TheraSense v. BD: Briefs on the Merits

By Dennis Crouch

Briefing continues in the en banc appeal of TheraSense (Abbott) v. BD and Bayer. That case stems from a district court finding that the TheraSense patent was unenforceable due to inequitable conduct during prosecution of the patent. The Federal Circuit is taking the case as a vehicle for re-evaluating the judge-made-law of inequitable conduct. I have collected the majority of merits briefs filed thus far in the en banc rehearing.  Becton Dickinson & Bayer’s opposing brief is due October 8, 2010.  Amici-briefs in support of BD/Bayer are due the following week. Oral arguments are scheduled for November 9, 2010 in Washington DC.  (This post merely provides briefs. Analysis to follow.)

Court Decisions:

Party Briefs:

Amicus Brief filed in Support of TheraSense

Amici Briefs filed in Support of Neither Party

121 thoughts on “TheraSense v. BD: Briefs on the Merits

  1. 121

    In response to my “Rather than replying with pointless name-calling, address the particular faults I point out. Your ranting and name calling only shows your impotent rage – try showing what you say you have.

    all you have is more ranting, now including how great you once were – Y A W N.

    Address the discrepancies I point out, then we can start on some more (like Supreme Court holdings, which are not for strict fraud), or like how you claim that both those that don’t agree with you want change and how the USPTO brief argues for the status quo (and how that brief appears to have cribbed from my lectures to Ned).

  2. 120

    Ping:
    You are completely illogical. You made a statement about equating 1.99 with opposition. I dismissed with a quote from the MPEP-30 seconds research time. Now you are alleging something else. The re-examination threshold is the but for test that is being asserted for purposes of IC. The USPTO and the current state of the law is much less than the but for test. For that I stand by my allegations that the courts have ignored Congressional intent by allowing a lower threshold of showing to underming a patent’s enforceability. By the way if don’t want to be consdiered a troll provide some factual basis and analysis for your position. I think that I have said all I can about IC. The last litigator who deposed me on it quickly abandoned the line of inquiry once I started making analogies between the stuff that gets by for purposes of Rule 11 Sanctions and that which prosecutors are subjected to. There was a witness on a stand in patent infringement case who flat out lied about his credentials. He was a CEO with an AS degree and he stated that he had a PhD in something or the other. The nation had been combed for his degree and he never provided any evidence of it. I mean you should see what happens in litigation. Prosecution is lillty white compared to what happens in litigation.
    Then there is bankruptcy . . . oh don’t get me starte on bankruptcy. What were the BR attorneys for GM paid tens of millions of dollars in fees . . . you wanna know where that money came from . . . take a look at your paycheck . . . you don’t really think SSI is going to your insurance fund. IF ya do I got a bridge to sell ya.

  3. 119

    My point was very specific … because I happen to know what I am talking about

    Except Kenny – you don’t.

    I have now shown two things that you have been objectively wrong about. Even your geriatric partner in crime Ned knows that you are wrong: “ In my experience, Ken, the legal threshold to invoke a reexamination is not all that high”.

    Rather than replying with pointless name-calling, address the particular faults I point out. Your ranting and name calling only shows your impotent rage – try showing what you say you have.

  4. 118

    Ping you are a troll and are not well versed in patent law. I stated opposition and that term has a very specific meaning worldwide. My point was very specific . . . Congress has seen fit to substantially limit post grant patent procedures to undermine the enforceability of patents. This is further evidence that the courts have strayed from Congressional intent by introducing a standard that is far less rigorous and not nearly as exacting in allowing the enforcement of patents to be undermined.
    Perhaps Dennis allowed my post to remain, because I happen to know what I am talking about. I have been in this business for a long time. What I find amusing is how well settled issue of patent law are constantly being relitigated. There have been several decisions by the Federal Circuit addressing issues that were originally addressed by the CCPA thirty years earlier. What you have is people constantly trying to argue for changes in the law on issues that are well settled by ignoring precedent. IC is another such example. Thanks to Ned and others, it becomes clear that the Supreme Court has made quite clear what the standard is to be for purposes of IC.
    That is what is most interesting about the briefs in the Therasense case. Read them carefully. You will note that parties who want to strengthen IC are arguing for a change in the law. Even the Federal Circuit is beginning to recognize that by simply relying upon Federal Circuit precedent they are ignoring long standing teachings of the Supreme Courtin this area. With IC we start with a Supreme Court decision that makes clear actual fraud and/or a but for approach is the benchmark for rendering patents uneforceable and/or invalid.
    The entire scope of the arguments for parties, such as the PTO and those advancing the reasonable examiner standard is that a change in the law is required. I state that, not surprisingly, the Supreme Court got it right back in the early 20th Century. No change in IC law is required. All the Federal Circuit has to do is recognize that it got it wrong and follow Supreme Court precedent and any rule promulgated by the USPTO in contravention thereof can be easily cast aside on constitutional grounds vis-a-vis the analysis of the Glaxo Smithkline court. However, all this presupposes that we are focusing on protecting Stare Decisis in this endeavour. I, however, have my suspicions that this IC situation is not completely about Stare Decisis or fraud or the Constitution. I think that there are economic powers out there that simply do not want the competition from the masses. As a result they are clamoring for an easy, subjective test to remove patents that are problematic for certain economic powers and that minimizes damages to the IP industry so that patents that the economic powers want to use to maximize profits are not undermined. What better method to do that than to focus on the individual patent prosecutor. Most of us are not blue bloods, we do not have connections with Ivy League schools and we are not connected to the beltway politics. We are part of the masses who simply are trying to make a living. In short, in the eyes of these economic elites we are expendable. There is a very good movie that provideds some background in this area. It is entitled The Corporation. I strongly recommend that anyone reading this watch that movied. Then you will have a better understanding of some of the underlying philisophical factors that surround the IC situation. All is not what it appears to be. The courts have long protected Corporate Interests beginning with the United States Supreme Court find that the Due Process of the 14th Amendment applied to the corporate form.
    This is not say that there are some patent prosecutors out there who commit fraud. However, finding fraud based upon incompetence and/or negligence, in my opinion, is improper.

  5. 117

    ping, small quibble: the evidence does not have to be new, just the issue has to be new to invoke a reexamination.

    In my experience, Ken, the legal threshold to invoke a reexamination is not all that high as the PTO does not carefully review whether the alleged “new” art is cumulative of art already discussed so that the issues are in fact new. All that one must do is make the allegation and it seems to be accepted.

    What happens thereafter is that the merits examiner is left holding the bag if the initial order was wrongly decided. Often the examiner will simply terminate the proceedings in some manner. But, the reexamination order itself is harmful to a patent owner. It is almost like being arrested on mere accusation, only to be have the charges dropped after a judicial review. The arrest itself is harmful.

  6. 116

    Kenny,

    It appears that my answer to you was too acerbic for our host. It did load last night, but is mysteriously gone this morning. Alas, I deleted the Word doc after I made sure it posted and thus those small white spherical nodules of wisdom are now lost.

    Suffice to say that you are wrong (yet again). It was your contention of “opposition” and if you read what I actually wrote, you would see that I merely show you that you were wrong when you claimed that there was no method of presenting information pre-issue. You are also wrong in regards to what it takes to invoke post-issue review – your rantings indicate a slam-dunk level of invalidating evidence when only a mere Question must be raised (the Office then examines and it decides whether the new evidence raises to the level of invalidating – just like Ned, you have a disconnect between “materiality” and “invalildity”.

    I find it humorous that your vitrole towards me is allowed to remain, but my on-point return comment, while perhaps harsh (and none-the-less true), has been removed. Hey, it’s Dennis site and up to him, so it is what it is, but you still have not touched the substance of my posts.

  7. 115

    IANAE:
    LOL. I always thought that the socialists did win WWII. They just weren’t German socialists.

  8. 114

    No doubt, Inviting. But when the likes of IBM and the EU talk about “technology,” the word itself is vague. Unless someone defines the term, it means different things to different people. Witness the definition I found on the WWW.

  9. 113

    Ned–

    Sorry, but that “definition” of “technology” is woefully inadequate to the point of childishness.

  10. 112

    Ned thanks for the comments but:

    1. EPC excludes mathematical methods, as such. Implementation of new such tools might well be patentable in Europe.

    2. As to the so-called “problem inventions” where the patentable insight lies in the identification of the problem, they are part of EPO caselaw for 30 years now, OK?

    IANAE, thank you for the gracious comments.

  11. 110

    Ned What was previously slow and tedious is now easier and more realistic.

    More realistic? What are you referring to?

  12. 109

    the invention was the recognition that one could not tell a clock had stopped without starring at it for more than a minute

    Who first recognized that, Ned?

  13. 108

    IANAE, “The problem with the problem-solution approach, as I understand it, is that hindsight is built into the “problem”. Why should the person skilled in the art be solving a particular problem, unless the art teaches that there is a problem to be solved? Why is the person skilled in the art incapable of doing routine research without such a specific goal in mind?”

    Excellent.

    The Supremes said as much some time ago. Even the identification of a problem can be the invention where the solution to the identified problem, once identified, is obvious.

    The clock flag case is an example. The flag was a obvious solution to the problem of determining when a mechanical clock was stopped. But the invention was the recognition that one could not tell a clock had stopped without starring at it for more than a minute.

  14. 107

    Max,

    Ned, you and I share a common language. You don’t need me to tell you whether “math” as such is “technology”. It isn’t, is it?

    Here is one definition that appears to include mathematics:

    Technology is the set of tools both hardware (physical) and software (algorithms, philosphical systems, or procedures) that help us act and think better. Technology includes all the objects from a basic pencil and paper to the latest electronic gadget. Electronic and computer technology help use share information and knowledge quickly and efficiently. What was previously slow and tedious is now easier and more realistic. Any tool has the potential to remove the tedium and repetition that will allow us to perform that which is most human– thinking, dreaming, and planning.

    link to home.earthlink.net

  15. 106

    American-style socialism . . . profits for the few and losses to the many.

    The technical term for that is “capitalism”.

  16. 105

    Apart from an analysis of the acadmeic background of the Judges that find IC when compared to judges that do not in patent cases, it would be most interesting to analyze the financial interests of the parties that lose on IC grounds, i.e., are Goldman Sachs, Bank of America of any one of the large financial institutions to benefits from findings of IC in a particular case.
    It should be understood that the patent system was key to the Internet Bubble and that the major wall street firms benefitted from the Internet Bubble. Perhaps that it is the courts trying to clean up the mess that was left by the manipulations of Wall Street on the IP industry. In short, Wall Street is done with the Intenet Bubble and they sure do not want IP interfering with their designs on the next bubble in which they intend to rip-off the American people.
    That is why you have all these economists going against patents . . . it hurts the ability of the Banks to create bubbles and gouge honest hard working people that produce useful instruments. I suspect that there is a little bit of this goind on, as well. Remember, the current financial system of the United States is American-style socialism . . . profits for the few and losses to the many.

  17. 104

    Ping it took we 30 seconds to find this quote from the MPEP. To ensure that a third-party submission under 37 CFR 1.99 does not amount to a protest or pre-grant opposition without express consent of the applicant, the third party does not have the right to insist that the examiner consider any of the patents or publications submitted.

    Now you troll go back to the miscreant that you represent.

  18. 103

    you repeat what has been the whinge from at least the UK, ever since thirty years ago when the EPO got going with EPO-PSA.

    Good. There must be an answer to it, then.

    I certainly don’t claim to be knowledgeable enough about EPO-PSA To uncover profound conceptual problems that have escaped the great minds of the last three decades. I’m not trying to tell you that the PSA is doomed to fail, as it seems to serve its purpose quite well.

    Clearly the PSA is a different test for obviousness, or the English wouldn’t have had to come round to it in the first place. Being different doesn’t make it any less legitimate or valid, but it does mean the two tests do not always consider the same inventions to be worthy of patent protection.

    In the 30 years it will probably take me to come round to the PSA, can we try to have a civil discussion about the differences between the two tests, and whether they might reward a somewhat different type of inventiveness? In exchange for your patience in explaining to me what Europeans have understood for decades, I’ll try not to imply that the EPO system is inferior to the US system we all know I’m such a big fan of.

  19. 102

    Brilliant, IANAE. When you write:

    “I’m not convinced every invention is even amenable to being characterized in terms of a problem to be solved.”

    you repeat what has been the whinge from at least the UK, ever since thirty years ago when the EPO got going with EPO-PSA.

    So you would think that, by now, the EPO would have been rumbled. More than a thousand Technical Board of Appeal decisions each year, and still no UK academic able to back up your hunch. Quite the reverse. Even as we speak, the English patents courts are coming round to the view that EPO-PSA is as legitimate and valid a test as the one they themselves use.

    The EPO begins with the premise that every patentable invention can be presented as the solution to an objective technical problem. That problem emerges from a straight side-by-side comparison of the app as filed and the D1 prior art starting reference. The attacks on EPO-PSA in Europe are fizzling out, as they still can’t gain a purchase.

    I have to thank you though, yet again, for revealing to me how big a mental jump it must be, to get from US obviousness to EPO obviousness thinking.

  20. 100

    Max: I can see, as a result of thousands of cases, that my way works, is fair as between patentee and Opponent, and delivers with a minimum of attorney hours and a maximum of understanding and acquiescence from inventors, scientists, engineers and business people a scope of patent protection that is commensurate with the usefulness of the inventor’s enabled contribution to the art.

    I don’t disagree with any of that. I just think the PSA blurs the lines between obviousness and utility a little, and I’m not convinced every invention is even amenable to being characterized in terms of a problem to be solved.

    Max: Thank you IANAE for showing me how hard it is to get somebody outside EPO circles to look at EPO-PSA without prejudice.

    I guess I shouldn’t have referred to it as a “problem”, really. It’s hard to reconcile with the American approach because the two don’t fit well together, but clearly the EP system works. I’m just trying to mentally take it apart and see for myself how it works, but I don’t have much of a reference point other than the American system.

    I think you’re right, this discussion would go better face to face.

  21. 99

    Sigh. That’s why, earlier in this thread, I emphasised that we in Europe “do” obviousness objectively, as of the date of filing the app at the PTO, after the inventor has written the app. One can look back, from that date, to the time prior to the conception of the invention by the named inventor, but why? What’s the point? You say that EPO-PSA builds “hindsight” into the formulation of the objective technical problem. I don’t see it like that. I do not see why I have to do it your way when I can see, as a result of thousands of cases, that my way works, is fair as between patentee and Opponent, and delivers with a minimum of attorney hours and a maximum of understanding and acquiescence from inventors, scientists, engineers and business people a scope of patent protection that is commensurate with the usefulness of the inventor’s enabled contribution to the art. All this stuff about it being impossible to predict which way the court will decide on obviousness is nonsense.

    Thank you IANAE for showing me how hard it is to get somebody outside EPO circles to look at EPO-PSA without prejudice.

  22. 98

    EPO Exr notes the molecule in claim 1, asks whether there was any hint or suggestion in the published art to try PTFE as a means of delivering……whatever the inventor reported, low friction, inertness, coatings, implants, whatever.

    Of course there was no hint or suggestion. The polymer had never existed before. The invention is the molecule itself. The unexpected result is merely the utility that makes the molecule patent-eligible (a rejection for lack of utility won’t stick).

    Would a person skilled in the art have invented the molecule? Probably. It was invented by doing something completely routine – storing the monomer TFE in a container. Does the unexpected advantage of the polymer make it any less likely that a person skilled in the art would have stored TFE in a container? Of course not. The person skilled in the art does not know that he should avoid doing things that yield unexpected results.

    Would a person skilled in the art have invented the molecule for the purpose of making a reduced-friction material? Almost certainly not.

    The problem with the problem-solution approach, as I understand it, is that hindsight is built into the “problem”. Why should the person skilled in the art be solving a particular problem, unless the art teaches that there is a problem to be solved? Why is the person skilled in the art incapable of doing routine research without such a specific goal in mind?

  23. 97

    Maxie,

    Just for jakes – throw in the 103 buzz of “Patentability shall not be negatived by the manner in which the invention was made.” and ask for a detailed explanation of what this is supposed to mean.

  24. 96

    IANAE, this all seems so bizarre to one who is using EPO-PSA day-in, day-out, toggling between the technical features recited in the claim and the technical effects reported in the app as being deliverable by the claimed feature combination.

    So, TEFLON. Inventor makes it, notes its interesting properties, reports them to patent attorney.

    Files app at EPO. EPO Exr notes the molecule in claim 1, asks whether there was any hint or suggestion in the published art to try PTFE as a means of delivering……whatever the inventor reported, low friction, inertness, coatings, implants, whatever.

    All this agonising over unexpectedness, and whether any real person was grappling with the objective technical problem, seems to me such a futile waste of energy. Once we can debate obviousness objectively, relative to that mythical being the PHOSITA, all the difficulties evaporate away.

    But perhaps I am too close to the coal-face, too much of a troglodyte, to see the wider picture.

  25. 95

    Max: it leaves me wondering how you stand on the EPO PSA treatment of obviousness, where the PHOSITA is deemed to be trying to solve the objective problem of achieving the “result” (even when it is “surprising or unexpected”)

    I don’t think it makes sense to ask the question of how a person skilled in the art would attempt to solve the objective problem of achieving an unexpected result that doesn’t exist as far as he knows. If he were a real person, he’d probably be sobbing in a fetal position in the corner. I couldn’t say whether that’s an inherent problem with PSA or whether it’s a poor characterization of the “problem”.

    What if the inventor himself didn’t expect the unexpected result? I know the manner in which the invention is made should not count against patentability, but unexpected things are often discovered by people doing exactly what a person skilled in the art would do and then noticing the unexpected result that would be just as glaring to a person skilled in the art with his very finely honed expectations. Look at teflon, for example. A person skilled in the art wouldn’t have come up with it to solve any problem, but if he polymerized it by accident like the inventor did he would have immediately known its structure and recognized its properties.

  26. 94

    I wish we could do our debate face to face IANAE. My keyboard skills are inadequate here. You write:

    “I see hindsight in basing the validity determination on what the applicant discovered that, in retrospect, would have surprised the person skilled in the art.”

    and it leaves me wondering how you stand on the EPO PSA treatment of obviousness, where the PHOSITA is deemed to be trying to solve the objective problem of achieving the “result” (even when it is “surprising or unexpected”) but is deemed not to know the technical feature combination in the claim under scrutiny ie how the inventor named in the app solved the problem. I don’t know whether you are one of those who say that EPO-PSA illegitimately relies on “hindsight”.

    When I mentioned the Cripps Question, I was thinking that the English court was formulating the obviousness question using the result achieved by the invention. But Cripps goes back to the 1950’s, I believe. I think nobody bothers any more to mention it currently, in the English patents courts.

  27. 93

    Max: Public policy aims to reward such bringers, for promoting the progress of useful arts, rather than progressively rewarding those with deep enough pockets, in direct proportion to the depth of the pocket that is funding the research.

    Yes, public policy aims to reward progress in the useful arts, but insofar as that policy is embodied in the patent system it will always be tied to economic incentives for innovation. The expense of the discovery alone should not weigh in favor of patentability, but what of the impracticality of the research that warranted the expense in the first place?

    It would be nice if the patent went to the guy who found an inventive way to spot the one useful molecule without testing all five million, and that probably happens from time to time, but the needle is still the same needle whether you burn the haystack or run a magnet over it or painstakingly inspect every piece of hay.

    Max: it seems to me right to take those surprising results into account, to the benefit of the inventor.

    Yes, of course it should benefit the inventor. I guess it comes down to whether the unexpected property is evidence of “wow, you must have been really inventive to find a molecule with that property” (obviousness), or evidence of “wow, your invention is really useful” (utility).

    From my perspective, admittedly as a non-chemist, I understand why expected advantages would direct a person skilled in the art to an invention, and why unexpected advantages would not. I just don’t understand why an unexpected advantage should make the discovery any less obvious than anything else. The person skilled in the art would not avoid a discovery with an unexpected advantage, he would simply not favor it.

    Max: IANAE, once you accept that validity is done as of the filing date rather than the date of conception, where please is the “hindsight” in the European approach?

    I don’t think hindsight depends on the date at which validity is assessed. I see hindsight in basing the validity determination on what the applicant discovered that, in retrospect, would have surprised the person skilled in the art. A validity determination is properly made by taking the knowledge of the person skilled in the art (without knowledge of the surprising result, but also without particular aversion to discovering it) and seeing whether it would have led to the invention. That’s the Cripps question, right? If the person skilled in the art would have made the same discovery, and been equally surprised by the result, his surprise does not weigh further against obviousness.

    Ned: It seems you will disagree with me on this point, or at any other point I might make simply because I make it, even if you might privately agree with Prof. Hricik, whose brief made the argument I quoted.

    I thought I was clear on this, Ned. I disagree with both you and Prof. Hricik. I think you’re both reading the statute to say what you want it to mean. Not that any of us is immune to such a thing. Prof. Hricik’s interpretation is not the only reasonable one, nor in my view the most reasonable one, regardless of whether you agree with it.

  28. 92

    Never a dull moment, eh ping. Something new, every day.

    Ned, sorry I was late to notice above your “last clause” question. This clause was aimed at IANAE and his “obvious to try” in the field of chemistry. Never mind.

  29. 90

    Ned, you and I share a common language. You don’t need me to tell you whether “math” as such is “technology”. It isn’t, is it?

    Art 52(1) EPC says “all fields of technology”.

    Art 52(2) lists what (as such) is not patent-eligible. The list includes (inter alia):

    “mathematical methods”, and

    “schemes, rules and methods for performing mental acts, playing games or doing business”

  30. 88

    ping, Bilski is such a big case that I did get to hear about it, thank you.

    Loads of “business method” cases are going through to issue in the EPO. Perhaps that is because we in Europe have that comical “as such” statutory language which keeps the statutory limitations on patent-eligibility really tight.

    The way I read Bilski, SCOTUS thinks like the framers and adjudicators of the provisions of the EPC, that exceptions should be kept narrow. But how to express themselves, that’s the problem. Everybody has signed up to GATT-TRIPS. Remind me, what does that say? Something about “all fields of technology” isn’t it?

    Is that all? I was hoping for more challenging stuff but, I have to say, I thought it more likely to come from IANAE than from you.

  31. 87

    Max said, “In Europe, we judge the validity of a claim by its filing date, when the inventor brought an enabling disclosure to the Patent Office. Public policy aims to reward such bringers, for promoting the progress of useful arts, rather than progressively rewarding those with deep enough pockets, in direct proportion to the depth of the pocket that is funding the research.”

    That last clause is a little too obscure. What is the point you were trying to make?

  32. 86

    IANAE: “‘As demonstrated by Prof. Hricik, Congress amended section 288 so that it would take a finding that an invalid claim was procured by deceit before other claims could be held unenforceable.’

    Ned, I strongly disagree with you on this point.”

    Why of course, IANAE. It seems you will disagree with me on this point, or at any other point I might make simply because I make it, even if you might privately agree with Prof. Hricik, whose brief made the argument I quoted. Given your proclivities for disagreement, I might cleverly maneuver you someday into agreeing with Prof. Hricik, or some other professor whose argument I quote, by simply denouncing his point of view.

  33. 85

    Maxie,

    Didn’t ya hear about that little case called Bilski that held that business methods are not outside the useful arts?

    …runs on science and technology, given that the purpose of the patent system is to promote useful arts.

  34. 84

    IANAE, Smash, I am grateful, for your promptings.

    Smash,it is the inventor who defines the objective “problem”. Read on. IANAE, the EPO confines the “problem” to one that is “technical”. Ways of making money (coins, notes) are “technical” but ways of hedging are not. And, the “hindsight” issue is not an issue in Europe. Read on.

    In Europe, we judge the validity of a claim by its filing date, when the inventor brought an enabling disclosure to the Patent Office. Public policy aims to reward such bringers, for promoting the progress of useful arts, rather than progressively rewarding those with deep enough pockets, in direct proportion to the depth of the pocket that is funding the research.

    So, everything that was published the day before that filing at the PTO is prior art, and proper to be acknowledged as such, in the specification to be filed the next day.

    Obviousness will be judged, objectively (so what the inventor knew of the state of the art is irrelevant) as of the filing date, by a comparison of the content of the app and the content of the entire state of the art, which by the way does not include stuff on file at the PTO, but not yet published.

    But what the one writing the app is supposed to know is what the “invention” is, including the surprising results already obtained.

    Given that we are assessing obviousness on the following day, when the app is filed, it seems to me right to take those surprising results into account, to the benefit of the inventor.

    But it also seems proper to be able to choose the best art out of what has already been published, as the basis of an objective obviousness attack.

    Smash, the “objective technical problem” is derived simply by putting the app and the D1 reference side by side and seeing what the app brings, that D1 did not. So, what you put in your app is all-important.

    Some people say that this process is unfair to every inventor who did not know about D1. But the only legitimate D1 is something which, for the PHOSITA in the technical field designated by the inventor in her app, is realistic for the PHOSITA. So, be careful what you write in your app, and what field you say you are in, for it can make a decisive difference to patentability. Is it “staplers” or “surgical staplers” for example.

    IANAE, once you accept that validity is done as of the filing date rather than the date of conception, where please is the “hindsight” in the European approach?

    ping I am glad you can see that what is or is not “obvious” to an engineer, and what is or is not “obvious” to an accountant, are two different things, that we can distinguish the two, and that a business needs input from both engineers and accountants.

  35. 83

    Business-wise
    Science-wise

    Little beknownest is that Engineering-wise (real engineering that is) is a mix of both – ya don’t offer gold-plated solutions, – ya have to deal with real world constraints (and often, believe it or not, is a little thing called budget.

  36. 82

    Max: We are talking about what is obvious, business-wise, not science-wise.

    Yes, to a point. And it bothers me too. But what really is non-obvious to scientists? Bear in mind that the Mythbusters spent an entire episode literally looking for a needle in a haystack.

    Science-wise, if one of fifty million identifiable compounds might be the cure for cancer, you’ll want to test them all. If the cure is in there, you’ll find it in the course of doing routine uninventive science. The only thing preventing you from doing so is the lack of manpower, lab facilities, and budget. Business issues.

    And then you have the enantiomer cases, where there are only two compounds, at least one of which certainly has a known therapeutic effect and at least one of which certainly has a known undesirable adverse effect. Obvious to separate them? Of course not. It takes so long and it’s so expensive.

    One could argue, I suppose, that the expensive permutation-trying needs a patent at the end so that people will put up the money for it. Or one could argue that you’d have to be inventive to screen fifty million compounds for cancer-curing utility without exhaustively testing each one, but even that inventiveness is the child of business necessity.

    I don’t know how to articulate an obviousness test that runs on science and technology, but it might look like “there’s no motivation in the art to build that thing at all”, or “the art teaches away from it”.

  37. 81

    Max-
    Earlier I said I agreed with IANAE’s statement on obviousness that you just quoted/questioned. On reflection, I would qualify that by saying that I don’t think it’s an either/or situation. IOW, the remarks about obvious to try a small number of permutations, or non-obvious to try a very large number, state limiting cases but don’t tell us where to draw the line between the two extremes. But that’s the nature of obviousness as a legal doctrine–it’s messy to determine at the margins.

    BTW, without knowing so much about the EPO version of obviousness, am I right to guess that the whole problem/controversy in your system turns on how the objective technical problem is defined? And who defines the problem? The applicant? the examiner? the judge?

  38. 80

    IANAE writes (of innovation in the field of chemistry):

    “Either it’s obvious to try a small finite number of permutations, in which case none of them should be patentable because you’d expect the person skilled in the art to try them all and eventually stumble on the unexpected result; or there are so many permutations that it is not obvious to sift through them all, in which case the ones with utility are patentable to the people who discover the utility.”

    This bothers me because it seems to tie obviousness to whatever budget is allocated to the process of working through the permutations. In some technical fields it is worth trying loads of compounds, in others not. We are talking about what is obvious, business-wise, not science-wise. So just how does the court decide where the tipping point comes, between business-inventive permutation-trying and business-obvious permutation-trying?

    I would prefer an obviousness test that runs on science and technology, given that the purpose of the patent system is to promote useful arts.

  39. 79

    As demonstrated by Prof. Hricik, Congress amended section 288 so that it would take a finding that an invalid claim was procured by deceit before other claims could be held unenforceable.

    Ned, I strongly disagree with you on this point.

    put a stop to extremists like yourself, those who believe that extremism in the pursuit of justice is no vice.

    You mean like people who use deception to secure the grant of a not-invalid patent? Those people need to be stopped somehow.

  40. 78

    Malcolm, As demonstrated by Prof. Hricik, Congress amended section 288 so that it would take a finding that an invalid claim was procured by deceit before other claims could be held unenforceable. They did so with the very intention, I submit, to put a stop to extremists like yourself, those who believe that extremism in the pursuit of justice is no vice.

  41. 77

    Meet Ned Heller.

    Ned can read minds. That’s how he knows that applicants never intend to deceive the USPTO unless they admit it.

    That’s also how he knows that judges intentionally ignore the law all the time and only find inequitable conduct because they don’t like the holdings of non-obviousness or whatever.

    And that’s why we call him: Nedstrodamus.

  42. 75

    They were overturned on equity, not on JMOL. In both cases, the non disclosed evidence was given to the jury.

    If the court disagreed with the jury verdict, it would have overturned the verdict on JMOL.

    Unenforceability is not the same thing as invalidity. The court might well have completely agreed on the question of validity, but also sincerely found the patent unenforceable. Just because both frequently depend on how close prior art is to the claims, that doesn’t mean it’s impossible or inconsistent to hold a patent valid (as to all claims in suit) and unenforceable.

  43. 74

    The courts will never admit this, but I give you just two recent examples of what I mean: Avid and Golden Hour. Both had jury verdicts of validity. They were overturned on equity, not on JMOL. In both cases, the non disclosed evidence was given to the jury.

  44. 73

    Ned: IANAE, well it seems that you’ve gotten away from your assertion that a “prima facie” case requires a “reasonable examiner” standard. You now, it appears, concede that a prima facie case involves an “objective” standard

    A “reasonable examiner” standard is an objective standard.

    Ned: Now in court, if the issue is obviousness, the infringer must at least demonstrate a prima facie case. If he does not, he loses.

    You misspelled “clear and convincing” there.

    Ned: it appears to me quite apparent that inequitable conduct is being used by courts, including the Federal Circuit, to overturn jury verdicts where courts disagree with the result.

    Leaving aside for a moment that overturning verdicts at law is the entire reason why equity exists, but recognizing that the courts have held some patents unenforceable on some pretty flimsy rationales, what evidence do you have that they’re doing it because they disagree with the jury result? After all, the Federal Circuit seems to have no qualms about directly overturning jury results when it suits them.

  45. 72

    Ned Just to answer my own question, it appears to me quite apparent that inequitable conduct is being used by courts, including the Federal Circuit, to overturn jury verdicts where courts disagree with the result.

    Any evidence for this?

    Of course not.

  46. 71

    the unexpected result was strong evidence of non-obviousness.

    On those facts, you’re using “unexpected result” as a surrogate for “utility despite a teaching away”. Teaching away is already a criterion in the obviousness analysis.

  47. 70

    Just to answer my own question, it appears to me quite apparent that inequitable conduct is being used by courts, including the Federal Circuit, to overturn jury verdicts where courts disagree with the result.

  48. 69

    IANAE, well it seems that you’ve gotten away from your assertion that a “prima facie” case requires a “reasonable examiner” standard. You now, it appears, concede that a prima facie case involves an “objective” standard for both anticipatory and non anticipatory references.

    I the issue of unexpected results has nothing to do with the examiner’s burden to make a prima facie case. All the examiner has to do is demonstrate that all the elements are in the prior art, and, if they’re not all in one reference, demonstrate why one of ordinary skill in the art would combine the references the way the inventor did.

    Now in court, if the issue is obviousness, the infringer must at least demonstrate a prima facie case. If he does not, he loses. As well, if the patent owner introduces evidence of unexpected results, the infringer must rebut that in some manner.

    Now if the patent is held not invalid over the evidence allegedly not disclosed to the patent office by the patent owner, can it be said with any reliability that the failure to disclose was with the intention of obtaining an invalid patent? And since the answer this question is so clear, just what in the world are we trying to do by holding unenforceable a valid patent where there is no clear attempt by the patent owner to obtain an invalid patent by fraud?

  49. 68

    “Either it’s obvious to try a small finite number of permutations, in which case none of them should be patentable because you’d expect the person skilled in the art to try them all and eventually stumble on the unexpected result; or there are so many permutations that it is not obvious to sift through them all, in which case the ones with utility are patentable to the people who discover the utility.”

    I agree.

    As to unexpected results, I think the companion case to John Deere (the case where the guy invented a battery using two materials that he combined despite a “teaching away” from their combination) (on second thought, I think it was United States v. Adams) is a good illustration of the point–the unexpected result was strong evidence of non-obviousness.

  50. 67

    Max: Flippantly, IANAE, why?

    Equally flippantly, because unexpected results are just that – unexpected. They can’t possibly figure in to the inventive process, or the knowledge of a person skilled in the art, so how do they assist the determination of whether the invention was obvious before it was made?

    We don’t need a patentability rule that favors inventions with particularly good results. The market can take care of that by giving more money to the people who patent the better inventions, and not depriving the public of very much in the case of the less good inventions.

    Yes, in chemistry every combination is about as obvious as the next. That is an argument against using unexpected results as a criterion. Either it’s obvious to try a small finite number of permutations, in which case none of them should be patentable because you’d expect the person skilled in the art to try them all and eventually stumble on the unexpected result; or there are so many permutations that it is not obvious to sift through them all, in which case the ones with utility are patentable to the people who discover the utility.

    smashmouth football: I think you’re underestimating the hindsight problem in obviousness. An awful lot of things look “clear” or “obvious” once they have been explained to me by someone else.

    Unexpected results only compound the hindsight problem, because by definition they take into account knowledge not available to a person skilled in the art. Besides, there’s already a rule against hindsight in the obviousness analysis. We don’t need to pretend that secondary considerations serve that purpose.

  51. 66

    “Even unexpected results don’t scream “non-obvious” to me. Obviousness should be based on what is known to a person skilled in the art, and an unexpected result is by definition irrelevant in that determination. Sure, it refutes the argument that the invention was obvious because of the beneficial result, but why should it hold any water against a more general KSR-type rejection that merely combines two things, both known in the art, because both are nice to have?

    Posted by: IANAE | Aug 11, 2010 at 11:37 AM”

    I think you’re underestimating the hindsight problem in obviousness. An awful lot of things look “clear” or “obvious” once they have been explained to me by someone else.

    When the prior art contains millions or billions of “things,” it becomes highly relevant why just the “right” pair should have been selected for combination. In other words, n choose 2 gets pretty big if n is in the millions.

  52. 65

    Yes, the Non-Sequitur of the Day award once again goes to Malcolm, who can think of nothing better than to attempt to hijack another thread with:

    Except that doesn’t explain the PTO’s hot desire to issue patents on computer-implemented b.s.

  53. 64

    Kenny,

    I post to keep you in line. You never indicated that your comment only pertained to “opposition”.

    Never-the-less, 1.99 does in fact exist and shows your comment to be quite inaccurate (and yes – you can use 1.99 to “oppose“, given that what you asked for (before patent) typically is before your “oppose” happens anyway.

    Now would you actually care to comment on the substance instead of doing a Ned and eating your words?

  54. 63

    Thanks Paul, off the point yes. But thanks for the insight on Schlumberger. I had not appreciated that it is a “commercial success” case. Was there any evidence from accountants? I saw it more as an “surprising or unexpected result” sort of case. The “acknowledgement by others” was the proof of “surprising” I had thought.

  55. 62

    Ping 1.99 has nothing to do with opposition and if you had half a clue as to what is going on you would know that. Why do you even post here?

  56. 61

    it is a pragmatic test that seems to give out patents for meritorious stuff and nor otherwise?

    Except that doesn’t explain the PTO’s hot desire to issue patents on computer-implemented b.s.

  57. 60

    Flippantly, IANAE, why? Because you can have a patent for a “discovery”, or because the patentability of your invention shall not be negatived by the manner of its making, or because in chemistry it is routinely and equally obvious to try every “this” instead of “that” whatever this and that are, or because we are trying to do the patentability job objectively, not subjectively, or because it is a pragmatic test that seems to give out patents for meritorious stuff and nor otherwise?

  58. 59

    Max: These things drift off the point. But if you really think that secondary considerations are irrelevant, have a look at the recent decision of the UK Court of Appeal in Schlumberger Holdings v Electromagnetic Geoservices (July 10, on Bailii). Robin Jacob appears to have re-written the rule-book (again) and commercial success and acknowledgement by others are now IN.

    The real point for our US colleagues is that if a reference is not an anticipation, it is probably not a fit basis for inequitable conduct since obviousness can be so difficult to decide.

  59. 58

    England is deeply sceptical of evidence of “secondary considerations” like “commercial success”.

    So am I, when you get right down to it. Commercial success is far less predictable than whether the invention would actually work, and depends on a lot of factors that would not enter the mind of product developers (particularly if they are salaried). It seems pretty silly to say that something allegedly obvious (but novel, which means nobody has ever attempted to market it before) is non-obvious because someone would have done it earlier to cash in on the commercial success he could not possibly have expected.

    Even unexpected results don’t scream “non-obvious” to me. Obviousness should be based on what is known to a person skilled in the art, and an unexpected result is by definition irrelevant in that determination. Sure, it refutes the argument that the invention was obvious because of the beneficial result, but why should it hold any water against a more general KSR-type rejection that merely combines two things, both known in the art, because both are nice to have?

  60. 57

    Nice questions IANAE. England “does” obviousness using just one reference, thinking it to be far from obvious to mosaic two patent publications. The EPO routinely uses two patent publications as the basis of its findings of obviousness (that’s why it is so important at the EPO to explore the legitimacy of the selected “D1” reference as the “starting point” for the Problem and Solution Approach to the analysis of obviousness).

    So, I see limited value in distinguishing between one reference obviousness attacks and two reference attacks. I see the real distinction being between D1 as a destroyer of novelty and D1 as the basis of a successful obviousness attack.

    England is deeply sceptical of evidence of “secondary considerations” like “commercial success”. But we need to ascertain whether a “surprising or unexpected result” is secondary or not. Not in Europe, it isn’t. If you call that “secondary” then it is the core of obviousness, at least in chem/bio.

    Paul Cole, are you there? Cripps Question anybody?

  61. 56

    Does thinking about something deprive it of novelty? Is everything that is technically obvious to real people skilled in the relevant art already “done”?

    Of course not. In the real world, there are lots of obvious things that have not been done, sometimes because real people didn’t think of them, and sometimes because you can’t economically do every possible thing.

    But if an actual person skilled in the art existed, and something useful was obvious to him, wouldn’t he have done it? Isn’t that the whole point of secondary considerations?

    Europe has different, mutually exclusive, and complementary tasks for its novelty and obviousness tests of patentability.

    I think novelty and obviousness are inherently different tasks, regardless of whether one uses the same art for both. I understand why Europe uses different art for obviousness, and I know we’ve had this discussion before, but do you think a more appropriate distinction would be between novelty and single-reference obviousness on the one hand, and multiple-reference obviousness on the other?

  62. 55

    IANAE, thanks but I still do not follow. Does thinking about something deprive it of novelty? Is everything that is technically obvious to real people skilled in the relevant art already “done”? It costs nothing to “think” about doing something but it sure does cost quite a bit of money to reduce patentable matter to material form. Why squander precious resources putting into effect (or publishing) every thought which, technically, is entirely obvious, if the realisation thus made or published is not going to make me a profit?

    The PHOSITA is an artificial construct not least because:

    1. it knows all the art, and

    2. it has not one scintilla of inventive capability.

    But none of that prevents us from imbuing our artificial construct with the common general knowledge (mental furniture) of the real person of ordinary skill in the relevant art. Then, after cross-examination of technical experts, the court can ask itself, objectively, what TSM in the state of the art would have motivated such a hypothetical real person, with that encyclopaedic knowledge of the art, but without an inventive faculty, to resort on the date of the claim to the features of the claim, in the expectation of solving the objective technical problem.

    Europe has different, mutually exclusive, and complementary tasks for its novelty and obviousness tests of patentability. In a nutshell, prior filings, still not published at the date of the claim under examination, are not available for obviousness attacks. Either they bite as novelty destroyers, or they do not bite at all. This explains the development in Europe of such a sharp distinction between what is not novel and what is obvious. In jurisdictions that lack the disciplinary effect of Art 54(3) EPC, I do not see such appreciation of such a sharp distinction, between that which is new but obvious, and that which is simply old.

  63. 53

    Max: First two sentences: fine. Third and fourth sentences: huh?

    Real people don’t always come up with everything that would be obvious to a person skilled in the art. If actual people were skilled in the art, everything obvious in law would be subjectively obvious to them, and if it was useful it would have been done already (anticipated).

    In other words, the fact that some useful things are novel but obvious is evidence of an objective standard for obviousness. You can’t just say “why didn’t you think of it then?” because that would be (1) a subjective test (2) that would essentially reduce obviousness to novelty.

  64. 52

    IANAE, your answer is a non answer.

    Ned, your question was a non-question.

    IANAE is the King of the Neutron Bomb. Quite possibly the best that has ever posted.

    While Ned continues to fumble with the validity//materiality disconnect, IANAE just schools him almost completely — the only slip being the attempted insertion of “reasonable” into the PHOSITA standard – there be no “reasonable” in that standard – how could there be when the “ordinary” is adjudged to have read every possible item ever published in whatever particular art field and every other art field when the problem being addressed is “similar enough”.

  65. 51

    Obviousness and what is “reasonable”. Novelty and what claim elements are in the reference. I was shocked to read IANAE’s:

    “Same goes for obviousness itself. It’s an objective standard that has everything to do with the hypothetical “reasonable” person skilled in the art. It has nothing to do with what real people who work in that art would do. If it did, everything obvious would also be anticipated.”

    First two sentences: fine. Third and fourth sentences: huh? IANAE, I think they beg the question: whatever is the novelty standard in the USA and is there not a crystal clear bright line distinction between what prior disclosure is unambiguous enough to deprive of novelty and what merely renders obvious?

    Ned, on novelty, it is instructive to go through the exercise of sorting claim elements into those in reference D1 and those not in D1. This is what EPO folk are doing, all the time, with a c-i-t, 2-part form of independent claim. Sometimes such sorting is not a problem but, other times, virtually impossible. Those latter times are the ones where attorney and Examiner can legitimately disagree vigorously (and thus where a 2-parter is wrong to impose on Applicant).

  66. 50

    “I really can’t understand why otherwise intelligent and experienced patent practitioners suddenly throw up their arms in incomprehension ”

    It is called incompetence and it pervades the field.

  67. 49

    Let’s not talk about obviousness just for the moment. But even there, the examiner must still show all the elements. Let’s talk anticipation. Just where does the examiner’s discretion enter the equation?

  68. 48

    I would have no clue whether a particular reference was a prima facie reference or not. No clue at all.

    When you get a 103 rejection, and you read the references, do you have any clue whether the rejection was reasonable or not?

    Do you know the difference between an unreasonable rejection and an incorrect rejection?

    I really can’t understand why otherwise intelligent and experienced patent practitioners suddenly throw up their arms in incomprehension once someone proposes a standard for materiality along the lines of “an examiner would reasonably want to see this”. This is what we do for a living, you guys. If you don’t know what art an examiner would reasonably want to see, you’re in the wrong line of work.

  69. 47

    IANAE, the way you explain it, I would have no clue whether a particular reference was a prima facie reference or not. No clue at all.

  70. 46

    The reference either has all the elements or it does not. End of story.

    That’s not the end of the story, because it’s not always crystal clear and unambiguous whether a reference has particular elements. A reference or a combination of references may appear to have all of the elements until the applicant explains why that is not the case. A reference might be ambiguous as to whether a particular element is present. Don’t you think it would be reasonable for an examiner to want to see such references? And wouldn’t a hypothetical examiner be reasonable in basing a rejection on them?

    the PTO intended it to be objective.

    The “reasonable examiner” standard is objective. All reasonable person standards are objective.

    Recall, if you please, the actual text of new Rule 56. The reference must compel a conclusion that the claim is unpatentable. Who draws that conclusion? The hypothetical reasonable examiner, of course. The new Rule 56 test is still a reasonable examiner test. The only difference is what hypothetical question you ask the hypothetical reasonable examiner to determine whether or not he would have wanted to see the reference.

  71. 45

    IANAE, but, the PTO intended it to be objective. The reference either has all the elements or it does not. End of story.

    What a reasonable examiner might consider to be relevant is not supposed to part of the analysis.

  72. 44

    IANAE, your answer is a non answer.

    Ned, your question was a non-question. Once you say that it is an “objective standard”, you presuppose that you are talking about the hypothetical “reasonable examiner”. The standard can’t be objective otherwise. Once you start discussing what real examiners would do, that’s a subjective standard. A real examiner might well make a rejection a reasonable examiner would never make, or vice versa, which is the point I was trying to communicate through snark.

    Same goes for obviousness itself. It’s an objective standard that has everything to do with the hypothetical “reasonable” person skilled in the art. It has nothing to do with what real people who work in that art would do. If it did, everything obvious would also be anticipated.

    If you truly don’t understand what objective legal standards have to do with their corresponding hypothetical reasonable persons, I honestly don’t know what to tell you.

  73. 43

    IANAE, your answer is a non answer. You have no explanation whatsoever, do you? You just prefer to prance and preen like ja*k a*s. Why anyone tries to engage you in any kind of serious discussion is beyond me.

  74. 42

    The impact of U.S. IC and its ambiguities extends far beyond just the published appellate decisions.
    Just as one example, a few years ago, in a professional committee telecon, the then-CPC of a major auto company indicated that the majority of recent patent suits against his company had been settled before trial primarily due to developing an IC defense.
    Although this and various other published cases deal with the conduct of the prosecuting patent attorney or agent, information known to the inventor(s) but not disclosed to their attorney or agent for PTO disclosure is often far more material for IC.

  75. 41

    I have no idea how this relates to the reasonableness of the examiner.

    Call me the next time you get a 103 rejection from an unreasonable examiner. I’ll explain the difference.

  76. 40

    Ned

    I am not so keen on bright line rules. But if prima facie invalidity only arises from the undisclosed reference in combination with other references, then I think it would be better to pursue the straightforward invalidity attack, and that inequitable conduct in general should not be invoked.

  77. 39

    In order to present a prima facie case of unpatentabilty, the examiner must demonstrate that all elements of a claim are in the prior art

    Somebody gotta tell the examiners – Iza get too many that fail this standard (like, every first action).

  78. 38

    IANAE, I still do not understand your reasoning. In order to present a prima facie case of unpatentabilty, the examiner must demonstrate that all elements of a claim are in the prior art. It is an objective standard. I have no idea how this relates to the reasonableness of the examiner.

  79. 37

    Congress has seen fit not to allow an opposition procedure. This would be a procedure by which interested parties could address the patentability of a patent in view of prior art before the same has issued

    Kenneth,

    Do you mean like 37 CFR 1.99:

    § 1.99 Third-party submission in published application.

    (a) A submission by a member of the public of patents or publications relevant to a pending published application may be entered in the application file if the submission complies with the requirements of this section and the application is still pending when the submission and application file are brought before the examiner.

  80. 36

    Paul, good point there. I take it, then, that you would not agree with the current rule 56 to the extent it could extend to combinations.

    Rule 56: “1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim….”

  81. 35

    Malcolm:
    Your statement about the veritable tidal wave is misplaced.

    Actually, it’s sarcasm.

  82. 34

    And as a very final exposition on this problematic area of law I ask all to consider this logic. Congress has seen fit not to allow an opposition procedure. This would be a procedure by which interested parties could address the patentability of a patent in view of prior art before the same has issued. In other words, a quick procedure by which it could be determined whether the best prior art had been examined by the USPTO.
    Additionally, Congress has seen fit to establish both Ex parte and Inter partes re-examination procedures. Both of these procedures may be invoked only upon showing that prior art exists that would render the claims unpatentable. If Congress has take such a restrictive approach to post examination challenges to patents there is absolute no logic to the belief that a murky standard, the Constitutionality of which is specious at best may be invoked by an Article III court to undermine the enforceability of a patent. This makes absolute no sense. The patent act has been amended numerous times since 1953 and not one of those acts have the Rule 1.56 been brought up or the had Congress indicated that patents should be give less deference of enforceability. There are numerous reasons for this, International Treaty obligations for one and political forces are the other. The “roll of the dice” that a patent owner takes when litigating a patent that is generated by the current free willing system of destroying the value of patents based upon inequitable conduct does violence to Congress’s ability to satisfy the treat obligations of the United States, and Separation of Powers Doctrine. Congress and the President have made clear upon what grounds the enforceability of a patent can be undermined. The current system of inequitable conduct does not reflect those grounds.

  83. 33

    However, I must say the that USPTO is arguing for nothing more than the status quo. Rule 1.56 is an incorrect reading of the SCOTUS precedent which stands for nothing more that Common Law Fraud must be shown in order to invalidate a patent. Morevoer, if Rule 1.56 is adopted then the Court will be doing nothing more than that which was forbade in the Glaxo Smithkline case, the courts would be allowing the USPTO to establish a substantive by which a patent could be held invalid and, as I have said exhaustive before, the Federal Courts have no jurisdication to change the enforceability of a patent unless Title 35 United States Code is not satisfied. Rule 1.56 is not part of Title 35 United States Code and further, Rule 1.56 is a impermissible attempt by the USPTO to establish a substantive rule in violation of the powers granted it by Congress, but hey that’s just my opinion.

  84. 32

    I very much appreciate the candidness of the USPTO’s position. For the first time in years I believe there is harmony between the USPTO’s position and the patent bar. I thank those at the USPTO for the brief.

  85. 31

    Malcolm:
    Your statement about the veritable tidal wave is misplaced. The allegations that some judges employ IC as a means of case disposal without the rigors of having to adjudicate the issues of infringement are serious and should not be overlooked. The dignity of the courts must be maintained. Otherwise you get what is happening in Arizona, several common law Sheriffs ignoring the order of a Federal Judge.

    I think it would be very educational to undertake a statistical analysis of the technical background of all District Court judges and then a breakdown by judge of the patent cases adjudicated and the issue upon which the casses were disposed. With such an analysis the scandalous allegations that some judges employ IC as a quick and painless means of disposing of patent cases can be shown as pure sophistry.

    Does anyone know if this statistical analysis has been undertaken. Come on Professor Dennis, you are great at statistics. Why don’t you take on this analysis.

  86. 30

    Paul Cole The only viable standard for an inequitable conduct reference is anticipation or very clear and blatant obviousness. Anything more falls within the area where the outcome is uncertain and where picking out one reference rather than another is a matter of hindsight.

    Not sure I entirely agree with Paul’s proposition on its face. But in practice, this is the way it works nearly every single time.

  87. 29

    As I have said to a number of audiences in the US on an number of occasions, there is NO standard of inventive step because the decision in Graham v John Deere and the need to decide each case according to the evidence precludes one. The situation under UK domestic law is precisely the same.

    The only viable standard for an inequitable conduct reference is anticipation or very clear and blatant obviousness. Anything more falls within the area where the outcome is uncertain and where picking out one reference rather than another is a matter of hindsight.

    Anything much more than outright anticipation is therefore clearly unworkable. If anyone doubts that, please advise what the US test for inventive step actually is (I have been an enthusiastic student of inventive step for nearly 40 years and cannot tell YOU).

    If materiality is the standard, everything is material and nothing is material. It all depends on the evidence, which is not available during prosecution.

    The document heaps do not help much and by their very nature are incapable of helping much. Still less can an overworked prosecution attorney on a tight budget realistically decide what is material and what is not. It is to be greatly hoped that the CAFC will come up with something sensible and then STICK TO IT.

  88. 28

    Part (1) is recognizable as the “but for” standard.

    It is nothing of the kind. We’ve discussed this to death. Even the PTO knows it – read the brief. Part (1) is a codification of the reasonable examiner standard, as it is understood by the people who employ all the examiners.

    A prima facie case of unpatentability is not the same thing as actual unpatentability. And even if it were, it wouldn’t be the same thing as a clear and convincing case of unpatentability. When you get to court, those three cases correspond respectively to (a) prima facie invalid, (b) would/should not have issued but for the art, and (c) held invalid. Case (b) is where your patent is held unenforceable because a sane jurisdiction would have held it invalid, and case (a) is where your patent is held unenforceable because you tried to put one over on the PTO.

    From a semi-random sampling of these briefs, it appears to me that all the lawyers and patent owners want the most stringent and objective possible test, so that everything is valid and nobody gets into trouble, and the PTO wants applicants to use their brains and submit only what’s actually of interest to the examiner. I think the PTO should get its way.

  89. 27

    A reasonable examiner wants to see a handful of the closest references and a brief indication of why each one is material.

    A momentary faux pax (and a repeating one from my idol – it’s a good thing to have flaws as it keeps such things as idol worship in check) – We have seen what the Office really wants in light of a “reasonable examiner” in the claims and continuations rules – the Office wants someone other than the examiner to do the bulk of the examination.

    Come to think of it, this side of the patent bar has a similar concept of getting paid while someone else does the bulk of the work – we call them associates.

  90. 26

    IANAE, Rule 56: “1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

    (2) It refutes, or is inconsistent with, a position the applicant takes in:

    (i) Opposing an argument of unpatentability relied on by the Office, or

    (ii) Asserting an argument of patentability.

    Part (1) is recognizable as the “but for” standard. Part (2) has no requirement at all for materiality that I can see. All that is required is set forth in the rule. Any lie will do, no matter how immaterial.

  91. 25

    do you think the PTO is trying to eliminate “materiality” from consideration when there are misreprenstations?

    I don’t. My first clue was when I read in the PTO brief that “[t]he single proper standard for materiality should be Rule 56”.

    What PTO brief are you referring to, by the way?

  92. 24

    IANAE, do you think the PTO is trying to eliminate “materiality” from consideration when there are misreprenstations?

  93. 23

    Back to the PTO brief, it repeatedly argues that it, the administrative agency, knows best what standard of disclosure and conduct of attorneys is needed to properly examine patents and that the Feds. should defer to its expertise.

    Funny, then, that the PTO and everyone else decries the “reasonable examiner” standard as unworkable for whatever reason. Probably because it contains dangerously high levels of straw.

    What the PTO really wants is a reasonable examiner standard that is actually reasonable. Everybody knows that a reasonable examiner doesn’t want to see a 2000-reference IDS. A reasonable examiner wants to see a handful of the closest references and a brief indication of why each one is material. A reasonable examiner probably wants to see the closest prior art whether or not it actually invalidates the claims. We reason with examiners for a living, and it shouldn’t be too hard for judges to be reasonable in applying the standard.

    The PTO’s brief even argues that the new “clear and straightforward” Rule 56 was an attempt to codify what art a reasonable examiner wants to see. However, since the PTO takes care to distinguish Rule 56 from the “but-for” standard, I don’t agree that its brief “argues for Rule 56’s ‘but for’ standard” on any facts.

  94. 22

    Back to the PTO brief, it repeatedly argues that it, the administrative agency, knows best what standard of disclosure and conduct of attorneys is needed to properly examine patents and that the Feds. should defer to its expertise.

  95. 21

    IANAE, “The PTO also pointed out that the but-for test (requiring invalidity as an element of inequitable conduct) would both encourage wanton misconduct and make the doctrine essentially pointless at trial.”

    I was struck by that too — but the argument was made in the context of arguments made to the PTO that amounted to lies. I agree that “but for” should not apply here. But the brief fails to some extent by not clarify the issue a bit more.

    It seemed to me that when the issue was simply non disclosure of references, the brief argues for Rule 56’s “but for” standard.

    What say you, IANAE?

  96. 20

    not only does the current administration … significantly and negatively impact PTO operations, but it also prevents the PTO from doing anything about it by rule.

    Pity the PTO didn’t float that argument in the Tafas and GSK cases.

    The PTO also pointed out that the but-for test (requiring invalidity as an element of inequitable conduct) would both encourage wanton misconduct and make the doctrine essentially pointless at trial.

  97. 19

    I haven’t read the PTO brief yet; but they should have mentioned that not only does the current administration of the duty of disclosure by the Fed. Cir. significantly and negatively impact PTO operations, but it also prevents the PTO from doing anything about it by rule. For example, the Feds. for two decades now have ignored the 1992 amendment to Rule 56 — an amendment designed to clarify what had to be disclosed along the lines of the “but for standard.” The PTO could literally ban submitting all searchable references; but I suspect the Feds would simply overrule such a rule by ignoring it.

    The extent of judicial interference in the procedural affairs of the PTO has all but reached constitutional proportions; but it is up to the government and the Attorney General to make that call. Perhaps they are keeping their powder dry at this point for some reason, hoping for a good en banc result. But at some point, they should consider asking the court to allow them to brief this issue.

  98. 18

    “There is no consensus for getting rid of inequitable conduct. That is a lost cause.”

    Paul,

    I understand the “no consensus” but I don’t necessarily agree it’s a “lost cause.” I’m a member of AIPLA and I’m sure what you heard was the “litigator’s” point of view. Sure, they don’t want their “sugar daddy” to go away.

    But there are enough of us patent prosecutors who are members of AIPLA who would be delighted if IC were “toast.” I do agree it’s going to take time to move this thought forward, and I’m not opposed to getting there by incremental steps. But if we’re going to render sanity out of this morass (and not bankrupt litigation budgets), IC as it’s now interpreted by the courts in the States has got to eventually go.

  99. 17

    EG: There is no consensus for getting rid of inequitable conduct. That is a lost cause. I have made this suggestion once at an AIPLA question and answer session and have no intention of repeating that experience.

    So the most we can hope for is workable rules applied consistently.

    Max: The district courts are non-specialist but there are specialists at the CAFC. If that court keeps to the same line, then there may be progress. If it changes the rules from one panel to another and from one case to another, then chaos will continue.

  100. 16

    Randy’s whine : The allegation of inequitable conduct . . . even offers the trial court a way to dispose of a case without the rigors of claim construction and other complex patent doctrines. This court has even observed a number of cases, such as this one, that arrive on appeal solely on the basis of inequitable conduct where the trial court has apparently elected to try this issue in advance of the issues of infringement and validity. See, e.g., Frazier v. Roessel Cine Photo Tech, Inc., 417 F.3d 1230 (Fed. Cir. 2005); Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 204 F.3d 1368 (Fed. Cir. 2000).”

    Wow! Two cases over a ten year period. BOO HOO HOO HOO HOO!!!! A veritable tidal wave of examples.

    Give us a break, Randy. And let’s look at those cases, shall we?

    In Frazier the Federal Circuit unanimously upheld a finding of inequitable conduct based on the intentional submission of a video that was supposed to have been shot with the claimed invention (a lens) but wasn’t. This was a slam dunk case.

    Likewise, in Semiconductor, the Federal Circuit unanimously upheld a Distric Court’s finding that the submission in an IDS of a partial translation of a highly material prior art reference accompanied by a misleading summary of the reference was inequitable conduct. Nothing surprising about this (and there was more on top of that).

    Remember, Randy Rader — a grown man who lives on earth — believes that scientists would never lie to the USPTO because it would damage their reputations. He is one of the least credible people on earth when it comes to understanding inequitable conduct and its impact on our patent system. One would expect that if Randy’s “evidence” was presented to the Federal Circuit as evidence that inequitable conduct law needed to be changed, that the Federal Circuit was laugh at that evidence and point out that the evidence itself is misleading, just as I have done here.

  101. 15

    “It will therefore not be enough for the Federal Circuit to put its collective thinking cap on and propound some workable rules for inequitable conduct: it will also be necessary to stick to those rules once propounded and apply them consistently in all subsequent cases so that the law becomes settled and practitioners know where they are.”

    Paul,

    Concur completely. In fact, we would do better here in the States to simply dump the inequitable conduct doctrine as it now stands (would likely require legislation) and simply have the “fraud on USPTO” standard enunciated by SCOTUS in Precision Instruments (and others) for truly “egregious” instances of misrepresentation. The current doctrine of inequitable conduct simply distracts everyone from the merits (or lack thereof) of the claimed invention, and whether (or not) there’s infringment. It would definitely make patent litigation less expensive yet leave plenty of other defenses to infringement/validity in place.

    The ROW, including the EPO, gets along without any such doctrine, and I see no reason why we can’t get along without the doctrine of inequitable conduct in States. In fact, someone from the States many years ago once asked why the EPO hadn’t adopted the “duty of disclosure” obligation of the USPTO. The simple answer: the EPO applicant can get as good (or as bad) an EPO patent as they so choose. Need I say more?

  102. 14

    Innocent question for Dennis (and any others who have an informed opinion):

    Is it fair use under Title 17 U.S.C. to reproduce the entire District Court opinion from Westlaw’s F. Supp. 2d? (I don’t mean to be ungrateful, thanks for the link. It’s just that I’m not sure if your link satisfies fair use, even though West’s copyright is undoubtedly very thin–as far as I know, it should only extend to headnotes and arrangement of text.)

  103. 13

    Paul, the EPO is a category all of its own. Its Boards of Appeal rustle through about a thousand Decisions a year. These are Final Decisions; unappealable. End of story.

    The Boards do patent cases, and nothing else at all. The 24 Boards vie with each other to lay down the best line of legal logic. Any slight slippage from complete patent law rigour, in any single decision from any particular Board, is mobbed by the “interested circles” in 38 Member States.

    Can the USA, a common law jurisdiction running the “Binding Precedent” software, come anywhere close to the EPO’s almost Darwinian evolution of its caselaw? I doubt it, at least while the Precedents that are the most Binding are laid down by judges who are not experienced in patent litigation and so cannot imagine the practical consequences of their seminal Decisions.

  104. 12

    “how temptingly easy it is for a judge to dispose of an entire messy patent case by an IC holding

    Huh?

    Posted by: Malcolm Mooney | Aug 09, 2010 at 01:13 AM”

    Bulls–t, Malcolm, you know better. Here’s a prime example illustrating {Thocu’s point:

    Aventis Pharma S.A. v. Amphastar Pharms., Inc., 525 F.3d 1334 (2008). At 1349-50 of Judge Rader’s dissenting opinion, he explains:

    “The allegation of inequitable conduct . . . even offers the trial court a way to dispose of a case without the rigors of claim construction and other complex patent doctrines. This court has even observed a number of cases, such as this one, that arrive on appeal solely on the basis of inequitable conduct where the trial court has apparently elected to try this issue in advance of the issues of infringement and validity. See, e.g., Frazier v. Roessel Cine Photo Tech, Inc., 417 F.3d 1230 (Fed. Cir. 2005); Semiconductor Energy Lab. Co. v. Samsung Elecs. Co., 204 F.3d 1368 (Fed. Cir. 2000).”

  105. 11

    Particularly relevant to this entire issue is a gross legal fiction that no one seems to want to discuss. USPTO examiners simply to not have the examination time to read the lists of references cited by applicants in application files. The few hours they have available for all aspects of application processing are a matter of public record. Yet, farcically, just having such unread references listed or not is determinative of whether or not they can be used for IC accusations!

  106. 10

    Re the responses to my third comment above about why IC should additionally be more carefully considered because it is so inherently tempting for reducing judical workloads: (1) That was not limited to D.C. judges, and (2) additionally because it disposes of ALL claims, even if only relevant to one claim, and only requiring limited analysis of that one claim versus one item of alleged [even partial] prior art not of record.

  107. 9

    The problems with the present system of inequitable conduct are discussed in many briefs. Perhaps that of the USPTO should be singled out because it is that agency which is given the task of granting and examining patents. Their brief explains in its introduction the following:

    “Over the years, this Court’s case law has developed multiple formulations for
    the materiality and intent prongs of inequitable conduct, causing the doctrine to be unclear… The various formulations coupled with the seventy of the sanction of unenforceability has led patent applicants with some regularity to minimize their exposure to material information by avoiding prior art searches, or to submit to the agency large numbers of prior art references of questionable materiality. Neither practice helps to further the agency’s mission, but instead harms the effectiveness of the examination process.

    Apart from the problems caused by multiple standards, inequitable conduct
    appears to be alleged in patent litigation all too often. By one account, inequitable conduct is raised in approximately 80% of ALL the patent cases. Chief Judge Rader explained: “The allegation of inequitable conduct opens new avenues of discovery; impugns the integrity of patentee, its counsel, and the patent itself; excludes the prosecuting attorney from trial participation (other than as a witness); and even offers the trial court a way to dispose of a case without the rigors of claim construction and other complex patent doctrines.” The PTO appreciates that these problems have far-reaclung consequences not only for patent litigants but also the courts.”

    The following quote can be singled out from the detailed arguments:

    “Because applicants are unclear what information to submit to the PTO, they
    all too often file mounds of information with questionable materiality without any indication which ones or parts of the references were most relevant. The agency has seen an increasing trend of applicants “dumping” references on patent examiners in just the past five years. While this practice
    occurs in only a minority of the several hundreds of thousands of applications filed every year, it nevertheless has resulted in a dramatic increase in the mean average of submitted references, akin to raising the ocean’s temperature by a few degrees. This flood of information strains the agency’s examining resources and directly contributes to the backlog.”

    It is comforting to see in print points that practitioners in Europe have been making for years, if not decades.

    It is hoped that the Federal Circuit will respond to the briefs by giving effect to their consensus and propounding a workable test.

    But will that be enough?

    The EPO is a hybrid civil/common law jurisdiction. But the very first Appeal Board decision put forward technical problem as the key to patentability and since then it has adhered to PSA with flinty consistency for over 30 years. The late Judge Peter Ford who before he was appointed a UK judge was a member of the EPO Appeal Board for many years told me that if there was a relevant character trait which can be classified as Germanic it is not the elucidation of the technical problem test but when that test had been elucidated the determination to apply it consistently and to all circumstances where it is appropriate. In contrast, in the US which is purportedly one of the home of the doctrine of judicial precedent, there appears to be no rule of law propounded in one decision that cannot be questioned, reviewed and fundamentally altered in the next case, irrespective of the identity of the court within the judicial hierarchy and the stature of the judges who propounded the earlier rule.

    It will therefore not be enough for the Federal Circuit to put its collective thinking cap on and propound some workable rules for inequitable conduct: it will also be necessary to stick to those rules once propounded and apply them consistently in all subsequent cases so that the law becomes settled and practitioners know where they are. Surprisingly this seems easier in the partly “civil law” system of the EPO than it is in the common law system of the US.

  108. 7

    I agree with Mooney here. Not many judges will grant SJ on IC because it involves intent and credibility. Frequently it is the last thing decided before entry of summary judgment. So it isn’t a vehicle for avoiding other issues at all. It currently is sufficiently squishy that it may provide a vehicle for a judge to grant a defense verdict in a case or with a patent he/she thinks is a bit stinky.

  109. 6

    Malcolm,

    What Thocu suggests is very real. Many district judges are terrified of patent cases, especially the technology (they certainly are in the SD Ohio where I am). Inequitable conduct is much more easy for a technologically-challenged judge to grasp compared to understanding biotechnology, organic chemistry, etc. Again, that’s the reality.

  110. 5

    how temptingly easy it is for a judge to dispose of an entire messy patent case by an IC holding

    Huh?

  111. 3

    The ABA brief does a good job of explaining how much higher the IC standards were in the Supreme Court cases on which the doctrine is based.
    I do wish this and other briefs had also noted some of the logical fallacies in the “intent-implied-from-materiality-level” theory in many situations. Just as one example, where the later-assumed high-materiality is text buried deep within one of numerous patent specifications, but the application preparing and prosecuting attorneys did not ever even see that text before the trial, or, did not understand it due to not being a real expert in that particular complex technology [as is now often the case]. There is no logical connection at all between materiality and intent in such cases.
    Nor would adding many thousands of dollars for extensive art expert prior art searches for half a million patent applications a year be economically rational when less than 3000 a year are litigated. Furthermore, if the PTO would conduct their reexaminations with their statutorily required “special dispatch” many claim invalidity and IC trials could be avoided.
    Some discussion would also be appropriate of why IC findings should be particularly critically viewed, in view of how temptingly easy it is for a judge to dispose of an entire messy patent case by an IC holding as compared to claim by claim validity and infringement analysis.

  112. 1

    I read the “22 Patent Law Firms” brief [in surprise that that so many could agree]. It helpfully focuses on the fact that the PTO prosecuting attorney is the one that suffers by far the worst personal-professional consequences of an IC allegation, yet has the least legal opportunity to defend himself or herself.
    [They should have additionally cited cases like Katon’s in which he was not even told about the trial of a patent he had prosecuted, much less provided so much as a single deposition opportunity to defend himself.] [Personally I think that should be an ethics issue for trial counsels.]

Comments are closed.