Guest Post: The Rise of The End User in Patent Litigation (and Attorney Fee Shifting)

Professor Bernstein’s current scholarship focuses on the role of end users in the patent system.  Because end users are fast becoming major stakeholders in the operation of the patent system, I asked her to write a few words about how she conceives of these players. – Jason

Guest Post by Gaia Bernstein, Professor of Law, Seton Hall University School of Law

We usually think of two players in the patent system: the patentee and its competitor.  Increasingly, however, end users – who are neither patentees nor competitors – are playing a significant role in the patent system.  The attention of the press has recently turned to patent assertion entities who are suing vast numbers of customers using patented technologies in their everyday businesses.  For example, one patent assertion entity has sued individual podcasters, including the Comedian Adam Carolla. End users were also principal players in some of the recent patent cases before the Supreme Court. In Bowman v. Monsanto, Monsanto sued a farmer for re-using its patented seed technology. End users also appear as patent challengers: in Association for Molecular Pathology v. Myriad Genetics, patients and physicians sued to invalidate breast cancer gene patents. And patients and drug stores repeatedly challenge pay-for-delay agreements between patentees and competitors, claiming they undermine patients’ interests in access to generic drugs.  This is only the beginning: end users are likely to become even more prevalent in patent litigation, as 3D printers become more popular, making it more likely that an individual or a small business will make an infringing item that will expose them to patent liability.

All of this begs the questions what is an “end user” and how well is patent law suited to deal with this new player?  In The Rise of The End User in Patent Litigation, forthcoming in the Boston College Law Review, I define end users as people and companies that use a patented technology for personal consumption or in their business.  I emphasize that they are strictly users.  Even if they incorporate the patented technology into a product or service they offer their customers, they do not make or sell the technology standing by itself.  I explain that end users differ from competitors in three respects.  First, end users usually lack technological sophistication – they are generally not technological companies and do not produce and supply the allegedly infringing technology. Second, end users usually become involved in the patent conflict relatively late in the life of the patent, after the patented technology enters the market and achieves widespread adoption.  Third, end users are typically one-time players. In most cases the technology is ancillary to their business and they do not have a long-term stake.

Patent litigation is exorbitantly expensive. It is all the more expensive for end users who lack the technological expertise to challenge validity and infringement claims and cannot rely on in-house technological expertise. Because end users are often one-time players, they prefer to avoid the expense of patent litigation and settle even strong cases, making them a particularly lucrative target for patent owners. Unfortunately, even the most recent substantive patent law legislation, the America Invents Act (“AIA”) fails to address the growing role of end users. I show that while the AIA attempts to address the needs of small entities, mainly by adding and changing procedures to challenge patents in the patent office, thus providing a cheaper and faster forum for contesting validity, those same novel procedures are largely unsuitable for end users because they permit expansive challenges mostly early in the life of the patent before end users are likely to be involved in the patent dispute. The procedures that allow challenges later in the life of the patent limit the grounds available for challenging the patent. Thus, unlike even small competitors of the patent holder, end users are unlikely to benefit from the enhanced patent office proceedings put in place in the AIA.  The effect of this is to leave them without the very same tools that were implemented to protect small entities.

Ultimately, the rise of the end user is a complex phenomenon that needs to be addressed by a series of reforms, which I am addressing in other works in progress.  Here, however, I focus on the role that fee shifting of attorney fees and litigation expenses to the prevailing party can play in end user cases because a modest change could contribute toward leveling the footing of end users in all type of end user-patentee disputes.

Fee shifting in patent litigation has been a hot topic this year. Recently, the Supreme Court decided two fee shifting cases: Highmark v. Allcare and Octane Fitness v. ICON Health & Fitness. In Octane Fitness, the Court lowered the standard for awarding fee shifting in patent litigation. Congress is also considering multiple bills advocating different versions of fee shifting. The problem is that although some of the congressional bills address PAE’s suits against customers, neither these bills nor the Supreme Court decisions address the broader role that end users are now playing in our patent system. In the article, I argue that the case for fee shifting is strong where end users are implicated particularly because of the great inequality in technological sophistication between end users and patentees and because end users frequently represent many other parties who are not before the court. For these reasons, end user status should be considered as a factor that weighs in favor of fee shifting, particularly when the end user fits the paradigmatic form of a classic end user.

There is more in the article than I can write about here. If you are interested, please take a look at the full version. http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2440914.

176 thoughts on “Guest Post: The Rise of The End User in Patent Litigation (and Attorney Fee Shifting)

  1. This opinion link to cafc.uscourts.gov is a model of succinctness.

    I think the moral here is that you shouldn’t necessarily appeal just because the PTO’s analysis is g@rbage. In this case, the PTAB affirmed the examiner’s findings that the claim term “name of a person” should be construed to include a sequence of numbers and that a functional parameter in a web query could be ignored since it was “non-functional descriptive material.” The CAFC (fortunately) saw through that silliness but (just as fortunately) recognized that the claim was blindingly obvious over the primary reference anyway.

    I hope the attorneys were paid in advance.

    The claim at issue:

    1. A method of generating a custom web page specific to a person accessing the website, the method comprising the steps of:
    obtaining a list of persons;
    providing the website on a first computer device connected to the Internet;
    storing the list of persons in the first computer device;
    sending to each of a group of persons, a direct mail or email piece including: (i) a uniform resource locator (URL) of the website, (ii) second information designed to induce the person to contact the first device and place an order, and (iii) a suffix to the URL, wherein the suffix states a name of the person in the group to which the direct mail or email piece is directed;
    receiving by the first computer device from a second device connected to the Internet a transmission by one of the persons in the group, wherein the transmission is addressed to the URL and includes the suffix to the URL;
    comparing the transmitted suffix to the URL with a data base of stored information for generating promotional offers,
    if the transmitted suffix to the URL corresponds to any stored promotional offer
    information, generating from the data base a custom response including a selected promotional offer for the person contacting the first device, and
    transmitting to the person’s second device the custom response with the selected promotional offer.

    Here are the first 2 claims from the primary reference:
    1. A system for creating a personalized computer user interface for a communications network in connection with a direct marketing program, comprising:
    (a) database means for storing a plurality of recipient data records each comprising recipient addressing information, and a unique personal identification code for each of a plurality of recipients;
    (b) distribution means for distributing to each of the recipients an electronic return address containing the unique personal identification code;
    (c) computer server means operationally coupled to the communications network for serving a plurality of remote computers, including access means for allowing a responding recipient to access the computer server means by entering the electronic return address into the remote computer;
    (d) retrieval means coupled to the computer server means and database means for retrieving recipient data from the database means correlated to the personal identification code contained in the electronic return address; and
    (e) user interface creation means operationally coupled to the retrieval means and the database means for creating a unique interactive user interface based upon the recipient data and communicating the user interface to the remote computer.
    2. The system as defined in claim 1, wherein the communications network comprises the Internet, the computer server means comprises a web server computer, the remote computer includes a web browser, the electronic return address comprises a uniform resource locator, and the user interface creation means creates a web page.

      1. How does the rotation of duty tro11ing this art field work between you and Malcolm, Leopold?

        You’re a p@ranoid little fellow, aren’t you?

        In fact, I have no problem with this “art field,” and no problem with the subject matter at issue here. In this particular case I was struck by (a) the PTAB’s poor work, and (b) the foolishness in appealing this particular case in the first place, given that the sole distinction between the appealed claim and the prior art is that the former uses a “person’s name” as an identifier (for a person) while the latter uses a number.

        1. lol – you are not p@ranoid if they really are out to get ya.

          Or do you, like Malcolm, really think that the patent system is not under attack?

          At your leisure, pull your head out of the sand and take a look at what is going on.

          You seem – again – only too eager to ignore what I am actually posting – so your comments about “no problem with this art field,” PTAB poor work, and particular foolishness of fighting a losing battle on the overall position of obviousness merely makes some nice dust-kicking by you.

          All of this reflects that Leopold-wrong-person-just-shut-up mentality.

          I am glad that you do not have a problem with this art field. My post is not concerned at all with any such notion, so why do you bring it up?

          We agree with the poor PTAB, so again, why do you bring it up and pretend that such is somehow at issue between us?

          The sole distinction argument was CRP, but I never indicated otherwise, so again, why do you bring it up and pretend that such is somehow at issue between us?

          You are doing that “anon said” reactionary thing again – the hallmark of Leopold.

          1. So you agree with everything I’ve said, and yet I’m “tro11ing this art field?” You’re leaping on every comment I make, for some unfathomable reason, and yet I’m “doing that ‘anon said’ reactionary thing,” whatever that is? P@ranoia is clearly not your only problem, my friend.

            1. The “tro11ing” comment comes from the ad-hoc insertion that evidences a distaste of a certain art field (aside from the fact that you say you “do not have a problem.”

              You only cement that view by trying to kick up dust with your additional “I’m innocent” style protests.

              As to “leaping on every comment I make” – we’ve been down that road before – and you were wrong then too.

              Oh, so Leopold of you.

    1. Worth noting (in particular to Les and Ned):

      The CAFC (fortunately) saw through that silliness

      to which you may be referring to this portion of the CAFC decision:

      While we question the expansiveness of the Board’s claim construction and disagree with the Board’s application of the printed matter doctrine here,

      Les, this just goes to show that Article I courts (PTAB) will get the law wrong.

      Ned, please revisit the simple set theory explanation that I have provided you regarding the exceptions to the judicial doctrine of printed matter before you launch (again) into a clearly wrong explanation of something that goes to the heart of why software is a patent eligible manufacture in its own right.

      1. Les, this just goes to show that Article I courts (PTAB) will get the law wrong.

        You got that right. I’m sure there are some fine ALJs at the PTO, but there are also far too many that will stand on their heads to affirm the nonsense coming out of the examining corp.

        1. the scary thing is the amount of deference that Article I court is taking in its, um, well, let’s call it “interpretation” of existing law and Article III court interpretations…

          As I have noted to Ned, one particular founding father was especially wary of violations of the separation of powers doctrine, and the coalescing of power in one branch (as exemplified here with the Executive Branch, and the [shadow] control of a director-less Federal Agency acting of its own accord in making up its own policy, de facto legislating its own rules and “law,” and sitting in its own judgement of what the rules of law mean – with the PTAB under such close and direct control of the policy-setting power of that agency).

          This would make an excellent topic for some academic to explore…

  2. A new case out today, link to cafc.uscourts.gov , involves claims directed at the end user.

    To save you some time, here’s the entirety of the opinion:

    The judgment is affirmed on the grounds that (1) the asserted claim 9 of United States Patent No. 6,494,457 (the ’457 patent) would have been obvious and (2) the district court did not abuse its discretion in refusing to permit plaintiffs to amend the complaint to include claim 1 of the ’457 patent.

    Claim 9, which is reproduced below, might well be invalid for reasons other than 35 U.S.C. s. 103. Claim 1, which the plaintiff apparently wanted to add to the case, but belatedly, is directed to “a method of playing an enhanced hide and seek game.”

    I’d love for someone to research this and find out who the accused infringer was.

    9. An enhanced hide and seek game, comprising:
    an object capable of being hidden;
    a transmitter unit associated with said object, said transmitter
    unit configured to transmit a signal generally
    outward from said object; and
    a seeker unit associated with the game participant, said
    seeker unit having a receiver therein for receiving said
    signal from said transmitter unit; said seeker unit
    comprising a calculating means for determining a first
    distance between said seeker unit and said object, a
    second distance between said seeker unit and said
    object and a relative change in distance, said seeker unit
    further comprising a speaker for transmitting one or
    more messages to the game participant;
    wherein after said object is hidden and said transmitter
    unit is activated, the game participant utilizes said
    seeker unit to find the location of said object by
    receiving said messages from said speaker.

    1. Since Shelly Conte is a listed inventor, my guess would be that the accused infringer was Jakks Pacific, Inc.

      (I think you may have missed in thinking that this case was aimed at “end users”)

      The change in pseudonym has not improved your accuracy Leopold.

      1. (I think you may have missed in thinking that this case was aimed at “end users”)

        It’s amazing how you can tell what I’m “thinking,” even when I say something completely different.

        1. lol – what did you “say” that was “completely different?”

          Or is this going to be (yet another) of those things where you are wrong and continue to chase your tail? How are those ladders of abstraction reference materials that you said that you were going to provide so long ago coming along?

          1. (sigh)

            6,

            Your 15 minute window on the attempt to control posts by labeling them as psychopathic elapsed long ago.

            Besides being a simple manifestation of your projection illness, it’s more than just a little stale now. Find some other rhetorical t00l please.

      2. The change in pseudonym has not improved your accuracy Leopold.

        Notice how the nxtcxse just can’t help itself. It just does what it does.

      1. lol,

        B-b-but your honor, my reference clearly states that any number of electrons, neutrons, and protons can be combined in any combination (read that as “configured” if you like), so well, the entire fields of manufactures and compositions of matter are now poisoned.

        / nonsensical game-over logic applied to its simple conclusion

    2. Claim 9 is classic example of functionally-claimed sooper techno hoohaw in the (trying not to laugh here) “computer-implemented” arts.

      Consider the prior art “hide and seek”, which includes:

      an object capable of being hidden (e.g., a person called “the hider”)
      a transmitter unit associated with said object (e.g., the hider’s mouth)
      a seeker unit associated with the game participant (a person called the seeker)
      seeker unit having a receiver therein for receiving said
      signal from said transmitter unit (ears)
      comprising a calculating means for determining a first
      distance between said seeker unit and said object (a brain — something clearly lacking in both of the people who filed and examined this p.o.s.)

      Like thousands of other kids, we also played hide and seek with walkie talkies. You could tell when you were getting closer because the quality of the sound improved. We also hid walkie talkies and played games that way.

      Of course there’s reams of examples of people using homing devices of various kinds to locate things that have been lost or hidden. But wait! I’m sure a patent txxbxgger will be right along to inform us that such systems aren’t relevant to the (again, trying not to laugh here) the “game” arts. Yes, folks, that’s called “scraping the bottom” to be sure, but it’s what they do best.

      I suppose the specification here must have recited a magical compooter and so the applicant and the examiner pretended they were born yesterday and granted the claim. Thankfully there were some adults on the court.

      1. Malcolm,

        Your nit-picking QQ aside, you do realize that “in the art to which the invention pertains” is a real part of the law, right?

        1. you do realize that “in the art to which the invention pertains” is a real part of the law, right?

          I realize that you’re mentally ill. Other than that, I’ve not much else to say in response to your inane b.s.

          1. …because actually paying attention to the specific art to which the invention pertains is….

            lol – I see that you are still busy with that shovel.

      2. Like thousands of other kids, we also played hide and seek with walkie talkies. You could tell when you were getting closer because the quality of the sound improved. We also hid walkie talkies and played games that way.

        This is closer to the game, also played by thousands (millions?) of kids, for many decades, where one player hides an object for another to find, and calls out “warmer – warmer – colder – …” as the other player looks for it. In the version claimed here, one player still has to hide the object for the other, but he’s relieved of the soul-crushing labor involved with calling out the clues. The patent is pretty sad, but I wonder whether it’s not even more sad that a toy company actually built this thing.

        1. “Like thousands of other kids, we also played hide and seek with walkie talkies. You could tell when you were getting closer because the quality of the sound improved. We also hid walkie talkies and played games that way.”

          I’m sorry, I simply don’t believe you. It would make no sense to hid and then talk into a walk talkie. The point of hiding is so you are not found. The talking alone would be enough to give away your position.

          1. The point of hiding is so you are not found.

            Right. The kids who die of starvation inside the locked refrigerator are the truly smart ones.

      3. “Of course there’s reams of examples of people using homing devices of various kinds to locate things that have been lost or hidden. .”

        Homing devices and activities are based on direction finding…. one rotates a directional antenna until one locates a null or peak in the signal strength and then moves in the appropriate direction.

        That’s not what was claimed. What was claimed includes a device that estimates a first distance and then estimates a second distance and indicates if the seeker is getting closer or not.

        So…take your impermissible “gist” type reasoning and hide it where the sun don’t shine.

        1. Homing devices and activities are based on direction finding…. one rotates a directional antenna until one locates a null or peak in the signal strength and then moves in the appropriate direction.

          That’s not what was claimed. What was claimed includes a device that estimates a first distance and then estimates a second distance and indicates if the seeker is getting closer or not.

          How are these distances “estimated”, pray tell? The claim doesn’t seem to limit the methodology used. Regardless, if the signal strength decreases in spot A relative to spot B then it’s a pretty good “esimation” that spot A is farther away from the signal source than spot B.

          your impermissible “gist” type reasoning

          What?

  3. “We usually think of two players in the patent system: the patentee and its competitor. Increasingly, however, end users – who are neither patentees nor competitors – are playing a significant role in the patent system. The attention of the press has recently turned to patent assertion entities who are suing vast numbers of customers using patented technologies in their everyday businesses.”

    So, the assertion entity is the patentee (id est, the one to whom belongs the patent, while the entity being sued is (by definition) the competitor (id est, one who is competing through the use of the patented technology).

    Hmmm, a distinction without a difference.

    Oh well, let’s look a little farther down to see if it makes sense . . .

    “I define end users as people and companies that use a patented technology for personal consumption or in their business. I emphasize that they are strictly users. Even if they incorporate the patented technology into a product or service they offer their customers, they do not make or sell the technology standing by itself.”

    So, the end user is “incorporating” the technology into something they (presumably) sell, but they neither “make” nor “sell” the patented technology . . .

    :jaw dropped:

    I guess I’m just not smart enough to be a (h)ack-a-dem-ick.

    1. I think the author is referring to the following scenario:

      Brand I has a patent on a microprocessor.

      Brand A sells an infringing microprocessor.

      Brand X makes computers using Brand A’s microprocessor.

      In this sense, for the purpose of the discussion, Brand X is an “end user”, cause de din’t know nottin’ ’bout no pattints.

    2. the end user is “incorporating” the technology into something they (presumably) sell, but they neither “make” nor “sell” the patented technology

      This is too difficult for you to follow? Maybe you should stick to commenting over at IPPuppydog where Big G keep things simple for folks like you.

      the assertion entity is the patentee (id est, the one to whom belongs the patent, while the entity being sued is (by definition) the competitor

      Uh …. no. That’s your definition, not the author’s definition.

      Most educated people can see the difference between businesses who compete for sales of product X and a business who buys product X from one of those businesses. I’m not exactly sure what you’re problem is but we can all take a good guess.

      As discussed elsewhere in this thread, the kinds of “criticisms” you make say quite a bit about you. We’ve all been watching you launch these pathetic attacks for years. They must be compelling when you sit in a circle and screech them to each other at the Institute for Patent Abuse. They aren’t very compelling here.

      Try harder.

      1. This is too difficult for you to follow?

        lol – what exactly do you find difficult Malcolm?

        I mean, beside being right or being on point?

        Is there a point (under law for infringement by mere use) for “the difference between businesses who compete for sales of product X and a business who buys product X from one of those businesses.

        First you want to say no one is making a difference, then you seem to say the difference is obvious, but do you understand that the difference you seem to want to make a distinction about is NO difference under the law?

        Try harder – lol -indeed, except it is you that needs to do so.

    3. Marshm0ron the end user is “incorporating” the technology into something they (presumably) sell

      Why do you presume that the technology is sold? Maybe — just maybe — they just “use” the technology in their home or in their business. Hence: “end user.”

      the assertion entity is the patentee (id est, the one to whom belongs the patent, while the entity being sued is (by definition) the competitor

      That’s your definition, not the author’s definition.

      Most people can see the difference between businesses who compete for sales of product X and a business who buys product X from one of those businesses. I’m not exactly sure why you find this so difficult but we could take a guess.

      I’m just not smart enough to be a (h)ack-a-dem-ick.

      Or much else. Please save your wingnxt dxpshxttxry for Big G’s crxppy blog.

  4. The first two sentences of the article by the guest author are flat out wrong.

    The rest of the 60 page edifice crumbles on such a shoddy foundation.

  5. IN RE: DINSMORE
    link to cafc.uscourts.gov

    During prosecution, the examiner entered a double patenting rejection over a patent having a common inventor but a different owner. The patent applicant filed a terminal disclaimer using the standard PTO form that required common ownership for the patent to be enforceable.

    The patent owner filed reissue application seeking to amend the terminal disclaimer to eliminate the common ownership requirement. The patent office refused – stating that there was no error for which a reissue could be authorized.

    On appeal the Federal Circuit affirmed. The Federal Circuit observed that the only possible error that the patent owner could have alleged was the failure to recognize that the patent which was the referenced patent of the terminal disclaimer was not commonly owned. Because the patent owner never alleged this grounds, it had to be assumed that the terminal disclaimer was filed with the knowledge that the referenced patent was not commonly owned. Thus there was no error and no basis for a reissue application.

    1. Good case summary Ned! Especially since some folks may otherwise misread this case as a new restriction on reissues.

  6. End users are targeted because courts have ruled that you can’t get a patent for software.

    This forces inventors to claim there inventions in the form of a method of doing something.

    The real infringer is the entity that sells software that facilitates or even does the claimed method. However, since they are selling software and not actually doing the claimed method, they cannot be sued for direct infringement.

    Therefore, the inventor or patent owner has no recourse but to sue the method infringers or end users.

    The simply solution then is to undue the silly rulings that say software in not an article of manufacture and assert that software is an article of manufacture patentable under 35 USC 101.

    poof, Court created problem goes away.

    1. One (major) problem Les: we are not there yet.

      The Court has not ruled that one cannot obtain a patent on software (regardless of what the small circle constantly obfuscate upon).

      It is still a recognized fact that software is a an article of manufacture and a machine component. See Alappat, see Diehr, See Nazomi. Software is equivalent to firmware and is equivalent to hardware.

      1. Well, I wish you would tell that to the PTO, ’cause I sure have to deal with a lot of “software per se” 101 rejections..

        See also MPEP 2106 (I)

        Non-limiting examples of claims that are not directed to one of the statutory categories:

        i. transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se), In re Nuijten, 500 F.3d 1346, 1357, 84 USPQ2d 1495, 1503 (Fed. Cir. 2007);
        ii. a naturally occurring organism, Chakrabarty, 447 U.S. at 308, 206 USPQ at 197;
        iii. a human per se, The Leahy-Smith America Invents Act (AIA), Public Law 112-29, sec. 33, 125 Stat. 284 (September 16, 2011);
        iv. a legal contractual agreement between two parties, see In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1039-40 (Fed. Cir. 2009) (cert. denied);
        v. a game defined as a set of rules;
        vi. a computer program per se,Gottschalk v. Benson, 409 U.S. at 72, 175 USPQ at 676-77;
        vii. a company, Ferguson, 558 F.3d at 1366, USPQ at 1040; and
        viii. a mere arrangement of printed matter, In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969).

        1. There is a quote in Benson that you can respond to any rejection that (mis)uses the computer per se (wrong) MPEP language – you do remember that the MPEP has no force of law for the applicant, and if binding at all, is binding only on the examiner, right?

          1. Well if the MPEP is binding on the Examiner and the MPEP says:

            Non-limiting examples of claims that are not directed to one of the statutory categories:

            ….

            vi. a computer program per se,Gottschalk v. Benson, 409 U.S. at 72, 175 USPQ at 676-77;

            Whats a poor examiner to do?

            This is why I wish you would direct your sarcasm at the PTO and get them to correct the MPEP according to your teachings….

            1. I care less for what “the poor examiner” is to do. The poor examiner must examine to the law, and if I present the law to the examiner, I fully expect the examiner to respect the law.

              If an examiner wants to quote Benson to me, I will quote Benson right back at him. I will then call the examiner (and SPE if necessary) and set them straight.

              You are aware that the MPEP also states that examination is to the law (rather than to the MPEP), right?

              I am under no illusion that the PTO will change the MPEP – and not according to my teachings, but according to what the law is (please do not fall into the “it’s not a fact if anon said it” red cape fallacy) . Further, as I indicate, if the MPEP is off, that does not matter to me or my clients, as the MPEP is not the law.

            2. And then there’s the BPAI

              ” Restated, claim 6 is directed to software per se, a series of mathematical algorithms without narrowing limitations, e.g., implementation on a machine. “Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). For the foregoing reasons, we find that the Examiner did not err in rejecting claims 1, 2, 4, and 6 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. According we will sustain the Examiner’s rejection of claims 1, 2, 4, and 6.

              So really, please, tell it to the PTO will ya?

            3. …and make no mistake, there is massive confusion across the terrain (as I have oft mentioned, due to the bumbling of the Supreme Court).

              Alice is forthcoming. Let’s see if Churchill or Chamberlain takes the “official” soapbox.

            4. “Restated, claim 6 is directed to software per se, a series of mathematical algorithms without narrowing limitations, e.g., implementation on a machine. “Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). For the foregoing reasons, we find that the Examiner did not err in rejecting claims 1, 2, 4, and 6 under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. According we will sustain the Examiner’s rejection of claims 1, 2, 4, and 6.”

              Les, what is that a quote from if I might ask?

            5. “Les, what is that a quote from if I might ask?”

              A BPAI decision from 2011 that happened to come up when I googled “software per se”. A link to a summary of it is above your question.

          2. anon,

            I’ve had the same problem as Les regarding MPEP 2106 and software per se. You can scream at the examiner all you want that Gottschalk v. Benson said no such thing (it. clearly didn’t proscribe the patent-eligibility of software under 35 USC 101) and that the MPEP is wrong, but that won’t make the examiner budge or even blink on that point without appeal to the Federal Circuit. That’s also like trying to argue to an examiner that the nonsensical Myriad guidelines are wrong in numerous respects.

            1. Respond with this from Benson:

              “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”

              Remind the Office that until so held, and in light with the exceptions to the judicial doctrine of printed matter, that software (claimed as more than just something in the mind) is clearly a manufacture and – with proper utility, also in the claim – passes the law.

              If they balk, ask them to show the actual law (not the MPEP).

            2. And while I do sympathize with those unsnarled in the waywardness (and I do not doubt that there are those that are so unsnarled), the number of software patents far outnumber the ones that are so held up.

            3. And when they come back with:

              “Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007)

              Then what?

            4. “And while I do sympathize with those unsnarled in the waywardness (and I do not doubt that there are those that are so unsnarled), the number of software patents far outnumber the ones that are so held up.”

              If you mean method claims, I would agree. But if you mean claims to software as in:

              1. Software comprising
              instructions for causing a computer to….

              I say, show me.

              That’s the point of original post 7, which you felt compelled to “correct”.

            5. Respond with this from Benson:

              “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”

              anon,

              I did just that. Still no budging by the examiner. What the case law says, and what the facts of cases cited by them actually says (and especially what they don’t say) is irrelevant to them. I’m not saying that’s right, but you’re only choice is to contest such nonsense by appeal (not just to the PTAB, but to the Federal Circuit).

            6. “the number of software patents far outnumber the ones that are so held up.”

              You say that though I note that some of my buds that used to examine in the softiewaftie arts mysteriously had their entire “art” “dry up” and blow away in terms of apps coming in. So they’ll be working on other stuff. Shockingly, stuff that’s in the useful arts.

            7. “I’m not saying that’s right, but you’re only choice is to contest such nonsense by appeal (not just to the PTAB, but to the Federal Circuit).”

              Exactly EG, but anon isn’t a lawlyer, so he doesn’t understand that not everybody wants to, or can, appeal at all or forever.

            8. and anon, by the way in:

              ““It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.””

              there is a computer. The program is servicing a computer. The assertion does not cover software per se. It covers software tied to a machine …..servicing (running on?) a computer.

              I don’t think Benson is much help for a claim to software….

            9. You say that though I note that some of my buds that used to examine in the softiewaftie arts mysteriously had their entire “art” “dry up” and blow away in terms of apps coming in. So they’ll be working on other stuff. Shockingly, stuff that’s in the useful arts.

              Gee, that’s wonderful news. I hope it’s not in my useful arts.

            10. Les,

              Don’t make Ned mistakes.

              A manufacture is a manufacture.

              “Use of” does not cut it, as you cannot use until you change the machine.

            11. Anon –
              I have no idea to what you are referring. I did notice that you did not respond to my point about the Benson quote not being directed to software per se, but referring instead to software”servicing a computer”.

              Neither did you respond to this quote:

              “Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007)

            12. Les,

              You have no idea?

              I have only addressed these issues like a bajizillion times with Ned over the course of the last couple of years, so I will simply tell you to pay better attention.

              Servicing and using are terms that you must be careful with, and understand in the shoes of the ordinary person having skill <in the art to which the invention pertains. One cannot use a computer “with software” until that machine is changed by re-configuring that machine with the software. See Nazomi. See also Alappat

              (You also miss the fact that I addressed the Microsoft quote in reply already to day to Ned – yet another horrid Supreme Court butchering of reality there)

            13. Les,

              Machine components – in and of themselves – can be manufactures and thus patent eligible in their own right.

              Pay attention as I have addressed this point many many many times with statements like bullets, tires and rivets.

            14. “<in the art to which the invention pertains. One cannot use a computer “with software” until that machine is changed by re-configuring that machine with the software. See Nazomi. See also Alappat"

              What does that have to do with software per se?

              I am not saying that software doesn't change a computer.

              I am not saying that a programmed computer isn't patentable.

              I am saying, that courts have said, and the PTO acts as if, software per se is not patentable. Have a glance again at post 7.

              In addition, I am saying that your "correction" in 7.1 is wrong because, your quote from Benson does not cover software per se and in fact courts have said, and the PTO acts as if, software per se is NOT patentable.

              Stop trying to change the subject.

            15. “Machine components – in and of themselves – can be manufactures and thus patent eligible in their own right.

              Pay attention as I have addressed this point many many many times with statements like bullets, tires and rivets.”

              We are not talking about machine component. We are talking about software per se. Not software in a memory. Not software on a disk. We are talking something claimed separate from a physical form, software per se.

              If the claims are directed to software on a disk, and the manufacture distributes CDROMs, he is an infringer and can be sued and endusers can be left out of it.

              If he distributes software over the internet, then you might get him for one count of infringement, cause he has the software on a hard drive somewhere…. In any event, what are the damages on one count of infringement of some aspect of MS Word? So, you have to go after the “end users” to put pressure on the distributor… which brings us back to the correctness of post 7 and the incorrectness of correction post 7.1.

            16. (sigh)

              Software IS a machine component, thus we are talking about machine components.

              There really is no such thing as “software per se” as software is created FOR machines, and does NOT exist totally in the mind – you are trying to equate the idea of software with software and that is just not what the term means to a person of ordinary skill in the art to which these inventions pertain. As I mentioned, you are falling to the fallacies so often debunked on these threads – PAY ATTENTION.

              You are not paying attention – and telling me that I am not addressing the issues while you are not paying attention is a bit tedious and officious of you.

            17. Les,

              Rivets, bullets and tires – do you understand why these are patent eligible in and of themselves, when they require something else to actually make utility a reality?

              Stop.

              Think.

            18. “Software IS a machine component, thus we are talking about machine components.”

              And if it is claimed that way, then it is patentable.

              But the courts disagree with you when it is claimed in a disembodied form.

              What does it mean to claim software that isn’t in a memory or storage device of some sort?

            19. when it is claimed in a disembodied form.

              No.
              Such.
              Thing.

              Tell me how something “disembodied” earns the ability to have a copyright?

              If you persist in trying to make software into something it is not, then you deserve the Chef America treatment.

            20. ““when it is claimed in a disembodied form.”

              No.
              Such.
              Thing.”

              The courts agree with you on that point.

              That’s why they call it ABSTRACT and not patentable.

            21. “Tell me how something “disembodied” earns the ability to have a copyright?”

              It can’t. Copyrights covers the right to make copies. In the case of software, that would be printed text or copies of code in computer media.

            22. It can’t.

              You are getting warmer Les.

              Do you understand why? (note, do not jump so fast into what protection is afforded, as you will miss the critical point)

            23. 6 muses : though I note that some of my buds that used to examine in the softiewaftie arts mysteriously had their entire “art” “dry up” and blow away in terms of apps coming in.

              Hmm, I just saw an email from Hal Wegner the other day and while he does not break down the items into pure hardware, pure software and combined software and hardware, just looking at the top ten clearly indicates that 6 is just wrong and there is no “entire “art” dry up and blow away” action in evidence. Hal’s top 10 has EVERY ONE of the top ten active in this “art.”

              Is this (yet another) example of 6 making something up whole clothe? Sort of like his past 1ies about discussing the result of a case (and my busting him for that 1ie)?

        1. The key there is “in the abstract.”

          The Court miffed (and miffed badly) when it missed what one of ordinary skill in the art to which the invention pertains would take the meaning of software.

          As we have discussed, software is NOT something totally in the mind – that is the thought of software. As anyone in the art (reality) can tell you, software is more than just the thought of software.

          1. The issue is what can be claimed.

            Software on a disk is patentable (plus or minus recent rulings indicating that if the method claim is not patentable then the Beauregard claim is not patentable).

            Software in a computer is patentable.

            Methods of doing things are patentable.

            Software, by itself, unattached to anything, has been ruled as abstract and is not currently patentable.

            Stop being obtuse.

            1. What does it mean to claim software that is not in a storage medium of some sort?

              What do you have with one hand clapping?

              (your question is nonsense – clearly you do not understand the art, nor terms of art)

            2. lol – Sorry 6, but Les is hardly at my throat. He’s just taking a little while to be properly adjusted to my GREAT CONTROLLING POWER… bawaaahaaaah bawaaahaaahaaaa.

              / off sardonic bemusment

    2. Les, as you recognize, the software vendor is a contributory infringer.

      The “real” problem is the Aro II and its imposition of a requirement that the contributory infringer have knowledge of the infringement, meaning, he knows what he is selling infringes the patent.

      The SC split 5-4 on that issue and they were dead wrong. If there is to be a legislative fix, it is this one.

      1. Ned,

        35 U.S.C. § 271(c) defines contributory infringement as: “Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”

        Isn’t the “knowledge” requirement right there in the statute?

        Also, can providing software digitally over the internet be contributory infringement (as opposed to on a CD or thumb drive)? Haven’t research the issue. Arguably, you’d only be providing data, i.e., 1s and 0s. But does data qualify as “a material” or “apparatus”?

        Not saying such a result would be correct from a public policy standpoint. Just that one could make this legal argument based upon the text of the statute.

        1. But does data qualify as “a material” or “apparatus”?

          Nope. It’s neither.

          You also can’t use patents to protect data. Information is ineligible for patenting.

            1. methods for processing data?

              apparatus constructed to process data?

              Elf kickers for vested oranges?

              Brown monkeys flying over rigid balloons?

              So many hanging participles in the coral reef?

        2. Not saying such a result would be correct from a public policy standpoint.

          You don’t have to say that. Rest assured that the incorrectness of a patent being used to protect information is already well-established policy and that’s not going to change.

        3. anonymous, I urge you to read fn 8 of Aro II. Congress had no intention of changing the default law of strict liability. The SC was 5-4. It was the choice of language in the statute that convinced the majority despite overwhelming testimony that no change in the law was intended.

          Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 84 S. Ct. 1526, 12 L. Ed. 2d 457 (1964).

          link to scholar.google.com

          1. It was the choice of language in the statute that convinced the majority despite overwhelming testimony that no change in the law was intended.

            Did any of this “overwhelming testimony” directly address the reason for including the clause “knowing the same to be especially made or especially adapted for use in an infringement of such patent” in this legislation?

            Otherwise it sounds like some Congresspeople were just blowing a lot of smoke to reassure certain easily-reassured constituents.

            1. “The House Committee’s change in the language of the bill concerning the knowledge requirement, see the opinion of MR. JUSTICE BLACK, post, pp. 524-528, was not intended to limit liability to cases where the alleged contributory infringer had knowledge of the patented or infringing nature of the combination; it was intended merely to assure that the statute would be construed to require knowledge that the article sold was a component of some combination and was especially designed for use therein, rather than simply knowledge that the article was being sold. See, e. g., the statement of Congressman Crumpacker, Hearings, supra, at 175, objecting to the original language on the ground that “the way it is phrased the word `knowingly’ refers directly to the word `sells.’ ” See also id., at 175-176. While the representatives of a manufacturing concern and of the Justice Department did urge the Committee to adopt the position which the Court now holds it did adopt, none of the Congressmen said anything to indicate agreement with these views or disagreement with the contrary view expressed by the spokesman for the sponsors of the bill. This view, as clearly stated on several occasions at the Hearings, was that

              “[Y]ou know that the component is going into that machine. You don’t have to know that it is patented. You don’t have to know the number of the patent, and you don’t have to know that the machine that it is going into constitutes an infringement.” Id., at 175; see also id., at 160, 176.”

            2. Ned,

              The clear distinction (in the majority and minority parts of the Aro decision) was that the new law was meant to augment the ability of patent holders to protect their rights – to allow them to go after “end-users” in exactly those cases where a single “first and total infringer” could not be gone after – in a pragmatic manner (and not in an absolute manner).

              The anti-patent viewpoint running rampant today loses sight of why Congress added to the ability of patent holders to protect their rights (and in a related manner, the added capabilities in the ITC realm are being sought to deny the very basis of augmenting patent holder powers).

              There is a view that staples of commerce should not be dragged into such augmented protection protocols. This is where the substantial non-infringing use component comes from. Plain clothe – as clothe should not fall into the ambit of protection. But was such ‘plain clothe’ at issue in Aro? Was that a fact in that case?

              One thing to keep in mind with Aro was the context and deep connection with the repair and replacement discussion. Natural differences in application of the law will come from differences in context if you remove yourself from such a repair and replacement discussion.

              If we drive this discussion back to software, (and even if just for argument’s sake) accept that software is a manufacture in its own right and a machine component, ask yourself objectively if there are substantial non-infringing uses of particular manufactures of software. The ready answer is of course not, as software is written with specific utility in mind, utility that very often (but admittedly not always) falls within the ambit of the Useful Arts.

            3. anon, as noted by the minority in Aro II, the “purpose” of 271(b) was to “codify” the law of contributory infringement, not to cripple it, to cabin it, or anything else. No one thought changing the verbiage they way they so as to not modify a verb did was going to be interpreted to add a requirement no one intended.

              What happened in Aro II was a travesty, plain and simple. Obviously, people who do no like the patent system where happy with the decision. Very happy. Just ask Intel, or Cisco, and Microsoft their views of whether we should provide a legislative fix for this mistake. I can predict their answers.

              On software, clearly the sale of software infringes under 271(b) — but for the requirement of “knowledge” of the infringement requirement.

              What a joke this has become. Coddling infringers has become a national pastime.

            4. What a joke this has become. Coddling infringers has become a national pastime.

              Sadly, this is something we are in full agreement on.

          2. Ned,

            I don’t see how the minority’s position can be squared with the plain language of 271(c) other than urging the use of legislative history to override the statory text – “knowing the same to be especially made or especially adapted for use in an infringement of such patent”

  7. May I politely suggest that smart lawfirms can recognize if the claims against a class of similarly situated small fry are bogus because the patent is invalid or the products clearly do not infringe. Such a lawfirm can find DJ plaintiff and then file a class action suit against the patent owner on behalf of the class that attempts to proves this. If successful, may I suggest that Octane Fitness would provide authority for the court to award attorneys fees to the law firm/representative plaintiff.

    Accused infringer, consult your lawyer.

    1. Interesting thought. Where would you find authority in the current statute to award class action damages to collect attorney fees? I mean, would it not be too speculative a damages case to say – well it would have cost each small x, this y amount of legal bills, and we have potential class of n defendants. So my class award should be (x * y * n). Or are you saying the small end user is paying $1k – $5k to license – and since the class action – we all took a license to an invalid patent – damages is now (x * 1-5 * n) and here are the class legal bill to boot? My understanding is that public policy concerning settlements – would make it very hard to reopen a settlement and then claim it as class damages.

      1. No, what I was suggesting in a class action against the patent holder. If the infringement claims are truly bogus, then the court could award attorney’s fees to the class action plaintiff thereby justifying the cost of the lawsuit.

        But I suspect however, in most cases, the claims are not bogus.

    2. Also, may I suggest that if there is a common vendor who would like to protect his or her customers, such a vendor might actually pay for such a class action lawsuit even if they technically are not liable for some reason or another.

      The reason that end users are left helpless is because no one is defending them.

      (Also note, one of the problems with forcing differing infringement defendants into different suits is that they all now must conduct a full defense rather than rely on the big bucks defendants who could carry the load for the small fry.

      Talk about collateral damage.)

  8. It is all the more expensive for end users who lack the technological expertise to challenge validity and infringement claims and cannot rely on in-house technological expertise.

    “Oh No” responds: Really??

    Yes, really.

    Who is getting sued rarely determines how much it costs to defend.

    Except in the case where the person being sued has the technical/legal experience to, e.g., immediately identify the relevant prior art and analysis which, when shoved under the patentee’s snoot, will cause the patentee to quickly scurry back under the rock where it came from and/or look for a softer target with less experience. In other words: the exact point being made in the passage you quoted.

    Try harder, please. Not sure where you spend most of your time but critics and observers of the patent system here tend to be quite a bit more intelligent than the patent bulls you find in echo chambers elsewhere on the Internets.

    1. Try harder, please

      Lovely AOOTWMD – especially as Malcolm needs to ‘try harder’ to understand actual law.

    2. Except in the case where the person being sued has the technical/legal experience to, e.g., immediately identify the relevant prior art and analysis which, when shoved under the patentee’s snoot, will cause the patentee to quickly scurry back under the rock where it came from and/or look for a softer target with less experience.
      Sorry … you still need to get a patent attorney (and probably get an opinion) whether or not you have the technical/legal expertise to understand the issues.

      1. sorry — you still need to get a patent attorney

        No. I don’t “need to get a patent attorney” if I already employ one in-house, or if I am one, or if I am otherwise competent to do the correct analysis myself. Why would I waste the money on another patent attorney when I have all the tools at my disposal to tell you in no uncertain terms why you need to eff off? Plus you’ll end up being made a complete fool of all over the Internet and I’ll never let anyone forget it. Is that what you want? Because that’s what you’ll get.

        Seriously: keep digging. It reflects really well on the class of lowlife patent agents/”innovators” whom you represent. Maybe try using more bold and italic fonts like your li’l buddy “anon” does when he rants himself into a corner. That’s always sooper dooper compelling and doesn’t make you look silly at all.

        1. Malcolm does not “need” anything.

          Don’t forget, that he is the one, (supposedly a patent attorney) that also started a new business in an art field known to have patents and felt that he “did not need to” do any prior art search or clearance activity.

          Combining “need” and Malcolm’s feelings will result in some bizarre combinations.

        2. No. I don’t “need to get a patent attorney” if I already employ one in-house, or if I am one.
          You don’t pay your in-house attorneys anything?

          or if I am otherwise competent to do the correct analysis myself
          Nomination for ironic statement of the day (make that of the year).

          Plus you’ll end up being made a complete fool of all over the Internet and I’ll never let anyone forget it. Is that what you want? Because that’s what you’ll get.
          Big talk from a small man.

  9. Has this academic review considered an improved UCC patent infringement warranty for product sales that is not so easily avoided by disclaimers buried in the seller’s product sales documents?

    1. I am actually working on an article on private ordering solutions and considering current UCC protections. The new role of the end user is a complicated phenomenon and we will need a combination of resolutions to address it.

    2. Indeed. Furthermore, I recall a while back a microsoft policy of protecting its end user from infringement claims. If codified into a contract – like a license to the MS-OS – would this not be enough to give MS the right into intervene in a case – or DJ on behalf of its end users? So MS turned it into a feature of purchasing the MS-OS.

      1. While there is an intersection in contract law between merchants and “end-users,” a critical point to keep in mind (no matter if Malcolm lives next to that great river in Egypt) is that patent law NEVER has excused infringement on the basis of any such “end-user” designation.

        Let’s keep our eye on the ball as to how patent law is actually written, and let’s not be distracted by all the dust-kicking.

  10. Prof Bernstein: end users are likely to become even more prevalent in patent litigation, as 3D printers become more popular, making it more likely that an individual or a small business will make an infringing item that will expose them to patent liability.

    An individual or small business who really wants a patented item for their “personal use” (i.e., not to re-sell) but who doesn’t wish to pay has always had the option of taking the risk and making the item by themselves or having a single copy of that item “custom made”. It’s true that, for certain patented items, the ownership of a 3D printer will make it easier to manufacture those items without employing one more third parties. But it’s also true that if the patented items are offered for sale at reasonable prices and/or are of a substantially higher quality than a 3D-printed version of the item, most consumers will simply buy the item.

    For items perfectly suited to 3D printing, where “standard” manufacturing methods provide no advantages, future (and some current) potential applicants may consider finding a better use for their money than investing in a patent. Again, this is nothing new: the same considerations have been relevant to every patent applicant whose invention is something that can be easily recreated by the typical homemaker. Indeed, the typical homemaker invents all sorts of ad hoc “solutions” to life’s various problems during his/her life and it is the rare case that any of those solutions are deemed worthy of patenting for this very reason. Obviously, this is a feature of our patent system, and not a bug.

    1. it is the rare case that any of those solutions are deemed worthy of patenting for this very reason. Obviously, this is a feature of our patent system, and not a bug.

      LOL – a woefully incorrect reading of patent law.

      1. a woefully incorrect reading of patent law.

        Another bit of drive-by drivel without explanation (because there’s no thought behind the drivel, as usual).

        1. Perhaps “patent history” would have been a somewhat better response.

          Just about anything would be “somewhat better” than the drivel he posted. Please free to rewrite TB’s comments for him anytime. He can use all the help he gets.

  11. One, though not the only, reason for this phenomenon is that indirect infringement has been curtailed to such an extent that end user suits are often the only path to a meaningful recovery.

    1. indirect infringement has been curtailed to such an extent that end user suits are often the only path to a meaningful recovery.

      “It’s the defense bar’s fault that we are forced to sue consumers!!!!”

      LOL — we’ve heard that one before!

      The fact that the types of “inventions” that are increasingly being claimed are obvious or ineligible uses of pre-existing technology would never enter into the typical patent txxbxgger’s beautiful mind.

        1. I’m also not the anon you like to fight with.
          Ha ha … if anon wrote “the sky is blue today,” MM would reflexively write “the sky is pink today.”

          1. reflexively

            Please see the work of your yapping li’l dorkbuddy “anon” on this thread if you want to understand what “reflexive” commenting looks like.

            1. wah wah wah Malcolm.

              Hey – you can at anytime stop supplying the ammunition my “reflexively” making fun of you.

              (or maybe you cannot – you do seem incapable of posting in an intellectually honest manner)

            2. Please see the work of your yapping li’l dorkbuddy “anon” on this thread if you want to understand what “reflexive” commenting looks like.
              No need. Your work is a perfect example. Plus, the added bonus of your stuff is that you can almost always find great examples of thread hijacking therein.

            3. His hijacking tendencies stem from his very limited short script, and his obsessive nature against the largest area of innovation today.

              Supposedly, he is a patent attorney, and yet, he continuously displays such anti-patent tendencies that immediately draw one to conclude that he is either a) lying about what he does, or b) seriously disturbed by the cognitive dissonance of creating property of which he is fundamentally opposed to. An argument can be made for either a) or b), given his oft-stated view that intellectual honesty is not required for blog posts (which would be in conflict with advocacy of an attorney even on a modern social media). If b) applies, I would wish that he follow my well-intentioned advise and find a profession in which he could believe in the work product produced.

        2. I’m explaining the reality without passing judgment.

          That’s wonderful and almost cookie-worthy. I care very little about what constitutes a “meaningful recovery” for some millionaire grifter exploiting the patent system with claims that were so poorly written that he/she can’t find a manufacturer to sue directly, or is too afraid to pursue a manufacturer that is likely to fight back and tank his/her typically invalid or ineligible claims.

          I’m also not the anon you like to fight with.

          Maybe you should try a different username if you wish to avoid any confusion. If you need a suggestion, I can come up with some for you and you can pick the one you like best.

          1. I care very little

            lol – redundant – already known.

            If you need a suggestion, I can come up with some for you

            like friend(s) of the court, Vivika M, or a whole host of sockpuppets that Malcolm never uses… ;-)

    2. It is hard to believe that any patent attorney could still be clueless to the impact of all the media, business world, and Congressional uproar in the past year over the type of patent trolls who have been sending thousands of threatening letters to small end users demanding license fees for, e.g., using the internet, using a fax machine, etc., resulting in lawsuits filed by several state attorney generals and a bill rush-passed by the House. [The kind of trolls who have deliberately avoided actually suing anyone on their alleged patent rights, and avoiding threatening the suppliers. who could afford to defend.]
      That is the real subject here, not the rare case of needing to sue a large end user to get infringement damages because the customer is the only direct infringer of a method or combined apparatus claim for which no supplier meets the requirements for contributory infringement or inducing infringement, and takes no warranty responsibility.

      1. Paul: It is hard to believe that any patent attorney could still be clueless to the impact of all the media, business world, and Congressional uproar in the past year over the type of patent trolls who have been sending thousands of threatening letters to small end users demanding license fees for, e.g., using the internet, using a fax machine, etc., resulting in lawsuits filed by several state attorney generals and a bill rush-passed by the House.

        But we also know that this “type” of patent troll doesn’t really care about any of that stuff. All that matters to this “type” of patent troll is “how can I make as much money off this patent as quickly as possible with as little risk as possible without clearly breaking any existing laws or being disabarred”. Everything else is irrelevant to them. If you shut this “type” of patent troll out of the patent system entirely, they’ll just come up with another grifting scheme because that’s all they know how to do.

        What’s really “hard to believe”, Paul, is that the very same “type” of people have suggested that you and I are “jealous” of their awesome livelihoods. But it happens routinely. It’s happened right here in these threads, believe it or not.

      2. …real subject here…

        paul, see post 1 – let me know what “real” change in the law has happened.

        Thanks.

        1. Re your question: “what real changes in the law have happened?”
          Examples: The number of states in the process of passing new legislation against this type of patent troll conduct, and the development of new case law by states attorney generals. Two recent Supreme Court “High+Octane” decisions (plus a recent major Fed. Cir. Rule 11 decision) making significant changes in the law in obtaining attorney fee sanctions, among others. Large scale use of IPR’s to invalidate patent claims failing to distinguish prior art. Increasingly sustained 101 S,J. motions against overly broad patent claims. Much worse may come for patents in general, especially if the only “insiders” response is a denial that there is any problem.

          1. paul, please try to address my actual point and not kick up the dust that the “Troll” witchhunt brings with it.

            The witchhunt is real and active- that is not the point of my post. Look to and address the driving federal patent law.

            Stay on point.

      3. Paul, but the lack of making this very distinction, that the so-called end user is actually the first and only direct infringer is what causes angst. In some cases, the so-called manufacturer is not even liable for contributory infringement because what they sell is a staple, or because they did not know of the patent or believe it is invalid, etc.

        In order to be an oppressed end user there has to be a big fish who is a direct infringer. Otherwise, we are going to put into place prohibitions on suing a so-called end user when the end user may be the ONLY ONE LIABLE.

        1. Ned: In some cases, the so-called manufacturer is not even liable for contributory infringement because what they sell is a staple

          Can you provide an actual real world example, Ned?

          I’m going to go waaaaaaaaaay out on a limb and suggest that in 99.9% of the cases where this is true and the only direct infringer is a consumer of the staple in question, the patent being asserted is invalid or ineligible junk. As for the remaining 0.1%, I’ll confidently speak for 99.9% of the rest of society: we’re very happy to throw that inconsequential baby out with the bathwater (to borrow a phrase).

          Patent law needs to be returned to its proper role in promoting the development of new technology and not the promotion of “patent monetization schemes” which involve little more than writing prophecies about how people are going to use staple articles of commerce.

          1. MM, there have been several cases discussed here. One involved Microsoft whose product was a staple and it was the end user who used it in an infringing manner

            One involve the ITC where the staple fingerprint scanner was imported, but the end user used it with his own software to infringe a method.

            One involved Cisco who sought to intervene to protect its customer only to be denied because the boxes it was selling were staples and it was the use by the end user that was the infringement.

            Then we get the whole “knowledge” of infringement theory of defense to 271(c) and (b) that protects sellers who genuinely believe their products do not infringe or that the patent is invalid. They are not liable. The only people who are liable are direct infringers.

            And the beat goes on.

            Only when what the manufacturer is selling is a direct infringement do we really have a situation where the end user possible could be protected. The law calls these end users “mere” customers who do nothing to add value.

            1. And may I add that requiring knowledge of infringement requirement is bogus. That forces all liability on the end user who may otherwise be totally innocent. These line of case are the height of immorality and bad law, where the guilty are let free and the innocent punished.

            2. These line of case are the height of immorality

              ROTFLMAO

              Please come back to planet Earth where the world does not revolve around patent owners.

            3. the ITC where the staple fingerprint scanner was imported, but the end user used it with his own software to infringe a method.

              Was that really an “end user”? Not how I remember it. Also, as I recall, that was some seriously junky patent being asserted.

              One involved Microsoft whose product was a staple and it was the end user who used it in an infringing manner

              Could you be more specific? What were the claims being asserted? Was Microsoft sued? How was Microsoft involved if it was “not even liable for contributory infringement”?

              Cisco who sought to intervene to protect its customer only to be denied because the boxes it was selling were staples and it was the use by the end user that was the infringement.

              Was that a case where “the so-called manufacturer is not even liable for contributory infringement because what they sell is a staple”? Or was that case where the manufacturer was likely liable but was not sued simply because the patentee didn’t want to deal with the manufacturer’s attorneys?

            4. MM, on the cases, they were all discussed here on Patently-O. Cisco sought to intervene, but was denied because what it was selling was a staple. Microsoft was sued for contributory infringement and found not liable because, again, it is software and substantial noninfringing uses. We also know about the fingerprint scanners. These all recent cases within the last year.

              On the immorality front, I have been in cases where we were sued for infringement where we did nothing wrong. We simply ordered a product from a third-party without specifying anything particular about that product other than it work for its intended purposes. That vendor put something into what they sold us that caused our products to infringe. We did not ask them to do that. They did it to us without our knowledge and consent.

              But in their defense, the product they sold us had substantial noninfringing uses. Thus they were not liable for contributory or inducement infringement. And we in turn did nothing wrong. We were not responsible for the design feature that caused our products do infringe. It was our vendor that infected our products.

              In a way, the claim covered two old elements combined. Today, under KSR, such claims probably would not be deemed patentable. But back in the day, the law was not so clear.

              We have also been on the other end of that equation where a third party requested indemnity of us for a combination they did. There was nothing special about our product – it was a staple. Thus we denied indemnity. But I suspect that the problem again was the same problem in that the patent combined old elements where the combination allegedly was new. After KSR, such may no longer be the case.

              Regarding the morality question, it does not have anything to do with patent owners. It has to do with letting the party that cause the infringement off the hook at the expense of one who is completely innocent.

              Imagine a products liability case where the thing that cause the product to fail and cause harm was a component supplied by a third party. You, the product vendor are on the hook for full damages. But how can it be that the person who gave you the defective component be completely off the hook on damages?

              Really? REALLY? This cannot be. The law here is wrong.

  12. Only partially meant in a snide tone, but when did the law concerning patent infringement change so as to newly include end users in the definition of infringement?

    (yes, the answer is that the law itself HAS NOT CHANGED)

    1. Patent litigation is exorbitantly expensive. It is all the more expensive for end users who lack the technological expertise to challenge validity and infringement claims and cannot rely on in-house technological expertise.
      Really?? Who is getting sued rarely determines how much it costs to defend. Even sophisticated parties need to hire patent attorneys.

      From 35 USC 271 … “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” You use the invention (end user or not), you are an infringer — plain and simple.

    2. when did the law concerning patent infringement change so as to newly include end users in the definition of infringement?

      Nobody has suggested otherwise.

      When did you create this strawman?

      1. and yet, we have many many many posts (and even the author of the thread) implying directly otherwise.

        Your “nobody suggested” is dead wrong – and yet another Malcolm FAIL.

      2. Let’s make explicit what is so often left implicit (and is left implicit in the guest author’s musings): patent infringement by way of use (and that would be strict liability style) is NOT limited to merchant actors.

        Discussing the topic of patent infringement as if somehow this was a given plays to the attempt to make patent infringement a contract-law style “efficient breach” – and less meaningful right.

        Pay attention.

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