Applicant’s IDS Submission of Litigation Documents Constituted Disclaimer

By Dennis Crouch

Golden Bridge Tech v. Apple (Fed. Cir. 2014)

This case should be seen as a follow-on to Judge Moore’s recent decision in X2Y Attenuators v. US International Trade Commission (Fed. Cir. 2014). In both cases, Judge Moore applies the doctrine of prosecution disclaimer to limit claim scope.

Here, Golden Bridge asserted two patents, U.S. Patent Nos. 6,574,267 and 7,359,427, the first of which had been previously asserted in a different case. In the prior case, Golden Bridge stipulated to a particular definition of the claim term “preamble.” (Note – the word “preamble” is in the claim and its definition is in dispute). Golden Bridge then submitted the stipulated construction to the USPTO for the still-pending application as well as the prior patent that was also under reexamination. Although submitted in an IDS, the stipulated dismissal was never directly or otherwise referred to in the prosecution history.

In the new lawsuit against Apple, Golden Bridge argued that the prior stipulation was not binding and the IDS filing certainly should not be seen as a prosecution disclaimer. Both the district court and now the Federal Circuit have rejected Golden Bridge’s position:

We conclude that GBT’s submissions during prosecution of its stipulated construction for the term “preamble” constitute disclaimer. . . . Here, GBT clearly and unmistakably limited the term.

Rather than merely filing the IDS form, the applicant included a cover-sheet letter asking the USPTO to consider the references stating:

It is respectfully requested that the documents be expressly considered during prosecution of this application.

In the only off-kilter portion of the opinion, Judge Moore identified that statement as important for the disclaimer – finding that “[i]t would have been natural for both the PTO and the public to rely upon the stipulation in determining the scope of the claimed invention.” (In my view, any IDS Submission already includes at least an implicit request that the documents be expressly considered.)

Judge Moore takes care to limit the ruling here by expressly indicating that the ordinary submission of third-party prior art should not ordinarily create any disclaimer. The difference here is that the IDS submission included an admission by the patentee to a court of law that related directly to claim term scope. Judge Moore also indicated that the patentee could have overcome the disclaimer with an express statement in the prosecution history denying the applicability of the prior in-court statement.

I wonder if the case would have been decided differently by Judge Moore if the IDS submission had included a boiler-plate statement that “No aspect of these submissions constitute a disclaimer of claim scope.” Judge Moore is a particular stickler regarding admissions and statements by parties, even when made in boiler plate language. Thus, I suspect that such a disclaimer-of-disclaimers would have been effective here. On the flip side, I also wonder whether the submission of the stipulated claim construction as a public document in Federal Court (even without the IDS submission) should itself be seen as a prosecution disclaimer in itself. Anyone truly concerned with the patents in question would have reviewed the court filings and likely seen them as more important than the prosecution history files of continuation or foreign applications, for instance.

245 thoughts on “Applicant’s IDS Submission of Litigation Documents Constituted Disclaimer

  1. Ned has question information. Look at it this way. Information is one way to measure a property of matter/energy. The machines are processing/transforming the information.

    A property of matter (no one contends that information is not a property) is being changed/transformed.

    That change transformation takes time, energy, and space.

    That is real my simian-minded friend. A machine that does what the human brain does and replaces millions and millions of people, and yet, there are those that say it is not an invention. In 100 years you will be laughed at. Now, Google is paying people to take you seriously.

    Reply
    1. Just remember that your perversion of the truth may be feeding your babies, but that you are intellectually dishonest and a destroyer of our system of laws.

      Remember what you are.

      Reply
      1. So, let’s all just agree that Ned has turned into a smelly @pe and should no longer be taken seriously.

        Reply
        1. I do chuckle at your portrayal, but at the same time hold out an olive branch (I am an eternal optimist at heart):

          Outright dismissal is not required, if Ned can be honest in his use of language and terms of art.

          I think that alone – not twisting what the terms of art mean, and not twisting case law to fit his pre-ordained Ned-IMHO-Law agenda will be enough. One step at a time, viewing the proper context will reveal to Ned that his world view is errant and fundamentally flawed.

          Of course, Ned will have to be able to accept the legal conclusions and follow the path where this logic leads.

          He will have to refrain from his abandoning discussions, refrain from his taking umbrage (unjustifiably), and refrain from denying the context of the terms of art, and how the pre-1952 world was fundamentally changed by what Congress (and Congress’es use of the words drafted by then pre-judge Rich) did.

          It may be asking too much at one time – but at least if he is honest in his use of terms he may be able to constrain himself properly when he seeks to compose a statement that just will not fit reality.

          Reply
        2. Night, to the extent that you continue to erect strawman and put forth inane arguments, you only make yourself appear, how should we put it, simian?

          Reply
          1. Ned, come on. You sound more and more like Richard Stern everyday. You present every conceivable intellectual dishonest argument you can to eradicate information processing from eligibility.

            10′s and 10′s of millions of jobs being replaced by information processing machines. The Information Age (’cause of these machines.) And, yet somehow they aren’t eligible according to you for some voodoo reason. Your arguments are come listen to my tail and you too can believe that these machines are not real.

            Just. Like. A. Witch. Hunt. Isn’t it? Think about it.

            Reply
            1. Tale of course. Witch hunt is what you are about.

              Just think Ned all of these bizarre thoughts are in what? Come on now. You can figure it out. In what? An information processing machine your brain. Funny how you always duck out of arguments when the going gets tough.

              Reply
            2. Night, I don’t present any intellectually dishonest arguments. In fact, I go out of my way to cite case law, to cite statutes, to cite legislative history, etc. etc. etc.

              What do I get from you? Anything at all comparable?

              Reply
              1. anon, any fair reader would recognize a direct quote as not being a 1ie. Any fair reader would recognize a direct quote from the case cited by Federico as not being a 1ie.

                The only person who is dissembling here is you.

              2. Pointing out that Ned has directly prevaricated in his use of the Frederico material is not considered acceptable (while his actually doing so, is?)

                C’est la vie

              3. Your “direct quote” Ned was a but a kernel of truth wrapped in a greater 1ie.

                I showed you the context from which you grabbed that quote of yours, and the key point therein (which you have NEVER admitted to) is the statutory distinction made in 1952 to separate out patent eligibility from patentability.

                Such is critical when you attempt to make a post-1952 101 argument on items that are no longer 101 in the post 1952 patent law.

                I have explained this to you with many resources, from government records, to your own Frederico, to the Cornell Law notes.

                You have NEVER acknowledged what I have placed in front of you, let alone integrate that understanding into your arguments.

              4. Ned, what you do present are intellectually dishonest arguments.

                You present arguments such as let’s make all information processing machines eligible for patentability as long as they are burned into a ROM.

                No intellectually honest person that is educated can deny that information processing machines are eligible under 101. It is simply absurd to contend that building machines to do the work of our brain is not eligible. And, the absurdity of this contention grows with each day that the machines become more proficient at their tasks. Benson had many absurd statements at the time that now are transparent attempts at selling untruths to ignorant judges.
                The only reason Benson hasn’t been overturned is that the SCOTUS has become populated with unforgivably ignorant justices. Our society has bifurcated more and more into the scientifically literate and illiterate. The liberal arts educated feel less and less of a need to understand technology.

                What are some of the outrages? Claiming that information processing methods are natural laws is one.

                Steve Jobs said I don’t mind so much that Microsoft won, but it is so wrong because their product is so ugly. This was prior to the re-birth. That is how I feel about 101. I wouldn’t mind if you were right, but you are using arguments that are intellectually dishonest and intentionally misleading to win.

              5. NWPA, do us all a huge favor and tell us what you mean by “intellectually dishonest”. That term has a definition, and the definition doesn’t fit where you’re using the term.

              6. 6 – use s little common sense and move outside of the narrow band of the scholarly definition.

                The term clearly is amenable to an easy meaning – take it with baby steps if you need to – I am confident in your ability to figure it out.

    2. “The machines are processing/transforming the (measurement of a property of matter/energy).”

      Makes your sentence a little less convincing when you say it that way doesn’t it?

      “(no one contends that information is not a property)”

      I’ll contend that you need some evidence for that. Further though I will say that information is not always a property “of matter”.

      “A machine that does what the human brain does”

      If that be so then why would we allow patents thereupon?

      “In 100 years you will be laughed at. ”

      Yes, for not more vehemently opposing folks like NWPA with his wingnut “theories”.

      Reply
      1. As ever 6, you provide the comical relief.

        Reply
    3. A machine that produces heat may be called a furnace, but no one would think a computer that processes data and does nothing else but produce numbers from numbers, but whose only utility is generating heat would be a new computer.

      We all know that a anything that has mass could be uses a boat anchor. But that is not the kind utility contemplated by section 101.

      Reply
      1. Come back to reality and realize the common sense that computer programs are not written to “g3nerate heat.” The common sense (and intellectually honest) view here is that software is written for utilitarian purposes.

        STOP KICKING UP DUST.

        Reply
    4. Night, information is a term of art describing a state of the universe. The universe moves from state to state according to the laws of nature.

      Information is a statement of fact. Information, like facts, are neither machines, manufactures nor compositions.

      Processing information from one state to another using math or the equivalent is not the kind of information of physics. The information of physics describes changes made by laws of nature.

      But laws of nature are not the subject of patents, never have been. Applications of laws of nature are.

      Neither are mathematical algorithms the subject of patents.

      But your constant paean call for patents on information processing essentially calls for patents on math and on laws of nature.

      Apply information processing to a task, driving a car as in your examples, and we have a patentable application. But you are never satisfied when I say that I have no problem with your examples. You simply resort to calling me names when I resist patenting information or information processing in the abstract as being non statutory. It plainly is non statutory, of course; and courts have held such, uniformly, save for State Street Bank, forever.

      Reply
      1. The universe moves from state to state according to the laws of nature.

        Electrons, protons and neutrons are products of nature, and only combine according to the laws of nature. Only God works from scratch.

        Processing information from one state to another using math or the equivalent is not the kind of information of physics. The information of physics describes changes made by laws of nature.

        This is a logically INconsistent statement. I think that you left out a large chunk of explanation in your use of the term “not the kind of.”

        Neither are mathematical algorithms the subject of patents.

        Too broad a statement – See Diehr, see cryptography. Distinguish between pure math and applied math.

        Apply information processing to a task

        Ignore the point placed before you that software – a man made manufacture and machine component IS made for utilitarian purposes.

        But instead of addressing the points I place before you, it is YOU Ned, that resorts to name-calling of me.

        Why the hypocrisy?

        Reply
  2. OT, but the names should ring a bell:

    The latest papers from the Clinton White House reveal behind-the-scenes concerns about three lawyers who would join the U.S. Supreme Court:
    Ruth Bader Ginsburg,
    Stephen Breyer and
    Sonia Sotomayor.

    Read more: link to nationallawjournal.com

    The 3 that are the new 4 that remains less than 5.

    Each – notably – carried warnings about having a strong judicial activist streak.

    Let me also (in direct contrast, repeat Judge Markey’s words concerning how such “judicial activism” should be noted in regards to patent law:

    “[o]ur concern here is with plain, simple disregard of the statute—
    evidenced in the promulgation of some words and phrases that muddy
    the decisional waters and other words and phrases that render the law
    as written by congress a nullity
    . In sum, when it comes to patent cases,
    the statute is the law—and court opinions containing language and
    concepts contrary to the statute are unlawful.

    Howard T. Markey, Why Not the Statute?, 65 J. PAT. OFF. SOC’Y 331, 331 (1983).
    (italic emphasis in original, bold emphasis added)

    Reply
    1. anon, the SC has acknowledge in Alice is that it is interpreting 101 consistently with the so-called exclusion. I, for one, do not think they go far enough.

      But, let’s set that aside for the moment.

      Rich’s problem was not his penchant for the statute, but his penchant for overruling cases of vintage that were so ancient that the one had difficulty tracing the origin back to a statute.

      His overruling of Hotel Security in State Street Bank was a horse of a different color, however. He was flat out wrong there, as the cases he overruled expressly relied on the statute and not on any exceptions to find business methods and printed matter non statutory.

      Thus Rich himself was a hypocrite.

      Reply
      1. Ned,

        In Alice, 3, the new 4, is still not 5.

        Until you come to grips with that, anything you have to say on business method patents is beyond suspect.

        As to the exceptions to the judicial doctrine of printed matter, until you can square the simple Set Theory explanation I provided to you, likewise, your mouthings mean nothing.

        All you have done is twist reality to fit Ned-IMHO-law and you are purely in fantasy land on those accounts.

        You cannot even answer the simple question as to why Congress would bother writing a limited defense to business method patents, if – as you would hold – they were already non-statutory.

        Thus, it is not Rich who is the hypocrite – it is you.

        Reply
      2. Ned, address whether or not information processing machines are inventions.

        Macro reality: machines replacing 10′s of millions of humans. The machines are doing this based on their software. And, this somehow isn’t patentable? Come on.

        Reply
        1. Night, information is neither a machine, manufacture or a composition.

          A number is useless. What a number represents is an abstraction.

          A 1 has no structure.

          Transformation of numbers from one number to a different number is not a process.

          New or improved machines that facilitate the transformation of numbers are eligible.

          An old machine that does nothing different that it has always done is non statutory under 101.

          Combine a non statutory old machine with a non statutory information process and one gets a non statutory machine or process.

          Tie the use of the number to modifying the functionality of the machine — now that is eligible.

          Reply
          1. A 1 has no structure.

            A space has no structure.

            Morse claim 5 – as contrasted with claim 6.

            Transformation of numbers from one number to a different number is not a process.

            Discuss cryptography (your assertion is simply too broad).

            An old machine that does nothing different that it has always done is non statutory under 101.

            Wrong – it is non statutory under 102, not 101.

            You (again) play the pedantic semantic game of switching from “statutory category” to “statutory.”

            Tie the use of the number to modifying the functionality of the machine — now that is eligible.

            What software, ever created for a utilitarian purpose, does not change the functionality of the machine?

            That is what software is created to do: by its nature, software is geared to functionality.

            Your desperate, fingernail grasp on your agenda is slipping – you cannot use the words of the Court, as they violate your understanding of statutory category, and you have no solace in the words of the Statute itself (you have yet to answer my simple question as to why Congress would write a limited defense to something – that as you hold would not be statutory to begin with – AND WOULD NEED NO DEFENSE). You position then, would make a nullity of Congress’s words (see Markey).

            If you stop trying to spin the Court’s view, you will see that you have been cast adrift from your legal moorings by your very own Court. You either must accept the fact that the Court has acted ultra vires (in relation to Judge Markey’s warning), or you must accept the fact that your own agenda is ultra vires.

            There is no logical legal ground other than these two points for you Ned. No honest ground.

            Reply
            1. “An old machine that does nothing different that it has always done is non statutory under 101.”

              Wrong – it is non statutory under 102, not 101.

              Right, I have cited you Frederico who cites a case. The ’52 Act was passed with the understanding that an old machine was non statutory under 101.

              Congress has ruled!

              Reply
              1. You may have mis-cited Frederico – and I have corrected such cites.

                Your use of “statutory” when you mean to say “statutory category” is only causing more conflation Ned.

                May I suggest that you use the proper terminology in our discussions?

              2. Frederico:

                “The definition does not modify in any way the statement in section 101 that a new machine, a new manufacture, or a new composition of matter, can be patented; if a machine is not new, if a manufacture or composition of matter is not new, it still cannot be patented. The decision of the Court of Customs and Patent Appeals in In re Thuau, 135 F.2d 344, has not been overruled by the statute. ”

                Anon, it is not that you have not “corrected me.” It is that you have failed to acknowledge simple, but inconvenient truths.

              3. 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.

              4. And in the proper context from whence you grabbed your quote:

                The remainder of the definition of “process” in section 100(b) reads “The term ‘process’ . . . includes a new use of a known process, machine, manufacture, composition of matter, or material.” This phrase has caused some discussion and misunderstanding, particularly with respect to the patentability of so-called new uses. The Revision Notes state, as to this part of the definition, that it “clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions for patentability are satisfied.”

              5. The holding of this decision is simply that an old material cannot be patented as a composition of matter, because it is an old material, and the fact that the inventor or discoverer may have discovered a new use for the old material does not make the material patentable.

                Thus, Ned, the attempt by you to twist this 102 item into a 101 discussion is DENIED

              6. Frederico:

                Patentable novelty or invention (section 103). The Committee Report state, in the general part, that one of the two “major changes or innovations” in the new statute consisted in “incorporating a requirement for invention in section 103.

                Do these words “patentable novelty or invention” sound familiar Ned – Do they sound in any OLD case law that you have attempted to spin as not being affected by the 1952 Act?

                Tell me Ned, why do you persist in such amateur ventures as to refer to Frederico, when a proper read of Frederico supports my views and not yours? Do you really think that your mis-cites are effective?

              7. (sigh) this ge + ne filter trap is tiresome.

                Frederico:

                Patentable novelty or invention (section 103). The Committee Report state, in the [overall] part, that one of the two “major changes or innovations” in the new statute consisted in “incorporating a requirement for invention in section 103.

                Do these words “patentable novelty or invention” sound familiar Ned – Do they sound in any OLD case law that you have attempted to spin as not being affected by the 1952 Act?

                Tell me Ned, why do you persist in such amateur ventures as to refer to Frederico, when a proper read of Frederico supports my views and not yours? Do you really think that your mis-cites are effective?

              8. May I suggest, anon, that we look at the holding of the case Federico cites. In re Thuau, 135 F.2d 344 (C.C.P.A. 1943). link to scholar.google.com

                “The doctrine is so familiar as not to require citation of authority that a patentee is entitled to every use of which his invention is susceptible, whether such use be known or unknown to him. Likewise, with regard to an unpatentable article or substance long in use, any member of the public has the right to every use of which the article or substance is susceptible so long as it is unchanged in any way, regardless of whether or not such uses were known prior to his own use.

                To allow a patent for an old composition without change in any way, merely because it may be used for a specified purpose, would result in a situation where two compositions of exactly the same character could be sold by merchants to consumers, but if one of the compositions was not made by the patentee or his assignee or licensee, the merchant might be liable to suit for infringement if the composition was used by the purchaser for therapeutic purposes, and the user would certainly be liable to such a suit.

                In our opinion the patent laws do not contemplate that two identical substances or devices may be legally sold side by side, only one of which is the subject of a valid patent, and we are in agreement with the view expressed in the case of H. K. Regar & Sons, Inc., v. Scott & Williams, Inc., supra, that a patent for a new use for an old substance quite unchanged is not authorized by the patent laws because such use is not the invention or discovery of “any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof” as required by Section 4886 of the Revised Statutes”

                It seems that new uses of old devices are claimable as processes.

                Two gen eric computers are sold, identical to one another. Which one infringes the claim to a programmed computer?

              9. Ned,

                I have outlined Frederico for you in a clear manner, undoing the attempted twists and machinations that you want to impart.

                My version is the the correct version.

                Read and learn.

                Stop your attempted dissembling between patent eligibility and patentability.

                Accept what Congress did in 1952.

              10. Which one infringes the claim to a programmed computer?

                Is this why the one case wherein the difference was solely programming escaped your capability of understanding for so long?

                And somehow, you wish to paint me as the one that does not understand the law, when it is you and your avowed “I don’t understand” that echoes time and again on this topic.

              11. To refresh your somewhat (well, more than somewhat) selective memory, Ned:

                link to patentlyo.com

                Are you still struggling with your personal lack of understanding of that case?

                Also, I would remind you of the Grand Hall experiment (which Nazomi exemplifies) and the holding (yes, Ned, the holding) of Alappat, as well as remind you of the quotes from both Benson and Flook that you like to omit in your parsed and twisted Ned-IMHO-version of law.

              12. Let’s be honest here anon, in all the years you’ve been trumpeting the “holding” and Alappat, in all that time, not once, never, have you ever actually quoted what you contend to be the holding.

                Can you be so bold as to today actually quote what you think the Alappat holding is?

              13. Will you trade a simple answer for me? Why did Congress create a limited defense to business method patents for something that you have states as being non-statutory (and thus, no defense would have been needed)?

                Do you recognize that your view on this runs directly into the Markey quote by your view necessitating making the words of Congress a nullity?

              14. Why did congress create a prior user defense for business methods?

                We were trying to create a broad prior user right. universities in small inventors would not agree. However they would agree to eliminate exception for so-called business methods because of State Street Bank.

                I was intimately involved in the negotiations so I can tell you for a fact that this is what happened.

              15. so-called business methods because of State Street Bank

                Completely False.

                As I pointed out Ned – no defense is needed to be created if -a s you have posited – business methods simply were not statutory.

                All Congress need to have done is repeat what you now scream: NOT STATUTORY.

                They did not.

                You need to figure out why.

                I was intimately involved in the negotiations so I can tell you for a fact that this is what happened.

                Sounds like it was YOU that really screwed up if you missed the plain and simple path of reiterating that business methods were not statutory and thus no defense was needed.

                You STILL have failed to adequately account for the words of Congress in this regard.

              16. And in your explanation, you should address the FACT that the judicially activist Justices (as noted by an independent source) – the 3 of Breyer, Ginsburg and Sotomayor, which comprise the “new 4″ of Bilski “fame” STILL is not 5.

                Do you recognize what this phrase means? It very much has to do with the words of Congress.

              17. Some of the editing done today is rather bizarre.

                Ned’s “being there” is in no way a vouching for the veracity of his position.

                My noting that his “being there” as potentially being a reason why the system is Fd up is not only plausible on its face, but would also explain much of Ned’s venom and blindness to the topic (he is undoubtedly biased – if not as much, perhaps even more so than his object of venom Judge Rich).

                Why exactly a comment – true on its face (albeit negative in its – just – implications) is removed, is beyond me.

                C’est la vie.

            2. “A 1 has no structure.”

              A space has no structure.

              Morse claim 5 – as contrasted with claim 6.

              As claimed, the space between groups of marks on a scroll defines structure.

              Reply
              1. What? Then how does a 1 compared with a 0 not have structure?

                (And, please try to keep in mind the MOST important law of physics: The Conservation of Information!!!!!!!!!!!!!!!)

                I’ll add two more !! just for MM the smelly @pe.

              2. Ned – you trap yourself with “as claimed” – show me a claim to a “1″ as you are attempting to use that in an argument here and honestly try to differentiate Morse claim 5.

                Remember Morse claim 5 was to a system WITHOUT physicalities (as contrasted with claim6).

                If you are honest, you will see that you cannot win this argument.

            3. Cryptography?

              How many times do we have to go through this?

              Cryptography provides secure communications between machines. It improves machines.

              Reply
              1. We have to go through as many times as necessary for you to realize that cryptography does not in fact need (or if “use,” need not change) machines.

                In a way, it’s a lot like Morse 5 – a system without the physicalities.

              2. I’m sorry, anon, but mathematics alone is not eligible subject matter. If you do not tied mathematics to a system of machines, you don’t even begin to describe eligible subject matter.

            4. “Stop trying to spin the Court’s view.”

              Stop ignoring the statute and Federico.

              Reply
          2. >New or improved machines that facilitate the transformation of >numbers are eligible.

            All the information processing methods define new machines. They are really special purposes machines. We all know that.

            You know your view that this is all just processing numbers is getting very antiquated 10′s of millions of people being replaced by the new information processing methods. The information processing methods are projected to overcome human intelligence.

            Seriously Ned. Not eligible for patentability? You say what structure does a 1 have. You tell me. Conservation of information is the most important law of physics. How could it be that the represented information doesn’t have structure? It cannot be.

            Reply
            1. And information processing takes space, time, and energy. I can make a special purpose machine for each information processing method. And, the conservation of information tells us there is structure in those 1′s and 0′s.

              Macro: 10′s of millions of people being replaced by these machines.

              Please try to be real.

              Reply
              1. May I suggest that “information” is not a thing, but a state?

                May I suggest that software is not “information.”

                May I suggest that software is not “math.”

                May I suggest that software is equivalent to firmware and equivalent to hardware and is a manufacture and machine component.

                Lovely suggestions all.

              2. What anon said about software!

                But, also, why are you conflating the machine that operates on represented information with information?

                Is it your contention that whatever the machine operates on must also be patent eligible?

              3. Ned will not follow that path NWPA.

                That path leads to the evisceration of everything, as I have mentioned, only God works from scratch.

                Ask Ned what Frederico said about that.

              4. “The hypothesis of the so-called “conservation of information” seems to have originated in certain arguments in the 1975 “The Arrow of Time” by American astrophysicist David Layzer, who using a rather backward and inane blend of statistical mechanics and information theory, concludes:

                “Entropy and information are related by a simple conservation law, which states that the sum of the information and the entropy is constant and equal to the system’s maximum attainable information or entropy under the given conditions.”

                But, the Theory is questioned:

                “[I]nformation is anthropomorphic conception and is not something defined in the inherent structure of the composition of the universe.”

                link to eoht.info

                It is also self evident that information and entropy are related. So, if one can claim something that increases information, one can claim something that decrease entropy.

                But such systems are entirely abstract mathematical arguments. The patent system exists for machines, manufactures, compositions and not mathematics.

              5. For someone who exhorts “purity” to the statutory categories, you have (once again) denigrated one of the four categories.

                to wit: “The patent system exists for machines, manufactures, compositions and not mathematics.

                You left out process – which is not a handmaiden (or subcategory to the hard goods categories) AND you have apparently started up your latest carpet bombing of an incomplete and erroneous thought (here on math – ignoring the fact that pure math and applied math are not the same).

                And this, while you have ignored the proper treatment given to you of your very own favorite reference Frederico, which, as I have demonstrated, supports my views – and not yours.

              6. What rot Ned. See the discussion on black holes.

                Mathematical. What? The genius of Newton was realizing that you didn’t have to understand something to model it in math. That doesn’t mean it is not real.

                And math is what? Where is that math you speak of? Could it be in the same thing that those machines are trying to replace?

              7. And Ned, the person I quoted on here before saying the conservation of information was the most important law of physics is Prof. Susskind one of the most respected physicist alive. I posted a youtube video on here where he explained this to you and its relation to black holes.

                link to en.wikipedia.org

                Goodness leave the blog for a couple of days and the nxt cases and @pes take over.

                And, Ned, can we remember that you are using what to formulate your arguments? Can you say information processing (your brain)?

                Your arguments are so medieval that they are not worth responding to. They are intellectually dishonest too. And, they clearly are intended to throw a monkey wrench into the works.

              8. “What rot Ned. See the discussion on black holes.”

                Because because because black holes (only ever indirectly observed) makes everything he says totally true! Discussions on black holes mean information is patentable!

                Or something like that.

                NWPA brosef, just let your wingnut theory go. Just let it go man. And maybe try talking to the prof that gave the black hole lecture about what “conservation of information” even means.

                “Mathematical. What? The genius of Newton was realizing that you didn’t have to understand something to model it in math. That doesn’t mean it is not real.”

                The whole point of making a model is to make something that is not the real thing to study a real thing that isn’t the model. Duh. And Newton wasn’t the first to come up with this. There were plenty of people trying to come up with the model he himself came up with. All of them trying, gasp, to do it in “math”.

                You should check out the new “Cosmos” it is on amazon for like 3 dollars an ep. It will help set you straight about Newton. They even made part a cartoon so that it’ll be on your level.

                “And Ned, the person I quoted on here before saying the conservation of information was the most important law of physics is Prof. Susskind one of the most respected physicist alive. I posted a youtube video on here where he explained this to you and its relation to black holes.”

                Yes, and if you actually watch his video explaining about this all of a sudden NWPA’s wingnut theory fades into the distance.

                “And, they clearly are intended to throw a monkey wrench into the works.”

                Yes, the only reason to point out that you are ascribing to a wingnut theory version of a theory (note not a lawl) that physicists actually do use from time to time in their theorizing is to throw a wrench into “the works”. Riiiiight.

            2. My post: 8.1.2.1.2.1.2, “May I suggest that “information” is not a thing, but a state?”

              Professor Suskind: “Proper laws of physics are reversible and therefore preserve the distinctions between states – i.e. information. In this sense, the conservation of information is more fundamental that other physical quantities such as temperature or energy.” link to theoreticalminimum.com

              Information describes the state of the universe. The state itself is not physical, but a mathematical relationship.

              Information in the way you use it is not congruent with the state of the universe, but simple facts and simple mathematical relationships.

              Regardless, that the information state of the universe is conserved is irrelevant to whether mathematics is patentable, as information is not physical, but a relationship, a state.

              Reply
          3. anon, regarding Federico: you really do not have a clue, cannot think logically, and exist in a fantasy world.

            At times, I think 6 is entirely correct in his diagnosis.

            Reply
            1. Funny then Ned, how you refuse to actually address any of the Frederico comments that I have shared with you on this thread, instead, retreating to naked ad hominem.

              Clearly, it is you that does not have a clue, cannot think logically and exist in a fantasy world.

              Reply
              1. anon, the other comments are off topic but no in derogation of Federico’s comments on 101 and old compositions and devices.

                In the case cited, the composition/devices were admittedly old and patenability depended upon a new use.

                The court clarified that such were not claimable as compositions and devices.

                The new act clarified however that such are claimable as processes … new uses of old devices, compositions.

                Compare L. Hand’s great opinion in Old Town Ribbon & Carbon Co. v. Columbia R. & C. Mfg. Co., 159 F. 2d 379 (2d. Cir. 1949), where such claims were deemed ineligible, albeit, potentially eligible as arts or process claims.

                I find it interesting that you build your house of cards on opposition to Federico and Hand.

              2. Off topic?

                Not a chance – they are directly in context of the quote that you wish to misuse.

                I find it interesting that you build your house of cards on opposition to Federico and Hand.

                Wrong – I am not in opposition to either Frederico or Hand – In fact, I am aligned with them. I am in opposition to your versions of Frederico and Hand – there is a huge difference there.

              3. Anon, what bull plucky. You stand in denial of a very simple proposition: whether is old device or composition is eligible under 101, even when a new use is discovered for it.

                Such inventions are patentable as processes. The statute (100) actually says that as well.

                What you contend is that you can take an old computer, use it to execute a new program, and then claim you have a new machine!

                What utter nonsense.

                Federico and Hand are on point. You cite nothing but dicta and, of course, State Street Bank, the “greatest” of all Rich decisions.

                It in nigh time the PTO takes a stand on this nonsense, really. That they kow tow to their “clients” and defy the Supreme Court, Federico and Hand, and binding cases such as Thuau, in favor of dicta and overruled cases, has got to stop.

                Alice has decisively spiked the notion that adding an old computer to the ineligible is enough. Why? Because an old computer itself is ineligible.

                Rich is the source of almost all the modern problems with the patent system. Another is any PTO commissioner who did not fight Rich tooth and nail as he attempted to rewrite the patent laws to suit the patent bar. When and where are we going to get a Director not of the patent bar, by the patent bar and for the patent bar?

                When?

              4. You stand in denial of the clear context from which you parse out and misuse a citation.

                You cite nothing but dicta and, of course, State Street Bank, the “greatest” of all Rich decisions.

                WRONG – Once agian you attempt to put words in my mouth with State Street and once again I tell you that I have NEVER used that case.

                I need not – Alappat is all I need and Alappat remains good law – even after Alice as I have explained to you that BOTH parties stipulated to the holding of the case, and the Court’s view is not dependent on the statutory category being met (hence, your continued dissembling and pedantic use of “statutory” when you instead mean “statutory category.”

                It is you that remains a runaway brigand ignoring the words and actions of Congress – directly what Judge Markey warned against.

              5. The implicit fallacy you wish to embrace Ned is that NO CHANGE at all is necessary for ‘oldbox’ to be able to have capabilities that ‘oldbox’ just does not have without the change and addition of the machine component of software.

                You do not come out and directly say this (for obvious reasons that you would be laughed at), but you want to negate what software actually is.

                You want a machine – without ANY software – to be considered “the exact same piece of hardware” – the exact same THING as a machine that has been reconfigured with software. You want the debunked “House” argument.

                Further, this ‘oldbox’ without more – in your implicit worldview – then captures ALL future inventions that ARE reflected in software – all of the things that ‘oldbox’ simply cannot do without being changed necessarily become wrapped up in the “inherent” nature of ‘oldbox.’ This is a logical imperative of your view. Unfortunately (for you), this is also the rejected notion of the Morse case.

                You refuse to admit to the basic and fundamental notion that to “use” software, that very software must first be ADDED to and change a machine.

                A patent to a new tire is allowed, even if that new tire never makes it onto a car. A patent to a new rivet is allowed, even if that new rivet is never actually used and deformed to hold two separate pieces of material together.

                These are not new arguments Ned – they are just arguments that you have never faced, have never come to understand, and have never attempted to integrate into your position.

                You choose, instead, to ignore them, clench tight your eyes and hope they go away.

                They will not.

                Who then, between you and I lives in a fantasy world? Who then, refuses to employ logic and critical thinking? Who then parses commentary about 101 and ignores the very real difference between patent eligibility and patentability?

                The answer is obvious. You just need to open your eyes.

            2. Ned, your endless intellectually dishonest arguments remind me of arguing with source of the ev1l. Yes Richard –I messed up the whole patent system — Stern.

              Just tell us how a machine that is made to drive a car or diagnose a tumor could possible not be statutory? Transformation of information.

              Reply
              1. Just tell us how a machine… could possible not be statutory?

                NWPA,

                May I ask that you too not devolve to using “statutory” if you mean “statutory category”?

                Let me explain why it is important to be precise on this point:

                It’s bad enough when Ned tries to conflate the two. Just as he tries to conflate patent eligibility and patentability.

                These differences matter, and we do no one any favors by obscuring the words chosen by Congress (and the acts that Congress engaged in with their choice of words).

                We should not ourselves make a nullity of what Congress did, even inadvertently and for ease of casual conversation.

                If we pay attention and use the correct terminology, we can focus on the fact that what the Court did in Alice was not dependent on the claims fitting a statutory category (and I remind all that both parties stipulated to the statutory category requirement having been met, thus not at issue before the Court, and thus outside the HOLDING of the Court).

                If we use the correct terminology, Ned’s argument falls apart, because he bases his position on statutory category – but that is not what drives the Court’s jurisprudence.

                If you play Ned’s game, you allow him to wallow in the dustcloud. Do not play his game.

                If we use the correct terminology, Ned will have to acknowledge what the Court has done here – stepping beyond merely reading a map fully into the realm of writing their own map.

                Please use the correct terminology and hold Ned responsible for using the correct terminology as well.

              2. Thanks – I know it will be like herding cats, but if we guide Ned to correct terminology in every discussion, he will eventually have to use the correct terminology.

                Every post of his that misuses terminology should be noted and appropriate use should be suggested.

                I am hoping that he sees that if he wants to get up on his soapbox, it would be better for everyone that he does not hide in his obfuscations.

                Frederico was more than clear that the Act of 1952 centered upon a deliberate distinction between what is patent eligible and what is patentable. This was the primary context from which he attempts to take a citation and use that citation out of its appropriate context.

                This is his idol (and counter to Judge Rich), and it is his own idol that points out what Ned is attempting to do by reverting to pre-1952 conflations (trying to “integrate” the concepts that Congress deliberately separated) are exactly what Judge Markey warned against.

                All we need to do is remind him of the proper context every time he tries to stray and conflate.

              3. Night, tell me why an old computer, unmodified in any way becomes a new machine if one changes a program?

                There are logical fallacies afoot, here. But they are not coming from me.

                A machine that is connected to a car and drives it, a machine that is connected the sensors and diagnosis a tumor, is hardly a generic computer. Rather, your argument is the typical strawman argument we see from your side. Rather than address what we say, you first erect a strawman and knock it down. Then you say we are being dishonest.

                The simplest child can see through what you are trying to do. No one contends or has ever contended that a machine adapted to drive a car or diagnose a tumor is ineligible or unpatentable for any reason. What we do content is that a generic computer, programmed to calculate a number from numbers, is not a new machine. Any kindergarten kid would agree. And you know they would.

              4. “Nonstatutory” means not authorized by §101. When you cleverly change the dialogue to one of the four classes, you cleverly read-out of the statute meaningful words, and then create the same error as were consistently made by Judge Rich who viewed section 101 exclusively as a matter of the four classes.

              5. hen you cleverly change the dialogue to one of the four classes,

                You are the one being pedantic and not using the term correctly.

                It is clear (well, because you have admitted so) that the term you mean to us is “statutory category” and that you find fault with the Supreme Court for completely ignoring the categories in the Alice decision.

                Ned – your dancing around on this point is in black and white. Your attempts to dissemble paint you not only as an amateur, but a foolish one at that.

              6. you cleverly read-out of the statute meaningful words

                Your aim is off Ned – you are describing what the Supreme Court has done by eliminating the statutory categories altogether in their “Gist/Abstract” swordplay.

                But you already knew that, didn’t you?

    2. There is no doubt that those three could give a hoot about the Constitution. Another thing about those three is how arrogant they are. They are so filled with their own self importance and sense of superiority over the rest of us.

      I guess their brains have to compensate for their complete lack of regard for the law and Constitution. How else can filth like that justify their actions.

      Reply
      1. No despot has a shortage of self-righteousness.

        For such, their ends happen to always be the exception to using “whatever” means.

        We have the doctrine of the separation of powers for a reason.

        Heed the words of Judge Markey – and note those that would not (and how “conveniently” the words disappear or are purposefully misconstrued when it comes to certain agendas and curse-sades).

        Reply
              1. Who the F uses words like “solecism?” (and for what intent?)

                DanH/Leopold, you try too hard to be too clever (and in response to – as usual – only a select few).

                This is a blog.

                A certain person once wrote, in response to an officious correction:

                Thanks – Although if you read this blog regularly, you’ll know I often avoid the normal rules of grammar, spelling, and punctuation.

                See link to patentlyo.com

              2. Who the F writes stuff like the following (and to what intent)?

                For such, their ends happen to always be the exception to using “whatever” means.

              3. (sigh)

                And Leopold continues with his telling the wrong people to just shut up….

                You really don’t get the big picture, do you DanH/Leopold?

            1. Asking judges to apply the law and not fabricate reasons for the outcomes they want makes one a what?

              Reply
      2. Night, what you fail to realize is that there is no requirement for lifelong academics, political hacks-cum-judges, and Community Organizers to understand anything about any aspect of real life except for how cool and wonderful they are, and how that coolness and wonderfulness gives them a totally bitchin’ right to dictate their cool and wonderful and utterly blundering caprices to the rest of us.

        For Exhibit Z, read Tribe’s recent article in the Globe about why the challenge over the “state” versus “federal” exchange bungle of O-Care should fail. He disparages the actual words in the statute as a “sub-sub” provision as though the words do not count: only what Congress must obviously, positively, unquestionably have “intended” – as deduced and dictated by cool, wonderful, and totally bitchin’ Lawrence Tribe – should matter. And there enough Ivy League syc0phantic buff00ns on the Supreme Court to buy it.

        Reply
        1. Tourbillon: I agree that academics tend to be what you describe. And, I have noticed that it is not just limited to IP.

          It is hard to believe that out of the last batch of 3 judges that Obama could not find one that was actually a real patent attorney. Let’s hope that Obama picks a real patent attorney this time, but then he would be forgoing the $5-10 million in campaign contributions that the Googles will give the democrats for another Tarantula.

          Reply
            1. The set of real patent attorneys are people that have actually worked for clients for 10+ years. They have done prep and pros for a number of years as well as litigation and client counseling. In other words, real attorneys that have done real work. That is type of person that should be on the Fed. Cir.

              Certainly, MM, you are not a “real” anything, because you are being paid to post.

              Reply
              1. Even the non patent attorney judges said they should be patent attorneys?

                And, I didn’t say all. So far none is what we are getting.

              2. Not to antagonize you but,?I>”

                LOL – but 6 will seek to antagonize anyway, with badly mangling the situations and trying a poor man’s version of spin.

                And then no doubt accusing other’s of medical conditions that he himself exhibits in his attempts to control who may post what (because he does not want any critical analysis of what he has to say)

                A lemming’s pathet1c attempt at getting what he wants.

            2. And stop calling me gramps. I am not a senior citizen –not that there is anything wrong with that, but I do not like the fact that 6 keeps trying to associate me with a real person who is not me.

              Besides you are just a d@mn, dirty @pe, and have no right calling anyone any names or even posting on this board until you evolve.

              Reply
              1. OK Darth 6′er. Just realize that you are potentially hurting the reputation of a real person unfairly. And, you are unfairly tying me to this person.

                Really, not cool.

              2. His identification with a science fiction scene of gross illegality and sheer extortion based on raw aggressive power is amusingly self-defeating.

                In 6′s mind, might makes right and his obsession with power and control is unwittingly revealed.

                In his mind, because he can post, to him, that means his posts are fully legitimate. But no one should be able to look at his posts and critically analyze them – that is “too far” and not “right” for (6′s version) of civil discourse.

                His impotency is thus revealed by his vap1d attempts to silence those who would cast a critical eye (with the use of laws and facts, instead of the table pounding of “policy”/opinion), and he does not realize that every time he attempts his med-line control shtick, he just announces his own feebleness.

          1. Night, given what we have seen from Chen, I tend to agree that for balance we should next try a patent attorney who represents clients in the PTO and in court.

            Chen was on the panel in this IDS case, and I think it came out the way it did because of his presence.

            That’s at least two utterly atrocious decisions with Chen, this and the double patenting case.

            Reply
            1. Obama has been selecting judicial activist that are virulently anti-patent in all of his last 3 selections. We see in what Obama has been doing with patents his lack of real-world experience and the heavy price we are all paying because of it.

              People that have done real things: run real companies, made real products, had to represent real clients, etc., know that you want people that have actually had to get real things done to fix problems. These theoretical virulently anti-patent people are only making matters worse. Now no one respects the rule of law. Why should anyone? There is no law only n$t jobs writing nonsense to get whatever result they want.

              Reply
              1. And, the SCOTUS second prong of the 101 test is exhibit number one. It is a redux of the flash of genius and completely eviscerates the 1952 Patent Act.

                (And, Ned, information processing is real. As real as those imaginary molecules MM pines to hug.)

              2. NWPA,

                Note that Ned has abandoned his “not eligible based on constituent element eligibility” discussion (after haltingly trying to separate the element eligibility into tangible and intangible elements).

                The reason for this is clear: Only God works from scratch. And there is nothing at all in patent law that limits constituent elements to ONLY being physical elements (hence the immediate FAIL of claims only being fully described in all-and-only structure terms).

                Further, the logic of even physical elements not “counting” if those elements are “old” eviscerates all patent law for the hard goods categories, because all hard goods are merely made up of fundamental particles (electrons, protons, and neutrons) that are themselves ‘old.’

                Yes, this is a slippery slope argument, but it is one that cannot be evaded. If a Justice seeks to conflate 103 with 101 to attempt to get around the words of Congress (as stated in 1952), then it is the Justice that willingly places himself (or herself) on that slippery slope. They cannot place themselves on the slippery slope and declare that the laws of gravity must stop and that they are somehow immune to sliding down that slope. The better choice is to not step on that slope to begin with.

                Ned’s abdication of his own discussion also stems from the fact that his Royal Nine apply their own written map regardless of the 101 statutory category provision.

                Note as well, Ned’s attempted spin of discussing the portion of 101 that deals with the statutory categories by dropping the word “categories” and only talking of “statutory.”

                Note Ned’s agreement with me when I pointed out his struggles and his attempted work-around with this cheap pedantic semantic ploy.

                But his attempts fail (as they must) and he cannot square his allegiance with the Royal Nine to what the Royal Nine have actually done. What the Royal Nine have done with Alice (and in line with the other 101 “implicit” re-writings), is to render the statutory category aspect meaningless.

                Ned has complained of the “Rich version” of looking at the statutory categories. To him, the “Rich version” is that something that is a machine passes the statutory category portion of 101, and thus passes 101 in its entirety.

                Of course, this is not a correct understanding of 101, as I have often explained (and warned Ned when he attempts to misstate my views).

                The category portion of 101 is not ALL of 101 – it is only a portion of 101.

                But here, and what truly confounds Ned and his allegiance to the Royal Nine, is that the statutory categories are rendered meaningless by the means provided by the Court.

                In essence, this is every bit as logically untenable as the “it’s a machine so it passes 101 view.”

                The Royal Nine use the “Gist” to obliterate what that Court views as mere scriviners following the actual words of Congress and writing claims that actually really do fit into the statutory categories.

                Remember, that in Alice BOTH sides stipulated that the statutory category portion of 101 was met – thus this FACT was not before the Supreme Court, so the Royal Nine could not make out a holding of an issue not properly before them. The Royal Nine did not have the option of saying the claim failed the statutory category portion of 101, so they made things up and simply hand waved that portion of the law away.

                Ned’s problem is that the means employed to reach an end that aligns with Ned’s agenda threatens to wipe away everything. The means employed are just not in accord with the authority that the constitution lays out. The means employed “ring true” to the power that Ned wants the Court to have: unlimited common law writing power – but that is just not how the US patent law system has been put together. If the founding fathers wanted unlimited common law writing power to reside in the judicial branch, they would have allocated the patent power to that branch.

                They did not.

                This entire debate over 101 resolves down to that simple fact of which branch of the government has the proper authority.

                There is no amount of dust-kicking, no amount of conflation, no amount of “policy”/opinion that can change the fact that the Supreme Court lacks the authority to write patent law.

                Heed the words of Judge Markey. Take a Churchill stand.

            2. Ned,

              You still have not explained yourself in regards to the IDS situation.

              Do you think that you can flaunt the rules of disclosure, just because you may find it convenient not to disclose known items related to a lawsuit? Where is the caveat, the justification for an applicant so choosing what to disclose or what not to disclose? The whole point of the disclosure requirement is for the Office to decide what is material and what is not material. The Office has the power and duty to examine, not the applicant.

              Reply
              1. I have fully explained myself on this matter.

                The rules cannot require an attorney to do an act that will result in his client’s patent being rendered useless unless such a rule is essential to determining patentability.

                No rule exists that requires the disclosure of information irrelevant to patentability.

              2. Wrong – you over-read the rule, and assume a position of evaluation that is not yours to assume. You do not get to decide that an inconvenient item [that surfaces] in a lawsuit is not “relevant” when it is so clearly so but just inconvenient.

                Show me the caveat that you (implicitly) depend upon. Show me this “convenience” factor.

                You will not because you cannot.
                Such just does not exist in the duty to disclose.

                The very facts of this case show you to be wrong, as the applicants themselves REQUESTED your ‘so-called’ irrelevant item to be made of record.

                Why would they do such, if – as you maintain – this was irrelevant?

                No Ned, the honest answer – the only answer – is that the applicant’s knew that they had a duty and complied with that duty. After that point, the true arbiter – the Office – then gets to make the examination-type decision of whether or not the item is relevant.

              3. The subtle point that you are attempting to kick dust over is that “material” does not mean “necessarily dispositive.”

                As taken from Black’s Law Dictionary:

                Material:
                1) of, or relating to matter, physical
                2) having some logical connection with the consequential facts
                3) Of such a nature that knowledge of the item would affect a person’s decision-making process

                (emphasis added)

                It is the third definition that you miss – as the knowledge alone creates the duty for you to disclose and it s the EXAMINER’s (not yours) decision-making process as to why the duty exists. The process is the key word – not the results of that process.

                It is the second definition that you conflate the “some logical connection” with the EXAMINER’s determination of consequentiality.

                Implicit in your position is that you – not the examiner – determines the decision-making process, and that you and not the examiner complete a determination process before you disclose. That is not your role. You are abrogating the proper role of the Office by choosing not to disclose.

                I invite you to write to the OED if you have even the slightest doubt as to the malpractice that your view engenders. Clearly, the most prudent position is when in doubt, submit the knowledge to the Office.

              4. The Office clearly explains the meaning of “material” (that is not supported by your position):

                (b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and [ ] (2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability.

                Again Ned – the facts here indicate the applicant wanted the item to explicitly be on the record. You must deal with this fact.

              5. 2001.06(c) Information From Related Litigation
                Where the subject matter for which a patent is being sought is or has been involved in litigation, the existence of such litigation and any other material information arising therefrom must be brought to the attention of the U.S. Patent and Trademark Office. Examples of such material information include evidence of possible prior public use or sales, questions of inventorship, prior art, allegations of “fraud,” “inequitable conduct,” and “violation of duty of disclosure.”

                Another example of such material information is any assertion that is made during litigation which is contradictory to assertions made to the examiner. Environ Prods., Inc. v. Total Containment, Inc., 43 USPQ2d 1288, 1291 (E.D. Pa. 1997).

                Such information might arise during litigation in, for example, pleadings, admissions, discovery including interrogatories, depositions, and other documents and testimony.

              6. Examples of such material information include evidence of … allegations of… “violation of duty of disclosure.”

                Your very act of non-disclosure may create the materiality of the act. You son’t disclose, the other side alleges that you violated a duty and WHAM – that information is material of its own accord.

                Is that really a move you want to make, counselor?

              7. Therasense does not say what you think it says Ned.

                You still must ascribe to the rules of operating before the Office.

                A flat denial of you does not address the points that I have raised.

                Try again.

    3. Interesting to note that an independent article highlighting a fear of judicial activist tendencies draws the responses of three regular posters that completely ignore the content of the article.

      Ned takes it as an opportunity to (again) display his venom of Judge Rich.
      DanH/Leopold takes it as an opportunity to (again) display his smarmy ability to tell the wrong people to “just shut up,” and
      Malcolm takes it as an opportunity to (again) attempt to slam “conservatives.”

      None of these comments come anywhere close to critical point that patent law is not something that the Supreme Court Justices have a right to write themselves.

      Gentlemen, please at least try to stay on point.

      Reply
      1. anon, on point, Rich was the most activist judge I have ever seen. He tried to rewrite patent law, and he largely succeeded — for awhile. A lot of his accomplishment have had to be overturned legislatively. Others have been consistently overturned by the Supreme Court. Nothing he came up with has stood the test of time.

        And you talk about Breyer?

        Reply
        1. Ned,

          You confuse the intimate knowledge of the words of Congress with activism for changing those words later.

          Such knowledge and understanding of the words chosen by Congress as known by Judge Rich was not activism. It was truly understanding the map that Congress had written – not any map that Judge Rich (as later in the role of Judge) had written. You deliberately seek to confuse the fact that prior to his being judge, Mr. Rich had helped Congress write the actual words. This is not “judicial activism.” You seek to confuse and conflate this timing and have done so with the clear goal of trying to negate the very words of Congress because those words do not fit your agenda.

          As for the actions of the Supreme Court, you ignore the doctrine of separation of powers and seek to annul the words of Congress in the 1952 Act (just as Judge Markey warns).

          The difference between our positions is clear – and mine is the one that aligns with the constitution. Yours, well, aligns with a Royal Nine doing whatever they want to do, employing whatever means they want to employ to reach the ends that they desire.

          3, the new 4 is just not 5 (so even your “reliance” on the Supreme Court rewriting the words of Congress falls short).

          Reply
          1. Anon, Rich, so heavily involved in the ’52 Act, should never have been appointed to the court. He was not unbiased.

            Reply
            1. That is a completely irrelevant point – and belies the truth of my point as to Judge Rich being the most eminently qualified person on the planet as to determining any interpretation of the patent law of Congress that he has earlier DRAFTED for Congress.

              You cannot advance your point without surrendering to me my point. And my point is far superior to yours.

              The “bias” you speak of is not the proper legal bias that would disqualify a judge. The “bias” you speak of is the very reason why Judge Rich should be venerated – not disparaged.

              Your venom is as out of place as it is unjust.

              The only reason you advance such venom is because the law – in fact – does not align with your crusades.

              This is but just another example of your very own Ned-IMHO-Law bias – the same bias that makes you think that 6 is a genius when he agrees with your agenda.

              Open your eyes Ned. You lack the objectivity here.

              Reply
              1. There is a good reason Scalia believes congressional history is distortion. But, to allow a drafter to decide what a statute means is the height of distortion.

        2. You also confuse what “I” talk about and the very point of my post showing you to be off-base in that the article I provided was an independent source of concern on Breyer’s activism.

          Pay attention Ned.

          Reply
  3. ALIGN TECHNOLOGY, INC. v. ITC
    link to cafc.uscourts.gov

    After a consent order finding liability, the patent owner filed an a petition to enforce the order against digital data transmission imports. The commission requested the ALJ to determine whether the imported digital transmissions were subject to the consent order – and to report its findings as an initial determination which would allow the commission to review the ALJ’s order. The intervener/respondent filed a motion to terminate the investigation. The ALJ denied that order and ordered trial. However he did not designate his order as an initial determination. Regardless, the intervener/respondent appealed to the commission who reversed the order because, in their view, the consent order did not cover digital imports, alleging that there was a default practice to expressly include digital imports in consent orders if they were intended to be excluded.

    On appeal to the Federal Circuit, the Federal Circuit reversed the commission’s decision, holding that the commission did not follow its own rules which expressly stated that orders denying termination were not initial determination subject to review by the commission.

    But because the commission has the power to waive its rules in the interest of justice, the Federal Circuit went on to give its opinion on the merits because otherwise the commission could simply waive its rules and decide the same issue in the same way again.

    On the merits, the Federal Circuit found that there was no established practice to include within a consent order an expressed exclusion of digital data transmission imports if such were intended. Therefore, the fact that the consent order in this case did not expressly mention digital data transmission imports did not mean that they were not covered by the consent order.

    Reply
  4. From the opinion:

    “During reexamination of the ’267 patent and prosecution of the ’427 patent, GBT
    submitted and requested that the PTO “expressly consider[]” its stipulated construction of preamble from the Texas Litigation.”

    Does anyone have the exact language used by the patent owner?

    Reply
    1. As I thought.

      The applicant submitted 11 different IDSs over the course of examination of the ’576 application that resulted in 7,359,427 patent. The last IDS included the claim construction order. It was filed on Jan. 1, 2007, after the case had been in prosecution for years, having numerous office actions and amendments.

      The examiner entered a final rejection on April 30, but this really was akin to a notice of allowance because all but the newly added claims were allowed — and the newly added claims were rejected as drawn to a nonelected invention.

      The examiner checked the IDS filed in January “as considered,” but otherwise said nothing anything about it.

      All 11 IDSs had cover letters having the same boilerplate introductory language. That language in the opening paragraph read, “It is respectfully requested that the documents be expressly considered during the prosecution of this application, and that the documents be made a record therein and appear among the “references cited” on any patent to issue therefrom.”

      Thus, contrary to the opinion of the Federal Circuit, no IDS expressly asked the examiner to consider the stipulated claim construction. Moreover, because of its late citation in the prosecution history, and because of the lack of reliance upon it by either the prosecuting attorney or the examiner, and because the language relied on by the court was boilerplate language included with all IDSs, no reasonable person could believe that the claim construction order of the District Court had any bearing whatsoever on the prosecution.

      It appears that either the Federal Circuit was seriously misled by sharp advocacy, or that it truly intends to create a rule that any submission of a claim construction order at any time during the prosecution, even after claims are allowed, will limit claim scope.

      This decision is an abomination. There is no other adequate word to describe just how bad this decision is.

      Reply
      1. If you provide a claim construction to the PTO or a court, you should be stuck with it. Why should a patentee be able to continually voluntarily shift its positions about what its claims cover???

        Reply
        1. Why should a patentee be able to continually voluntarily shift its positions about what its claims cover???

          Because it promotes innovation in the billable arts.

          Reply
          1. IANAE (AKA dop3.) How about applying the law over getting off on your petty grievances.

            Reply
        2. Nothing says that you cannot – Malcolm – the difference here is that the applicant did not.

          To Ned’s point, one may want to make a statement in court – with a particular fact pattern and particular defendant – that may not be universally applicable – for any number of reasons.

          What you strive for is just as over broad (and just as wrong) as what Ned strives for.

          The law is simply more nuanced than either of you two are attempting to wield.

          Reminds me of watching my little brother trying to teach himself how to use juan-tuo.

          Reply
          1. If your lawyers do that, you should find new lawyers very quickly. During claim construction, you should always be thinking about the next case down the road.

            Reply
            1. Yes and no.

              Yes, you should be thinking about the “next case” and
              No, the details of that next case cannot be known a priori.

              (not sure what the “that” is that you are warning against – my “that” or Ned’s “that” or Malcolm’s “that.”)

              Reply
      2. Not following you Ned:

        requested that the documents be expressly considered during the prosecution of this application, and that the documents be made a record therein and appear among the “references cited” on any patent to issue therefrom.”

        And

        Thus, contrary to the opinion of the Federal Circuit, no IDS expressly asked the examiner to consider the stipulated claim construction.

        Seems exactly the opposite.

        Further, “lack of reliance upon it by [ ] the examiner” is negated by “The examiner checked the IDS filed in January “as considered,”

        “considered” – whatever that means is ALL that is required to establish “reliance” whatever that means. Again Ned – you are 180 opposite.

        I “get” that you want a different result, but your “umbrage” is not justified.

        Reply
        1. Anon, I had the distinct impression from reading the opinion that the applicant asked the examiner to expressly consider the claim construction ruling and that this was not simply boilerplate to consider all of the numerous references cites.

          Reply
        2. Anon, I have no doubt that the Federal Circuit intended its holding as a bright line rule:

          If one submits a claim construction order to the PTO however it is submitted, the “positions” argued or stipulated to in the order are to be henceforth deemed to be disclaimers of scope.

          All this suggests, again anon, is that one should never submit such orders to the PTO on pain of being disbarred by one’s local state bar association. Such a submittal would have to be considered attorney malpractice after this case.

          Reply
          1. I think that you are moving the goalposts and that you are evading the simpler questions that I have put in front of you.

            (and your position here is NOT supported by the very words in the decision – see NWPA’s post at 1.2.4).

            Reply
          2. Such a submittal would have to be considered attorney malpractice after this case.

            Oh, I think that you are heading for malpractice for sure – just not in the actions that you are thinking of.

            Of course, if you were to have the ba11s to state in an affirmative manner what you are pvssyfooting around, then the fine people at the OED would likely be able to contract you directly and set you straight.

            Reply
      3. Just so we understand the situation just a bit more, we have a case where “preamble” was given meaning X in litigation. During examination, the examiner, using BRI, gives a broader construction, all X and in addition, all Y.

        The applicant is able to distinguish the prior art by adding limitation Z, common to both X and Y, so that whether preamble is X or Y, the claims are still patentable. Thus whether the construction is X, is Y, or is X + Y

        IS IRRELEVANT

        to patentability.

        Irrelevant, meaning, immaterial.

        But now we have a Federal Circuit case that holds there to be a disclaimer when very, very late in the prosecution the applicant submits and IDS with a claim construction stipulation that is irrelevant to patentability, that the applicant does not argue, and the patent examiner does not credit for patentability purposes.

        One would say, this has to be a joke!

        But it happened.

        Then we add that folks like anon who are suggesting that we have a duty of disclosure of such irrelevant material and if we do not submit the irrelevant material we are committing inequitable conduct, even in spite of the holding of the Federal Circuit that if we do submit the irrelevant claim construction ruling we will be disclaiming subject matter irrelevant to patentability thereby severely damaging the client?

        Where do all these people get off the bus? Where did they gain the ability to think critically?

        Reply
        1. Ned,

          You forgot to include Prof. Crouch with me, as he immediately echoed my view.

          Has the OED given you a call yet on your willingness to not obey the rules?

          Reply
        2. What type of critivcal thinking Ned is needed to bungle

          Rather than merely filing the IDS form, the applicant included a cover-sheet letter asking the USPTO to consider the references stating:

          It is respectfully requested that the documents be expressly considered during prosecution of this application.

          into your statement of

          when very, very late in the prosecution the applicant submits and IDS with a claim construction stipulation that… the applicant does not argue

          Gee, we want this expressly on the record, but we don’t want to “argue it.”

          I wonder why? Or is wondering why off-limits in Ned’s Bizzaro-Land?

          Reply
      4. Thanks for that Ned. The judges have apparently stopped trying to apply the law. It is now a free-for-all. Let’s get Lemley in there and watch the whole thing burn to the ground. Why not just appoint Lemley god of IP. And, he can just pronounce the result absent any reasoning (unless he feels like giving some reasoning).

        He could turn to MM for evaluating a patent. MM can sit in a chair feed by slaves and merely put a thumb up or down for the result.

        Reply
        1. Let’s not forget 6 in his jester outfit, turning cartwheels in the corner.

          Reply
  5. Rather than disclaiming any disclaimer when you file the IDS, how about coming at it from the other end? When you make the stipulation to the court, could you say it’s for the purposes of the present litigation only, and maybe even expressly reserve your position for future cases?

    Reply
    1. IPMan, the whole point of a stipulation is simply to avoid litigation on a particular point. It is a compromise and should not count in future litigation as that would severely undermine the ability of anyone to stipulate to anything.

      This language from the opinion is problematical:

      “We hold that GBT’s submission of its stipulation to the PTO thus constitutes a clear and unmistakable disclaimer of the broader claim
      scope that GBT now seeks.”

      That language will be quoted far and wide to kill patents that have continuation or reexaminations where IDSs of litigation documents have been submitted for full disclosure purposes and not for advocating any position. One would think such advocacy would be in response to a prior art rejection at a minimum to constitute a disclaimer.

      But

      Reply
      1. Ned,

        I disagree. I think the doctrine of judicial estoppel should have been applied. If you stipulate to a construction, you should be stuck with it in subsequent cases. The public has just enough of a right to rely upon that as statements in the file wrapper.

        Reply
          1. Who forces you to decide at what level of stipulation that you yourself make?

            Reply
      2. There are zero good reasons to allow patentees to vacillate between claim construction positions. You don’t like the construction? Don’t stipulate to it. It’s that simple.

        Reply
        1. MM, the one good reason that this decision is wrong is because there is no legal basis for it.

          The one provided by Moore is factually wrong.

          You —as always– don’t care about applying the law but getting what you think is the right result. That attitude leads to having no law. You stand before the tribal chief and he/she declares whether or not you are guilty.

          We are devolving. Thanks Lemley you $#% (and Stanford for hosting this filth.)

          Reply
          1. You —as always– don’t care about applying the law but getting what you think is the right result.

            Classic example of “the ends justify the means.”

            They do not.

            Ever.

            Reply
      3. I thought that claim interpretation was the exclusive province of the court. I am surprised litigants can stipulate to a particular claim construction.

        Reply
        1. PiKa,

          The court gen erally only looks to resolve those claim terms that are in disagreement.

          Reply
        2. It makes sense.
          It would be interesting to see a case similar to this one but with a stipulation to a broadening claim interpretation.

          Reply
          1. A stipulation to a broadening claim interpretation?

            PiKa, you do not prosecute patents, do you? You keep on using turns of phrases that are not used in patent law as you appear to use them.

            A claim is what it is – “broadening” in the sense that you appear to be using it here is merely coming to an agreement as to how broad the claim ALREADY is. One side may see it more narrow than the other. If that side that starts out seeing the claim as narrow changes its mind, is convinced that their narrow view is not correct, it is a misnomer to say that the claim has been broadened.

            Contrast this with the legal possibility that within two years of patent grant, one may actually change claims to encompass a true broadening of scope.

            These may be subtle differences, but should be carefully noted in conversations, as they can avoid a lot of dust-kicking.

            Reply
            1. I am not litigating. Maybe that is the problem.

              The scenario I had in my mind was the following. A patent owner realizes that his patent has a weakness, and some terms could be interpreted in a narrower way than their plain meaning. He sues a buddy, they arrange to stipulate to an interpretation of these terms favorable to the patent owner (but still within the plain meaning), the patent owner discloses this stipulation in an IDF of a reexam.
              If this reexam is litigated, what would happen?

              Reply
              1. That’s a pretty convoluted and rather specific fact pattern – I suspect that you are seeking actual legal advice.

                Contact an attorney and do not rely on a blog for legal advice. Chances are, you have not shared all the pertinent details that may affect your personal situation.

              2. I am just venting by trying to find a non desirable consequence to this case.

                I will definitely follow your advice and talk to an attorney. I routinely submit technical papers from inventors and/or marketing material from the applicant in IDFs. Until now, I did not consider the risk of having the inventors/applicant define a term used in the claims in a way more limiting than plain meaning in the art. Maybe not a disclaimer as unmistakable as a stipulation, but still an interpretation of a claim term by the inventors/applicant.

              3. We have these things called depositions and other discovery. They risk being caught in subsequent litigation, and the probably subject to sanctions and attorney fees under a number of statutes, including 285.

              4. Anonymous, I guess you are referring to the weird example I made up.

                I agree that it is weird, but I think it shows that the principle behind the doctrine of prosecution disclaimer seems to have been twisted in this case. My opinion was that the doctrine of prosecution disclaimer was to apply when the statements were made by the applicant to obtain the patent. I don’t know exactly what a stipulation is, but it does not seem to be a statement made to obtain a patent. It looks that litigants could stipulates that squares are round if they wished so.

                Anyway, we are now stuck with an extra layer of complication for the prosecution of applications, and for the determination of claim scope.

              5. PiKa,

                The word “stipulations” as used here more typically reflects use by parties in a lawsuit, as opposed to an applicant before the Office.

                Overlap occurs when the granted patent (outside the dominion of the Office) still has related applications in the Office, and the items discussed in the lawsuit (stipulations and anything else) may have impact on those items under the dominion of the Office, and for which a duty of disclosure is active.

                The clear and easy takeaway is that one cannot hide from one’s duty and pretend that actions in a related litigation have no effect on a present duty.

                The “extra layer” has always been there (as witness the sections of the MPEP that I posted – sections that are not new).

            2. Pika, you should be advised that anon is describing a duty of disclosure that is regulated by law, not by rule.

              Therasense, an en banc Federal Circuit case, is controlling law. That case also held that the PTO does not have substantive rulemaking authority in this area.

              IMHO, any and all rules and MPEP statements that exceed the requirements imposed by law are ultra vires to the extent they cloak themselves in some sort of legally imposed duty.

              However, anon does not understand the holding of Therasense, and seems to believe that the PTO can impose legal requirements beyond those imposed by law.

              Reply
              1. Ned,

                Again it is you that exhibits a gross misunderstanding of case law.

                Contact the USPTO Office of Enrollment and Discipline and let me know whose version – yours (the “Ned-IMHO-Law” version that will land you in malpractice land) or mine.

              2. Hey, anon, you want me to consult the PTO on matter that the Federal Circuit has rule are beyond its ken?

                You really are delusional, anon.

              3. I want you to realize the context of where you are advocating what you are advocating.

                You over-depend on Therasense for actions STILL in front of the Office.

      4. Ned: “the whole point of a stipulation is simply to avoid litigation on a particular point. It is a compromise and should not count in future litigation as that would severely undermine the ability of anyone to stipulate to anything.”

        Right. As you say, the present opinion is problematic because it negates that.

        My suggestion is that when you offer the stipulation, you could actually say explicitly that it is a compromise to simplify the current litigation, and is not inteded to count in future litigation.

        The problem arises in the present case because this was not made explicit, and was only arguably implicit. The subsequent opinion treated it as not implicit.

        Reply
        1. I am reminded of Monsanto’s promise and the basis of that promise being couched in doublespeak and a glibbed forked tongue, to the effect of we won’t go after those whom we decide we won’t go after.

          (think illusory promise)

          Reply
        2. IPMan, one also has to show “benefit” of the legal position advocated.

          For a disclaimer to intentionally giving up scope, it has to be only about a position that narrows the claim to render it valid.

          However, claim construction disputes are almost always about infringement and never about prior art.

          I cannot see how a routine claim construction stipulation would ever be relevant to validity.

          Reply
          1. For a disclaimer to intentionally giving up scope, it has to be only about a position that narrows the claim to render it valid.

            I disagree Ned.

            Take the example of an applicant discussing (errantly) someone else’s patent application in the body of his own application. If the applicant incorrectly states that the other is prior art, then that other is deemed prior art even if in fact it is not prior art.

            You seem to want to insert a condition where no such condition exists.

            As in past discussions, you also fail to realize that it is not the applicant for whom the “decision” falls to. It is the examiner. Just because an applicant “feels” that such and such is not important (for prior art purposes or for validity or for ANYTHING else), the requirement that you are bound under still demands that you supply the item to the Office so that the Office can decide.

            You have not as yet answered a point put before you Ned:

            Let’s be clear here Ned – are you advocating not following the rule because in your mind it is not a law?

            The USPTO Office on Enrollment and Discipline awaits your answer.

            Reply
            1. anon, the requirements of candor require honest dealing with the PTO. Filing claims that are patentable over the art, making arguments that are consistent with the specification, treating the same prior art consistently, non misrepresenting the facts, are all required of a practitioner.

              With this decision by the Federal Circuit, our clear duty to our clients is to not file any court documents with the PTO, period. The risk to the client is too great.

              If the Patent Office still wants court documents, they will have to protect us by rule in some fashion.

              Reply
              1. our clear duty to our clients is to not file any court documents with the PTO, period

                Simply put Ned, you are dead wrong and would be committing malpractice by advising your clients of this action.

                The duty to report to the Office has no caveats to exclude documents from court proceedings.

                None.

              2. Ned,

                I am still looking for a clear and unequivocal answer to this question:

                Are you advocating not following the rule (reporting a known item, be it a litigation derived item or not) because in your mind it is not a law?

                I am hoping that the third time I ask this simple and direct question will be the charm and that I receive a simple and direct answer.

  6. Why is the word “preamble” in a utility patent claim?

    Reply
    1. Let’s check the glossary.

      And after that, the glossary for the glossary.
      And after that, the glossary for the glossary for the glossary.
      And after that, the glossary for the glossary for the glossary for the glossary.
      And after that, the glossary for the glossary for the glossary for the glossary for the glossary.
      And after that, the glossary for the glossary for the glossary for the glossary for the glossary for the glossary.

      Or maybe, just read the claims as they are meant to be read: through the eyes of an ordinary person in the art to which the invention pertains, having been informed by the specification.

      But of course, you know – or should know – this already.

      Reply
  7. If the PTO had used the litigation document statement as a basis for a rejection, then the applicant could have argued against it. It was parties (and judges) that later used the statements in the IDS references as prosecution statements.

    The courts thought that the statement meant: “please consider these statements as if being made in argument before the patent office in this examination.” One does wonder why the examiner was to consider then otherwise because they likely did not constitute prior art or statements by those of ordinary skill in the art about the state of the art.

    Quite frankly, were these put in the record just to avoid raising questions after the prosecution about whether they should have been considered? A case of throwing documents at an examiner to waste his examination time so that an attorney could say that he did not even think about whether they should be in the record?

    If so, an entirely well-deserved result.

    Reply
    1. Erik, no doubt the documents were submitted sole to avoid any later accusation of inequitable conduct. They were submitted to protect the client, not to harass the examiner.

      But, since the Federal Circuit likes to bite the hand that feeds them, to shoot the messenger, to allow no good deed to go unpunished, to create nonsensical rules of law that create significant collateral damage to the patent system, the present decision is right up their alley.

      These Federal Circuit judges are truly a piece of work.

      Reply
        1. BMC Resources, anon. Lemley was part of the problem. Also Rader and the others on the panel.

          But, these guys invent new ways to screw up the patent system on a monthly basis. How do they do that? It was that long ago that Chen threw a monkey wrench into the law of double patenting that made no sense at all.

          Reply
          1. I do not recall the Chen wrench.

            I also point out that while you love to throw names and accusations at the CAFC, you still fail to see the prime instigators of much of the morass in patent law as coming from the Supreme Court.

            In critical part, your focused venom against Judge Rich is most odd. Here you have a man intimately involved in writing the actual words that Congress (the branch of the government given authority to write patent law by our constitution), and thus – knowing the truest interpretation of those words, and yet, you seek to attack him, belittle him, and call him names and every single opportunity that you can take.

            This is clearly because of what Congress did in 1952 to repeal the common law evolution tool of defining “invention”** because the Supreme Court had become too judicially active. It is clear that you want a certain level of judicial activism and your NIMBYism, shows in your selective criticisms of the Court, while you choose to ignore transgressions of exactly the same kind that align with your agenda.

            ** as noted, “invention” and a whole host of corollary phrases including the phrases that you cling to in certain 2nd circuit cases.

            Your lack of objective treatment of these cases – and of history – greatly lessen your effectiveness on speaking out against the judicial activism that you happen not to like.

            And while you are likely to disappear (yet again) from a comment of this nature, you would be well-served to contemplate what I tell you – that is, if you want to be persuasive, you should be consistent.

            Reply
            1. anon,

              Chen’s masterwork:

              GILEAD SCIENCES, INC. v. NATCO PHARMA LIMITED, No. 2013-1418 (Fed. Cir. Apr. 22, 2014).
              link to scholar.google.com

              On Rich, the one positive from his reign is a focus on the statute. The courts need to adhere to the statute, period.

              Reply
              1. On Rich, the one positive from his reign is a focus on the statute.

                Of course, you say this now, but out of the other side of your mouth you neglect the fact that there existed NO other judge as intimately knowledgeable of the words and intent of the 1952 Act as Judge Rich.

                No other.

          2. I think Ned that they have the intent to burn the system down. Certainly, Lemley, Laurie, etc. do. They are judicial activist with an intent to burn. Rich was not like that.

            Reply
            1. Night, Rich was pro-patent (bar) beyond any doubt. Whether he was good for the patent system is debatable. One has to view the system from all sides, the patent owner and the patent defendant. Rich seemed to see only one side.

              Lemley, on the other hand, seems biased entirely on the patent defendant side. Everyone has to take that into account with reading anything he writes.

              Reply
              1. Strong patent rights are good for everyone.

                (of course, this does mean that the patent must first have been validly granted – but as is often the case, the anti’s want different laws to be in effect that would control such grants)

              2. Well, anon, a patent without the ability to exclude is not really a patent, IMHO.

                It wasn’t that long ago that we prided ourselves on being the only nation in the world that did not provide compulsory licenses.

                Well, since eBay, those halcyon are gone, gone with the wind.

  8. You know, taking the big picture on this one, the narrowed claim scope isn’t really fair. The PTO certainly wouldn’t assume that you are disclaiming claim scope by filing an IDS. I’ve never heard of an examiner saying, gee, I took a look at those litigation documents (and yes I have filed them before) and it is clear that you are disclaiming scope. I am going to allow the application with the narrower scope. —-Never happen.

    So, if the public did assume the narrower claim scope, then they didn’t understand the nature of the IDS and they should have hired an attorney.

    Just anther cr#p opinion by a Fed. Cir. judge. What a surprise. Obama should just appoint Lemley to replace Rader and let’s just burn the whole thing down. Maybe I should jump in and try to torch the system too and see if I can’t get a Google to give me $10 million in stock options.

    Reply
      1. Aren’t patent law standards usually from the perspective of a PHOSITA and not a patent attorney? Not sure that changes your view, but something to think about.

        Reply
        1. Anonymous, attorneys file IDSs with cover memos all the time. They want the examiner to review the materials, of course, but they really do not expect more than a cursory review. Most attorneys file IDSs only to avoid accusations of inequitable conduct.

          I have been involved in reexaminations where a court has previously construed the claims in court. To the extent the constructions were litigated and decided, and the court case final, the constructions are binding. I think these should be brought the attention of the PTO and not just in an IDS. To the extent one wants the examiner to pay attention, one really has to put the constructions in an amendment and argue them.

          But in an IDS that by rule are non binding?

          I cannot agree that what we have here is a CLEAR disavowal of scope. Yet the breadth of the holding of the court is that such stipulations contained in an IDS are just such a disavowal.

          Ouch!

          Reply
          1. I agree on the disavowal point. Independently, I think constructions stipulated to should be binding under judicial estoppel. What difference does it make that a final judgment wasn’t reached? A stipulated construction isn’t going to be appealed / reversed because the parties agreed. Otherwise, whether the stipulated construction is binding on the patentee just depends on the fortuitousness of whether the case went to final judgment.

            Reply
        2. “[i]t would have been natural for both the PTO and the public to rely upon the stipulation in determining the scope of the claimed invention.”

          If the examiner had relied on the construction during prosecution, the examiner would have said so in an Office Action. This just —again– creates a nightmare scenario based no hypotheticals fabricated in the mind of a judge that do not correspond to real world practice.

          Reply
          1. If the examiner had relied on the construction during prosecution, the examiner would have said so in an Office Action.

            I think you overlook the meaning of what is it to be “considered” by an examiner (and overplay whether something ‘considered’ must be affirmatively noted – it does not).

            Reply
  9. As I mentioned before, after this decision, no one in their right mind would ever even think of submitting court documents to the PTO in an IDS.

    Kinda like finding disclaimers in patent specifications for summarizing “the invention.” People simply stopped summarizing the invention.

    Reply
    1. Also as mentioned before, one may not abdicate one’s duty to present ANY documents to the PTO that one is aware of.

      The fact that these particular documents are court documents does not change that existing duty.

      This is NOTHING like the summarizing of the invention patent profanity that you mention Ned.

      Reply
    2. This decision does not permit applicants to ignore their duty of disclosure and good faith dealings with the PTO that are required under the law.

      Reply
      1. “Required under the LAW…”

        Agreed. Something that others ignore.

        Reply
        1. Are you ignoring the rule (and law) link I supplied just yesterday? Or are you making a stand that any action by the Office for internal processing rules are strictly lawless and need not be obeyed?

          Reply
          1. Rules govern conduct between applicants and the government. They are not law.

            Reply
            1. And the post I supplied in addition the rule….
              (and I notice you did not answer as to following the rules of procedure in the Office – are you advocating that those need not be followed?)

              Reply
              1. Ned,

                And yet again you disappear from our conversation when a simple and straight forward question has been put to you.

                This is not a difficult question.

            2. They are not law.

              Let’s be clear here Ned – are you advocating not following the rule because in your mind it is not a law?

              Reply
              1. Ned,

                In your honest opinion, what do you think that the Head of the Office of Enrollment and Discipline would say to your view regarding following the rules of procedure before the Office?

      2. Dennis, under the LAW, stipulations are not binding as collateral estoppel or judicial estoppel.

        Reply
        1. Thanks Ned. The test for disclaimer of scope has never risen to the level of either collateral estoppel or judicial estoppel.

          Reply
          1. Dennis, the situation might be different if the position was argued in court or anywhere to distinguish prior art, and that argument was successful.

            But just stipulating to a claim construction is done completely out of context of validity, and normally, infringement is the only issue that is really important. Thus, a stipulation that narrows scope gives up potential infringement and does not gain an advantage for the patent owner. It is critical for estoppel purposes that the litigation position be advanced for the benefit of the patent owner.

            This is why arguments against prior art in related foreign cases have just been (recently only) been given estoppel effect. The argument is for the benefit of the patent owner.

            As Night remarked above, this decision is wrong, and it will cause a lot of havoc. I can imagine now that everyone infringer will now be poring through IDSs for stipulations in court proceedings to argue disclaimer. This decision is tremendously unfortunate.

            I can imagine prosecutors across the law discussing whether they will more jeopardize their clients by submitting court documents or withholding them. Some, might be checking to see if their malpractice insurance is up to date.

            Reply
            1. Ned: Following your comment that OUS arguments have been given estoppel effects, can you recall the case? I have encountered OUS arguments treated as adoptive admissions in litigation, but had not realized that they might create estoppel.

              Reply
          1. Annoymous, just to be clear, here is the Supreme Court in 2001 on judicial estoppel, New Hampshire v. Maine, 532 U.S. 742, 121 S. Ct. 1808, 149 L. Ed. 2d 968 (2001).
            link to scholar.google.com

            “‘[W]here a party assumes a certain position in a legal proceeding, and succeeds in maintaining that position, he may not thereafter, simply because his interests have changed, assume a contrary position, especially if it be to the prejudice of the party who has acquiesced in the position formerly taken by him.’ quoting a prior Supreme Court case.

            “Although we have not had occasion to discuss the doctrine elaborately, other courts have uniformly recognized that its purpose is “to protect the integrity of the judicial process,” Edwards v. Aetna Life Ins. Co., 690 F. 2d 595, 598 (CA6 750*750 1982), by “prohibiting parties from deliberately changing positions according to the exigencies of the moment,” United States v. McCaskey, 9 F. 3d 368, 378 (CA5 1993). See In re Cassidy, 892 F. 2d 637, 641 (CA7 1990) (“Judicial estoppel is a doctrine intended to prevent the perversion of the judicial process.”); Allen v. Zurich Ins. Co., 667 F. 2d 1162, 1166 (CA4 1982) (judicial estoppel “protect[s] the essential integrity of the judicial process”); Scarano v. Central R. Co., 203 F. 2d 510, 513 (CA3 1953) (judicial estoppel prevents parties from “playing `fast and loose with the courts’ ” (quoting Stretch v. Watson, 6 N. J. Super. 456, 469, 69 A. 2d 596, 603 (1949))). Because the rule is intended to prevent “improper use of judicial machinery,” Konstantinidis v. Chen, 626 F. 2d 933, 938 (CADC 1980), judicial estoppel “is an equitable doctrine invoked by a court at its discretion,” Russell v. Rolfs, 893 F. 2d 1033, 1037 (CA9 1990) (internal quotation marks and citation omitted).

            Courts have observed that “[t]he circumstances under which judicial estoppel may appropriately be invoked are probably not reducible to any general formulation of principle,” Allen, 667 F. 2d, at 1166; accord, Lowery v. Stovall, 92 F. 3d 219, 223 (CA4 1996); Patriot Cinemas, Inc. v. General Cinema Corp., 834 F. 2d 208, 212 (CA1 1987). Nevertheless, several factors typically inform the decision whether to apply the doctrine in a particular case: First, a party’s later position must be “clearly inconsistent” with its earlier position. United States v. Hook, 195 F. 3d 299, 306 (CA7 1999); In re Coastal Plains, Inc., 179 F. 3d 197, 206 (CA5 1999); Hossaini v. Western Mo. Medical Center, 140 F. 3d 1140, 1143 (CA8 1998); Maharaj v. Bankamerica Corp., 128 F. 3d 94, 98 (CA2 1997). Second, courts regularly inquire whether the party has succeeded in persuading a court to accept that party’s earlier position, so that judicial acceptance of an inconsistent position in a later proceeding would create “the perception that either the first or the second court was misled,” Edwards, 690 F. 2d, at 599. Absent success 751*751 in a prior proceeding, a party’s later inconsistent position introduces no “risk of inconsistent court determinations,” United States v. C. I. T. Constr. Inc., 944 F. 2d 253, 259 (CA5 1991), and thus poses little threat to judicial integrity. See Hook, 195 F. 3d, at 306; Maharaj, 128 F. 3d, at 98; Konstantinidis, 626 F. 2d, at 939. A third consideration is whether the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped. See Davis, 156 U. S., at 689; Philadelphia, W., & B. R. Co. v. Howard, 13 How. 307, 335-337 (1852); Scarano, 203 F. 2d, at 513 (judicial estoppel forbids use of “intentional self-contradiction . . . as a means of obtaining unfair advantage”); see also 18 Wright § 4477, p. 782.

            In enumerating these factors, we do not establish inflexible prerequisites or an exhaustive formula for determining the applicability of judicial estoppel. Additional considerations may inform the doctrine’s application in specific factual contexts. In this case, we simply observe that the factors above firmly tip the balance of equities in favor of barring New Hampshire’s present complaint.

            New Hampshire’s claim that the Piscataqua River boundary runs along the Maine shore is clearly inconsistent with its interpretation of the words “Middle of the River” during the 1970′s litigation. As mentioned above, supra, at 747, interpretation of those words was “necessary” to fixing the northern end point of the lateral marine boundary, Report 43. New Hampshire offered two interpretations in the earlier proceeding—first agreeing with Maine in the proposed consent decree that “Middle of the River” means the middle of the main channel of navigation, and later agreeing with the Special Master that the words mean the geographic middle of the river. Both constructions located the “Middle of the River” somewhere other than the Maine shore of the Piscataqua River.

            752*752 Moreover, the record of the 1970′s dispute makes clear that this Court accepted New Hampshire’s agreement with Maine that “Middle of the River” means middle of the main navigable channel, and that New Hampshire benefited from that interpretation. ” Id. at 749-752.

            Reply
          2. Annoymous, just to be clear, here is the Supreme Court in 2001 on judicial estoppel, New Hampshire v. Maine, 532 U.S. 742, 121 S. Ct. 1808, 149 L. Ed. 2d 968 (2001).
            link to scholar.google.com

            “‘[W]here a party assumes a certain position in a legal proceeding, and succeeds in maintaining that position, he may not thereafter, simply because his interests have changed, assume a contrary position, especially if it be to the prejudice of the party who has acquiesced in the position formerly taken by him.’ quoting a prior Supreme Court case.

            “Although we have not had occasion to discuss the doctrine elaborately, other courts have uniformly recognized that its purpose is “to protect the integrity of the judicial process,” Edwards v. Aetna Life Ins. Co., 690 F. 2d 595, 598 (CA6 750*750 1982), by “prohibiting parties from deliberately changing positions according to the exigencies of the moment,” United States v. McCaskey, 9 F. 3d 368, 378 (CA5 1993). See In re Cassidy, 892 F. 2d 637, 641 (CA7 1990) (“Judicial estoppel is a doctrine intended to prevent the perversion of the judicial process.”); Allen v. Zurich Ins. Co., 667 F. 2d 1162, 1166 (CA4 1982) (judicial estoppel “protect[s] the essential integrity of the judicial process”); Scarano v. Central R. Co., 203 F. 2d 510, 513 (CA3 1953) (judicial estoppel prevents parties from “playing `fast and loose with the courts’ ” (quoting Stretch v. Watson, 6 N. J. Super. 456, 469, 69 A. 2d 596, 603 (1949))). Because the rule is intended to prevent “improper use of judicial machinery,” Konstantinidis v. Chen, 626 F. 2d 933, 938 (CADC 1980), judicial estoppel “is an equitable doctrine invoked by a court at its discretion,” Russell v. Rolfs, 893 F. 2d 1033, 1037 (CA9 1990) (internal quotation marks and citation omitted).

            Courts have observed that “[t]he circumstances under which judicial estoppel may appropriately be invoked are probably not reducible to any gen eral formulation of principle,” Allen, 667 F. 2d, at 1166; accord, Lowery v. Stovall, 92 F. 3d 219, 223 (CA4 1996); Patriot Cinemas, Inc. v. Gen eral Cinema Corp., 834 F. 2d 208, 212 (CA1 1987). Nevertheless, several factors typically inform the decision whether to apply the doctrine in a particular case: First, a party’s later position must be “clearly inconsistent” with its earlier position. United States v. Hook, 195 F. 3d 299, 306 (CA7 1999); In re Coastal Plains, Inc., 179 F. 3d 197, 206 (CA5 1999); Hossaini v. Western Mo. Medical Center, 140 F. 3d 1140, 1143 (CA8 1998); Maharaj v. Bankamerica Corp., 128 F. 3d 94, 98 (CA2 1997). Second, courts regularly inquire whether the party has succeeded in persuading a court to accept that party’s earlier position, so that judicial acceptance of an inconsistent position in a later proceeding would create “the perception that either the first or the second court was misled,” Edwards, 690 F. 2d, at 599. Absent success 751*751 in a prior proceeding, a party’s later inconsistent position introduces no “risk of inconsistent court determinations,” United States v. C. I. T. Constr. Inc., 944 F. 2d 253, 259 (CA5 1991), and thus poses little threat to judicial integrity. See Hook, 195 F. 3d, at 306; Maharaj, 128 F. 3d, at 98; Konstantinidis, 626 F. 2d, at 939. A third consideration is whether the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped. See Davis, 156 U. S., at 689; Philadelphia, W., & B. R. Co. v. Howard, 13 How. 307, 335-337 (1852); Scarano, 203 F. 2d, at 513 (judicial estoppel forbids use of “intentional self-contradiction . . . as a means of obtaining unfair advantage”); see also 18 Wright § 4477, p. 782.

            In enumerating these factors, we do not establish inflexible prerequisites or an exhaustive formula for determining the applicability of judicial estoppel. Additional considerations may inform the doctrine’s application in specific factual contexts. In this case, we simply observe that the factors above firmly tip the balance of equities in favor of barring New Hampshire’s present complaint.

            New Hampshire’s claim that the Piscataqua River boundary runs along the Maine shore is clearly inconsistent with its interpretation of the words “Middle of the River” during the 1970′s litigation. As mentioned above, supra, at 747, interpretation of those words was “necessary” to fixing the northern end point of the lateral marine boundary, Report 43. New Hampshire offered two interpretations in the earlier proceeding—first agreeing with Maine in the proposed consent decree that “Middle of the River” means the middle of the main channel of navigation, and later agreeing with the Special Master that the words mean the geographic middle of the river. Both constructions located the “Middle of the River” somewhere other than the Maine shore of the Piscataqua River.

            752*752 Moreover, the record of the 1970′s dispute makes clear that this Court accepted New Hampshire’s agreement with Maine that “Middle of the River” means middle of the main navigable channel, and that New Hampshire benefited from that interpretation. ” Id. at 749-752.

            Reply
            1. Seems like this would often be appropriate for stipulated construction (but maybe not always).

              Reply
              1. Water is wet.

                You need more than to say that stipulations are compromises. They are agreed upon compromises, and one party to whom such an agreement is made is surely bound by what that party agrees to right? Your own middle of the river case shows that no less.

      3. I thought, Dennis, you said that J. Moore gave us a way out. Just put in there a disclaimer regarding claim scope and we are good.

        Reply

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