PatCon 4: The Patent Troll Debate

Below is my account of the Patent Troll debate at PatCon 4.  As those who were in attendance know, it was a dynamic, insightful, and interesting discussion about a very complex issue.

Resolved: That hostility to patent trolls is not well justified theoretically or empirically and will likely result in bad law.

Pro: David Schwartz, John Duffy

Con: Michael Meurer, Mark Lemley

***

John: Hostility to patent trolls unfounded as a theoretical matter.  Patent trolls rely on two fundamental features of the patent system, and that defines their business model.

1) Alienability of patent rights: this should not be changed.  This is something that should be kept, not just because of property rights theory generally, but also because of patent rights in particular.  This is because inventors are generally not people who are good at business.   So you need to allow these people to transfer their patent rights to others.

Consider AT&T research labs: better to have everything integrated into a massive corporation or to have rights spread out among lots of people.

2) Litigation costs are high.  We should generally not be happy about this generally.  We can all agree that this is a problem.  But patent trolls are more efficient at dealing with this type of litigation.  They’re more capable of asserting of asserting these rights.  Also, keep in mind that if you have relatively narrow patent rights, you’re going to need an efficient market for those narrow rights.  This is the role that patent trolls offer.  This allows for the valuation of patents.

Mike – Three observations:

1) Relatively little troll activity at the start of the 20th century

2) Small businesses have motivated Congress and the White House to pursue a variety of reforms

3) Peter Detkin thinks that there is a lot of evidence that some folks are gaming the system.

Empirical research shows that patent trolls impose a tax on innovation.  This hazard increases with R&D investment.  Other research supports this conclusion.  Patent defense imposes a cost on companies’ Research and Development.  Patent defense has a negative effect on small firm R&D persisting for up to three years.  This harm was present even if the defendant won the lawsuit.  This is particularly concerning since there’s evidence indicating that patent trolls frequently lose their lawsuits.

This produces a chilling effect, that is strongest among small, high-tech firms.  New research by Catherine Tucker showing patent troll litigation “was associated with a loss of roughly $21.8 billion of VC investment over the course of five years.”

Dave: Theory that NPEs can be good for the system because they’re specialist.  Prof. Meuer system seems to be arguing that the whole patent system doesn’t work.  Dave can’t address all that; the debate here is just over whether the specific entity that holds the patent matters.  And he’s not convinced.

Dave might be persuaded if the suits were mainly frivolous, then there might be a big problem.  But there’s not clear evidence of this.  Going to lay out some guideposts about what he thinks are the right way to think about this issue:

1) Critical issue of what a PAE is.  This definitional problem needs to be overcome first.  Anyone that doesn’t practice the patent?  Too broad; encompasses universities, individual inventors, aggregators.

2) Need to have a baseline to compare to.  If the type of entity is the problem, then it can’t just be problems endemic to the patent system that matters.

3) Need to fundamentally we as academics approach research into patent litigation.  Can’t keep all this research private.  Data needs to be publicly available, for many reasons.  For example, the definitional issue: does this change the outcome?  Very hard to have a meaningful discussion about all this when the data is proprietary and held by corporations with skin in the game.

Mark: His position is that trolls aren’t necessarily the problem with the patent system.  But while trolls themselves are not the problem, trolls are a symptom of real problems with the patent system.  They’re a symptom of long tendency times, unclear claims, incentives to write broad functional claims.  As a result of these things, anyone can easily and cheaply stand up and make a plausible claim that I’m entitle to a portion of your company’s profits.  The result is a development of the ‘bottom feeder’ model, where at least some entities are pursuing a strategy of extorting nuisance value settlements.  Trolls can make use of high discovery costs and asymmetries.

Is hostility to trolls making bad law?  Let’s look at developments:

1) eBay: you get an injunction when you’re entitled to one.

2) We got more sophisticated with our damages arguments

3) Eliminated the willfulness infringement letter game

4) Reduced the cost of addressing patent validity by inter partes review

5) Started to eliminate forum shopping

What is Congress/Courts doing?

1) Give district courts discretion to punish frivolous suit

2) Forcing patent holders to be more clear in their claims in Biosig v. Nautilus

3) Considering reducing the cost of discovery by addressing e-Discovery

4) Considering making patent holders sue the manufacturer, rather than the downstream users or mom and pop merely as a way of increasing the royalty base.

Mike: Rebuttal to Dave and John –  There are many instances of small entities – such as biotech or pharma startups – that were able to enforce their patents without the need of intermediaries.  Doesn’t see a major role for tech transfer via intermediaries in the pharma and biotech areas because there is a lot of tacit information. So very skeptical were going to facilitate much transfer of technology by facilitating PAE practices.

John:
Rebuttal to Mike’s invocation of the precautionary principle: we should welcome innovation.  The rise of patent trolls is a rise of innovation in law.  We should not be afraid of this; we should embrace it.  Also, in every other field where there are property rights, there is a robust secondary market.  Consider used car markets.  It’s an oddity that we don’t have one in patent law.

Rebuttal to Mark’s point on taking advantage of asymmetries.  But this is something that defendants do as well – defendants are perfectly willing to take advantage of independent inventors.

Rebuttal to Mike’s event studies data. [Had to talk real fast because he was running out of time so I didn’t get it, but the button line was that Mike’s studies have flaws[

Mark: John says we have to welcome innovation.  But the kind of innovation that John wants to encourage are different from the innovation that Mark wants to encourage.  The type of innovation that John wants to encourage is innovation in extracting value from the patent system; innovation in the legal models.  And this imposes a tax on the innovation in the technical areas.  John says that this is a property system, and any property system has a robust secondary market.  But this is actually an instance that shows why patent rights are not property.  Patent trolls are taking rights that are lying fallow and bringing them into the marketplace.  But is this possibility really providing the primary incentive for folks to engage in technological innovation.

Also, let’s think about the change.  We’ve moved from a world where 2% of all patents are being enforce to perhaps a world where we’re in 50-60-70% of all patents are being enforced.  That doesn’t seem like technological transfer but something else.

Dave: Going to focus just on the bottom feeder point.  He’s against suits that are frivolous.  But this is where the data is weakest.  And this is the linchpin of the argument.  Mark suggests that there are a lot of these “bottom feeder” cases.   But the main study here (Lemley, Allison & Walker, http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1677785) isn’t really enough.

That study looks at the most litigated patents of all time.  And it finds that 90% of the patents that go to final judgment by NPEs do not win.  But the problem with this study is that is relatively limited, so it may just be outliers. Also, this study appears to involve independent inventor patents, which should be kept in mind.  Third, we’re equating unsuccessful with frivolous suits.  But that may not be the case.  Finally, there’s the problem of selection effects.  Only about 10% of cases reach final judgment.  There are many reasons to think that the 90% are not like the 10%.  Consider two possibilities:

1) The possibility of an injunction affects settlement negotiations.  Since post-eBay, it’s extremely likely that a non-practicing entity will be able to get an injunction (unlike practicing entities)

2) Practicing entities have other things that they can offer in settlement other than just money – such as business relations, etc.

David McGowan – moderator:

For Mark & Mike: Isn’t John right to say that whatever else you do, you don’t want patent law to have effects on efficient firm size?

For John & Dave: Hypothetically, let’s suppose that the choice that a sophisticated NPE is a patent portfolio, where the transaction isn’t really about whether a patent is infringed, but the aggregate possibility that there’s something in the portfolio that is infringed.

Mark: The right way to think about nondiscrimination is to think about whether we treat like situated people differently.  In other words, should we single you out for no other reason than you’re a NPE? No.  But that leaves a lot of room to apply rules in other ways that depend on particular characteristics or attributes of the entity.

John: Since they sort of largely agreed with me, I’m going to declare victory on a theoretical level.  No one is defending that we should treat inventors in these transactions differently depending on whether they are integrated into a large firm or not.

Dave: On the portfolio point.  Serially asserting patents against companies.  This is not unique to PAEs.  This is a general problem having to do with aggregation. In Mark’s Forest for the Trolls argument, he can see some benefits from aggregation in solving the royalty stacking problem.  There’s still potential for mischief with these portfolio structures, although there may be solutions.

John: Tremendous incentive for parties to come to an agreement on these portfolios unless all the patents are junk. And if all the patents are junk, then we have a bigger problem with the patent system.  Both plaintiffs and defendants lose value when suits are filed; so both parties have a strong incentive to settle. I’m going to continue to file suit against you and lose.  That’s not a very strong negotiating strategy.

Mike: One thing you should have told them, John, is that when a pharma company loses value when it files a lawsuit is because the shareholders realize that the patents are not as incontestable as they thought.

Basic economics of assertion by PAEs is, if we listen to John and Dave, is that they’re more efficient in enforcing patents.  The effect of this is to shift the borderline patents that are being assert to lower quality patents.  The result is that we’re going to have a marginal shift to lower quality patents.

In addition, the problem with the PAEs is that they aggravate the harms from notice failure.  Greater bargaining power of PAEs makes innovation tax bigger.  The size of problems with the patent system is exacerbated by PAEs.

David McGowan – moderator:

For John/Dave: Why did we see a spike in NPE suits from 2001-2009?

John: Innovation in patent monetization taking place.  This is good.  When people game the system, they show us new things to do.  Some we might want to adjust in response to.  But throw the entire innovation out?  No.

David: Also, a growing view that patents can be a valuable asset, combined with a larger number of firms that were willing to take patent cases on contingency fees.  But the real question is whether these are frivolous cases or cases that really are meritorious

For Mike/Mark: How are we going to get information that we can be confident in?

Mark: Going back to the study that Dave talked about.  Fair to say that for various structural reasons it’s hard to know much about the confidential settlements.  So what can we know?

We can look at cases that go to summary judgment and trial.  Invokes weak version of Priest-Klein here to respond to the selection effect point. Also, these are a substantial chunk of the cases in the system as a whole.  So when we tell you that 90% of those cases are losers for PAEs, that tells us something.  Also, consider Colleen Chien survey on payouts, which indicates that most of these case are settling for the cost of litigation. Ultimately, though, we really need to have more transparent settlement data, not just for studying it, but also for creating a thick secondary patent market.

Finally, if the way that things work is that the more innovative a firm is, the more it gets sued: there’s a real problem with our patent system and a fundamental disconnect be the way that incentives are aligned.

Oskar:  Consider this problem: let’s imagine two inventors who come up with a process patent that they’re never going to patent.  So what we hope they’re going to do is ex ante licensing.  You go around to the industry and try to get everyone to adopt it.  Another road that could be adopted is to get the patent and put it in a drawer and wait until someone else comes up with the process and then go out an sue them (i.e.: engage in ex post licensing.)

In between this distinction, we can say that the inventor who actually pushes the invention out is socially better than the inventor who engages in ex post licensing.

John: Patents don’t get put in drawers these days.  They get put on the internet.  So not really as big a concern about ex post licensing.  Also, see my recent article on the Paper Patent Doctrine in Cornell Law Review.

Mark: Oskar makes a really important point.  We want technology transfer.  Used to be a time when we got tech transfer through the patent system because diffusion was slow and patents made it faster.  But diffusion of tech as sped up and the patent system has slowed down.  The key here is a distinction between patent rights transfer and technology transfer.  But in a world in which most patent lawsuits are filed against independent inventors not against copiers.

For another take, see Prof. Tom Cotter’s summary of the debate: http://comparativepatentremedies.blogspot.com/2014/04/patcon-4-patent-troll-debate.html

 

168 thoughts on “PatCon 4: The Patent Troll Debate

  1. Nice dissembling Malcolm – pointing out your hypocrisy is hardly “keeping everybody in line.”

    It is just a nice reminder though of your zero credibility position.

  2. >But diffusion of tech as sped up and the patent system has slowed down. The >key here is a distinction between patent rights transfer and technology transfer. >But in a world in which most patent lawsuits are filed against independent >inventors not against copiers.
    Saith the Mark.

    You must be kidding me. You want to burn our system down based on nonsense talk like this from a person that is making his money through lawsuits? What a load of $#%!

    1. As I pointed out, this comment is especially pernicious given that not only is Mr. Lemley a practitioner and knows the law from that angle, but he is also a teach and should recognize that his views so expressed will be taken as law to be taken as is (without a proper disclaimer that he is attempting to change the current law).

      He is foisting a desired new state of law based on his personal philosophy and view of policy on the balance of technology transfer and patent coverage under the guise of what exists today.

      Today there is no independent inventor defense to patent infringement.

      Today the exclusive right means exactly that – the exclusive right.

      Lemley has a double duty to ethically acknowledge this controlling state of law.

      1. “Lemley has a double duty to ethically acknowledge this controlling state of law.”

        Anon desires control over what lemley sayeth.

        1. Sorry 6, but you misunderstand what I post yet again with your obsession over what others do or do not control.

          Like it or not, ethics is a very real concern in law – and not one that I put in place.

          You may want to ask your doctor why you feel this overwhelming obsession to post nonsense on blogs.

      2. Did Lemley acknowledge that the sky is blue?

        He’s a teacher, after all.

        Clearly by failing to do so he’s hoping to foist on everyone a new reality according to his own philosophy and design whereby the sky is plaid.

        Why isn’t Jason calling the Ethics Police? Did he forget the number? Pretty sure Hricik has the number on his phone, although accessing that number on a bridge and forwarding it Jason may infringe a couple patents. Perhaps Hricik was on a bridge and that’s the reason for the delay. Or maybe he meant rational basis as in strict scrutiny. Infringement is still a strict liability offense.

        /typical self-righteous holier-than-thou incomprehensible nutjob rant off

        1. Nice dissembling with a clearly off-point “blue-sky” reference Malcolm.

          The problem is that you are off-point, and clearly fail to see how Lemley’s lack is directly on point to what he is advocating.

  3. Answering a question is not the same as explaining what I say.

    More sooper dooper deep stuff from everyone’s favorite path0l0gical liar. Taste the dust.

    1. LOL – the only dust here is what you are kicking up in your so-easy-to-spot dissembling. It may not be “sooper dooper deep stuff,” but then again, this particular deception you attempted to foist was plainly pathetically easy to see – just as the non-answer of your dodge is plainly pathetic.

      Repeat your lies often enough and someone just may believe you Malcolm.

      Your AOOTWMD with your attempt to paint me as a ‘pathological liar’ is a pathetic attempt to hide your own status as such.

      You really do not fool anyone with your banal repetitions of those shallow items from your tired and oh so limited script.

      1. your attempt to paint me as a ‘pathological liar’

        You are a path0l0gical liar. No paint is needed.

        Shall we run through the evidence again?

        Where shall we start?

        1. Let’s start with “do you know what the controlling law is regarding the exceptions to the judicial doctrine of written matter?”

          Then we can head over to “how does an ‘oldbox’ – without change – have a new capability that it did not have before a change introduced with an addition of a manufacture, a machine component known as software?”

          Ready?

          Go.

          1. Let’s start with “do you know what the controlling law is regarding the exceptions to the judicial doctrine of written matter?”

            Yes. It’s a bunch of self-serving gobbledygook waiting to be destroyed. Come and sue me with your junk patent that depends on this “exception”. Make my day.

            Then we can head over to “how does an ‘oldbox’ – without change – have a new capability that it did not have before a change introduced with an addition of a manufacture, a machine component known as software?”

            Is the box changed or not? First you say it’s not changed, and then you say it is. Who is the m0r0n who wrote that question? Seems like it was probably written by some non-native English speaker hoping that the question would answer itself.

            Also: software is a “machine component”? That sounds like some self-serving b.s. that some lying t00l made up to please himself or some group of like-minded constituents.

            Here’s Wikipedia: Computer software, or simply software, also known as computer programs, is the non-tangible component of computers. Computer software contrasts with computer hardware, which is the physical component of computers. ….[S]oftware consists of clearly-defined instructions that upon execution, instructs hardware to perform the tasks for which it is designed

            So you were saying, liar?

            1. waiting to be destroyed

              So you do admit (again) that such is the law…?

              Why then did you prevaricate and dissemble so much and so often when I posted that you volunteered this admission?

              You are a classic liar – heaping on lie after lie in order to attempt to cover your lies.

              You.
              Fool.
              No.
              One.

  4. I will add too that there are clear indications that some of these people are unethical and present arguments with a political agenda and are not academics. In fact, why would we assume that any of these people are anything but shills for corporations? Why should someone like Lemley that is making big money off of patents be assumed to be anything but a shill? Why? The old model of being an academic that takes their salaries from universities and scholarly work is gone. A professor should be assumed to be working for someone for a pay day—and not be an academic.

      1. And, how do these smart little boys account for Motorola. Without patents all their innovation would have been worthless. Instead because of patent the company survived the employees were rewarded for innovating.

        Man. This. Is. Ridiculous. You cannot win when people say black is white and white is black and there are no rules.

        1. The wasteland that serves as the font of ethics

          Your psychiatrist called. He wrote the wrong prescription, apparently. Don’t take any more of the green ones.

          1. MM you really are a heinous person on this blog. You smear everything with your nonsense. I’ve asked you many times not to respond to my posts because you do not address substantive issues but push your propaganda.

            1. I’ve asked you many times not to respond to my posts because you do not address substantive issues

              Substantive issues like …. whether Lemley is the devil incarnate? That sort of substantive issue?

              Or are you including less substantive issues, as well?

            2. Let’s settle for the substantive issues of law and fact centered around the patent eligibility of the manufacture of the machine component known as software and the patent eligibility of improvements to machines when an ‘oldbox’ is changed with the addition of the manufacture of the machine component known as software.

              Real law.
              Real fact.

              Real simple things that go to the heart of the software patent eligibility issue.

              And real things that make Malcolm run away real fast.

    1. Just think now. I represent some start-ups. If they are copied, (I have written patents that have granted for them) I have to say to them that gee sorry guys, if you want to get this stopped you better figure on a $1 million dollars more at the PTO in PGR or IPR. We have to go back to the PTO for the big bucks now to stop these people that are taking a few hundred grand from your bottom line.

      What say you? And, as Duffy is saying has some truth. The small guy needs a way to sell the patent or they will never have the resources to monetize their work.

      1. “I have to say to them that gee sorry guys, if you want to get this stopped you better figure on a $1 million dollars more at the PTO in PGR or IPR. We have to go back to the PTO for the big bucks now to stop these people that are taking a few hundred grand from your bottom line.”

        If it costs you a million dollars to do a PGR or IPR ur doing it wrong.

        1. 6, must you follow me around with your inane comments. Yes, for a single patent is can be done for less than that. But it isn’t going to be a single patent. Do you just follow me around and snipe with dopey comments to blow smoke? I think so.

      2. The small guy needs a way to sell the patent or they will never have the resources to monetize their work.

        Bullshirt.

        Unless of course you’re talking about some functionally claimed computer-implemented junk that should never have been granted in the first place. In that case, who gives a crap?

        But of course there aren’t any such patents, are there? I mean, there’s no evidence of such patents. Right?

            1. Funny you one application you allowed. What percentage do you allow that do have functional claims? And, one examiner is not very meaningful. We know that one examiner with signing authority can wreck havoc with patent applications. And, a better question is what is wrong with functional claiming?

            2. “We know that one examiner with signing authority can wreck havoc with patent applications. ”

              Oh blah blah blah, a good chunk of my apps sail right through with a first action allowance. An even bigger chunk sail right on through with nothing but a typo or minor 112 here or there.

          1. Check out this ridiculous pile of complete garbage:

            8,688,143

            1. A method of providing a location based service to create a social network, comprising:

            creating a profile of a user;

            creating an interest group feature based on at least one interest from the profile using a wireless terminal;

            activating the interest group feature from the wireless terminal;

            registering from the wireless terminal with a location based service associated with the interest group feature;

            receiving one or more responses from candidates, where each of the candidates accesses the interest group feature based on a corresponding candidate profile and geographic location of each candidate;

            and receiving one or more advertisements from a commercial entity associated with the interest group feature, wherein the interest group feature corresponds to an event at which the user and at least one candidate arrange to meet, the corresponding candidate profile of the at least one candidate indicating an interest in a nature of the event and the geographic location of the candidate being in proximity to an event location of the event.

            “Creating”, “activating”, “registering”, “receiving”, plus a whole lot of hand-wavey garbage. “Interest-group feature”? That’s a limitation? What a frickin joke.

            This is what the bottom-feeders call “technology”, folks. These people know they’re completely full of sh*t. They also know that the patent system is broken and so now is a great time to grab some “property” and start sueing people.

            1. Why Ned?

              If Malcolm has such a problem with a patent that he disdains so, he is free not to use what that patent covers. Why the massive QQ from him? It comes down to utility Ned. Malcolm has been invited not to partake in the fruits of the innovation that he would deny protection to. He has refused. What does that tell you?

            2. long ago ceased to be protectable by patents.

              Cite please.

              Can you respond with anything outside of your pathetic ad hominem stale script?

              Repeatedly I invite you to respond with law and facts. You do not accept because you cannot accept. You have no law to pound the table of law. You have no facts to pound the table of facts. All you do is pound your table of “policy” and “opinion” and your shallow vileness is readily transparent.

              Again, I invite you to find a profession in which you can believe in the work product you produce.

    2. As I have suggested on other occasions, patent academics who also practice really should be held to a higher ethical standard than either academics who do not practice or practitioners that are not academics.

      Even the appearance of impropriety should be avoided – rather than the reckless embrace that Lemley flaunts. He really should know the law better, and yet omits critical elements of the law in his advocacy to change that law and benefit his own personal interests (yes Malcolm, his personal interests are tied to Big Data, have you checked out who is on the board of Lex Machina – “Mark is the founder and a board member of Lex Machina, Inc link to law.stanford.edu ).

      That he can ‘hide in plain sight’ and continue to pontificate in a manner that so clearly screams conflict of interest is rather incredible.

      1. It is just incredible. Take for example Lemley’s (Mark’s) paper on functional claiming. That was a travesty of an academic paper. It provided no real analysis of actual embodiments that were covered and those that were not. It provided no solution to his fabricated problem. It was clearly a paper intended to proivde quotes for judges to burn our system down.

        Shameful. And incredible that anyone could read that paper and not walk away feeling soiled and not recognize that it was not an academic paper but a rhetorical paper with zero ethical standards.

        1. Night, I don’t know about Lemley’s paper, but the Supreme Court decisions are aplenty on why functional claiming is verboten.

            1. LOL – Ned, you start with Morse and explain how you want to have an ‘oldbox’ that – without change – somehow contains all future innovations.

              Still waiting for you to stop running.

            2. anon, claims to programmed computers are really process claims. The computer itself is generic.

              I would go so far as to say that any apparatus claim claimed as a series of steps is really a process claim and should be so construed.

            3. The computer itself is generic

              Now integrate reality Ned. The machine itself is changed. This is the essence of the Grand Hall experiment. This is the essence of Nazomi.

              Do you still wonder why you cannot seem to understand that case? It is because you refuse to see reality.

              This is strictly a “you” problem.

    3. there are clear indications that some of these people are unethical

      What are these “clear indications”?

      I note that Jason doesn’t appear to share your belief. At least, he indicated no such belief in his write-up.

      Is Jason also “clearly unethical” because he enables these people?

      Let everyone know.

    4. By your own admission you have worked for a large technology company of over 100,000 employees, therefore you’ve made big money off patents and your arguments should be ignored.

      Kind of a silly argument to make, don’t you think?

      1. therefore you’ve made big money off patents and your arguments should be ignored.

        ?? Not sure how you got to that being his argument. He is addressing the leeway being given to Lemley due to Lemley’s status as an academic.

        You have parsed the statement too finely.

  5. Another big take away: these people do not have actual experience. Only a third world country would pay any attention to a group of people like this with ridiculous studies that even ignore certainly the most objective study on these issues by the Federal Government’s budget office.

    Let’s see real world experience that I have that these people don’t:

    1) worked in at a large technology corporation (>100,000 employees). Evaluated tech for buy or build analysis.

    2) worked with start-ups to develop IP and get them millions of dollars of funding.

    Etc.

    These bozos have no relevant experience in how patents actually provide incentives to innovation. Anything they say should be taken with a grain of salt.

    Plus, each of them should disclose their financial interests in these matters.

  6. Still trying to process this self-serving patent-fluffin’ nonsense from Duffy:

    Innovation in patent monetization taking place. This is good. When people game the system, they show us new things to do.

    Gee, using Duffy Logic I suppose “we” should do more to encourage patents directed to new methods of gaming of the patent system. And tax avoidance schemes. And methods of preventing or discouraging people from voting. New things to do! So awesome.

    Seriously, though, the disconnect here should be obvious to everyone: “innovation” in methods of doing business occurs without patents. If we want innovation in business models, all “we” really need to do is encourage businesses to compete with each other for “our” money by becoming better businesses.

    And that’s not to say that patents can’t play a role in promoting business. But “we” (meaning the vast majority of people not invested in the status quo) aren’t interested in promoting the business of patent litigation and patent monetization. “We” are interested in promoting progress in the useful arts: science and technology.

    It’s pretty clear that the interests of Duffy and his cohorts lie elsewhere.

    1. occurs without patents

      Once again Malcolm, the patent system has never been solely a “but for” system.

      Pay attention.

  7. Duffy: The rise of patent trolls is a rise of innovation in law. We should not be afraid of this; we should embrace it.

    Who’s “we”?

    1. All of us.

      This is related to the Quid Pro Quo and the fact that more patents is in fact better for this country.

      More patents means more shared Quo.

      You really need to get into a line of work in which you can believe in the work product you produce.

      1. more patents is in fact better for this country.

        That’s a “fact”? LOL.

        Okay, Patent Jeebus! So maybe we should get rid of the obviousness hurdle, huh? And enablement. Those rules just make it harder to get patents out there. Let’s just allow people to claim whatever processes and machines come into their minds, based on the desired results/functions. Whaddya think?

        Any other sooper dooper ideas to rapidly increase the number of patents so our country can become “better” as quickly as possible?

        You really need to get into a line of work in which you can believe in

        You really need to get your meds adjusted.

        1. So maybe we should get rid of the obviousness hurdle, huh? And enablement

          Fun playing with your vapid strawmen, Malcolm?

          You are really the t00l, aren’t you?

          (yest that question is rhetorical)

          1. Don’t need to qualify it Malcolm.

            Patents are patents under the law and my position has always been clear that I am after valid patents, as I have on numerous occasions shared that a Approve-Approve-Approve rubber stamp is no better than a Reject-Reject -Reject rubber stamp.

            You might try listening instead of jumping to your anti-patent CRPfest mode.

          2. LOL – and you might try posting in an intellectually honest manner without the stale and trite ad hominem and limited script.

            When was the last time you posted without the CRP and said something even remotely meaningful?

            Do you even remember?

          3. I have on numerous occasions shared that a Approve-Approve-Approve rubber stamp is no better than a Reject-Reject -Reject rubber stamp.

            Ah, so you do wish to qualify your statement but you wish to do it in a way that doesn’t require to admit that you were mindlessly shooting your mouth off. So while you said “more patents are better for America” you didn’t really mean that. You meant “valid patents are better for America” not “more patents.” Right? It’s about quality, not quantity … right? For example, if we simply got rid of most of the junk patents that shouldn’t have been granted, there would be less patents but America (or its patent system, anyway) would be better off. Right?

            Patents are patents under the law

            Really deep stuff, there! Also completely non-responsive since, as we both know, the law changes all the time in response to all kinds of different factors. You complain about patent laws and rules (existing or proposed) all the time because you find them too stringent. People who favor more stringent laws are deemed “anti-patent” and, by extension, “anti-American” and (the weirdest part of all) pro-communist. Are you going to deny this?

            I proposed changing the laws so that more patent laws would be granted. They would still be patents, though, because (as you so brilliantly observed) “patents are patents under the law.” Why would America not, in fact, be “better” with “more patents” of the sort I described? The novelty requirement is still there. What’s the problem, exactly?

          4. I proposed changing the laws

            LOL- See Malcolm, there you go – sloppy, eve so sloppy.

            You now volunteer an admission that your usual tripe is not in accord with the law – you need to change the law to arrive at your desired end state. Me – I advocate the law as it is. Do you know what that is?

            Svcks to be you.

            Really really badly svcks to be you.

          5. zero substance, zero credibility,…

            Patent Jeebus has spoken! Only he has the Magic Substance and Superior Crudability!

            More patents is better for America! Patent Jeebus said so. And he doesn’t need to qualify that statement because everybody knows exactly what Patent Jeebus means — because Patent Jeebus said so.

            Bow down, everyone.

          6. I advocate the law as it is. Do you know what that is?

            I know you’re a narcissistic s0ci0path. But everybody knows that.

            Go ahead and tell everyone exactly what it means to “advocate the law as it is”. Write a full paragraph in English and see if you can do so without dribbling all over your bib.

          7. LOL – it is not a matter of any fantastic religious import to realize that when you refuse to post with intellectual honesty that your credibility suffers.

            Anyone with a conscience can figure that out.

          8. when you refuse to post with intellectual honesty that your credibility suffers

            Thank goodness I don’t refuse to post with intellectual honesty, then.

            Maybe you should focus on criticizing Dennis Crouch You’ve had great success with repeatedly accusing him of being dishonest over the many years. You pretty much changed the entire course of patent law with your awesome honest powers.

          9. Thank goodness I don’t refuse to post with intellectual honesty, then.

            An outright and blatant lie.

            Tell me Malcolm, since you think that you have found your fountain of truth an honesty, what is the controlling law as to the exceptions to the judicial doctrine of printed matter? How does an ‘oldbox’ – without change – come to have capabilities that it did not have before change? Two very simple questions that go to the heart of the software patent eligibility issue that you have run away from repeatedly. Or are you going to start your dissembling ways again? Was that statement of intellectual honesty as ephemeral as the rest of your ethics?

          10. Some petty dissembling with your comment regarding Prof. Crouch, but too bad for you, bias is not the same as dishonesty.

            You should know better as you are both biased and dishonest.

            1. Except he did no such thing Lionel.

              What part of “absurdity of my statement” do you connect with “focus on criticizing Dennis Crouch You’ve had great success with repeatedly accusing him of being dishonest over the many years

              Your own statement is absurd here.

            2. Anon,

              I was responding to 11.1.1.1.

              Your words:

              “….the fact that more patents is in fact better for this country.

              More patents means more shared Quo.”

            3. Lionel,

              There is nothing absurd about the statement you reference in 11.1.1.1.

              Nothing.

              If you understood what is meant by Quid Pro Quo, you would understand what my statement means.

              Tell me then, what do you understand by the statement Quid Pro Quo?

      2. More patents means more shared Quo.

        Right. Did Prometheus share their “quo”? It’s not really “sharing” if other people have to pay for it. Nice try, though.

        Here’s another thought: more government-funded research also means more shared “quo”, in addition to a lot of other benefits that aren’t afforded by “more patents.”

        So we should all support a massive expansion of government-funded research, right?

        1. It’s not really “sharing” if other people have to pay for it. Nice try, though.

          You really don’t get how this all works at all, do you Malcolm?

  8. Here is another manner by which to analyze the so-called patent troll issue-equal protection. One must understand that the vast majority of so-called patent trolls are United States citizens. Many of the companies that are subject to patent liability are not United States companies per se. This legislation is nothing more than American bashing by the globalists. The Federal Government has destroyed the United States economy to the extent that one of the main revenue streams of this country is foreign investment. Thus, to make investing in the United States more economically viable the globalists in Washington DC want to deny United States citizens of advancing their statutory patent rights using their Constitutional Rights under the Seventh Amendment of the United States Constitution. On the flip side, if the Federal Government gave a hoot and holler about United States businesses, they would rein-in the Americans with Disabilities Act. More United States business are hurt by this legislation than by any other piece of Federal legislation, excepting tax legislation. So I don’t buy for one minute that specious claim that the Federal Government is trying to protect United States businesses by stemming patent troll litigation. Rather, they are trying to protect foreign investment.

    Examining the concept of patent law, the entire concept of allowing non-United States citizens to hold patent rights in the United States is one of the most serious erosions of national sovereignty in modern times. Just think about it for a minute-a non-United States entity can completely shut down the practice of technology within the United States if it so desires- no United States citizen could practice this technology. I understand that this is the reality in which we live. However, it does make salient that the Federal Government’s primary objective is not to protect businesses, but to further erode the privileges and immunities of national citizenship that individuals in this country have historically and traditionally enjoyed.

    1. Quid Pro Quo Kenneth.

      That’s the deal – it matters not who the owner is – the swap is considered even and balanced. Xenophobia is not a great argument.

      You econ argument is much better. And the Large Corp’s gunning against the patent system are not necessarily foreign Large Corps. Any large multinational – even those who call the US their home base – are beholding to NO one nation, and most assuredly not this one. They will not hesitate to move assets to the lowest cost factor place in the world. I think that I read this past week that Caterpillar is in a snafu because they switched their IP assets to a holding corp based in some ultra-low tax non-US country.

      1. It is Equal Protection not xenophobia. WHY should US citizens bear the brunt of this legislation. The legislation is anti-american in effect if not in purpose.

        1. Ah – I see that we are talking about two different things – my xenophobic comment was directed to granting patents (whomever the inventor/patent owner) and you appear to be talking about something else.

    2. Ken,

      I think this is basically. The international corporation doesn’t want patents in general. There are a few that do, but the most do not. And, this is just another case of the big corp getting their way in law. They have gotten their way in every other area of law and now they want to burn the patent system down.

    3. Another very large issue Ken is employment contracts. When patents are gone (which appears to be a foregone conclusion at this point), the technology employee will be forced to sign an employment agreement that forbids them from disclosing anything they do (patent stopped this in the early 1980’s). And, companies will stop sharing. We will have whole tech companies building private systems so that they can be secret.

      If you thought 2008 was bad, you haven’t seen anything yet. Your status as a technologist is about to become b*tch.

    4. Wow. I bet you were one of the people who thought provisional patent applications were necessary to make up for the unfair advantage foreigners had!

      Reign in the ADA, are you f’ing kidding? The ADA is a problem?

      1. Lionel, do you see a problem with the provisional patent application set up?

        (granted I do agree that the ADA rant is excessive)

        1. I have no issue with provisional patents per se, but one of the primary arguments (from people who clearly have a very myopic world view) I used to see was that they were necessary because Japanese and German applicants had an extra year priority date.

          1. I too have seen those arguments.

            There was nothing wrong or incorrect with the reasoning of those arguments. I would limit this to a view that such were not the only reasons or arguments to be made, but in and of themselves, there was no error.

  9. What I read from this is that Mark has very little to back up his desire to burn the system down.

    1. Lemley has (purposeful) misconceptions and Meurer has known-bogus numbers and they both have a philosophical anti-patent bent.

  10. “..in a world in which most patent lawsuits are filed against independent inventors not against copiers.”
    This one stunned me at first, until I remembered from prior academic discussions what I think was really meant by this. Namely, that most patent suits defendants making or selling multiple-function electronic or software enabled products [now frequent patent suit subjects] were not aware before suit that some feature of their product could be accused of infringement by a claim of a prior patent they were not aware of among the many millions of live claims. But, even if patent law was changed to require actual notice to get back damages, would that really impact the troll issue that much?

    1. filed against independent inventors

      this highlights another fundamental error of law that should be known by the person making the statement.

      There is no such thing as an independent invention defense to patent infringement. Patent infringement is akin to a strict liability offense. The right to exclude is the right to exclude everybody – copiers and non-copiers are in the same exact bucket.

      What the implied goal of the statement is is to try to change the law by making it appear that the law is already changed and that injustice is happening because “non-copiers” somehow should not be ‘excluded.’

      This is just Infringers’ Right Claptrap.

      1. anon,

        Absolutely right. However, it would be useful to know the percentage of infringers who did independently invent. From a policy perspective if this percentage is high (e.g., in a particular field), might this not suggest that the “quid” is not worth the “quo”? No idea what the result would be.

        1. it would be useful to know the percentage of infringers who did independently invent. From a policy perspective if this percentage is high (e.g., in a particular field), might this not suggest that the “quid” is not worth the “quo”

          No. If anyone else wants the quo, they know where the patent office is.

          On your mark, get set, go.

      2. The speaker did not commit an error of law. Nothing that was quoted contradicted what you said, but simply articulated the same reality you expanded upon.

        1. Lionel, your statement here is bizarre and cannot be objectively and reasonably held to be true.

          Perhaps you are trying to say something else. Perhaps you think that “independent invention” is really a current patent infringement defense.

          Whatever it is, you need more as your post of 8.1.2 without more is simply untenable nonsense.

          1. The speaker was not in any way arguing

            (1) patents cannot be asserted against independent inventors
            (2) patents have not historically been asserted against independent inventors, or
            (3) patents should not be asserted against independent inventors.

            If that is how you interpreted it, you need to read more carefully. Now, having said that, my statement is based solely upon the quoted language. If other language not quoted implies or states then so be it.

    2. Paul, the problem is caused by indefinite and functional claims. Independent inventors would not normally trespass on a patent of another. But, due to functional claiming, the independent inventions of others are literally covered, but where no one reading the patent spec would have any idea that they were employing the invention disclosed or its equivalent.

      The Supreme Court has OFTEN condemned functional claiming precisely because such claims literally cover the INDEPENDENT invention of other in that the later inventor did nothing more that accomplish the same result but with substantially different means. The troll debate illustrates the havoc that has been cause by such cases as Donaldson and Swinehart that have handcuffed the PTO.

      1. The troll debate illustrates the havoc that has been cause

        Pure B$ Ned – stop swigging the swill. The “Troll” boogeyman is an artifact created by Big Data and Big Soft for no one’s benefit but themselves.

        You do know that the typical “Troll” of lore does not prosecute its own patents, right? They are supposedly pure scavengers that buy second hand. Thus, any type of bootstrapping you want to try to do as to how claims are written is a FAIL.

        1. anon,

          As a matter of constitutional law, I think it is self evident that if patents read on the independent inventions of others without being a equivalent of the disclosed means or methods, the patents are not protecting the inventions of the inventor but are rather retarding the progress of the useful arts.

          1. …and yet you remain silent on that same thought applied to an ‘oldbox’… an ‘oldbox’ that cannot have new capabilities unless that ‘oldbox’ is changed?

            How do you handle that disparity?

          2. Are you still struggling with Nazomi? Have you considered why – with your long and storied history – you continue to struggle?

            Perhaps it’s time you think that some of your assumptions are simply wrong…

          3. What are the chances that I will have a thoughtful, on-point, and honest answer from Ned to my counterpoints here? What are the chances that Ned will engage a conversation? Or will this be yet another case of run away?

  11. “In addition, the problem with the PAEs is that they aggravate the harms from notice failure. Greater bargaining power of PAEs makes innovation tax bigger. The size of problems with the patent system is exacerbated by PAEs.”

    Looks like Mike and I are in agreement.

  12. “Going to focus just on the bottom feeder point. He’s against suits that are frivolous.”

    Dave apparently doesn’t know the definition of “bottom feeder”. It has nothing to do with frivolousness.

    1. 6, it is apparent that you don’t understand his feelings, or the issue he is discussing.

      Maybe you should work on that.

  13. “We’ve moved from a world where 2% of all patents are being enforce to perhaps a world where we’re in 50-60-70% of all patents are being enforced. ”

    I think his numbers might be a smidgen high.

    1. we’re in 50-60-70% of all patents are being enforced

      Even accepting the ridiculous (and baseless) assertion that the number is that high, perhaps someone can give a reason why asserting one’s patent rights is a bad thing to begin with.

      Someone needs to remember: Quid Pro Quo.

    2. I hope this was a typo, as it would be ridiculous and pathetic for a supposedly intellectual debate – it’s more like roughly 0.6% of patents being enforced [ratio of patent suits to patent issuances]. Also, the elesewhere alleged “10%” for patent suits final judgments is in reality more like 3%.

      Speaking of real numbers, [in view of the widely conflicting alleged research reports on troll suit numbers] see the reported actual numbers of troll suits against real companies in this Fortune Magazine article:

      > link to money.cnn.com

      1. “reported actual numbers” – ?

        The numbers in the link are not sourced. Further this ‘number’ simply screams lack of credibility: “and thereby accounted for 67% of all patent suits filed.” Gee. it sounds that if you eliminate this single entity, you have ‘gotten rid’ 2/3’s of the problem…

        LOL -and I love the crack about ‘real companies’…

        As to the writer of the article:

        Roger Parloff is a senior editor at FORTUNE, where he covers a wide range of legal issues—from mass torts to intellectual property.

        Formerly a practicing criminal litigation attorney in Manhattan, Parloff has been a full-time journalist since 1988 and joined FORTUNE as a regular contributor in 2002

        Parloff holds a B.A. from Harvard College and a J.D. from Yale Law School.

            1. Since it is doubtful that Malcolm is referring to either Justice White or Wozniak in his intended slight of Heritage University, when one checks out who else in on the list at link to cuheritage.org one comes across one of the greats of modern business (scientific) theory: W. Edwards Deming.

              Yet another self-FAIL for Malcolm, reminding everyone when he tried to insinuate that business does not apply the scientific method in his failed attempt to place business methods outside of the Useful Arts.

              6, what does your little psych book say about self-immolation? It’s a trait the both you and Malcolm seem to really get off on.

  14. “But the kind of innovation that John wants to encourage are different from the innovation that Mark wants to encourage. The type of innovation that John wants to encourage is innovation in extracting value from the patent system; innovation in the legal models. And this imposes a tax on the innovation in the technical areas. John says that this is a property system, and any property system has a robust secondary market. But this is actually an instance that shows why patent rights are not property. ”

    Exactly. They’re an entitlement program that has been made to have property like aspects due to a statute.

    1. 6, you are misunderstanding the entire legal notion of Quid Pro Quo.

      You are also cheering on a clear error of law (and this guy supposedly teaches about this stuff?). By law patents are property. To suggest otherwise is simply engaging in delusion.

  15. “But while trolls themselves are not the problem, trolls are a symptom of real problems with the patent system.”

    That’s the closest to being correct that these guys seem to have come. I’d say more like an exacerbating factor affecting a symptom’s severity when that symptom manifests. The symptom of course being “bad patents”, overbroad, ineligible, not within the useful arts, etc. etc. which are all symptoms of faulty statutes and judicial decisions interpreting them along with administrative actions and inability to be thorough enough on each patent because of volume/cost to examine. When those patents show up, a troll wielding it exacerbates the severity of the problems caused via exactly the same things that some people praise the troll model for in the first place.

    1. lol -to him, the problem is patents themselves.

      You really have a hard time understanding things, don’t you 6?

    2. 6, you, I, Lemley and I think MM, RandomGuy and Owen all seem to be on the same page on this score. But clearly, not everyone sees it this way. You just have to see the utterly nauseating brief wring by the SC with Kelly of the PTO in Nautilus. link to americanbar.org

      1. LOL – that’s a veritable rogues gallery of who you be hanging with, Ned.

        Not a pro-patent person in the bunch.

      2. Interesting quote from a 1902 case in the brief.

        “a. Patents are technical documents, however, that
        are addressed to a technical audience, not “to lawyers,
        or even to the public generally.” Carnegie Steel Co. v.
        Cambria Iron Co., 185 U.S. 403, 437 (1902).

        Yeah, maybe they were in 1902, now they’re all addressed to the federal circuit with love, with technical bits tossed in for giggles.

      3. “The question whether that functional limitation
        inheres in the phrase “spaced relationship,” or solely in
        other language within the claim, is of no practical import
        and creates no meaningful ambiguity regarding the
        scope of the claim as a whole.”

        Also from the brief. Seems to me like if the functional language is inherent in the spaced relationship limitation then you can do the function with something else and not infringe…

        1. 6, as we both know the PON in the reexamination was the functional limitation. Thus any arrangement that achieves the function will infringe, and any that does not will not. But the patent itself does not tell one what is adjusted and how to achieve the result.

          The prior art disclosed the same structure but not the result. Presumably, it too could be adjusted in the same way. But it too was silent on what to do.

          Thus, the critical feature itself is not described (a 112, 1 problem) and also it should be a 112, p. 2 problem.

          The way the brief punted by not describing the reexamination and the novelty was astounding. District Court judges always take into consideration the prosecution history in forming their constructions. But not apparently the SG.

          1. The prior art disclosed the same structure but not the result.

            Does it?

            If indeed so, an inherency argument will suffice.

            The problem Ned has with this inherency position is immediately apparent given the Morse case and the conundrum that the ‘oldbox’ – without change – does not have all future inventions that software brings.

            Thus, Ned is perpetually blinded by the Nazomi case. And it is only in deliberate ignorance that Ned continues his crusade.

            But Ned should know that such deliberate ignorance is unethical, and that this knowledge cannot be quashed and for him to continue to use social media such as this blog and purposefully ignore the clear legal points provided to him is indeed reckless.

            Eventually, the points I present must be attended to. There will come a time that running away will not be a viable alternative.

          2. “Thus any arrangement that achieves the function will infringe, and any that does not will not.”

            I’m not so sure about that Nedo. Maybe it is so, and maybe it ain’t.

            I think the actual problem, or at least one of the big problems, is that they can’t nail down a construction so that they can mount a good 102/design around/non-infringement theory. The whole, pick either/or “construction” as the actual construction is bogus.

            “Thus, the critical feature itself is not described (a 112, 1 problem) and also it should be a 112, p. 2 problem.”

            Maybe.

            “The way the brief punted by not describing the reexamination and the novelty was astounding.”

            It was kind of odd, as was hearing them cheer on the “pick either or construction as the actual construction” manner of arriving at the actual construction to be used.

  16. Clearly part of the problem is that trolls as a class escape definition, but there are some entities that everyone would define as a troll. As Justice Stewart said, I know it when I see it. There should be discretion to a court to determine who is a troll and allow the court to shift the burden in those cases.

    Another part of the problem is that there seems to be an acceptance of a class of patents that clearly cannot be patents. A computer is a logical instrument, and most software patents are just applications of abstract logic. This isn’t to say I think they should be 101 rejected, because I don’t know what the test for that ought to be, but they shouldn’t exist and I don’t care how you get there. When the problem is obvious in the context, a claim to “solving the problem” cannot be granted. I say that to distinguish situations where the problems aren’t obvious and the claim only reaches the particular means (which is the only real invention). The only way one person could prove possession of every solution to a problem is to bound the problem and reason it, and that amounts to a level of abstract reasoning that patents can’t embrace (I would go so far as to say on first amendment grounds). This is heartily tied into functional claiming, which I assume the court will remind the CAFC in Nautilis later this month, and this issue may sort itself. There is a valid way to claim computer software, but it involves detailing the particular inputs and particular steps your program executes, not attempting to sweep every solution in with your simply because they share a common result in one fashion.

    The third problem is that despite KSR being broad and simplistic, I think the office is so rigid in its methodology that obviousness is being under-applied. Virtually nobody reads patents, and yet a troll can walk into court, as one recently did, and claim that thousands of small businesses using a multitude of different machines and software are all independently infringing on his valid claim. There are fact patterns that would make this plausible, but in all likelihood the reason that thousands of laypeople are accidentally stepping on the patent is because the patent is obvious. Wasn’t there one on here a few months ago about scanning a document and then emailing it?

    1. Random Examiner back at it with his stale tripe.

      More of the CRP-Run away-CRP again merry-go-round in play.

    2. “No one reads patents.” What has that to do with anything? Random, the patent disclosure opens up the avenue of disclosure. The information is exchanged many other ways such as boards, magazines, etc.

      God help us.

      1. If that were true, sure. But when the argument is “I came up with scanning a document and then emailing it” and a hundred other people with no prior disclosure blunder into that, it suggests it was obvious.

    3. Random, I would not be so sanguine about Nautilus. The government brief pissed all over the notion that there was something wrong with functional claiming, and diverted attention from the fact that the point of novelty in the case was in the result claimed.

      The Federal Circuit held that anything that worked was covered, overruling the district court that held the claim indefinite because one could not tell what was claim other than anything that worked.

      The cases the government relied on were cases where the subject matter could not be claimed more definitely. The question is whether applicant will be forced to claim with the particularity that the subject matter permits, or can the, as in Nautilus, simply claim anything that works.

        1. “To man with a hammer everything, looks like a nail.
          That is clear and particular, too outdated. Nothing worth asserting or protecting looks like a hammer or nail.

          Try other ways to make that claim.
          Tool and fastener apparatus, a torque multiplication means plus a point of inertial energy transformation, fastener as a means to affix a set of spatially limited compositions of solid matter at a determined point or plurality of points, fastening system comprised of…method of using said means…
          Avoid the anticipation of well known prior art especially “I’m rubber you’re glue” methods by construing mallet alone (not rubber mallet) in hammer limitations and carefully limit adhesive or adhesive system as functionally equivalent to fastener means or said fastener. Certain venues respond positively to the concept of tightening screws when the infringement identifies objects of disproportionate size, though others think such is obvious in relation to threaded fasteners.

          Listen to these, the unschooled voices of innovation, we can clear it all up!

          1. Really, the People, is it possible that we have totally lost the ability to claim structurally? 95% of the claims I see today are the kind you wrote: almost entirely functional. It is almost as if no one today knows how the claim and apparatus using simple structures.

            And yet in infringement cases, the structural claims are easy to prove and somewhat broad, while the functional claims are difficult to prove.

      1. I personally believe that written description is a better vehicle, but you dance with the girl who brought you.

        “The Federal Circuit held that anything that worked was covered, overruling the district court that held the claim indefinite because one could not tell what was claim other than anything that worked.”

        FC also said that you couldn’t tell from the disclosure which positions were covered.

        “The cases the government relied on were cases where the subject matter could not be claimed more definitely. The question is whether applicant will be forced to claim with the particularity that the subject matter permits, or can the, as in Nautilus, simply claim anything that works.”

        That exact argument was rejected in Wabash.

        1. RandomGuy: “The cases the government relied on were cases where the subject matter could not be claimed more definitely. The question is whether applicant will be forced to claim with the particularity that the subject matter permits, or can the, as in Nautilus, simply claim anything that works.”

          That exact argument was rejected in Wabash.

          Random, could you clarify your statement?

        2. you dance with the girl who brought you

          You look awfully funny dancing your square dance when a waltz is playing.

          “Whatever” does not cut it. The law really does matter.

  17. “They’re a symptom of long pendency times, unclear claims, incentives to write broad functional claims.”

    This is the fault of the PTO — no need for any legislative changes, just better management at PTO and more resources for PTO.

    1. Agreed, but part of the problem is also the lawyers. They put forward ridiculous claims and defend them, which often works because they’re lawyers and Examiner’s aren’t.

      If a rule was promulgated that said that applicants couldn’t argue novelty on functional limitations (absent a special showing) I bet it would go a long way toward fixing the issue.

      1. Blame the lawyers for the examiners unable to do their jobs…

        B-b-b-but thems lawyers arr just so darn smart the know the law…

        Spare me the QQ. Do your Fn job.

      2. And by the way, random nonsense, the “Troll” of lore does not spend his time prosecuting patents, merely buying them on the secondary market, thus your entire gripe here misses the mark.

        By a mile.

        Perhaps if we both act surprised, maybe somebody will be surprised at how wrong you are on this topic.

        Maybe.

        Not likely.

        But maybe.

            1. Even pending continuations cannot add new matter,

              LOL. Is that a scientific fact?

              Or is that just a rule that an “innovative” patent lawyer has a fair chance of ducking in the US system (with the size of the reward dependent on other rules that you also never stop complaining about to the extent that reward is diminished)?

              We should encourage patent attorneys to play games with these rules, shouldn’t we? We learn new stuff that way. God bless America.

          1. Of course it does, it is not enough to say that structures out there infringe, one has to know what those structures look like.

            A functional result does not describe the structure of the infringing device.

            1. Random, do you see anything wrong with a claim that literally covers the independent inventions of others where that independent invention is not the equivalent to the disclosed means?

            2. Ned,

              Does the dsiclosed means matter if you want the software written in C# or basic?

              How about link to en.wikipedia.org

              Of course, you are aware that an applicant need not present what PHOSITA already knows, right?

              Join me in a conversation about how an ‘oldbox’ – with no change (remember, we must respect Morse) – can have inherently all future inventions that are realized in new software. Join me in a conversation that is essentially the debunked “House” (television show) argument.

              Be prepared to show (finally) your understanding of the Nazomi case.

              Please don’t run away.

      3. RandomGuy, If a rule was promulgated that said that applicants couldn’t argue novelty on functional limitations (absent a special showing) I bet it would go a long way toward fixing the issue.

        This used to be the law, Mr. Random — but overruled by Donaldson: Application of Arbeit, 206 F.2d 947, 956-957 (CCPA 1953), full quote below. And what case do we have on appeal today? Nautilus v. Biosig.

        None of the briefs directly raised the overruling of Arbeit, but the PTO really, really needs to take this issue up to the Supreme Court over the heads of the Federal Circuit depending on the result in that case.

        Arbeit:

        “The Solicitor for the Patent Office, on the other hand, took a position which, in our opinion, if adopted, requires a holding that in cases where purely functional limitations constitute the sole matter relied upon for novelty, the phraseology of the last paragraph, supra, has no application, and the matter is governed by the first and second paragraphs, supra, which repeat in substance the provisions of R.S. § 4888 for a description “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same”.

        As a matter of fact, counsel for appellant was understood by us to have argued that a correct interpretation of the Patent laws as they existed before January 1, 1953, would have rendered it unnecessary to include specific details of structure in claims when such details could be ascertained from the specification, and counsel contended in substance that by the last paragraph of Sec. 112, supra, Congress declared the law to be what counsel believes the tribunals of the Patent Office and the courts should have held it to be long, long ago.

        Obviously, if the statutes prior to the Patent Act of 1952 should have been construed as counsel for appellant is understood to contend, the tribunals of the Patent Office and all the courts having to do with patent law have been erring probably ever since administration of the patent system authorized by the Constitution began. It would be a waste of time and labor to trace and recite here the history appertaining to this vital principle of law.

        In the case of In re Dalton, 188 F.2d 170, 173, 38 C.C.P.A., Patents, 953, 956, this court stated the law as follows:

        “* * * Properties, functions, uses, and results that may appear from the defined structure are not definitions of it and may not be solely relied upon to make a claim containing them patentable unless there is a positive setting out of the structure itself in the claims which, of course, must be responsible for properties, functions, uses, and results thereof.” (Italics ours.)
        In the case of In re Jolly, 172 F.2d 566, 569, 36 C.C.P.A., Patents, 825, 829, we said:

        “* * * It is true, of course, that where the validity of a claim which has been granted is questioned, * * * it frequently becomes proper to interpret the claim by looking to the specification, but where one seeks a patent, the statute very definitely requires that he shall particularly point out and distinctly claim that which he claims to be his invention or discovery. No citation of authority is necessary in support of the familiar rule that the claim is the measure of the invention.” (Italics new here.)
        However, even in an infringement case where the validity of a granted patent is 957*957 involved, the specification, standing alone, may not always be taken as a sufficient definition of structure.

        The decision of the Supreme Court of the United States in the case of General Electric Co.[4] v. Wabash Appliance Corp., 304 U.S. 364, 366, 58 S.Ct. 899, 901, 82 L. Ed. 1402, was, and is, recognized as a lucid and important restatement of certain legal principles appertaining to patents. We quote the following from the decision because it is deemed peculiarly apropos in the case before us now:

        “The question before this Court is the validity of the claims in suit. Claim 25, which is typical, reads as follows: `25. A filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for such a lamp or other device.’
        “We need not inquire whether Pacz exhibited invention, or whether his product was anticipated. The claim is invalid on its face. It fails to make a disclosure sufficiently definite to satisfy the requirements of R.S. § 4888, 35 U.S.C. § 33, 35 U.S.C.A. § 33. That section requires that an applicant for a patent file a written description of his discovery or invention `in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains * * * to make, construct, compound, and use the same; * * * and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.’ We may assume that Pacz has sufficiently informed those skilled in the art how to make and use his filament. The statute has another command. Recognizing that most inventions represent improvements on some existing article, process, or machine, and that a description of the invention must in large part set out what is old in order to facilitate the understanding of what is new, Congress requires of the applicant `a distinct and specific statement of what he claims to be new, and to be his invention.’ Merrill v. Yeomans, 94 U.S. 568, 570, 24 L.Ed. 235. Patents, whether basic or for improvements, must comply accurately and precisely with the statutory requirement as to claims of invention or discovery.” (Italics supplied.)”

      4. I think, Mr. Random, that you will be hugely disappointed in the Government brief in Nautilus. link to americanbar.org

        In speaking about functional claiming, the brief fails to distinguish the difference between functionally claiming old and new element, giving examples of climbing old elements as if the support of the point that one can properly claim new elements functionally. Then the brief says this:

        ” Nothing in the Patent Act precludes an inventor from describing an invention (and distinguishing it from the prior art) partly by reference to its function…” We have to note that the case overruled, Arbeit, would have prevented the applicant from distinguishing the prior art based upon function or property. This is not where the functional limitation assists in clarifying the meaning of a structural limitation. This is where the functional limitation itself is the point of novelty.

        Thus the brief of the government is somewhat misleading on the state of the law in that under Donaldson the applicant is allowed to distinguish the prior art solely based upon function and not partly.

        I suspect that the powers that be at the PTO were largely behind this effort of the government, and if so where do we lay the blame? On a whole though it is a travesty and supports functional claiming. This seems to fly in the face of the president’s effort to restrain functional claiming.

    2. “This is the fault of the PTO”

      How is this the “fault” of the PTO when the federal circuit is obviously the one behind the PTO issuing such?

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