En Banc Federal Circuit Arguments in TheraSense and TiVo: Update

By Jason Rantanen

Update: Binal Patel from Banner & Witcoff was kind enough to provide Patently-O with a transcript that the firm prepared of the TheraSense oral argument.  It can be obtained here: Download Therasense v Becton – transcription

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Today the en banc Federal Circuit heard arguments in TheraSense v. BD and Bayer (Inequitable Conduct) and TiVo v. Echostar (post-injunction infringement proceedings).  Audio of both arguments is now available via the Federal Circuit's website, and Bruce Wexler of Paul Hastings has written a summary of the TheraSense argument.

94 thoughts on “En Banc Federal Circuit Arguments in TheraSense and TiVo: Update

  1. Congress can. Congress will.

    Have you seen the Congress? Do you really think that they will get out of their own way and be able to pass legislation to that effect?

    Not likely.

  2. “Um, they actually have already explicitly ruled on this – ya can’t make the applicant do that.”

    Courts can’t. Congress can. Congress will.

  3. NWPA,

    My main man is just too slippery for you – ya note the clever way that he slipped in that applicants have to submit art they know of and made it sound like a Rule that they have to actively search and document the state of the art? That be some serious slickness.

    He did slip though at the notion that the courts are goin to make applicants do the examiners job (as in the Tafas reference):

    An applicant does not to pro actively look for or organize the prior art for the examiner.

    Only because the court hasn’t explicitly said so yet

    yet…? Um, they actually have already explicitly ruled on this – ya can’t make the applicant do that. Too bad, so sad. Ya can tell the misstep by the rather clumsy Duh-I-don’t-understand-what-you-are-saying response. Pretty much a give-away that my man has nothin to say (let’s just take it as a – p u n t).

  4. And yet you can’t seem to make up your mind about a type of claims that is strictly equal to Beauregard claims from a 101 or 103 perspective, because you refuse to accept it as valid and you can’t think of a convincing reason not to like it that doesn’t apply as equally as to Beauregards.

    Go on then, think about it some more. I won’t rush you.

  5. elmer: Morrie got real excited when I mentioned going around the Perimeter. So excited he hung up on me. I thought he left because he knew about the Blue Eyed baby. but he too had the good sense to leave the good Ship Lollypop.

    You should totally hook up with our Sarah McPherson.

  6. Don’t be ridiculous. I am not a policy no integrity sub-human.

    And yet you can’t seem to make up your mind about a type of claims that is strictly better than Beauregard claims from a 101 or 103 perspective, because you refuse to accept it as valid and you can’t think of a convincing reason not to like it that doesn’t apply to Beauregards.

    Go on then, think about it some more. I won’t rush you.

  7. >>Until you can think of an argument that only >>excludes gene patents, you mean.

    Don’t be ridiculous. I am not a policy no integrity sub-human.

    Glad to hear all that IANAE. Well almost all that.

  8. I am in favor of patents and am strongly pre-disposed to not excluding areas from 101.

    Until you can think of an argument that only excludes gene patents, you mean.

    I’m also in favor of patents and also strongly pre-disposed to not excluding areas from 101. I’m not even against software claims, I just want the claim to be to the actual invention. Why do you think I’m against patents just because I’m against the bad ones? That’s like saying someone is soft on crime just because he wants the innocent to go free.

    Has only to do with preventing fraud not whose burden it is to apply and find prior art.

    Nobody ever said the applicant has any obligation to find or apply prior art. What are you on about?

  9. >>”unenforceability”

    Has only to do with preventing fraud not whose burden it is to apply and find prior art.

  10. >Or maybe you’re still waiting for that one >perfect argument that kills the patents you >dislike for policy reasons, and upholds the >patents you love for policy reasons

    That is how you think not me. I am in favor of patents and am strongly pre-disposed to not excluding areas from 101.

    Glad you admit that it is the PTO’s burden to apply and find the prior art and the applicants only obligation is to disclose material prior art that the applicant is aware of. That should end a lot of arguments. Please tell MM to adopt this as well.

  11. Good luck finding a case where inequitable conduct was found on circumstances that were not objectively suspicious just because the fact finder disagreed with the patent agent.

    I think that’s what the patentees in Therasense, McKesson, and other cases would argue happened to them.

    The point is that, if they disagree with you on materiality, they’re going to find your act to be objectively suspicious. Your memo won’t help.

  12. Right. Just because you’re paranoid, that doesn’t mean they’re not out to get you.

    This must be why companies don’t want to pay so much for lawyers. They seem to spend all their time avoiding malpractice suits instead of exercising their well-honed and very expensive judgment to do what’s best for the client and his patent.

  13. That’s only because nobody ever documents their reasons for withholding a reference

    If a finder of fact believes you intentionally deceived the patent office, they will view your memo as merely part of the overall scheme. Documenting your decision won’t help you.

  14. Good luck looking for a fact finder who thinks you were reasonable in withholding a reference that the fact finder believes is material.

    That’s only because nobody ever documents their reasons for withholding a reference, because (1) most agents routinely dump in everything they know of, and (2) the actual cases of inequitable conduct involve withholding references for reasons that are best left undocumented. Good luck finding a case where inequitable conduct was found on circumstances that were not objectively suspicious just because the fact finder disagreed with the patent agent.

    On the basis of cumulativeness? I don’t think so.

    On the basis that they are not more relevant than the art we’re disclosing. Which is really the same thing as “cumulative”, except that “cumulative” allows you to make finer distinctions than “so irrelevant they’re not worth reading” and “so scared of inequitable conduct that they’re not worth reading”.

    So why don’t we filter out references for cumulativeness? It’s not “because of the case law”, because the case law makes it abundantly clear that it is an acceptable practice. It’s because we’re scared of litigators, but litigators aren’t going to go away because either (1) the law of inequitable conduct changes, or (2) your IDSes are really, really long. You might as well wear a charm around your neck that keeps litigators away, for all the good it will do.

  15. Ah, but being reasonable-but-wrong is not grounds for unenforceability. Pretty sure that’s in the case law somewhere.

    Good luck looking for a fact finder who thinks you were reasonable in withholding a reference that the fact finder believes is material. Your testimony that is supposed to convince them about your belief that it was cumulative will ring hollow. After all, if THEY know its material, you did too and you’re just lying to them now on the stand.

    So it’s not really the case law that requires dumping references, it’s the fear of encountering an irrational judge or three

    Actually, it’s the fear that, if a litigator can convince a fact finder that a reference is material, it’s easy to further convice the fact finder that your deliberate withholding of the reference was done with deceptive intent. And your testimony about the allegedly cumulativeness won’t be credible.

    We deliberately withhold references all the time.

    On the basis of cumulativeness? I don’t think so.

  16. anon: No. But it will prevent any such allegation succeeding for the references that were cited in an IDS.

    True, but it’s not like a litigator will ever stop looking till he finds something you haven’t cited. And all it takes is one.

    anon: I absolutely think it could be rendered unenforceable, especially if the fact finder disagrees with your cumulativeness conclusion.

    Ah, but being reasonable-but-wrong is not grounds for unenforceability. Pretty sure that’s in the case law somewhere. So it’s not really the case law that requires dumping references, it’s the fear of encountering an irrational judge or three.

    anon: And I’d rather be in a situation where I missed one, as opposed to deliberately withholding one.

    We deliberately withhold references all the time. It’s just a question of how far they have to be from your claims before you’re willing to do it. Suppose you have one client who makes ballpoint pens and another who makes semiconductors. You’re obviously not going to cross-cite art from one client’s applications into the other client’s applications, even though you’re aware of it and even though you generally think that citing more is better. And you don’t even read the prior art before making that decision, so it’s theoretically possible that you might be missing something material.

    We’re really talking about where to draw the line. Wouldn’t you rather have an actual reason for why you drew it where you did? If you have no explanation for disclosing the art you did disclose, what explanation could you possibly have for withholding the art you withheld? “So, Mr. anon, since you disclosed everything else you’ve ever seen, isn’t it suspicious, then, that you withheld this particular reference that turns out to be material?”

    NWPA: You dodged the big issue. Is it the PTO’s obligation to find and apply the prior art of the applicants?

    I didn’t dodge anything. I addressed the issue, and it’s not the first time I’ve addressed it either. It’s the PTO’s job to find and apply prior art, and it’s also the applicant’s job to disclose prior art of which he is aware.

    NWPA: If you want to shift the burden, then there should be legislation to shift the burden and debate about it.

    I guess the word “unenforceability” in the statute doesn’t count as legislation?

    NWPA: attacks Beauregard claims for grounds that would invalidate gene patents.

    You think I think there are reasons to invalidate gene patents? It’s a good thing you’re so strongly predisposed to disagreeing with everything I say, or you’d have made up your mind about them by now. Or maybe you’re still waiting for that one perfect argument that kills the patents you dislike for policy reasons, and upholds the patents you love for policy reasons, but gives you a way to do it without relying on the policy reasons that you’ve been so vocal against.

  17. IANAE: >>Someone with a touch of integrity would apply >>the same law to both, and see what happens.

    You dodged the big issue. Is it the PTO’s obligation to find and apply the prior art of the applicants? If you want to shift the burden, then there should be legislation to shift the burden and debate about it.

    I do intend to apply the same law to gene patents. I simply haven’t made up my mind yet. I like to mull these things over and read before deciding. I have been pointing out that your policy–lack of integrity–thinking attacks Beauregard claims for grounds that would invalidate gene patents.

  18. Do you think disclosing every single reference in an IDS will prevent the defendant from pleading inequitable conduct and deposing you?

    No. But it will prevent any such allegation succeeding for the references that were cited in an IDS.

    Do you think a patent would really be invalidated for inequitable conduct if you weeded out cumulative references competently, without deceptive intent, and for a well-documented reason?

    I absolutely think it could be rendered unenforceable, especially if the fact finder disagrees with your cumulativeness conclusion. All your testimony about weeding out a reference, which they believe is material, for the good of the examiner will make you lose credibility. Losing credibility on materiality won’t help you when they assess your deceptive intent.

    Do you think that submitting everything without reasons or analysis increases or decreases the risk of a finding of inequitable conduct if you accidentally miss one?

    No. But it will prevent IC allegations succeeding for the references that were cited in an IDS. And I’d rather be in a situation where I missed one, as opposed to deliberately withholding one.

  19. You just refuse to get that the USPTO has to be the one that is the expert and has to be responsible for what prior art to apply to a reference.

    I get that. It’s not inconsistent with the fact that the applicant is the one responsible for disclosing material art of which he is aware.

    Try to get some integrity.

    You mean, stop thinking about what I put in my IDSes?

    An applicant does not to pro actively look for or organize the prior art for the examiner.

    Only because the court hasn’t explicitly said so yet. But to my mind, it’s the most logical way out of this silliness of flooding the PTO with cumulative art while maintaining a duty of candor.

    You simply are one of the people that have no integrity and seem to feel that is fine to get your policy objective achieved. Disgusting human being.

    Says the guy who is absolutely unequestioningly certain that Beauregard claims are clearly valid because computers are shiny, but reserves judgment on gene claims until he can think of a reason why they should all be invalid. Someone with a touch of integrity would apply the same law to both, and see what happens.

  20. IANAE: You just refuse to get that the USPTO has to be the one that is the expert and has to be responsible for what prior art to apply to a reference.

    You can’t off-load that responsibility to the applicant as you wish to. That simply is not the way the USPTO was created.

    Try to get some integrity. Try. If you disagree with my statement above then that is an issue we could discuss, but your endless yapping about this is mindless. The issue is simple: whose responsibility is it to examine an application? And whose responsibility is it to apply the prior art? An applicant does not to pro actively look for or organize the prior art for the examiner.

    You simply are one of the people that have no integrity and seem to feel that is fine to get your policy objective achieved. Disgusting human being.

  21. That’s rational behavior under current case law.

    Why is it rational behavior under current case law?

    Economically, I get it. It’s cheaper not to read all the references.

    But what does the case law have to do with it? Do you think disclosing every single reference in an IDS will prevent the defendant from pleading inequitable conduct and deposing you? Do you think a patent would really be invalidated for inequitable conduct if you weeded out cumulative references competently, without deceptive intent, and for a well-documented reason? Do you think that submitting everything without reasons or analysis increases or decreases the risk of a finding of inequitable conduct if you accidentally miss one? And are your answers to any of those questions “rational” or based on case law?

  22. Malcolm

    “Right. That’s why it’s routine for applicants to file 100,000 references, which is just a tiny fraction of the “potentially material” references that exist. And it’s impossible to determine if they are cumulative. Maybe file 200,000 then.”

    The difference is my client and I are not responsible for any reference we never have in our possession.

    Do not blame the practitioner, blame the CAFC. I am NOT going to decide whether a reference is cumulative 99% of the time. If there are 5 patents and 4 are divisionals of the first, I can make that decision (depending upon what the claims are in each). However, for patents that are not part of the same family, forget it. I am submitting everything arguably relevant to the patentability of the current application without any consideration of cumulativeness.

    That’s rational behavior under current case law. Your inability to accept that strongly suggests you have had little to no prosecution experience, or if you did, it was at least 30 years ago.

  23. How about requiring applicants to submit a particularized statement of the relevance of each reference, or charging a per-reference fee (and giving the examiner more time) if the IDS is too long?

    Easy – see Tafas.

  24. Ned: Presumably, the broader claim is not asserted because the patent owner knows that the claim is invalid.

    Possibly, but possibly the patentee wants to simplify matters for the jury while at the same time asserting the narrowest clearly-infringed claim just to be safe. If claim 6 says “wherein said fastener is a bolt” and the defendant clearly uses bolts, what’s the harm in not asserting claim 1?

    I don’t believe the defendant necessarily has a right to litigate unasserted claims, except by attacking the patent as a whole. I might be persuaded, but not by the argument that presumably the patentee knows it’s invalid. As long as nobody is threatened with infringement of the broader claim, there’s no case or controversy.

    Ned: After all, the patent applicant has a duty not to file or maintain claims he knows are unpatentable over prior art. If he violates said duty, screw him.

    We want that art before the examiner, so that he can (theoretically) make that determination before some innocent business owner gets dragged into court over it. An ounce of prevention, and all that.

    I wouldn’t mind a cap of 50 or so total prior art references, but there might be other ways to go about it. How about requiring applicants to submit a particularized statement of the relevance of each reference, or charging a per-reference fee (and giving the examiner more time) if the IDS is too long?

    Ned: But this of course, would require that the court first find the patent invalid over art of which the applicant was aware.

    I keep telling you, (1) art can be material even if it’s not invalidating, and (2) material art before the examiner can change the scope of the claims even if the claims are not amended.

    It’s more important to strongly encourage conduct that places the art before the examiner in a meaningful way than it is to “sort things out” at great expense in litigation. It’s not a good answer to grant ‘em all and let the CAFC sort ‘em out.

  25. Malcolm: “Right. That’s why it’s routine for applicants to file 100,000 references, which is just a tiny fraction of the “potentially material” references that exist. And it’s impossible to determine if they are cumulative. Maybe file 200,000 then.
    What about my proposal upthread? Just put a cap at 50 references. For a typical patent, I defy anyone to identify 50 “most relevant” references and then find a 51st that is not cumulative or that doesn’t render one of the first 50 cumulative.
    And with respect to litigation, I’ve said it before and I’ll say it again: if the Fed Cir has a problem with trumped charges of inequitable conduct, all they need to is start sanctioning every time they see it and demanding that lower court judges do the same. For some strange reason, they seem reluctant to do this.”

    Malcolm, why a cap of 50? Why not zero?

    After all, the patent applicant has a duty not to file or maintain claims he knows are unpatentable over prior art. If he violates said duty, screw him.

    But this of course, would require that the court first find the patent invalid over art of which the applicant was aware.

  26. Max and IANAE, regarding unasserted claims: if a patent has a broader claim that necessarily is infringed by subject matter that is asserted to infringe, for example when a dependent claim is asserted but the independent claim is not asserted, I would think that there is jurisdiction to adjudicate un-asserted claim. Presumably, the broader claim is not asserted because the patent owner knows that the claim is invalid. I think the patent owner should either disclaim such a broader claim, or seek its re-examination, prior to filing suit, or else face the consequences in court.

    If the problem with the broader claim includes failure to submit known prior art, I think the patent owner should be able to “recover” if the basis for Reexamination, the request, includes this non disclosed prior art.

  27. Kenny,

    It’s like ya have forgotten how to read.

    You say :
    The only defenses to patent infringement are set forth in the code.

    How did you miss this:
    35 USC 282(1) Noninfringement, absence of liability for infringement, or unenforceability

    You do understand the difference between invalid and unenforceable, do you not? You do understand how “unenforceable” can happen, do you not?

    Iza don’t see why ya keep runnin your mouth on this topic – do you enjoy the snickers and snide comments in the Office? Do ya think that that attention is a positive thing?

  28. IANAE:
    The only defenses to patent infringement are set forth in the code. Those defenses are exhaustive, not illustrative. None of them include vilations of 37 CFR 1.56. I am beginning to think that 37 CFR 1.56 is being interpreted as a back door way of increasing funding to the USPTO by pushing USPTO responsibility on the private sector.

  29. As long as that there cap is universal (applying to everyone, from thence forward), Iza think ya might have some buyers. The minute ya limit it only to the applicant, then ya got some serious equity issues to deal with.

  30. For a typical patent, I defy anyone to identify 50 “most relevant” references and then find a 51st that is not cumulative or that doesn’t render one of the first 50 cumulative.

    Here we go again

    Does that anyone include nearly every attorney in the litigation phase Sunshine?

  31. IPboy When answering that, bear in mind that if you ever get into litigation, the defendant’s attorneys will pore over those 150 references that you decided not to send. Since the stakes are now much higher, they will spend far more time on it than your client would have been willing to pay you for. They will pick one or more of these references that they will allege (rightly or wrongly) to be more material than the 350 you did send. And they will accuse you of withholding it intentionally.

    Given that, do you have any real choice but to burden the Examiner with all 500?

    Here we go again.

    Two kinds of patent attorneys: the reasonable ones and the ones who crxp their pants 24/7 and drive up the client’s bills. “It’s too hard to figure out if this reference is cumulative over the previous 499 references.” Really? Maybe you haven’t been doing your job.

    there is NO END to the references that are potentially material.

    Right. That’s why it’s routine for applicants to file 100,000 references, which is just a tiny fraction of the “potentially material” references that exist. And it’s impossible to determine if they are cumulative. Maybe file 200,000 then.

    What about my proposal upthread? Just put a cap at 50 references. For a typical patent, I defy anyone to identify 50 “most relevant” references and then find a 51st that is not cumulative or that doesn’t render one of the first 50 cumulative.

    And with respect to litigation, I’ve said it before and I’ll say it again: if the Fed Cir has a problem with trumped charges of inequitable conduct, all they need to is start sanctioning every time they see it and demanding that lower court judges do the same. For some strange reason, they seem reluctant to do this.

  32. If the client is an academic with 500 references in his literature collection, how long should be spent studying each of them to determine materiality? How much should the client be willing to pay? And how long should the examiner spend studying the pile of 350 references that eventually lands on his desk? How does he or she fit that in with the requirement for speedy disposal of cases?

    When answering that, bear in mind that if you ever get into litigation, the defendant’s attorneys will pore over those 150 references that you decided not to send. Since the stakes are now much higher, they will spend far more time on it than your client would have been willing to pay you for. They will pick one or more of these references that they will allege (rightly or wrongly) to be more material than the 350 you did send. And they will accuse you of withholding it intentionally.

    Given that, do you have any real choice but to burden the Examiner with all 500?

    The only cure lies with the CAFC.

  33. As the US does not have and cannot have a pre-existing standard for unobviousness since as is very clear on the Graham v John Deere test each case has to be determined on the basis of its own facts, there is NO END to the references that are potentially material. If the client is an academic with 500 references in his literature collection, how long should be spent studying each of them to determine materiality? How much should the client be willing to pay? And how long should the examiner spend studying the pile of 350 references that eventually lands on his desk? How does he or she fit that in with the requirement for speedy disposal of cases?

  34. Kenneth Brooks: Congress has set forth the only manner in which a Court can undermine a patent-equity is not one of them.

    How, precisely, does Congress define and limit the statutory defense of “unenforceability”?

    Max: What if the presence in the asserted patent, at its date of issue, of even just one claim that was at that time invalid (likely NOT the one being asserted), creates a rebuttable presumption that there was some inequitable conduct somewhere along the prosecution line (whereas the failure of the attacker to have any one claim found invalid would allow the court to deny entry of the inequitable conduct issue into the proceedings)?

    I’m not really a fan of creating presumptions based on facts that don’t strongly imply the presumed conclusion. In particular, I’m also not a fan of presuming that something inequitable must have happened simply because the examiner and the judge disagree, or simply because a claim failed to stand up in court. NWPA probably has a different view, but I don’t think this presumption is the way to go.

    I also think it’s problematic to litigate unasserted claims. Which is fine, because I also also think we should fully decouple inequitable conduct from invalidity. A patentee who has acted inequitably before the PTO shouldn’t be able to argue his way out of it by showing that it wouldn’t have mattered anyway, in much the same way that you shouldn’t be able to weasel out of a speeding or reckless driving charge by showing that you didn’t run anybody over. Anyway, if the invalid claim isn’t asserted, where’s the harm?

    Besides, a material reference is a reference that should have been the basis for a reasonable examiner’s 102/103 rejection, which would have entailed a written response from the applicant, which would have formed part of the file wrapper, which is relevant to claim construction. Therefore, even a claim that would be valid over the withheld art as drafted might well be broader in scope than the claim the patentee was fairly entitled to. And even if not, we should generally discourage that sort of behavior by applicants.

    If material art is withheld, especially if there has also been extensive disclosure of cumulative art, I’m okay with presuming inequitable conduct and killing the patent. I consider any showing of art-based invalidity redundant to the requisite showing of materiality.

  35. What really amazes me, is how can a branch of Government be held up all these years. Because some Lawyers are claiming it is IDS’s that are the problem? But we know it is really SOB’s. This is the USA HELLLLOOOO? Anybody home?

  36. Ned, what follows is just for the sake of arguing on this thread. It’s not real, I appreciate that.

    What if the presence in the asserted patent, at its date of issue, of even just one claim that was at that time invalid (likely NOT the one being asserted), creates a rebuttable presumption that there was some inequitable conduct somewhere along the prosecution line (whereas the failure of the attacker to have any one claim found invalid would allow the court to deny entry of the inequitable conduct issue into the proceedings)?

    Would that not have a chilling effect on those who would otherwise intimidate an industry by the procurement of patents that contain even just one claim of dubious validity? Automatic self-policing by the Applicant is the effect I am trying to get to, so that US patents containing manifestly invalid claims do not issue quite so frequently. Greater public respect for the validity of issued US patents is what I am striving for. I think in the longer term it might be important.

  37. Here we go again…

    Same basketball game with Kenny and IMHO-Ned standing around at the foul line as the game passes them by.

  38. IANAE:
    Equity can never trump actions of the body politic, i.e., legislation. That’s the rules. Congress has set forth the only manner in which a Court can undermine a patent-equity is not one of them. This is not to say that an attorney cannot be disciplined for violating an ethical rule of the PTO. However, the Courts are not to undermine patents based upon an attorney’s conduct. Only when the patent fails to satisfy one of the statues in Title 35 can a court invalidate a patent.

  39. How about this: just put a cap on the number of references that can be submitted.

    I respectfully submit that after a submission of 50 of “the most relevant” references, there is nothing that can be added that isn’t cumulative. If a more relevant reference comes up, then one of the other references can surely be removed.

  40. Yes, unless it turns out to be inequitable to dump every known reference, for example on the basis that (1) you haven’t bothered to assess their materiality at all, so really you’re just cluttering the record with what might be nonsense as far as you know, or (2) you’ve buried the most material references under a mountain of cumulative art.

    I haven’t seen a burying-based inequitable conduct case that was affirmed at the Federal Circuit.

    And which would you rather have weighed for its credibility: (1) your testimony that you automatically cross-cited art from applications related in priority and/or in general subject matter out of an abundance of caution or (2) your testimony that you didn’t think a reference was material and intentionally withheld it to avoid burdening the examiner, when the trier of fact thinks the reference is material?

  41. We need to ban IDSs submitting published patents and applications. The applicant has a duty not to file or maintain claims he knows are unpatentable over known art. If he ignores that duty, it should be at the peril of his entire patent, as it appears to be the case in England. In other words, if a patent claim is held invalid over a reference more pertinent than any of record, the court should automatically declare the patent unenforceable if the applicant knew of the reference and still allowed the concerned claims to issue.

    On the contrary, if no claim is held invalid, it should be presumed that the applicant has fulfilled his duty without more and it becomes irrelevant whether he knew of the prior art.

    This is the kind of “but for” regime that would actually work, IMHO.

  42. Morrie got real excited when I mentioned going around the Perimeter. So excited he hung up on me. I thought he left because he knew about the Blue Eyed baby. but he too had the good sense to leave the good Ship Lollypop.

  43. All former commissioners that have spoken on this topic, have, AFAIK, to a man said the “important to a reasonsable” examiner was to vague and indefinte and that the changes in the early ’90s were “intended” to make the standard “objective.”

    The failure, if there is one, was that when the standard attempted to deal with “obviousness.” Now here is where I tend to agree with you, IANAE. This makes the standard just as amorphous as the “important to a reasonable examiner” standard.

  44. “Are you joking?

    Posted by: Malcolm Mooney | Nov 11, 2010 at 01:43 PM”

    You’re right that I spoke too expansively. It’s true that a lot of attorneys are disbarred for violating the Rules I cited, but (although its hard to quantify) I’m sure many more attorneys don’t get caught for violating their duty of candor. Don’t have to look any further than the scandals enveloping fraudulent foreclosures going on currently.

  45. Tinla-nitus,

    Your first question is so unclear that ya need to try again (even for one of my valuable observations)

    Your second question is easy – I can, but choose not to. I kinda liked Maxie’s response to this awhile back, so I ‘ll borrow it – answers ya gotta pay for. As to your ability to recall somethin I clearly, plainly and often state – that be a “you” problem, which helps to esplaiin quite a bit about your posts.

    There be medication for such.

  46. Just an observation, mind you.

    Posted by: ping | Nov 11, 2010 at 02:01 PM

    Perhaps you can “observe” for us an instance in which specific intent can ever be shown, when the patentee or the patentee’s representative can simply say, “I can’t recall?”

    Oh wait, I forgot. Homey don’t do answers. Or is it Homey can’t do answers? I can’t recall.

  47. Ned: In early 90s, they revoked the 1970s version of rule 56 (important to a reasonable examiner) and replaced it with a much more specific definition of materiality (prima facie unpatentable).

    I’m still struggling to understand how those tests are not coextensive, and if they are not then how the latter is more specific or definite than the former.

    Seems to me, any reasonable examiner would want to see art that makes out his prima facie case, and he would not concern himself with art that falls short of a prima facie case.

    Then again, if you have before you a single reference that is, broadly speaking, close to your claims, but not anticipatory, should you disclose it? By the reasonable examiner standard your answer is easy. A reasonable examiner will want to see close art, unless you’ve already given him closer and this one is cumulative. But does it make out a prima facie case for obviousness? You can’t possibly know on the face of the document. You must also know what is taught in other references that might be combined with the one before you. By a reasonable examiner, no less.

    Besides which, no matter what the PTO says, I don’t have a problem with the courts considering it inequitable to intentionally withhold from an examiner art that the examiner would reasonably have wanted to see in the course of his examination. The PTO has no business telling the courts what the law is.

  48. the ruling on materiality won’t really matter

    Wrong-O Tinla-nitus.

    What it means is that if the other shoe if a finding of intent is there, but the materiality is not, then no IC either. Ya need both.

    Just an observation, mind you.

  49. smashmouth football And, of course, every U.S. state has a virtually identical rule. And lawyers who violate such rules are routinely disbarred.

    Are you joking?

  50. From Mr. Hastings article:

    With respect to the intent prong, there seemed generally to be agreement that the Court should reaffirm that inequitable conduct requires a specific intent to deceive, and that lesser standards of intent or gross negligence would not be sufficient. There also seemed to be agreement that intent may not be inferred solely from a finding of high materiality.

    IMHO, if that’s how they rule regarding intent, the ruling on materiality won’t really matter. In other words, if specific intent is required, then IE will no longer be much of a concern. Dumping of references and pleadings of IE should decrease significantly.

  51. On the theme of two countries divided by a common language,IANAE, English lawyers call themselves “solicitors” and love it when they can find, next to the street door of the swanky buildings they must visit in Boston or Manhattan, a brass plate that says “No Solicitors”.

    Ned, what’s that please, about the EPO “declaring that it will not accept”. I do not follow.

  52. As a general matter, I call em as I make em up cause I live in the IMHO-Ned-Law land

    Fixed for ya Ned – now safe to ignore everything else in your post.

  53. As a general matter, violation of patent office rules will not invalidate and should not render unenforceable a patent. Therefore, I am strongly biased against whole notion that the patent office can specify a rule the violation of which will render the patent unenforceable.

    However, I also see that the patent office needs to regulate what prior art it needs to see in order to do its job properly. It should have a role in specifying what documents or other prior art it should have access to, but more importantly what documents that it does not want to see because they interfere with an orderly prosecution. It should also have a role in specifying just how they should be submitted and when, but more importantly when not.

    We have seen in the last two decades the courts imposing on the patent office a standard of materiality that the patent office itself considered vague and indefinite. In early 90s, they revoked the 1970s version of rule 56 (important to a reasonable examiner) and replaced it with a much more specific definition of materiality (prima facie unpatentable). The problem was, that the Federal Circuit continued apply its own law which is based primarily upon the 1970s version of the rule. The very standard the patent office found objectionable, and which impeded its operations, remained the primary standard used by the Federal Circuit.

    Whatever comes of this case, I hope the Federal Circuit resolves the role of the patent office in specifying what prior art it needs to see in order to do its job properly so as to regulate the duty of disclosure. For example, I think the patent office to would be well within its rights to simply declare that it will not accept any disclosures of prior art that are not discussed in the patent application as filed, or required to be amended into the specification by the examiner – similar to the practice in Europe. The Federal Circuit needs to allow the patent office to do this if the patent office believes that this is the best way to examine patents.

  54. When you wrote “you”, I know you weren’t meaning your instant interlocutor.

    I sometimes feel too curmudgeonly when I use the pronoun “one”, so I choose to speak American instead. Also, for all I know you yourself might one day want to engage the US patent system.

    i think I have to refrain from calling them “pumps” don’t I?

    Probably. And if you’re mad about your flat, it’ll be because someone has slashed your tires.

    If it makes you feel any better, when I’m over there I have to refrain from wearing “suspenders”.

  55. IANAE your:

    “In most other fields, you’ll want a jurisdiction where you can file endless RCEs and continuations, litigation is expensive for defendants, plaintiffs can litigate on contingency, punitive damages are available, and plaintiffs are not liable for defendants’ costs.”

    made me laugh thanks. When you wrote “you”, I know you weren’t meaning your instant interlocutor. The language curmudgeon can perhaps tell me the name of the grammatical or rhetorical construction you were using there.

    As to kilts etc, have you noticed what shoes those brawny Scotsmen wear, when they are dancing to the skirl of the pipes? i think I have to refrain from calling them “pumps” don’t I?

  56. anon: Won’t dumping still be the most cost-effective option for clients,

    Yes, unless it turns out to be inequitable to dump every known reference, for example on the basis that (1) you haven’t bothered to assess their materiality at all, so really you’re just cluttering the record with what might be nonsense as far as you know, or (2) you’ve buried the most material references under a mountain of cumulative art.

    Kenneth C. Brooks: The but for test is the only authorized by the statute.

    Sure, if by “statute” you mean “rules”. And if by “authorized” you mean that only violations of the “statute” can be found inequitable. Of course, that would undermine the entire history of the rules of equity which were created to remedy situations where technically legal conduct produced unjust results.

    Max: You just need a system that implements a “Cheats Never Prosper” (in the end) lesson from real life.

    That’s not exactly what I’d call resigning oneself to the fact that people will cheat, but if the EPO system for regulating applicant conduct turns out to be American-proof I would strongly recommend the US adopt it lock, stock and barrel rather than trying to create its own.

    Max: Are we saying that patents are useless, everywhere except the USA. Is that what big pharma says? Is that what the mobile phone companies still say?

    Pharma and consumer electronics are exceptions, because those industries have such a large and apparently captive market, and such a high profit margin, and such easily-copied products, that it’s almost always worth having patents. In most other fields, you’ll want a jurisdiction where you can file endless RCEs and continuations, litigation is expensive for defendants, plaintiffs can litigate on contingency, punitive damages are available, and plaintiffs are not liable for defendants’ costs.

    Max: Not sure what the difference is, between a party frock and a ball gown.

    It might not be one of those questions you really want to ask a German who is wearing one. It’s like the difference between a kilt and a skirt – a claymore upside the heid, as it turns out.

  57. Well IANAE, I think you can have a workable system. You just need a system that implements a “Cheats Never Prosper” (in the end) lesson from real life.

    For example, there is no Duty of Candor at the EPO but wise applicants reveal the closest art to the EPO examiner nevertheless. Why might that be?

    For example, there are no Rules of Evidence at the EPO, but parties still file loads of “evidence” and it tips the case. Is there any outcry that cheats are prospering, in EPO opposition proceedings?

    I agree that the expense of defending against intimidatory actions brought by venal patent proprietors is a problem. We have discussed on these threads many times before why there are no patent trolls except in the USA. Are we saying that patents are useless, everywhere except the USA. Is that what big pharma says? Is that what the mobile phone companies still say?

    They might not wear frocks but they do wear a “gown”. Not sure what the difference is, between a party frock and a ball gown. Come and watch. You might be amused.

  58. Great new Ned. The but for test is the only authorized by the statute. Now, once the Federal Circuit decides to recognize the limit placed by Congress upon a Court’s authority to undermine patents, we must determine how to rectify the injustices done in the past. Would it be by way of a Takings Action or what?

  59. Is any prosecutor here going to substantially change the way they submit references to the USPTO if the Federal Circuit changes the materiality and/or intent standards?

    Won’t dumping still be the most cost-effective option for clients, rather than paying their attorneys to assess materiality/cummulativeness, withhold references based on that assessment, and then risk (1) being tagged with inequitable conduct because their testimony regarding their materiality/cummulativeness assessment is found not to be credible or (2) at a minimum, having to litigate the inequitable conduct issues that are sure to arise under any standard based on a deliberate withholding of the references?

  60. Well, guess what? You will eventually be dragged into an inequitable conduct proceeding no matter how diligent you are, if your patents are ever litigated.

    In other words, there is no stopping the deluge, as the deluge provide a blanket, a rebuttal against the inevitable.

    Thanks for clarifying that the deluge is a perfectly rationale response to an inevitable possibility.

  61. MaxDrei at 11/11/10 at 10:01 a.m.:
    “Germany’s solution is vigorously and diligently to de-frock those officers of the court that lie to the court. My impression is that German attorneys at law are properly apprehensive of having their licence to practise taken away from them.”

    Odd that this apparently doesn’t happen here, because in other contexts U.S. courts most definitely do adhere to such a rule. For example, Maryland Lawyers’ Rule of Professional Conduct 3.3 provides, in part, that “[a] lawyer shall not knowingly . . . make a false statement of fact or law to a tribunal or fail to correct a false statement of material fact or law previously made to the tribunal by the lawyer [or] fail to disclose a material fact to a tribunal when disclosure is necessary to avoid assisting a criminal or fraudulent act by the client [or] fail to disclose to the tribunal legal authority in the controlling jurisdiction known to the lawyer to be directly adverse to the position of the client and not disclosed by opposing counsel [or] offer evidence that the lawyer knows to be false. If a lawyer has offered material evidence and comes to know of its falsity, the lawyer shall take reasonable remedial measures.” Furthermore, “[i]n an ex parte proceeding, a lawyer shall inform the tribunal of all material facts known to the lawyer which will enable the tribunal to make an informed decision, whether or not the facts are adverse.”

    Moreover, Rule 8.4(c) and (d) provide that it is professional misconduct for a lawyer to “engage in conduct involving dishonesty, fraud, deceit or misrepresentation” or “engage in conduct that is prejudicial to the administration of justice[.]”

    And, of course, every U.S. state has a virtually identical rule. And lawyers who violate such rules are routinely disbarred. Not sure why state bar counsel/associations don’t seem to get cases involving IC.

  62. Amusing though the image is of German attorneys wearing frocks to court, I don’t think we can have a workable ex parte patent examination system at all if we resign ourselves to the fact that everyone will cheat the system at every turn and it’s just the way we are.

    In court, since both parties are presumably cheating each other roughly equally, it mostly comes down to expense. But that’s a problem too, because it’s too easy to license out a bad patent on threat of litigation when the litigation is more lengthy and expensive than the defendant can afford.

  63. We are getting quite philosophical here. I lack the experience to debate this with you. Perhaps Paul Cole is still with us.

    I was suggesting that England has now joined the ranks of countries who think that it is futile to require equitable conduct. It is resigning itself to the pragmatic acceptance that the conduct of both sides is incurably inequitable. Germany’s solution is vigorously and diligently to de-frock those officers of the court that lie to the court. My impression is that German attorneys at law are properly apprehensive of having their licence to practise taken away from them.

  64. Max: But I guess most US citizens would go along with:

    “It is too much to expect a litigant to be a nice person”

    Max, that distinction is probably at the heart of most of the differences between US and UK law. I bet there’s a residual expectation on your side of the pond that people will be gentlemen about a dispute between them. That’s why you can do things like identifying the vice that required a particular change in the law.

    USians will always find a new vice, if they can squeeze a competitive advantage out of it. We need harsh rules about playing fair, because it’s always presumed that an American will double-cross you at a moment’s notice for a nominal personal benefit.

    Maybe that’s why the law over here seems so foreign over there, and why we always think your system is an open invitation to abuse.

  65. It is directly caused by the CAFC’s current law.

    It’s not directly caused by the CAFC. The CAFC has been quite clear, on numerous occasions, that you don’t have to submit cumulative prior art. The law can be satisfied by submitting a handful of references that are closest to your claim, supplemented as more references are cited in corresponding foreign cases. Patents aren’t held unenforceable for failure to disclose cumulative art. They’re generally held unenforceable for deliberate plots to withhold highly relevant art, which often times is known only to the inventor.

    The deluge is directly caused by paranoid agents disclosing everything they’ve ever seen because they’re terrified of being dragged into a spurious inequitable conduct proceeding. Well, guess what? You will eventually be dragged into an inequitable conduct proceeding no matter how diligent you are, if your patents are ever litigated. No litigator is going to look at your 250 pages of IDS and decide it’s not worth a try.

    Inequitable conduct is pleaded every time because it’s a chance for the defendant to win. Not because it’s a particularly good chance. No amount of reform, short of punishing defendants for pleading it without a sound case, is going to change how often it’s raised. After all, the “plague” of obviousness is pleaded pretty much every time, and you can’t tell me there’s always a terribly strong case for it.

  66. Trust a Limey to come out with:

    “It is too much to expect the inventor to be a nice person.”

    But I guess most US citizens would go along with:

    “It is too much to expect a litigant to be a nice person”

    And I think the whole world outside that of English common law would agree. Hence the paucity of jurisprudence on “inequitable conduct” everywhere except the USA. “Conduct is going to be inequitable, whether you like it or not. So, get used to it” might be their pragmatic motto.

    So I await with interest to read the view of the CAFC panel members. There was a good reason why their jurisprudence got stricter. Is it a good idea to loosen it without scrapping it, sending out to attorneys that cheating is more OK than until now? I’m sceptical.

  67. Paul Cole: Inequitable conduct in the US similarly looks good as abstract rules on paper, but in practice it is very harmful in its effects. Nor is the paper deluge to which the USPTO is subject of real use – its cost-effectiveness appears to have been almost wholly uninvestigated.

    We should all hope that the CAFC will come up with better rules.

    Absolutely. In fact, US Examiners have on a number of occasions complained in this blog that the paper deluge is unhelpful. It is directly caused by the CAFC’s current law.

    The USPTO itself has in the past proposed rules that sought to limit applicants sending in stuff having what it termed “questionable materiality”. The problem for both applicants and the USPTO is that if something is of questionable materiality, then its materiality can be questioned in court. Under the CAFC’s current law, the court is then quite likely to hold your patent unenforceable if you didn’t send it in.

  68. A quibble: As I understood it, the vice in old England was not mere delay in amending to avoid fatal prior art. It had to be more than that, like, despite knowing of the invalidating art, nevertheless asserting the unamended patent without at the same time telling the defendant infringer.

    I haven’t got a suitably out-of-date copy of the Black Book in front of me, so I’m not sure. But I don’t recall that. In fact, you can also apply to amend in the Patent Office, long before an infringer comes along. They used to operate the same equitable principle as the court. You had to say when you became aware of the prior art, and a judgment was made as to whether you had left it too long before applying.

    Isn’t there a case called “Nissin” or something like that, where claim 1 was wide enough but invalid and claim 2 was valid but too narrow. A claim in between would have done the business, but patentee was not allowed to amend down to it.

    I don’t know the case, but it sounds likely. Note that this doesn’t depend on having asserted the unamended patent without telling the infringer about the prior art. I think there’s no direct prohibition on doing that.

    But if you just sit on relevant prior art and do nothing, it’s likely to rebound on you. The prior art will come out in disclosure (the English word for discovery). And in the past, if you delayed before amending, permission to amend may have been refused, with possibly fatal consequences as in the case you cite.

  69. I can speak from personal experience of the former procedure in England of considering conduct issues in the course of patent infringement proceedings when exercising discretion whether or not to permit amendment of a partially valid patent.

    As a condition of amendment, the patentee had to pay the costs of the opposing parties (defendants) in any event. In other words, the defendants’ attorneys had a blank cheque to raid the bank account of the patentee, limited only by their ingenuity in creating issues (both conduct issues and legal and technical objections) that were at least arguably non-spurious. If you were representing the patentee, it was extremely unpleasant and frustrating. It was a jurisdiction in which a hypocrite in the mould of Obadiah Slope would have felt utterly at home. It is arguable that the cost and unpleasantness of the amendment procedure were a deterrent to holding a patent that was only partially valid, but it was not clear that there was ever a deliberate policy to punish patentees in this way (although the costs provisions were clearly penal).

    Multiplication of the issues increased costs by about 30-40% overall, and the volume of additional documentation before the court was very substantial.

    It is appropriate for the law to require an inventor to make a full disclosure of the invention, and for that invention to be novel and non-obvious. It is too much to expect the inventor to be a nice person. Our amendment provisions looked sensible on paper, as Max has indicated, and we have experienced judges handling patent disputes. But in practice they did not work well, and the straightforward amendment provisions adopted from the EPO are much better and more practical. Inequitable conduct in the US similarly looks good as abstract rules on paper, but in practice it is very harmful in its effects. Nor is the paper deluge to which the USPTO is subject of real use – its cost-effectiveness appears to have been almost wholly uninvestigated.

    We should all hope that the CAFC will come up with better rules.

  70. Another blimy?

    Well OK, I’ll give him the benefit of a doubt and only count that as one strike.

    Welcome to the game IPman.

  71. Nice point from IPMan at 01.38pm. A pleasure to read your debate with IANAE. Hope to see more of you.

    A quibble: As I understood it, the vice in old England was not mere delay in amending to avoid fatal prior art. It had to be more than that, like, despite knowing of the invalidating art, nevertheless asserting the unamended patent without at the same time telling the defendant infringer. Isn’t there a case called “Nissin” or something like that, where claim 1 was wide enough but invalid and claim 2 was valid but too narrow. A claim in between would have done the business, but patentee was not allowed to amend down to it.

  72. There’s a larger problem of litigation being so expensive for clients… much less of it gets done than should and a party can do things like force a re-exam to penalize the other party too much. If we’re talking about England, maybe we should also talk about a simple fix: make the losing party pay the other party’s legal fees. It’s a remedy not currently available with patent re-exams.

  73. The difference is that you would have no remedy for infringement of claim 2 unless you had the court’s permission to cancel claim 1 and rewrite claim 2 in independent form. Which permission would be withheld in cases of inequitable conduct.

    Why does that have any real difference over the current US system, where you can pursue claim 2 if there wasn’t any inequitable conduct, but the patent as a whole is unenforceable if there was?

  74. If a US court holds claim 1 invalid, you can still pursue the infringer under dependent claim 2, in the same action.

    The difference is that you would have no remedy for infringement of claim 2 unless you had the court’s permission to cancel claim 1 and rewrite claim 2 in independent form. Which permission would be withheld in cases of inequitable conduct.

  75. IANAE: Presumably a reasonable compromise would be to only allow amendments that cancel broad claims and rewrite their narrower dependent claims in independent form.

    However, that wouldn’t give any real difference over the current US system. If a US court holds claim 1 invalid, you can still pursue the infringer under dependent claim 2, in the same action.

  76. Since England hears patent cases in specialist patents courts who know what they are doing, it is also generally fair to third parties who may be affected by the patent after it has been amended. You will probably get a sensible judgment on whether the proffered amendment cures the invalidity, and is otherwise allowable (e.g. that it doesn’t add subject matter or extend the protection claimed). And indeed, such applications to amend are advertised so that third parties can oppose.

    Presumably a reasonable compromise would be to only allow amendments that cancel broad claims and rewrite their narrower dependent claims in independent form.

  77. MaxDrei: how about 1) making dispensation to amend a patent after issue dependent on equitable considerations 2) one bad claim in an issued patent is enough to invalidate it

    This worked in England because if a claim is found bad during an infringement action, the patentee can apply to the court to amend it, during the course of the infringement action itself. That’s fair to the patentee, who would otherwise have to abandon the action when one claim was found to be invalid, even if other claims were perfectly good.

    Since England hears patent cases in specialist patents courts who know what they are doing, it is also generally fair to third parties who may be affected by the patent after it has been amended. You will probably get a sensible judgment on whether the proffered amendment cures the invalidity, and is otherwise allowable (e.g. that it doesn’t add subject matter or extend the protection claimed). And indeed, such applications to amend are advertised so that third parties can oppose.

    The court also gets the benefit of argument from the alleged infringer, and the court is in a good position to judge whether there are any equitable reasons to deny the amendment (which would render the invalidity incurable).

    In contrast, you cannot amend a patent before a US federal district court. They are not usually patents specialists who would be able to properly examine the amendment, and they have no procedures to protect the rights of third parties. Therefore, any amendment has to go back to the Patent Office for re-examination.

    Times Change: If it worked so well in England, then why the past tense of “used to be”?

    The provision for an English court to deny amendment on equitable grounds was removed when the EPC 2000 came into force. Under the EPC 2000, you can apply to the EPO at any time to limit your granted European patent. There is no provision to consider equitable matters in the EPO limitation procedure. It would have been silly to retain it in England if you could get round it just by going to the EPO instead.

    Incidentally, the possibility for an English court to consider equitable matters isn’t quite the same as in the USA. Failing to tell the Patent Office something material, by itself, wouldn’t render your patent unenforceable. But if the court perceived that you should have amended it earlier, it used to be able to refuse discretion to amend at a later stage. For example, if you had come across a killer piece of prior art, perhaps you should have voluntarily made a limiting amendment in the Patent Office earlier on.

  78. Thanks for the info Ned. Times, the answer is that England has recently acceded to membership of the European Union. Curiously, the European Union declines simply to adopt lock stock and barrel laws peculiar to that late-comer to the EU, the United Kingdom of Great Britain and Northern Ireland. Rather, it expects English law (not to mention Scottish) to adapt itself to that of Europe. Thus it is, that neat features of the former English patent law have disappeared, along with the not so neat features.

  79. Max, in principle, I am not adverse to your ideas.

    All, for your information, the reason the patent office seldom seeks to disbar a patent attorney either accused or actually held to have committed inequitable conduct is because there is a federal statue-of-limitations of 5 years dating from the time of commission, not discovery, with respect to acts in violation of federal law – This from a a former PTO solicitor who handled such prosecutions for patent office.

  80. How to solve the puzzle? It’s time to start scrutinising the sacred cows, but the CAFC lacks the authority to do it. Disbarring a lawyer for being disingenouous is ridiculous. Disingenuous is what lawyers do. But how about 1) making dispensation to amend a patent after issue dependent on equitable considerations 2) one bad claim in an issued patent is enough to invalidate it and 3) loser pays. In such a regime, lawyers would set themselves high standards of probity (or their malpractice insurers would demand it). That’s how it used to be in England, and I thought it worked rather well.

  81. The oral argument is consistent with my own views on what needs to be done. They recognize the current standard of materiality is too vague; but are struggling with an alternative. They seem to be settling on some sort of “but for” standard for non disclosure and and seem inclined to santion deliberate misrepresentation of facts. Whether this extends to arguments of counsel….?

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