Defending Yourself in Inequitable Conduct Proceedings

An en banc rehearing is now pending before the Federal Circuit in the case of Therasense (Abbott) v. BD. The case focuses on questions of patent unenforceability due to the patentee’s inequitable conduct during prosecution.  The court opinions focus on the actions of Mr. Lawrence S. Pope who was the attorney responsible for prosecution of the asserted patent.  The district court held that pope “acted with specific intent to deceive” the patent examiner and the USPTO. Based on that finding, Pope has been investigated by both the PTO Office of Enrollment & Discipline (OED) and the Illinois Attorney Registration and Disciplinary Commission (ARDC).

There is no doubt that the finding of intentional deception has substantially and negatively impacted Mr. Pope.  As a pro-active attorney, Mr. Pope (who is no longer with Abbott) attempted to intervene in the case to defend his own record. After receiving briefs on the motion to intervene, the Federal Circuit denied the request. 

Writing as the motions judge, Judge Gajarsa wrote:

Pope asserts that he meets the standards for intervention, i.e., that he has a substantial interest in the appeal, that his interests will not be adequately represented by Abbott, and that intervention will not cause any undue delay or harm. . . . In Nisus Corporation v. PermaChink Systems, Inc., 497 F.3d 1316, 1319-20, 1322-23 (Fed. Cir. 2007), we affirmed a district court's denial of a motion to intervene by an attorney who had prosecuted a patent and who sought to challenge factual findings concerning his conduct that were related to a finding of unenforceability. We expressly distinguished Penthouse Int'l because it involved an attorney who sought to intervene after a district court sanctioned the attorney and directed the attorney to pay a sanction. In this case, Pope has shown no similar type of sanction. Nisus, 497 F.3d at 1319 ("Critical comments, such as in an opinion of the court addressed to the issues in the underlying case, are not directed at and do not alter the legal rights of the nonparty.").

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193 thoughts on “Defending Yourself in Inequitable Conduct Proceedings

  1. Malcolm, agreed.

    On a personal note, I have enjoyed our conversation here. We did not fully agree on every issue, but it was a good back-n-forth.

    Thanks.

  2. Ned Here Pope claimed a prior art sensor without a prior art membrane. He never articulated what it was that allowed this. His litigators never came up with a convincing theory either.

    Gee, Ned. Maybe that’s because the entire theory of patentability of the “membraneless sensor” was a giant pile of horsecrxp. You really don’t think the apparent “incompetence” and the inequitable conduct findings are at all related? Think harder, Ned. You are almost there.

  3. Malcolm, the problem with this case lies elsewhere. Remember Alsup’s point about the pencil and eraser? The sensor without a protective membrane is not an invention (or does not properly claim an invention) just as a pencil without an eraser is not an invention without more. A pencil that erases without an eraser might be patenable, but the invention is the means for erasing without an eraser. One cannot simply claim the result.

    Here Pope claimed a prior art sensor without a prior art membrane. He never articulated what it was that allowed this. His litigators never came up with a convincing theory either.

    So the answer to all questions is no. Pope appears to be borderline incompetent on patent law while at the same time being highly skilled in getting patents allowed.

  4. Ned, assume all the facts about the prosecution are unchanged and public knowledge, except that the case settled before trial. If your best friend came to you and said he needed a patent prosecutor with experience in the field of metabolite sensors for a very important invention, would you recommend Pope?

    Same question. Assume the trial happened, the IC issue was raised and litigated, but came out the other way, i.e., no finding of inequitable conduct.

    Same question, with the actual facts as background.

  5. Malcolm,

    I said what I said. It’s unambiguous.

    And I said what I said: You’ll have to cite some law for that.

    I’m pretty sure it was clear that I wasn’t questioning the ambiguity of your statement.

  6. What we have is an attorney being defamed in court and he has no legal recourse. Why?

    Because the entire legal system would descend into chaos if you had a cause of action every time you were mentioned by name in a trial between two other parties who should be able to fully and freely present their case.

    I suppose you are also against people voting on resolutions or by extension, even having the right to vote at all.

    Now that you mention it, I’m not really a fan of that either.

  7. IANAE, mobs? As in what happened in Paris during the Reign of Terror? That is what you think of juries?

    I suppose you are also against people voting on resolutions or by extension, even having the right to vote at all. After all, they are just uniformed mobs.

  8. INANE, on the civil rights issues, I think we really need to look on this as a civil rights issue. What we have is an attorney being defamed in court and he has no legal recourse. Why? Because of a “privilege” that has its origins in England.

    But we have an understanding that our right to yell fire does not extend to doing so in a crowded theater. The privilege to defame third parties in civil cases should be limited in some fashion, such as by granting the third party the right to be heard. That is all that Pope asks here. Is his request all that unreasonable?

  9. when the law is that there can be no other reasonable explanation and if appellate judges continue to explain just what those other reasonable explanations are, I would find it hard to accept that there was a willful intent to deceive.

    The law is also that a majority vote at the appellate level carries the day. If two out of three say there is no other reasonable interpretation, there is no other reasonable interpretation. Subject, of course, to en banc review or Supreme Court review.

    No evidentiary standard can override the requirement that a majority of the appellate panel find that the standard is met.

    What we are seeing here is a pattern where IC is found where there are reasonable explanations for the statements.

    Maybe someone should track down a credible witness to put forward those explanations. It would make them sound much more reasonable.

    What I suggest is that juries decide the fact issues.

    What I suggest is that large mobs of people selected because of how uninformed and manipulable they are should be deciding as little as possible.

  10. IANAE, when the law is that there can be no other reasonable explanation and if appellate judges continue to explain just what those other reasonable explanations are, I would find it hard to accept that there was a willful intent to deceive. It throws our whole justice system into disrepute.

    In the Taltech case, the attorney said that so and so seams were considered unacceptable in dress shirts. The facts showed that 5% of the PO’s dress shifts had the “unacceptable” seams. The court held the statements by the attorney to be false.

    The dissent disagreed because the evidence was also consistent with a good faith believe that the seams were unacceptable. The de minimis usage in dress shirts actually supported this conclusion.

    What we are seeing here is a pattern where IC is found where there are reasonable explanations for the statements. We really need to think this through a bit more. What I suggest is that juries decide the fact issues.

  11. I said what I said. It’s unambiguous.

    Even so, the moment one person finds a different way to misunderstand what you’ve said, that kind of destroys your point. There has to be unanimity, in my view.

    Have I mentioned before what a wonderful idea it is to corral a dozen random people off the street and ask them whether the guy in the handcuffs should go to jail? It’s a glorious expression of freedom, and not in any way a completely outdated ritual that had its place when judges served at the King’s pleasure and today puts one’s rights at the mercy of your lawyer’s relative ability to psychologically manipulate the proudly-uninformed.

  12. I don’t understand how you can fail to understand this.

    What I don’t understand is how you can fail to understand the role of an appellate judge, and how that role differs from the role of a trier of fact.

    What happens if this case goes en banc and from there to the Supreme Court? Unanimity all the way up? Now that one judge from the Federal Circuit panel has dissented, should that prevent the Supreme Court from finding inequitable conduct?

  13. IANAE, if one juror holds out, the defense fails. PERIOD. I don’t understand how you can fail to understand this.

    What this suggests, that in close cases such as this, that juries be used. The law requires that the applicant or his attorney have no reasonable explanation. If a jury unanimously hold that there is no reasonable explanation, then I would agree with it. However, where four judges have considered the issue and one disagrees with the others, as here, I believe we have a problem. There has to be unanimity, in my view.

  14. ping So, Malcolm, you do be saying that the Office controls what is said from one person to a foreign entity?

    I said what I said. It’s unambiguous.

  15. IANAE, why are you thinking that all juries involve the standard of proof of “beyond a reasonable doubt.”

    I don’t. You keep saying that inequitable conduct should not be found if even one person could reasonably reach a different conclusion. I keep telling you that’s the wrong standard.

    the ACLU has no genuine interest in civil rights.

    Are you still insisting that this decision somehow affects Pope’s liberty? When did this become a discussion about civil rites?

  16. I take it Malcolm that you actually believe that the ACLU would have no interest in Pope. I suspect the reason is what I said all along, the ACLU has no genuine interest in civil rights.

  17. IANAE, why are you thinking that all juries involve the standard of proof of “beyond a reasonable doubt.”

    Most juries in civil cases still require a unanimous verdict. I am merely suggesting where there are two reasonable interpretations, that it is likely a jury would not be unanimous when the “law” requires there is only one reasonable interpretation. As such, the defense of IC would not prevail at all.

    In England, prior to 1789, it was the “law” that issues of fact had to be tried to juries even if the cause of action was in equity. I do not recall a US Supreme Court case on point, but there must be a case somewhere in our history that dispensed with this practice and found it not in violation of the 7th Amendment.

  18. So, Malcolm, you do be saying that the Office controls what is said from one person to a foreign entity?

    You’ll have to cite some law for that.

  19. ping This goes back to the ability to lie to a foreign office, cause the US don’t control what be said in a foreign office.

    Of course, telling obvious lies affects one’s credibility generally, making it more difficult to persuade someone later on that you are telling the truth. Plus, it’s unethical. I don’t see why an attorney couldn’t (or shouldn’t) be disbarred for lying to a foreign patent office.

  20. Had it been decided by a jury, I don’t think there would have been an unanimous verdict because there are two reasonable interpretations of what was said to the EPO. That was revealed when the one judge at the appellate level dissented.

    Let me get this straight… you’re saying that even though it wasn’t a jury trial, we should infer what the jury would have decided based on the wrong standard of proof by the mere existence of a dissent at the appellate level.

    And you still haven’t addressed the point that reasonable doubt is not enough to overcome “clear and convincing”. Or that “preferable means required” is not reasonable.

    But the better solution is to give these kinds of cases to a jury in the first place.

    Is it normal for witnesses to have the right to be questioned before a jury?

  21. IANAE, the case here was decided by one judge. Had it been decided by a jury, I don’t think there would have been an unanimous verdict because there are two reasonable interpretations of what was said to the EPO. That was revealed when the one judge at the appellate level dissented.

    The best recourse now would be to hear the case en banc. But the better solution is to give these kinds of cases to a jury in the first place. It is quite acceptable for a court to have a jury decided factual issues even where an issue is equitable and their presumably is no 7th Amendment right to a jury trial.

  22. he argued on the record the opposite of what he had argued on the record of a corresponding case

    Ima gonna pull a Maxie and make a comment without knowing here:

    not quite though – the one was not “on the record” of the same office as the other, right? This goes back to the ability to lie to a foreign office, cause the US don’t control what be said in a foreign office.

  23. Ned: there are reasons why jury verdicts in criminal cases have to be unanimous.

    And even there, the reasons are tenuous and historical at best. Look at how many people believe Barack Obama is a Kenyan-born Muslim, and ballpark me the odds that twelve random people off the street will all know the difference between reasonable and unreasonable doubt.

    Here, we’re working with a lower standard of proof, so actually a reasonable doubt is not enough, particularly in a minority of the panel. If the alternative were reasonable, surely a majority of the panel could be persuaded.

    By the way, do appellate panels in criminal cases have to be unanimous too?

    Ned: But the way this case is evolving is the solution I seek.

    You think the existence of further appellate review means that panels should be unanimous?

    Lionel: How did Mr. Pope act unethically or “with intent to deceive”?

    In a jurisdiction where the file wrapper is sacred, he argued on the record the opposite of what he had argued on the record of a corresponding case. Which itself was the opposite of what the words actually said.

    Lionel: there are many aspects of inventions that I have described as preferable, which as far as the inventors were concerned were required.

    This isn’t complicated. There’s a clear difference between “I would never make/buy/sell one without a flux capacitor” and “it would not function without a flux capacitor”. The former is optional and preferred, the latter is required.

    If something is required and you thought it was merely preferred when you filed the patent application, you might not be entitled to your filing date.

  24. as far as the inventors were concerned

    ref my comment at May 19, 2010 at 05:49 PM

    me getsa be all scholarly again.

  25. When you say preferable, you are generally giving up the ability to argue required later on, but there are many aspects of inventions that I have described as preferable, which as far as the inventors were concerned were required. As anything required would be preferable, I did not see a problem with it. This case highlights a problem with that approach.

  26. You know, Malcolm, one the reasons the Supremes take cases is that the circuits disagree with each other. One of the reasons they are taking THIS case en banc is the strong dissent of one of their members.

    There is law. There is equity. There is, as well, doubt. When there is doubt, the courts recognize it and will address it.

    I am not suggesting a formal rule here. But the way this case is evolving is the solution I seek.

  27. IANAE wrote, “I can also back this up in the case of certain PTO examiners whose first language is clearly not English. Not only are they fastidious about amendments, but their broadest reasonable interpretations are often heavy on the broad and light on the reasonable.”

    Oh! Oh! OH!

    RED LETTER DAY!

    HOW did it pass without comment or recorded notice that IANAE said something mildly non-complimentary to USPTO Examiners?

    How?

    How?

    How?

  28. “IANAE, somebody once told me that early US patents were printed in German. Hard to believe. Could it possibly be true?

    That’s funny Max, someone told me that they were printed in Martian. Could that be true?

  29. Malcolm, there are reasons why jury verdicts in criminal cases have to be unanimous. I am suggesting the same reasons apply here.

    Yes, I got that part. But you will never succeed in presenting an argument for your proposal that will convince anybody who matters, much less anyone with half a brain.

  30. Malcolm, there are reasons why jury verdicts in criminal cases have to be unanimous. I am suggesting the same reasons apply here.

    The standard of proof is “clear and convincing” of an intent to deceive. The “law” is that intent to deceive requires, among other things, that the justification for the allegedly false or inconsistent statement be unreasonable. If, as it turn out, at least one judge on the court of appeals believes the statements are not false or inconsistent, then clearly the justification is reasonable. There can be no other reasonable conclusion.

  31. If a Federal Circuit judge agrees that it is reasonable, that should, in my view, settle the issue.

    Ah yes. The unanimous panel rule for finding inequitable conduct. Great idea, Ned. I can’t wait to read your amicus brief.

  32. Malcolm and IANAE, all that is required is that the alternative interpretation be reasonable, not that it be right. If a Federal Circuit judge agrees that it is reasonable, that should, in my view, settle the issue.

    Mooney, Alsup certainly did include Pope’d demeanor in his decision. I also offered my opinion that had Pope not appeared live, the case may have gone differently. Pope’s live testimony certainly had a major impact on the result in this case.

    In contrast, the Feds judged the case on the record and at least one of them came to a different view. Could this have anything to do with the fact that the Feds did not listen to Pope in person?

  33. IANAE, somebody once told me that early US patents were printed in German. Hard to believe. Could it possibly be true?

  34. Just how far beyond the pale must an argument be before it is unreasonable?

    I don’t know exactly where the line is, but I know for sure that “everyone knows that ‘preferable’ means ‘required’” is over it.

    I’m surprised other patent agents haven’t strung him up in the streets already for trying to ruin the word “preferable” forever.

  35. Ned: if a Federal Circuit Judge agrees that the argument is reasonable, isn’t this enough, by itself, to decide the issue?

    News flash for Ned: Federal Circuit cases are decided by a panel of judges for a reason. Do you know what the reason is?

  36. Ned, you may be right but, sadly, the ones who are unable to move on from their WWII mode are the little Englanders.

    And that’s the reason why English won’t fly, on “the Continent”.

    Think back to when the EU was being set up, immediately after the war. The continentals were begging the UK to participate. Had the UK gone in then, it would have made the Rules. Instead, as everybody today still remembers, it patronisingly declined to get involved.

  37. The majority view here is that the minority interpretation is unreasonable.

    Yes, more or less.

    Judge Alsup decided the issue of reasonableness based on witness demeanor.

    No, Ned, that is simply false.

    Just how far beyond the pale must an argument be before it is unreasonable?

    Farther than you will ever know, we can rest assured of that.

  38. What is true is that there are two interpretations of the EPO prosecution. I read it the same way as the dissent in this case. The majority view here is that the minority interpretation is unreasonable.

    Judge Alsup decided the issue of reasonableness based on witness demeanor. If the Feds on en banc rule decide this case on the same basis, that the lower court’s ruling is not clearly erroneous, I could accept that. But this discussion does raise an interesting issue.

    Just how far beyond the pale must an argument be before it is unreasonable? Now, if a Federal Circuit Judge agrees that the argument is reasonable, isn’t this enough, by itself, to decide the issue?

  39. but for one inconvenient fact: English is the language of the Brits.

    Don’t let them find out it’s also the language of the Americans, or you’ll be lucky if the EU lets you continue to speak it.

    Say, you guys got any examiners who speak Lojban?

  40. Ned You see only trees. You cannot see forests.

    What color are the forests on your planet, Ned?

  41. Ned, English would have been adopted long ago as the single language of the European Union, but for one inconvenient fact: English is the language of the Brits.

  42. Suddenly, the meaning of a simple phrase can change 100%.

    No amount of context can make “optional” and “preferable” mean “required”. Particularly the context of Mr. Pope’s profession where one desperately avoids any implication that anything is required.

    Avoids it like the plague, if you’re in the mood for irony.

  43. IANAE, this case is a prime example of how any expression can be distorted if taken out of context. Suddenly, the meaning of a simple phrase can change 100%.

    You guys who only see one side of this case are truly remarkable. You see only trees. You cannot see forests.

  44. Max, more of you Brits need to learn German and become EPO examiners. (You also need to delete French as a required language for obvious reasons.) Perhaps you need a branch office in Great Britain.

  45. So it really comes down to what one of ordinary skill in the art at the time would understand ’382 to mean.

    Specifically, it comes down to whether one of ordinary skill in the art would understand it to mean the exact opposite of what it said.

    I’d have been very disappointed if they managed to slip that one past the trial judge.

  46. Mooney, true, the “protective” membrane was not necessary for the purposes of controlling permeability with respect to certain chemicals.

    But, THIS says nothing whatsoever about whether a membrane might have been necessary for a completely difference reason when the sensor was used with blood.

    That is an entirely separate issue.

    So it really comes down to what one of ordinary skill in the art at the time would understand ’382 to mean. The affidavit filed was actually consistent with a ’86 PCT that similarly taught that protective membranes were always used with blood.

  47. This explains the uniquely fastidious attitude which EPO Examiners have, towards prosecution amendments, and whether these amendments are smuggling “new matter” into the pending application. They find it difficult to judge. So would you, if you were examining an app in a language not your own.

    I can also back this up in the case of certain PTO examiners whose first language is clearly not English. Not only are they fastidious about amendments, but their broadest reasonable interpretations are often heavy on the broad and light on the reasonable.

  48. I’ll try again, for Stuffer’s benefit.

    In all the Patent Offices of the world, except the EPO, the language of the Examiner is the language in which the app is written, is the language of the prosecuting attorney.

    Only in the EPO is the language of the app (English) NOT that of the Examiner (unless of course that Exr happens to be within the 9% of EPO employees with English as mother tongue).

    This explains the uniquely fastidious attitude which EPO Examiners have, towards prosecution amendments, and whether these amendments are smuggling “new matter” into the pending application. They find it difficult to judge. So would you, if you were examining an app in a language not your own.

    Does anybody (Stuffer?) still not get it? Mooney, can you sign up to that?

  49. Ned Malcolm, you do it know, do you not, that the whole point of the argument in Europe was to explain that the ’382 membrane was a “protective” and therefore unnecessary membrane while the prior art membrane existed and was necessary to control permeability with respect to certain chemical compounds?

    Fixed the missing facts that you “accidentally” left out, Ned. We’ve had this discussion before. Don’t waste my time.

  50. IANAE, good question that. But the argument in the EPO was that the ’382 membrane was there for “protective” purposes when its sensor was used with blood, but optional otherwise. That was the argument. That argument was clear.

    Somehow, this very clear argument has been perverted into something quite different. It is the “perverted” argument that appears to be unreasonable.

  51. the ’382 membrane was a “protective” membrane while the prior art membrane existed and was necessary to control permeability with respect to certain chemical compounds?

    How does a protective membrane protect, if not by providing a controlled permeability?

  52. IANAE On a more serious note, both his state bar and the OED are likely to give him some degree of due process before they tell him he can’t pursue his chosen profession.

    Bets on the outcome? I’ll eat American Cowboy’s entire cellar full of puffy cheetohs if any action more than a wrist slap is taken.

  53. Malcolm, you do it know, do you not, that the whole point of the argument in Europe was to explain that the ’382 membrane was a “protective” membrane while the prior art membrane existed and was necessary to control permeability with respect to certain chemical compounds?

  54. Ned: I believe this is a reasonable interpretation of the European prosecution history. I believe the dissent in the Federal Circuit decision thought the explanation reasonable as well.

    Wow, that makes two of you. And guess what: the facts show quite plainly that your “interpretation” is not “a reasonable interpretation” but nice of you to try and describe it as if it were. Neither you or the dissent was in the courtroom and we already know from previous discussions of this case that your reading comprehension skills are lacking.

    Perhaps Abbott made a mistake in presenting Pope as a live witness.

    Not sure it would have mattered, but I bet there is a juicy backstory behind their decision to do so. And having been involved in my share of patent litigation, I’m guessing that the final decision was made at the last possible moment. That’s how the game is usually played: fast and loose.

    Of course, even in a proceeding solely designed to give this guy a “second chance” to explain his behavior, the odds of obtaining the evidence showing Abbott’s actual strategic decisions during prosecution and/or litigation are zero. I don’t think that evidence — assuming it still exists — is likely to be produced or made public even in a lawsuit brought by the attorney against Abbott.

  55. And, Inane, when one cannot pursue his chosen profession?

    I always wanted to be an astronaut. I don’t recall getting any due process.

    On a more serious note, both his state bar and the OED are likely to give him some degree of due process before they tell him he can’t pursue his chosen profession. If they don’t, as has been implied upthread, that’s where he should direct his complaint.

  56. Pope is being defamed, his livelihood ruined, his liberty impaired — all without due process.

    His liberty impaired? Really?

    I don’t think saying bad things about people is subject to due process. Pretty sure due process only applies when you’re deprived of life, liberty or property.

  57. Perhaps Abbott made a mistake in presenting Pope as a live witness.

    And to think, Pope wanted to be a party. Imagine how unfair that would have been to Abbott, whose rights (unlike Pope’s) were actually at stake.

  58. Malcolm, I know you have no sympathy for Pope, but this is the case where I think he needs help. Why don’t you give your beloved ACLU a call and ask them to look into this case. Pope is being defamed, his livelihood ruined, his liberty impaired — all without due process. This is right up the ACLU’s alley.

  59. Winston, I do not agree with your summary. The EPO argument was directed to the distinction between a prior art membrane that controlled permeability and the ’382 “protective” membrane that was used with blood for two purposes:

    1) to prevent sensor particles from getting in to a patient’s bloodstream; and, more importantly,

    2) to prevent large blood constituents from clogging the sensor.

    The central question to the trial court and on appeal was whether the ’382 disclosed that a membrane was optional for use in blood. The way I read the European prosecution history is that the ’382 patent disclosed that a protective membrane was required for use in blood, not as a permeability control but for the two purposes cited above.

    I believe this is a reasonable interpretation of the European prosecution history. I believe the dissent in the Federal Circuit decision thought the explanation reasonable as well.

    Perhaps the demeanor of attorney Pope during trial convinced the judge that Pope was lying. The court made a significant point on Pope’s demeanor. Perhaps Abbott made a mistake in presenting Pope as a live witness. It appears they should have presented his testimony only through deposition as they had originally planned.

    I have personally testified many times in depositions where counsel can help you in understanding a question from opposing counsel. Testimony in court is quite a different matter. Here, and I can assure you on this, it is not all that easy to understand exactly what the opposing counsel is asking so that you may answer the question in a way that is both honest, but also does not volunteer unnecessary information.

    After all is said and done, I still think that attorney Pope had and still has a good argument. We shall see how the en banc court handles this case from a factual point of view.

  60. Socker: he may have been simply unaware of the argument presented during prosecution of the former patent.

    I’m quite certain that knowledge of the EP prosecution was admitted (and then some) although even if such knowledge hadn’t been admitted it would be a laughably preposterous defense to argue that one’s head was so deep in the sand that one didn’t know squat about the prosecution history of one’s own patent after it was as cited as prior art. I would expect that such an admission of incompetence would harm an attorney’s “reputation” in the patent community at least as much as an IC finding, if not more.

  61. “The hardest part of being an attorney is telling your client that he can’t win. If Mr. Pope can’t do that, and instead engages in this sort of conduct, then he shouldn’t be an attorney.”

    I certainly agree with this statement, but I’m not entirely sure that Pope intentionally deceived the PTO, he may have been simply unaware of the argument presented during prosecution of the former patent. However, the affiant’s conduct if attributed to Abbott/Medisense’s, which it apparently was in this case, certainly rises to the level of inequitable conduct.

  62. “A hazard of prosecuting at the EPO is that you are addressing folk who are having to work with English as a foreign language. They lack the confidence, effortlessly to decide … ”

    This is not autobiographical I hope.

    “I guess that if I were required to function as an Examiner at the Japanese or German or French or Spanish Patent Office, attorneys using those respective languages as their mother tongue would find my objections from time to time passing obnoxious.”

    I not sure what Japan has to do with a discussion about the EPO and the EPC. Are you implying that the Japanese examiners have similar concerns? I thought it was a requirement to have a Japanese representative prosecute the application if you don’t reside in Japan. Moreover, the Japanese representatives are presumably native Japanese speakers and that Japanese applications are filed with the JPO in Japanese. Consequently, I am not sure what Japan has to with a discussion on the EPO.

  63. “or through a motion of certiorari which is a separate and presumably very expensive proceeding”

    Or perhaps a mandamus.

  64. “Since he is not a party and is not bound by the Federal Circuit’s decision, he ought to consider a defamation suit against the defendant. He should sue in Illinois state courts. I believe he would prevail.”

    Perhaps we should stick to patent law. In my humble recollection court discourse is immune from defamation claims.

  65. So three trials for one action now? And you have to win all three to be cleared? I thought we had rules about that sort of thing.

    Those rules don’t mean what you think they mean.

    Also, one of those three trials isn’t one he could have won (or lost), because he wasn’t a party. I’m pretty sure double jeopardy doesn’t limit the number of trials in which your name can be mentioned.

  66. Lurking less:

    So three trials for one action now? And you have to win all three to be cleared? I thought we had rules about that sort of thing.

    Now, when the second and third trials are going to be DECIDED based on the findings of fact FROM THE FIRST TRIAL, you don’t see a problem with not being able to participate in the first trial?

    Man, I’m glad I don’t live in this kind of farcical justice system. Hey, wait a minute….

  67. Malcolm, chem/bio not my field. Thankfully. But now you mention Planet A, I appreciate what you are getting at. A hazard of prosecuting at the EPO is that you are addressing folk who are having to work with English as a foreign language. They lack the confidence, effortlessly to decide what text changes add matter, and which don’t. They reason that the amendment either adds matter, or it doesn’t. If it doesn’t then what’s the point of amending. The more Applicant insists on his amendment, the more suspicious of it Examiner becomes. They wonder, who in their right mind insists on a dodgy amentment, thereby writing into the file wrapper an open invitation to attackers of validity, after issue, to have a pop at the patent under Art 123(2) EPC? I guess that if I were required to function as an Examiner at the Japanese or German or French or Spanish Patent Office, attorneys using those respective languages as their mother tongue would find my objections from time to time passing obnoxious.

    And so, indeed, you did touch a nerve. I don’t know what the tinfoil hatters are, but I suspect I don’t want to be one of them, quite right.

  68. Winston In brief, Abbott (then Medisense) obtained the ’382 patent’s European counterpart by arguing that “optionally, but preferably” was distinct from “required” in the prior art. To obtain the ’551 patent over the ’382 patent, Pope argued that no one of ordinary skill in the art would read “optionally, but preferably” in the ’382 patent to mean anything but “required” and supported that with an affidavit from an affiant who had made the opposite argument before the EPO. The same patent had been rejected 12 times already under attorneys who were not willing to compromise their ethics to obtain a patent for their clients.

    And failed to disclose to the PTO the arguments before the EPO which, on their face, contradicted the position taken before the PTO. And tried to float some bogus distinctions between live blood and whole blood.

    But somebody’s feelings got hurt, apparently, which is the worst thing ever so we should all just look the other way. And besides, “we” all do this routinely, right, EG? Right, Ned?

  69. The hardest part of being an attorney is telling your client that he can’t win.

    Indeed. But “not winning” is often a matter of “not trying hard enough” which is often a matter of simply “bending the rules a little bit.”

    This happens every day in our courts and at the USPTO. Repeatedly. And it’s the rare case when someone gets busted.

    But listen to some of the commenters here and you’d think that someone getting caught was the a sign of the end of their world. Of course it’s not. Fantasy worlds never die and America will always be number one!

  70. Pope was not involved in any proceedings regarding either the ’382 patent or its EPO counterpart.

    The ’382 patent was not the patent in suit — the ’551 patent was. Pope misrepresented the ’382 patent in order to obtain the ’551 patent.

    Pope’s conduct was pretty egregious. It is described in detail in the district court opinion:
    /media/docs/2010/05/districtcourtdecision.pdf

    Generally, if you find yourself making clearly false arguments and having your affiants swear to facts they know to be false in order to obtain a patent, you are in the domain of inequitable conduct.

    In brief, Abbott (then Medisense) obtained the ’382 patent’s European counterpart by arguing that “optionally, but preferably” was distinct from “required” in the prior art. To obtain the ’551 patent over the ’382 patent, Pope argued that no one of ordinary skill in the art would read “optionally, but preferably” in the ’382 patent to mean anything but “required” and supported that with an affidavit from an affiant who had made the opposite argument before the EPO. The same patent had been rejected 12 times already under attorneys who were not willing to compromise their ethics to obtain a patent for their clients.

    The hardest part of being an attorney is telling your client that he can’t win. If Mr. Pope can’t do that, and instead engages in this sort of conduct, then he shouldn’t be an attorney.

  71. Max, it appears I’ve touched a nerve.

    I have all the respect in the world for EP examination, but sometimes the written description rejections take a dive into the deepest canyons of Planet Anality.

    I thought this was common knowledge. Maybe only in the chem/bio universe. In any event, hardly a reason for you to join the tinfoil hatters, IMHO.

  72. And the reason for that is VJ, I don’t think was in Patent Law. And DT is not a Lawyer

  73. LOL But if you deduct the Law firm that’s here most…. And then consider one you may all know or have at least heard of, and may be retired try “VJ”

  74. He is Black or Soul is his genre.

    You might be seeing a black soul. Attorneys often give false positives for that.

  75. Based upon my reading of many decisions pertaining to state bar disciplinary proceedings (mostly, but not exclusively, California), I have found that in most such proceedings almost slavish deferrence is paid to the court findings of “fact”.

    Whether that’s appropriate depends on the nature of the fact.

    If the fact at issue is whether Mr. Pope acted in a way that brings his profession into disrepute, or in a way that posed an undue risk to his client, or in an inappropriate way based on common practice in his profession, he should absolutely be heard on the question.

    On the other hand, if the fact at issue is whether Mr. Pope carried out his professional duties in a way that cost his client a patent and a big ol’ pile of cash, it’s not really something that can be re-decided. But then, the patent was Abbott’s to defend, not Pope’s, and their interests would have aligned pretty closely on this narrow point.

  76. I have narrowed it down to…. MM is about my age. He is Black or Soul is his genre. But I do believe he is Black… I don’t think this will help though.

  77. It looks like Pope is being screwed.

    The inventor filed a reply in the EPO that characterized the ’382 patent in a particular way. The USPTO viewed the ’382 patent in a different way and the inventor failed to also file his EPO reply in the USPTO. Had the inventor filed his EPO response in the USPTO, that likely would have hipped the USPTO examiner that he may have made a mistake or found the inventor estopped from denying his EPO filed view.

    Pope was not involved in any proceedings regarding either the ’382 patent or its EPO counterpart.

    From the above, the parties went to town on attorney Pope in his absence, seamingly accusing him of everything short of child molestation.

    The court drew conclusions about attorney Pope in his absence.

    Attorney Pope and his licensing agencies then received the “Courts have found Mr. Pope to be an a**hole” notice.

    The licensing agencies then went after attorney Pope, relying on the court findings.

    Man, this sounds like China.

  78. Sorry Malcolm,

    I tried to diffuse the “then you are not a lawyer” line by pre-empting it, but I was not successful.

  79. MM, “So when it’s revealed in litigation that the inventors thought the element was required until years after the case was filed, that doesn’t change anything? Keep dreaming, child.”

    Proving once again that you’re either not a lawyer, do not read case law, or are incapable of understanding the same.

    Good luck in your “practice”.

  80. MaxDrei: good to know you are already laughing today. I’m happy for you.

    We both be happy and laughing – kumbiyaa.

  81. First laugh of the blogging day. Thanks ping. Good to know you are reading and have at the moment nothing more substantive to offer.

  82. Malcolm you ask me a question. I did reply earlier but I do not yet see my answer on this thread. So, here goes again.

    The answer is NO. (You just don’t get it, do you?)

    You go on to characterize a communication from the EPO as “obnoxious”. Beauty is in the eye of the beholder. So too whether something is obnoxious. I find that those quickest to rubbish a communication from the EPO are the slowest to cotton on to what’s really going on. Are you getting any worthwhile help from your EPO counsel? How does your European counsel characterize the communication?

    Or perhaps you are not instructing EPO counsel in this matter at all but, rather, just reading the EPO file on Register Plus. Some think you sit at a desk in the USPTO. I’m beginning to suspect it myself.

    If you can find such an “obnoxious” rejection in an EPO file that doesn’t reveal your identity, share the EPO app or publn number with us so we can all read it on Register Plus. If you are on the receiving end of obnoxious rejections from the EPO, then others must be getting them too. It can’t only be you, can it?

  83. Perhaps someone better understands the process by which one defends oneself before state bar associations and the USPTO.

    Based upon my reading of many decisions pertaining to state bar disciplinary proceedings (mostly, but not exclusively, California), I have found that in most such proceedings almost slavish deferrence is paid to the court findings of “fact”.

    Whether or not Mr. Pope engaged in inappropriate conduct is to me besides the point. Mine is simply I do not believe that the equivalent of a trial de novo will be afforded to him, and this is precisely the problem he faces.

    While the decision by the CAFC may be correct based upon precedent, I am left with the conviction that in this case his interests and those of Abbott are separated by a wide gap, and that allowing him to intervene would have been the most fair and just outcome if we are committed to following both the letter and spirit of the law. His is an unusual case, and to treat it otherwise strikes me as an unsound approach.

  84. “In any case, I guess the vast majority of patent attorneys who aren’t employed at a “major firm” can stop wondering now: they sxck.”

    Now we know why you don’t post under your real name.

    Alun Palmer

  85. Mooney, is there any difference between “all but required” and “optional” in your lexicon?

  86. OK, Mr. “there are laws about that” ping. Enlighten us. What laws would entitle a patent attorney to sue to clear his name and perhaps recover damages for a false charge of deliberate intent to deceive the PTO.

    In the case involving Kayton, he was never even informed of the charge when he first read his name in reported decision. He was never given a chance to say anything, even by counsel representing his client.

    Citing him by name in the opinion was clearly malicious by the court(s), and there should be a rule on that alone.

  87. ping I recall a case (but Ima too lazy to get the name), where this was the exact holding. The inventors testimony during litigation as to what the inventor thought was the invention was held to be meaningless.

    I can imagine a fact pattern where that might be true. Not what I was referring to. What I was envisioning is the situation where the invention lacking limitation X was, in fact, inoperable until years after the application was filed.

    Max: If my “invention” is ABCD, then E can be preferred. If ABCD is untenable, and I convert my “invention” to ABCDE, then E is no longer “preferred”. Seems pretty straightforward to me.

    Yes, it is straightforward, Max, and proves my point: “preferred” does not mean “required” and nobody believes otherwise. By the way, if the patentability of the claim hinges on a limitation being “necessary”, will the EP conform a specification to recite “necessary” if the term is absent from the specification? That would surprise me, given the obnoxious rejection I just got from the EPO.

  88. Malcolm, recall the McCarthy era? Why is that so infamous? Some would incorrectly say that the primary problem was mistreating actual communists. But the real problem was publicly accusing someone of something that the accuser knew would severely damage the person accused regardless of the truth of the accusation, and largely without what anyone would consider to be due process.

  89. Malcolm I don’t want any misunderstanding between us, so I’m delighted by your upset reaction.

    Best line from Maxie in a long time.

    Should I understand that to mean that Maxie wants Malcolm to understand that Maxie is delighted that Malcolm is upset?

    Malcolm,

    Really? So when it’s revealed in litigation that the inventors thought the element was required until years after the case was filed, that doesn’t change anything? Keep dreaming, child.

    The dream may be your nightmare. Unfortunately, I recall a case (but Ima too lazy to get the name), where this was the exact holding. The inventors testimony during litigation as to what the inventor thought was the invention was held to be meaningless. What mattered was what was filed – plain and simple. I could be trite and exclaim “well that proves that Malcolm isn’t a real lawyer“, but that would be like lampooning Ned for his mis-citing case law and self-evident spurious parsing of legislative law.

    Oh wait, I do that, don’t I?

  90. Well I guess this happens all the time in criminal law where grounds for a new trial might be the incompetence or whatever of the prior attorney. Imagine one files a sworn affidavit that the prior attorney was a known drunk, had lied to get into law school, had not actually passed a bar exam, or was practicing patent law exclusively for 20 years.

    Now what if these statements are false? What recourse does the defamed attorney have to prove they are false and recover damages. There must be some case law on this.

  91. Mr. Pope may not be able to defend himself in the federal court, but he is certainly afforded a chance to defend himself both in proceedings before the OED and in proceedings before his state supreme court. They can very well come to different conclusions based on evidence Mr. Pope can present before those two bodies, though he may not have been allowed to present that evidence to the federal court.

  92. UR: IMO the one example does not suffice, since in what you quote the word “required” is in re a description of the adjunct nucleic expression construct.

    Adjunct? Is that a legal term? The construct is sub-part of the invention, and it has sub-parts, one of which is required. So nice try, but you fail.

    Clearly, if properly drafted, the priority date is the original priority date.

    Really? So when it’s revealed in litigation that the inventors thought the element was required until years after the case was filed, that doesn’t change anything? Keep dreaming, child.

  93. “And what would the priority date be for that claim, numnuts?”

    My nuts thank you for your continued interest in their well-being but petition you to leave off this unseemly libel. Nuts have feelings too, you know.

    Clearly, if properly drafted, the priority date is the original priority date.

    However, if you’ve littered your spec with specious allegations of what is “required” for the invention, then you’d have to file anew (CIP or new app not claiming priority, take your pick) hoping that the new claims (sans old “required” element and with any new elements of focus) were patentable over the art including your prior pooch-skewing disclosure.

  94. IMO the one example does not suffice, since in what you quote the word “required” is in re a description of the adjunct nucleic expression construct.

    That said, if someone previously argued that “no one” uses the word “required” in the description of the invention, I agree with you that this is not so.

    Clearly one can find examples where the invention is described in terms of what the invention requires. I come across them fairly regularly while doing freedom to operate reviews, and it always starts me to “whistling while I work” when I do because it makes the job easier.

  95. What if he satisfied the jury on the applicable standard of proof that this was in fact the case? Whom should you be suing for that and why?

    No one. Why do you think you have a cause of action premised on what anyone says as part of a court proceeding?

  96. However, it is entirely possible due to a later focus shift (as during prosecution of the original or a continuing application) that a given element the inventors at one time thought was “required” can be removed from the independent claim and still have a patentable and workable invention.

    And what would the priority date be for that claim, numnuts?

  97. “Too bad he apparently has no way of knowing anything about the invention.”

    He knows lots about the invention. But he does not know in its entirety what is “required” to be a part of the invention. So called “required” elements once identified as such are almost always forced to be present in the independent claims in the EPO and often so also in the USPTO (or later, via litigation, read into the claims even if not present verb sap).

    However, it is entirely possible due to a later focus shift (as during prosecution of the original or a continuing application) that a given element the inventors at one time thought was “required” can be removed from the independent claim and still have a patentable and workable invention.

    Now, if one has littered the inventors’ spec with statements about what is “required” and not, then one has quite literally skewed the pooch.

    Anyone who’s drafting even his first application should understand this.

  98. “But the patent attorney is not on trial.”

    IANAE, I sincerely hope you’re the next who’s “not on trial.” Let’s have this conversation then, shall we?

  99. Ned: Malcolm, on “preferably,” it really means “all but required” because no patent attorney will say “required” for the reasons previously stated.

    When I search published patent applications for “required”, I get 96,000 hits. And, yes, when I looked closely, it’s not just in the background section or in the context of a phrase such as “not required”. One example will suffice: “The expression construct is conveniently a nucleic acid construct that comprises a polynucleotide encoding a polypeptide of the present invention operably linked with appropriate regulatory sequences required for expression of the nucleotide sequence in the plant or plant part of choice.”

    Please try harder next time, Ned. Took me only 30 seconds to debunk your comment as pure horsecrxp.

  100. Malcolm I don’t want any misunderstanding between us, so I’m delighted by your upset reaction.

    When, in prosecution at the EPO, you amend a claim (your definition of your invention) that recites ABCD into a claim that recites ABCDE, any statement in your specification (your description of your invention) that E is “preferred”, which was consistent with te definition of your “invention” given in your originally-filed claim 1 evidently now contradicts the definition of your “invention” set forth in your amended claim. As you may or may not know, you don’t get to issue in the EPO until you have “conformed” your “description” of your “invention” to your amended “definition” of your “invention”. Such conforming requires removal of the word “preferably”.

    If my “invention” is ABCD, then E can be preferred. If ABCD is untenable, and I convert my “invention” to ABCDE, then E is no longer “preferred”. Seems pretty straightforward to me. Do we understand each other yet? If not, then you are right, I am confused.

  101. no patent attorney will say “required”

    A patent attorney who scrupulously avoids saying that any feature is required should not be permitted to later rely on any language he has used to show that any particular feature is required.

    I’m almost tempted to wonder whether saying that every required feature is optional runs afoul of 112 in some way.

    but the patent attorney is not free to defend himself at trial.

    But the patent attorney is not on trial.

    What if, in a criminal trial, the accused raises a defense that you were really the one who did it? What if he satisfied the jury on the applicable standard of proof that this was in fact the case? Whom should you be suing for that and why?

  102. IANAE, but the patent attorney is not free to defend himself at trial. He cannot explain anything except if asked specific questions. He depends entirely on the skill of his client’s counsel.

    We really need to think this thing through a bit more. I do not know of a solution.

  103. Malcolm, on “preferably,” it really means “all but required” because no patent attorney will say “required” for the reasons previously stated. I would assume that if a feature was not required at all, the drafter would instead say “optionally.”

    So I think Pope was well with bounds to say that those skilled in the art at the time thought a membrane was required for blood, but optional for other types of bodily fluids that were not subject to the same clogging issues found with blood if that were in fact the case, because the references using the term “preferably with live blood” did not clearly state otherwise.

  104. How can Pope or any other patent attorney accused falsely, in his view, of fraud or other willful misconduct clear his name and/or obtain damages?

    More important than “how” is “why”.

    Why can’t a patent attorney sue for damages or clear his name every time one of his patents is alleged to be invalid? It’s pretty easy to get the patent on the internet and see who the agent of record is. Why am I the only person with the courage to speak out against this plague of pleading invalidity in nearly 100% of all patent infringement cases?

    Besides which, why should you be able to sue for anything at all when the patent is actually held unenforceable due to your own inequitable conduct over your own testimony at trial?

  105. Winston Smith, thanks for reminding me about the “privilege” to defame in a court proceeding.

    So, what are we left with? How can Pope or any other patent attorney accused falsely, in his view, of fraud or other willful misconduct clear his name and/or obtain damages?

    I recall a parent bar association meeting where the speaker was a district court judge. He condemned the common practice of alleging IC, not only because it is too easily alleged, but because of the real damage it did to those patent attorneys accused. He argued forcefully that IC be treated as any other fraud allegation. In order to bring the charge at all, the pleadings had to be highly specific and they also required a high burden of proof.

  106. The wankers are out in full force today.

    dorkus: the drafter can not know what is required when drafting and it would be malpractice to so limit their clients’ inventions unnecessarily.

    And so you use the word “preferably” because it has a *different( meaning than “required” and because you want to be sure that you aren’t admitting that an element is required. That’s exactly what I was saying.

    And yet you wanted to pretend that you are disagreeing with me. How cute! Do you prosecute your applications that way?

  107. In my little dream world it takes space, time, and energy to transform information.

    What has that got to do with anything?

  108. >>is novelty the only criterion for obtaining a >>patent?

    In my little dream world it takes space, time, and energy to transform information. (And MM is in human form–not in genus Papio form.)

  109. the drafter can not know what is required when drafting

    Speaking of malpractice, the drafter should really consider having a basic understanding of the invention before he puts metaphorical pen to equally-metaphorical paper.

    Too bad he apparently has no way of knowing anything about the invention.

  110. MM, “Of course, what these commenters actually mean is that they use the word “preferably” because they don’t want to *admit* that a feature is required or necessary. ”

    No, it’s because the drafter can not know what is required when drafting and it would be malpractice to so limit their clients’ inventions unnecessarily.

  111. >>my client isn’t patenting financial >>innovations or business methods.

    In my little dream world, I see clients invent new financial markets that the Fed. Cir. is saying isn’t an invention. Those markets weren’t there before the invention.

  112. once and future: I do believe that, as a profession, we should care about what happens to practitioners alleged to have committed inequitable conduct because the consequences are dire.

    Yes, so let’s rally around Mr. Pope. That will show everyone how “professional” patent prosecutors are. Is that the idea? If so, it strikes me as a really bad one. Count me out. The irony is that I can recall posting here and describing the shifty conduct of many patent attorneys and being greeted with shock. “Nobody does that! Why do you hxte prosecutors? Blah blah whine blah ”

    Now we have commenters bragging about they (and everyone they know!) use the word “preferably” to mean “required”, without expressly defining it as such. Of course, what these commenters actually mean is that they use the word “preferably” because they don’t want to *admit* that a feature is required or necessary. And these commenters are plainly not swift enough to recognize that this is the *opposite* of what was asserted at trial.

    IANAE clearly gets it. Poor Max appeared to be confused but may have been set straight by IANAE. Just in case, I’ll address Max’s comment directly.

    I guess it happens about a hundred times a week, in the EPO, that a claim, amended in prosecution to include feature “X”, is supported by a specification which teaches that feature X is a “preferred” feature.

    This is irrelevant, Max.

    Slightly less often, an EPO Examiner will object in the FAOM that, although feature X is stated to be “preferred”, it does in fact appear to be “necessary”

    And you’re trying to argue that the *meaning* of the term “preferred” is changed by this finding? That’s ridiculous, Max. Preferred means preferred. It doesn’t mean necessary. What was it that the applicant in this case said to the EP Examiner when the issue of necessity was raised? “The passage is unambiguous.” Then in the US suddenly “preferred” means “necessary”? And it’s “mere patent phraseology”? Say what?

    When you use a word like “preferably” or “optionally” in a patent application to keep your options open (a perfectly acceptable practice), you can not later point to your own disclosure when it’s cited against you and say that “Every prosecutor knows that ‘preferably’ means ‘required’”. It’s disgusting. And if you don’t think it’s disgusting, then you deserve an IC wake up call because you just made all patent prosecutors look like dishonest hacks.

  113. Mr Morgan you haven’t yet spoilt my dream. My US client watches the outflow of US-A and WO publications of competitors, and drafts with the benefit of that knowledge. Seldom does the EPO or the USPTO come up with art closer than we already knew about when we drafted.

    If you were the sole owner of a corporation, paying patent attorneys all over the world, and investing every day in innovation, wouldn’t you have somebody diligently watch those US-A and WO issuances. Wouldn’t you draft around them, and get clean PTO file wrappers, low legal costs, and respectful competitors?

    But then again, in my little dreamworld, my client isn’t patenting financial innovations or business methods.

  114. I really don’t know much about this, but if his conduct is the center of the case, then he should be allowed to defend himself. Period. It’s blatantly unjust to have a trial on someone’s life and future and not allow them to participate.

    We can only hope that Mooney and IANAE get a few IC charges against them. Maybe then we can be rid of their ridiculous rants and talk more sense around here.

  115. Re: “I see a return to the days when good drafting (define the invention clearly, and set it in the context of the closest art)”

    Not a likely dream. Not without knowing in advance what the closest art actually is. Which is normally impossible, with the amount of prior art to search more than doubling every ten years, many if not most patent applications being filed w/o any prior art search, a USPTO prior art search which even the PTO values at only $500., all as compared to more than 100 times that amount that will be spent by any other party seriously challenging the valid scope of the claims.

  116. Ned Heller: My quick reading of Illinois law is that this case should be easy to prove by Pope. It is defamation per se.

    IANAE: So what’s his case for defamation, exactly? Did anyone falsely state that his actions cost Abbott a patent?

    Statements made in a judicial proceeding are privileged and cannot be used as the basis for a slander, libel, or defamation suit.

  117. I agree with IANAE. I see a trend towards holding drafters to higher standards of definition, from the outset. I see courts reacting with distaste to the drafting style imposed on drafters by litigators, never to commit to what the invention is. I see a return to the days when good drafting (define the invention clearly, and set it in the context of the closest art) brings advantage to the client.

    But, sigh, despite the encouraging straws in the wind of this and other threads, I dare say I’m just so old and by now addle-brained, that I’m just wishful thinking.

  118. Ned: Look at what they are trying to do with Pope. They are trying to disbar him.

    Gosh. I hope they let him be a party to that hearing.

    MM: I don’t know any attorneys who use the term “preferable” as a proxy for the term “required” or “necessary.”

    I’m particularly interested in how many use phrasing like “preferably 1-100, more preferably 25-50, even more preferably 35-45, and most preferably 40″ to mean “necessarily 1-100, more necessarily 25-50, even more necessarily 35-45, and most necessarily 40″. Especially without any further support for the narrower ranges. Please raise your hands, so somebody can go and smack you.

    Pretty much every US agent has been using “preferably” for years specifically to avoid using a word that means “necessary”, and now it turns out that it is one. Isn’t semantic shift a glorious thing?

    Max: this “preferable” and “necessary” thing interests me.

    The reason EPO examiners think “preferably” sometimes means “necessary” is that sometimes it does. As a profession, we’re apparently so terrified of actually describing the invention that we put “preferably” after every noun in the spec, whether we know perfectly well the feature is necessary or we know perfectly well the feature is optional. Later, we pick and choose which ones are essential and which ones are optional depending on what we need in claim 1 and what the infringer is doing. It’s not used to mean “necessary”, it’s used to mean “I just used another noun”.

  119. I view all of “preferable” “required” and “necessary” to be patent profanity and avoid them in nearly all circumstances.

    The closest I come to any of these words is with the base “desire-” that sneaks into my application when describing some collateral effect or circumstance surrounding the invention, typically as a conditional phrase. E.g., “if it is desirable to prepare compound X in a non-aqueous solution, then…” or “if further integration is desired, semiconductor package X may be fabricated …”

  120. So I guess what you are saying, Malcolm, is that since this guy is obviously guilty he deserves no forum for challenging his guilt.

    If that’s your position, I hope I Love MM was right and you’re not an attorney.

  121. Ned. In any case, a great opportunity for you to step in and take his place, as I’m sure you realize.

    Sorry Malcolm, there is not a high demand for expert witnesses who mis-cite case law and selectively render legislative law. Ned can’t win a debate on a blog without his shenagans being exposed, do you really think he would last long in a real court?

  122. In one deposition I had involving some patents and opinions I wrote, I was not sure my former employer would adequately represent my interests. So, as some have suggested above, I hired my own attorney to defend the deposition. But had we gone to court I would not have had that option.

    And with patents I have written I have been deposed and faced allegations of inequitable conduct- the allegations would have actually been funny if they hadn’t had such serious consequences and, who knows, potential to succeed (cases settled, so I don’t know what would have happened at trial).

    It’s a knee-jerk reaction to allege inequitable conduct. That coupled with the fact that prosecution is generally less well-compensated than litigation, you have to wonder why people stay in prosecution.

    I do believe that, as a profession, we should care about what happens to practitioners alleged to have committed inequitable conduct because the consequences are dire.

  123. “So the court can cheerfully blacken the name and reputation of an attorney, and then deny him the means of redress other than through the appeal process at which his interests may or may not be adequately represented, or through a motion of certiorari which is a separate and presumably very expensive proceeding.”

    Paul,

    Yet another reason why this “plague” needs to be banished from American jurisprudence.

  124. “Ned, when you use the term “preferable” in your patent applications, does it really mean “necessary”? I’m just trying to gauge how “common” this practice is. I don’t know any attorneys who use the term “preferable” as a proxy for the term “required” or “necessary.” Maybe Dennis should do a poll to see how common the practice is.”

    Ah, yet another way we know that you’re an examiner and not an attorney… I don’t know any patent attorneys who DON’T do this.

  125. Malcolm, this “preferable” and “necessary” thing interests me. I guess it happens about a hundred times a week, in the EPO, that a claim, amended in prosecution to include feature “X”, is supported by a specification which teaches that feature X is a “preferred” feature. Slightly less often, an EPO Examiner will object in the FAOM that, although feature X is stated to be “preferred”, it does in fact appear to be “necessary” to deliver the contribution to the art which Applicant is advancing as his patentable subject matter (and so should be in claim 1).

    So, I think having “preferably” when the fact is that it is “necessary” is everywhere you care to look.

  126. Ned you are very unsympathetic to Pope’s predicament; believing, as you apparently do, Judge Alsup

    I believe that the transcriptions of the patent specs, claims, file history, and witness statements are accurate (to the extent I’ve seen the original docs online, they appear to be accurate). And I believe that Judge Alsup isn’t lying about his own impressions of the witnesses. That’s pretty much all I need to believe, isn’t it? What part do you not believe?

  127. Ned Look at what they are trying to do with Pope. They are trying to disbar him.

    Really? Do you have access to some internal memos from the USPTO? I see that some “inquiries” have been made, but that is only logical under the circumstances.

    Ned, when you use the term “preferable” in your patent applications, does it really mean “necessary”? I’m just trying to gauge how “common” this practice is. I don’t know any attorneys who use the term “preferable” as a proxy for the term “required” or “necessary.” Maybe Dennis should do a poll to see how common the practice is.

    Do you really expect a major firm to have Pope on their attorney list given what happened here. He is all but finished in the law business.

    I suspect you know next to nothing about “major firms,” Ned. In any case, I guess the vast majority of patent attorneys who aren’t employed at a “major firm” can stop wondering now: they sxck.

    Kayton was a professor, a lecturer and an expert patent law witness. The charge of IC all but finished him, especially as an expert witness.

    Wow, sounds really dramatic and awful! Funny thing, but Kayton’s wiki page makes it sound like he’s revered by all and happily retired. That was my impression before you set me straight just now with these new “facts”, Ned. In any case, a great opportunity for you to step in and take his place, as I’m sure you realize.

  128. some reasonable vehicle to clear his or her name

    There is Ned – same as anyone else. Or do you mean a special vehicle for patent attorneys since they face so many IC charges ( a veritable pandemic)?

  129. Malcolm, Kayton was a professor, a lecturer and an expert patent law witness. The charge of IC all but finished him, especially as an expert witness.

    This is not a laughing matter. It is serious and we as patent community have a shared interest in seeking a solution. The accused patent attorney should have some reasonable vehicle to clear his or her name and receive compensation for the harm done.

  130. Trying to disbar an unethical lawyer.

    Whoever heard of such a thing?

    Was it the IC charge that hurt, or the being found guilty? – I bet it was the being found guilty.

  131. Malcolm, blacklisting is not the only problem. Look at what they are trying to do with Pope. They are trying to disbar him.

    As to harm, I know of a law firm which was substantially harmed because a named partner was found guilty of IC. As you might expect, they eventually went out of business. The IC charge had to hurt.

    Pope might not be blacklisted, but he is all but. Do you really expect a major firm to have Pope on their attorney list given what happened here. He is all but finished in the law business.

  132. Ned: The PO might try to place the entire fault on the attorney just in case they lose for obvious reasons.

    There are many ways to protect oneself against Patent Owners Gone Wild who try to finger their attorneys in such a manner. First and foremost, it is always a good idea to let clients know that certain strategies carry with them certain risks, and usually the more “clever” the strategy, the greater the risk.

    I did talk to Kayton about what happened to him. Not only was he extremely upset, he said that he was substantially harmed. I have no reason to believe that he was not.

    Sting. Madonna. Kayton. Seriosly, I had no idea that this “Kayton” fellow was implicated in an IC decision, or I had forgotten it … until just now when you felt compelled to bring his name up again in this context for some reason. Why would I care to remember the identity of any of the people implicated in these IC cases? Maybe if they were implicated in multiple cases, I’d start paying attention. But otherwise: who cares?

    it would be interesting if a sufficient number of them who are accused would fight back in some fashion so they could clear their name

    You talk as if there is a blacklist or something. Is there one? If so, news to me.

  133. Malcolm, I have never met or spoken with Pope. But I did talk to Kayton about what happened to him. Not only was he extremely upset, he said that he was substantially harmed. I have no reason to believe that he was not.

    Now, one would ordinarily believe the interests of the patent owner and his prosecuting attorney would not diverge, but if the attorney is a member of a large financially deep pockets firm, they just might. The PO might try to place the entire fault on the attorney just in case they lose for obvious reasons.

    It also strikes me, Malcolm, that you are very unsympathetic to Pope’s predicament; believing, as you apparently do, Judge Alsup, a jurist you highly respect.

    But, there are other cases and other patent attorneys who are accused. Not all are guilty, but it would be interesting if a sufficient number of them who are accused would fight back in some fashion so they could clear their name.

  134. I find it odd — and certainly ironic — that Pope’s attorneys chose not to cite the Federal Circuit’s Nisus decision in their initial brief. That’s not the way I was taught to do things.

    I mean, even if you have a half-axxed argument for distinguishing the case, it’s surely the closest Federal Circuit decision related to Pope’s facts and it’s a fairly recent Federal Circuit case (more recent than nearly all of the cases cited by Pope’s attorneys). I think it’s indisputable that Nisus is the “controlling precedent” with respect to this issue. Clearly, Judge Gajarsa considers it to be so (as a minor trivial point of interest, in some jurisdictions, the willful failure to cite controlling precedent is grounds for Rule 11 sanctions).

    Paul Cole: So the court can cheerfully blacken the name and reputation of an attorney

    As with the attorney in all the other recent inequitable conduct cases (were ANY of them actually sanctioned by the PTO or their state bar associations??), hardly anyone in the universe knows Mr. Pope’s name or who he is, much less that his “reputation” has allegedly been changed in any way. If he submitted an article here or to one of those legal rags, would the editors refuse to publish it? Doubtful. And nearly all clients love zealous attorneys, both outside and in-house. So what if one’s toes go over the line once every 35 years?

    As to your implication about the “cheerful” demeanor of the Judges, Paul, here are Judge Alsup’s exact words (which I was unaware of until reminded by those entertaining exhibits attached to Pope’s brief: “Intent to deceive, not just to withhold, was clearly in the mind of Attorney Pope, hard as it is to so conclude as to a professional.” Based on all that I’ve heard and read about Judge Alsup, he is one of the more serious jurists you are likely to encounter. I don’t think he “cheerfully” made any decision in this case, although I’m sure he did his best not to laugh out loud on occasion.

    Which brings us once again to that exceedingly odd assertion made during trial: “a common style – and it’s one that I use myself when drafting a patent application – is to use the word ‘preferably’ instead of using the word ‘required’ or ‘needed’.”

    Ignoring the reasonable and contrary assertions before the EPO for the moment, I’m curious: did Mr. Pope ever take the opposite position in any of those “hundreds of cases” prosecuted before the USPTO? Likewise, would the prosecution of any of those cases have proceeded differently if the Examiner understood that in each instance where the term “preferably” was used, it actually meant “required” or “necessary”?

  135. Abbott wanted the court to find no inequitable conduct just as much as Pope did. I’m pretty sure the point was adequately pleaded, zealously even.

    So what’s his case for defamation, exactly? Did anyone falsely state that his actions cost Abbott a patent?

  136. My quick reading of Illinois law is that this case should be easy to prove by Pope. It is defamation per se.

  137. But, at trial and in deposition, he was not represented by his own counsel. He was not free to tell his side of the case, so to speak. He was handcuffed because he was represented by counsel for Abbott.

    Now I can see in the Abbott v. pirate case that Abbott should have full control over the nature and extent of Pope’s testimony. This argues strongly that Pope’s interests in defending himself should be in a collateral proceeding such as a defamation suit where he has full control over his own testimony.

  138. The opinion attached to the attny’s motion indicates that the attny was presented as a live trial witness.

    Good. He got farther than Kayton, at least.

    I wonder what more he thought he could possibly add as a party to the case.

  139. “If he wanted to present facts that were relevant to the presence or absence of inequitable conduct, he could have done it just as effectively as a witness”

    The opinion attached to the attny’s motion indicates that the attny was presented as a live trial witness.

  140. IANAE, no, on defamation.

    Right. Which would have been consolidated with inequitable conduct in your hypothetical.

    he can at least file an amicus brief for the en banc, no?

    Assuming the court still considers him a friend, after all they’ve been through.

  141. Thinking on this just a bit more, wouldn’t it be in the interests of a PO whose attorney was being accused of IC to hire a law firm for a collateral attack in state court on defamation grounds?

  142. I’ve actually been involved in such a case during at least a deposition where I represented the third party witness.

  143. I wonder what the trial court would say if he were presented with a request by the likes of Pope to be represented by his own counsel during his testimony?

  144. common issues of law an fact

    Oh come on, don’t start with that again.

    Next you’ll claim that he’s entitled to a jury trial on inequitable conduct.

  145. I was just thinking this through from a procedural point of view. If the defendants were sued for defamation in state court, the first thing they would do is remove the case to the Federal Courts. They would then move to consolidate the two cases together on the grounds of common issues of law an fact so that the results in the patent case would be binding in the defamation case.

    Pope should have thought this through a little bit more.

  146. Intervening at the appeal stage or after a trial decision would not do an attorney much good because it is too late to introduce new evidence anyway. But refusing to allow a patent attorney to testify in his or her own defense in a pending case where allegations of inequitable conduct is about to become a major issue ought to be a different matter.
    I remember the Kayton situation – he was not even informed by the trial attorneys that he was being named in a case. That should be an attorney conduct issue for the trial counsel.

  147. Since he is not a party and is not bound by the Federal Circuit’s decision, he ought to consider a defamation suit against the defendant.

    Since he’s an attorney, he shouldn’t consider it for very long.

    What do you think his odds are of making out an action in defamation when the Federal Circuit found inequitable conduct? It happens to be true (so far) that his conduct resulted in the loss of a patent, so any press to that effect seems completely justified. Not every Pope is infallible, you know.

    If he wanted to present facts that were relevant to the presence or absence of inequitable conduct, he could have done it just as effectively as a witness. It’s not like the patentee wasn’t sufficiently motivated to defend the enforceability of its own patent.

    Patent law is like a chess game. It doesn’t matter to the players if they sacrifice a few pawns along the way.

  148. So the court can cheerfully blacken the name and reputation of an attorney, and then deny him the means of redress other than through the appeal process at which his interests may or may not be adequately represented, or through a motion of certiorari which is a separate and presumably very expensive proceeding.

    An order squarely within the traditions of Obadiah Slope. It may be your law, but it is manifestly not just.

  149. I remember Kayton trying to do the same thing in a case where he was specifically identified. His motion there was also denied.

    Obviously, Pope is harmed. Since he is not a party and is not bound by the Federal Circuit’s decision, he ought to consider a defamation suit against the defendant. He should sue in Illinois state courts. I believe he would prevail.

    In a case I was involved in, an individual was accused as a pawn in a war between two large corporations. In the end, he was handsomely compensated when the case settled. Hopefully, Pope is similarly compensated here.

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