Unenforceability

By Jason Rantanen

A few months ago Polk Wagner, Lee Petherbridge, and I circulated an early draft of our empirical study on the characteristics of patents that the Federal Circuit has held to be unenforceable due to inequitable conduct.  In response to comments, including many from this site, we have substantially revised the piece (now called simply Unenforceability). We've also put together a 4 page Research Report version that summarizes the key findings.  Here's the abstract:

There has been no systematic attempt to determine whether the patent doctrine of inequitable conduct is or is not working as theorized. This study fills that gap. We find that patents held unenforceable have clear hallmarks of risky prosecution behavior, such as longer pendency and fewer disclosures of prior art as compared to other types of litigated patents. The results indicate that the doctrine is likely to be operating better than the conventional wisdom would suggest.

The shorter Research Report is available here.   For those interested in the full-length version, it can be downloaded here. As always, comments are welcome.

40 thoughts on “Unenforceability

  1. Do you have a point with this link? Any point ? Any legal point?

    Please dazzle us with the legal doctrines you know (and thus cannot lie about).

    It will make a rousing story, as long as you can avoid slurring your words.

  2. link to cnn.com

    The WITCH reads computer programs from paper tape with holes punched in it.

    How odd that nobody considered patenting any of those programs during the decade or so that this computer was operating. And yet, miraculously, new programs were written.

  3. Kappos basically telling you to take your head out of your aspirations…

    Or Kappos making a desperate attempt to protect his bubbly empire. As I’ve noted, I know for a fact that his beloved minions (even those who are higher up than he is) have little understanding of 101 eligiblity, even in simple cases such as Prometheus. Would you like to bet on B-claims going into the g-rbage can within the next five years?

    a non precedential case which no one is going to read

    Well, I read it. And some guy named Kevin involuntarily doo-doo’d himself within hours of its publication so I presume he read it, too.

  4. Lol a non precedential case which no one is going to read (yet you skip Kappos basically telling you to take your head out of your aspirations…

    That laughter you hear is not laughter with you…

  5. I don’t want to interrupt the love fest between you two spank fetishests but …

    Shockingly, both Ned and MM are absent in regards to the Kappos address

    Seriously? I was buying booze. It’s the day before T-day.

    Somehow the pronouncements of Chief Justice Kappos rarely impress me. Maybe he can give a speech on the IBM’s airplane t–let queue “algorithm” someday.

    In other news, more delicious 101 smackdown here:

    link to ropesgray.com

    On Tuesday, Nov. 20, Justices William C. Bryson, Kathleen M. O’Malley and Evan J. Wallach of the U.S. Court of Appeals for the Federal Circuit affirmed summary judgment in favor of Ropes & Gray clients PerkinElmer, Inc. and NTD Laboratories Inc., finding U.S. Patent No. 6,573,103, of Intema Ltd., entitled “Antenatal Screening For Down’s syndrome,” invalid for failing to claim patent-eligible subject matter under 35 U.S.C. § 101. …

    The patent purports broadly to cover all prenatal screening methodologies that employ data from the first and second trimesters of pregnancy to determine a risk that the fetus has Down syndrome. The Nov. 20 order concludes a decade-long dispute between PerkinElmer and Intema.

    While others in the prenatal screening took licenses to the patent, PerkinElmer, a company focused on bringing earlier prenatal screening results to patients in the first trimester of pregnancy, declined to accept the licensing demands of the inventor. In 2009, following unsuccessful negotiations, PerkinElmer turned to Ropes & Gray to seek a declaratory judgment that the patent was invalid, and Intema sued PerkinElmer for patent infringement.

    …[The Federal Circuit] found that the asserted claims, directed to methods of screening for an increased risk of Down syndrome, are directed to unpatentable mental processes and natural laws. The court further found that the steps of “measuring” screening markers and “determining” a risk of Down syndrome were insufficient to render the claims patent-eligible – a finding the court found was supported by the patent’s failure to satisfy the machine-or-transformation test.

    Another [oldstep]+[newthought] fail. And more to come. I’m loving it.

  6. There are plenty of better reasons not to have respect (starting with the fact that his arguments simply are not that compelling to begin with).

  7. You are making many assumptions about how the economy and innovation work. I don’t agree with you, but even more important, IANAE, why do you let these views of yours influence your legal opinions on this board? What you do is make policy based arguments and r@pe the law.

    That is why I have no respect for you.

  8. No harm to the economy though, right?

    No, not really. How much continual innovation do we really need in large commercial software systems?

    For that matter, how much of the profit winds up in a huge pile of cash at Microsoft’s headquarters instead of going back into the economy and doing anything for it? Of the purchase price that isn’t profit, how much goes into the pockets of foreign programmers who might spend it but not here? Or into other large, cash-hoarding corporations that make up the bulk of the software company’s overhead?

    I’m all for make-work projects, I guess, but surely there’s a more cost-efficient way of doing that. Maybe we could pay programmers to dig holes and fill them back in again?

  9. You’re right. People will just stop making money or large, commercial software systems without the patents. No harm to the economy though, right?

  10. Shockingly, both Ned and MM are absent in regards to the Kappos address.

    And that’s even with Kappos wanting more Big Brother knowledge on who owns what personal property (probably the weakest point of his entire speech). I guess the part about “who owns what assets” leading to more effective infringement decision making is just too much of a “real challenge” currently. Here’s an idea: if you know the land is not yours, DON’T build on it. If you want to purchase or lease, check with the records already available, and if those don’t pan out, then obviously the patent holder is not interested in talking with you (think of a porcupine with quills fully extended – sometimes people want their personal property all to themselves, thank you anyway Big Brother.

  11. Decimating the software industry in the US?

    How quickly we forget that heated thread from not too long ago about how software patents keep getting in the way of real product innovation. Lots of people don’t care about patents but just want to code, and whose code is incidental to whatever physical product they’re developing, but keep finding patents blocking their path.

    People aren’t going to stop coding without patents, because people don’t code for patents. They code to support their products. The only thing they’ll stop doing without patents is threatening and suing other people who came up with the same simple idea that was dictated by the required functionality of the product they’re trying to actually innovate.

  12. Someone said, after that last crony, we need someone with actual talent regardless of the policy views that person may have. Someone actually took seriously the phrase “Patents are important.”

  13. I also strongly agree [for reasons other than just IC] with the authors suggestion for prior art searches before filing. It can also help reduce such long application pendency prosecution by getting appropriate scope claims and specification support into the application to begin with.

    +1

    This has long been a best practice – and pushed hard, even with shall we say ‘frugal’ clients.

    A client may not at first appreciate your own search knocking out their invention, but when viewed as saving them prosecution costs (and a potential losing later infringement case), the loss of an application (or the strengthening of a related fencing in application) is well worth the client-education effort.

  14. Yep. Someone who sees the US economy as it is; a rarity in the Obama regime. I still wonder how a capitalist like Kappos slipped through the cracks and into this administration.

  15. The authors are to be complemented for [unlike most academics] bravely subjecting their draft paper to the slings and arrows of commentators this blog, and apparently listening to those that contained relevant comments.

    In support of one of their observations – that long prosecution correlates to more likelyhood of IC:
    Part of that may well be due to additional prior art that can surface during that long prosecution in related cases or foreign equivalent applcations, or in slightly earlier filed applications of others that published or issued in the meantime. I.e., additional surfacing prior art that became known to the applicants or their patent attorneys and should have been cited but was not. Or, subsequently developed test data inconsistent with that asserted earlier.
    I also strongly agree [for reasons other than just IC] with the authors suggestion for prior art searches before filing. It can also help reduce such long application pendency prosecution by getting appropriate scope claims and specification support into the application to begin with.

  16. Very, very scary to think what could happen with another Obama appointee on the court. Decimating the software industry in the US? Not good.

  17. Lemley makes money by coming after algorithms. Lemley is the most dangerous person ever to innovation in the U.S.

    But, of course, the greatest threat is that if Obama gets one more, then we may end up with Stevens dissent being the law of the land.

    Somehow, though, I get the feeling that the general population is starting to get computational intelligence more and more.

  18. What are the chances that we can now bury the canards of the anti-software patent crowd once and for all?

    Hint: see the post by Prof. Crouch and the fifty year old letter basically presaging the items that Kappos speaks to. Do you really think those with such agendas are going to go away?

    Really?

    In the face of reason, logic, facts, and law, there will still be no shortage of those pushing an anti-software patent agenda. Vigilance is still required.

  19. The way to read what Kappos said is this:

    Kappos thinks patents encourage innovation;

    Computer algorithms are the heart of innovation in many fields now.

    Very simple really.

  20. For me, as a European imbued with “technical character” and “all fields of technology”, I found little to disagree with. For me, the key utterance is in the 4th para, that abstract subject matter is not fit for patenting at the USPTO. Instead, to be patentable there, subject matter necessarily (“all”) involves “major technological advances”. Not sure how much comfort business method innovators can take from that.

  21. Q: “anon, is it so hard to find a pointless argument on the internet that you have to keep coming back here for them all the time?

    A: No. You make it excessively easy. It’s funny how you chime in when you think my writing is “cloudy” but get so defensive when yours is opaque.

    In other words, if you don’t want to see the comments, refrain from making pointless comments yourself. (and labeling it “rhetorical” does not stop your comments from being INANE).

    Have a great holiday!

  22. anon, is it so hard to find a pointless argument on the internet that you have to keep coming back here for them all the time?

    Put another way, what do you think the author meant by “pendency”? That four years to first action spelled trouble for the patentee somehow?

    Incidentally, these questions are all rhetorical.

  23. Long pendency is risky behavior?

    When the file history is the other side’s main weapon against you, more history means more material for them to work with. Which means more risk for you.

  24. 6,

    Why are you stealing MM’s thunder and posting a link to this story? Don’t you know that MM is supposed to thump his chest and post the link without reading the contents in his typical self-defeating style?

    Reminds me:
    If you have the law, pound the law.
    If you have the facts, pound the facts.
    If you have neither, pound the table and claim that everyone has a right to talk about “policy” (carefully obscuring the existing law and facts of course).

  25. “e clear hallmarks of risky prosecution behavior, such as longer pendency” Long pendency is risky behavior?

  26. Although you are right that algorithms could go down hard at the SCOTUS if Obama gets another one on the court.

  27. Can you tell us what an abstraction is, 6? I thought not.

    Why don’t you just be honest and make a word. Say, himalpferd, and say that algorithms are these himalpferd things and you don’t like himalpferds.

    What a joke you people are. I can write claims. But, can you do what you are supposed to do in patent law, and that is show me an invention that is read on by the claims but not enabled by the specification?

    Himalpherd lover.

  28. Even though Davi K thinks he can draw a distinction where none exists between an algorithm and an abstraction, he made a good speech which everyone should read if they’re interested in patents.

    link to uspto.gov

    Apparently, we don’t even issue patents that cover code, only algorithms (aka the genus in which code is a species?). Moreover, we will be taking extraordinary steps to cure 112 problems, problems of figuring out ownership (via making who owns which patents more transparent through better registry) all in the name of helping cure the ills caused by his inability to tell when there is no distinction between an algorithm and an abstraction. And there are still other extraordinary steps that are taken in light of the software problem it appears, but I’ll let you read all about it.

    At least the good news is that the extraordinary steps he has planned will be a benefit outside of software, and then when it inevitably goes down hard at the supremes, we’ll be left with those positive things done as a result.

    Meh, asking for all good things to come out of your gov is asking too much.

    I should also note that apparently the USPTO did its own study and found that 80% of software patents in litigation are found valid (though the report does not get down and dirty and determine that horrible lawlyering by idiots was the cause :( )

  29. “Our courts have been asked — begged — repeatedly for generations to give up on software patents, and declare some simple rule. Congress the same,” he said. “Both have chosen the wiser path, to continue struggling instead. And we are a better country, with a better patent system, as a result.”

    Quite a contrast to the most dangerous man near patents, Lemley, and his co-hort, never lived outside a courtroom but I believe I know how the real world works anyway, Posner.

    Posner is an example of the worst kind of human being. He has some success and trys to extend it and believes he knows things he does not know. He is just like a dictator.

  30. Quick quiz:

    1) Who said the following:
    “The right point of inquiry is quality,” he said. “By getting that right, we grant patents only for great algorithmic ideas worthy of protection, and not for everything else.”

    Kappos.

    Read it and weep MM.

  31. The set of unenforceable patents comes from within the set of litigated patents. It is my hunch that a big majority of patents issuing from the USPTO will never be litigated because they are needed for pooling and bulk licensing between corporate players. The set of litigated patents might not reflect the true extent of inequitable conduct. I fancy there is much more of it in fields where licensing rather than litigation is the norm.

    When it comes to number of prior art references cited to the USPTO, I discern two tribes of Applicants. Savvy ones cite hundreds of references. Naive ones cite very little. I’m really not surprised that on the litigation battlefield the mortality of patent owners who are naive exceeds that of members of the savvy Applicant set.

  32. While I admire the industry and skill that has gone into the making of this paper I am not sure that I agree with its methodology or conclusions.

    In the US the law is, and long has been, held in high regard and US citizens are generally speaking law-abiding people. For that reason, on the whole, stronger patents are respected and never get to court. It is the marginal ones, both in prosecition and litigation, that tend to go there as exemplified by Festo, Bilski and Prometheus, and especially the cases where there are reasonable arguments on both sides (if a case starts looking one-sided the parties have an incentive to settle). So there is no surprise that we are dealing with a selected population.

    Nor is it a surprise that such patents may have had lengthy prosecution. However, the correlation between inventiveness and ease of prosecution ius weaker than might be supposed – the USPTO examination can be idiosyncratic and individual examiners may take up entrenched positions even if it turns out that those positioons cannot be supported.

    It is a shame that the review did not cover substance as well as statistics. What kinds of unreasonable behaviour really trigger the doctrine and does it operate reasonably or unreasonably?

    And as regards effectiveness the conclusion is, I suggest, over-simplistic. Of course it works towards better patents, but that should not be the end of the question. Is the doctrine cost-effective – in other words is the rain of documents of marginal relevance submitted to the USPTO overall a help or a hinderance, are the submitted documents of any real help to examiners and is the cost to applicants and to the USPTO worth the trouble? Especially in these days of online keyword searching which enables much prior art to be found in a few minutes and online search facilities in major patent offices which enables the file wrappers of corresponding applications to be found at the touch of a button. When prosecuting a case in Europe I check on the corresponding US application as a matter of routine, and it would be naive to suppose that a US examiner does not do the same. The arguments for the inequitable conduct system grow weaker as these systems grow stronger.

    Much benefit would be achieved, I suggest, if the scope of the doctrine were limited to disclosure of documents known to be of special relevance and of matters e.g. instances of prior art or of the contents of posters displayed at conferences which are likely to be known only to the applicant and not to the wider public.

  33. Will read the Paper as soon as I can. Meanwhile, a quick comment:

    Europe has no visible unenforceability jurisprudence but I suspect there is one in its subconscious. What I mean is, when a client wants to know if an issued and in force EPO patent is enforceable, the first thing I do is to look at the EPO file online. If it is short and sweet, then client better watch out. If the patent has survived stringent inter partes post-issue opposition, then client had better watch out.

    Conversely though, if there was no opposition, and if the pre-issue ex parte prosecution was tortuous, I know straightaway that the patent will likely NOT withstand a serious assault on its validity, anywhere in Europe.

    Generally, in each jurisdiction I suppose it depends how much deference that jurisdiction feels minded to give to the PTO.

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