Intellectual Ventures Takes First Overt Legal Actions to Enforce its Mammoth Patent Portfolio

By Dennis Crouch

In a bold move, the patent holding company Intellectual Ventures has filed three separate patent infringement lawsuits against major industry players.

Over the past several years, Intellectual Ventures has amassed a large patent portfolio that is held by a complex web of subsidiary companies. According to its court filings:

Intellectual Ventures has purchased more than 30,000 patents and patent applications and, in the process, has paid hundreds of millions of dollars to individual inventors for their inventions. Intellectual Ventures, in turn, has earned nearly $2 billion by licensing these patents to some of the world's most innovative and successful technology companies.

In the first suit, Intellectual Ventures sued Check Point Software, McAfee, Symantec, and Trend Micro for infringement of Patent Nos. 5,987,610, 6,073,142, 6,460,050, and 7,506,155. These patents were originally owned by Ameritech which merged with SBC. According to USPTO assignment records, SBC assigned its rights to the University of Texas which then assigned rights to Verve, an IP broker. Verve then assigned its rights to AUCTNYC8. The assignment to Intellectual Ventures itself has not been recorded. To be clear, the case caption actually states that the plaintiff is "Intellectual Ventures I LLC." The other two lawsuits involve some combination of Intellectual Ventures I, II, and III, respectively. Other defendants include Hynix Semiconductor, Elpida Memory, Altera, Lattice Semiconductor, and Microsemi (Actel). At least some of the patents being asserted against Altera and Lattice Semiconductor were originally owned by AMD, and then transferred to Legerity. At least one other patent asserted in the lawsuits was invented by noted chip designer Bob Proebsting. After his death, the patent was held by the Proebsting estate. Although Intellectual Ventures (I – III) claims ownership in their complaints, PTO records do not reflect that ownership.

In a press release, Intellectual Ventures issued a warning blow to other potential defendants:

Over the years, Intellectual Ventures has successfully negotiated license agreements with some of the top technology companies in the world. However, some companies have chosen to ignore our requests for good faith negotiations and discussions. Protecting our invention rights through these actions is the right choice for our investors, inventors and current licensees.

Intellectual Venture's chief litigation counsel is Melissa Finocchio who was previously with Micron, Orrick, and Cooley. The company's outside counsel include an all-star cast of Former Delaware Judge Joseph Farnan; John Desmarais; Jared Bobrow; and Parker Folse. All the suits have been filed in Judge Farnan's hometown District of Delaware.

Notes:

101 thoughts on “Intellectual Ventures Takes First Overt Legal Actions to Enforce its Mammoth Patent Portfolio

  1. Major league lols there 6 – ya have NO professionals on your side.

    Itza kinda an inherent characteristic thingy – anyones be on your side can’t be a professional.

  2. “It just be that my minority be a whole lot bigger than your minority. Iza gots the swagger to back it up too.”

    Lulz, I doubt if you even have a minority anymore. Maybe a minority of 1.

    I on the other hand have a majority of patent professionals on my side.

  3. Pssst,

    Someone tell Dim Light that the KSR decision is in fact a new light and that the Congressional change in response to In re Portola Packaging allows the new light to be a pure change in law with exactly the same references as the Office looked at prior. Finally whisper to him that the Office decided, Meh, we don’t care to correct those patents. We be too busy.

    I wanna see him explode.

    6 – I see why ya have logic problems – words and math be not your thing. Sides, don’t matter at all abouts the minority thing – aint sure why ya bring that up. It just be that my minority be a whole lot bigger than your minority. Iza gots the swagger to back it up too.

  4. “That be quite a few people who thought strict TSM was teh law.”

    Mere hundreds out of the billions alive? Idk about that pingerdoodle. Remember pingerdoodle, just because you find yourself in the minority doesn’t mean your minority is all that large.

  5. So the NPE are finally making good. Seems like just yesterday when they were called “patent trolls.” I predict that it won’t be too much longer before NPEs become fully mainstream and everyone wants a piece of their (quite lucrative) pie. In fact, “trolling” may soon become a common part of the business strategy and operations of many or most major companies. Wouldn’t surprise me.

  6. New Light: “From the 2002 Act: ‘The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.’
    The whole point about the ‘something new’ is that the rationale of KSR as opposed to the on record strict TSM is something new. Your position of needing new art is simply wrong.”

    —–
    Yes, the statute says a SNQ can be the same previously-cited art viewed in a different light.

    However, nowhere does it say that viewing the same part of the same art in the same way but applying new law to it counts as a new light.

    It’s much more likely that they meant you can reinterpret the actual teachings of the reference, or use a different part of a cited reference that the examiner didn’t consider.

    Since you consider PTO memos authoritative, why don’t you read the one you linked, all the way to the end. There’s some interesting stuff on the second page about “a SNQ … based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared to its use in the earlier concluded examination(s), in view of a material new argument or interpretation presented in the request.” That very much implies that you need a new interpretation of the reference itself to make out a SNQ.

    In other words, “you can rely on old art” doesn’t imply “you can rely on the mere application of new law”.

    Of course, this would all be much clearer if my current interlocutor hadn’t broken the bold tags the other day.

  7. Dim Light,

    Ya see the problem with giving answers? Even if ya are right, all ya get is a big “so what”? and a good dose of carpet bombing. Ya need to learn from yours truly and repeat after me: Homey don’t do answers.

    6,

    Keep bringing the chuckles – “Them being examiners also does not disprove my statement that only some few re tarded lawlyers thought that it did” translates to “Even if you prove me wrong, Iza gonna say I be not wrong” As my main man points out – it aint be just some tarded lawlyers, and not even be the examiners that issued patents on the strict TSM rationale, it be the CAFC demselves.

    That be quite a few people who thought strict TSM was teh law.

  8. Let me know when you reach the part of “in view of a material new argument or interpretation presented in the request” so we can “discuss” how KSR in view of strict TSM is a material new argument or interpretation. I am pretty sure that Teleflex thought what the Supreme’s said was a new material interpretation.

  9. IANAE,

    Rather than focusing so much on your snark, perhaps you should pay attention to actual law.

    You can start here:
    link to uspto.gov

    From the 2002 Act: “The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.”

    The whole point about the “something new” is that the rationale of KSR as opposed to the on record strict TSM is something new. Your position of needing new art is simply wrong.

    As for having a sensible conversation, you have proven that you are not capable of that.

  10. Screw it, I’ll just re-post …

    I interpret that passage differently, like this:

    “Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on [the fact that the Supreme Court clarified] the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability and reexamination will not be ordered” [MPEP § 2216, Rev. 7, July 2008].”

    Are you interpreting the passage like this?:

    “Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on [the Supreme-Court clarified] legal standard for determining obviousness under 35 U.S.C. § 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability and reexamination will not be ordered” [MPEP § 2216, Rev. 7, July 2008].”

  11. Light,

    I interpret that passage differently, like this:

    “Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on [the fact that the Supreme Court clarified] legal standard for determining obviousness under 35 U.S.C. § 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability and reexamination will not be ordered” [MPEP § 2216, Rev. 7, July 2008].”

    Are you interpreting the passage like this?:

    “Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on [the Supreme-Court clarified] the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability and reexamination will not be ordered” [MPEP § 2216, Rev. 7, July 2008].”

  12. Actually, no. The Office Action could rely on both a proper rationale and an improper rationale.

    Actually you are wrong as the Office would not relay on an improper 103 rationale and a proper 103 rationale – It is impossible to have both rationales together – they are only available in the alternative – one or the other – the Office would not mix 103 rationales.

    And Yes – that is what the Office has said. The critical misleading statement by the Office in MPEP Section 2216 is “without presenting the art in new light or different way” because the mere presentation of the same art and pointing out the KSR rationale IS presenting the art in a new light or different way. A reading of the Office statement simply cannot make legal sense.

    Don’t you see? whether or not the legal standard for determining whether a substantial new question of patentability exists is NOT MATERIAL to whether the Congress had already said that an exact same reference could be used – the only thing needed is to use the KSR clarified legal standard for determining obviousness with that same art and this is expressly what the Office is saying you cannot do. The Office is saying that you need something more – something else to present the art in a new light or different way. What else could the Office mean, since in my explanation you have art in a new light already? What else is the Office looking for in their statement as obviously the law unto itself is not good enough – even though that is exactly what Congress said was good enough in order to order reexam.

    If you can understand the simply naked assertion of the Office for what it is you would finally understand just why I get so upset about this.

  13. It’s almost like your reading it like this:

    “Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on the Supreme Court’s clarification of the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR … will not raise a substantial new question of patentability and reexamination will not be ordered” [MPEP § 2216, Rev. 7, July 2008].” (my omission)

  14. Again, Light, the USPTO is NOT saying that rationales articulated in KSR cannot be used to put the same references in a new light. If you disagree, please explain because I don’t see that anywhere in their statement.

  15. “Clearly, the presence of improper rationale IS the absence of proper rationale.”

    Actually, no. The Office Action could rely on both a proper rationale and an improper rationale.

    The key is that your new-light-shedding rationale was not present because, if had been, it would not shed new light. Hence, its absence is what matters. You need not even mention the presence of an erroneous strict TSM to prove the absense of your new-light-shedding rationale.

  16. “Like that takes more than a few hours.”

    That’s not the point. The point is you have to come up with something new (to the examiner).

  17. “And 6, your quote of “Only some few re tarded lawlyers thought that it did.” is plainly wrong as I have seen hundreds of examples of examiners thought it existed as well.”

    Them being examiners also does not disprove my statement that only some few re tarded lawlyers thought that it did”.

    But even assuming that it did, and your anectdotal evidence were substantial, it still wouldn’t make KSR dictate a new SNQ for every patent then in existence. Sorry bub.

    “But it’s only for prior art the examiner missed, which is why you have to come up with something new if you want to initiate one.”

    Like that takes more than a few hours. *eye roll*

  18. “It’s considered disrespectful to refer to members of the Court of Appeals for the Federal Circuit as “tards.””

    I loled. Although they themselves disavow ever having applied any such nonsense as “strict TSM”. If you can believe them.

  19. New Light: “the first time was under an improper and different version of the statute.”

    When was section 103 amended to make it “proper”, and what did it say before?

    New Light: ” Have you heard of that case and what Congress did?”

    I’m going to hazard a guess and say that Congress amended the re-exam section to say what it currently says.

    Now, if you’d care to explain to me how that section can be reasonably interpreted to include as a “substantial new question” the exact same art under the exact same statutory provision under new caselaw, and why you think that’s the most likely problem with In re Portola Packaging that Congress would have been trying to fix, then we can have a sensible conversation about this.

    New Light: “And yes – re-exam is expressly a do-over. That’s why it is called ‘re’ – ‘exam’.”

    But it’s only for prior art the examiner missed, which is why you have to come up with something new if you want to initiate one.

    New Light: “Putting your head in the sand is not a very good answer.”

    I daresay it’s better than where you’ve lodged your own.

  20. The USSC changed nothing, they merely set the record straight for a few tards arguing against the clear interpretation of the law as being flexible etc.

    It’s considered disrespectful to refer to members of the Court of Appeals for the Federal Circuit as “tards.”

  21. under the exact same statute

    That’s where you are wrong – the first time was under an improper and different version of the statute. Obviously, there is a difference – just ask the Supreme Court.

    It is a new light when that version is corrected.

    You would be relying on the exact same art for the exact same teachings that were before the examiner.

    Again – this is expressly permitted under the change invoked by Congress in response to In re Portola Packaging. Have you heard of that case and what Congress did? Maybe that’s where you are getting confused. And yes – re-exam is expressly a do-over. That’s why it is called “re” – “exam”.

    And 6, your quote of “Only some few re tarded lawlyers thought that it did.” is plainly wrong as I have seen hundreds of examples of examiners thought it existed as well. That why there are patents out there now that are in existence despite a very fixable error. Putting your head in the sand is not a very good answer.

  22. Oh, and just btw, if you can’t come up with a SNQ on a given app it is either an outstanding app or you aren’t trying very hard. Or you sux, which I suppose of the three is most likely.

  23. “which according to Congress – is a new legal interpretation.”

    Technically KSR presented none, but I would be interested to know where congress supposedly said such a thing.

  24. “Clearly, a new light exists in the application of the KSR decision on patents which passed to issue merely on the strict TSM reasoning.”

    Technically strict TSM never existed. Only some few re tarded lawlyers thought that it did. The USSC changed nothing, they merely set the record straight for a few tards arguing against the clear interpretation of the law as being flexible etc.

    In that instance, all those patents that you suppose were issued under strict TSM were really issued under the KSR standard whether you like it or not.

  25. New Light: “Do you even know what constitutes a 103 rejection overcome by a strict TSM response?”

    Yes, I do. But that’s not relevant.

    The question of whether this particular art constituted a valid 103 rejection was addressed. Presenting the exact same art as a basis for invalidity under the exact same statute is not a new question, and in particular it does not present the prior art in a new light. You would be relying on the exact same art for the exact same teachings that were before the examiner. Re-exam is not a do-over.

    New Light: “That is the law. It is not up to debate. If you think the law states that a new light cannot be a different application of law, you are just wrong.”

    I think you’ll find that it is very much up for debate whether the statute permits an intervening change in the law as a basis for re-exam. To the extent that your side can be reasonably defended at all.

  26. IANAE,

    Do you even know what constitutes a 103 rejection overcome by a strict TSM response?

    I swear that you delight in being disagreeable and do not even have a clue about the topic here.

    Anonymous,

    You continue to be confused. “So all you need to do is focus on the absence of the proper rationale, not the presence of an improper rationale. That’s all the USPTO is asking you to do.

    Clearly, the presence of improper rationale IS the absence of proper rationale. I keep saying this. “Because what really matters is the absence of the new-light rationale, whatever it is.” – I am not sure how you arrived at this thought. It is not the absence that mattes – it is the presence of a New Light. Contrary to the confusion that IANAE would like to spread, it is not the presence of new art, it is not the presence of old art viewed in and of itself differently (technically – although such would be new light – it’s just not the only new light), it is the presence of any new light, which according to Congress – is a new legal interpretation.

    That is the law. It is not up to debate. If you think the law states that a new light cannot be a different application of law, you are just wrong.

    Since the KSR decision makes a different application of TSM – it is necessarily (in those cases wher such was not applied) a different application of law.

    There is no basis for the Office to say what it did in the MPEP. There is no basis to deny reexams based on the previous art as applied in the KSR manner where previously the strict TSM argument is what gained the patent. Those such patents have been granted in error and the proper mechanism for correcting that error is reexam. IANAE’s “use of discretion” is an illegal decision of what is law and what is not. The Office simply is not afforded that type of discretion.

  27. … in fact, I think they don’t want or need someone to even mention that the examiner relied upon a strict-TSM. Why? Because what really matters is the absence of the new-light rationale, whatever it is.

  28. New Light: “What I mean IANAE, is that your use of ‘flooding’ is directly to scare someone away from the direct logic and reasoning of what the law should be. It is a ploy. a misdirection, a scare tactic. It is used to hide in plain sight what is being done.”

    Except that it’s not, because even without re-exam requests based on “KSR exists now”, the PTO is actually flooded. Everybody knows it. It’s pointless to try to deny it. They’re flooded in new filings, flooded in ongoing prosecution, flooded in appeals, flooded in re-exams. Re-exams are the one place where they exercise any discretion at all as to which matters are worth hearing, and this is an excellent use of their discretion.

    New Light: “The Office in an MPEP announcement has abrogated a law for its own pure benefit.”

    Now, *that* is a blatant scare tactic.

    The PTO hasn’t abrogated any law at all. The PTO is applying the law as they understand it, just like they did before and since KSR. If you think their application of the law is wrong, ask the Federal Circuit to order the PTO to take the re-exam. But don’t hold your breath.

    New Light: “Clearly, a new light exists in the application of the KSR decision on patents which passed to issue merely on the strict TSM reasoning.”

    No, clearly it doesn’t. KSR hasn’t changed anybody’s understanding of any prior art reference. The prior art still teaches exactly what it teaches. Re-examining patents on the basis of previously-applied art *is* a mere recital of KSR, and would open the door to second-guessing any rejection ever made (or not made) by an examiner. That’s not what re-exam is for. It’s not an automatic do-over. You need to bring more to the table than “I looked at the same art the examiner looked at, and I disagree”.

    New Light: ” This is about following the law even if the law has a surprise.”

    It would indeed surprise me if you could find anything in the law about how “obvious in view of this part of reference A and this part of reference B” is a substantial new question, given the examiner’s prior consideration of obviousness in view of the same part of reference A and the same part of reference B.

  29. “What I am upset about is the Office declaring that the change in law will not suffice”

    It won’t by itself.

    You have to apply the changed law in a way that presents it in a new light. That’s all they are asking. They just don’t want someone to say that the examiner relied upon a strict-TSM and end there.

  30. Again, Light, I am not suggesting that YOU are arguing that “merely stating an improper rationale, or saying magic words, is enough.” I am suggesting that the USPTO is stating that an improper rationale was used, or saying magic words, is not enough. That’s all their statement is saying. Period.

    The USPTO is NOT saying that rationales articulated in KSR cannot be used to put the references in a new light. If you disagree, please explain because I don’t see that anywhere in their statement.

    I have always said that using the proper rationale and showing that the previous exam did not use that proper rationale IS the new light.

    Other than the use of “the” proper rationale as opposed to “a” proper rationale, I think I agree with that. The issue is that a requester needs to articulate a proper rationale discussed in the obviousness caselaw (KSR or otherwise) that presents the references in a new light.

    So all you need to do is focus on the absence of the proper rationale, not the presence of an improper rationale. That’s all the USPTO is asking you to do.

  31. What I mean IANAE, is that your use of “flooding” is directly to scare someone away from the direct logic and reasoning of what the law should be. It is a ploy. a misdirection, a scare tactic. It is used to hide in plain sight what is being done. The Office in an MPEP announcement has abrogated a law for its own pure benefit. The Office simply does not have the authority to make such a decision.

    The Supreme Court said strict TSM was wrong, an error. Reexam was instituted by Congress to correct patents granted in error. The Reexam SNQ standard has not been changed, but what constitutes error to the degree of new light was changed (the reference to In re Portola Packaging). Clearly, a new light exists in the application of the KSR decision on patents which passed to issue merely on the strict TSM reasoning. Those patents should be able to be brought to justice using the law of reexam with the previous art and the proper application of law as decided by the Supreme Court. This is not a magic formula or a mere recital of “KSR”. This is using the existing art and the new light of the Supreme Court decision on how the law properly applies. Since the patents issued based on the old faulty application of strict TSM, the proper application of KSR and the previous art combined is a new light.

    Just because it may be difficult does not make the fiat from the Office correct. Again you give misdirection with a statement like “There has to be a point where examination ends and you hold an assertable patent.” This isn’t about never-ending examination. This isn’t about “every patent got examined again every time a Federal Circuit decision contained the number 103“. Your gratuitous misdirections aside, this is about applying the laws of reexam properly without the Office simply dismissing a whole set because they are afraid of the workload. This is about following the law even if the law has a surprise. If the surprise is too offensive, Congress should change the law, but it is not up to the Office to decide.

  32. New Light: “The ‘flooding of the Office’ is a scare-tactic, a red herring, merely FUD.”

    You mean, the Office isn’t in any danger of being flooded, and by implication they’re beyond in complete control of their current re-exam backlog?

    That’s reassuring. I’ve heard that re-exam can take years, but I guess that was just more FUD.

    New Light: “I have always said that using the proper rationale and showing that the previous exam did not use that proper rationale IS the new light.”

    Well then, you’ve always been wrong about that. If the examiner was aware of all the claim features in the prior art, but couldn’t think of a way to put them together, no amount of new law will shed new light on the prior art.

    Would it be nice in principle if every patent got examined again every time a Federal Circuit decision contained the number 103? I guess. Not so much if you’re a litigious and impatient patentee, though. There has to be a point where examination ends and you hold an assertable patent. And who knows? Maybe you have the good sense not to bother suing on a patent that’s so clearly invalid under KSR.

  33. Thanks IANAE. You posit:

    “Suppose the claim really is indefinite, and standing on its own it should be invalid for that reason, but you still infringe under any construction a court might apply.”

    and ask me “what you do”. Sorry, for the USA I don’t know the answer. Perhaps a US patent litigator can help you.

    In Germany, even while you are being sued for infringement in District Court in Duesseldorf or Mannheim, you would petition the Federal Patents Court in Munich to revoke the patent. If the claim is as indefinite as that, the court would revoke it, selecting whichever of the available grounds of invalidity was the best fit. It could be lack of novelty or it might be insufficiency. With no Binding Precedent, the court would likely have more wiggle room than one in an English common law country.

  34. The Congressional action in response to In re Portola Packaging changed the emphasis from the art to the law as the source of new light (or at least added change in law).

    What I am upset about is the Office declaring that the change in law will not suffice – the Office negating directly what Congress passed.

    The “flooding of the Office” is a scare-tactic, a red herring, merely FUD.

    Once again, anaonymous, you contradict yourself – this time in one paragraph: “Merely stating that an improper rationale (like strict TSM) was used to allow a claim is not enough to show a substantial new question of patentability on that claim. You must show that, based on a proper rationale, there is a substantial new question of patentability on that claim. That rationale can come from KSR or any other obviousness case.

    My position has not been that merely stating an improper rationale, or saying magic words, is enough. I have always said that using the proper rationale and showing that the previous exam did not use that proper rationale IS the new light. My focus was on establishing what is the basis of new light – nothing more. You seem to not hear me when I say “this is new light”, and you say (at the same time) “that is not new light” and “that may be new light”.

    The congressional change dictated that the exact same art can be new light – the only way for this to be is that the law itself provides that new light. Yes, IANAE, that does mean that the Office is open to the bogeyman of flooding every time the courts change the understanding of law with a precedential case. Just because there are unforeseen consequences does not mean that the effect of the law is such that those unforeseen consequences are put into effect. Thus while your statement of :”seeing the law in a new light is not the same thing as seeing the facts in a new light.” is on its face true – it is also a meaningless statement because both the new light from a change in law and a change in facts are a new light for reexam purposes. Please, no more misdirected arguments and handwaiving to a conclusion that ignores the actual effect of the change in law. And please, leave the flood boogyman in the closet or under the bed.

  35. Max: “Does the US not know ‘squeeze’ arguments, central to any patent dispute in England?”

    I would say the main reason that doesn’t happen in the US is not because of the standard of proof. It’s because claim construction happens first, and the infringement analysis only happens later. In a way that’s another inefficiency in the process, because you have to get the construction out of the way first, and then choose between non-infringement or invalidity depending on how the construction goes.

    I suppose you could also show the patentee your squeezably-soft prior art and settle the case.

    But my actual question is what you do if you can’t ‘squeeze’ your way out of infringement. Suppose the claim really is indefinite, and standing on its own it should be invalid for that reason, but you still infringe under any construction a court might apply.

    New Light: “That would be facetious, and I would expect such a purposeful misunderstanding of what I have advanced from IANAE.”

    You won’t get that from me. What you will get from me is a gentle reminder that seeing the law in a new light is not the same thing as seeing the facts in a new light.

    Of course examination should be done correctly, and of course we don’t want bad patents out there. But we’re talking about patents that were all examined as correctly as possible at the time (if all you can think of to challenge them is the old rejection plus KSR), and flooding the PTO with re-exam requests on every single pre-KSR grant wouldn’t actually help, because they’d all be tied up in the re-exam backlog until they expired. And a bunch more would be thrown into the queue every time there was another precedential case that purported to tweak the law of obviousness.

    So let’s keep re-exam for the cases it’s intended for – cases where the examiner simply missed or misunderstood the best prior art.

  36. Light:

    I don’t think that USPTO statement says “KSR could not induce a new light.”

    The USPTO is saying that the mere fact that KSR clarified the law is not enough. They are saying you have to apply that clarification, e.g., use one of the proper KSR rationales.

    The error meant to be corrected by reexamination is an invalid claim. Merely stating that an improper rationale (like strict TSM) was used to allow a claim is not enough to show a substantial new question of patentability on that claim. You must show that, based on a proper rationale, there is a substantial new question of patentability on that claim. That rationale can come from KSR or any other obviousness case.

    In sum, the USPTO is just saying that you’re going to have to apply a proper rationale. But that’s not too much to ask. If you can’t, it’s “no harm, no foul” and you shouldn’t waste the patent office’s time.

  37. “Do you think it unnecessary that examination is doen correctly?”

    Not only does he believe it to be quite necessary that examination be done incorrrectly, he delights therein. Indeed, to the point of wallowing much as a pig doest in the mud.

  38. No, anonymous, I am not sure that we agree – I think based on TSM error alone (not more than TSM error) with the exact same art IS the same as rationale in the KSR guidelines. So the question is NOT based on more.

    No new art required – only new light.

    KSR alone (not magic words, but the rationale) equals new light.

    And yes, the Office would be flooded – that’s why they pre-empted this with the false statement that KSR could not induce a new light – but that is expressly against what Congress did in relation to In re Portola Packaging. Congress expressly gave and the Office took away.

  39. The point is to use the reexam procedure as Congress set it out to be to correct errors in examination. You assume that it is unnecessary to correct such errors, and again I am not talking about those cases where the patent would issue with the proper KSR understanding.

    I think we agree. Whether there was a TSM error or not, the real question is whether a substantial new question of patentability exists that is based on more than a TSM error, e.g., based on the rationales in the KSR guidelines.

  40. Light,

    I’m sorry if you thought that my first paragraph wrongfully simplified your position because my first paragraph wasn’t referring to your position at all. It was referring to the following, which you quoted:

    “Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on the Supreme Court’s clarification of the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability and reexamination will not be ordered” [MPEP § 2216, Rev. 7, July 2008].” (my emphasis added)

    I take this passage to mean that pointing to a flawed TSM rationale in the file history and invoking the holy name of KSR is not (by itself) enough to create a substantial new question. (I assure you that practitioners would FLOOD the patent office with such “one-word reexam requests were it not for this passage.)

    I do not interpret this passage to mean that any KSR-based rationale cannot present the art in new light or a different way. Thus, the KSR guidelines are helpful.

  41. Anonymous,

    Your second paragraph contradicts your first. It is your second paragraph that is the essence of my point – and one that has been denied without a truly justifiable legal reason. The Office has point blank denied you the option you state in your second paragraph – without a sound legal reasoning – as I have pointed out, they purposely focused on the wrong standard, a standard no one argued and then handwaived their conclusion through.

    Also, your first paragraph has wrongfully simplified my position. It just isn’t a matter of submitting a one-word reexam request in the name of KSR. That would be facetious, and I would expect such a purposeful misunderstanding of what I have advanced from IANAE. Of course, the rationale of KSR is what I am advancing. That should be obvious from how I talk about the law being applied to the exact same art as TINLA explains possible with legislative changes in response to In re Portola Packaging.

    It is quite clear that the mere possibility of “hundreds of thousands of reexaminations would have to be granted on that basis, even if many of those applications would survive under KSR.” is not enough to blatantly misrepresent the law. The point is explicitly not about what is or is not convenient for the Office. The point is to use the reexam procedure as Congress set it out to be to correct errors in examination. You assume that it is unnecessary to correct such errors, and again I am not talking about those cases wher the patent would issue with the proper KSR understanding. I am talking about the hundreds of cases that I have personally seen and the thousands more like them that would plainly fail a proper KSR-guideline examination. Do you think it unnecessary that examination is doen correctly?

    Clearly, the Supreme court held that strict TSM was an error. No one seems to be arguing otherwise. It is total misdirection to state that this would overwhelm the Office. Such is just not an excuse for the Office unilaterally deciding what is law and what is not, and what they will allow as a SNQ and what they will not.

    Ping,

    If I had the resources I would file suit. I wish I did have the resources because I would win. You may think it meaningless that thousands of bogus patents are out there. I do not.

  42. It makes sense that, to create a substantial new question of patentability, pointing to a flawed TSM rationale in the file history and invoking the holy name of KSR is not (by itself) enough to create a substantial new question. If that were enough, hundreds of thousands of reexaminations would have to be granted on that basis, even if many of those applications would survive under KSR. Why unnecessarily overwhelm the patent office?

    That doesn’t mean KSR isn’t useful. Even relying on the same art, you might be able to create a substantial new question of patentability for some patents using one or more of the rationales articulated in the USPTO’s KSR guidelines, which rationales were likely never discussed or considered during the original prosecution.

  43. IANAE, sure, the infringer can make the same argument but why should he. In your scenario, he is just digging himself deeper in.

    I’m curious. Does the US not know “squeeze” arguments, central to any patent dispute in England?

    They go like this.

    Patent owner must overcome the burden to prove, by a preponderance, that infringer is within the asserted claim. Infringer has the burden of proving, by a preponderance, that the asserted claim is invalid. When (“thin-ish”) feature X is in both the art and the accused embodiment, patent owner is in a squeeze. Examples include (as you note) a Gillette Defence in UK or a Formstein Defence in Germany. Only strong claims win.

    I like squeeze arguments. I think they make for a system of “strong” patents. If you don’t know squeeze arguments, might that be because of your heightened Presumption of Validity (c+c) and the asymmetry it brings in its wake?

  44. Dim Light,

    blah blah blah unfair blah blah blah principles blah blah blah KSR

    If ya don’t like what the Office did – sue them. That’s what the big boys did. Ya might read up on a guy named Tafas.

    And Maxie,

    Thanks for proving Davey right about your lack O understan of US law. Your constant yappin about EP this and EP that just dont cover up your lack O knowledge about US law. It do bring the chuckles though!

  45. TINLA,

    It comes down to this:

    In addition to a newly-discovered reference, a previously applied reference can raise a SNQ if the previously applied reference is presented in a “new light”. Section 303(a) makes this explicit — “[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the PTO or considered by the PTO.” This sentence was added in the 2002 amendment to 35 U.S.C. § 303 to specifically address In re Portola Packaging, Inc., 110 F.3d 786 (Fed. Cir. 1997).

    This is the new light – the exact same reference can be used. If the exact same reference can be used, then logically the only difference would be the law it is used with. KSR changed the law – or (critically) changed the interpretation of the law. To the extent that some applications are granted and others denied on the basis of this interpretation – that is a substantive change in law. The office simply has no right to proclaim that KSR is not a new light, no matter how much workload it saves them. They cannot make decisions on substantive law.

    Ping, some of us still consider principles under the law to be important. The correctable errors here simply being ignored by the Office by fiat amounts to a transgression against principles both in number and manner.

  46. This is not an Argument. This is not to anger. This is something to think about. Lemke was on the desk July 19, 95. Lemke was given the right on nov 22, 1995… another key date.. to double . math. That’s all that is. Math is not patentable, so if you double what you have, then that is the same idea doubled. I am not a Lawyer. but I understand what is and what is not patentable. I am not as dumb as you all think. And as far as memory goes, well you see that is alive and well.
    But I am tired of the Lies and the cover up. I know the Blue eyed Baby was printed in Va. not Texas. Okay. Pleas don’t insult my Intelligence. you have already done that with my Life.

  47. “EPO Examiners, for example, just make the bald statement that the layer in D1 is thin-ish and thereby transfer to Applicant the burden of establishing that it is not.”

    Interesting way of making a prima facie case for invalidity.

    Can the accused infringer do the same, even assuming that his own device is more thin-ish than D1 and a Gillette defense-type argument would not avail him?

  48. And why on Earth is it unfair to Applicant, thus to switch the burden?

    cf

    complaints arise from trying to impose more conceptual universality than actually exists, failure to recognize and accept differences

    W

    T

    F

  49. IANAE writes:

    “…suppose you want to show that the thin-ish claim embraces within its ambit something that is old or obvious. Wouldn’t you have to know how thick “thin-ish” can be?”

    which I think nicely illustrates the different burden of “proving” some claim invalid, in adversarial common law USA as opposed to civil law mainland Europe. EPO Examiners, for example, just make the bald statement that the layer in D1 is thin-ish and thereby transfer to Applicant the burden of establishing that it is not. And why on Earth is it unfair to Applicant, thus to switch the burden?

  50. “Shouldn’t a little fuzziness with respect to the uninteresting features matter less, in the big picture?”

    No, it shouldn’t.

    If the uninteresting features are that unimportant, the patentee shouldn’t be claiming their properties at all. He was free to simply claim “an adhesion-promoting layer”. Once he adds that it’s thin, he needs to be clear on how thin, so I know how to make a thick one that doesn’t infringe. If he didn’t think the thickness was important at all, too bad. He put it in the claim, so now it’s as much a part of the claim as the “inventive bit”.

    And really, if you intend for a term to mean a specific range in the spec, there’s absolutely no excuse for not reciting that range in the claim. If you intend to claim something other than the range in the spec, you should be clear about it. Even in the Element 95 patent, “Element 95″ (the entirety of claim 1) was explicitly defined in the spec.

  51. In this case, I would rule that the term is ambiguous, and I would fully expect the Federal Circuit to reverse based on the range in the spec.

    You’re bolder than the average district court judge, then. But you might actually be upheld.

    But 6 unintentionally (and illegally?) raises an interesting issue. He says that the “relatively thin” feature has no effect on patentability. Without having done an extensive review, I believe this makes no difference in the 112 analysis. But should it? Shouldn’t a little fuzziness with respect to the uninteresting features matter less, in the big picture?

  52. Ned, I see your point. From the bench, it’s very hard to side with the party arguing that a term cannot be construed against the party that proposes a construction. It sounds like the one is saying it’s impossible while the other is doing it.

    In this case, though, I would have serious reservations about using any ranges in the spec (but not in the claim) to construe a term that is used in the claim (but not in the spec). Just because there is no other range used in the spec, that doesn’t necessarily enable one to construe the term. There’s a false dilemma between “this construction” and “impossible to construe”, when the problem with “relatively thin” is that you could easily apply any number of plausible ranges, but the term doesn’t actually mean anything.

    In this case, I would rule that the term is ambiguous, and I would fully expect the Federal Circuit to reverse based on the range in the spec. But just for fun, I would include the “relatively tall” analogy in my reasons.

  53. IANAE, imagine you are a judge and are asked to construe the “relatively thin” limitation. The PO argues that it means the ranges disclosed in the specification. The defendant argues that the term is ambiguous and cannot be construed.

    What is your ruling?

  54. Max: “What else do you have in mind?”

    Well, suppose you want to show that the thin-ish claim embraces within its ambit something that is old or obvious. Wouldn’t you have to know how thick “thin-ish” can be? Or suppose you want to design around the claim (or have already attempted to), but you have no idea how thick the layer has to be to escape liability.

    CPC: “The USPTO issued the claim and believed that the term thin and/or relatively thin met 112.”

    That doesn’t end the debate any more than saying “The USPTO believed the claim met 102″.

    CPC: “I am merely noting that the specification is not void of support for defining the terms that 6 was stuck on.”

    Of course it is. It contains some examples, but examples don’t define a term, especially a term that’s not in the spec at all. If 60A and thinner is “thin”, is 70A also “thin”? For that matter, what is “relatively thin”? Is it 40A and thinner because it has to be thin relative to “thin”? Is it 80A and thinner because “relatively” means we have to give “thin” some leeway?

    If I tell you I consider a 6’8″ (or taller, obviously) person “tall”, you have no idea whether I consider a 6’4″ person “tall”. You have even less idea of who I might consider “relatively tall”.

    And that’s true whether or not you’re a person I’d consider “relatively thick”.

  55. If you want “less than 60A” to be your claimed thickness range, you should either claim “less than 60A”, or explicitly define “relatively thin” in the spec to mean “less than 60A”.

    The debate is not over the best drafting practice that the inventor should or could have used. That is done. The issue is one of claim construction. The USPTO issued the claim and believed that the term thin and/or relatively thin met 112. Now a court will be tasked with determining the bounds of that language by looking to the spec first. I am merely noting that the specification is not void of support for defining the terms that 6 was stuck on.

    What about the term “over”? What does that mean? Can there be intermediate layers or does over imply some physical contact?

  56. IANAE, Defend? When your layer is also thin-ish? Why, by showing that you lack at least one other feature recited in the claim. Or by showing that the thin-ish claim is thick enough to embrace within its ambit something that is old or obvious. What else do you have in mind?

  57. Max: “‘Thin’ is unclear but ‘relatively thin’ might not be, if you know what it is thin relative to.”

    If it makes you feel better, before engaging in this discussion the first thing I did was look for a “relatively thick” elsewhere in the claim. I didn’t find one.

    Max: “Has any PTO ever issued a claim that is 100% ‘clear’?”

    Sure they have, but we don’t discuss the clarity of those. Here’s an example: “1. Element 95.”

    That’s why the rule isn’t “100% clear and unambiguous”, but rather more akin to “admits of construction”. But tell me, in a European litigation proceeding, how would you defend against a charge of infringement where the claimed invention includes “a thin-ish adhesive layer”?

  58. IANAE I’m not sure that I’m as worried as you are, about “relatively thin”. In Europe, clarity in the claim is required before that claim can issue but, once it has issued, nobody can object to its clarity. “Thin” is unclear but “relatively thin” might not be, if you know what it is thin relative to.

    The main thing is that in Europe, he who lives by the sword dies by the sword. By that I mean that validity hangs on the preponderance, just like infringement. If “relatively thin” can withstand validity attacks, it is probably clear enough for the courts correctly to decide infringement.

    Heaven help Europe, if ever the grounds of invalidity were to include “lack of clarity” or “indefiniteness”. Has any PTO ever issued a claim that is 100% “clear”?

  59. Can be used, but weren’t.

    Examples or ranges of thickness, without more, are not a definition of “thin”, much less of “relatively thin” which is a completely different term that isn’t even used in the spec at all.

    If you want “less than 60A” to be your claimed thickness range, you should either claim “less than 60A”, or explicitly define “relatively thin” in the spec to mean “less than 60A”. Considering how easy it is to distinctly claim that particular feature, I don’t see why we should allow the patentee this much leeway.

  60. “It was simply meaningless verbiage that is a remnant of a poor drafter plying his trade.”
    I agree on this statement. However, to say that “.. the spec could provide some insight, but none that I saw upon perusal” is wrong. There are example ranges and operating definitions in the spec that can be used to define thin.

  61. It was simply meaningless verbiage that is a remnant of a poor drafter plying his trade.

    That’s certainly possible. There’s plenty out there. And even the best of us have bad days, but “relatively” is usually a pretty scary word, and should only be used advisedly. As is “thin,” for that matter.

  62. A little worked up there, Dim Light?

    Don’t sweat it – any patent out there that blatant about bein a patent only cause of strict TSM will be dog meat when it comes to litigation, or even notice of litigation, as most good counsel will recognize the weakness there. So some have a pretty ribbon copy when they probably shouldn’t – aint no big deal no matter what the patents-is-evil crowd tells ya.

    As for the Office choosin not to do work, ya can’t tell me that that is a surprise now, can ya? Even if it is obvious low hangin fruit, they be tired.

    She said “I don’t believe you’re tryin’ to find no job”
    Said “I seen you today you was standin’ on a corner,
    Leaning up against a post”
    I said “But I’m tired, I’ve been walkin’ all day”
    She said “That don’t confront me”

  63. “Relative to what?

    The layers they’re between.”

    Lulz, no. Fail. Entirely fail. The patentee himself would set you straight right fast.

    The words, gentlemen, that they were looking for here was “thin” or, much better, striking “relatively thin”. Trust me, the thinness of this layer had no part to play in the claim getting over 103 etc. It was simply meaningless verbiage that is a remnant of a poor drafter plying his trade.

  64. “Is he making any friends?”

    Not many of late. My best bud just started hotelling and doesn’t come to the office very often. And I’ve been out of town many weekends of late. Or, when I do go out of town, I spend most of the other weekend of the biweek here at the office (usually, not as a strict rule).

  65. “6,

    Simply read the spec closer: “Thus, according to one embodiment of the present invention, thin barrier films implemented according to the present invention range from less than 60 .ANG. to a monolayer of material.””

    Mind telling me what that is relative to? We’re all aware they mean a group of layers that goes from the tiniest of the tiny (monolayers) to some upper bound. The question is, what is that upper bound? What is the thinness relative to?

  66. TINLA,

    Thank you for the dialogue. There is one item here that strikes me as a flagrant violation by the Office in deciding what is and what is not substantive law in order to make its own workload easier. Specifically, as announced by the Office in your post of 5:14 PM:

    The clarification of the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 550, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists“.

    So what??? No one says that standard was changed anyway. This is classic red herring.

    The section continues:
    The requirement for a substantial new question of patentability remains in place even if it is clear from the record of a patent for which reexamination is requested that the patent was granted because the Office did not show ‘motivation’ to combine, or otherwise satisfy the teaching, suggestion, or motivation (TSM) test.

    Again, no one is questioning that standard. The next part is where the biggest jump of horse hockey occurs:

    “Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on the Supreme Court’s clarification of the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability and reexamination will not be ordered” [MPEP § 2216, Rev. 7, July 2008].

    This is pure unadulterated hogwash. The unchagned standard is new light or different way – which was precisly what KSR was – it changed the strict TSM manner which was used – KSR had to be a different way because that is what the Supreme Court said. It is admitting the Office made mistakes because a faulty standard could not be met (strict TSM). The new light IS the proper light of combining references under KSR – which was different for all those applications that skated by on strict TSM. Basically, examiners were correct – but were not allowed to be correct because of a faulty legal standard. If Reexam cannot be used to correct such an obvious known error, what good is it?

    The only reason why a flood of (well deserved) reexams did not happen is because the Office point blank announced that they would not accept them – based on misdirection. However, given that the very nature of the KSR debate centered on how the prior art was to be understood in combination, the error is clearly met even with the references on record, because those references were applied in a strict TSM manner – a different combination standard. Strict TSM and the direction given by the Supreme Court in KSR must be a substantial question of patentability over strict TSM, because that it what the Court said. It cannot be anything but new as it was based on the then new Supreme Court KSR decision.

    It is a smokescreen to try to say different art is required, when it was not a matter of the individual art, but a matter of how the art was allowed to be combined. That combination itself is the different way. When you change the standard by which references can be combined, that means that the references were not evaluated in the KSR manner, thus any reference was not applied in this “new manner” and any reference, along with the rationale in KSR, provides the new light.

    Granted this is not universal, but I quite literally saw hundreds of applications that skated by on strict TSM that would fail in the new light of KSR – under the exact same art considered – but considered in an old and wrong way.

    Reexam was meant to correct Office error, and the largest batch of Office error is allowed to stay on the books because the Office doesn’t want to do the work.

    There are simply too many patents out there based on a different standard – a wrong standard as judged by the Supreme Court. That the Office on its own accord simply announced that they would not fix them – in order to avoid the work – strikes me as profoundly unjust.

  67. “Simply read the spec closer:”

    That’s an example, not a definition. And it’s certainly not a definition of “relatively thin”, an expression that appears only in the claims.

  68. 6,

    Simply read the spec closer: “Thus, according to one embodiment of the present invention, thin barrier films implemented according to the present invention range from less than 60 .ANG. to a monolayer of material.”

  69. Oh, by the way, those “hundreds of millions of dollars” IV paid to “individual inventors” for their 30,000 patents?

    I wonder if they’re counting in that total the money they paid to all those non-individual-inventor corporations for the patents they’re actually suing on, and how many of their 30,000 patents were actually purchased directly from the inventors.

    Assuming that “hundreds of millions” is their entire expenditure to acquire their 30,000 patents, that works out to between 7 and 30 thousand per patent, which at best barely covers drafting and prosecution costs. So much for patent trolls being the long-awaited sugar daddy for individual inventors looking to get paid.

  70. Cy Nical: “Relative to what?

    The layers they’re between.”

    Sure, that’s one construction, but the claim could equally well mean relative to other adhesion-promoting layers in the same device, relative to how thick a person skilled in the art expects a typical adhesion-promoting layer to be…

    And once you’ve established the reference thickness, just how thin is “relatively thin”? Is it merely measurably thinner? Half the thickness? Ten percent? So thin that it’s not visible to the naked eye? Are we reduced to asking a person skilled in the art whether he’d glance at the device and say “boy, that’s one thin adhesion-promoting layer!”?

    I don’t know how thin adhesion-promoting layers usually are in those semiconductor devices, but what would you say of a “relatively thin” adhesion-promoting layer between two pieces of wood? That couldn’t possibly mean the glue is thinner than the wood because that would be silly, so how to construe it?

    Unless the rest of the claim or the spec sheds some light on what the term means, I would consider the claim indefinite. But I am not an examiner.

  71. 6 has been down this road before.

    last time, he inserted the word “hypothetically” in front of each comment.

    if it helps, just consider that 6 isn’t a real examiner, and special rules apply to such examiners who ride into work on the short bus.

    6’s mom,

    6 is behaving well in class as we always keep an eye on him and do not leave him alone with any sharp instruments or other items (like the glue). He rarely wets himself anymore. He makes pretty pictures (he says they are of horses).

  72. 6, I tried so hard to teach you read properly but you just never learned – you always skipped over the parts that made you squeamish. Go back and read Rule 1701 again. And be sure to take your meds first, so you won’t be tempted to skip over the unpleasant parts.

  73. “Those ginormous smackdowns under Section 112 are rarer than they ought to be, but I doubt one is appropriate here.
    Posted by: Cy Nical | Dec 08, 2010 at 10:26 PM”

    You might find this interesting:
    link to scotusblog.com

    Certirari petition in Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 132, reh’g denied, 605 F.3d 1347 (Fed. Cir. 2010).

    Issue: “For a patent to be valid, its claims must be ‘deftnite’—the patent must include ‘claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.’ 35 U.S.C. § 112 ¶ 2 (emphasis added). The Federal Circuit holds that this requirement of ‘particular[ity]’ and ‘distinct[ness]’ is satisfied so long as claim language is not ‘insolubly ambiguous,’ or is merely capable of being construed. The question presented is:

    Whether the Federal Circuit’s standard for definiteness is consistent with the language of § 112.”

  74. Relative to what?

    The layers they’re between.

    The big thick ginormous smackdown our good buddy 112 puts down on relative language?

    Yeah, good luck with that in district court. If the plaintiff puts up a plausible construction for “relatively thin” that lets the judge get out of invalidating it, he will.

    Those ginormous smackdowns under Section 112 are rarer than they ought to be, but I doubt one is appropriate here.

  75. A sleeping giant awakes. Wait for all the anti-patent rhetoric. Haven’t reviewed the patents, but if valid and enforceable, they’ve got a right to enforce.

  76. Lulz, validity is a matter for a court to decide. I express no opinion on the validity of the claim.

    It could very well violate 112 and still be valid. I have no idea. You’ll have to ask a court lol.

    Additionally, the claim could be valid with infinite SNQ’s raised as new questions of validity are not validity.

    What, prey tell, makes you think I expressed an opinion on the validity of this claim or any claim broje?

  77. LOL @ 6

    1701 Office Personnel Not To Express Opinion on Validity*>,< Patentability>, or Enforceability< of Patent [R-3]

    Every patent is presumed to be valid. 35 U.S.C. 282, first sentence. Public policy demands that every employee of the United States Patent and Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or invalidity of, or the patentability or unpatentability of any claim in any U.S. patent, except to the extent necessary to carry out

    (A) an examination of a reissue application of the patent,

    (B) a reexamination proceeding to reexamine the patent, or

    (C) an interference involving the patent.

    The question of validity or invalidity is otherwise exclusively a matter to be determined by a court. >Likewise, the question of enforceability or unenforceability is exclusively a matter to be determined by a court.< Members of the patent examining corps are cautioned to be especially wary of any inquiry from any person outside the USPTO, including an employee of another U.S. Government agency, the answer to which might indicate that a particular patent should not have issued.

  78. “But, back to the claim. If I speak of different layers and say that two of the layers are relatively thin, at least we have a frame of reference. But, then, just how much thinner is must the layer be? AFAIK, that can be in the spec, not so?”

    Don’t go starting an illegal limitation imporatation business there Ned. Newman will drive you out of the market in short order as she has it cornered.

    But yes Ned, the spec could provide some insight, but none that I saw upon perusal.

    And no, we don’t really have a frame of reference save that we’re not talking about a layer that is as thick as say, a house, which we already had sans that limitation. For instance, the “relatively thin” layers here do not have to be thinner, to any degree, than any other layers already specified.

    Btw, establishing a SNQ on the few of those patents I glanced at would be easier than taking candy from a college freshman girl.

  79. New art won’t establish an SNQ unless the requestor meets the burden of establishing that it is not merely cumulative with the references considered. The requestor has to discuss the file history. See the same article, especially the section excerpted below:

    To establish a SNQ, the requester must demonstrate that a patent or printed publication presents a new, non-cumulative technological teaching that was not previously considered and discussed on the record during the prosecution of the application that resulted in the patent for which reexamination is requested, and during the prosecution of any other prior proceeding involving the patent for which reexamination is requested (MPEP § 2216). Additionally, the reexamination request “must point out how any questions of patentability raised are substantially different from those raised in the previous examination of the patent before the Office (MPEP § 2216).

    Thus, the burden is placed on the third party requester to demonstrate that the questions of patentability raised are substantially different than those raised in previous examinations.

  80. Yeah, 6, the examiners today are much more sensitive about terms such as “substantially” and “relatively.” Bravo for them.

    But, back to the claim. If I speak of different layers and say that two of the layers are relatively thin, at least we have a frame of reference. But, then, just how much thinner is must the layer be? AFAIK, that can be in the spec, not so?

  81. Hey, New Light.

    See link to reexamcenter.com

    Particularly relevant portions of which are excerpted below:

    In addition to a newly-discovered reference, a previously applied reference can raise a SNQ if the previously applied reference is presented in a “new light”. Section 303(a) makes this explicit — “[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the PTO or considered by the PTO.” This sentence was added in the 2002 amendment to 35 U.S.C. § 303 to specifically address In re Portola Packaging, Inc., 110 F.3d 786 (Fed. Cir. 1997).

    In re Swanson provides some guidance on what constitutes a “new light” for old art. For example, an SNQ based on previously applied art could arise because the examiner in the original examination misunderstood the actual technical teaching, because the examiner failed to consider a portion of the reference that contained the now cited teaching, or if the examiner applied the reference to a different limitation or claim than the reference is currently being applied. But a reference does not raise an SNQ if the examiner in the original examination understood the actual technical teaching, but got it “wrong” in the rejection. This is a subtle but critical distinction.

    “The clarification of the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 550, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a substantial new question of patentability exists. The requirement for a substantial new question of patentability remains in place even if it is clear from the record of a patent for which reexamination is requested that the patent was granted because the Office did not show ‘motivation’ to combine, or otherwise satisfy the teaching, suggestion, or motivation (TSM) test. Thus, a reexamination request relying on previously applied prior art that asks the Office to look at the art again based solely on the Supreme Court’s clarification of the legal standard for determining obviousness under 35 U.S.C. § 103 in KSR, without presenting the art in new light or different way, will not raise a substantial new question of patentability and reexamination will not be ordered” [MPEP § 2216, Rev. 7, July 2008].

    So basically, you just have to raise the SNQ based on the art of record by establishing that the examiner in the original examination misunderstood the actual technical teaching, that the examiner failed to consider a portion of the reference that contained the now cited teaching, or that the examiner applied the reference to a different limitation or claim than the reference is currently being applied. Then KSR can be used in the subsequent analysis.

  82. “You just can’t say “KSR,” or “KSR and the same sections of the same references.””

    When I say KSR the ground trembles. So I try not to do it indoors.

  83. “What is claimed is:

    1. A semiconductor device comprising: a substrate; at least one active region formed in said substrate; a first dielectric layer over said at least one active region; a dielectric diffusion barrier layer over said first dielectric layer; a second dielectric layer over said dielectric diffusion barrier layer; a metal interconnect over said second dielectric layer; and a conductive partial-diffusion barrier and adhesion-promoting layer between said metal interconnect and adjacent portions of said second dielectric layer; said conductive partial-diffusion barrier and adhesion-promoting layer being relatively thin and being spaced from said dielectric diffusion barrier layer by said second dielectric layer. ”

    “relatively thin” I lulzed. Relative to what? The big thick ginormous smackdown our good buddy 112 puts down on relative language?

    If all of IV’s patents are of similar “quality” these defendants should be under no great duress. And there should be no wonder why they ignored IV.

    If any of these defendants need a bit o’ help I’m available for a low low price.

  84. I have wondered previously directly to this point and was (unsatisfactorily) informed that KSR cannot serve as a basis for reexam.

    If KSR could serve as a basis for reexam, you could trivially come up with a SNQ for any patent allowed before KSR, particularly one that has a 103 in its past.

    Not that the PTO is filtering out a whole lot of requests at that stage anyway, but that’s another story.

    Even under your view I was told “No.”

    Even citing new prior art, you were told that you had no basis for reexam? That doesn’t seem plausible, but also I don’t see why KSR should be to blame for it.

  85. KSR alone can’t be used, but if you point to a different reference, or to a different section of the same reference, then the KSR standard is observed. You just can’t say “KSR,” or “KSR and the same sections of the same references.”

  86. Fish sticks,

    I have wondered previously directly to this point and was (unsatisfactorily) informed that KSR cannot serve as a basis for reexam.

    To this day I feel that for any patent granted under a more lax standard, the SNQ as pointed out by KSR should be fair game. It does not seem fair to have more than one operable standard.

  87. Quote: “At least one other patent asserted…was invented by…Bob Proebsting after his death….”

    How does one “invent a patent”, especially after they’re dead?

  88. Have any of the asserted patents been subject to reexam? And what’s the likelihood that someone will now look to go the declaratory judgment route?

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