Old-School Submarine Patents

Old-school submarine patents were serious business. Throughout the late 20th Century, more than a handful of patent applicants kept patent applications pending for years-and-years until the claimed invention became market-ready. Once the patent issued, the patent would then be enforceable for seventeen–years from the issue date.  

Two legal changes have eliminated most of the concerning submarine issues for newly filed applications. Patents granted on applications filed after June 7, 1995 have a term of twenty-years from the priority filing date.*  In 2000, the PTO began publishing pending patent applications and now the vast majority of pending applications are published 18–months after filing.

Old patent applications, new patents: I e-mailed with a USPTO official who identified that there are about 600 still-pending patent applications that were filed before the 1995 cut-over (excluding classified applications).  These old cases are all being treated as “special” and the oldest one-hundred cases are receiving special attention.  In 2010, the USPTO issued patents on just over 60 of these old applications. The majority of the 2010 patents were granted to a company known as Personalized Media Communications (PMC). According to its website, PMC still has “over 100 pending patent applications” that were filed prior to the 1995 cut-over.  These patents and applications are all based on a pair of applications filed in 1981 and 1987 but will be in force until at least 2027 — 46 years later.

I looked through the prosecution history of PMC's recently issued patent No. 7,734,251. The final six years of prosecution involved an appeal that was fully briefed (over a 16–month period) and then returned to the examiner for re-briefing. The BPAI eventually decided the case –  affirming the rejection in-part –  then, on re-hearing reversed and agreed with PMC that all of its pending claims were patentable.  The prosecution is also notable for the handful of R.132 affidavits filed by various experts supporting patentability.  In the end, the cases were also being handled at the SPE level. PMC is represented by by Tom Scott at Goodwin Procter.

Notes:

* The twenty-year term is not triggered by priority claims to either foreign national or provisional patent applications.  Most patent terms are lengthened based on statutory patent-term-adjustment (PTA) due to unreasonable USPTO delays in issuing the patent.

70 thoughts on “Old-School Submarine Patents

  1. Ianae: your one of the few character deframer of ignorance at least so far on this blog. Ive filed 12 patents so far all original marketable products actually containing 30+ marketable conc epts.In contact with thousands of suposed inventors just previous to there slleged conceptions.What this would mean is the pto would make an initial determination as to inventorship and allow only one startup patent pending status.This also would nean that those wishing to startup would need to deal with the true inventor instead of claming backdated intercompany memos ect.This has the potential of forcing companies to deal fairly as business partners with inventors. Ill bet youve don a ton sf snaky deals with stolen intellectual property in your days if your an attorney You should owe me restitution for that you thief.

  2. World’s only theftee of significance, arguably: Also patent term should start with usage startup by the true inventor not the theftor.

    Does that mean you can’t sue anyone for infringement until you practice your own invention (because the term hasn’t started yet), or does it mean that the term would be extended indefinitely until you practice your own invention?

    If the former, the critics of eBay would like a word. If the latter, Lemelson could have saved himself a lot of PTO procedural shenanigans – his patents would have lasted forever.

  3. What we need is parent patents to recognize the original idea that produced subsequent subinvention and make the improvements during the original term subject to the original patent not replacing it as is likley the policy now.Also patent term should start with usage startup by the true inventor not the theftor.

  4. Lemelson is the real victim here. He was harassed with over 600 patents, and now he’s dead!

    Good riddance and merry christmas.

  5. Hey Sunshine, how else am I supposed to take a statement like:

    “Ping, this isn’t about policy”

    Specially as your policy positions are so unfounded in fact or law.

    Ya just be a bowl full of chuckles askin someone else to be grounded when you be in free fall most O the time.

  6. So ya sayin that your policy statements are allowed to be unfounded opinion?

    Do you see me saying that? Or are you just jumping to conclusions?

  7. Ping, this isn’t about policy

    So ya sayin that your policy statements are allowed to be unfounded opinion?

    Funny, Iza thought that even policy should be based on proper foundations.

  8. “…this is Riley making unfounded accusations that the USPTO acted underhandedly with regard to a few specific applicants. I don’t accuse people of bad conduct unless I have evidence of such conduct. Riley would be wise to do the same. Otherwise he runs the risk of being on the wrong end of a defamation suit.”

    Lulz

    The evidence of PTO officials of the Dufas admininstration meeting with RIM is not exactly a state secret. And Mr. Riley is hardly the first to make accusations that PTO officials acted improperly during the NTP reexams.

    A defamation suit?

    Infinite lulz

    Keep ‘em coming.

  9. Ping, this isn’t about policy; this is Riley making unfounded accusations that the USPTO acted underhandedly with regard to a few specific applicants. I don’t accuse people of bad conduct unless I have evidence of such conduct. Riley would be wise to do the same. Otherwise he runs the risk of being on the wrong end of a defamation suit.

  10. It is a fact that the USPTO has allowed examiners, no actually ordered examiners to harass certain patent applicants.

    Wait, so you’re saying that the PTO has ordered examiners to harass certain patent applicants by giving them 40-60 year patent terms and billions of dollars in royalties from mature industries?

    Clearly, Lemelson is the real victim here. He was harassed with over 600 patents, and now he’s dead!

  11. LOLs comin from the Wilton-man, main proponent of arguin from policy without facts (or law).

    Your suggestions would be much more impactful, if ya led by example there Sunshine.

  12. It is a fact that the USPTO has allowed examiners, no actually ordered examiners to harass certain patent applicants.

    A “fact”, you say? Or is it more accurate to say that this is your unfounded opinion? I suggest that before you start touting conspiracy theories about the USPTO as fact, you find some evidence to back up your ridiculous claim.

  13. In the first sentence of the second paragraph, the second ‘issued’ should be ‘analyzed’.

    “I do believe that if the prosecution histories for many of the useful, issued Lemelson patents were [analyzed], the issued claims would be struck down under 112.”

  14. Ping wrote

    “Since any and all claims in all submarines must still have all of the legal support in the original as-filed document, claim writing for submarines years even decades later demanded some serious lawyer skills in writing. What we have today is so constrained, its for pikers.”

    Lemelson managed to successfully assert claims in his issued patents.

    I do believe that if the prosecution histories for many of the useful, issued Lemelson patents were issued, the issued claims would be struck down under 112. However, Lemelson was still successful due to the licensing style employed by Lemelson and his attorney. Wading through a prosecution history to show the introduction of new matter in a chain extending 40 years while in court proceedings is a costly endeavor.

    That’s why even if the issued claims are not supported by the initial filing, submarine patents that issue aren’t worthless.

  15. “Name some.”

    “Lemelson. Katz. Hyatt”

    “Happy?”

    “Posted by: Old-school lulz | Dec 15, 2010 at 04:05 PM”

    Which is bunk!!

    It is a fact that the USPTO has allowed examiners, no actually ordered examiners to harass certain patent applicants.

    What happened in many cases is that an inventor thinks they are entitled to a patent which the examiner flat out refuses to issue. So the inventor appeals, years go by, like 5 or more years and the inventor wins. The USPTO sends the case back to the same examiner who is pissed that the inventor showed them up. The examiner then uses every procedural trick they can think of to continue to deny the inventor the full scope of their legitimate patent claims. More appeals are required.

    Lemelson had over 600 patents and at the time was the second most prolific inventor after Edison. Only a handful of his patents related to machine vision had long delays and it is a fact that 26 years of those delays were a result the USPTO.

    If those patents had been issued when they should have been they would have expired before the industry developed.

    When big business interests started howling about the patents the USPTO never acknowledged that they were at fault and moved to reign in the kind of agency abuses which created the problem. Instead they blamed inventors.

    When the court invalidated the patents based on delay they carefully sidestepped addressing the fact that the USPTO caused those delays by not reigning in the examiner.

    Most inventors do not have the resources to to defend their rights in the face of USPTO misconduct. The difference between Lemelson, Hyatt, Katz and others is that they have had the resources defend their rights.

    USPTO wrong doing goes far beyond this issue, in that agency leadership have consistently conducted agency business with an eye towards post USPTO employment opportunities.

    I had the pleasure of knowing Gordon Gould. He had some interesting things to say about how the USPTO did its best to deny him credit for inventing the laser. I had feedback from examiners during the mid nineteen-nineties that both Lemelson’s and Hyatt’s applications were being held hostage at the hands of USPTO management.

    Also, NTP was systematically harassed as a direct result of RIM lobbying our government, including the USPTO. I received credible reports of USPTO management being transported on RIM’s jet.

    RIM made lots of noise about the USPTO rejecting all of NPT’s claims and they invested a great deal of money painting their $612 million dollar payment as a gross injustice. Eventually NPT’s patents came out of reexamination with if I recall correctly three infringed claims. So the reality is that RIM deserved what they got, yet today most people still believe that RIM suffered an injustice. Also, today we are seeing that RIM is just another stagnate company who is clearly in decline, a situation which is consistent with their inability to produce the inventions they need to stay competitive in the marketplace.

    I have reason to believe that if RIM had licensed the NTP patents upfront that they could have done so for far less money, perhaps ten million.

    You might ask why they did not do so.

    The inventor, Thomas Campana Jr. was a classical American independent inventor. He had cancer and died while RIM did everything they could to misappropriate his invention, including being caught red handed committing fraud on the court. So did RIM take his invention figuring that he was too sick to defend his rights? If that was the case they most certainly would not be the first or last company to conduct themselves in such a manner.

    We have the Coalition for Patent Piracy & Fairness and the 21st Century Coalition for Patent Deform & HARMonization doing their best to kill upstart start up companies. These are the same companies who are shipping American jobs and our collective manufacturing know how to low wage countries. These are the same companies who are impoverishing every developed country in order to line their own pockets.

    In the 1990s the big lie was submarine patents and today it is patent trolls.

    The only reason that companies like Intellectual Ventures are able to buy tens of thousands of high quality patents cheaply is that existing large businesses intentionally refuse to license inventions which they knowingly steal. They brought the IV business model upon themselves through their disreputable conduct. They deserve IV and they have earned what they are getting from those who invest in patent enforcement entities.

    These predatory transnational companies are killing start up companies, jobs and the prosperity they would create by stealing American ingenuity on a staggering scale.

    Tell me how America and for that matter other developed countries can be competitive if these companies are allowed to continue filching the ingenuity of each country’s inventors? Does anyone believe that our standard of living can be sustained reselling low profit margin commodities which have been produced in developing countries?

    Ronald J. Riley,

    President – http://www.PIAUSA.org – RJR at PIAUSA.org

    Other Affiliations:
    Executive Director – http://www.InventorEd.org – RJR at InvEd.org
    Senior Fellow – http://www.patentPolicy.org
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST.

  16. ‘Old-school submarine patents were serious business’

    Name some. Seldom did that occur because small entities could not afford that game. We need patents to get funded. This is another red herring used by those who would gut the patent system to thwart would be start ups. Now we have to fight the PTO to get anything because they are the ones who now submarine our patents by denying until we go under or give up. Meanwhile we run out of patent term and the ability to commercialize our inventions against large infringers against whom we can no longer get injunctions. Congress has thrown out the baby with the bath water. Keep in mind small entities provide the lions share of new jobs -the kind that pay well. Good luck fighting unemployment.

    Patent reform is a fraud on America.
    Please see link to truereform.piausa.org for a different/opposing view on patent reform.

  17. “I am pretty sure that merely questioning anything cannot serve to shift burden in either presentation or persuasion.

    Try again.”

    Okay.

    “A simple statement such as ‘Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed.’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”

    A simple statement establishes a prima facie case and shifts the burden.

    Happy?

  18. Max: But where is the law requiring motorists to go back to summer tyres (better braking in the heat than winter tyres can deliver) for the months of summer? Nowhere to be seen.

    How many people really want to drive on winter tyres in the summer? In answering that question, consider how few even want to use them in the winter.

    That winter tyre law sounds just fine to me. Make a law against what people are doing wrong, when it turns out that behavior poses a risk to the general public. When summer comes around, count on people to do what’s right by furthering their own interests.

  19. Canada has a similar problem with what we call ‘Old Act’ patents that were filed prior to 1989. These ‘Old Act’ applications are not published and expiry 17 years after issuance (in contrast to 20 years from filing for all applications filed after 1989).

    About 10 of these ‘Old Act’ patents are still issued every year having been in the patent office for over 20 years (see list at: link to ippractice.ca). I’ve gathered some of the oldest of these patents, one of which was filed in 1965, issued in 2007 and could be in force until 2024 (see list at: link to ippractice.ca)

    Alan

  20. Max, Judge Newman did not care what the EPO does, and as noted above, the EPO itself no longer allows new divisionals to be filed years after the original filing date. Also they never did readily allow late-claiming of new claims radically different from anything in the original application. My impression was that Judge Newman was hung up on the absence of a statutory basis for “prosecution laches.” That seemed very strange, since that is the whole point of equity and equitable defenses, and the very reason for them since equity law started centuries ago.

  21. I meant toilet-paper holder art, my bad.

    And then there was the toilet paper holder with a POWERFUL COMPUTER BRAIN that sends a signal to a user’s receiving device, wherein the signal contains information about a need to buy more toilet paper. In another embodiment, the POWERFUL COMPUTER BRAIN accesses a network to determine what brands are preferred by a user’s friends and/or family, or what brands are preferred by customers whose purchase profiles are most similar to said user’s purchase profiles.

  22. all the examiner has to do to “shift the burden“… is merely question where the claims are supported

    I am pretty sure that merely questioning anything cannot serve to shift burden in either presentation or persuasion.

    Try again.

  23. ‘Patents granted on applications filed after June 7, 1995 have a term of twenty-years from the priority filing date.’

    The statute states…’The term of a patent …that results from an application filed before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act (December 8, 1994) shall be the greater of the 20-year term as provided in subsection (a), or 17 years from grant, subject to any
    terminal disclaimers.’

  24. “Must be prosecuting in the softie woftie “technology” area.”

    Or the ultra-soft toiletpaper arts. Oh wait, I meant toilet-paper holder art, my bad.

  25. I’ve never had an examiner foolish enough to maintain a 112, 1st or 2nd rejection all the way through to appeal.

    Must be prosecuting in the softie woftie “technology” area.

  26. Lulz, you are being ironic, right. But, if not, do me a favour, will you (if it’s not too tough for you)? I look and I look at 35 USC 112 but fail to see “supported”. Where do I find it?

    I do see “written description” though. I am supposing that when the courts use “supported” they are interpreting the statutory language. But courts can refine their interpretations, can’t they, and 6 should base himself on the statutory language, right?

  27. “Mine seem to stick, o, lesse, 95%+ of the time?

    Easiest way for me to ensure no appeal: 112 1st (or 2nd really) on final. Have yet to have even a pre-appeal filed for a 112.”

    I’ve never had an examiner foolish enough to maintain a 112, 1st or 2nd rejection all the way through to appeal.

    Then again, based on your posts, you probably are foolish enough.

    Lulz

  28. “it doesn’ have anybody, at any level, that can make a proper 112, 1st (written description) rejection that will stick.”

    Lulz. Is that right? Mine seem to stick, o, lesse, 95%+ of the time?

    Easiest way for me to ensure no appeal: 112 1st (or 2nd really) on final. Have yet to have even a pre-appeal filed for a 112.

  29. “Applicants have the right to any claim for subject matter that is supported and enabled by their application as originally filed, novel and unobvious”

    Tell it to Bilski.

  30. “Is this now their ‘right’?”

    Applicants have the right to any claim for subject matter that is supported and enabled by their application as originally filed, novel and unobvious.

    Don’t like it? Too bad about you.

  31. Off thread: The European Commission has just put out a Press release that informs the world that because of translations it costs (on average) ten times as much to patent an invention throughout the cumulative territory of the 13 largest EU Member States as it costs in the USA. I thought it would interest readers to know that, according to the Commission, the average cost of getting a US patent is EUR 1850. When reflecting on that figure of EUR 1850, keep in mind that the Commission wants its EU-wide patent wheeze to displace the present national patent systems in Europe. Can you trust any Press Release, these days?

  32. “Furthermore, I do not believe that many of the examiners of these long-chained cases are really checking to see if every term and combination of these late-added claims is really fully 112 supported for both disclosure and enablement in the old orignal specification. Nor even asking the applicants to show where that support is, with Rule 105 or otherwise.”

    Rule 105?

    Lulz

    I can hear all the PTO’ers now: Star Fruits!! Star Fruits!!!

    Lulz on top of lulz on top of even more lulz

    Even under the “standard” of Hyatt v. Dudas, all the examiner has to do to “shift the burden” to the applicant to demonstrate possession of the claimed invention is merely question where the claims are supported. That’s about the toughest burden the examining corps is capable of meeting (and most of them aren’t even capable of meeting that).

    The real problem, of course, is that when the applicant does reply and demonstrate possession of the claimed invention, as Mr. Hyatt did, the PTO is right back to square one: it doesn’ have anybody, at any level, that can make a proper 112, 1st (written description) rejection that will stick.

  33. Challenge IANAE? Sure. Fun? Of that I’m not so sure.

    The new time limit imposed on the EPO by its owner, the (political) Administrative Council is a response to the world-wide criticism of late-emerging patent claims, a feature of the US patent system. Rushed and flawed legislation. I am reminded of the new feel-good law just rushed through the German Parliament, requiring people in winter to fit winter tyres to their cars. Different rubber, better braking in sub-zero temperatures. But where is the law requiring motorists to go back to summer tyres (better braking in the heat than winter tyres can deliver) for the months of summer? Nowhere to be seen.

    The EPC got it right first time, in 1973. After filing, you are not allowed to add to the pending application any disclosure that is not directly and unambiguously derivable, by the PHOSITA, from the original written description in the app as filed.

    In recent years, Americans have grown used to being able to claim, years later, inventions they had not even thought of, back on their original filing date. Is this now their “right”? I do not see how it fits with the requirement that, for the particularly claimed invention, there be, in the app as originally filed. a corresponding written description The requirement for such a written description has been around for much longer than since 1973, I’m sure.

    ping wants the Examiners to do their job. But I think the courts should also do theirs.

  34. Applicants at the EPO can prosecute their n’th divisional even while the 20 year term draws to a close.

    Yes, but presumably the EPO considers that a problem, whence the new time limit for divisional filings. Of course, you might still luck out and get that examiner who will let both the parent and the divisional sit unexamined for a decade, but you can’t file endless continuations and completely rewrite your claims after 20 years like in the US.

    Here’s a fun challenge for you, Max. Come to the US and declare in some official capacity that Americans will henceforth have slightly fewer rights than they used to have. See how that goes over, even if it’s a right most people have never heard of and they would never dream of using even if they knew how.

  35. I do not believe that many of the examiners of these long-chained cases are really checking to see if every term and combination of these late-added claims is really fully 112 supported for both disclosure and enablement in the old orignal specification.

    Yep – who’s to blame for not doin their F-n job (again)?!

  36. Mr Morgan, as we see above, Applicants at the EPO can prosecute their n’th divisional even while the 20 year term draws to a close. But it is the USA that prides itself on having the world’s most powerful patent system. So, could it be that Newman et al are mindful that, if the EPO allows it, then going forward so must the USA (for reasons of public policy) permit Applicant unimpeded prosecution of the n’th application in its cascade of filings at the PTO?

    Only asking.

  37. Yes indeed this was a loophole, and still is to some extent, since even the new patent term does not prevent [as ping notes] cleverly changing and broadening claims up to at least 20 years after the date of the original application and claims, in chains of continuations, CIP’s RCE’s, or divisional, to cover much later and different products of others. Furthermore, I do not believe that many of the examiners of these long-chained cases are really checking to see if every term and combination of these late-added claims is really fully 112 supported for both disclosure and enablement in the old orignal specification. Nor even asking the applicants to show where that support is, with Rule 105 or otherwise.
    Furthermore, when the CAFC finally started enforcing the equitable defense of “prosecution laches” in Lemelson cases that finally made it there, it looked like there was another potential “depth charge” defense against submarine patents. But Judge Newman [who had dissented] now seems to have succeeded in convincing one other judge to significantly defuse that defense by adding a nearly impossible [for the PTO] requirement for it in Cancer Research Technology Ltd. v. Barr Laboratories, Inc., (11/9/2010). The district court had held that delay caused by eleven continuation applications and no substantive prosecution even attempted for nearly a decade constituted prosecution laches. But two of the judges said that “evidence of intervening rights” was now additionally required [even though it had never been before].

  38. ping you mis-read me, I suspect.

    I was alluding to the UK law lord who explained a hundred years ago that nobody has any ethical duty to pay a penny more tax than the law requires. That says nothing about whether the law in question makes any sense. When a statute is crackpot, I do not blame the lawyers who, on behalf of their clients, astutely take advantage of the cracks.

    What a comfort it is, though, to receive confirmation that my viewpoint is out front, in the clear, and over the horse’s head.

  39. Hmmm – why weren’t all these submarines on Ping’s sonar?

    Not an answer mind ya, but here’s an observation:

    Since any and all claims in all submarines must still have all of the legal support in the original as-filed document, claim writing for submarines years even decades later demanded some serious lawyer skills in writing. What we have today is so constrained, its for pikers.

    Maxie – did ya actually sit in the saddle correctly this morning? How is the new view?

  40. A little known fact is that the JPO also engaged in issuing submarine patents. For a period in the early 1990s patent applicats could request accelerated examination which skipped the early publication stage. I wrote it up in World Patent Information, (Japanese submarine patents: examined patents within a year of filing!)Now this is not the same as the USPTO case but, to my knowledge, these patents would not be picked-up in ‘normal’ database searches as they never appeared as kokai. At one stage there were 7000 such early examined patents a year and most were filed by NEC.

  41. Good of you, Dennis, to pick out PMC’s 7734251 B1. I see that it has no less than 33 full pages of references cited.

    Not many of them came from the five corporate Opponents (from the USA, UK, Germany and Holland) to the parallel 1997-issued EPO Patent 382764. Even in aggregate, these various Opponents, highly skilled in the art, cited only a small select group of references.

    PMC, having demanded that the opposition proceedings at the EPO be expedited, ran out of road, asking the EPO on exactly the expiry date of the patent term of 20 years not to issue any written Decision on the merits. Incidentally, I wonder whether it was a PMC threat of infringement actions in Europe that prompted the Defendants to oppose.

    In September 1996, PMC filed a precautionary Euro divisional 752767 before the parent issued. In October 1996 it requested its examination on the merits. A first Office Action issued in November 2007. (Question: a propos that 11 year gap between asking for examn and getting the first action, who liked it more, PMC or the EPO Examiners handling the contemporaneous opposition proceedings?) Anyway, Applicant chose in the end not to reply to the Examiner. Perhaps that was because the common 20 year term had already expired in September 2008.

    Dennis, your link to PMC is also interesting. PMC looks like an enterprise with much integrity, busy promoting the progress of useful arts! I say that you cannot blame an inventor/entrepreneur for exploiting, up to the hilt, the legitimate business opportunities afforded by the law of the land.

  42. In Hull there flows the Ocean,
    it goes into the Bay.
    And on it flows again,
    to Hingham I would say.

    But then, on it contiues,
    into the river Weir.
    So like a name that I do know,
    Someone that just might care.

  43. Re the prior comment that most of the submarine patents seem to be by certain individuals, that is, “submarine admirals” talented at running circles around the PTO, Hyatt v. Dudas (Fed. Cir. 2008) publicly exposed that literally thousands more of his “submarine” claims are still pending in at least a dozen patent applications with priority dates to the early 1980′s “or before”. The decision “..concerns the patentability of approximately 2,400 claims in twelve related patent applications..” and also notes that “..all twelve applications were part of a series of continuation applications that claim priority to ancestor patent applications dating back to the early 1980s or before. In addition, all twelve applications were amended to add hundreds of claims that were not included in the original applications.”
    ———–
    Here are some of his prior submarine patent achievements [obviously thanks to inadequate PTO date-pendency docket control], just to show how long that has been going on in the PTO:

    4,310,878*** 1982 1969 13
    4,332,819*** 1982 1974 8
    4,364,110*** 1982 1970 12
    4,371,953*** 1983 1970 13
    4,396,976*** 1983 1969 14
    4,445,189*** 1984 1970 14
    4,445,776*** 1984 1969 15
    4,471,385*** 1984 1970 14
    4,491,930*** 1985 1970 15
    4,523,290*** 1985 1974 11
    4,531,182*** 1985 1969 16
    4,551,816*** 1985 1970? 15
    4,553,213*** 1985 1970? 15
    4,553,221*** 1985 1970? 15
    4,614,415*** 1986 1970? 16
    4,672,457*** 1987 1970? 17
    4,686,655*** 1987 1970? 17
    4,739,396*** 1988 1970? 18
    4,744,042*** 1988 1974 14
    4,829,419*** 1989 1969 20
    4,870,559*** 1989 1969 20
    4,910,706*** 1990 1972? 18
    4,942,516*** 1990 1969 21
    4,944,036*** 1990 1971 19
    4,954,951*** 1990 1970 20

  44. The spec of this glorious PTO tird is a real hoot:

    Computer systems generate user specific information, but in any given computer system, any given set of program instructions that causes and controls the generation of user specific information is inputted to only one computer at a time.

    Computer communications systems do transmit data point-to-multipoint. The Dataspeed Corporation division of Lotus Development Corporation of Cambridge, Mass. transmits real-time financial data over radio frequencies to microcomputers equipped with devices called “modios” that combine the features of radio receivers, modems, and decryptors. The Equatorial Communications Company of Mountain View, Calif. transmits to similarly equipped receiver systems by satellite. At each receiver station, apparatus receive the particular transmission and convert its data content into unencrypted digital signals that computers can process. Each subscriber programs his subscriber station apparatus to select particular data of interest.

    This prior art is limited. It only transmits data; it does not control data processing. No system is preprogrammed to simultaneously control a plurality of central processor units, operating systems, and pluralities of computer peripheral units. None has capacity to cause simultaneous generation of user specific information at a plurality of receiver stations. None has any capacity to cause subscriber station computers to process received data, let alone in ways that are not inputted by the subscribers. None has any capacity to explain automatically why any given information might be of particular interest to any subscriber or why any subscriber might wish to select information that is not selected or how any subscriber might wish to change the way selected information is processed.

    This prior art, too, is limited. It has no capacity to overlay any information other than information transmitted to all receiver stations simultaneously. It has no capacity to overlay any such information except in the order in which it is received. It has no capacity to cause receiver station computers to generate any information whatsoever, let alone user specific information. It has no capacity to cause overlays to commence or cease appearing at receiver stations, let alone commence and cease appearing periodically.

    The claims do not describe any scientific discovery or achievement that would provide for the allegedly new “capacity”, but simply recite the desired goal of, e.g., sending personalized information that is acted up by a receiver.

    8. A method of controlling a video presentation at least one receiver station of a plurality of receiver stations, said method comprising the steps of: transmitting a signal from an origination transmitter to a remote intermediate transmitter station, said signal including video and discrete signals for providing an instruct signal at said at least one receiver station, said instruct signal being operative at said at least one receiver station to instruct said at least one receiver station to at least one of generate and output a locally generated portion of said video presentation based on data specific to a user of said receiver station for display coordinated with said video, said data specific to a user being stored at said at least one receiver station prior to organizing information included in said discrete signals to provide said instruct signal, said locally generated portion including at least some information content that does not include any information from any of said signals, said at least some information content being subsequently displayed; and transmitting at least one control signal from said origination transmitter to said remote intermediate transmitter station before a specific time, wherein said at least one control signal is effective at said remote intermediate transmitter station to control communication of said video and said instruct signal to said at least one receiver station.

  45. Re: “In the printed .. patent there are nine pages of prior art US patents listed as having been considered, another page of non-US patents, and then another 23 pages of non-patent publications.”

    At least the legal fiction [for patents with IDS uber-dumps like this], that the examiner could have ever read and considered the entire contents of these hundreds of technical publications, does not apply to reexaminations. Too bad there is no other practical solution?

  46. Ping, 6 lives in DC, where only about 0.25 inches of snow is enough to shut down the entire system – the city is too cheap to invest in snowplows. If they open a branch office in Detroit, the snow tolerance there will undoubtedly be much higher. But I don’t think 6 wants to move to Detroit, so the answer to your question remains, it doesn’t take much to snow 6.

    Fortunately, he can sink any application with a 10-second Google search. At least, that’s what he used to mutter to himself in the sandbox.

  47. If “snowing the examiner” be a crime, we all be burnin in he_ll.

    It just don’t take much to “snow” the likes of 6.

  48. “May make for a good inequitable conduct argument, though – “You snowed the examiner.””

    It would be fitting if the last of the submarines gave something of value to the patent system, such as an IC holding based on that.

  49. In the printed ’251 patent there are nine pages of prior art US patents listed as having been considered, another page of non-US patents, and then another 23 pages of non-patent publications. So even if Microsoft gets its way before the Supremes in i4i, there apparently won’t be a lessened presumption of validity for THIS patent, because everything under the sun was IDS’d. Good luck finding something that WASN’T “considered” by the examiner.

    May make for a good inequitable conduct argument, though – “You snowed the examiner.”

  50. Many (most?) of the 2/3 referenced cases have had 1 or 2 1.29s in the file, which were allowed for the pre-GATT cases. A lot of gone to appeal, been affirmed & even gone to the District (not federal, like most) courts. Not defending anything; giving you facts.

  51. Great work Dennis in getting the PTO to admit to 600 publicly-dangerous still-pending “submarine” applications filed before June 7, 1995 and thus running for 17 more years after they will finally issue [by surprise, since never published]. [These are all 15 year+ applications that have still not yet been examined enough to even force them into a continuation, which would change their term!]. [I had had no luck in asking for that information several times over past years - the number was about 2000 a few years ago the last time it was volunteered.]

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