Federal Circuit: Administrative Agencies Can Make Rules, But Must Also Follow Them

by Dennis Crouch

Align Tech v. USITC (Fed. Cir. 2014)

This Section 337 appeal is largely focused on the civil procedure associated with litigating cases before the United States International Trade Commission (USITC). In general, Section 337 investigations are conducted by administrative law judges (ALJs) who are employed by the USITC to determine various issues. ALJ decisions are then reviewed by USITC Commission itself (a six-member panel appointed by the president). The Commission does not, however, review mere “initial determinations” made by ALJs but rather awaits “orders.” 19 C.F.R. § 210.1. This rule is akin to the rule against appealing interlocutory orders. Although the initial-determination-rule was created by the commission, the commission does not have the power to disregard the rule in an ad-hoc basis. In this case, the Commission reviewed an initial determination by an ALJ and that decision has been reversed on appeal – based upon a finding that the Commission did not yet have authority to review the ALJ decision.

The underlying issue here involves Align (InvisAlign) orthodontic patents and trade secrets. See US Patent No. 6,685,469. The patents at issue were invented by Zia Chishti, Align’s co-founder. However, Chishti left the company and formed a competitor OrthoClear. Align then complained to the USITC asking for an importation ban based upon both patent infringement and trade secret misappropriation. A 2006 consent order from that USITC case resulted in an agreement that OrthoClear would no longer import infringing products or those “in violation” of the trade secrets. The present enforcement action is against “ClearCorrect Pakistan” that Align argues is the successor to OrthoClear. The ALJ order in question here was a denial of ClearCorrect’s motion to terminate the enforcement proceeding. However, the Commission reviewed that decision and terminated the enforcement proceeding – concluding that ClearConnect’s processes were not included in the original order and therefore not subject to the original consent order. As discussed above, the Federal Circuit now reverses – finding that the “Commission exceeded its authority by reviewing the order below.”

= = = = =

This decision was written by Judge Chen and Joined by Chief Judge Prost. (Judge Rader was originally on the panel). This pair will likely be the drivers of administrative patent law that will continue to develop as the USPTO asserts its substantive rulemaking authority under the America Invents Act and determines a growing number of contested post-issuance reviews. The decision here stands for the strong principle that, although administrative agencies have the power to make their own rules of procedure, the agencies can be held to those rules once set.

89 thoughts on “Federal Circuit: Administrative Agencies Can Make Rules, But Must Also Follow Them

  1. A 2006 consent order from that USITC case resulted in an agreement that OrthoClear would no longer import infringing products or those “in violation” of the trade secrets.

    I’m not sure what the “trade secrets” were nor am I terribly interested one way or another.

    But “data” is ineligible subject matter and can’t be protected by a patent. Merely sending somebody “data” (e.g., a patent application or any other document that describes a product) does not constitute “infringement” of any enforceable patent claim.

    Data is data. It’s information. It’s not protectable with a patent.

    1. However, a method of manufacturing something is patent eligible (happy?) and such a patented method might include, as a step, the transmission of particular kinds of data.

      1. Les a method of manufacturing something is patent eligible (happy?) and such a patented method might include, as a step, the transmission of particular kinds of data

        It might. Of course, if all those others steps are old and conventional, of course, then you are up shirt creek without a paddle because your claim is then protecting just the transmisson of information in that public context.

        But you knew that already, Les. Maybe you didn’t understand it. But you were certainly taught the fundamentals. Why, even the Supreme Court “gets it” now.

        Nobody could have predicted.

        1. Why, even the Supreme Court “gets it” now.

          As evident by their record high approval ratings, Malcolm’s point here is not only important, it is determinative.

          No wait, it is not.

        2. Huh?

          All things patented are combinations of known components. What is new is the particular combination or arrangement.

          Remember the Wright Flyer …wood, rope and cloth…. all known..

          1. Remember the Wright Flyer …wood, rope and cloth…. all known..

            Indeed. But try to get a claim on an “improved” flyer that differs from the old flyer only by the addition of an old banner hanging off the tail, wherein the banner has “new” information printed on it.

            It doesn’t matter how awesomely surprising or useful that information is. Such a claim is unenforceable j nk.

            I’m still not sure why people bother to object to this basic stuff. Even Billy now admits that he understands the principle.

            1. And yet another vap1d post in the meme of disregarding his own volunteered admission as to knowing and understanding the controlling law of the exceptions to the judicial doctrine of printed matter.

              @tta boy Malcolm.

              1. Not sure what is so funny about your repeated use of examples that betray a dissembling nature of the controlling law of exceptions to the judicial doctrine of printed matter.

                You keep on posting comments of the type: “and banner (or coffee mugs, or cookbooks…) has new information printed on it” as if that has ANY connection to a legal position (when it clearly does not).

                You seem to want to point to Set B printed matter over and over and over and over again, ignoring the fact that Set C printed matter has been well determined to have patentable weight.

                You offer ZERO comments of any substantive weight as to that discussion, but instead just trot out items from your short script, ignoring a well-proven point of law, and misrepresenting a material item of law. Such purposeful – and repeated – misrepresentations are clear ethical violations of the ABA model rules of professional conduct.

                If you want to advance a discussion as to why the controlling law should be changed – then do so – and please desist from the dissembling.

                Your “rejoinders” say nothing. What is this “Billy” notion that you think is so clever? It’s as if you post solely to see your own posts (and yes, we already know that you do not care for actual conversations).

                On the other hand, the, um, ‘editorial controls’ seem to think that “billy” says something. Not sure what Prof. Crouch sees in that, and the past calls for explaining any type of consistent rational editorial standards have fallen on deaf ears, so the only response to that editorial standard appears to be: c’est la vie.

              2. “betray a dissembling nature of the controlling law of exceptions to the judicial doctrine of printed matter.”

                A dissembling nature of controlling law of exceptions to a judicial doctrine of printed matter was betrayed! Betrayed I say!

    2. MM, ” Merely sending somebody “data” (e.g., a patent application or any other document that describes a product) does not constitute “infringement” of any enforceable patent claim.”

      “Merely” is the key here. Such cannot alone constitute direct infringement. Neither is information an article. Neither is information a component of an apparatus.

      However, electronic data communication can be part of an inducement. Thus the pending en banc review of the decision by the Feds that ITC has no jurisdiction over inducement infringement is so important.

      Moreover, if the Feds were to allow the ITC to embargo digital data transmissions into this country, just how would they do it? I can imagine the ITC erecting a second NSA apparatus to sniff all incoming traffic for violations. Do we want that as a people?

    3. MM, Federico said that, under 101, old compositions and devices were ineligible under 101, citing In re Thuau. I quote excellent the language from the case that sound in arguments you have often made here. Could you review this post and comment please?

      link to patentlyo.com

      1. Your quote is wrong as I demonstrated – you conflate patent eligible and patentable.

        AGAIN – from Frederico:

        Subject matter for patent (section 101). One of the basic and most important sections of the old statute was R.S. 4886 [section 31 of former Title 35, U.S.C.A.], which specified the subject matter for which a patent could be obtained and recited conditions for patentability. In the new code, this section has been divided into two sections, section 101 relating to the subject matter for which a patent may be obtained, and section 102 which defines statutory novelty and states other conditions for patentability.

          1. Look at the year of Thuau, Ned – and then look at the context (for which I supplied).

            You keep on wanting to pretend that 1952 never happened.

            1. anon, the person is not being serious here is yourself. Frederico cited the case and said nothing in the act was intended to overrule that case. Yet you insist that Congress did in fact overrule that case in some fashion, even though it never changed the words of 101 except in a minor detail, substituting process for art.

              Your thesis that Congress overturned all prior case law is inconsistent with the purpose of Congress in codifying the law as recognized by the courts.

              At some point in time, anon, you should stop trying to rewrite patent law by ignoring cases decided prior to 1952, and then re-creating patent law from scratch as did your mentor, Judge Rich.

              1. I am fully serious – I have even provided the direct context surrounding your mis-cited Frederico comment, providing the background (which supports my views and negates yours).

                Your version of the cite is being misplayed because you are neglecting the overall discussion that Frederico was talking about. Note how you continue to attempt to conflate patent eligibility and patentability – wanting to pretend that the 1952 Act did not change the law in this regard.

                Have you EVER acknowledged this change in law?

                Serious question, Ned.

                And note – I have given you the words not of Rich, but of Frederico – so your pathet1c attempts at kicking up dust are to no avail.

                Your bland response? Not in context? Do you stick by that? Given that your quote is snatched from the middle of the conversation (of which I have supplied), your attempt is beyond amateur. Do you really think that no one can pick up Frederico’s commentary and read for themselves and see that it is I that have placed the conversation in proper context and that it is you that has attempted to twist the words to fit your agenda?

    4. Completely off topic comment, but I guess when you’ve got only one gong, that’s the one you bang. Often. Loudly. Monotonously. It would perpetually diminish your online reputation, except that zero cannot be diminished.

  2. The elephant in the room for an agency that must follow its own rules is the mantra of 6 that he does not have to do so, instead, he “must” follow the marching orders given to him by his SPE.

    Onwards to Lemming Hill.

        1. But “Oh No” never violates anything!

          He’s super dooper principled and stuff. You can bet your life on that.

          None of the patent lurvin’ sooperstars around here ever do anything unseemly. They just want to innovate stuff and make Merka sooper awesome. You can trust them.

        2. What on earth makes you suspect that? I always cite pretty much anything even remotely of interest I’ve found and rarely even put anything new on the record after foam, much less rely on anything newly cited for another rejection. And I always match limitations.

          1. What on earth makes you suspect that?
            I’ve read what you’ve written over the years.

            And I always match limitations.
            If you do, congratulations. Perhaps you are a shining example of what an examiner can aspire to be. A low bar, mind you, but one that most examiners would be hard pressed to achieve.

            1. But do you clearly explain the pertinence of each citation?

              Me thinks not.

              Pasting claim language and inserting “(pp 27-34)” at various points in the claim language is not a clear explanation of the pertinence.

            2. Meh idk about that, most examiners I know are pretty particular about putting in their matching. Saving perhaps some primaries. Frankly I think the office should get away from that myself. If the short forms were good enough for our forefathers then they’re good enough for us.

              1. You forget an important assumption about your forefathers 6 – most of them had a clue beyond the cut and paste techniques and most of them actually read the entire applications and did not just do claim keyword searches.

                You really should avoid comparisons that do not work in your favor.

              2. “most of them had a clue”

                Riiight. Most all the old examiners were the best of the best and just about all “had a clue” moreso than these little whippersnappers!

                #getoffmylawnyoukids

                “and most of them actually read the entire applications”

                Lulz. Most of the “entire applications” were ~3 (or maybe even a whole 4) pages long with 5-10 claims. Imma give them a /golfclap. Oh and lets look at their “subclasses”, haha 100 refs MAX. It’s pretty easy to do like 10 subclass searches per app when most of those subs have 30 refs in them. Nobody told you guys to start making your apps ~10 times as large, claiming twice as much on avg, and meant for classification systems to become a big ol joke.

                Take your rose colored glasses off.

                Let’s be honest, probably even the worst examiners are still reading more disclosure on avg., looking over more claims/limitations, and reviewing more prior art (regardless of whether they got that art in a word search or a classification search). On the whole, if you took your rose glasses off for a minute you might be surprised at how well the examination system is managing to limp along.

              3. “lol – and yet the number one complaint is that examination still blows.

                Why is that 6?”

                A huge combination of factors. Which I think we’ve probably been through several times so I will not repeat.

              4. You (the royal you) are not doing your Fn job.

                So let’s hire more Examiners and give them more time to do their job.

                Or let’s just eliminate the major source of cr xpola that’s poisoning the patent system.

                Right, Billy? LOL. Nope. Billy just wants his patent and he wants the PTO to tell him what the invention is. After all, it must be in there somewhere because Billy knows — he just knows — he isn’t as st 00 pit as he appears to be. On the contrary, Billy is really, really, really important and serious.

                Sure he is.

              5. So let’s hire more Examiners…

                More of the same CRP is just more CRP.

                …and give them more time to do their job

                Perhaps a start, but I have posted in depth recommendations for reengineering the examination in the past (start with not treating every application in a one size fits all widget mentality).

                As to “eliminate” – LOL – most definitely not, as that what you consider CRP is the leading edge of technology and innovation in the world today (your invitation NOT to partake of that which you do not want to afford protection to is still there with the Amish). Funny, how you don’t seem capable of putting your money where your mouth is.

                As to the rest of the “Billy” and Serious” memes, sorry, but they just don’t make any sense. You just appear rather silly with this latest inability to post with any sense of decency.

      1. That cannot be a serious question 6, as I have quoted you chapter and verse many times the portions of the rules – both at the CFR and MPEP levels – (under which you are bound) on the proper way of examining a complete application – as opposed to mere claim keyword searching.

        The point here, is that while the MPEP itself does not have the force of law binding applicants, the portions therein that dictate how you are to do your job DO bind you. In case you missed the title of this thread, let me repeat it for you: “Administrative Agencies Can Make Rules, But Must Also Follow Them

        Notice the word “must”?

        1. “The point here, is that while the MPEP itself does not have the force of law binding applicants, the portions therein that dictate how you are to do your job DO bind you. ”

          So you assert Mr. OCPD. Mere words in a manual do not constitute “rules” in the context of this case. For those you look to 37 CFR.

          1. Nothing at all “OCPD” here 6 – the title was penned by Prof. Crouch, not me.

            You are projecting now at the wrong person.

            (and the regulations written in mandatory tones do bind you, pal)

            1. “the title was penned by Prof. Crouch, not me.”

              The good prof doesn’t assert that what the MPEP says is a “rule” or is necessarily “binding”. That’s all you buddy boy. Though I know you’ve been egged on by some other people in this regard.

              1. “LOL – the MPEP is a part of the rules for your agency, M0r0n.”

                Like all of your compulsive lies that “could” be true. There just isn’t anything, other than your say so, that indicates such. Find someone or something official that says that and put it here. Then I will belieb your compulsively lying ar se.

              2. Nothing “compulsive” nor a 1ie about this 6.

                Perhaps you should take up some study of federal agency law to see why.

                This is one of those purely objective facts that are true regardless of whether it is I that shares this with you, or whether you get off your duff and discover this for yourself.

                You wanting to project this as some type of “condition” on me is most odd (typical, but most odd).

              3. From the forward:

                “It contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application. The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations

                Examiners will be governed by the applicable statutes, rules, decisions, and orders and instructions issued by the Director of the USPTO and other officials authorized by the Director of the USPTO.”

                While not having the FORCE of rules in title 37, this is still related to (and thus a part of) such as the current procedures that you (examiner) are required (at least in part) to follow.

                It EXPLICITLY states this is a governing document for you.

                You really blow at this 6.

  3. The commission obviously wanted to review whether digital imports are covered.

    From the case:

    “…ClearCorrect Pakistan creates in Pakistan the digital data sets used to create the molds on which the aligners are formed, while ClearCorrect USA manufactures and sells aligners in the United States. The complaint also
    alleged that ClearCorrect Pakistan imports the digital data sets by electronic transmission….”

    The substantive issue was whether the original Consent Order covered digital data sets. In fn. 10, the court said,

    “The Commission here concluded that even though it has jurisdiction and authority, as a gen eral matter, over the importation of digital data through electronic transmissions, it has a historic practice of requiring that cease-and-
    desist orders explicitly reference digital data, and this practice both logically extended to consent orders…” The court suggested the Commission was in error in this conclusion.

    Fn. 8, We assume, for purposes of this opinion, that the Commission has statutory authority to exclude the importation of digital data that enters the United States through electronic transmission. Indeed, the Commission
    believed that it would have had such authority in this case had the Consent Order expressly referenced it. Id. at 69. But we take no position on whether Section 337 permits the Commission to exclude such importations.

    “We do not address whether “any other articles manufactured” in the Consent Order covers the accused digital data sets. The Commission took no position on
    this issue, J.A. 72,”

    1. Are electronic transmissions covered at all by 337?

      If electronic transmissions are covered, just how does the ITC enforce such exclusion orders?

      1. Wait a minute…. “transient” signal transmissions can be covered under 337?!?

        Why would such ephemera be statutory under 337, but not under 101?

        What of Morse?!? What of Morse?!?!

        … -.-

        1. Les, one can now see why the ITC is fighting so hard on the inducement case.

          Electronic transmissions are not articles.

          However, they can induce the construction of infringing articles (3D printing.)

          But, if the ITC has no jurisdiction over neither inducement nor electronic transmission, its exclusion order are easily evaded.

  4. The commission obviously wanted to review whether digital imports are covered.

    From the case:

    “…ClearCorrect Pakistan creates in Pakistan the digital data sets used to create the molds on which the aligners are formed, while ClearCorrect USA manufactures and sells aligners in the United States. The complaint also
    alleged that ClearCorrect Pakistan imports the digital data sets by electronic transmission….”

    The substantive issue was whether the original Consent Order covered digital data sets. In fn. 10, the court said,

    “The Commission here concluded that even though it has jurisdiction and authority, as a general matter, over the importation of digital data through electronic transmissions, it has a historic practice of requiring that cease-and-
    desist orders explicitly reference digital data, and this practice both logically extended to consent orders…” The court suggested the Commission was in error in this conclusion.

    Fn. 8, We assume, for purposes of this opinion, that the Commission has statutory authority to exclude the importation of digital data that enters the United States through electronic transmission. Indeed, the Commission
    believed that it would have had such authority in this case had the Consent Order expressly referenced it. Id. at 69. But we take no position on whether Section 337 permits the Commission to exclude such importations.

    “We do not address whether “any other articles manufactured” in the Consent Order covers the accused digital data sets. The Commission took no position on
    this issue, J.A. 72,”

  5. Does the mere fact that “trade secretes” are alleged to have been violated here imply that the patents fail to disclose the “best mode”?

    1. Does the fact that you refer to a”mere” fact suggest that you already know the answer to this question?

    2. Best mode is subjective at time of filing, and can be deemed “best” by any number of different parameters (and thus NOT be coincident with the preferred manufacturing method which can thusly remain under trade secret protection.

      There is no issue of which you wish to highlight.

      1. So you can prefer to manufacture something in a way other than the best way? I’m skeptical.

        I think the criteria used to evaluate the various ways to manufacture something, have to be the same criteria as those used to evaluate with mode is best for disclosure purposes. Else the requirement is meaningless.

        1. It matters not at all whether you are skeptical Les.

          “Best Mode is subjective and that is a fact. It is also “best mode” for the inventor, as opposed to the corporation, and any reasonable person would quickly understand that world of difference can exist between the two.

          Your view is sweet, but utterly naive.

          1. Smart money disagrees with you, methinks.

            Seems to me that it is still a requirement to disclose the best mode to the patent office. Seems to me that this, at best, creates an ambiguity in the law, which means you read the intent of the legislature. If that is the case, what do you think the outcome will be? Do you think any court will interpret the statute as saying, “the legislature meant to undermine the entire patent system by allowing a patentee to keep its trade secret but still get a patent on it?”

            I think what it will do is highlight the need for a defendant to show that the patentee purposefully hid the best mode. That hardly makes the best mode “meaningless…”

            1. J,

              You miss the point (and badly so).

              Whetehr or not it is a still a requirement is a smoke screen. One needs to look at how that requirement plays out. TO do so, one must recognize and understand the nature of the requirement – that nature is a subjective view of the inventor (and explicitly NOT the view of the inventor’s employer who in most likelihood would have far greater impact as to any sense of commercialization efforts. Further (as noted) “best” being a purely subjective mode, falls to the whim of the inventor. There is no legal requirement of best meaning most beneficial to society ( which I think is the aim that you want to imbue to the requirement).

              Your naivete is easily defeated by the simplest of attorneys. Congress realizes this in the AIA and thus removed any sense of sting from the requirement. It is a paper tiger.

              1. You are confusing the issue. True, best mode goes to the question of subjective view of the inventor (and joint inventor, and since the inventor’s employer are often listed as the inventor as well, I don’t think your inventor/employer distinction matters at all), and this what distinguishes it from enablement. But that doesn’t make it meaningless. Take the following example…

                I claim an invention that can churn butter at low energies, and the data unquestionably shows that configuration A does it better than configuration B. I know of both configurations. I disclose only B. Do I lose my patent on these facts? Probably. Why? Because, objectively, A is better than B. This is enough circumstantial evidence to conclude that I thought A was better than B.

                I can’t discern what your position is. Is it that the best mode is meaningless because of its nature, or because the law was changed…

                “Whether it is a requirement is a smokescreen,” because “of the nature of the requirement.” The nature of the requirement has invalidated patents before, has it not? How can the nature of the requirement make it meaningless if it was meaningful before the AIA? If it was so easy to beat the defense by the “simplest of attorneys”, how has it had any sting to it at all? Then you back to what the AIA has to say about it, which I thought was just a smokescreen.

              2. J,

                Au contraire, I have no confusion over the issue.

                This issue is not strictly one of “meaningless” as that term may be used by the inventor – that’s a miss on your part. The issue rather is whether the best mode has enough of an intersection with any trade secret which impugns “best mode” if the trade secret is kept under wraps. Here, this is where you miss the issue that many trade secrets extend beyond he inventor’s notion of what the inventor may consider best mode, let alone the fact that an inventor may easily have several varying ideas – and any one of which can be considered “best mode” by the inventor in a completely random and subjective manner (for egregious example, best mode to inventor is the one that makes him smile and reminds him of his daughter dumping a bowl of ice cream on her head). The pragmatic best business mode can be something easily quite different.

                As I mentioned, your view (and that of Les’s) is sweet, but utterly naive.

                As to “I can’t discern what your position is. Is it that the best mode is meaningless because of its nature, or because the law was changed…” you too appear not to have been paying attention during the AIA. The reason why the penalty of best mode has been neutered is for the reasons as I have explained: the inventor’s subjective view has little effective relation to an organization’s larger pragmatic practices. The change as reflected in the AIA reflects exactly what I have said.

                This should not be confusing to anyone.

              3. Gosh, it sure looks like that 35 U.S.C. sec 112(a) says “inventor or joint inventor.” And it sure seems like to me that the employer is often listed as a joint inventor. And I know I am “naive”, but I’m putting two and two together and it looks like that if the employer (a joint inventor), regardless of the inventor’s love of his daughter, knows that one mode will make more money than the other, and chooses not disclose the money-maker, that joint inventor is going to lose his patent for violation of 35 U.S.C. 112.

                And if I am wrong about the above, well golly gee, how did anyone ever lose their patent to the best mode requirement?! All you need to do is have the inventor said that this mode made him think of his daughter as well as pretty colors and that is the best mode to the subjective self.

                And given the toothlessness of best mode, it makes perfect sense that the AIA to try to put a death nail in it… of course most scholars said it doesn’t, that the best mode requirement is alive and well. (Ned, maybe the AIA did try to undermine the patent system, but the Court’s will never assume that the legislature intended absurd results.) Tell me, Anon, if you were a patent litigator needing to win the case, would you rather take the side that hid the best mode from the public, or the accused infringer? I would take the latter, because if there was one way for a court to uphold the best mode requirement, you know it’s going to take it.

              4. of course most scholars said it doesn’t, that the best mode requirement is alive and well.

                J, I’d be very interested in your identification of any scholar that says the best mode requirement is “alive and well” after the AIA. I can’t imagine how they could have reached this conclusion, since, as far as I know, the best mode requirement has not been tested in court since the passage of the AIA.

              5. I’m going to back track on “most scholars” because I can’t provide a scholarly review to back it up. But most people I’ve listened to, of whom are scholars, agree with this guy: link to reising.co.

                I apologize for overstating my point. But I will say that, just because it doesn’t win often as a defense, doesn’t mean it isn’t effective (that is, “alive and well”) in encouraging businesses in disclosing the best mode during prosecution.

                Anon:
                Wrong. Corporations can be considered “inventors” or “joint inventors”. link to dallasbar.org.

              6. J the Court’s will never assume that the legislature intended absurd results

                Billy is incapable of understanding this kind of analysis, J.

                I appreciate your efforts, though.

              7. LOL

                J is busily backpedaling furiously and here comes Malcolm to give him that emotional “support” and post an odd “Billy” note.

                You do realize that I my position is completely accurate here, right Malcolm?

              8. J, regarding 102(f), congress’s main target was OddzOn Products. But, rather that repeal that case by addressing it in 103, they instead repealed 102(f) itself.

                Thus, one cannot revoke, or hold a patent invalid, for incorrect inventorship. That is the plain meaning of the repeal.

                This throws into a cocked hat the slogan congress was fed about “first inventor to file.” Really, it is the first to file who gets the patent. Inventorship is a side issue at best.

                But, this is plainly contrary to the constitution that limits patents to inventors only.

              9. Ned’s comment on

                Inventorship is a side issue at best. But, this is plainly contrary to the constitution that limits patents to inventors only.

                quite misses the point that I have tried patiently to explain to him.

                Inventorship is still critical.

                Why is it that Ned clings so desperately to the notion of “validity” as some sort of protective device, when standing exists to protect that which he fears?

                The mechanisms of the AIA did not eliminate the necessity of an invention FIRST inuring to an actual person (contrasting with the legal person of a corporation). Yes, a corporation can now prosecute a patent in a ‘first instance,’ but the requirement of an actual real life person as inventor is still present.

                I will point out (more for interest than any true legal effect) that it was Lemley that was one of the champions of this change to US patent law. He did so on the basis of his views of “Team Inventor.” He views the Corporation as Person to be a legitimate entity – and legitimate enough to question the past penalties of incorrect inventorship as simply being TOO harsh. Large Corp should not be bothered (to a certain extent) with keeping track of the comings and goings of all its cogs, and it was deemed (by Congress – who bought the Lemley position) that the penalty of not getting inventorship exactly right to be just too drastic. So the changes were made to ease the process, reduce the penalty and make it easier to later correct the inventorship.

                NONE of these changes were either aimed at – nor substantively changed – the fundamental aspect that only real live persons are considered “inventors” under US patent law.

                If you think otherwise Ned Heller, you are simply mistaken.

              10. Malcolm’s naked ad hominem of “Billy is incapable of understanding this kind of analysis, J. I appreciate your efforts, though.” while cloaked as a compliment to J, completely misses the valid points that I have posted, as well as ignore J’s shortcomings (which even J seems to recognize).

                I search in vain for ANYTHING of substance added by Malcolm to this conversation and find nothing.

                Nothing at all.

                Malcolm – what is your fricken point? You present no point at all as to anything that would constitute a “incapability of understanding”. You ignore the many points that have been presented. You add nothing at all to the conversation, and seem, well, obsessed with the fact that a person with the moniker “anon” has made a post.

                If you want to join the conversation, by all means join it. But your drive-by insults simply are off-point, off-target and off-subject. They miss everything and add nothing. They even lack ANY semblance of humor, of wit, of effect of lampoon.

                Such pure clutter can be expunged easily, and the contents of the actual conversations present would be made more valuable. THINK man, before you post.

            2. J, I think the drafters of the AIA did in fact intend to undermine the entire patent system in fundamental ways.

              Just for example, the repeal of the requirement that the named inventor’s actually be inventors. The repeal of §102(f), repeals a fundamental aspect of the statute that has been in place since the very beginning. It has always been a defense to validity and the subject matter of revocation that the named inventor did not in fact invent the subject matter claimed.

              The repeal of that statute has thrown the entire AIA into the land of the constitutionally suspect.

              1. Once again Ne d- you miss the point.

                The point is not about validity.

                Even a valid patent cannot be enforced by a pirate.

                The pirate who lacks standing – who cannot obtain a rightful place in the chain of title cannot enforce.

              1. Instead of name calling and mere bluster, perhaps you should pay attention to what is being said.

                You still cling to validity as some type of holy grail. Validity is simply not the be all and end all.

                While do you struggle with this concept?

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