Guest Post: Microsoft v. i4i – Is the Sky Really Falling?

By Paul F. Morgan

The forthcoming Supreme Court decision in Microsoft v. i4i, case number 10-290, seems likely to eliminate the Federal Circuit's judicially imposed "clear & convincing evidence" requirement for invalidating patents, and thus jury instructions thereon, at least for prior art not of record in the patent application file. 

Typical of some of the frightening projections is the January 1, 2011 "Law360" article in which Matthew M. Wolf, a Howrey LLP partner, is quoted as saying that: "it will radically alter the nature of trials in the patent world and will apply to every patent case" and that "if juries are told that the standards are the same for invalidating patents as for infringing patents, there will be a lot more defence verdicts and we are going to see fewer defendants desirous of settlement."

That is, it is argued that this result would flow from patent invalidity challenges having the same "preponderance of the evidence" standard as for proving patent infringement.  Technically, that might become the case.  But how significant would this change be in reality?  

First, more than 97% of patent suits are settled before trial with no judicial validity test.  Of the small percentage of patent cases that do go to trial, the vast majority are decided or settled there or on appeal on non-infringement, not on invalidity.  Considering the many good reasons why the vast majority of accused or actual defendants are willing to settle rather than risk the very high costs and uncertainties of patent litigation, even against numerous dubious troll suits, how much is this one forthcoming change likely to affect patent litigation and settlements overall?

The test is, would this change really dramatically affect anticipated jury decision-making reality?  [Because patent invalidity is rarely decided other than by juries, such as on summary judgment motions, in view of disputed facts.  USPTO patent reexamination standards would not be affected at all by this decision, and are usually delayed too long by the USPTO to be helpful anyway.] 

Removing this higher evidentiary burden might indeed affect some unknown relatively small number of future post-trial JMOL and Fed. Cir. decisions.  But note the relatively small percentage of those based on invalidity as opposed to non-infringement.

So, what is the basis for projecting that the very small percentage of patents now being held invalid by juries would somehow greatly increase due to this one potential change in jury instructions?   [Even if one really believes that juries really do pay close attention to, and fully understand, the typical lengthy jury instructions in a patent infringement suit and are willing split hairs over those instructions.   See, e.g., the length of the  AIPLA model jury instructions.]  Has anyone done a mock jury study to see if leaving out the present jury instruction for "clear and convincing evidence" dramatically changes outcomes?

Could contesting patent validity before a jury realistically become equated to contesting infringement, as alleged?   Attacking the validity of a patent is attacking something granted by the United States Government, while deciding infringement is just considering one private company's arguments against another.  Furthermore, the jury can be shown for emphasis the Government gold seal and blue ribbon on the patent.  Even if the statutory presumption of patent validity could technically be overcome by a mere preponderance of evidence for prior art not of record, the patent owner should be entitled to a jury instruction on the statutory presumption of patent validity.  [Which could be contrasted to no such instruction for deciding infringement].   For example, as indicated Section 5.1 of the June 23, 2009 "National Patent Jury Instructions" and its "Committee Note," presently courts may optionally combine the two existing defense burdens into a single jury instruction that the accused infringer "bears the burden of proving that it is highly probable that the claims are invalid." [Likewise, some other model patent jury instructions.]  However, the express "Committee Note" rationale for that is a presumption that "instructing the jury on the presumption in addition to informing it of the highly probable burden of proof may cause jury confusion as to its role in deciding invalidity. This single instruction therefore omits any reference to the presumption of validity. Some courts, however, follow the more traditional approach, and instruct the jury on the presumption. Both approaches appear consistent with Federal Circuit law."  Thus, if the "clear and convincing evidence" burden is removed, this "highly probable" instruction would have to be removed, and this present rationale for not instructing a jury on the statutory presumption of patent validity would seem to disappear?  

The other public scare story is that this decision will lead to a flood of additional prior art citations in patent applications.  That also lacks factual credibility.  The already-existing fear of personal "inequitable conduct" accusations is far more motivating than the mere possibility getting a slightly better jury instruction.  Furthermore, few applicants would be willing to pay for a much more costly prior art search to add much more art to an IDS just for that remote reason, and also to risk being accused of not having actually read that art in making assertions in claim prosecution.

Whether as a matter of public policy this anticipated change is good or bad for patent law and technical or economic progress is not the subject here.  Even if the extent of the potential impact were factually supported, it may not be very relevant to this Supreme Court decision.   As understood, this case is being contested primarily on to whether or not there is a proper legal basis and/or precedent for the Federal Circuit to have imposed this additional, non-statutory, evidentiary burden for patent litigation.  It is argued that that is inconsistent with modern Supreme Court evidentiary rules for civil cases in general and inconsistent with the evidentiary rules for pre-Federal-Circuit patent suits in the other federal circuits when they were deciding patent cases.  [So it is surprising that this issue has not been this contested before.  Presumably due to most defendants waiving it by failing to object to this jury instruction?]  

The recent decisions controlling the evidence for and/or reducing patent infringement damages recoveries seem to me far more likely to impact patent licensing and settlement negotiations than Microsoft v. i4i.  See Uniloc USA, Inc. v. Microsoft Corp., (Fed. Cir. Jan. 4, 2011),  Lucent v. Gateway (Fed. Cir. 2009), the two E.D. TX D.C. decisions in which Judge Randall Rader sat by designation, Cornell v. HP (March 2009) and IP Innovation v. Red Hat and Novell (March 2010), and Judge Ward's reduction of a jury award of $52 million in LaserDynamics v. Asus Computer International  down to only $6.2 million.

145 thoughts on “Guest Post: Microsoft v. i4i – Is the Sky Really Falling?

  1. Dim,

    Ned-o doesn’t have an answer (and even if he did, he be afraid of your wrathlol).

    As for examiners talkin, Iza not put too much stock in that. If there had been real shenanigans, theyda done the right thing and gone to their union to protest, right? That union would then speak up, right?

    O wait – that be Poopa.

    Never mind.

  2. The issue is not only what might happen at the trial stage. Another quite important concern is the fact that, as you point out, most patent litigation cases are resolved in settlement negotiations. A change in the evidentiary standard would likely have massive effects on (1) the willingness of patentees to enter into settlement negotiations and (2) patentees’ leverage to negotiate during such discussions, among many other as-yet-unknown repercussions.

  3. Ned,

    Considering our discussion (not in the way that the office “considers”), I would like to amend your comment of

    Right now, the requirements are somewhat in conflict, and they place the patent practitioner at the horns of a dilemma.

    to

    Right now, the requirements are somewhat in conflict, and they place the Office at the horns of a dilemma.

    I think my version is more on point, as it is the Office that is facing the dilemma of spending time giving true consideration to references supplied. It is the Office that does the actual examination, not the applicant (see Tafas).

    Related to the concept of the Office responsibility for spending the time for a true consideration, consider the discussion on the examiner blog at

    link to just-n-examiner.livejournal.com

    Examiners are discussing the Office imposed limits of time on actual examinations. I cannot fathom any rationale that would penalize the applicants for self-imposed decisions by the Office.

  4. Willton,

    I thank you for the reminder of checking into the APA. Imagine my surprise to learn that you do not understand the act and have misquoted it.

    You stated: “The Administrative Procedure Act provides that a reviewing court shall “hold unlawful and set aside agency action, findings, and conclusions found to be – (A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. 706.

    However, the line about “setting aside for arbitrary capricious, an abuse of discretion, or otherwise not in accordance with law” deals with Agency Rule making – not with agency decisions of work product (patents, or as the case may be, trademarks). The problem with haughtily throwing around quotes of law, is that when you throw around law that does not fit what you say it does, you engender scorn, rather than sympathy. It is hard to feel sorry for you when such as Ping lay into you.

    Basically, you have proven him correct.

    Yes, there is “arguing” in law, and maybe you will learn how to do that appropriately someday. And if that “arguing” is learned correctly, you will enjoy it far more than your style permits you here. A blog such as this is a poor training ground for you. I do hope that you come to grips with that.

  5. That Gene Quinn fellow sounds like a really sweet guy.

    Yes, how dare he police his site and get rid of the intellectually vapid comments.

    /off sarcasm.

  6. Patent invalidity is a real issue in these court proceedings all significant ones need to be declared invalid for inventorship fraud or required to include the true inventor in settlements. They need to reduce the settlements by at lest 50% if not 85% considering that they cut the conciever out of the deal and there is still an unresolved issues

  7. New Light, Gene Quinn did no schooling of the sort. He merely chastised me for me being rude

    Merely? Merely? – LOLZapolozza mamacita. Rudeness wasn’t the only thing Sunshine.

    This moment in revisionist history brought to you by schooled boy “attorney” Willton

    The actual gory details can be found at the Eskimo’s igloo at

    link to ipwatchdog.com

    Let’s set the stage with schoolboy, so full of hisself explaining what “begging the question “ means (ya’all just have to imagine the nasally “banana in a tail pipe” tones):

    Willton December 2nd, 2010 2:32 pm

    Gene:
    For your benefit, begging the question (or petitio principii, “assuming the initial point”) is a type of logical fallacy in which the proposition to be proven is assumed implicitly or explicitly in the premise. The fallacy is committed when a proposition which requires proof is assumed without proof. More specifically, petitio principii refers to arguing for a conclusion that has already been assumed in the premise, in effect “begging” any listener to “question” the basis of the logic.

    For instance, Dale is positing that a strong patent system is the cause of increased innovation. Why? Because, according to Dale, “[p]roperty rights are always correlated with increased productivity.” That, Gene, is called “begging the question.”

    To which the Eskimo schools the school boy:

    Wilton-
    Is that REALLY what “begging the question” means? Are you always so condescending?
    I would suspect someone who doesn’t know what they are talking about, and who is obviously uninformed, to be substantially more humble.

    “Not knowin what ya be talking abouts” be hardly “rude” And the lessons have only begun. Let’s continue with class:

    This is a warning, and the last one you will receive. Either you will engage with civility and substantively, or you will be banned. The choice is yours

    Wow – no wonder that resonated so much with Dim. But I digress:

    Let me give you this advice. If you want to continue commenting on IPWatchdog.com then only say things that you would be willing to say to the face of others if you were to meet them in person at an industry event.

    And here’s some real gems:

    We both know that with your level of inexperience you would NEVER say the things that you have said here to anyone of us at an industry event. With your level of inexperience you should really be seeking wisdom, and not pretending to be superior to those with decades of experience. Whether you want to admit it or not, the truth is that you have been condescending, snide and arrogant.

    Funny, “rude” wasn’t an adjective actually used. Condescending? check. Snide? check. Arrogant? check. Inexperienced? Check. Rude? Rude? Rude? (to the tune of “Bueller? Bueller? Bueller?). But let’s continue the LOLZ:

    You do not provide insight, you only pick others apart in a nebulous way that does not convey meaning. Your communication skills seem insufficient for a full and fair debate, and you should probably be spending more time learning your craft. I can’t imagine how you are contributing here would be deemed acceptable at your firm. Nevertheless, if this type of commenting is what you want to engage in there are plenty of other places on the Internet where you can go. I won’t allow IPWatchdog.com to devolve into that chaos.

    Ouch. That be some paddlin ya got there schoolboy. And we gets to learn that the school boy is a newby associate, a pretender, who obviously has an agenda and little else.

    Here’s a tip sonny – wipe your nose, you’re dripping.

  8. Ned,

    I agree.

    I wonder how much truth there is in the thought that the combination of KSR empowering PHOSITA to a super-steriod level, combined with the Broadest (Un)Reasonable Interpretation level of an examiner, now tied with the potential of ultra CYA, will bring an unholy trinity, a perfect storm that will quite literally drown the Office.

    I just do not think that the courts (Federal Circuit and Supreme Court) will tackle this issue to anywhere near the level of detail needed. I think that there is simply far too much that would need to be altered in the statutes (reference the different portions in our previous discussions), and the Supremes will hand this off as a purely legislative function to actually write (or rewrite) the law that could handle this storm.

  9. [/i]
    New light, the “duty of disclosure,” the requirements for a “substantial new question” to invoke a re-examination, and the requirements for document to be deemed “considered” for presumption of validity purposes need to be considered as a whole. Right now, the requirements are somewhat in conflict, and they place the patent practitioner at the horns of a dilemma.

    If the presumption of validity is going to be limited according to whether a reference raises a new issue of patentability not considered by the patent office(the re-examination standard), we need clear guy edits as to what this means.

    The Federal Circuit and perhaps even the Supreme Court need to clarify the so-called “duty of disclosure” so that we might and the current practice of flooding the patent office with every reference known to the applicant that might be even remotely related to the subject matter of the patent application. I think it is the fact that most of these references are irrelevant is part of the reason why examiner’s pay no attention to them.

  10. Ya ass-u-ming that there are parts not hypocrytical, aren’tcha?

    I’m assuming that you are talking out of your ass and can’t back it up.

  11. Yes, I’m a lawyer. Happy now?

    No. How long have you been an attorney? How long have you been involved in patent work particularly? Do you have a registration number with the Patent Office? What is your technical background? How is your wife and my kids?have you stopped beating your wife yet? Have you stopped beating yourself?

    able to identify what is… not hypocrytical.

    Ya ass-u-ming that there are parts not hypocrytical, aren’tcha?

  12. Willton boy, Iza think that Dim’s “terms”, “purpose” and “history” O the two items trademarks and patents should satisfy even the scholarly(?) you. Your reply is empty in each of these. Gee, I wonder why.

    You can think it all you want, but it’s not a satisfactory answer; it’s a brush-off. How are the terms, purpose and history of the two items relevant to the different standard of evidentiary proof? Neither you nor ANL have explained why those differences are meaningful to the standard of proof. If you can do so, let’s hear it.

    Sunshine – read your post again slowly. See if you can pick up that hypocrisy. It be a gem of chuckles.

    Why don’t you show it to me? You being so smart and all, you should be able to identify what is and is not hypocrytical.

    I do notice that your bravery came up a bit short on the answer of whether you be an actual attorney or not. I gave you the trucks and you gave, well, nothing.

    Yes, I’m a lawyer. Happy now?

  13. would be similarly brave enough

    There you go again, bein brave enough to be stu_pid. There’s a name for people like that = pawns.

    Willton boy, Iza think that Dim’s “terms”, “purpose” and “history” O the two items trademarks and patents should satisfy even the scholarly(?) you. Your reply is empty in each of these. Gee, I wonder why.

    I do notice that your bravery came up a bit short on the answer of whether you be an actual attorney or not. I gave you the trucks and you gave, well, nothing.

    I do not care for such boorish tactics.

    Translation: “I like my boorish tactics much better. Like showing my very own hypocrisy”

    Sunshine – read your post again slowly. See if you can pick up that hypocrisy. It be a gem of chuckles.

    you’d think he was the smartest guy in the room

    You could stop there and be 100% correct. Cepts, ya don’t even realize it.

  14. Have we engaged in a conversation before? Would you treat a stranger as rudely as you treat me? Better yet, in a court of law would you be so rude? If so, I do not see the chances of your short career getting much longer.

    If I were to see my opponent in court raise the fallacies that you have in this conversation, I would certainly not be afraid to call them out as such. I would be similarly brave enough to call out such things during a normal discussion outside of court. It’s called “arguing,” which I presume is what many of us enjoy. Otherwise, we likely would not be here.

    Look, if you can’t handle having your arguments picked apart, then perhaps you should not offer them.

    Now tell me why I should want to hold a conversation with you?

    I don’t know. I don’t know what drives you to do anything, as I don’t know you. I presume that you came here because you wanted to engage in legal discussion. Well, such discussion typically leads to differences of opinion, as seen here.

    And let’s face it, you are the one throwing out odd things in a legal sense.

    Odd things? Comparing similar yet distinct bodies of law is odd? You do know that a number of legal institutions, including the Supreme Court, do that on a regular basis, right? Where do you think we got the first-sale doctrine?

    Now you (over)forcefully reply with “begging the question, tautological and circular reasoning” accusations.

    Well, that’s what you did! You said the following:

    “Your points on trademark law are interesting, but trademark law is not patent law, no how much you want to make the two similar. They are just not the same.”

    When I pushed you to explain why that matters, you said,

    “With all due respects the differences in substantive law between contracts and torts (for example) require different approaches. Period. You cannot consider the invalidity of patents in the same way as you comsider the invalidity of trademarks. You are comparing apples and elephants.”

    So, according to you, trademark law is different from patent law because they are not the same. Do you see why that’s a tautology? Do you understand why I said you were begging the question? Do you see why that’s considered circular reasoning?

    Certain principles, like a preponderance of evidence standard of proof or the doctrine of estoppel, tend to be applied to a wide variety of areas of law. I have yet to see something specific about patent law not shared in trademark law that would justify an increased burden for invalidity a patent. I’m asking you to provide such.

    If you don’t know what that is, that’s an acceptable answer too.

    I have seen you schooled over at Gene Quinn’s IP Watchdog on the meaning of “begging the question” – perhaps you simply don’t know better and perhaps I shouldn’t waste any time with you.

    New Light, Gene Quinn did no schooling of the sort. He merely chastised me for me being rude (and in fairness, I was being rude) and then did his usual hand-waving regarding the value of patents. Furthermore, he showed his hypocrisy by chastising me for being rude while he had been insulting to many of his commentors.

    I stopped posting there because (1) he has some really myopic views about patent law, and (2) he threatened to expose who he thought I was by tracing my IP address and/or email address. I do not care for such boorish tactics. If he’s going to let posters post pseudononymously, then he should honor that.

    You ask about differences between patents and trademarks – sure they share the same Office, but what’s the purpose of each? Do they trace their legal lineage to the same roots? Why are their terms of protection different? After all, we should not have different standards for different causes, shouldn’t we?

    New Light, why are these questions pertinent to whether there should be differing standards for invalidity for each form of IP?

    And furthermore, this is not law school. When someone asks a question, they are hoping to receive an answer, not the Socratic Method.

    Seriously Willton, I was willing to give you the benefit of the doubt with the APA, but if you are going to throw out contracts and torts and then say that you know the difference and try to make some esoteric point about it, you need to actually converse like an adult. Don’t force me to “beg the question” with your comments about contracts and torts.

    ANL, my point was that claiming that two areas of law should receive different standards of invalidity merely because they are different is bunk. We use the preponderance standard for a whole score of causes of action in law. When certain causes of action require a heightened standard of proof (e.g., criminal liability, lack of decisional capacity of a patient), it is usually because we have made a value judgment that certain things are more important than others (e.g., fear of a wrongful conviction, value of individual liberty interests). It is not because the particular area of law merely resides in a different part of the US Code.

    That’s why I said that “if you are going to take the position that patents and trademark registrations should have differing standards of proof for invalidity, you should be able to point to some meaningful difference for support.” You have not done so thus far. All you’ve done is hand-wave it away by saying “they are different.” I’m sorry, but no reasonable person should find that convincing.

    Don’t maintain an ignorant mixing of patent law and trademark law – there is probably a good reason why no one answered you before – no one wanted to make you look foolish.

    You clearly do not know many posters here. They are not that bashful.

    Honestly, don’t you get enough of that from Ping? Much as I am against rudeness, you are making his remarks painfully accurate.

    Ping is just as arrogant as you think I am. With all his “I done already observed this” and “I done already observed that”, you’d think he was the smartest guy in the room with a speech impediment.

  15. Dim,

    Ya owe me a new coffee as I spilled half of mine chucklin over you takin school boy to the woodshed.

    Did someone up your watts? take downs of my main man and Willton in the same day, on the same thread no less? Weza just might make a decent poster of you yet.

  16. Cy,

    Let that be a lesson for me for trying to get a thought out while running for the train.

    My apologies for confusing anyone. What I had meant to type was:

    “This is yet another point (although subtle) that the level of the presumption standard should be Clear and Convincing.”

    You have outdone yourself with your contribution today. I appreciate you calling my error too my attention. Thank you.

    Willton,

    Have we engaged in a conversation before? Would you treat a stranger as rudely as you treat me? Better yet, in a court of law would you be so rude? If so, I do not see the chances of your short career getting much longer.

    Now tell me why I should want to hold a conversation with you?

    And let’s face it, you are the one throwing out odd things in a legal sense. Now you (over)forcefully reply with “begging the question, tautological and circular reasoning” accusations. I have seen you schooled over at Gene Quinn’s IP Watchdog on the meaning of “begging the question” – perhaps you simply don’t know better and perhaps I shouldn’t waste any time with you.

    But I will. For now.

    You ask about differences between patents and trademarks – sure they share the same Office, but what’s the purpose of each? Do they trace their legal lineage to the same roots? Why are their terms of protection different? After all, we should not have different standards for different causes, shouldn’t we? Seriously Willton, I was willing to give you the benefit of the doubt with the APA, but if you are going to throw out contracts and torts and then say that you know the difference and try to make some esoteric point about it, you need to actually converse like an adult. Don’t force me to “beg the question” with your comments about contracts and torts. Don’t maintain an ignorant mixing of patent law and trademark law – there is probably a good reason why no one answered you before – no one wanted to make you look foolish. Honestly, don’t you get enough of that from Ping? Much as I am against rudeness, you are making his remarks painfully accurate.

  17. With all due respects the differences in substantive law between contracts and torts (for example) require different approaches. Period. You cannot consider the invalidity of patents in the same way as you comsider the invalidity of trademarks.

    You’re begging the question. I know that trademark law is different from patent law, just like I know that contract law is different from tort law. But that is not a reason for giving each area of law a different standard of proof for their various causes of action.

    I chose to compare trademark invalidity to patent invalidity because there are a number of similarities between U.S. patents and U.S. trademark registrations. And the reasons I’ve seen thus far as to why patents should have a heightened standard of proof for invalidity could equally apply to trademark registrations (e.g., both have a statutory presumption of validity, both are examined and issued by the same administrative agency). So, if you are going to take the position that patents and trademark registrations should have differing standards of proof for invalidity, you should be able to point to some meaningful difference for support.

    So have at it: what is the meaningful reason why these two invalidity defenses should have different evidentiary standards of proof? Or are you going to continue with your tautological answer “because they are different”?

    Rudeness is not becoming and does not foster a good intellectual discussion.

    Nor does circular reasoning.

  18. And Ned, review the discussions we have had – there will be no such requirement imposed by the Commissioner. I showed you the sections indicating the very opposite – Examiners are told not to discuss all reasons for allowance.

    This is yet another point (although subtle) that the preponderance standard should be Clear and Convincing. There is simply a minimum floor at the patent grant level – not a complete listing of reasons for allowance.

  19. Ned,

    Yes, that a point you raised in our previous discussion. However, it is a point making a difference without a distinction, because “consider” is also what must be done with all of the references listed on an IDS.

    You simply do not gain anything except the risk of estoppel and charges of inequitable conduct. There is no upside.

    Willton,

    With all due respects the differences in substantive law between contracts and torts (for example) require different approaches. Period. You cannot consider the invalidity of patents in the same way as you comsider the invalidity of trademarks. You are comparing apples and elephants.

    Now you may find commonality in the requirements of APA – I will need to look into that before I can comment further. But try to not be as “mouthy” as the typical poster here – Rudeness is not becoming and does not foster a good intellectual discussion.

  20. So what do you guys think about retraction and reissuance in my situation is there justification and how will the court rule

  21. New light, you are of course right that the comments of the applicant are given little weight for the benefit of the applicant, but the MPEP does seem to suggest that if one explains a reference to the examiner, he will actually “consider” it. This provides the basis for an argument that if the re-examination request is based upon such a reference and the alleged new issue was the issue actually discussed by the applicant, that the reference does not actually raise a substantial new issue of patentability based upon the presumption that the examiner considered not only the reference, but the issue. The consequences of not according this result to such a reference probably will be a requirement imposed by the Commissioner to require the examiner to actually comment on such references in some manner – otherwise the result would be very unfair to the patent owner.

  22. Your points on trademark law are interesting, but trademark law is not patent law, no how much you want to make the two similar. They are just not the same.

    So what? Contract law is different from tort law. Does that mean that we should require different standards of proof for negligence compared to breach of contract?

    Of course patent law and trademark law are not the same, but that does not justify raising the standard of proof of invalidity for patents but not for trademarks. If you’re going to point to a difference between the two areas of law, then the difference should be meaningful to this particular discussion.

  23. My comment was not directed to you Willton. Apologies if you took it that way.

    Your points on trademark law are interesting, but trademark law is not patent law, no how much you want to make the two similar. They are just not the same.

    Be that as it may, you do raise an interesting analogy – I will look into the APA angle.

    Thanks.

  24. I note the clowns here are turning what should be an interesting discussion of law into a game of confusion. Too bad.

    That or you are coming to grips with your lack of understanding of the Administrative Procedure Act.

  25. Ned,

    Thanks for explaining the reason for the change. However, I am not certain that your response has, or can have, the effect that you are looking for. I think this because it is not what you have to say about a source that immunizes the eventual patent from re-examination. It is only what the examiner has to say. Remember, you are not the official voice of the Office. And while what you say can create estoppal effects (as well as grounds for inequitable charges), it cannot substitute for the expert’s opinion.

    I think at best you might expect a response along the lines of “applicant’s response is moot for a new argument” which technically says nothing about “discussion of the cited art”. I covered this on the previous thread where I listed the directives by the Office limiting what is actually said by examiners.

    It has been said before that your actions as such carry more risk than benefit – and I agree and would suggest that you discontinue that practice. You are sacrificing a lot for an unproven asserted gain.

    I await the Supreme’s decision on this – even more than I awaited the Bilski decision.

    I note the clowns here are turning what should be an interesting discussion of law into a game of confusion. Too bad.

  26. [/i]New Light,

    I must admit that Dennis Crouch’s analysis that examiners rarely cited art from IDS submissions floored me. This proved to me more than anything else that the examiners actually do not review the IDS material to any great degree. So I no longer assume that simply citing the best art in an IDS will result in that art being employed in a rejection, or discussed in a notice of allowance. What I do, in the appropriate case of course, is to explain to the examiner, in detail, the pertinence of the art. I have even gone so far as to explain how the IDS art is more pertinent than the art he did rely upon.

    What this does, of course, is to immunize the eventual patent from a re-examination over the art I consider most pertinent. What it also does is to shore up the presumption of validity, assuming that the Supreme Court will require actual consideration of references before they will be entitled to the presumption.

  27. Willton: “Please show us where in the Administrative Procedure Act this is the case. ”

    The APA doesn’t have to say it, because that’s obviously the minimum floor of preponderance even before any legislative directive. If both the APA and the patent law provided for bare presumptions, NAL’s otherworldly logic would require a beyond-a-reasonable-doubt standard to invalidate a patent. After all, why would two statutes mention what is obviously already the law, unless each of them intended to raise the standard?

  28. hmmm…
    “A”‘s and “N”‘s coming and going…
    “I” = Initial
    “E” = End

    I got it! – IANAE is NAL and ANL!

    Wow – awesome, neato, jinkies and all that.

  29. “In other words”, if you can show that the examiner missed actual work that actually shows by a clear and convincing standard that the patent should be invalid, then you have made your case. But that is no more than what is currently accepted as being the law. The fact of the matter plainly is that Congress took the extra step to include the statement that Patents are too be held valid. This must be held to mean more than the meaning that would adhere without the statement. It must be held to mean the level of presumption is greater than a mere preponderance. Otherwise, the statement is superfluous and without meaning. Law does not work that way.

    If that’s the case, then why is the standard for invalidity of a federal trademark registration only at a preponderance level? I’ve raised this issue before, but I’ll reiterate.

    The similarities between U.S. patents and U.S. trademark registrations are stark. U.S. patents have a statutory presumption of validity, and U.S. trademark registrations also have a statutory presumption of validity (see Section 33(a) of the Lanham Act). Both patent and trademark applications are examined by the same administrative agency (i.e., the USPTO), and both patents and trademark registrations are subject to a statutory scheme outside of the Administrative Procedure Act. Further, while both the Patent Act and the Lanham Act provide for a presumption of validity of their respective IP, neither specifically states what the standard of proof should be for proving invalidity in court.

    And yet, the standard for proving invalidity of a federal trademark registration is a preponderance of the evidence. The only thing the presumption of validity does for trademarks is create a burden-shifting framework, where the challenger has the burden of proof. So why the disparity?


    I would also point out that the mere fact of a government grant of title – even without the additional legislative distinction of the work product being given a presumption dictates that in any challenge to that item’s validity, the person challenging the validity owns the burden. Thus there already exists a minimum floor of preponderance even before any legislative directive to afford any additional presumption.

    Please show us where in the Administrative Procedure Act this is the case.

    The “minimum floor” is that which is provided in the Patent Act, not the Administrative Procedure Act. The Administrative Procedure Act provides that a reviewing court shall “hold unlawful and set aside agency action, findings, and conclusions found to be – (A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. 706. The APA provides no guidance as to what the evidentiary standard is for proving that an agency action or decision is “otherwise not in accordance with the law.”

    As I’ve said in the past, the reason for changing an evidentiary standard of proof is a recognition of a value judgment. I have yet to see what value judgment could justify a raised evidentiary standard for invalidity.

  30. Oh that was a yummy thread – (says the Nazguls feeding on my main man’s brains).

    Dim getting the best of my main man. A sad day.

  31. NAL: “The choice is yours: provide rational arguments or play semantical games.”

    I should have thought the ultimate “semantical game” would be the insistence that something means the opposite of what it clearly means, because (1) what it clearly means would have been the law anyway, and (2) the second-highest court in the land says so.

    Funny, how the definition of “rational argument” varies so much from person to person. I used to think it depended on whether the person practiced in the information processing arts, but it appears there are other factors as well.

    Oh well, it’s been fun having a conversation on the same website as you (and very nearly with you).

  32. IANAE,

    For the actual reasons provided, the statutory presumption means exactly what it says – and it says what the courts currently say it says – that the level is Clear and Convincing.

    As I said – you need to supply actual reasons to change this. Slick arguments do not work. And that includes your new argument that I am saying that it means more than it says it means. I am not saying that. You are saying that I am saying that. You are wrong.

    You want the change – the burden is on you to supply the reasons.

    If your further posts are merely going to descend into semantics on this, you have lost your case.

    The choice is yours: provide rational arguments or play semantical games. The outcome will be obvious.

  33. ANL: “I would also point out that the mere fact of a government grant of title – even without the additional legislative distinction of the work product being given a presumption dictates that in any challenge to that item’s validity, the person challenging the validity owns the burden. Thus there already exists a minimum floor of preponderance even before any legislative directive to afford any additional presumption.”

    I’m not the least bit convinced by your argument that a statutory bare presumption is somehow implicitly a statutory clear-and-convincing standard.

    Lots of things that you’d expect would be trivial are in the statute (e.g. you can’t get a patent for something that isn’t novel, you can get an injunction provided that you meet the usual test for an injunction, you can get monetary damages), and nobody ever claims that those provisions mean anything more than what they say.

    The statutory presumption is simply that – a statutory presumption. If it were a statutory clear-and-convincing standard, it would say so.

    NAL: “If you want to change the law, then you need to show some actual reasons for changing the law. You need to show more than simple clever manipulations of an attorney argument. You need to show more than your own assumptions reinforcing your assumptions.”

    Okay, let’s see some reasons then. You’re the one who says the law is otherwise than the plain statutory language.

    To that end, your argument that the law must mean more than what it says because what it says is clearly the law can be seen as a fallacious comment.

  34. I appreciate the fairly snark-free response IANAE. I recognize that it must have been difficult for you to contain yourself.

    My reply starts off by pointing out that the current legal understanding of the level of presumption is Clear and Convincing. As noted many times, this does mirror the legislative level in the Re-exam process, given that that process is limited to only those type of prior art that fall into the clear and convincing standard.

    I would also point out that the mere fact of a government grant of title – even without the additional legislative distinction of the work product being given a presumption dictates that in any challenge to that item’s validity, the person challenging the validity owns the burden. Thus there already exists a minimum floor of preponderance even before any legislative directive to afford any additional presumption.

    With these items in mind, your remark of “But none of that explains why a higher standard of proof is required” can be seen as a fallacious comment. Your further remark of “can show that the examiner probably got it wrong” also misses the mark. That showing would have to be to the Clear and Convincing standard. It appears that you assume the very lower standard of showing for the examiner error in order to support your contention that a lower standard should exist for the larger validity question. You have assumed that which you need to prove.

    In other words”, if you can show that the examiner missed actual work that actually shows by a clear and convincing standard that the patent should be invalid, then you have made your case. But that is no more than what is currently accepted as being the law. The fact of the matter plainly is that Congress took the extra step to include the statement that Patents are too be held valid. This must be held to mean more than the meaning that would adhere without the statement. It must be held to mean the level of presumption is greater than a mere preponderance. Otherwise, the statement is superfluous and without meaning. Law does not work that way.

    If you want to change the law, then you need to show some actual reasons for changing the law. You need to show more than simple clever manipulations of an attorney argument. You need to show more than your own assumptions reinforcing your assumptions.

    As to your comment about “epistemological burden,” the “might perhaps” portion is mere conjecture, and I am assuming that that portion of your comment is rhetorical. I will not resist the urge however to point out that Congress has chosen the words that they have chosen, and have set the statutes, including the IDS process, as they have chosen to do. It is not your place to redefine any of those in order to set the system to your liking. The legal point of how the system actually is is that an applicant does in fact “earn” the presumption by informing the expert of the art. No more than that is required because it is the expert who does the examination and it is up to that expert to choose which art to actually comment upon. Both the power to examine and the power to choose is beyond the applicant. That power belongs to the legislatively sanctioned administrative body of the Patent Office itself. In this regards, the Tafas decision probably exceeds the Bilski decision in operational importance.

  35. ANL: “That full value earns (whether justified or not) the C&C presumption.”

    Your parenthetical remark “whether justified or not” might perhaps be considered to place upon the word “earns” a heavier epistemological burden than it was designed to bear.

    ANL: “We are depending on the examiner to do his job as he is directed to do so.”

    Okay, I’ll give you that. We depend on the examiner to do his job. We assume that the examiner has done his job. But none of that explains why a higher standard of proof is required than “invalid on a balance of probabilities”, which is also inherently a pretty good suggestion that the examiner has not done his job.

    In other words, once we can show that the examiner probably got it wrong, why should he get any deference for having probably gotten it wrong at his job?

  36. Ned,

    I had forgotten how long that earlier thread was, and there are several different discussions (all very interesting), so I have not yet completely reviewed the flow of our discussion.

    Be that as it may, I do notice that your tone has changed, perhaps because you have had a chance to reflect more on the previous discussion. I noticed particularly your phrasing of “might distinguish between the mass of fluff art cited in unsorted“. I take this as an admission that currently this mass does indeed warrant the full value of “consideration” – no matter how low that actually is in the examination itself.

    That full value earns (whether justified or not) the C&C presumption.

    How the Justices word their answers will be critical. I think they will need to be very careful. They cannot write their decision so as to make the examination process so laborious that each and every individual piece of prior art woud need to be discussed by the examiner in order to provide a patent “innoculation” (for lack of a better word) against constant challenge after grant. I do think that they will align the ability to challenge validity in a court setting with what the Office itself has set up to challenge validity in a non-court setting (the Re-exam path). To me, this makes sense from a judicial efficiency theory.

    On the other hand, the use of the word “consider” as it actually is used guarantees no real level of thoughtful consideration of that prior art item. In real life, we are depending on the expertise of the examiner to choose the best prior art out of all prior art under consideration. We are depending on the examiner to do his job as he is directed to do so. The scope of material from which he has chosen the best does indeed include any and all references supplied by the applicant on IDS sheets. If the examiner chooses not to use prior art supplied, it is by conscious choice by the designated expert. That expert has been made aware of the materials and has chosen others as “best”. While I think everyone in a sense is looking for that “guarantee“, such is beyond the control of the applicant and thus there can be no penalty to the applicant for this offical action. So in a sense, appraising the examiner of the existence of the prior art does earn that presumption, because the applicant has done his duty to inform that person whose job it is to examine. There is no more that can be legally asked of the applicant (see Tafas).

    In a way it is unfortunate that reality does not require diligence in this “load the IDS” path. While a real search for best prior art would make sense, the points made in the Tafas case clearly indicate that it is illegal to force the applicants to walk down that path. There is a very real danger that the law of unintended consequences will come into play, and that bloated IDS’s will be a result because such IDS’s meet that minimum level of introducing the art to the expert examiner. I cannot see the Supreme Court making a ruling that would so extensively rewrite so many sections of the law that we have now, especially as they (at least the five in the majority) have so recently reiterated that limitation of the Court’s power in Bilski.

    I do hope that whatever decision they make, they avoid ambiguity and keep nuances to a minimum. A clear and forthright decision, in whatever direction, would be better than a decision that does not offer guidance. Unfortunately, my hopes that this Court will be strong are not high.

  37. Ianie; two years at eight hours per day isent nessary unless a jury wants it to get to astronomical odds. Two months could do an entire catigory or a major location cluster. depending on if they want to decide on beyone a reasonable boubt.

  38. Sarah;I am sorry ive used that spellcheck before but I keep forgetting how to turn it on. Half my problem is also proofreading the words arent placed correctly sometimes.You guys could help me by talking english instead of that incomprehendable legal jargan that i cant make sence of.Did you find me an attorney yet.I realize fraud cases are quite unpopular so you better not.

  39. Ping; no his case looks floozious compared to mine and my relatives are allstars with pedigrees.This gives me a snippit of insight though into indegency and conspiracy theroies although my case is massive involving thousands of top corperations wile his doesent appear to contain even one marketable item.He dident follow procedure even when given leniency though.

  40. I don’t see why the USPTO can’t hire people that can search Ids’s, and then do a paragraph of what they contain. And then that is put in a computer that holds the patent that was searched.
    And that will be there for the examiner to use. If the information dictates he needs to look at the particular Patent or Ids further he does. Then the Examiner can do his Job.
    And Mikey you write your name correctly. you never miss a key on the spelling. Why don’t you turn the spell check on so you don’t misspell the words. I just had to look up misspell, because I couldn’t remember if it one one s or two. we all use spell check from time to time.
    People are mean. they are going to pick no matter what. Let them pick on your content, not your spelling.

  41. Ned,

    Your point to Willton started me thinking that we had had a conversation closely related, but that we had not finished that conversation.

    I searched this blog and found it at:

    link to patentlyo.com

    I think it would be a good idea for us to continue our conversation on this matter. It is getting late here for me and I want to review the earlier comments, so we can pick this up tomorrow.

    I do like your last question on that page though:

    [J]ust what is the whole point of the Duty of Disclosure if the examiner does not actually consider the art cited in IDSs?

  42. Ianie another thing is there quite fearless in false filings because they form intercompany and interbusiness relationship large number filing conspiracys.The judges nievely fall for a pile of fancy paper instead of the clusters method of evidencing.These individules are more into falsified inventors notebooks and intercompany memos and there is little valid reason to delay begining invalidation since there batteling for patent awarding to begin with.

  43. Ianae; invalidation is potentially rare because the products in question are valuable and marketable therefor not likley to be declared invalid except due to inventorship fraud.Also invalidation only allows competition not a restricted protective market that patent protection affords so yes there is little financial incentive.The other factor may be they produce the false evidence to scare off the true inventor then battle amongst themselves for the stolen prize.

  44. Wilton, I was thinking about your post stating that what would change is that applicants would conduct more and better searches for prior art. I agree. But one more point:

    I think the Supremes or the Federal Circuit in follow-on cases might distinguish between the mass of fluff art cited in unsorted piles to the Office, and references actually discussed or made “of issue” during prosecution. The PTO even now states that IDS references are only minimally considered, meaning not at all unless their pertinence is explained. If the Supremes or the Feds were to make this distinction as well, applicants are sure to follow by making sure that the most important references are actually discussed in IDS’s, or otherwise specifically brought to the examiner’s attention.

  45. Cy Nigal;No all the big brains myself and grandfathers came from port huron so thats where the massive clusters are. I had quite a little cluster in tijuana over several trips though if ide have been born there the place would look like detroit and la put together.

  46. ianie; no i think battles in valuable marketable invention cases are rempant between the first and second theftors both in patent awarding and retraction however first to file has given many to the first theftor.Reissuances are rare because of the burden of proof however im my case its strong.

  47. ping; ah yes that may have been in the original group of items during my invention of the personal computer with huelett packard in 1973 in palto alto. I know I tied the key board to the viewscreen and added the mouse during a job application. when I returned from michigan they said that wasent going to be enough to sell it and they were very unhappy about spending 250000 on the experiment I concieved in conversation with lentz. I had to add the concept of make a book and the things I am using here in this post I also concieved the disecett to record information on

  48. Michael R. Thomas: “tou probably know fullwell the volume of false information that these theftors produce in there attempts to produce creditable looking evidence magazines books falsified conception dates are rampant.”

    It’s funny though, they’re completely powerless to produce similar evidence to invalidate a patent when someone else sues them for infringement. Maybe they’re just not financially motivated enough.

  49. I remember quite clearly that you could not get an onyx chess set in Tijuana back in the late 60′s.

    My memory of the renassonce is less clear, however.

  50. Ianae; tou probably know fullwell the volume of false information that these theftors produce in there attempts to produce creditable looking evidence magazines books falsified conception dates are rampant. you likley aslo know photographs have no credible dating of exact time of photography. Persons memory of availability of an item date are more credible espedially when there notives are correct like finding the true inventor and not financially motovated or a judge trying to protect his wrongful patent awards instead of stepping from the bench.Yes it takes very little time to look that up however its a pile of balognie and a conspitacy.I invented renassonce chessmen in the late 60s and i am not sure on the 12 th century ones I also invented the onyx ones in teijuana on vacation in 1973 as the locals were sooking for items to sell to tourists.The thing about my inventions is they incompas every invention in every catigory of invention so you can always be sure of the correct decision

  51. Michael R. Thomas: “For the unconvinced it takes about 2years at 8hours per day to sink all the imformation in just concerning my own conceptions”

    That’s quite a large time investment, especially compared to how long it takes to look up “chess” in Wikipedia and see their photo of a 12th-century chess set.

    So you can imagine why someone might be reluctant to put in the time.

  52. Ping; there are some persons who believe and some who dont have you been to my website to see new inventions or are you just flachulating in the wind.For the unconvinced it takes about 2years at 8hours per day to sink all the imformation in just concerning my own conceptions have you red the grandfathers section on the wibsite some have financial reasons that they will never admit believing.

  53. ping; sorry your both occasionally sarcastic so you have so much in common. Sure I am wide open to concieve projects got any investors and or project trade barters educations programs go nowhere new without me.Cant guarantee typegraphical perfection though It comes with proof reading If you want to guarantee typagraphical perefection talk to someone with a degree its expected of them if you want invention keep reading my posts there full of it if your smart enough to pick it up your aperantly not.Seager is a relative I think I did all his top songs along with everyone elses since 1953.

  54. Hey Mikey – it wasn’t me that asked how the knight moves.

    Maybe you can invent a program for reading comprehension.

    She was a black haired beauty with big dark eyes
    And points all her own sitting way up high
    Way up firm and high

    Out past the cornfields where the woods got heavy
    Out in the back seat of my ’60 Chevy
    Workin’ on mysteries without any clues

  55. ping; to see how the little horsey moves you need to read the instructions in the new rules of chess that I invented at my uncles house in around 1956 at the age of 3 Its the board with my other game tic tac toe. when I concieved the pawn the idea was its expendable and of little consequences such as your self possible.The other thing I invented was removing the players from the board something like yourself with your infantile ignorant humor.

  56. Yeah school boy, I did try synonyms like attorney and barrister, and even agent – nothin but chuckle results.

    Now when I try “Willton” and “fool”, I get so many hits my machine exploded.

    the only economic argument

    Good thing then that the actual mission of the Office is not based on the economics, then uh? Sides, everyone knows economics just aint one of those old-fashioned useful arts.

  57. Malcolm: “If someone isn’t on site doing termite control at least once a year, the house can be eaten up quickly.”

    We could compensate by giving rich people some kind of tax cut, but wouldn’t that subvert the free market that has decided the termites should win?

  58. IANAE Unless there’s a measurable net change in the amount of invested venture capital, the only economic argument for keeping patents strong is that patent agents’ kids need to eat.

    Don’t forget those vacation homes for the partners! If someone isn’t on site doing termite control at least once a year, the house can be eaten up quickly. The hedge fund investor who owns the property next door won’t appreciate the neighborhood blight.

  59. pingaling If you think ya got whining now about not enough time, wait till it takes 2 outa the 10 hours to just read the IDS sheets thata be coming in.

    What’s the average size of an IDS filed in the softie-woftie arts these days? Are we up to 5 non-patent references yet?

  60. IBP: “I personally saw funding terminated in the wake of KSR, on 2 different projects.”

    That’s not what I asked. That’s the opposite of what I asked.

    What I asked was whether the total amount of business investment (not just patent-based investment) was affected. That is to say, whether any investment that was withdrawn from a patent-based business was redeployed in non-patent-based businesses. Unless there’s a measurable net change in the amount of invested venture capital, the only economic argument for keeping patents strong is that patent agents’ kids need to eat.

    And it really does sound like venture capitalists have plenty of other places to put their money. Even the paranoia around here seems to revolve around the existence of other, similarly-attractive investment opportunities competing with the patentee for scarce funds. If that’s the case, the economy will trundle on, patents or not.

  61. Lunch time and me in a good mood, here are some ultra observations of me quoting me at;

    link to patentlyo.com

    Search = “US Class” or “Key Word”
    Result = max IDS

    Result to Office = Examination will become even more of a joke. If you think ya got whining now about not enough time, wait till it takes 2 outa the 10 hours to just read the IDS sheets thata be coming in.

    If ya make it so that the patent is good only for the explicit stones looked under, then it only be obvious that no stone will be left unturned.

    It aint gonna be the applicant that has to lift those stones.

    Posted by: ping | Oct 07, 2010 at 07:16 AM

    Me, ever being the thoughtful observer, offers the following link to practicioners who may want to order a few of these, just in case.

    link to dieselpowermag.com

    Posted by: ping | Oct 11, 2010 at 07:42 AM

    Oh, and Willton – bite me, you coward – when I done a search of this blog with your name and lawyer – alls I get is a catalogue of you providen the chuckles with your policy-wankin.

  62. IANAE–

    As an anecdotal answer to a question you posed, yes, I personally saw funding terminated in the wake of KSR, on 2 different projects.

    Further, 2 other projects are on hold pending the outcome of this litigation.

    And further yet, the money men seem to have a live list of projects, on which various projects bubble to the top at particular times due to particular conditions or events. Similarly, some sink to the bottom, and receive little to no attention, or are put on hold.

    Some get shelved for YEARS. If they’re ignored long enough, they disappear from the investor’s consciousness altogether.

    I also know of one other project that had received a patent, the goal of which was to actually manufacture. The money was in place, the numbers looked good, suppliers were lined up, materials contracts were well along, and all of a sudden the major investor changed course 180 degrees, and used his power to effect a complete assignment of the patent to a competitor for a sum barely sufficient to recover the investor’s investment to that date. The competitor’s goal was to suppress the device, and will not manufacture. Everybody else on the project is SOL, according to how the (poorly drafted?) development contract was set up.

    So it goes–but yes, I personally have seen situations where changes in the patent landscape directly create corresponding changes in the investment landscape.

    On the other hand, I still have members of the general public coming to me for patenting advice. Of course, they have no sophisticated understanding of the patent landscape whatsoever–in fact, they don’t have any legal knowledge whatsoever, including of concepts like burden & standard of proof. As a class, they are unaffected by legal goings-on.

    Ignorance is bliss.

  63. Well you’ll have to excuse me if I don’t feel like searching

    Well I can excuse you for that, but the slam was in retort to your errant comment about my skill with HTML. So, no, you don’t get an excuse for your lame attack. Ya get to eat your words – yummy.

    The “diligent” comment is in Pauli’s post, the one you are followin. So Iza don’t need a direct quote. This is a little somethin called “in context”. Ya might wanna study it sometime, school boy.

    The fact that ya keep goin on about “already given enough incentive” means that ya are missin the picture about the new incentive (which will create its own actions). Ya really dont get that a new incentive is created, because ya just havent recognized that new incentive. Thus ya keep on “disagreein” – See the Dilbertesque quote above – Big time chuckles in that you keep on repeatin it.

    As for the new effect – its a game changer. And clearly with my post at 12:26, Iza not be the only one that recognizes this. But you can keep your head in the sand all ya want – it done keep on bringin the chuckles.

    I’ve already answered this question on this blog once.

    Fair enough, it musta been easy to miss (as most of your stuff is). Your answers here give me enough info anyway.

    Mighty brave of ya to not answer again – unless of course, ya be copyin my style and goin with a “Homey don’t do answers” yourself, now. You know what they say about flattery.

  64. And perhaps you need to brush up on your reading skills. Note the tense of the verb – past tense. As in, I previously supplied.

    Well you’ll have to excuse me if I don’t feel like searching this blog to confirm whether you actually lined to any supposed “dumptrucks.” If you’ve linked to them before, you can do so again.

    Well, what can I say, but you are wrong. See my post on your “disagree” tendency. Ya simply don’t understand what ya be talkin about. Ya keep on going down that wrong fork about performing a diligent search, when no such action be actually required. A cheap and easy wholesale dump is what will happen, not an expensive and extensive search. C’mon shool boy – open your mind and grasp this simple concept.

    Please point out where I used the word “diligent” in any of my posts above. When you’re done finding nothing, you can put the straw down.

    Yes, I agree that a “cheap and easy wholesale dump” is what will happen with regard to IDSes. However, THAT ALREADY HAPPENS when patent attorneys wish to comply with their respective duties of disclosure. If, as you appear to say, the change in the standard is not going to provoke applicants to perform searches, then a change in the standard is not going to provoke them to disclose anything they don’t already disclose to avoid inequitable conduct charges. So, based on the premises you seem to espouse, your position is completely without merit.

    Your laying out of “inequitable conduct jurisprudence” is a joke. Ya used the phrase and did some hand-waiving. Ya be simply wrong if the standard of protection changes and the requirement for protection comes to be only those things that an examiner has “considered”. Applicant attorneys would be behavin irresponibly to not dump as many references as possible to get the universe of “considered” items as high as possible – specially when such can be done by merely dumping volumes of references in thousands of pages of IDS’s.

    Again, inequitable conduct jurisprudence has already given enough incentive to do exactly what you describe. The only difference is the motivation for doing so (avoiding invalidity vs. avoiding unenforceability). Therefore, unless you think applicants are going to start disclosing entire classes and subclasses of patents without looking (which would require the painstaking listing of each reference in IDSes, which would likely be more expensive than actually hiring a search firm), there’s going to be little to no change in behavior for applicants disclosing prior art to the Examiner.

    The fact that you think the point lacks merit is precisely the indicator that ya missed the point

    No, it’s an indicator that I think your point lacks merit. Just because you think your point is really salient does not make it so.

    As I asked – You are not a practicing attorney, are you school boy? Are you brave enough to answer that question?

    I’ve already answered this question on this blog once. If you aren’t going to link to your “dumptrucks”, then I don’t feel like I should have to answer your question a second time.

  65. Even if the extent of the potential impact were factually supported, it may not be very relevant to this Supreme Court decision.

    Another step off the plank, Pauli.

    From BNA:

    Group Warns That Supreme Court Reversal
    Of i4i Could Weaken Presumption of Validity

    Group of 171 businesses, research institutions, and organizations representing American innovation expressed their concern Dec. 22 that a reversal of the Federal Circuit’s decision in Microsoft v. i4i could seriously weaken the presumption of validity that attaches to millions of patents in force in the United States today, thereby undermining longstanding investment-backed reliance interests that are critical for domestic job creation and economic growth.

    Don’t let the facts get in the way of your “factual credibility” Sunshine.

  66. If I spoke about the Search. the black pearl. JRW in hull, The river Wier, and J B III. the fact that the Blue eyed baby was now morphed, and the unbelievable DOD defense, and of course the 1st Amendment being ignored, the Cherry’s, and the envelope being a business letter holding approx. 14 pages with a .68 cent post. the sheriff problem, and lastly of the fact that their has been a worm along with 3 of my Computers crashed, then why did we go all around the block and trash me. was that for good measure? Or was that all said and still hidden with the worm?

  67. Perhaps you need to brush up on your HTML.

    And perhaps you need to brush up on your reading skills. Note the tense of the verb – past tense. As in, I previously supplied.

    D’oh.

    The whole new reason is not going to warrant

    Well, what can I say, but you are wrong. See my post on your “disagree” tendency. Ya simply don’t understand what ya be talkin about. Ya keep on going down that wrong fork about performing a diligent search, when no such action be actually required. A cheap and easy wholesale dump is what will happen, not an expensive and extensive search. C’mon shool boy – open your mind and grasp this simple concept.

    Your laying out of “inequitable conduct jurisprudence” is a joke. Ya used the phrase and did some hand-waiving. Ya be simply wrong if the standard of protection changes and the requirement for protection comes to be only those things that an examiner has “considered“. Applicant attorneys would be behavin irresponibly to not dump as many references as possible to get the universe of “considered” items as high as possible – specially when such can be done by merely dumping volumes of references in thousands of pages of IDS’s.

    The fact that you think the point lacks merit is precisely the indicator that ya missed the point (and ya be a bit presumtive with the use of “we” – unless you and Paulie be the same – oh goodie I loves me a good sockpuppet mystery conspiracy).

    As I asked – You are not a practicing attorney, are you school boy? Are you brave enough to answer that question?

  68. The true heiniousness of your position is your dealing with the most precious comodity on earth the high king remember the 1830 game of chess protect the king.

    In chess, the pawns are the ones that do all the advancement, and most don’t even get a promotion.

    Remind me again how the little horse-shaped ones move.

  69. Those with 500 will turn into 5000. Those with 50 will also turn into 5000. Those ten pages will turn into hundreds. I done observed this for you before. Llike I said – I also provided a link to some awesome dumptrucks to hellp with the process.

    If you provided a link, I certainly did not see it. Perhaps you need to brush up on your HTML.

    As for your observations, they’re overblown for the reasons below.

    You are talking about a whole new reason for throwing those references to the examiner for “consideration.” It be called innoculation and it be way way cheaper to bury on the front end than defend against all the gnats on the hind end. you can count on this factual credibility.

    The whole new reason is not going to warrant a significant amount of disclosure from the applicant that does not already happen. Inequitable conduct is enough reason to disclose everything the applicant and the applicant’s attorney already know or should know. If anything, a change in the standard for invalidity will give the applicant more reason to perform a preexamination search to get the most relevant art on the record, which many applicants already do. Furthermore, search results that produce voluminous amounts of prior art will be cited in any event in order to comply with the duty of disclosure.

    So, as I’ve laid out, inequitable conduct jurisprudence has already cornered the market on voluminous disclosures to the USPTO. A change in the standard for invalidity will have an insignificant effect on this.

    Paulie completely misses that point. And I see that you completely miss it as well.

    We don’t miss your point. We just think that your point lacks merit.

  70. Ianae;what part of like long living in lifelong terror dont you understand.Your trying to say I dont have the right to appear in public and must be a antisocial hermit to avoid these stranger and originally relatives roberies.Your trying to say that there is justice in inventing for your life with condonance from the judicery.The true heiniousness of your position is your dealing with the most precious comodity on earth the high king remember the 1830 game of chess protect the king. With your attitude the king be is swept from the nest and the colony earth dies.

  71. what part of intimidation and judicial condonance of theft dont you understand.

    I don’t understand why you keep leaving valuables out in the open when you know people are going to keep stealing them (and trying to kill you for them, presumably). Who do you think you are, Vlad the Impaler?

    Insanity is doing the same thing repeatedly and expecting a different result. Not that I would ever impugn your sanity.

  72. aiane; pies in the windowsill!; three murdered grandfathers and near death assaults and no security for inventors in the system what part of intimidation and judicial condonance of theft dont you understand. Clearly if the judges allow these thefts to be sucessful after knowledge of the facts then they are conspitaors also.

  73. Willton, as the saying goes – “You aint seen nothin yet

    Those with 500 will turn into 5000. Those with 50 will also turn into 5000. Those ten pages will turn into hundreds. I done observed this for you before. Llike I said – I also provided a link to some awesome dumptrucks to hellp with the process.

    You are talking about a whole new reason for throwing those references to the examiner for “consideration.” It be called innoculation and it be way way cheaper to bury on the front end than defend against all the gnats on the hind end. you can count on this factual credibility.

    Paulie completely misses that point. And I see that you completely miss it as well.

    You are not a practicing attorney, are you school boy?

  74. Read the IDS rules again – they have a little clause about such a submission not being a search. What you will get is massive art-field wide dumps as a CYA. And such be perfectly reasonable under the equitable conduct regime based on the change in understand of the law if indeed C&C disappears. Tie in the Broadest UnReasonable Interpretation standard and you hit on ‘ol Nedo’s obivous chorus that any and all related art could be viewed differently by an examiner and the relatively painless task of submitting a 500 page IDS for consideration would be an almost mandatory safeguard approach.

    As Paul said, that happens already. With the current state of inequitable conduct jurisprudence, prosecutors will cite anything and everything that’s even remotely relevant to their clients’ inventions to avoid even the slightest inkling of impropriety. Patent applications in crowded arts will regularly see 500 citations to prior art patents and patent application publications, both foreign and domestic, as well as numerous non-patent publications such as scientific journal articles. And if the prosecutor has a client with related cases, he’ll cite their prior art and office actions as well. As you can imagine, the list of references for the eventually-issued patent can sometimes exceed 10 pages.

    So, like Paul said, a change in the standard is not going to affect prosecution strategy much (or at least not for the honest prosecutor). Citing hundreds of references in IDSes is business as usual.

  75. you forget the concept that the theftors have used every dirty trick in the book to obtain my conceptions in a concpiracy corrupted system.

    I don’t forget that at all. All I said is that if you keep leaving pies on the windowsill and people keep taking them, and you know people keep taking them, at some point it’s your own fault that you keep baking pies you never get to eat.

  76. except in pharma/bio, a patent portfolio is nothing more than a “comfort blanket”.

    Funny thing about security blankets, it doesn’t matter how well they actually work. All that matters is that they’re there.

    If investors are that lazy, and they love patents even though they never amount to anything really, let them go on investing in patents. It’s not like they’re capable of making a meaningful comparison between a POE patent and a C&C patent anyway (heck, most of us can’t), much less between either and some non-patent factor.

    Normally I have the highest respect for David Boundy, but this time he’s overreacting in a big way to the investment effect of a slight change in patent law. And that’s not even getting into the fact that professional investors have to invest. Even if they don’t invest in patents, they’ll invest in something they prefer to patents, so investment in the economy won’t dry up. The only thing that might slow down a bit is investment in our personal economy.

    Incidentally, patent law has changed in the past. Has anyone actually documented an increase or a decrease in overall business investment as a result of, say, eBay or KSR, after controlling for global economic factors?

  77. ping;correcting injustice doesent come cheap.Ianae; back to myself and my grandgathers inventing everthing you forget the concept that the theftors have used every dirty trick in the book to obtain my conceptions in a concpiracy corrupted system.Ping; I am sure that the thefters and there business partners would like to make the victum into a perpertrator for asking for justice they thrive on reverse justice within the system.

  78. Another screw up by Mikey in his inventions.

    Mikey you should be paying us for all the trouble you have invented,

  79. Well Paulie, ya missed the boat big time on your plank of “The other public scare story is that this decision will lead to a flood of additional prior art citations in patent applications. That also lacks factual credibility.

    What lacks factual credibility is your understanding. I done observed what would actually drive this dump truck (and even gave links to some pretty sweet monster rides).

    You are correct that more extensive and expensive patent searches would be frowned upon by applicants, but ya make the mistake of thinking that’s the road that would be driven down. It’s the other fork – the wide open and easy no-look, mass produced dump.

    Read the IDS rules again – they have a little clause about such a submission not being a search. What you will get is massive art-field wide dumps as a CYA. And such be perfectly reasonable under the equitable conduct regime based on the change in understand of the law if indeed C&C disappears. Tie in the Broadest UnReasonable Interpretation standard and you hit on ‘ol Nedo’s obivous chorus that any and all related art could be viewed differently by an examiner and the relatively painless task of submitting a 500 page IDS for consideration would be an almost mandatory safeguard approach.

    It aint no skin off the back of the applicant. And it would be a mandatory review by the Office. In fact, my peeps have already started making art-field specific templates. I think the smallest dump we got is around 270.

  80. Ianae; remember I gave you your cival rights in 1958 so you can critisize presidents and judges without fear of repercussions there only public servants now in an integritious justice system I may have forgotten the right to impeach the judges by public elections.

  81. IBP a venture capitalist once told me that , except in pharma/bio, a patent portfolio is nothing more than a “comfort blanket”. With all your experience on the ground, IBP, you seem to me to be confirming this statement. Do you still need a comfort blanket. Up to what age do kids in the USA still need them?

    As you say, key to the attractiveness of the investment is the people behind the business opportunity.

  82. IANAE–

    I see the investment end of patenting often.

    Boundy is correct.

    When you said that: “There’s no way that “any weakening” will be “possibly catastrophic”. That would mean that…our current patent system is barely strong enough to keep us teetering on the brink of economic and technological collapse.”, you missed the point–the point being that patents have already been sufficiently weakened in the eyes of some investors that even partial elimination of C&C could be the straw that breaks the camel’s back. Seriously.

    You also contended that: “any patent at all will still be preferable to no patent at all.”

    While that may be true within the context of a particular investment opportunity, such a conception misses the mark. The point is that investors have a wide range of investments available to them, and that a potential investment with a POE-based patent may NOT be preferable to another potential investment, to which the previously C&C-based patent was preferable in the past.

    Finally, you opined that: “Surely investors…judge each patent on its individual merits, rather than simply glancing at the statute and deciding that patents that are merely presumed valid are not worth throwing money at.”

    In my experience, this is not at all true. Investors can be really, REALLY lazy. They, of course, will tell you that they are really, really “busy”.

    They think that they know what they need to know, and that is that. They are really more interested in security, other investors, management team, etc., than in the strength of a particular patent, even in a patent-supported investment opportunity.

  83. Ianie; I was also the inventor of the federal circuit courts in port huron I still havent gotten justice from it because of disbelievers like you. Isay the patent doesent lead to a marketable profitable invention product or business method its irrelavant weather you grant the patent or not if it is grant it also.Certantly the microsoft case unilocks claim is invalid due to fraud of inventorship.

  84. It’s like that thing where if you disagree with the president you’re a terrorist. Though that sort of thinking has been much less prevalent the past couple of years.

    Actually, IANAE, it’s based on a more simple principle: don’t bite the hand that feeds you.

  85. So?

    You think it’s okay for courts to find patents invalid?

    Try to follow the logic, please. There was this law, right? And Congress didn’t like it. So, instead of changing the law, they changed the judges. That’s as clear an indication as you’ll ever get that the law was deliberately changed at that time, and we should never change it back or re-think it in any way, because to even consider whether the current law achieves its intended purpose or the purpose set out in the Constitution would be rabidly anti-patent.

    It’s like that thing where if you disagree with the president you’re a terrorist. Though that sort of thinking has been much less prevalent the past couple of years.

  86. “The combination allowed patent to be invalidated based on opinion more than evidence. The Federal Circuit soon corrected both.”

    A shame really. About the later that is. Thankfully, the USSC returned us to the former standard in KSR.

  87. This issue is so important because of the near impossibility of the USPTO to verify accurately that software patents have no prior art. In the case of i4i, there are several examples of prior art the USPTO missed that I have personally come across in my work. Some of these implementations are “under the covers” implementations where the developers didn’t think it was a novel enough idea to patent. How could the USPTO ever know about that?

    But once you get the hasty (and poorly reviewed) USPTO approval, then you get the “clear and convincing” standard.

    It’s not right – and the supreme court will do the right thing.

  88. Prior to the creation of the Federal Circuit, the patent system in the US had again fallen on hard times. Patents were routinely held invalid.

    So?

  89. obviously ianae; I cant put every argument behind every post ide be into major paper but let me expand for you.We have recieved credit in many instances however our greatness is quickly forgotten in the corruption and conspiracy of this patent system. there is credible people who will or would testify except for the reprocussion potential I still an the only human on earth that can produce marketable invention on challenge and it will be found nowhere on the internet on immediate search.

  90. As usual the reverse is true since without the incentive to create the patent system falls apart due to lack of high quality ideas and human advancement stops.

    That’s obviously not true, since you and your ascendants invented everything in the world even though you haven’t received one iota of credit over the past two centuries.

  91. If you could see; if you knew what I know but your blind. As usual the reverse is true since without the incentive to create the patent system falls apart due to lack of high quality ideas and human advancement stops.

  92. clearly one of the primary reason for granting invalidation of a patent should be inventorship error discovery through inequitable conduct on the filers. This of course if proven beyond a reasonabnle dought constitutes fraud and clears the way for reversed judgement and reissuance as compensation where nessary due to lack of funds from the original granted patent period and lack of authorization to use of the intellectuual material before involvement in manufacture.Third party interjection should be allowed because it constitutes new evidence at this time and and should be deemed in the intrests of justice with respect to true and original invention concievers

  93. IANAE, you can double-check the petition for writ of cert., but I believe one of the arguments for cert. was a conflict in circuits. Many regional circuits effectly did away with the presumption of validity wrt art not considered by the PTO. I also think the likes of the IPO were confident that the proposed Federal Circuit would lay down the rule it did. I can research it, but I think that was the standard of the CCPA.

    It was also true that there was no clear standard for obviousness.

    The combination allowed patent to be invalidated based on opinion more than evidence. The Federal Circuit soon corrected both.

  94. Patents were routinely held invalid. They were all “obvious.” One of the reasons for this was that regional circuits operated under a preponderance of evidence standard with respect to art not before the PTO.

    That’s not a problem with the preponderance standard. If all those patents are demonstrably invalid on a preponderance standard, they should never have issued in the first place, and the patentees don’t deserve them.

    If patents were being held invalid by the courts despite not actually being invalid on a balance of probabilities, that’s still not a problem with the standard of proof. It’s a problem with the judges taking a slanted view of either the claims or the prior art, and I’m sure they would have done the same no matter the applicable legal standard.

    Now, perhaps you can explain to me how and why the legal standard of proof changed when the Federal Circuit took over appellate jurisdiction in patent infringement actions. Everyone around here seems to think that patents have enjoyed a clear-and-convincing standard since time immemorial. You’d think that the Supremes could have set the regional circuits straight, if that was really the case. Surely that would have been a much better plan than creating a whole new court that was so quickly and easily subverted by one Judge Rader.

    Moving away from the C & C standard would undo the pro-patent reform intended by the creation of the Federal Circuit,

    No it won’t. The mere existence of a court doesn’t stand for any particular rules of substantive law. The presumption of validity is in the statute, and that statute didn’t change when the Federal Circuit took jurisdiction. In particular, no higher standard of proof was amended into the statute when they had the chance.

    So riddle me this – was the clear-and-convincing standard based on old precedent that nobody could persuade the district courts and the regional circuits to apply for some reason, or was it created on a whim by the Federal Circuit?

  95. IANAE, in 1836, Congress created an examination system and a presumption of validity because the prior system was dysfunctional. It was a patent system in name only. No one gave patents any respect. Viz., Eli Whitney’s experience with the cotton gin patent. link to inventors.about.com

    Prior to the creation of the Federal Circuit, the patent system in the US had again fallen on hard times. Patents were routinely held invalid. They were all “obvious.” One of the reasons for this was that regional circuits operated under a preponderance of evidence standard with respect to art not before the PTO.

    Recognizing the pitiful state of the patent system, oranizations such as the IPO were founded. Eventually they persuaded Congress we needed to end forum shopping because some, if not most, circuits were decidedly anti-patent. The Federal Circuit was established. Among the first things they did was to firm up the C & C standard.

    Moving away from the C & C standard would undo the pro-patent reform intended by the creation of the Federal Circuit, and return us to the legal enviroment that existed before. The consequences are highly predictable.

  96. Change the standard, and you will fundamentally alter the landscape.

    Do you honestly think that the current system is so precariously balanced that a slight change to the generalized global standard of proof will completely upset the ability to negotiate a settlement in all cases without any regard to the strength of the evidence in any particular case?

    I’m given to understand that even with a bare presumption, one still needs some reasonably decent prior art to invalidate a patent. An accused infringer with really good prior art in his hand will have a much stronger bargaining position than a slightly lower standard of proof (that still requires being more convincing than the other party) could ever give him.

    And what of the current standard of proof for infringement? Is that a fundamentally different landscape? You’ll note that non-infringement is another way for the accused infringer to escape liability, and as the law stands he can show that on a balance of probabilities. If that’s all it takes to throw the whole patent system into chaos, it should be there already.

  97. Ned The C&C standard gives investors confidence and potential infringers pause. Change the standard, and you will fundamentally alter the landscape.

    Fundamentally.

    More like “incrementally,” at best. Remember the devastating effect that KSR had on patent grant rates?

  98. Paul, perception is reality. The C&C standard gives investors confidence and potential infringers pause. Change the standard, and you will fundamentally alter the landscape.

    Fundamentally.

  99. Value is not measured in pure dollars (least not as done concerning blog comments).

    One must apply a “ideology factor” – realistic dollars must be diminished until the ideology position is no longer threatened.

  100. Make patents easier to invalidate (even if only in perception rather than reality) the infringer’s incentive to settle is lower while the patent owner’s incentive to settle is unchanged, or possibly increased.

    Only very slightly. The parties’ incentive to settle a particular dispute is much more sensitive to the particular facts of the case than the generalized notion of whether patents are a little bit easier to invalidate. If you have very strong or very weak prior art, it won’t matter to you what standard is being applied, and the standard won’t influence the negotiations at all. If you have marginal prior art that might win on a preponderance but might lose on clear and convincing, litigation is probably equally worth a shot under either standard.

    Besides, it takes an awful lot of economic incentive for the defendant to want to take a chance on litigation. Even if he wins, he’ll still be several million dollars out of pocket. This change would do no more than shift the price point of settlement slightly, even in marginal cases where the standard of proof would ultimately matter in court.

    Infringers that are reluctant to settle may ultimately do so, but having a perceived position of strength may increase the amount of time before this decision is reached.

    Surely either one party or the other (or both) would perceive a position of strength no matter the standard of proof. Since it takes both parties to settle, shifting the balance a little won’t change much in that regard.

  101. IANAE said: Wherever you put the legal fulcrum, each party will price its own risks and rewards, and price the license accordingly.

    True, however I fail to see how this is a counterpoint. Make patents easier to invalidate (even if only in perception rather than reality) the infringer’s incentive to settle is lower while the patent owner’s incentive to settle is unchanged, or possibly increased.

    Another aspect I addressed in my post, but not in the comment above, is increased litigation costs. Infringers that are reluctant to settle may ultimately do so, but having a perceived position of strength may increase the amount of time before this decision is reached. This means the litigation goes on longer, and the parties incur more expenses. Thus, even if the parties agree on the same dollar amount they would have in today’s terms, value is nonetheless decreased (assuming you measure value roughly according to how much is collected minus the cost of collecting).

  102. Mr. Morgan sounds like, oh I don’t know, a paid advocate for the reducing-the-standard-of-proof argument

    LOLOLOOLOLOL.

    And the Howry partner who predicted this will “radically alter” trials? What does he sound like?

  103. And of course one would expect invalidity to be appealed somewhat more often if the standard is lowered.

    Why would one expect that? Invalidity is a do-over at the CAFC level anyway, and either party may appeal if it loses at trial. If anything, the defendant would win slightly more frequently at trial under the lower standard, and it would be the patentee making the economic decision to appeal.

    Also, no matter where you put the standard, the cases in the vicinity of that standard will be “marginal”. Of course, it’s probably the marginal ones that are worth appealing in the first place, because those are the cases where the District Court might plausibly have gotten the wrong answer.

  104. “However, that does not equate into an assumption that the same percentage of cases would have been DECIDED differently if that were not the standard, or even that invalidity rather than non-infringement was the decisive factor.”

    This is true, and I did not mean to imply either. I only wanted to put some numbers to the issue, and the numbers suggest that it could be an issue in a significant (though indeed relatively small) number of high-value cases.

    And of course one would expect invalidity to be appealed somewhat more often if the standard is lowered. There are presumably marginal cases today where the alleged infringer does not consider it worth the cost of appealing the issue because of the higher standard of proof.

  105. Thank you to all of the above who have presented factual rebuttals, or supports. [We will all have to wait a few years to see what actually happens, of course.]

    E.g., I do not doubt “roughly 46 [27.3%} precedential cases in 2010 involved a discussion of 'clear and convincing evidence' in the patent validity context [vis a vis] 168 precedential cases included the word ‘patent.’ Since that is the current standard, it would be expected to be frequently recited. However, that does not equate into an assumption that the same percentage of cases would have been DECIDED differently if that were not the standard, or even that invalidity rather than non-infringement was the decisive factor.
    But, as I admitted, one would certainly expect SOME differences, especially in JMOL’s and Federal Circuit decisions, or even summary judgments [like that in KSR] from those judges more willing to dig into invality issues.

  106. David: Investors have lots of choices — an investor has over 10,000 possible investments on any given day. Companies compete fiercely for capital. If you change the economics of a deal even a little bit, the company moves a little above or a little below the average, and either has good access to capital or none. Patents are that “little bit above.” If we weaken the patent system a little bit, there will be a large change in investor behavior.

    The thing is, though, the economics of all patents will change in the same way. No patent will gain a relative advantage over any other patent (an investor will always prefer a patent without close prior art), and any patent at all will still be preferable to no patent at all.

    I don’t believe that very slightly weakening patents in a generalized way is going to upset the investment community. Surely investors (and licensees) judge each patent on its individual merits, rather than simply glancing at the statute and deciding that patents that are merely presumed valid are not worth throwing money at. All it might do is cause them to think more carefully about which patents to invest in, which I propose is actually good for the system.

    David: And any weakening of the perceived strength of patents is almost certain to have a very large, possibly catastrophic, effect on investment in innovation, particularly at the highest-risk cutting edge.

    There’s no way that “any weakening” will be “possibly catastrophic”. That would mean that either a minute strengthening would be a tremendous boon to the economy, or our current patent system is barely strong enough to keep us teetering on the brink of economic and technological collapse.

    The proposed change to the standard of proof will have far less effect, and far less perceived effect, than eBay did. And I’ll thank you all not to jump to the silly conclusion that eBay caused the economic state we’re currently in.

  107. Juries are much smarter than you are giving credit for. Drei.

    Wonder if the lower burden will give rise to collateral estopple (so called adminitrative estopple) issues in the concurrent reexamination. Meh, probably not. The agency wants its veto.

  108. Faced with an abstruse technology which he simply does not understand, and told that he must be “convinced” before he comes down on the side of invalidity, most jurymen will simply conclude that they are not competent, will not engage, and will decline to decide it, one way or the other.

    All the more reason to get rid of jury trials in civil matters altogether.

    Such a shame that it would require a constitutional amendment, and everybody would be up in arms about losing some really important constitutional right they thought they had.

  109. Paul -

    I concur with Patrick, economic behavior is based almost entirely on ex ante perception, not ex post litigation. And this goes most strongly for investors. Let me offer some insight from the point of view of investor’s counsel. My conclusion is that your analysis — even if I agreed with every line of it — is all but irrelvant. We should be looking at the dog — patent-based business investment — and not let the tail of litigation wag the dog.

    Here’s the tradeoff in the patent system.

    Investors have lots of choices — an investor has over 10,000 possible investments on any given day. Companies compete fiercely for capital. If you change the economics of a deal even a little bit, the company moves a little above or a little below the average, and either has good access to capital or none. Patents are that “little bit above.” If we weaken the patent system a little bit, there will be a large change in investor behavior.

    Nat’l Venture Capital Ass’n estimates that over 20% of GDP now arises from firms that benefited from venture capital (not a perfect overlap with patent based investment, but close — and it gives you an idea of the big numbers we’re talking about). The total patent-based investment flow in the U.S. is well upwards of $200 billion per year, when you add federal R&D funding, state economic development funding, private equity funding, venture capital, internal R&D funding, etc.

    The costs for patent litigation, design-around, etc. are around $20 billion (again plus or minus a factor of two, hard to run down exact statistics – I’ve tried). Patent-based investment dwarfs litigation by at least a factor of 5, probably a factor of 10.

    The upshot is, that if you tamper with the patent system a little bit, you’re going to get a very large change in a very large piece of the economy.

    Patents are net wealth creators, BECAUSE they are stong enough to function as an asset in which an investor can take a security interest. Weaken patents by a small percentage and you reduce startup investment by a much larger percentage. The leverage is very high in favor of the wealth-creating effect.

    Any focus on litigation is simply irrelevant. And any weakening of the perceived strength of patents is almost certain to have a very large, possibly catastrophic, effect on investment in innovation, particularly at the highest-risk cutting edge.

  110. Just a thought, but is there not a qualitative difference here.

    Faced with an abstruse technology which he simply does not understand, and told that he must be “convinced” before he comes down on the side of invalidity, most jurymen will simply conclude that they are not competent, will not engage, and will decline to decide it, one way or the other. So the presumption holds.

    But tell that same juryman that the prevailing standard is “which of the two positions is the more likely one?” and there will be no such reticence. Yon juryman will roll up his proverbial sleeves, set about it, and actively find the facts.

    Is that why somebody upthread advanced the proposition that there is only one “presumption” in law? Because facts have to be found, diligently, so the jury must be engaged, and switched on.

  111. Patrick: Even if they ultimately agree to settle, their tolerance for a license fee will be affected by their perceived position of strength.

    It’s not as serious as all that. You’d be hard pressed to find a license that costs more than the expected cost of litigation, so most economically sensible licensees would still be more than willing to negotiate.

    And what of the patentee’s willingness to negotiate? Let’s not forget that settlement requires agreement from both sides, whereas going to a jury requires only one party to desire that outcome.

    Wherever you put the legal fulcrum, each party will price its own risks and rewards, and price the license accordingly. It won’t change anything in most cases, particularly those where the licensee has either a pretty strong argument against validity or none at all.

    James: The ribbons on US patents are red, aren’t they?

    You can get a blue one if you ask nicely.

    Ru: That said – jurors are capable of making a distinction between different burdens of proof, and lowering the burden of proof would likely yield a measurable and noteworthy increase in the number of patents invalidated by juries.

    If that measurable and noteworthy increase is the result of jurors no longer erroneously applying a “beyond a shadow of a doubt” standard (which is stronger than even the criminal standard), I’m all for it. I’m not at all comforted by a statement that “jurors are capable of making a distinction between different burdens of proof” when they end up applying the wrong one. If anything, I’m more disturbed by the implication that there’s a measurable and noteworthy discrepancy between jury findings and the right answer.

  112. Almost every case that does go before a jury includes prior art challenges to invalidate a patent. I have observed over 20 mock juries deliberate whether or not to invalidate a patent because of prior art. The majority have indeed noted the higher burden of proof required by “clear and convincing evidence.” (Unfortunately, at least two used their group memory to recall it as “beyond a shadow of a doubt”!) That said – jurors are capable of making a distinction between different burdens of proof, and lowering the burden of proof would likely yield a measurable and noteworthy increase in the number of patents invalidated by juries.

  113. “Furthermore, the jury can be shown for emphasis the Government gold seal and blue ribbon on the patent”

    The ribbons on US patents are red, aren’t they?

    More seriously, regarding the “relatively small percentage” of Federal Circuit cases decided on invalidity as opposed to infringement: A quick and dirty Lexis search suggests roughly 46 precedential cases in 2010 involved a discussion of clear and convincing evidence in the patent validity context, while 168 precedential cases included the word ‘patent.’ That’s 27.3%. The percentage for all cases, precedential and non, is 14.2%.

    While those numbers probably qualify as relatively small, they still seem significant, especially if you believe that higher-value litigation is overrepresented at the Federal Circuit level.

  114. Paul,

    In settlement negotiations, the perception of strength (my own as well as my opponent’s) is more important than actual strength itself. As such, if infringers believe that they have a better chance of invalidating your patent, they will be less willing to negotiate and more eager to go to trial. Even if they ultimately agree to settle, their tolerance for a license fee will be affected by their perceived position of strength. I discussed this in more detail in my post: Supreme Court Decision Will Influence Patent Value Across The Board.

    Changes to the law on damages may have an even greater effect, but that’s no reason to disregard this issue.

  115. Please note that in anticipation of strong emotional views re this case, I stated that: “Whether as a matter of public policy this anticipated change is good or bad for patent law and technical or economic progress is not the subject here.” Also, I have no personal stake whatsoever in this dispute or its outcome.
    Note that similar apocalyptic arguments were made before MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007) – that that Supreme Court decision would flood the courts with declaratory judgment suits by licensees against patent owners. It did not happen.
    Patent-threatened clients need truly objective advice as to how likely is it that spending millions of dollars in legal fees attempting to invalidate patents in litigation will be successful, and how will those odds really change with case law developments like this?* [Vis a vis alternatively choosing settlements and/or reexaminations, when reasonably available.] With all due respect, my pro bono perspective is that those who stand to be deprived of those millions might not always, even unconsciously, be the most totally objective source for those odds, especially given the highly business-oriented billings-driven nature of large law firms these days. I have always been puzzled as to why so many executives who would always insist on an independent second opinion for surgery so frequently enter into far more costly litigation without any?
    *Also, not to be confused with the better odds for defending on the basis of non-infringement.

  116. I take this opportunity to remind everyone here that there is but a single level of presumption afforded by law.

    Any talk of splitting that presumption and creating multiple levels cannot stand. The Court has recently reiterated this avoidance of making that type of law in the Bilski decision and there is no reason to believe that the Court will decide to move 180 degrees from so recent a decision.

  117. Simple solution, clear and convincing unless it has been before the USPTO or could go before the USPTO (at reexam).

  118. This piece presumes that the small percentages of patent cases going to trial would not be altered with a different burden of proof. A true trial lawyer would use the lowered standard quite effectively and certainly more patents will be invalidated at trial. Furthermore, with that lowered standard, in-house at defendant companies will be at least slightly more inclined to go to trial. It is easy to focus on the 97 percent not going to trial, but imagine if the number of patent trials increases by 33 percent (i.e. A 1% increase overall). That would have affect court’s calendars and at least some additional patents will be invalidated. Lastly, note that NPEs will have to settle for lower settlements with a lower burden or run the risk of killing their golden goose, so I recognize that there is a balancing effect, but the majority of NPE cases do not go to trial for that same reason already. If the Supreme Court changes the burden, it will change patent cases and trials.

  119. Hmm, so the answer is to reduce the value rather than focus on the real problem of making sure the examination is done correctly…?

    That’s like institutionalizing the problem.

    Maxie – of course you think that’s a “good idea” – US patents are your enemy.

  120. Be that as it may, I’m grateful to Mr Morgan for running up the flagpole the “Gold Seal and Blue Ribbon” argument. The gold seal of Government ought to command huge respect. Anything that damages that respect is to be regretted. So, as a patent attorney, I wonder whether applying those precious indicia to every single patent that happens to get through to issue really is any longer a good idea.

  121. I second Anon’s observation. Mr. Morgan sounds like, oh I don’t know, a paid advocate for the reducing-the-standard-of-proof argument, which, by the way, I do not believe is a foregone conclusion in the i4i case.

  122. With all due respects, this story is rubbish.

    If you wish to write a journalistic story, leave out the leading phrases and try to be just a little bit objective.

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