Survey Response: Is the patent invalid?

by Dennis Crouch

PatentlyO144Last week I asked readers their thoughts on the validity of claim one of U.S. Patent No. 8,185,967.  The patent issued recently to Digimarc and is titled a Method and apparatus for content management.  Of the 917 responses, I removed 4 for inconsistent responses* and 11 for failing to complete the one-question survey.   Of the remaining, 24% concluded that the claim was valid; 65% concluded that the claim was invalid, and 11% had no answer. The most common reason for invalidity: Obviousness followed by lacking patentable subject matter under section 101.** 

PatentlyO145

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* Four of the responses indicated that the claim was both valid and invalid.

** The survey allowed for the selection of multiple answers. About 9% of responses selected two or more answers. The most common multiple selection was that the patent was both invalid under 101 and invalid as obvious.

 

 

 

52 thoughts on “Survey Response: Is the patent invalid?

  1. The typical gut reaction can indeed be wrong for the reason you indicate. But, I’m not sure that I completely agree with you. I frankly know the state of the art as of the 1990s and early 2000s in my field a lot better than the current state. My litigation cases are heavily in the same technology field (prior art for one often works for another), so while my gut reaction is by no means definitive, it does tend to be correct fairly often. Of course for art in different fields or from different eras, my gut would be useless.

  2. The typical gut reaction that something has been done before doesn’t take into account that time has passed since the application was filed, even as much as 4 or 5 years not being uncommon before a first action, let alone allowance. In many fast-moving fields everything has been done by the time applications are allowed as patents, but that’s of no legal significance.

  3. Yes, and yes.

    In my experience, there are usually a lot of dependent claims and usually very few STF’s. This because only a few of the deps do anything to enhance patentability over their respective independent and because, for each one of the few STF’s, there are usually quite a few claims, dependent on this or that independent, that are floated on it.

    Good luck 6, and bon voyage.

  4. I’m grateful. I know the expression “Do as you would be done by”. Perhaps the Chinese, new to the patent game, have a variant, namely “Screw as you have been screwed by”.

  5. Unless I misinterpreted Ned’s statement, I think it was sarcasm. Especially seeing as an “or” would make the second option entirely optional, and if it wasn’t optional, then you’d have a 112 problem.

  6. It’s not clear

    LOL. Suckie wants me to hold its hand and walk it through.

    Ned, can I borrow your hazmat suit?

  7. It’s not clear if you are trying to make a point or if you simply have nothing to say.

    Unless of course you think that all patents are like E Coli…

  8. Ned restrict the number of times “content” items are accessed over a given period of time.

    Because nobody ever restricted access to content before.

  9. I don’t think posting bad applications is a “balance” to posting bad patents due to crrp examination, unless you think that all patents are bad.

    “Balance,” instead would be posting meritorious patents.

    “Why are we wasting time testing school lunch meat for E. coli?? I just saw a hundred people eating hamburgers at McDonald’s and they were LOVING IT!!!”

  10. BTW Max, China doesn’t let you have multiply dependent claims from multiply dependent claims either; or at least that’s what associates tell me.

  11. “EPO Examiners match each “invention” to a “special technical feature” which gives that claim (that combination of technical features) novelty over that 102 art.”

    They match each “claim” or each “invention”? I think they just do this for ind claims right? They match each “independent claim” to a STF that was supposed to give that claim novelty over that 102 art.

    “So, now you have your 102 cite and your set of claims, how many distinct STF’s does that leave you with?”

    You mean how many STF’s are in the dependents? Remember, we don’t have any STF in the inds because of the 102.

    So you think I should check in the deps for additional STF’s and then group those dep claims up accordingly?

    I don’t mind doing this thing entirely the way an EU examiner would because I’m pretty sure that’s how we’re supposed to do it.

  12. Don’t know how you would write it up, except in the EPO way. In the EPO the rules say that you must define your invention, in your claim, in terms of “technical features”.

    EPO Examiners match each “invention” to a “special technical feature” which gives that claim (that combination of technical features) novelty over that 102 art. Every claim that includes that STF belongs to that sub-set of the claims which is directed to that particular invention.

    So, now you have your 102 cite and your set of claims, how many distinct STF’s does that leave you with? That might reveal how many inventions you have got in there.

    But, I know, in the USA, this whole STF thing stinks, so these thoughts are, I suppose, of no help to you.

  13. “But invent a process for improving business using 21st century state of the art technology and over half the patent bar loses their minds.”

    I like the way you put that sir.

  14. Just to be clear so that we’re on the same page I have method and DEVICE, not method and apparatus.

    So I have step of xing on a component c wherein xing forms part a or b. And that’s pretty close to how it is claimed, it’s very poorly drafted, one step with a wherein clause tacked on. Preamble says it is a method of modifying a certain kind of device.

    Then I have a device claim. Device claim says in preamble it is one of those certain kind of device. Body says it is comprising part a or b formed by xing on a component c.

    Then we have deps that would be properly dependent save for the 102 and lacking unity of invention like you said.

    I roll in and 102 all inds, because I’m the man.

    “How’s that for starters? ”

    I agree, the only question left is how to go about writing this ho up. So as to that:

    1. I just make a 102 rejection, or lack of novelty to you guys, and then tack on a restriction?

    2. It seems to say that we’re supposed to group the claims up in a lacks unity of invention restriction, so am I supposed to group them up as Group 1 (contains all method claims) and Group 2 (contains all device claims)?

    Or do I say: 102! every claim is it’s own group! So then I’d have 6 groups if I have 6 claims total?

  15. In response to the call for hilarity, read 20040013784 in its entirety, or just go to a random paragraph.

  16. Mike, you left out the second “or”

    or

    restrict the number of times “content” items are accessed over a given period of time.

    The “or” is a different invention entirely.

  17. Sorry, I guess I didn’t read the last paragraph of 42′s post. Carry on!

  18. Here’s the thing, the formulaic approach to 102/103 that patent attorneys apply to come to a 102/103 conclusion belies the fact that most patent attorneys know a lot of sh|t about the state of the art. Patent attorneys do it all the time when they counsel clients about whether patent protection makes sense even without doing a thorough search of the art. It happened the other day, a young, inventor comes in and says, “I invented X” where X is something our own company has been doing for years. I didn’t need to go pull all my sources.

    In this case, I read the claim. I looked for what seemed to be the point of novelty. Not identifying one, I would argue this is going to be invalid under 102/103. I even bothered to cite the fact that the content protection scheme here is a much less sophisticated version of what was used by the crappy DIVX format (not to be confused by the video encoding codec) applied to a portable device.

    The scheme is essentially:
    1. Keep a list of all previously accessed content
    2. If a content is accessed, check whether it’s on the list.
    a. If it’s on the list, restrict its use.
    b. If it’s not on the list, add it and play it.

  19. I read you 6, and would like to help, but am nonplussed.

    Why do you write “ROW” if you are examining under the PCT. The USA is so important a part of the PCT that the PCT Rules had to be written specially, just to accommodate the USA and nobody else. If the USA wasn’t a PCT member there would be no need to include in the PCT Rules the prohibition on multiple-dependent claims themselves being dependent on a multiple-dependent claim. Only the USA requires that.

    Plurality: in ROW, method and apparatus claims are simply two aspects of a single inventive concept. Defining the concept in terms of technical features X,Y,Z, the method is the steps of X-ing, Y-ing and Z-ing, while the apparatus is the combination of Means for X-ing, means for Y-ing and means for Z-ing. Thus, XYZ + A, XYZ + B, XYZ + C are three claims that can properly depend from both the XYZ independent claims, all without prejudicing unity.

    But W,Y,Z is a different invention.

    And, if XYZ is old, what have you got left? XYZ+A, XYZ+B and XYZ+C require three different searches and are manifestly three different inventive concepts.

    How’s that for starters?

  20. I don’t think posting bad applications is a “balance” to posting bad patents due to crrp examination, unless you think that all patents are bad.

    “Balance,” instead would be posting meritorious patents.

  21. How can 65% say the patent is invalid when less than 1% was able to cite any prior art?!?!?!?!?

    Is this what we have come to?

    A patent for a process, especially one using computer software is assumed to be automatically less valid than a “Pet Rock” ?

    Invent a nail and no one is posting on Patently O questioning the validity of your patent.

    But invent a process for improving business using 21st century state of the art technology and over half the patent bar loses their minds.

  22. Where did 42 impose any requirement that the PGPub is prior art? Pretty sure the request used the term “random”.

  23. MAX DREI OR PAUL COLE I have need of you for a moment. I’m doing a 371 nat. stage app where I have to apply your ROW rta rded manner of restricting apps. Specifically, it has to do with the claims having “unity of invention” or lack thereof.

    Since literally everyone in my AU is too ignorant to even try to do a ROW restriction, much less know how to do one well, I have 3 questions.

    A simple app with 2 inds and some deps coming off of each.

    1. If I have a 102b (an X ref for you guys) for either or both ind (both in my case) then it is an automatic lacking of unity of invention for the whole of the claims correct?

    2. If one ind is to a method and the other ind is to a device then I group all method claims together and all device claims together for purposes of grouping correct?

    3. I can send out a 102 rejection for the inds using my 102 ref, note the lack of unity of invention that results and then slap on a restriction req and be done with the app correct?

    Note that although your EPO searchers failed miserably and proclaimed the same claims good to go I deftly found the ez and clear 102b (from one year after I was born btw) after a mere couple of hours of having the app in my hand and a mere 30 minutes or so in the NPL.

    That’s so funny, if they would have published just a year earlier I could have been rejecting with a ref from my actual birthday :)

  24. 2004/0005535 (or 2003/0152907)
    2009/0207471 (rest of disclosure is also, like, a fun read and stuff)
    2003/0101151
    2009/0105616
    2007/0170306

  25. If you really want to be sad, ask why this survey result is posted so quickly while results from several past surveys have never been published.

  26. Again, MM, please explain the 103 rejection you would have made with details of the references you would have used. Thanks

  27. bja Your hindsight analysis is impeccable. LOL

    Your implicit statement to the effect that there is no known prior art to this patent is inherently toxic to reasonable discourse.

  28. “How about we improve the quality of this survey … who says it is invalid write a …quality rejection …explaining why it is invalid under 112 or 101 (or 103).”

    Oooh, I like riddles. Here’s my answer:

    Because DC was hoping to get a number of responses greater than zero?

  29. MM, please explain the 103 rejection you would have made with details of the references you would have used.

  30. it’s impossible to come to such a decision without any known prior art.

    Because this patent’s priority date is earlier than civilization itself.

    Please, bja, just STFU already.

  31. Without knowing the prior art, the 102/103 responses are nonsense

    Because we were all born five minutes ago without any knowledge of the history of advertising, computers, or the management of information.

    MTBHTDT

  32. This survey is of the caliber found in typical media coverage of patents

    All the more sad that it appears on the premier patent blog.

    The drum beats on…

  33. This survey is of the caliber found in typical media coverage of patents. I only wish granting/rejecting patents was as easy as checking a box without having to even try justifying my decision.

    You must be very entertaining company during election season.

  34. This survey is of the caliber found in typical media coverage of patents. I only wish granting/rejecting patents was as easy as checking a box without having to even try justifying my decision.

    How about we improve the quality of this survey a bit by having someone who says it is invalid write a legitimate, office-action quality rejection (let’s not argue about what office-action quality is, it shall be defined by the person writing the post) explaining why it is invalid under 112 or 101 (or 103).

    Or as a balance to the office hatred, how about picking a random pre-grant pub. so we can all bask in the lulz afforded by claims that are incredibly broad, indefinite, non-statutory, and written with horrible grammar.

  35. Default answer: My clients patent are all valid:

    all other patents are invalid for either 101, 102 or 103 reasons.

  36. I never said that the claim couldn’t be invalid under 102/103, only that it’s impossible to come to such a decision without any known prior art.

  37. The 102/103 responses aren’t nonsense, although they are not legally significant. However, this subjective belief would drive an examiner to search extra hard to find prior art. If you believe that the claims are anticipated or obvious, then the failure to find prior art means that your search is incomplete. You would be more likely to take notice of things.

  38. Without knowing the prior art, the 102/103 responses are nonsense.

    Isn’t the question that you were really after: “Is this claim invalid under 35 USC 101?”
    1. yes
    2. no

    I think that would give you a much more interesting survey.

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