Therasense: Further Impressions

By Jason Rantanen

Two weeks ago, I posted a link to a short essay, written by Lee Petherbridge and myself, about the potential impact of Therasense on the patent system.  We have since received an overwhelming number of thoughtful and clearly informed comments, for which we are extremely grateful.  Attached is a link to an updated draft that incorporates many of the points raised by the comments.  

The most compelling point raised by the comments was a need for a specific section analyzing the impact of Therasense on patent practitioners.  In this updated draft, we provide that specific section.

It begins on page 20, and includes among other things an analysis of the impact of Therasense on the concern about IDS overdisclosure that featured so prominently in the opinion and in the comments we received.  The latest version can be downloaded here: Therasense – First Impression.

As with the prior version, we welcome any comments, either positive or negative.

32 thoughts on “Therasense: Further Impressions

  1. ben, think.

    1) The PTO adopts a new rule that flatly prohibits disclosure of references. The assumption (stated?) is that the applicant’s claims at all times are deemed patentable over the non disclosed references by the appplicant.

    2) The same rule permits permissive disclosure of references where the applicant has doubt. The permissive disclosure requires an explanation of the reference and why the applicant believes the claims are patentable over the reference.

    The above, I can guarantee you, will stop the “dump.” It will also permit full compliance with Thereasense.

  2. Clearly I’m out of my league. The “explains the reason the reference is relevant and how the claims distinguish over the reference” part reminds me of (1) the unused Jepson claims, and (2) Dudas’ failed initial disclosure requirement. I don’t understand why something so maligned (asking practitioners to specifically distinguish claims from prior art) should be the “better solution.”

  3. It took a couple days of fasting (otherwise I was losing my lunch anyway), but I have finally finished reading the piece carefully and thoughfully.

    It is the biggest piece of c.rap I have ever read.

    This makes yellow journalism pale to blinding white.

    Jason, I recommend you find something else to cover other than the patent field. While your lack of understanding is easily eclipsed by your preconceived notions, the tandem is excruciating. Perhaps some actual hands-on experiencial steak instead of the ivory tower gruel would feed your mind better.

  4. ben, a better solution would be to promulgate a rule that requires non disclosure unless the applicate explains the reason the reference is relevant and how the claims distinguish over the reference. That will slow things down a bit.

  5. One fix of over-disclosure is for the PTO to sanction a few practitioners for cumulative/excessive/burial type disclosure.

    Some practitioners might decide to dial back and trade one type of sleeplessness for another. Litigators already deals with this during discovery somewhat.

  6. Exactly. We will continue to cite everything unread and the Examiners will continue to not read them either, all due to a judicial doctrine that seems to exist chiefly to provide a reason for litigators to make false accusations. Very efficient. Not.

  7. Willful blindness indicates that the applicant was aware that the reference was material at a highly probable level.

    “might be material” simply does not rise to that level.

  8. Ping=The Shilling Shall Continue=Log in the Eye

    At least you’ve dropped the Uncle Remus act.

    Malcolm is occasionally funny, even hilarious at times. You are not, Ping.

  9. Bob, with willful blindness lurking as a substitute for actual knowledge, practitioners cannot willfully blind themselves to the content of references that might be material. Overdisclosure will continue and so will the plague.

    If anything can be said about the Therasense majority opinion is that it was long on promise but short on delivery.

    The Supreme Court should take this case because the Federal Circuit majority opinion is woefully inadequate.

  10. Someone who has made a thousand trips without wearing a seatbelt may consider those who do to be needless worriers until his thousand and first trip when he has an accident.

    My grandmother would be embarassed by this argument.

  11. Okay, Bob, so based on your comment you disclose the entire encyclopedia of human knowledge every time you file, right? Or do you just cite 10,000 references and soil yourself every night in a cold sweat thinking about being put on the witness stand to explain why you didn’t cite a particular reference?

    The real problem with any practice that aims to reduce the risk of prosecution malpractice to zero is that the litigators will always be able to outspend (by orders of magnitude) the practitioner in time and level of analysis of every aspect of prosecution.

    Fixed.

    Seriously, Bob, there’s the fantasy world you seem to live in and then there’s reality. Inequitable conduct is not a serious issue in the vast majority of litigated patents. In part, that’s because of the case law that punishes such conduct. Keep your nose clean and be reasonable, and you’ll be just fine.

  12. Paul Cole is correct as is the related section in Rantanen’s paper (II.D.2.a). The cost of substantively assessing the materiality of each possible reference to be cited outweighs the cost of just citing everything and significantly reduces the risk to the applicant and the practitioner. Of course every practitioner would like to carefully consider the materiality of each reference, but the cost of doing so would be prohibitive.

    Malcolm Moody’s comment to the effect that he has done and will continue to do this can only mean that he is being flippant or that he does not realize the risk that something he decides not to cite will become a smoking gun reference in an IC claim.

    Regarding the comments to the effect that, because very few patents are litigated, most practitioners do not need to worry about IC charges, it is a poor attorney who practices based on the most common result rather than taking care at every level. Someone who has made a thousand trips without wearing a seatbelt may consider those who do to be needless worriers until his thousand and first trip when he has an accident.

    The real problem with any practice that aims to carefully disclose only material references during patent prosecution is that the litigators will always be able to outspend (by orders of magnitude) the practitioner in time and level of analysis of every uncited reference. In these circumstances, no practitioner can know that some overlooked aspect of an uncited reference will not look very fishy at trial.

    Which brings up another point unrelated to the focus of the Therasense opinions: it is likely that a practitioner who merely knew of the existence of a reference would be charged with intimate knowledge of its contents in an IC claim. Practitioners become aware of far more references during prosecution than they can likely skim, let alone read in detail. Yes, the references that appear to be relevant would be analyzed carefully and completely by the practitioner, but not the ones that do not. If one of those included a significant bit of information, it could easily become the focus of an IC claim on the assumption that of course the practitioner must have know what was in the reference. The only viable defense to this risk appears to be disclosure.

  13. Jason, you might also consider what the court could have done to achieve its stated objective: put a stop to the patent overdisclosure problem and too frequent accusations of IC.

    The solution is simple, very simple:

    Provide that trial, including discovery, of IC may not commence until at least one claim has been held invalid over the non disclosed reference or in view of the mistatement.

  14. Ping is not even posting and still gathers the policeman’s comments and yet the annoying posts of Malcolm Mooney go on (and on) without comments from those same policemen.

  15. On page 26 you talk about a practitioner not being able to predict what a court will consider to be “but-for” art. Specifically because validity analysis follows the court’s claim construction, which is unknown at the time the practitioner would in theory make the call of whether to disclose. Just to be clear – in the but-for analysis, the court should not be applying its own claim construction, but rather the BRI applied by the PTO, but as you mention earlier in the article – this is probably just as unpredictable.

  16. Content of character. That is what he said. Yes I have a flaw. But mine was a knee jerk reaction to a comment. I don’t know Sally? I just don’t know. But he did know! so i punish him. I apply a knee jerk… WRONG.
    But I myself have judged the content of Her character. I was only about 7 or 8 at the time. Doris asked Marcella to take Connie Mays. Marcella didn’t even go to the Funeral. I recessed that event. But it was the most defining aspect of her Character. But I was just a Baby then. So that just goes to show you…What the babies see and remember.
    Thou I walk through the valley of death, I hope to fear no evil. Hoping only goodness and mercy shall follow me all the days of my life, and I shall dwell in the house of the LORD FOREVER…
    Let this be a lesson to those that control a Monopoly that they are supposed to award you, but neglect to give small Inventors control of Boardwalk or Park Place. Leaving them if lucky…. with Baltic and Mediterranean.

  17. “A new ‘What me worry?’ has been found in pee wee.

    Watch out pee wee, the sock puppet police may be watching…”

    Yes Ping, we are watching. You’re as annoying as ever.

  18. I agree that Therasense will have very little impact on how I prosecute and what I submit to the USPTO. I will continue to submit material, non-cumulative references as before

    Yes, as you do not represent applicants, and before you submitted zero, you now will continue to submit zero.

  19. pee wee Oh, please. What, one in a thousand patent applications get litigated, and only then does your work get scrutinized, in an action that has no personal consequences for you unless, perhaps, you did something so transparently slimeballish that even your clients, most of whom aren’t paying any attention and who generally are disinclined to believe anything the defendant says anyway, recognize it. Yeah, life is tough for prosecuting attorneys like us.

    Yup.

    I agree that Therasense will have very little impact on how I prosecute and what I submit to the USPTO. I will continue to submit material, non-cumulative references as before, as well as relevant office actions in related domestic and foreign cases.

    As soon as there is a close case applying the “new” Therasense standards that comes out in favor of the defendant (i.e., a finding of unenforceability due to inequitable conduct), the same pack of infantile prosecutors will be back in force complaining that they need to file a truckload of references in order to sleep at night.

    By the way, when is the deadline for a petition of cert to be filed at the Supreme Court in this case?

  20. And how many times has a patent you wrote been held unenforceable due to inequitable conduct, Paul? If you’re still losing sleep over inequitable conduct after Therasense then you really do need to lighten up. I’m by no means telling you to stop citing references, but you can relax a little.

  21. It is true that many patent attorneys or agents have never yet written or prosecuted a patent important enough and good enough to be sued on, but that is of no relevance or comfort to those who have.

  22. A new “What me worry?” has been found in pee wee.

    Watch out pee wee, the sock puppet police may be watching…

    The point that Paul brings out is only the tip of the iceberg.

    Jason’s article is tantamount to yet another ivory tower ass-ault on patents and grossly misunderstands whose duty it is to actually examine an application (now and prior to the decision), the express purpose of the decision, and presupposes its own conclusion that patents are a mere giveaway by the government.

    All this is is academic conjecture at its typical levels.

  23. The deck is still stacked against prosecuting attorneys, who have to trust that the attorneys representing the patent owner (who often are not even registered patent attorneys) will competently defend the IC action on behalf of the prosecuting attorney.

    Oh, please. What, one in a thousand patent applications get litigated, and only then does your work get scrutinized, in an action that has no personal consequences for you unless, perhaps, you did something so transparently slimeballish that even your clients, most of whom aren’t paying any attention and who generally are disinclined to believe anything the defendant says anyway, recognize it. Yeah, life is tough for prosecuting attorneys like us.

    Lighten up, jeff. If you’re living (and working) right, it will all work out.

  24. I agree with Paul. There will be no change in what I will be submitting to the PTO and my stress level dropped a smidgen. The deck is still stacked against prosecuting attorneys, who have to trust that the attorneys representing the patent owner (who often are not even registered patent attorneys) will competently defend the IC action on behalf of the prosecuting attorney. Thus, there is nothing to lighten up about, pee wee.

  25. I find very troubling the free-drawing, without a shred of data [or even any suggestion of extensive personal experience in patent application prosecution], of pseudo-economic and/or pseudo-motivation conclusions like: “From nearly any perspective the Federal Circuit’s holding in Therasense represents a naked attempt to shift economic rents from the public and the patent office to the patent bar and those who seek patents.”
    There is no survey or other data supporting any significant behavioral changes by patent application attorneys or agents. I and others I know who do have real and extensive experience in patent prosecution do not see any good reason to significantly reduce IDS submissions of anything known that the PTO might consider, as there is yet no reason to think that the present high percentage of false IC accusations regularly made by trial lawyers in patent litigation will suddenly end, even if the the number of proven IC cases does decrease. IC accusations for which the application prosecuting attorney is usually not even allowed to be personally represented in the patent litigation. Thus, the vast majority of us, who have never even been accused of IC, are still relieved that we will at least have some relief from IC accusations based on mere inuendos based on widely varying prior panel decisions of the Fed. Cir.
    There is not even any data here on what number or percentage of patents were previously being invalidated by inequitable conduct that did not ALREADY rise to, or above, the “but for” level, or was already the kind of egregious conduct for which the “but for” test is NOT required by Therasense. Etc.

  26. Jason, my own view is that the PTO needs an affirmative rule of non disclosure in order to stop the practice of overdisclosure given all the uncertainties you discuss regarding the new “but for” standard. It will be simpler to disclose everything potentially relevent than to make a call on materiality that will always be second-guessed in court.

    You do note that litigation is going to be complicated because the courts will now have to determine two different claim constructions, one under BRI.

    Next, in your discussion of “but for” on page 26, you incorrectly seem to think it is related to validity and that the court’s conventional claim construction is the defining standard for but for. It is not.

    But you do point out even with validity, issues of construction are uncertain. Imagine what they will be like with BRI?

    Finally, you do not mention that there is no well developed law on BRI. It is scattered. The main case is In re Morris. You might actually want to read that case and consider its consequences. For example, that case does not require BRI to actually read on the disclosed embodiments as an essential requirement. “Consistent with the specification” is limited to definitions and consistent usage in the description so that no other definition is possible. It often occurs that the most argued claim terms are not used in the specification at all. This leads to wild and wooly patent office constructions that are typically upheld on appeal.

  27. Just a nit Jason, but shouldn’t the title be updated to “Therasense – Second Impression” ?

  28. Look at the overdisclosure issue from the point of view of a patent prosecutor:

    DISCLOSE THE REFERENCE: Time 10-15 minutes. Benefits – no inequitable conduct over that reference. Enhanced presumption of validity having regard to that reference.

    Non-discoisure of the reference: Time 20 minutes to 2 hours to determine that it is truly irrelevant. Risk of being accused of inequitable conduct years later. No enhanced presumption of validity.

    Time is money, as they say. Not much choice is there?

    Does the paper flood really improve patent quality? Nobody knows because the research has never been done.

    In the UK, we have exactly the same issues with litigation discovery. It is cheaper to put a document in the disclosed bundle than to think whether or not it should be there, and the risks are less.

  29. My understanding is that the Inequitable Conduct Doctrine is a judicially created doctrine. A reason for its existence is the assumption that it is important to preserve patent quality. Is there any evidence that compares claims issued in the U.S. and later found to have been obtained as a result of inequitable conduct from the patentee with claims issued in a jurisdiction in which no such doctrine exists? Why is it that we, in the U.S., are so enamored with a doctrine for which we have no evidence?

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