Veritas Tech v. Veeam Software (Fed. Cir. 2016)
In an important decision, the Federal Circuit issued a limited rejection of Inter Partes Review amendment procedure — holding that the PTAB acted in an arbitrary and capricious manner by denying the patentee’s motion to amend its challenged claims.
Although claim amendments are officially allowed in IPR proceedings, the Patent Trial & Appeal board has a practice of only approving amendments after the patentee shows that the claims as amended are patentable over the references at issue in the case. As part of this process, the PTAB requires that the patentee discuss each feature added to the claim and “whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim.” Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00419, slip op. at 4–5 (Paper 32) (PTAB March 7, 2014).
Here, the patentee did not discuss each new feature individually but rather merely stated that the combination of new features were not described in the prior art. And, because the patentee failed to discuss each added feature separately, the PTAB found that the patentee “failed to meet its burden of showing that it is entitled to an award of a patent on a system having those features.”
On appeal, however, the Federal Circuit rejected that analysis — finding it “arbitrary and capricious.” In particular, the court wrote that the discussion of the combination was not “meaningfully different” from the PTAB’s proposal.
In this case, we fail to see how describing the combination is meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.
This case may have some impact on the pending en banc appeal In re Aqua Products. That appeal addresses the following two questions:
(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?
(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?
The Veritas court writes that the PTAB decision here is erroneous regardless of the outcome of Aqua.
Verily, Veritas is nice but not really a broad or widely applicable holding. No IPR claim amendment rule or statute has changed. The patent owner still has the burden to show that the IPR proposed substitute claim includes a showing that this proposed claim is patentable over the IPR art of record and the application file history art.* But in this case they hold that the amount of such evidence provided by the patent owner for its proposed amendment WAS adequate, even under the APA review standard of “Arbitrary and Capricious” for the Board’s decision on that. Now this case goes back to the PTAB for entry and an ultimate 103 finding.
*Plus. if the attorney for the patent owner knew of even better art, and did not disclose it, they have created an IC defense on top of the “intervening rights” statutory limit on recoveries from post-grant amended claims.
If the Federal Circuit takes this further (e.g. w/ Aqua Products), then I wonder if patent holders might sometimes even prefer IPR (instead of court) on occasion. Meaning that even if the Supreme Court takes up MCM and rules that instituting an IPR requires consent of the patent owner, there may indeed be times when the patent owner would agree (i.e., when they believe they have a reasonable shot at saving the patent). In some cases that could be win-win: when a forced claim narrowing reduces a petitioner’s liability for infringement (and cheaper/faster than a lawsuit…), while still preserving valid scope for the patent owner.
“ even if the Supreme Court takes up MCM and rules that instituting an IPR requires consent of the patent owner,‘
One not so minor problem Ken – that is just NOT how the law is written, and the Supreme Court has NO authority to add any such writing to the law passed by Congress.
You cannot get “there” from “here.”
You too jump to far to some idea of an amendment “by right,” where no such thing exists (your calculus of prefering IPR has an error at the foundation level).
“…that is just NOT how the law is written, and the Supreme Court has NO authority to add any such writing to the law passed by Congress.”
I don’t disagree, but remember that: 1) the Supreme Court manages to violate this principle all the time, without consequence, and 2) the MCM case is presenting a *constitutional* argument, which if correct would rightly trump the statute written by Congress.
(I realize that your response to #2 may be to say the Court’s only option is to strike down the whole AIA, but no matter how right you may be about that, they simply won’t do it – per #1.)
I do not see your “won’t do it per #1.”
Also, as I have previously explained in great detail, the Court in the present instance simply does NOT have the ability to render a decision that effectively does something that Congress EXPLICITLY rejected for the AIA.
Your “#1” is simply NOT an option if a portion of the AIA is deemed unconstitutional. You will have NO choice BUT to follow the mandate of Congress and treat the ENTIRE law as one bulkhead-less ship that sinks or stays afloat in its entirety.
Remember folks: “anon” is all about “patent quality.”
Sure he is.
LOL – do not mistake knowing and understanding the law (and what it means) with NOT wanting patent quality.
Yes, that will mean that you will have to pay attentions AND not engage in your usual prevarications.
(and it undoubtedly means, that you will absolutely
F
A
I
L
at doing so)
do not mistake knowing and understanding the law (and what it means) with NOT wanting patent quality.
Thanks. I’m already aware that your level of knowledge of “the law” has little do with your sooper dooper serious concerns about the quality of patents, particularly the kinds of patents that are frequently asserted by your beloved tr0lls in the “do it on a computer” “arts”.
It’s just a total coincidence — totally! — that you have been a non-stop critic of the AIA (including IPRs) and also a major incessant whiner over pretty much every CAFC and Supreme Court that has devalued the junk whose “quality” you pretend to be oh-so-concerned about.
Just keep blowing that “patent quality” dog whistle, “anon”! Nobody can tell what you’re up to. It’s almost as convincing as the “obviousness will take care of anything” story that you guys love to tell so much, at the same time you complain nonstop about KSR. Who do you think you’re fooling?
““dog whistle”
MM learned a new phrase to use lol. That phrase is the stup idest phrase I’ve heard in awhile. If you want to say “coded language” just say coded language. That way everyone who isn’t a libta rd will also understand what you’re talking about and don’t have to decipher your “coded language”.
MM learned a new phrase to use lol.
I’ve been using that phrase for a decade, at least, and I’ve used it here plenty of times before. Maybe you didn’t know what it meant. That’s not my problem.
That phrase is the stup idest phrase I’ve heard in awhile.
St upider than “Make Mexico great again also”? Hey, if you say so.
If you want to say “coded language” just say coded language.
Okay, Mr. Language Policeman. LOL
“I’ve been using that phrase for a decade, at least, and I’ve used it here plenty of times before. Maybe you didn’t know what it meant. That’s not my problem.”
Sure. eyeroll. But fine fine, it may have been prevalent in libt ard circles for a few decades. They’ve have trouble speaking plain English for awhile and insist on making up new definitions for old words whenever it suits their ideology. It’s a problem on the left that’s gaining recognition even by those on the left.
“Make Mexico great again also”
I haven’t heard much about that, but hey bro, that’s up to the mexicans though I’ll support it. I’ve got nothing against mexico or mexicans and wish them nothing but the best, in mexico. As best I’ve been informed there are whole areas of their country effectively ruled by cartels and not the gov. They could use a bit of maekin’ Mexico.
“Okay, Mr. Language Policeman. LOL”
You can sit around and lol all you like but even your fellow lefties are starting to get tired of people on the left not knowing how to express themselves. It hurts your outreaching to people to touch their “emotions” and give them “the feels”.
I’ll grant you this, 6: my use of the term “dog whistle” in this context isn’t really an accurate description of what’s going on. The attempt to shift the focus away from subject matter eligibility issues to “patent quality” is more of a smoke screen or a sideshow than a “dog whistle”, i.e., it’s a distraction and nothing more than that. The reason it’s just a distraction is because the plan to improve “patent quality” is to somehow make everybody at the PTO work ten times harder for the same pay (and that’s after you fire all the “rogues” who “never allow anything”). And that’s after you “overturn” Mayo and Alice and KSR. Only then will we see the True Quality Patents. Only then will we see Real Progress in s0ftware! You’ll be able to manage bingo games in Indiana from your virtual reality kingdom on planet Xykron, just by blinking at the blink-detectors that determine when you blink and send the signal to a rule applier. Wirelessly! It’ll be so fabulous. Think about the incredible targeted ads you’ll see.
I’m not sure if this was a pointless comment or a decent meta joke.
It hurts your outreaching to people to touch their “emotions” and give them “the feels”.
Because relentlessly stoking fear about “real America” being “taken over” by “outsiders” (watch out for Kenyans!) isn’t an emotional tactic at all. Nobody falls for that!
This is deep stuff, 6. Did you read it somewhere, or is this your own personal theory based on observations made in the super down-to-earth and totally normal Washington DC metro area?
Ben: I’m not sure if this was a pointless comment or a decent meta joke.
You need to read it again! 😉
Malcolm being smacked around by 6 as a “libtard” has to be one of the more funny diversions off topic in quite a while…
“The reason it’s just a distraction is because the plan to improve “patent quality” is to somehow make everybody at the PTO work ten times harder for the same pay (and that’s after you fire all the “rogues” who “never allow anything”)”
I know right? It’s such a graet planzor!
“Wirelessly!”
Don’t forget over a proxy on the interbuts!
“Because relentlessly stoking fear about “real America” being “taken over” by “outsiders” (watch out for Kenyans!) isn’t an emotional tactic at all. Nobody falls for that!”
MM bro you’re buying into a mode of liberal thought. Some liberals bring this line to us because they think that conservatives “feel” things the way they themselves do and so any time anyone makes a statement that makes them feel something they presume that conservatives also get those same feelings. Spoiler alert MM, if conservatives “felt” things as a liberal does then they’d be a liberal (because of those feelings). They’re “dead inside” politically bro (unless the topic is abortion lol because dem baybies!). So no, for the most part that isn’t an appeal to feelings (maybe some few stragglers get caught up in the feelings). People he’s talking to generally think of this as more of a statement of fact, and one they don’t particularly like, as they like their country as it is thx. This is because conservatives don’t communicate via virtue signaling to the feelings of others to trigger emotional responses. They’re the bad as ses wandering around trampling the feelings of others doing the things needed to be makin’ Merica’ Graet. All while trying to tread softly so the liberals don’t constantly throw too big of a hissy.
“This is deep stuff, 6. Did you read it somewhere, ”
It’s all over the liberal media, multiple sources. They know their best weapon is preying on the feels of womans, weak and/or guilt tripped white men and the otherwise “vulnerable” “victim class” people they identify in the country. Though they like to put it in nicer words.
It’s all over the liberal media, multiple sources. They know their best weapon is preying on the feels of womans, weak and/or guilt tripped white men and the otherwise “vulnerable” “victim class” people they identify in the country.
The “liberal media”? Multiple sources, you say? That’s fascinating stuff.
onservatives don’t communicate via virtue signaling to the feelings of others to trigger emotional responses.
Really? That’s fascinating. Where did you read that? Give me a source, please. We all should be up to speed on this deep serious stuff.
They’re the bad as ses wandering around trampling the feelings of others doing the things needed to be makin’ Merica’ Graet
Well, the “wandering around trampling the feelings of others” is pretty accurate, I suppose. Can you explain how making it more difficult to vote “makes America break”? Or is that just an example of the “wandering around” part?
Nobody could have predicted, by the way, that as the Republican party extinguishes itself it’s replaced by lizard brained paranoiacs who obsess about “weakness.”
LOL
Here’s some nighttime reading for you in case you forgot how incredibly and transparently racist the Republican party is:
link to washingtonpost.com
Let me know if you need a reminder about who to thank for that.
“Can you explain how making it more difficult to vote “makes America break”?”
Looks like in your article they were trying to hold on to the super majority they finally got hold of by rolling back reforms that democrats had passed (to help themselves). And through doing that they plan to continue to rule conservatively to Maek Merica. But I’m sure you just got done reading that history in that article and are all like “But but but they’re RAYCIST!”, mah liberal media just got done telling me so!
“link to washingtonpost.com”
That situation is so lengthy and complex that it is difficult to say that they were explicitly being racist, or even had any racist intention. Looks like they were trying to dismantle a bunch of previous democratic reforms, and they had to jump through a lot of hoops setup by democrats (the part about those hoops probably has yet to register in your liberal brain because you’re too busy screaming RAYCIST internally). But what is for certain is that the democrats are definitely using “RAYCISM” as a shield for their desired voting regulations that help their base vote. Everyone involved with the thing is split down party lines it appears. I know your liberal mind tends to think “oh well that’s because magically all the racists are in the republican party, they don’t have anyone that isn’t racist in their party and magically all the tots non-racist, if that exists, people are in the democratic party”. I’m not convinced and this episode does nothing to convince me on that. If they’re practically all, to a man, voting and ruling down party lines then it tends to raise the specter of partisanship more than racism to me. It also doesn’t surprise me that a tots unbiased republican judge (supposedly in our legal system) judged it legit and then 3 democrats who are also supposedly unbiased then ruled it not legit. I would rather like to see the rulings of the judges but don’t have time atm.
Look I’m generally in favor of more expanded voting ability myself, but I’m not going to jump on the “RAYCIST” shouting bandwagon like you are because some legislators of a party tried to roll back reforms of a different party and requested some documents to try to comply with lawls in place and then the liberal media shouted RAYCIST.
“The “liberal media”?”
If you don’t know what it is by now you’re about 10-30 years behind the times.
Vox, Jezebel, Huffpo, and a variety of new media and near all of the oldies that aren’t explicitly right wing are def left wing biased.
I also should point out for you MM that I would be surprised if republicans have, in their entire history (voting tests, poll taxes etc), managed to disenfranchise as many lefty voters as the democratic party did in just this one single year with their throwing the nomination to Hillary.
You had gotten me kinda interested in this (what I really consider to be mostly a non-issue) and I went ahead and read some other articles. Bro there are states around the country cracking down on many liberalized voting practices. And I didn’t even realize what all were at issue in all these various things. Some of those voting practices that are being regulated are ridiculously slip shod.
Just as a for instance someone is fighting Ohio’s attempt to restrain its early voting period. I didn’t really understand what they meant by that as in the states where I’ve lived we never really had that except for special circumstances. Apparently in Ohio you can vote by mail just any ol time throughout Oct. And anyone can do it (not just people that have to be absent for xyz reason). Yeah I have no problem with cutting back on that. Might it impact african americans? Sure, it might, I don’t even know if it necessarily will and I don’t mind cutting it back regardless of bringing up that side issue. Another one concerns people other than the absentee voter himself (or a fam member or caregiver) turning in his ballot to make anyone else doing so a felony. Yeah I have no problem with that. Apparently this article then says this regulation will harm a “standard Democratic practice of gathering ballots in minority communities or on reservations”. Um yeah I didn’t have any problem with that regulation when they first mentioned it, before they mentioned racial disparity or the Democratic disparity. The law itself at present seems loosey goosey in the extreme. If you have a bunch a middle men that can just turn in ballots willy nilly that seems ridiculous to me, just begging for someone to drop or add some votes, even if nobody has as yet. Like literally begging for it. If it truly is that much trouble to come to the polls they can still mail their own ballot.
link to washingtonpost.com
6, Republicans had nothing to do with any poll tax. That was a feature of the Democrat party.
Remark: it seems to me that the modern media is trying to link the Republican Party with the old South and the Democrat party of that era. For many Americans today, it is hard to remember that both JFK and Jimmy Carter were elected by a solid South, the voting block that made the Democrat party viable for so many years.
The Republican Party, from the time of Lincoln, through the civil rights era, has solidly been behind civil rights and equal protection. Even recently, a lot of the rulings for gay right have come from Republican judges.
That said, it does appear that with Ronald Reagan, a lot of socially conservative, but previously Democrat voters, started voting Republican, perhaps because of Roe v. Wade. But besides this divide between the parties, the main division I see is between the economic socialist vs Jeffersonian small government types.
But the propaganda is strong, and even you, 6, seem to think the racist acts of the Democrat party, the party of slavery and Jim Crow, are the acts of the Republican party. So confused are the undereducated Americans about this history, that many are confused when you tell them that Lincoln was a Republican.
“the main division I see is between the economic socialist vs Jeffersonian small government types.”
Yeah that is the main division these days that I think of as well. Though immigration is becoming more of an issue due to democrats trying to use it to give themselves a permanent ticket to power (all while shouting “but but muh immigrant minorities!”). Esp as they want to import people from vastly more communistic countries. Say nothing of the cultures/”beliefs” being imported. While the majority of immigration does come from Mexico, that is by far the least objectionable kind imo, though even that is politically disasterous to the republican party. I honestly don’t know why establishment republicans don’t take that as an existential threat.
Funniest thing about immigration is that we could easily loosen the restrictions on immigration for people with college degrees and “import the best” (especially if they also express a desire to adopt our culture instead of set up their own little country in a country) . But that won’t satisfy the people crying “RAYCIST” because they’re ta rded. Unless they can bring in their chosen minority “victims” (ala people here illegally, breaking the law) then they just don’t care. Still though the problem remains that these people, at least on first generation and maybe second, will tend to vote democratic, so it’s just altering the electoral landscape to benefit dems.
As to the racism stuff, no you’re def right about what you said and also of history. And I admit up until recently I’d been willing to just accept the “media line” that there was magically a huge switch in party allegiances back in the day between “racists” because frankly I didn’t much care, though I had heard some things. How this all supposedly played out was a bit murky. But now that the democrat’s favorite word is “RAYCIST” and they like to use it a hundred times a day to describe anything that even remotely “harms” or makes life less convenient for any minority person (so that it’s played out of course). I did think it was worth looking into. And frankly I’m not all that sold. Sure it appears some people switched over, but I hear/see no solid evidence of a solid switch over. People talk about the southern strat and all this, but it seems overplayed. What I see evidence of is some people switching, and the democratic party suddenly realizing that there was an opportunity to kow tow to, serve and ultimately victimize minority communities to help themselves politically (all while appearing to just “want to help the minority community” while permanently assigning them and most of their progeny victimization and victimhood). Though there were already substantial problems being caused by the whole segregation stuff. It was a difficult time frankly and the whole thing shook out weird. And all that came from a history that had even more problems (slavery and colonialism evils etc.) and before that perhaps even said to be even more filled with problems (the people having been natives of xyz lands fighting with each other etc barbarian style).
It’s a crazy line of history. And the children of the 60’s mucked all of society up, turning it upside down, compounding all other problems.
It may be too soon, 6, to say, but I see a change in the Republican Party — it no longer favors free trade that primarily benefited business at the expense of manufacturing jobs. The nomination of Trump has all but adopted the Ross Perot platform.
This switch, I think, is going to find a lot of traction in the worker community and in the inner city that can benefit most from Trump’s proposals.
But the switch has split the party, with some establishment types, who believed in unlimited free trade, actually leaving the party.
Trump’s views on immigration also conflict with the establishment Republicans who like immigrant labor to lower wages. But to those migrants in the US already, Trump’s ideas might find support as they seek good paying jobs for the future.
Yeah, but I think in the wider electorate the media shouting RAYCIST dwarfs the effects of the split down free trade. Only politicos or manufacturing people really care about trade policy. On the other hand there are a lot of ignorant people that haven’t yet been shown the light as to how hollow the shouts of RAYCIST are now and are primed to be sensitive to shouts of RAYCIST by that same media for years now. Trump says mexican gov doesn’t send their best over and sends raepists and murders over, though some are good people he thinks, and media says this is tots RAYCIST. Trump says he fears a federal judge might possibly be biased in a lawlsuit against him because of his heritage as a member of an immigrant family and on account of Trumps political message. Media and Paul Ryan denounce this as being tots RAYCIST. Hillary calls a whole class of black kids “superpredators” and the media remains more or less mum. Hillary supposedly was literally in blackface in her youth at a party, media doesn’t say squat. The examples go on and on as the media props up one de minimus racist over the other.
Though let me be clear, both Trump and Hillary are unquestionably RAYCIST, just as all people that old are moreso than younger people, who are moreso still than even still younger people. That trend may well reverse itself if the liberals don’t stop what they’re trying to do.
And idk bro, on the free trade thing I see it as more of a shift of the party, if anything, to “SMART free trade” with terms made to favor us rather than just plain ol “free trade without condition” where their country gets the lion’s share of the benes, our workers suffer most, and our business gains a bit. Which is a nuance lost on a lot of people.
“Trump’s views on immigration also conflict with the establishment Republicans who like immigrant labor to lower wages.”
Of course. They love their near free near slave labor force. It has been argued persuasively that all great empires require a slave labor/near slave labor force upon which to exist. Because otherwise nobody of the rich population wants the sht jobs that don’t actually cause much economic activity and are not all that valuable. If the elite cannot supply such a force then the empire cannot exist as an empire. We are now unquestionably an empire, the elite must provide such a force. We occupy the majority of the world’s countries, even many of the other great countries, though we do not directly govern them.
“But to those migrants in the US already, Trump’s ideas might find support as they seek good paying jobs for the future.”
Yeah but the RAYCIST nonsense overshadows any of that.
6, you have a point that the Dems/media remain intent on labeling all Republicans Raycist so that the folks who form their base do not actually listen to anything Trump/Republicans might have to say.
Trump went a long way to change that narrative last week by visiting a Black Church in Detroit. He was warmly received by Bishop Jackson and his congregation.
Talking heads on TV only comment/party line was that Trump has a long history, etc., and to not take this seriously. They have point.
That is why the only way to change hearts and minds is to keep it up, and to make it a point to visit such churches in the future, and to reach out. Otherwise, this one single effort will soon be forgotten.
“You too jump to far to some idea of an amendment “by right,” where no such thing exists (your calculus of prefering IPR has an error at the foundation level).”
I don’t think amendment would need to be “by right” in order for IPRs to become more palatable to at least some patent owners. Just knowing that denials can’t be arbitrary and capricious helps somewhat, and having the burden be lower and/or more easily shifted help a lot.
See the comments below Ken.
The easy “answer” that defeats your view is for the Office to simply deny without explanation. The only “error” by the Board in the present instance was to give a plainly CRP explanation. The law – as written – does NOT require ANY explanation.
The easy “answer” that defeats your view is for the Office to simply deny without explanation.
Except for that “arbitrary and capricious” thing.
The law – as written – does NOT require ANY explanation.
Love the “all caps.” Can the PTO deny amendments in an IPR because of the race of the patentee? Go ahead and enlighten everyone. Make Friday fun.
Except you missed the rest of what I posted Malcolm.
You are in too much of a hurry – slow down and R E A D what I have stated.
No, you missed what I posted! You just missed it. You didn’t read it. You should go back and read it. Take your time and read it. So you don’t miss it. It’s right there. Right there in my comment. Can’t you see it? You must have skipped it somehow. Try not to skip it again. If you skip it you might miss it. It’s really short and really clear. But don’t ask me to type it out again or rephrase it. That’s way too hard. Plus my caps key is broken so it’d be almost impossible to write it any other way. I suppose I could try bold and italics but you might miss that, too. So just find what you missed and don’t miss it this time. Thanks. And be sure to read this comment carefully, too, so you don’t miss anything here. It’s really important.
LOL – this attempted version of your meme of AccuseOthersOfThatWhichMalcolmDoes does NOT help you here Malcolm.
“The easy “answer” that defeats your view is for the Office to simply deny without explanation.”
Um yea re re that would be arbitrary and capricious. Lulz. Anon, always fancying himself a lawlta rd while never understanding the lawl.
Except your statement is not so, 6.
Show me exactly where ANY explanation is required by the AIA.
You will not because you cannot.
All administrative decisions are required to be non-arbitrary, not just in patent law. A lack of explanation is strong evidence of arbitrariness.
Or not – again Ken – show me where the AIA requires an explanation.
As they say, put up or sh ut up….
As I said that requirement is not specific to patent law, so the AIA is irrelevant. Not sure why you’re getting hostile – we’re not even really disagreeing that much.
The AIA is certainly NOT irrelevant Ken.
You cannot get to where you are going f the vehicle does not go there, and the AIA does not go there.
Sorry that your feel that my sternness is “hostile,” but you keep on overreading what is possible in the law, and want to make up CRP that is just not there.
Sure, the APA says that you cannot be arbitrary and capricious, but “arbitrary and capricious” is in context of the AIA. When the AIA merely gives a “right” to ask, and does not indicate anything more, the corresponding power to simply say “No” is enough. Somehow you want something more that is just not there.
Ken: All administrative decisions are required to be non-arbitrary, not just in patent law.
This has been explained to “anon” about ten times already. Good luck getting through.
LOL – Malcolm your type of “explanation” is that your feelings/opinion/wants “say so.”
Ten, hundred, bazillion times zero is still zero.
In some cases that could be win-win: when a forced claim narrowing reduces a petitioner’s liability for infringement (and cheaper/faster than a lawsuit…), while still preserving valid scope for the patent owner.
This has happened already because — as everybody knows — the PTO had accepted art-overcoming amendments in an IPR context numerous times prior to this decision.
Note also that nothing in this decision forces the PTO to accept every proffered amendment in an IPR.
You too, Malcolm – miss the critical calculus of having an amendment by right – which is expressly absent in the AIA.
Whether or not the Board has deigned to grant anyone else an amendment has ZERO to do with any future case. You should be able to figure out why.
You too, Malcolm – miss the critical calculus of having an amendment by right
No, I didn’t “miss” any “critical calculus.” Nice try, though.
If you have some point to make, just type it out in plain English without getting on your super small pony. We love the pink mane, though. And the sparkles! It’s really cute.
Yes – you quite DID miss the simple albeit calculus, as quite evident in the plain English that I have already provided:
“Whether or not the Board has deigned to grant anyone else an amendment has ZERO to do with any future case. You should be able to figure out why.”
Maybe instead of you dreaming up “little ponies,” you actually try to read and understand the direct and plain English already in front of you.
“simple albeit calculus”
should read
“simple albeit CRITICAL calculus”
There’s a huuuuuuge difference between “missing” the hilarious song of the k00k00 bird and ignoring it because, hey, nobody cares.
I know this is terribly difficult for you to process. But keep mumbling about “albeit calculus” and please, please, please use more capitalization! That really helps.
And your point is, …?
Try that direct and plain English that you are seemingly “so big” about.
People, can we concentrate on better alternatives to what MM dubs the “classic” unobviousness argument from Applicant (which for me carries no weight at all), to wit:
“the classic — and oft-abused — “argument” that X+Y is nonobvious because “reference A teaches X and reference B teaches Y but neither reference teaches the combination.”
On the PTO side of the debate is the equally unimpressive obviousness argument exemplified by Ned’s “Mona Lisa” 1.3.1.1
It’s like two sides shouting at each other: t’is, t’isn’t, t’is, t’isn’t, till one side gives up.
One alternative is the TSM argument. With that, both sides have an effective structured objective debate about obviousness. Daily experience at the EPO reveals it to be fair as between the inventor and the State (and therefore robust against appeals). If that is not the experience in the USA it is because TSM has been implemented incompetently by the PTO and the courts.
What an EPO Examiner would write is that it would be obvious to put B’s feature Y into A’s machine X because (as far as can be ascertained from Applicant’s specification) if you were to do that, all you would get is no more and no less than the results already taught by B. The counter-argument is obvious. Obvious too are the consequences of it, in the area of drafting skills. You get full faith and credit for what you teach, in the specification you draft. The obvious corollary is that if you don’t do the teaching you can’t have the credit that will stave off a finding of obviousness.
How is it different, at the USPTO?
The “answer” to the “vision problem” between the Malcolm strawman and the Ned canard is NOT the “here, wear my EPO glasses of the shill MaxDrei.
Talk about “strike three and you are out”….
MD; On the PTO side of the debate
What “debate” are you referring to?
In the scenario, I’m discussing, there is no “debate.” Applicants (or patentees) make a crxp “argument”; the PTO (or defendant, or petitioner) shuts that “argument” down in one sentence. And I’ll say it again: this scenario is commonplace. It happens all the time. Applicants even take this “argument” (or some dust-encrusted variation of it, e.g., ” (“if it’s so obvious, why didn’t anyone describe it before?”) all the way to the CAFC (!) and the judges call it out in the oral arguments. It’s literally the “go to” “argument” when applicants have absolutely nothing: just pretend that there’s no such thing as obviousness and attack an anticipation strawman. Look, mom! I’m winning!
Ned’s Mona Lisa story, on the other hand, is really way out there, at least as an obviousness argument. Of course there are examples of Examiners (and petitioners/defendants) trying to find a claim element in the prior art (and the universe of common sense) and failing. But I can’t recall the last time I saw anybody fudging every element of a claimed apparatus (e.g., “the Mona Lisa”) with an argument that “the tools to make it were available.” Frankly, that’s the kind of obviousness argument that applicants/patentees should be overjoyed to see from the other side because it’s so easily destroyed.
MM: “So easily destroyed….” Except when it happens to you and your client. The PTAB has used “common” sense or the like to fill in the gaps in the evidence more often than you would appreciate. The Federal Circuit has begun to dial it back a bit, but you really would not believe the farcical reasoning the PTAB has used to provide rough justice to patent owners.
One would and should expect some bias in favor of patent owners if for no other reason than that petitioners have the statutory burden of proof. But virtually all patent owners who have been through an IPR will tell your that the PTAB is an advocate on the other side and that the patent owner really has to prove patentability; and it is a high burden the PTAB imposes.
Glad to see a dialogue between MM and Ned here. The purpose of my post was to stimulate just such a discussion. It worked!
Ned you lament that the patent owner has to “prove” patentability. I suspect it isn’t quite like that. Instead, I suspect the USPTO of borrowing from the EPO toolbox (yet again). I suspect that the USPTO these days simply requires (like the EPO always has done, from its Applicants) from the patent owner a straight face skeleton prima facie argument why the claimed subject matter isn’t obvious.
Not a problem, for those inventions that deserve recognition.
Merely sitting pat and crying “Obvious? Not till you prove it so!” doesn’t work any more. Obviously!
“ Instead, I suspect the USPTO of borrowing from the EPO toolbox (yet again).”
What ELSE would an EPO shill see…..?
It’s about time the CAFC smacked down PTAB for its anti-amendment stance. I hope the trend continues with the en banc hearing in Aqua.
Absolutely.
Exactly. This is a good start, but not nearly enough. I hope that the CAFC uses Aqua Prods as a vehicle to make entry of the amendment into the default status, which is how it should be. That is to say, once the patentee proposes amendments (assuming, of course, that they conform to the statutory rules of reasonable number and no broadening, only narrowing), then the burden falls to the challenger to show why the proposed amendments are not patentable. The amendments should be entered unless the challenger can defeat them, not only if the patentee can prove them patentable, as is currently the case.
Greg,
While I see that what you want may be desirable, you TOO are succumbing to the “Ends justify the Means” type of judicial law writing that is just not acceptable.
If Congress wanted to give the (former) property holders (the patent holder) the right to have amendments, they should have written the AIA to give them that right.
They did not.
ALL that Congress DID give was the right to petition.
That is it.
Changing that right of petition to a “default” right of HAVING amendments is NOT within the authority of the judicial branch – NO MATTER how desirable that End may be.
Maybe it is the season for a quick review of Sir Thomas More….
Anon, there’s enough room in the statutory wording to allow for a default setting of “amendment for which patentee who has petitioned gets entered unless the challenger can show why patentee isn’t entitled to so amend”. That’s not the same as an *automatic* allowance of the amendments, which the statute clearly doesn’t give the patentee, but it fits within the statutory wording, so it’s not even close to something like SCOTUS inventing new eligibility requirements. To use your own logic, if Congress had intended to place the burden on the patentee to prove its amendment withstands the challenge in order for the amendment to be admitted, Congress would have written that explicitly in the statute.
Sorry but you are just not correct, Atari Man.
You cannot make the leap from what Congress HAS provided (the mere right to petition) to ANY default of a right, unless someone does something.
That is a leap too far, my friend – you are attempting to provide some NEW right not previously present with the absence of something else. And that is clearly untraceable to ANY words of Congress.
“To use your own logic, if Congress had intended to place the burden on the patentee to prove its amendment withstands the challenge in order for the amendment to be admitted, Congress would have written that explicitly in the statute.”
Here too, you jumped too far, as you are presupposing that the amendment somehow MUST BE granted. There are no such words in the AIA.
What happened in this individual case was merely the CAFC applying other law (APA) to say that the wrods offered by the Board showed enough ‘evidence’ that the Board was “arbitrary and capricious.”
But the Board is nowhere required to give ANY words in its decisions to not grant the only thing that the (prior) patent holder CAN do (which is ask). The Board not being required to say anything but “No” is a path to insulate itself from the reach of the CAFC.
I would be rather UNsuprised to start seeing the decisions regarding amendments to take this tactic.
To say that Congress did not write the AIA to give the patentee the right to amend begs the question. Statutory language is intended to be interpreted in view of pre-existing precedent. United States v. Texas, 507 U.S. 529, 534 (1993). Congress wrote (35 U.S.C. § 316(d) that “the patent owner may file 1 motion to… propose a reasonable number of substitute claims [for each challenged claim]” and that “[a]n amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.”
In other words, Congress did not explicitly allocate the burden of how to decide whether proposed claims are or are not entered. However, as noted above, the statute is presumed to be read against the backdrop of existing precedent. Existing precedent holds that the patentee’s claims are, by default, patentable. Therefore, the right way to read the statute—consistent with existing precedent—is that the challenger should bear the burden of opposing patentability.
In other words, the Congress did say that the patentee has the right to amendment. Congress said as much by not addressing the matter, knowing that this means that the statutory text would be interpreted consistently with long-standing precedent. If the CAFC announces such a holdingen banc in Aqua Prods., they will not be engaging in “judicial law writing.” They will merely be giving effect to the intent that Congress is presumed to have had in mind when it drafted the statute as it did.
“To say that Congress did not write the AIA to give the patentee the right to amend begs the question”
Absolutely NOT, Greg.
This is a critical point of understanding what is – and what is not – possible under the AIA.
There is ZERO possibility of ANY proper “interpretation” that creates what is absent in the words of Congress.
You very much are engaging in exactly the same type of CRP judicial muckery that is not acceptable in ANY “the Ends justify the Means” situation.
“ Existing precedent holds that the patentee’s claims are, by default, patentable.”
I call pure B$ on this, given that there is NO precedent for IPR for which you can depend on.
Zero.
We are NOT talking about any amendment that has been previously vetted by the Office and its examiners here, Greg, but rather, this is the more open situation of merely wanting AN amendment.
You too, cannot get “there” from “here.” Your desire simply is not – and cannot be – in accord with what Congress has written.
(another way of looking at this, is that your path leads to NEW claims in a granted patent that have NOT been vetted by the agency – in a true examination mode – authorized by Congress to so vet any such claim prior to that claim being granted. You simply CANNOT (even effectively) move the give and take of “examination” to parties outside of the Office)
Your view is simply DOA.
Nice explication, Greg. But don’t count on Anon acknowledging that you’re right. Because ANON, like MM, is NEVER wrong.
Greg’s “explication” is in error – as I have already “explicated,” Atari Man.
Greg you quote 316 thus: “the patent owner may file 1 motion to… propose a reasonable number of substitute claims [for each challenged claim]”
and then on the back of that text you announce: “the Congress did say that the patentee has the right to amendment.”
Does the tribunal have no discretion whether to admit or accede to the motion? It seems to me it is a bit of a stretch to get from a) a right to file a motion to b) an unfettered right to amend, with any amendment under the sun that takes your fancy.
I offer this comment based on my experience at the EPO, where applicant or patent owner has an unfettered right to request any amendment it pleases. But asking is one thing, getting quite another. The EPO operates a stringent admissibility filter. If you want your amendment admitted to the proceedings, better do all the things that will persuade to tribunal to exercise its discretion in your favour, and admit the amendment to the proceedings.
The way things go today at the USPTO, there are almost daily echoes of practice at the EPO. It is as if the two Offices routinely collude with each other, at least on the ticklish issue how to manage the conduct of post-issue disputed proceedings on validity.
Great.
With MaxDrei taking my side, now I have to double check myself…
As written, this opinion is circularly reasoned g arbage that the PTO should take up for reconsideration and reversal.
The PTAB’s rule is that a permissible amendment requires an accompanying argument from the patentee explaining why the claims are patentable over the prior, not just “new”. Attacking the cited references individually doesn’t address the issue that the elements are in the cited art, and the elements can be combined. Put another way, attacking the references individually (“neither teach the combination!”) isn’t what an argument for non-obviousness looks like.
Now, if there is an element cited in the claim that doesn’t appear in either of the cited references, that can changes things somewhat depending on the element.
The bigger issue, of course, is that the claims at issue here are ridiculous functionally-claimed junk of the l0west order, and once again we see the patentee kicking up dust about “gigabytes of data” when the claims cover basic logical concepts applied to even tiny amounts of data. It’s a j0ke.
Try to believe this: According to the summary of the invention,
“a map correlating destination locations on primary storage to source locations on backup storage for a set of files to be restored may be generated,” and “[a] restore of the set of files from the backup storage to the primary storage may be started.”
Use a map to locate stuff that you put in storage? Wowee zowee! These comp00ter geniuses never fail to impress. So shiny! What a farce.
In other news, I doubt there will be any way to amend BT’s junk once its IPR’d into the trash.
link to arstechnica.com
Check it out: BT claims Valve infringes on this patent (link to patents.google.com) because “Steam locally stores third-party content …. accessible to users who have access rights, precisely as claimed.”
Wow. Just …. wow. Love how the system operates on an “intelligent” computer network. But the patentee is totally not “anthropomorphizing”. Nope. The software has nothing to do with logic. LOL