Bits and Bytes

by Dennis Crouch

  • Human-Attorney Interaction: I’ve been enjoying the forum at ASKPatents.  My favorite question so far: How to torpedo a bad patent my former large employer is filing in my name? 
  • Patent Infringement as a Civil Liberty: The ACLU has filed its petition for writ of certiorari with the U.S. Supreme Court in the Myriad gene patent case.  Many of us believe that the Supreme Court is likely to take the case. Dr. Kevin Noonan (who is pessimistic on the case) has more on Patent Docs. Dr. Noonan has also written an interesting post on In re Droge and its place in the obviousness doctrinal framework.
  • More Patent Harmonization: The Senate has passed S.3486 –  the Patent Law Treaties Implementation Act of 2012.  The House has not yet voted on its version of the Bill and is unlikely to take any action until after the November 6 elections. The Act would implement both the Hague Agreement (common design application) and the Patent Law Treaty (common filing issues for utility patents). [BNA
  • Is China Serious about Intellectual Property?: IPKat writes: “Xiao Zhenjiang, the leader of a counterfeiting gang was sentenced to life in prison and all of his belongings and property was ordered confiscated for counterfeiting almost GB £9,900,000 of luxury goods, specifically HERMÈS handbags/purses.”
  • Kodak Rounding Error: As another example of American schools failing to teach mathematics, it appears Kodak accidentally added a decimal when predicting a $2.6 billion sale of its patent portfolio.  Market estimates are now about 10% of that figure. Neil Wilkof writes more.
  • Next USPTO Director?: Managing Intellectual Property is queuing recently “retired” but indefatigable Robert Armitage as next USPTO Director.  Armitage should rightfully be seen as the driving force behind passage of the America Invents Act (AIA).  Armitage says that Kappos continues to be the right person for the job.  
  • No Standing to Defend Constitution: The USPTO has responded to Mark Stadnyk’s constitutional challenge to the AIA.  Their stance — that Stadnyk has no standing to defend the constitution because he cannot show any real or immediate injury due to the law’s implementation.  

20 thoughts on “Bits and Bytes

  1. The brief in opposition to the motion to dismiss is very interesting. It says, among other things

    “The Government contends that the statute retains an inventorship requirement in Section 101. (MTD 9, 19.) But the Supreme Court (and in fact all the authorities cited by the Government) have treated Section 101 as addressing patent-eligible subject-matter (such as excluding laws of nature from patent eligibility), not inventorship. Thus, in Bilski v. Kappos, 130 S.Ct. 3218 (2010), the Supreme Court opined that “Section 101 defines the subject matter that may be patented under the Patent Act: „Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.‟ Section 101 thus specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter.” Id. at 3225. The Committee Report to the AIA referred to Section 101 as relating to “utility, eligibility” rather than inventorship, and the Report also notes “patent-eligible subject matter under § 101.” H.R. Rep. No. 112-98, at 42, 81.
    The Government cannot cite a single case using Section 101 to enforce the inventorship requirement. It cites Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) (MTD 10), but it fails to note that the Court described Section 101 as relating not to inventorship but rather to “novelty and utility as articulated and defined in § 101 and § 102.” 383 U.S. at 12. Next, the Government cites Mayo Collab. Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012) (MTD 10), but that case addressed patentable subject matter (holding that laws of nature are not eligible for patent), not the inventorship requirement. Similarly, Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) (MTD 10), treats Section 101 as pertaining to patent-eligible subject matter, not inventorship. See id. at 1330-31.
    Further, as stated in Plaintiffs‟ Opening Motion for Preliminary Injunction (Dkt. 11, at 5 n.3) (and as the Government has never contested), Section 101 provides that patents may be obtained “subject to the conditions and requirements of this title.” Section 101 is thus made subject to the conditions and requirements of the rest of the Patent Act (both Sections 102 and 103 are entitled “Conditions for patentability”), which under the AIA is a first-to-file system. As the PTO itself has stated, “[u]nder the AIA, the first party to file an application to an invention that is otherwise patentable is entitled to the patent. 35 U.S.C. 102.” 77 Fed. Reg. 56075 (Sept. 11, 2012). In other words, Section 102 prescribes the “conditions” to which Section 101 refers. But the AIA eliminates Section 102(f) of the Patent Act, which formerly made inventorship a condition of patentability.
    This point is fatal to the Government‟s position, because it means that the AIA does not retain any inventorship requirement at all. It does not require that an applicant be a first, second, or even third inventor. The Government effectively admits that the Patent Clause contains an inventorship requirement of some sort. (MTD 20.) The AIA fails this test.
    The Government asks this Court to hold that Section 102(f) was merely “redundant” (MTD 10), so that its deletion was meaningless, but that would require this Court to ignore basic principles of statutory construction. United States v. Forey-Quintero, 626 F.3d 1323, 1327 (11th Cir. 2010).”

  2. When I think of Armitage, I think of William O. Douglas. A tremendous talent that was recognized by all. He could’ve been president of the United States. Roosevelt was that close to picking over Truman.

  3. which, as I understand it, is delayed because it is rumored they only asked big business types their opinion about whether small inventors might be harmed.

    So Goldilocks is busy then…

  4. Rephrasing of the no standing rule: You haven’t actually shown us a case yet. This is all theoretical. Wait until you have a case before filing suit. Pretty standard in cases where the impact would be hard to assess.

  5. Dedication to IP? — to the protection of the rights of property owners? — right after they publicly steamrolled a man complaining about his property being taken?

    I think it is more likely that Xiao in some way was “disrespectful” of a commie boss in some fashion. This was a message, not about IP, but about the power of the commie bosses.

  6. It wouldn’t surprise me if Xiao was a convenient example for PRC to show their “dedication” to their international intellectual property agreements. The arrest and conviction likely have less to do with the IP infringement and more to do with whomever Xiao managed to tick off in the past couple of years.

  7. Communists always fail to see the irony in their own actions. They literally steamrolled a guy after steam rolling a large part of his identity (his property rights).

  8. Regarding standing, there was considerable debate on the adverse effects of going to FTF on the small inventor, on the startup. Congress even ordered a study, which, as I understand it, is delayed because it is rumored they only asked big business types their opinion about whether small inventors might be harmed.

    Now a small inventor has challenged FTF. The government says that small inventors are not harmed.


    Is that the official conclusion of the government in it survey? If the survey shows harm, even in the slightest, I would think any small inventor or startup should have standing.

    I would think the survey should, at minimum, also discuss this suit and the harm alleged by the plaintiff. The government seems to have taken a position on this issue, and should frankly state that in its report to congress.

  9. Punishment China tends to be draconian. Just the other day the world was “entertained” by tweeted pictures of the steam roller execution of a man protesting the local party boss’s takeover of his land.

  10. He did have the support of the Communist Party of China. That’s a pretty big standing army. There’s a reason they say to always do what’s right regardless of what’s “legal”.

  11. “IPKat writes: “Xiao Zhenjiang, the leader of a counterfeiting gang was sentenced to life in prison and all of his belongings and property was ordered confiscated for counterfeiting almost GB £9,900,000 of luxury goods, specifically HERMÈS handbags/purses.”

    If you’re going to run such an outfit it behooves you to also keep a large standing army to deter the popo if you need to get away.

  12. Well, the Communist Party is clearly not happy about someone making their status symbols accessible to the general public, but we’ll have to wait and see how they feel about foreign entities’ patents.

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