experimental data in order to get the patent to issue?

  227. Let’s kick the whole thing to the curb. Seems like every other patent office in the world can survive quite well without it. If examiners at the USPTO can’t do a complete and competent search (and I am not one who assumes they can’t), then that is the issue to address.

    Change it to a system wherein the applicant is asked to send in anything that might not be available in a publications database (e.g., sales brochures if made publicly available more than 1 year before a priority date). Applicants can also send in those documents that they want included on the front of the patent, and only those documents would have a presumption of full consideration by an examiner.

    Also, allow the public to send things into the USPTO for consideration within some time frame after publication. Maybe even have an opportunity for post-grant challenge.

    As a side note, the USPTO should not have the ability to act willfully blind. At a minimum, it should be enough to make an examiner aware of related applications by serial numbers only. What purpose does it serve for me to send an examiner a .pdf of an Office Action that he or she sent to me 3 months earlier in another case? Even if not the same examiner, is it any less likely that they’d sift through all the prosecution documents from a related case if they had to go on PAIR (or whatever the internal version is) than if I send these same documents in hardcopy (or better yet, send them the .pdf they sent me)? And references cited in the specification (where, incidentally, there are “in context”) should not need to be sent in via an IDS.

    Of course, that assumes that examiners read specifications critically…

    Or we can keep the system exactly the way it is and we will continue to send the USPTO boxes and boxes of documents for every case, none of which are ever going to be read (for obvious reasons).

  228. Max

    It suffices, I think, to catch the cheat and show in what manner he or she was cheating and what the result would have been if that had not happened.

    We have disclosure of documents and cross-examination of witnesses. It is unwise even to think of telling less than the whole truth to the court.

    However, it should not be necessary to prove cheating, simply to establish the correct facts, and the UK procedure has adequate tools for this purpose. Whether the EPO is so equipped could be a matter for lengthy debate – in my view the fact that a declarant may be subject to face-to-face questioning by a hostile opponent is a major factor in keeping any proceeding straightforward and honest.

    However, unlike the UK courts the US courts do not normally award costs. So perhaps inequitable conduct is sometimes needed to do justice in particular cases and compensate defendants for costs to which they should not have been subjected.

  229. ping, you say I’ve joined MM in his “corner”. That implies a boxing ring, in which your pugilistic form is what we see in the opposite corner.

    It’s only in your imagination that I’m in any corner. I’m not going to argue with you though, when you mail in to us that in a corner is where you envision yourself.

  230. EG, Paul Cole, put me straight will you. I had always naively supposed that the difference between English common law and the rest of the world is that English follows the maxim “Cheats should not prosper”. But, if you do away with penalties for conduct that is inequitable, then the cheats will more likely prosper, or (and this might be even worse) perceive that they ought to get on and cheat more professionally, because of the increased chances of prosperity that such conduct is likely to deliver. Can you afford that perception?

  231. In today’s age, where prosecution of each and every family member is available electronically, it should be sufficient to inform the examiner of other family members. There should be no requirement to update the examiner each and every time someone in the EPO changes their minds. Prosecution in the EPO and US are different because the laws are different, some of what is relevant in the EPO would not be relevant in the US. For example a reference less than 1 yr prior could be sworn behind in the US but would bar the EP patent.

  232. “there should be no general obligation to bombard the USPTO with EPO Office Actions and responses.”

    Paul,

    I wish that were true. Unfortunately, that’s not the reality. That’s how out of control the doctrine of “inequitable conduct” is in the US, and especially how even what are innocent statements in patent prosecution, be it the US or EPO, can be distorted completely out of context in patent litigation. That’s why my patent attorney brother and I feel this doctrine needs to be done away with, once and for all, in the US.

    As I noted above, we’re the only jurisdiction that has it. It’s also extremely costly for the benefit realized; I feel the same way about wasting so many resources on interferences here in the States (ironically, my dad who was a “master” of interference practice feels the same way I do, including during his patent law career when he figures he did around 400 interferences). If the EPO and the rest of the world can get along without the need of this doctrine, why can’t we in the States do likewise?

  233. I have to agree with Ned Heller that the principal problem presented by this decision is the notion that something said by the applicant in another jurisdiction is in any way “material” to a US examiner. The only question should be, were the representations made to the US examiner factually true, or were they not?

    What was said before the EPO might be different for a variety of reasons, ranging from an outright lie to a different argument (made with respect to different legal and procedural standards) to different connotations attached to words (MaxDrei’s point re “optional”). But even an outright lie made in the EPO is not a fraud on the USPTO, does not cheat the US public, and does not lead to a US patent on the unpatentable. There’s a practical aspect to this (do we really want to be dropping complete patent family file histories from EP, JP, CN, KR, CA, AU, TW, etc. etc. etc. on our examiners?), but there’s a jurisdictional problem as well: can/should we be punishing sleazy applicants for deeds done abroad, if everything done before the USPTO was on the level? (I’m not saying that was the case here; just arguing the principle – I think it’s up to the EPO to tear up the applicant’s European patent.) And in the absence of jurisdiction, what is it about statements made abroad that could possibly be “relevant” to a US examiner?

    Just for the fun of it, can someone (6, are you there?) please provide the Examiner with a closing remark in this imaginary interview – something that would render the disclosure of the EPO prosecution file “material” in the first place:

    Examiner: “You’re telling me this reference teaches X.”
    Applicant: “Yes.”
    Examiner: “But you told the EPO that the reference teaches Y.”
    Applicant: “I lied. It teaches X.”
    Examiner: __________

  234. EG,

    Maybe I’ve just become more cynical as I get older, but I’m tired of seeing cases like this one where a patent applicant tells the USPTO one thing and the EPO another or tells the PTO one thing and tries to argue the opposite in litigation and the patent bar supports upholding the patent.

    Just once I want to see the AIPLA file an amicus brief that says “this kind of prosecution stinks and the court should throw the patent out” instead of “well, the attorney can’t be held accountable for inconsistent statements over several years of prosecution or for not telling the USPTO about that reference he was fighting with the EPO examiner over”.

  235. Back to blockbusters for a second.

    If it is easier to get them in the US because “Perhaps the average Examiner in the EP is a bit more intelligent and creative than the average US Examiner? Or under less time pressure? Or less incentive to allow?“, then the impetus to cheat would be less, not more. Unless you are saying that you are more likely to get away with it here – but that doesn’t make sense either, since you do not have a reporting requirement there, do you?

    Malcolm, pandering to the blimey brits on this blog will get you a concurring post, but really, is it worth it? Having Maxie in your corner does not help the credibility of your position.

  236. For the IC point of this thread,

    When the court is sitting en banc to review the law, are they interpreting the law, or are they rewriting the law?

  237. Malcolm,

    Help me out please.

    Are blockbuster patents bad? Are they only obtained through deceit and malfeaseance, or through an examining body that cannot or does not do its job to a full rigor?

  238. To figure out the ratio decidendi of a case, it is helpful to focus on essentials.

    In Therasense, as I read the decision, the key point was that the patent issued because a particular feature was said to be essential for the relevant purpose. The patentees got caught when they argued in another case, in this instance before the EPO, that the feature was not essential for that purpose. In other words before the USPTO black = black and before the EPO black = white. [For the avoidance of doubt, no view is expressed as to whether black = black or white, or whether there was in fact inequitable condict in this case]

    There was all sorts of argument about discloure of EPO Office Actions to the US Examiner who might have been interested in them. However, the vice is making contradictory and untrue statements, and the EPO Office Actions were merely the vehicle by which the relevant situation was brought to light. That is why they ought to have been disclosed, and there should be no general obligation to bombard the USPTO with EPO Office Actions and responses. In any event, the USPTO examiners can find the whole EPO file wrapper on line, and probably look at in any event.

    On the issue of materiality in my submission the requiremment should be that but for the alleged misconduct, one or more claims would not have issued. Any lesser standard opens the door to lengthy arguments concerning trivia. To be fair to the US courts, most of the inequitable conduct cases I have read concern fairly gross behaviour.

    As readers will recall, I have argued at a meeting of the AIPLA that the inequitable conduct doctrine is redundant, wasteful and should be abolished. That argument met a chorus of disapproval from US practitioners. The present case provides an opportunity to review the doctrine and hopefully make it more workable.

    One issue that perturbs me is as to the level of disagreement as to the primary facts. It is hard to credit that Dyk and Friedman on the oner hand and Linn on the other hand were reading the same trial record, so great were the differences in their findings of fact and the conclusions to be drawn from them. There have been other cases on inequitable conduct where a similar level of differences arise – to one group of judges the patentee and his attorneys were people of shining integrity, whereas to the other group of judges they were rogues. If a decision of inequitable conduct is to be reached, it should be grounded very firmly in the relevant facts as established in the trial record.

  239. Good stuff Malcolm but I challenge your categorisation of one statement as buffonalicious (nice word though).

    Patent attorneys are inveterate writers (in specification D1) of “preferably” when what they mean is that feature X is “necessarily” present in the apparatus A that they are claiming. They have no idea whatsoever how they are going to get their A to work without an X in it, but they know that they do not want X in their independent claim, so they write “preferably” in their specification.

    The EPO uses Art 84 EPC (very effectively) to eliminate this mischief, during prosecution of D1.

    But what happens when D1 gets cited as a reference, for its disclosure of A without an X? In Europe, one would have to argue that D1 is non-enabling (and that’s hard when in the meantime an X-less A has been enabled, in the app against which D1 is a reference).

    Alternatively, one could argue (credibly, in my opinion) that when D1 recites “preferably” it is actually speaking “necessarily” to the reading PHOSITA.

  240. Ned: The claim under consideration is to a sensor strip without a membrane for use with whole blood. The reference discloses a sensor strip with a statement that reads “Optionally, but preferably when being used on live blood, a protective membrane surrounds….”

    In the EPO, the applicant quotes the statement itself. Says it is clear.

    With respect to the statement in the reference, “Optionally, but preferably when being used on live blood, a protective membrane surrounds both the enzyme and the mediator layers, permeable to water and glucose molecules.” it was said before the EPO that: “It is submitted that this disclosure is unequivocally clear. The protective membrane is optional, however, it is preferred when used on live blood in order to prevent the larger constituents of the blood, in particular erythrocytes from interfering with the electrode sensor.”

    Recall that this device is used for measuring blood glucose levels. I think nearly everyone on earth would understand the reference (the ‘382 patent) and the applicants’ statement before the EPO to mean that the protective membrane is optional, period, for live blood and other fluids, but preferred (yet still optional) in live blood. As noted in the decision, the claims in the ‘382 patent which do not include membranes do not exclude blood, live or whole.

    In the US, the applicant argues one of ordinary skill would understand the statement referred only to live blood [inside the body] and was inapplicable to whether a membrane could be used with whole blood (i.e., blood outside the body.)

    On its face, this statement is correct.

    Gosh, if you say so, Ned. Seems to me like it completely contradicts the reference and the statement before the EPO. And there were some skilled artisans testifying in court that were deemed far more credible than the patentee’s witnesses.

    Moreover, the “unambiguous” fact that a membrane was “optional” for a device used on live blood (in the body) seems to me to be extremely applicable to determining whether one skilled in the art would understand a membrane to be *required* for use on whole blood (outside the body). Could you explain to me why you believe the situation with respect to glucose detection in live blood is “inapplicable” to the detection of glucose levels in whole blood, using the dame device? Should be easy for you, Ned, since you claim that the statement is “correct” “on its face.” So go ahead and explain the “inapplicability” to me, Ned.

    Are you going to dredge up some ad hoc hoohaw about “fouling” in whole blood? Good luck with that. See the bolded text above (referred to in the Federal Circuit opinion) which explains why the membrane is preferred (but optional) and refers to a fact about live blood (the presence of erythrocytes) which is extremely *applicable* to whole blood. None of this is very complicated, frankly, but you can make it complicated, I suppose, if you try hard enough. Why do you want to make it complicated, Ned?

    Or are you going to argue that “the “optionally, but preferably” language” is not “a technical teaching but rather mere patent phraseology” as the prosecutor did before the USPTO (possibly the most laughable and buffonalicious statement in the entire record).

    The attempt to use a declaration to declare that “white is black” and “up is down” and “preferable means necessary” was a bit much by itself, but failing to disclose the statement before the EPO which clearly undercut the patentee’s position took the cake. It stinks of deceit and the district court judge smelled it. Give the guy some credit.

  241. Mooney, the case I am talking about is the case at bar.

    The claim under consideration is to a sensor strip without a membrane for use with whole blood. The reference discloses a sensor strip with a statement that reads “Optionally, but preferably when being used on live blood, a protective membrane surrounds….”

    In the EPO, the applicant quotes the statement itself. Says it is clear. In the US, the applicant argues that one of ordinary skill would understand the statement referred only to live blood [inside the body] and was inapplicable to whether a membrane could be used with whole blood (i.e., blood outside the body.)

    On its face, this statement is correct.

    As Linn says in his dissent, there is nothing inconsistent about the two statements whatsoever. The attorney making the argumet is speaking to an examiner who is a person of ordinary skill. He eligible to agree or to disagree. There can be no misrepresentation.

    This case does not involve any misrepresentation of any facts to the PTO. The reference speaks for itself. Arguments about what the reference discloses are just that: arguments.

    As a matter of law, there should be no possibility misrepresentation of facts here; but this case came out the opposite way. For what reason?

    Rule 56?

    Rule 56???!!!!!

    Really?

    This shows just why Rule 56 is an abomination.

  242. TJ How can describing those who are deterred as “paranoid maniac[s]” be understood as implying anything other than saying that the rational non-paranoid person should feel very little deterrence?

    Your strawmen are annoying, JT. I never said that those who are “deterred” are “paranoid maniacs.” You can continue arguing with your imaginary version of me if you choose.

    EG Blissful “ignorance” of such parallel prosecution could be considered pretty cavalier (and potentially lethal) in view of either McKesson or the panel decision in Therasense.

    Again, nobody is arguing that one should remain “blissfully ignorant” of parallel prosecution. On the contrary, I recommend that applicants do their utmost to maintain a consistent strategy and assume the same facts throughout the prosecution of *all* cases (not just legally related cases) on behalf of a given client. If you do this and you are reasonable (not psychotic) about disclosing non-cumulative material references, the risk of unenforceability due to IC is extremely low. An additional point is that if you nevertheless find yourself accused of IC by an alleged infringer, don’t behave like a prima donna with a persecution complex and a too-clever explanation for everything.

  243. Ned Malcolm, you speak broadly of “duty this and duty that.”

    Do I? I used the term “duty” once in this read, in reference to the PTO’s duty to provide Applicants with a minimal level of care in their docketing and examination of closely related cases. Doesn’t seem like a “broad” reference to “duty” …

    Ned So I say one thing to the EPO and a different thing to the USPTO. So what? if what I said to the PTO is not a misrepresentation of a material fact? Why is my patent being held unenforceable without ever deciding this question?

    I don’t have enough facts about your case to answer the question, Ned. Obviously there is no requirement in the US that your statements in other jurisdictions are identical to statements you make in the US.

    It appears from your hypo that you believe your statement to the PTO was accurate and your statement to the EPO was a mistake, inaccurate, or drafted so poorly that it could be construed by a reasonable person as a contradiction. If so, the proper course of action is to provide the EPO statement to the US Examiner and explain to the Examiner why the EPO statement was incorrect, inaccurate, or drafted so poorly as to appear contradictory. If you fail to do this, then you will likely have another chance to explain the mistake, inaccuracy or confusing statement in a deposition and/or on the witness stand before a judge or jury and your credibility will be assessed against the credibility of others.

    This is why one should take the time before submitting statements to the USPTO and not just flail away like it’s all some big game. If you are going to be put on the witness stand to defend a statement, better to defend a statement like “The ACLU has on occasion represented private citizens in actions against the excessive entanglement of religion and government” than a statement like “The ACLU has at times defended Nazis, but those are rare occasions. It more often attacks Christians, the family and property.”

    My rule of thumb is to keep things simple, accurate and consistent and to say no more than what is necessary to address the Examiner’s pending rejection/objection. And by all means the Responses should be respectful. No point in antagonizing an Examiner who is quite likely to be handling more of your client’s cases in the future.

  244. 6,

    Get your “Whatev” back to the grand court. Answers are to be had.

    You don’t want to be looking over your shoulder for the bailiff, now do ya?

  245. TJ,

    Point very well taken. Also, how does Malcolm explain that it isn’t prudent (as opposed to “paranoicd) to consider relevancy of what happens in parallel prosecution in the US (in view of McKesson) or in Europe (in view of the panel decision in Therasense)? Blissful “ignorance” of such parallel prosecution could be considered pretty cavalier (and potentially lethal) in view of either McKesson or the panel decision in Therasense. We can only hope that the en banc ruling in Therasense renders some sanity out of the current chaos that inequitable conduct case law currently is, including Digital Controls which noted there were at least 4 standards for judging inequitable conduct, but never tells us which one is the minimum “case law” standard.

  246. “That increase, however, is small provided that one does not behave like a paranoid maniac every time (once a year, on average?) a Federal Circuit case issues that upholds a finding of inequitable conduct.”

    How can describing those who are deterred as “paranoid maniac[s]” be understood as implying anything other than saying that the rational non-paranoid person should feel very little deterrence? And if rational people should feel very little deterrence, what is the point of IE again?

  247. Malcolm,

    Have it your way. But you still haven’t proven squat to me in support of the positions you’re taking.

  248. “Sorry, I’ve been doing patent prosecution for over 35 years.”

    Alan,

    I stand corrected. I’m also surprised that someone who is about as experienced (almost 33 years) as I am in patent prosecution would suggest as draconian a response as you suggest to questions 2 and 4. Most of your fellow patent prosecutors (like me) wouldn’t be very happy to be subjected to a “no deceptive intent” and “no materiality required” standard for inequitable conduct suggested by you.

  249. Malcolm, you speak broadly of “duty this and duty that.”

    Exactly, what is this “duty?”

    Not to deliberately and willfully misrepresent material facts?

    OK.

    So I say one thing to the EPO and a different thing to the USPTO. So what? if what I said to the PTO is not a misrepresentation of a material fact? Why is my patent being held unenforceable without ever deciding this question?

  250. Above, Mooney wrote:

    “With respect to Europe, my understanding is that it is simply more difficult to obtain the sort of blockbusting patents found in the EP relative to the United States. Perhaps the average Examiner in the EP is a bit more intelligent and creative than the average US Examiner? Or under less time pressure? Or less incentive to allow? And then there are the opposition proceedings and perhaps increased difficulty in enforcing the patents once obtained. In any case, I believe there is a diminished opportunity for deceptively-obtained patent windfalls in the EP. I welcome any concurring or dissenting thoughts from our friends in the EP.”

    My impression too, that in Europe:

    “there is a diminished opportunity for deceptively-obtained patent windfalls”

    Some on this blog would say, I know, that this only goes to prove that the USA has a “strong” patent system, whereas Europe doesn’t.

  251. “There is no such “requirement.” ”

    Whatev you think MM. Although yes, I do use “requirement” in quotes above.

  252. 6 After having done such a case myself, I have to support the requirement for citation of OA’s by the same examiner as there is simply too much potential for an examiner to forget one of 15 parents he’s done (in the event of 15 parents)

    There is no such “requirement.” There is, of course, a requirement to argue the facts consistently and not contradict previous assertions about the state of the art, etc. Provided that the prosecutor is able to remember the basic facts and underlying assumptions in the case and not merely “argue whatever you have to argue in order to get the case allowed,” there is no need to cite previous Office Actions.

    The real problem for applicants (as 6 is surely well-aware) is the tendency for different examiners in the same art unit who are examining closely related cases (problem #1) to reach different conclusions about obviousness. That type of contradiction is beyond an applicant’s control. For starters, it should never happen. But once the contradiction is identified and poined out to the Office, it seems to me it is the Office’s duty to make sure the contradiction is resolved so prosecution can move forward (or not). An easy solution would be to take the closely related cases and re-docket them so they are being handled by one of the two (or three) Examiners rather than being spread out.

  253. EG: You’ve just proven my point: sanctions under FRCP 11, as well as making a case “exceptional” under 35 USC 285, are applied only against patentees for which IC is proven (even though alleged far more often than proven), and basically not all against those who “frivolously” allege IC.

    I don’t think I’ve “proven” that. I do not know how often Rule 11 sanctions are brought sua sponte or requested by plaintiffs in litigation in response to a “frivolous” claim of IC.

    You’ve still not provided any proof to show that this “shortcoming” is confined to the US

    And I never will because the shortcoming I alluded to is not confined to the US, as human beings live in each of the world’s countries. As I explained, the US merely presents the greatest temptation for IC before a patent office, given the stakes involved, the known inadequacies of the PTO, etc (see 6’s comment above). I don’t see anything remotely extraordinary or controversial about my argument, so your request for “proof” seems to be an attempt at distraction.

  254. Malcolm, since you work for the PTO, do you have access to the original Fed. Reg. notice of proposed rule making for Rule 56. It would be interesting to see what they thought at the time and how it matches up with reality.

  255. “Why is the issue of the consequences of inequitable behaviour not being addressed. As long as the consequence is patent invalidation, then litigation will be encouraged.”

    Maybe because the Supreme Court has so held and, contrary to popular opinion, the Supreme Court’s precedent binds the Federal Circuit. Also, Congress has all but approved of this so-called “draconian” result so it’s not really the courts’ place to remove it.

  256. “That’s easy: Rule 11 is not enforced as often as it should be, although I do recall a recent District Ct. case where some patent trolls were sanctioned for frivolous pleading. I’m sure you read Quinn’s summary at IP Watchdog.”

    Malcolm,

    You’ve just proven my point: sanctions under FRCP 11, as well as making a case “exceptional” under 35 USC 285, are applied only against patentees for which IC is proven (even though alleged far more often than proven), and basically not all against those who “frivolously” allege IC.

    As far as why those in the US would be tempted more to hide references, versus those who might be tempted to hide them in Europe, telling me that is based on “the well-known shortcomings of the human condition” is about like a patent examiner telling me that something is “well-known in the art” when he/she can’t provide any references to show same. You’ve still not provided any proof to show that this “shortcoming” is confined to the US, versus anywhere else in the world, including Europe.

  257. You know Broje, I just did a case where the child cited the parent which I did before. I did happen to recognize the case and knew that I should have the parent on file somewhere. But, to be honest, if that case had issued it may very well have been quite a pain to find if it had been issued but not yet published. After having done such a case myself, I have to support the requirement for citation of OA’s by the same examiner as there is simply too much potential for an examiner to forget one of 15 parents he’s done (in the event of 15 parents) and also for random things to happen that result in the prior case’s history not being reviewed. The IDS in this situation functions as something to make sure everything is considered. It is kind of responsible to have it and would be kind of irresponsible to remove it.

    However, the office is apprently getting really picky about how we handle OA’s cited in IDS’s. My spe is making me cross through them and then say in the action that I considered them. Anybody else seeing something like that when they get OA’s in a case where OA’s are cited in an IDS?

  258. Mooney, you seem to imply that a rational prosecutor should have little fear of inequitable conduct since it is so rarely upheld. But that argument can easily be flipped. If inequitable conduct provides so little deterrence to misbehavior,

    I never said that IC provides “so little deterrence”. I said the opposite.

  259. is proven disproportinately less frequently than alleged, yet those who fail to prove “inequitable conduct” are rarely, if ever, sanctioned with paying attorneys fees/costs for “frivolous” allegationss of “inequitable conduct” versus those instances where “inequitable conduct” is proven?

    Defendants can’t know whether inequitable conduct has occurred until they’ve sifted through all of Plaintiff’s prosecution materials. You propose sanctions and attorney fees for diligence?

    Besides, the vast majority of patent cases settle, and the lion’s share of costs associated with investigating inequitable conduct fall on Defendants. If the information uncovered by such inquiries were immaterial and weren’t leading to efficient settlement, defendants would stop spending on it.

    Once no evidence has been found, IC counterclaims should be voluntarily dismissed more often than they are, but that’s an issue with litigation in general, not patent litigation or IC counterclaims specifically.

  260. EG Where’s your proof/evidence for this regarding the US versus any other region of the world, especially Europe?

    My proof is that the US is the most popular country for filing patents, by a long shot if I’m not mistaken. The conclusion about the higher stakes leading to increased temptation to engage in deceptive conduct follows from applying basic logic to the well-known shortcomings of the human condition.

    With respect to Europe, my understanding is that it is simply more difficult to obtain the sort of blockbusting patents found in the EP relative to the United States. Perhaps the average Examiner in the EP is a bit more intelligent and creative than the average US Examiner? Or under less time pressure? Or less incentive to allow? And then there are the opposition proceedings and perhaps increased difficulty in enforcing the patents once obtained. In any case, I believe there is a diminished opportunity for deceptively-obtained patent windfalls in the EP. I welcome any concurring or dissenting thoughts from our friends in the EP.

    EG: Also, why is it that the number of cases where “inequitable conduct” is alleged is so high (almost every patent infringement suit), is proven disproportinately less frequently than alleged, yet those who fail to prove “inequitable conduct” are rarely, if ever, sanctioned with paying attorneys fees/costs for “frivolous” allegationss of “inequitable conduct” versus those instances where “inequitable conduct” is proven?

    That’s easy: Rule 11 is not enforced as often as it should be, although I do recall a recent District Ct. case where some patent trolls were sanctioned for frivolous pleading. I’m sure you read Quinn’s summary at IP Watchdog.

  261. “provided that one does not behave like a paranoid maniac every time (once a year, on average?) a Federal Circuit case issues that upholds a finding of inequitable conduct”

    Mooney, you seem to imply that a rational prosecutor should have little fear of inequitable conduct since it is so rarely upheld. But that argument can easily be flipped. If inequitable conduct provides so little deterrence to misbehavior, why bother have the doctrine at all?

  262. “the temptation to deceive the PTO is also higher.”

    Malcolm,

    Where’s your proof/evidence for this regarding the US versus any other region of the world, especially Europe? Also, why is it that the number of cases where “inequitable conduct” is alleged is so high (almost every patent infringement suit), is proven disproportinately less frequently than alleged, yet those who fail to prove “inequitable conduct” are rarely, if ever, sanctioned with paying attorneys fees/costs for “frivolous” allegationss of “inequitable conduct” versus those instances where “inequitable conduct” is proven? Face it Malcolm, the existence “inequitable conduct” in the US is a gravy-train only for US patent litigators.

  263. EG All IC does is drive up the cost of patent litigation

    Since so few patents are ever litigated, this is is a trivial point. Much more salient is the increased cost of patent prosecution. That increase, however, is small provided that one does not behave like a paranoid maniac every time (once a year, on average?) a Federal Circuit case issues that upholds a finding of inequitable conduct.

  264. TINLA Is there any hope this decision might aleviate the present requirement to cite Office actions from a parent case in a child case, even if the Examiner in the child case was the Examiner in the parent case?

    There is no such requirement. There is not even a requirement to cite the *references* which were cited in a parent case in a child case, as the Examiner is required to look at those references.

    EG All IC does is drive up the cost of patent litigation. We remain the only jurisidiction that has it

    The current IP case law encourages many applicants to disclose material references that they would otherwise be inclined to not disclose. Rule 56 is otherwise toothless. The United States is different from nearly all other jurisdictions because the stakes are higher here and, as a result, the temptation to deceive the PTO is also higher.

  265. I choose 2.

    Go back to the basics. I have been arguing that here for some time.

    There is no duty to disclose except as provided by law the unclean hands in such cases as Keystone Driller. Rule 56 is not law. Never has been.

  266. Lionel,

    I concur with you on all points and certainly with respect to questions 1-5.

    Alan,

    I don’t agree with you at all on your response to question to the extent it would include: (1) a reference that it is withheld “without an intent to deceive”; and (2) a reference that is deemed “immaterial” such that the claim or claims would been deemed patentable anyway. I’ve seen you express this “draconian” view of inequitable conduct before (your response to question 4 confirms that) which suggests to me you’ve either never done much patent prosecution or if you have, you don’t care about this doctrine being applied “equitably.” Like Lionel, I view IC as a “plague” that cares little for whether the claimed invention (in the end) is meritorious or not. We remain the only jurisidiction that has it, and we would be better off it also disappeared in America. All IC does is drive up the cost of patent litigation. Also, and contrary to what you suggest, patentee aren’t the only “vilians’ when it comes to abusing the litigation process.

  267. Is there any hope this decision might aleviate the present requirement to cite Office actions from a parent case in a child case, even if the Examiner in the child case was the Examiner in the parent case?

  268. 1. Yes.
    2. Withholding a reference should be a per se violation resulting in unenforceability.
    3. If another PTO cited it, it is material. If you would rather the examiner not see it, it is material.
    4. No need to infer intent under the per se rule.
    5. Yes.
    6. No.

  269. David,

    If the patentee intentionally deceives the PTO, to get one or more claims allowed, I do not believe it is draconian to invalidate the patent.

    However,

    (1) I do not believe Applicants should have any disclosure requirements and prefer that those requirements be changed.

    (2) Regardless, the burden of proof required of the defense should be to show intentional deceit or actual fraud.

  270. David French writes:

    Why is the issue of the consequences of inequitable behaviour not being addressed. As long as the consequence is patent invalidation, then litigation will be encouraged.

    Surely Equity can provide other consequences that are less Draconian.

  271. (1) Yes

    We should abolish any disclosure requirements altogether, like every other patent system. However, assuming the US maintains any disclosure requirements (and I am):

    (2) The standard should be tied directly to fraud or unclean hands

    (3) A reasonable standard for materiality should raise a legitimate question of whether one or more claims would have been allowed if the undisclosed material had been disclosed.

    (4) None

    (5) Yes. Each should have its own bar.

    (6) Maybe.

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