Is it Appropriate Prosecute Patents for Direct Competitors on Inventions on Similar Technology without Disclosure and Waivers?

by Dennis Crouch

[Prof  Hricik may have more to say on this conflict-of-interest case, but I believe it is an interesting one and important for discussion.]

Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, SJC-11800.

A patent law malpractice case is pending before the Massachusetts Supreme Court that has major implications for patent prosecution practice.  Many patent patent attorneys and law firms develop technology-specific specialties as a marketing strategy.  The professional responsibility problem arises when the strategy is successful enough to attract multiple clients with substantial technological crossover.  Of course, this likelihood is intensified in larger law firms where more lawyers means more clients and more (potentially overlapping) invention disclosures.

Back in 2003, Maling hired Finnegan Henderson to prosecute a set of patent applications relating to screwless eyeglass hinges.  According to the allegations, it turns out that Finnegan was also representing a competitor (Masunaga) with a similar invention in the same screwless eyeglass hinge field.  Finnegan says that these were “attorneys in different offices.”  Neither client was informed or gave consent to this alleged conflict of interest and Maling argues that Finnegan’s “independent professional judgement” was impaired by the conflicting representation in violation of the Massachusetts Rules of Professional Conduct.  Among the various harms Maling alleges a delay in filing his application and wasted efforts on technology not sufficiently protected by patent.

ScreenShot163

The state trial court dismissed on failure-to-state-a-claim for the civil action with the court finding no direct adversity of interests and no nexus between the conflicting representation and the claimed harm.  The Supreme Judicial Court of Massachusetts (MA’s highest court), is now focused on the question of whether an actionable conflict arises when a single law firm files and prosecutes patent applications for similar inventions on behalf of two existing clients.

Massachusetts law:

  1. 1.7(a): “A lawyer shall not represent a client if the representation of that client will be directly adverse to another client.”
  2. 1.7(b) “[A] lawyer shall not represent a client if the representation of that client may be materially limited by the lawyer’s responsibilities to another client or to a third person, or by the lawyer’s own interests.”

 

Finnegan here argues that the allegations of filing and prosecuting a competitor’s “similar” invention is “insufficient” to even suggest a conflict of interest.   Rather, Finnegan argues an ethical conflict only arises if one of the client’s inventions are blocked by patent disclosures made by another client.

The distinction between “similar” and “novel and non-obvious” is well-illustrated by the Maling and Masunaga inventions described in the patents at issue in this case. Both inventions attempt to solve the problem of how to construct an eyeglass frame without utilizing screws. As the PTO concluded, however, each patent claims a novel solution to this problem. . . .
Here, there is no allegation that Maling and Masunaga ever were “directly adverse” to one another, in patent proceedings or otherwise. Maling cites to no case law, nor is Finnegan aware of any, in which a court has held that parties are directly adverse to one another simply because each seeks to patent technology in the same field. Such a standard, moreover, would be inconsistent with the statutory-framework discussed above, which recognizes that multiple patents may be granted in the same field so long as each claims a “new and useful” invention, or a “new and useful improvement thereof.”

Finnegan also explains that conflicting-out large law firms would make it difficult for inventors to find representation — quoting Hricik as saying that “a rule that limits a firm to representing only one client in a particular technical field ‘imposes unnecessary costs on lawyers, clients, and the system.'” Hricik & Meyer, Patent Ethics: Prosecution (2015).

In his brief, the plaintiff-appellant argues that its allegations of violation and harm are sufficient to overcome a motion to dismiss. Their brief does not detail an explanation of how similarity should be treated.

In an amicus filing, a group of major law firms, including Knobbe Martins; Honigman Miller; Nixon Vanderhye, and others arguing that direct conflict issues only arise if the inventions are so close as to lead to an interference (pre-AIA).

The amicus brief suggests that the rules may be different post-AIA because the new law sets up more of a race to the PTO (first-to-file vs first-to-invent).  This, of course, is disingenuous as the pre-AIA system included a large number of adverse impacts caused by delays in filing.

One interesting issue that arises here is that Maling had Finnegan conduct a pre-filing prior art search in 2003.  At that point, the Masunaga patent was on file, but not yet published and so did not turn-up in the search results – even though Finnegan attorneys knew of the reference and knew that it was prior art.

Michael McCabe has more of a discussion of the case on his IP Ethics and Insights Blog.

= = = = =

Most civil-action malpractice claims fail because of the difficulties of proving harm. At the USPTO and State Bars, mere violation – even without client harm – is actionable as a violation of the rules of professional responsibility. It will be interesting to see how the USPTO treats this case.

= = = = =

Read the Briefs:

 

238 thoughts on “Is it Appropriate Prosecute Patents for Direct Competitors on Inventions on Similar Technology without Disclosure and Waivers?

  1. 30

    Having been both a buyer and seller of legal services – when you are on the purchasing side – you do – and should expect a degree of loyalty from your lawyer – and his firm. Patent prosecutors – have long been my bone of contention – they never see a conflict of interest and almost never seek a waiver. Indeed, famously some years ago a major prosecution firm – tried to get client waivers from both clients so it could represent both sides in an interference. So what happens when you are subsequently litigating a patent – and the other side used the same firm – and there is good evidence of IC? Pretty hard to attack your own counsel. That said, at least one patent counsel that I retained was pretty good at flagging potential conflicts and asking for waivers. In a tight two player market – which this looks like – Finnegan should have ask for waivers. Of course the mega-sized firms would be against this – and since they stack most of the IPO and bar positions – I can see – another ‘patents are the red headed step child of law’ holding from a Mass. court.

  2. 29

    Supreme Court Trend Against Patent Exceptionalism

    There has been a recent theme in Supreme Court jurisprudence that patent litigation is not exceptional and is subject to the same procedural rules and standards as all other litigation in federal courts.115 In the 2006 eBay decision, the Supreme Court granted certiorari to determine the appropriateness of the Federal Circuit’s “general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.” The Court determined that the Federal Circuit’s exceptional rule for patent cases was not appropriate, holding that the “traditional” four-factor test applies “with equal force to disputes arising under the Patent Act.” The Court made clear that “a major departure from the long tradition of equity practice should not be lightly implied.”

    The next year, in MedImmune, the Supreme Court again overturned an exceptional rule created for patent cases, rejecting the Federal Circuit’s “reasonable apprehension of suit” test for declaratory judgment jurisdiction. The Court held that the proper test in patent cases is the generally applicable one, that is, whether “under all the circumstances . . . there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

    This trend continued in 2013 in Gunn, where the Supreme Court limited the scope of the Federal Circuit’s jurisdiction over state law malpractice claims and rejected the Federal Circuit’s rule that jurisdiction lies wherever a question of patent law is a necessary element of the malpractice claim.121 The Court applied the standard four factor test for whether there is federal jurisdiction over a state law claim, and determined that there was no jurisdiction because the issue of patent law raised by the malpractice claim at issue was not of substantial importance to the federal system as a whole.

    SOURCE: AN INFAMOUS ILLUSTRATION OF PATENT INFRINGEMENT PLEADING: FORM 18 AND CONTEXT- SPECIFICITY

    AUTHOR: ANDREW C. MICHAELS

    1. 29.1

      From eBay: The court’s categorical rule is also in tension with Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U. S. 405, 422-430 (1908), which rejected the contention that a court of equity has no jurisdiction to grant injunctive relief to a patent holder who has unreasonably declined to use the patent.

      Add to that, this:

      “[S]ome patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves. Such patent holders may be able to satisfy the traditional four-factor test, and we see no basis for categorically denying them the opportunity to do so.”

      1. 29.1.1

        When there is continuing infringement and the patent owner refuses to license, which he has a right to do under Continental, must a court deny the injunction and force the PO to sue again, and again and again, wasting everyone’s time and judicial resources?

          1. 29.1.1.1.1

            From the manner in which the anti-attorney animus outpaces any sense of critical thinking, combined with the Infringer’s Rights taint, our amorphous friend probably won’t like this part of the decision provided by Ned:

            An inventor receives from a patent the right to exclude others from its use for the time prescribed in the statute, and the right is not dependent on his using the device or affected by his bonuses, and, except in a case where the public interest is involved, the remedy of injunction to prevent infringement of his patent will not be denied merely on the ground of nonuser of the invention.

            1. 29.1.1.1.1.1

              Whoops autocorrected…

              “or affected by his bonuses”

              Should read

              “or affected by his nonuse”

      2. 29.1.2

        Are you kidding? Another reason? How about the general rule of American jurisprudence that INJUNCTIONS ARE NOT APPROPRIATE WHERE DAMAGES PROVIDE ADEQUATE RELIEF.

        1. 29.1.2.1

          >INJUNCTIONS ARE NOT APPROPRIATE WHERE DAMAGES PROVIDE ADEQUATE RELIEF

          Yes clown (who is likely being paid to post), but given that the patent right is to exclude how can damages be adequate?

          Oh sorry, reality in lowercase letters is never as good as a paid bloggers propaganda in capital letters.

          1. 29.1.2.1.1

            Clown does not seem to understand that damages are for past infringements and do not apply to present and future. Forcing the patent owner to repeatedly sue for now willful infringement is absurd.

        2. 29.1.2.2

          Clown, damages are for past infringement. Unless the infringer voluntarily decides to desist, there is no choice but to sue again, and again and again.

          Continuing infringement is a classic reason for an injunction. Think nuisances.

  3. 28

    I just figured I should chime in and say that I always prosecute patents for direct competitors on Inventions on Similar Technology without Disclosure and Waivers.

    1. 28.1

      I don’t think “prosecute” was the word that you were looking for.

      Your role is called something else.

  4. 27

    I posted as a reply before, but I will state this here.

    Dennis, the Boston Patent Law Association also filed a brief–maybe people would have wanted to know that. If anyone wants to read all the briefs, you can click the links below.

    link to ma-appellatecourts.org

    The plaintiffs brief includes the complaint (in my link, not the patentlyo link).

    Left out from the question is that the plaintiffs obtained four issued patents–and frankly I think the statement that the plaintiff alleged he had inadequate patent protection is flat out wrong–that is not in the Complaint at all. All the reply and amicus briefs note that the plaintiff has not pointed to any weakness in his patent due to the concurrent representation.

    This is a motion to dismiss for failure to state a claim–it would be useful to read the complaint.

    1. 27.1

      James: I think the statement that the plaintiff alleged he had inadequate patent protection is flat out wrong–that is not in the Complaint at all. All the reply and amicus briefs note that the plaintiff has not pointed to any weakness in his patent due to the concurrent representation.

      As I understood it, the allegation isn’t that the patents he obtained are factually “weak” but that there was a delay in filing (which could certainly cause them to be weaker than they otherwise would be) and “wasted efforts on technology not sufficiently protected by patents.” I wonder how or whether those allegations relate to the subject matter conflict alleged here.

      1. 27.1.1

        Me too…how those alleged “delays” related to the “conflict” are not in the complaint = 12(b)(6) dismissal.

        1. 27.1.1.1

          Right. That firm has several hundred million I revenue and they delayed filing for some dipshit company that none of us have heard of…notice that he filed pro se (really, his case was so strong he couldn’t get a reputable lawyer to shake done that firm?) bullshit meter going off yet?

    2. 27.2

      Boston Patent Law Association brief — what a load of bullshit.

      There are 45,000 patent practitioners licensed before the USPTO. The argument that the public will be denied access to qualified patent specialists is ludicrous self-serving garbage.

  5. 26

    It would be useful to read the complaint which is attached to the brief on the court site. I don’t know why the complaint isn’t linked here. The allegations are bare bones that there is a “conflict” and that someone was “harmed” because the patents are “similar”. If that is all you have to say to shake a firm down (big or small), that’s a problem.

    link to ma-appellatecourts.org

      1. 25.1.1

        Patentable or not, what are you going to do, go around suing doctors who carry a ruler and a peanut?

    1. 25.2

      Seems that the science illiterate judiciary have held all diagnostic methods like this to be ineligible. So, I’d have to say under Prometheus, no.

      Should be. But, the SCOTUS gets its science and cognitive model of innovation from Disney movies.

    2. 25.3

      Use of smell as a diagnostic tool is documented back to Roman times. Loss of sense of various smells in Alzheimer’s and other diseases has been long document and used as a diagnostic tool for confirmation or for rejection of a diagnosis.

      As described, the procedure looks like a standard diagnostic tool combined with an natural phenomenon. (It looks more useful for diagnosis rejection than for diagnosis confirmation.) In either case, the procedure looks 101-ineligible.

      Now if I combined a means to deliver various smells automatically with MRI or PET scans to light up various areas of the brain, I might have a tool for automatic confirmation or rejection of a diagnosis of a number of diseases, and I might be able to right a number of claims that were directed toward systems, methods, or devices and that could not be rejected as ineligible under 101.

      1. 25.3.1

        You know whenever you see reference to the ancient past rather than a real comparison of the invention to real prior art that you are dealing with a witch hunter. Gee, let’s abstract away all the details, ’cause, ’cause, the justices that watch Disney say we can.

        >Now if I combined a means to deliver various smells automatically with MRI or PET scans

        So, let me paraphrase, if I were to obscure the invention with unnecessary machines I might get it around the PTO.

        What happened to reality? When did it become possible to fabricate reality? I guess the Pope (SCOTUS) says the Sun goes around the Earth so it does.

          1. 25.3.1.1.1

            Nothing really new or innovative was described in the videoclip. I know from having read hundreds of articles on the subject when in the late 1970s I was part of a team developing PET and other noninvasive imaging technologies.

            “So, let me paraphrase, if I were to obscure the invention with unnecessary machines I might get it around the PTO.”

            As for technological combinations, I like the relatively new devices that can electronically measure the eye and automatically generate prescriptions more accurately than old-fashioned eye chart techniques.

            Have you ever tried patented Zeiss automated eye examination technology? It’s great.

            link to bdlive.co.za

            Olfactory diagnostic and measurement technology could be equally automated and objective, but the described peanut butter test is obvious and ancient. If someone wrote a claim to it, it would just be an attempt to claim patent-ineligible information about a natural phenomenon.

          2. 25.3.1.1.2

            The way real patent law works is you compare the claims to actual prior art. The gist of, gee other people have been thinking about something like this for a long time is witch law. Witch law doesn’t acknowledge hindsight. Witch law gists away all reality.

            The point is that maybe it is obvious–maybe. But, then let’s see a similar test that could be used to reject a claim to the method.

            (That is the way real patent law works. It is in the weeds real work type of game. It isn’t let get a bourbon and think it over on a bar stool game.)

            1. 25.3.1.1.2.1

              Compare the claim with the “actual prior art” do you Night? And are earlier filed applications at the USPTO part of the prior art?

              What if the earlier application on pretty much the same subject matter was filed by your own law firm and written by the guy sitting at the desk next to yours. How much comparing do you and your colleague at the next desk do, in those circumstances? And when exactly? Before the respective patents issue? Before the respective applications are published by the USPTO?

              1. 25.3.1.1.2.1.1

                You do realize that you are mixing the patentability and patent eligibility views, right MaxDrei?

                You might want to apply a little discipline to your thinking and remember the topic that Night Writer is referring to.

                Just a thought…

              2. 25.3.1.1.2.1.2

                Max, it is a fair point. I do think that many law firms are lax on this issue. The problem is that prosecution is such a low profit operation compared to other areas of law. The other problem is that often there is a huge ramp up to learning a technology and patent prosecutors can only be expert in so many areas. So, it is hard to turn down work in an area where there are already experts at the law firm.

                Not sure what the solution is. But, there is a problem. The reality is that the clients do get a benefit of working with attorneys that have become experts in a narrow field, which helps them.

                As practical matter, my guess is that this will be fought tooth and nail by the large IP boutiques. Their business models depend on getting lots of work that is similar.

    3. 25.4

      *CORRECTED*

      Use of smell as a diagnostic tool is documented back to Roman times. Loss of sense of various smells in Alzheimer’s and other diseases has been long documentED and used as a diagnostic tool for confirmation or for rejection of a diagnosis.

      As described, the procedure looks like a standard diagnostic tool combined with a natural phenomenon (pure information).

      It looks more useful for diagnosis rejection than for diagnosis confirmation. In either case, the procedure looks 101-ineligible.

      Now if I combined a means to deliver various smells automatically with MRI or PET scans to light up various areas of the brain, I might have a tool for automatic confirmation or rejection of a diagnosis of a number of diseases, and I might be able to WRITE a number of claims that were directed toward systems, methods, or devices and that could not be rejected as ineligible under 101.

      1. 25.4.1

        >As described, the procedure looks like a standard diagnostic tool >combined with a natural phenomenon (pure information).

        What kind of psychotic nonsense is “natural phenomenon (pure information)”?

        There is no meaning to that. How about try to just provide prior art to elements and a reason to combine?

        Witch words. Witch words. Witch words.

        1. 25.4.1.1

          link to nytimes.com

          This doesn’t make any sense. J. Stevens said the way it works is you write on a piece of paper what you want the computer to do then you give the piece of paper to a clerk who programs the computer to do it.

          A research center for programming? These people need to realize that the judiciary have proclaimed that no research centers are needed and that a general purpose computer includes all possible information processing methods and devices. They may get burned at the stake for this behavior. I hope the DOJ didn’t read this article.

  6. 24

    To focus the topic, though, probably it is best to focus on the claims and the consent of the client. My guess is that this won’t have a giant effect no matter the outcome because it will simply force the big law firms to have the clients sign consents and be a little more careful about separating people that work on different clients. Not a huge deal, but it will add some cost.

    OT, but can you believe that the ridiculous Lessig whose book not only was full of misrepresentations but who never addressed the substantive criticism of his book. That is key by the way. We have these academics that are publishing and refusing to address the substance of the criticism. Harvard is forever in my mind a place that needs to be reduced in stature and power. A place that has very serious problems if it breeds Lessig type of people.

    On that note, how is Lemley coming with explaining how he protects IP at his start-up. If the answer is draconian employment agreements, then Lemley should be forever removed from IP. Every economist agrees that strong requires employees to be not tied to a company or removed from a technological area. But, again, we have an academic that pushes judicial activism points of view and refuses to respond to criticism.

  7. 23

    The IP-Kat blog recently had reason to delete particular comments from one of its threads. Unfortunately, active gardening of the threads is once again needed, here on this blog too.

    1. 23.1

      MaxDrei misses the irony that it was one of his posts that initiated the removal…

      Still haven’t learned your lesson, have you good sir?

      You were rightfully chastised here.

      And over there, You sought to “blame me” for detractors that stoop to low levels here at Patently-O.

      You yourself engage in the sniping and the lack of substantive discussion, especially when your foibles are in the cross-hairs. Perhaps you should simply toughen up and be able to defend (or explain) your positions without the cover of false politeness?

      1. 23.1.1

        Thanks for the playback anon. I enjoyed reading again the words I wrote, now deleted from the IP-Kat blog.

        But I don’t understand. What’s all this about somebody impersonating me? You write:

        “…that was after the lesson provided to you by someone impersonating you…”

        Who? When? Where? Could it be that they are so good at it that I haven’t even noticed yet?

        1. 23.1.1.1

          Your falsity remains, as does your refusal to actually learn

          To wit:

          MaxDrei said…
          So, to prove a point, should I say something about chickens…?

          Monday, 31 August 2015 at 04:29:00 BST

          MaxDrei said…
          Oh look, a false MaxDrei. I was sound asleep at 04:29 this morning, when Comment #4, just above was posted to this thread. It wasn’t me guv, who posted it above. Not my style. But regular readers will have realised that already.

          I take the event as evidence that the US Anon bothered by the poster impersonating him on Patently-O.

          Thus, the impersonation problem devaluing threads is one attached to the poster variously known as “anon” (on Patently-O”) and “US Anon” (here on this blog). He writes that his post, impersonating me, is to “prove a point”. That, it certainly does.

          Monday, 31 August 2015 at 11:01:00 BST

          THE US anon said…

          …and much like MaxDrei misses the point on the Patently-O threads (where he himself was rightfully chastised by EG for his ad hominem against THE US anon, so too here, MaxDrei misses the point.

          Think man – think.

          Monday, 31 August 2015 at 12:32:00 BST

          So – exactly like here – you again are part of the problem, seek to blame me, and then get busted for doing so.

          STOP BEING AN ARSE.

      1. 22.1.1

        It does not fit Ned’s windmill curse-ade, so Ned’s eyes get clenched right.

        welcome to the ec(h)osystem.

        1. 22.1.1.1

          No, anon, it is because Kappos has never distinguished between software used in systems like Alappat or like Diehr from software that is not, but rather simply is used to implement non statutory business methods and the like. Without making such a distinction, his whole argument is a lie because all his examples are of the Alappat or Diehr variety where the programmed computer is use to improve machines or process: a graphics processor in Alappat and a rubber molding process in Diehr.

          I see this disingenuous type of argument a lot from advocates of the State Street Bank kind of invention.

          1. 22.1.1.1.1

            The only thing disingenuous is your inability to recognize that machine components and manufactures in and of themselves are meant to be protected by patents (without the application of the “that thing” type of philosophical agenda).

              1. 22.1.1.1.1.1.1

                What does “without more” mean, Ned?

                Are you making an inherency argument?

                Are all future programming somehow “magically” already in there?

                Sorry Ned – but straight up factually, logically, and yes, given the holding in Alappat, legally, you are wrong.

                1. ^^^ case in point with the icons. This post with a different icon was in fact made by me in the same timeframe upon the same device with no manipulation by me of any system parameters.

                  All you’ve done Prof. is add noise while aiming at the wrong problem.

                  Again.

          2. 22.1.1.1.2

            Ned,

            The process category is an equal category as to the hard goods categories.

            It is not a handmaiden, sub-category that is only a path to the other categories. You really need to disabuse yourself of the varient of the Justice Story, the English don’t allow true process patents so we shouldn’t, bias.

            Congress caught up to that but of judicial malarkey and eliminated it in 1952 – the part in 35 USC 100 that you refuse to recognize, no matter how politely I bring it to your attention.

            Why is it that such cannot break into a dialogue with you?

            1. 22.1.1.1.2.1

              As was said in Flook, mathematical processes are not eligible so not all processes can be eligible. New machines, new manufactures and new compositions are eligible without more.

                1. Software is in fact a manufacture.

                  So let’s tally up Ned and his proposition of “New machines, new manufactures and new compositions are eligible without more.“…

                  machine – Oops, strike one.
                  compositions – Oops, strike two.
                  manufactures – Oops, strike three.

                  Back to the bench for you Ned – you have your three strikes and are out.

                2. Some software is math. If it is logically equivalent to a sequence that could be run on a Turing Machine, it is equivalent to a pencil and paper calculation, and it is hard to find patent-eligibility. After all, the Jacquard Loom (a sort of turnkey weaving computer) was patent-eligible (in 1802), but no one ever considered patenting the programs, which were essentially a computerization/routinization of pencil and paper designs. The same reasoning obtains today.

                3. Some software is math. No it isn’t. It may be equivalent in some sense, but it is not math anymore than the chair I am sitting on is math.

                  Raise your game. Think.

                4. Joachim is dead wrong – software is not math.

                  Likewise, he tends to the fallacy of imbibing in non-Useful Arts with the attempted incorporation of the Jaquard loom.

                  Was the concept carried over?

                  You bet.

                  Was the loom itself and its utility a DIRECT comparison?

                  Not a chance.

                  Why? Easy: Useful Arts.

                5. What does anon believe the Church Turing thesis says?

                  Does he believe computability theory as developed in the 1930s has no application to understanding the application of §101 to software technology?

                6. Joachim,

                  This has been discussed previously.

                  You are conflating math, applied math, and the philosophy of mathS.

                  At some level you need to realize that the bottom line take away is that software just is not math.

                  It is no more math than is engineering is math.

                  Or, if you want to get all Tegmark, that everything is just mathS.

                  At that point though, patent coverage converges such that THAT version of math is rightfully covered under patent law – getting TOO esoteric does not save the day for the anti-patentists.

              1. 22.1.1.1.2.1.2

                Alice also says otherwise – you keep on “conveniently” forget what both parties stipulated to in that case: the machine category prong was met.

              2. 22.1.1.1.2.1.3

                And let’s also wreck your attempted logic with a reference to another recent Supreme Court case dealing with compositions of matter.

                No Ned, you are wrong to attempt to do make one of the four categories into a sub-category of the other three, no matter the historical lineage that may exist (in very real part, because that lineage is PART OF the problem of judicial muckery).

                We’ve gone over this before in substantial detail. Please do not engage your drive-by monologuing mechanism.

    1. 22.2

      Nice catch, Sticks. I just skimmed through the Paper and found it failing to satisfy.

      Its concluding sentence reads:

      “Let’s optimally incentivize innovation through the promise of patentability for all areas of technology.”

      which is (or ought to be) clean of controversy for any member of the GATT. Who could quarrel with that sentiment?

      Where the eligibility/patentability debate gets controversial is in the patentability of inventions implemented on a computer but which are inventions that are not in any area of technology whatsoever. I mean, inventions where the only novelty is in the specification of what data is going to be processed on conventional hardware by conventional software.

      In my quick run through the paper, I saw no attempt to address this controversy. Kappos knows better. It appears to me that Kappos dissembles deliberately, and sweeps the difficult issue under the carpet, I suppose to suit his current agenda. In doing so, he demeans himself.

      1. 22.2.1

        but which are inventions that are not in any area of technology whatsoever

        Yet another of the same call of B$ for you MaxDrei.

        Define “technology” in a non-circular manner, please.

        If you are going to take a stand and preach, please then – when pressed – turn tail and run away.

        Instead of denigrating Kappos for his “supposed” infirmity, firm up your own position.

        1. 22.2.1.1

          This:

          If you are going to take a stand and preach, please then – when pressed – turn tail and run away.

          should read:

          If you are going to take a stand and preach, please then – when pressed – do not turn tail and run away.

      2. 22.2.2

        …and let me point out the rather obivous: “failing to satisfy” without more simply fails to satisfy in and of itself.

        Clearly, “what satisfies” is HIGHLY dependent on the philosophically desired ends, that, without regard to the proper means to those ends, merely ADDS to the noise.

        As MaxDrei is, or should be abundantly, aware of, the U.S. jurisprudence is not the same as other sovereigns. That Kappos does not “satisfy” you in the regard of delving into that difference and adding that layer of complexity – when so clearly you choose to ignore that difference yourself on a continual basis – comes across as what is dissembling.

        A classic example of three fingers pointing back at you when you point a finger at someone else.

      3. 22.2.3

        >I mean, inventions where the only novelty is in the specification of what data is going to be processed on conventional hardware by conventional software.

        This statement Max evinces such an ignorance of information processing as to turn one’s stomach.

        Max, what do you do for a living? Exactly what you wrote above. So, I guess you shouldn’t be paid for “mere” data processing. Ridiculous nonsense marches on.

      4. 22.2.4

        MD: Where the eligibility/patentability debate gets controversial is in the patentability of inventions implemented on a computer but which are inventions that are not in any area of technology whatsoever. I mean, inventions where the only novelty is in the specification of what data is going to be processed on conventional hardware by conventional software…. Kappos knows better.

        No doubt about that. He’s only trying to please as many of his potential clients as possible. As long as David Kappos’ bread his thick with butter, David Kappos is a happy man. Did he manage to get a plug in for his beloved design patents?

    2. 22.3

      WHY SOFTWARE IMPLEMENTED ARE—AND MUST REMAIN—PATENT ELIGIBLE”

      Presumably the actual article doesn’t include the typo in the title.

      If anyone reads it, let me know.

      1. 22.3.1

        You mean like 80% of all information processing inventions are done in the US despite these claims of patents inhibiting innovation.

        Reality.

  8. 21

    In my (large) firm in Europe conflict clearance is a heavy issue. I have just read the Amicus Brief from KMOB et al and am flabbergasted at the effrontery of it all. Such disingenuousness, chutzpah, and sheer disrespect for the court of which these so-called Amici are officers, I have never seen before.

    The Brief presents, side by side, the illustrated hinge embodiment from client Masunaga and the one from client Maling. Both are embodiments of a concept in which a J-shaped wire is received in a block, to deliver a 2-part hinge for an eyeglass. One supposes that both Maling and Masunaga could have claimed the same contribution to the art. One supposes that the earlier could dominate the later party.

    KMOB asserts that the respective inventions are different and not even close. I suppose FHFB would agree. But suppose that Masunaga and Maling had been represented by different firms. I would expect each to say that their client’s patent position dominates that of the other party.

    Just because the respective drawings are not the same does not mean that the respective inventive concepts are different. Just because the respective inventors chose different terminology for their claims does not mean that their respective inventive concepts are different. Just because the PTO failed to declare an interference does not mean that the inventive concepts have no overlap.

    If you were Maling and saw Masunaga, would you say his invention is “not even close”. If you were Masunaga, and saw Maling, would you say it’s “not even close”? On the contrary, each would say the other is an infringement.

    So how you can say with a straight face that there is no conflict is quite beyond me.

    1. 21.1

      Max, I have been in the exact position you describe where the claims I am drafting for one client read on the products of another.

      I don’t think the focus should be limited to patent applications of each.

      1. 21.1.1

        Ned, suppose you and I work at the same firm, you in the DC office and me in Boston. You are busy drafting hinge assembly claims for the firm’s client Mal. Meanwhile, I am writing hinge assembly claims for Mas. We both have a professional pride in making our respective claims fit for purpose, that is to say, to prevent any design around. That is of course the service that each client, in good faith, is supposing that our firm is providing. At hourly rates of course that fit with the highest professional standards of competence and probity.

        Boy, what a help it would be for me to have an on-screen peep at the drawings on your file. And no doubt you would be helped in your task by having an on-screen peep at the drawings on my file. Is there any way I might be able to grab a quick peep?

        If the conflict checks that big firms routinely carry out (and boast about to their clients) don’t address such situations, they should. Perhaps the courts now need to remind such firms where there duty lies?

        All this reminds me of the blandishments of the banks. Customers are assured, in all sincerity, that this or that procedure is for their benefit. Tosh! The reality is that it is for the benefit of the bank and nobody else.

        But everybody can see through the disingenuousness of the bankers. As a client, you cannot see when a law firm is conflicted out. But the law firm itself can, that’s for sure!

        1. 21.1.1.1

          I wonder how most firms react when one of their own members recognizes the conflict and insists it be resolved.

          I did that once, and we dropped one client because the boss agreed there was a conflict. But, from the amicus briefs alone, it appears that at least some big firms today may not like honest lawyers working for them.

    1. 20.1

      I reported on this case, DOME v. Lee yesterday. link to patentlyo.com

      1. Reexaminations are no longer subject to de novo court review since the AIA.

      2. In a court review of the validity of a patent, the Supreme Court has already held that the burden is clear and convincing, so Dome is contrary to controlling authority.

      3. Which means, that In re Etter is wrong. But the Federal Circuit is adamant that it is never wrong. So, the problem must be that the Supreme Court is wrong.

      4. Congress needs to stop undermining the patent system at the behest of the AIPLA, which is not really working “for” the patent bar, but for the people who control the AIPLA. Save for big pharma, these folk certainly do not have the interests of people who really need patents for their businesses to survive at heart.

      1. 20.1.1

        Might I clarify, unamended claims in issued patents require “clear and convincing evidence” to invalidate.

        New or amended claims might be governed by the standards of the PTO, including BRI — but not otherwise.

        The Federal Circuit is completely lost in its jurisprudence.

        1. 20.1.1.1

          What do you think about this argument from the CAFC?

          “When the Patent Office institutes ex parte reexamination, it reopens prosecution to determine whether the claimed subject matter should have been allowed in the first place.”

          In my view, this appears to directly contradict a number of Supreme Court decisions.

          1. 20.1.1.1.1

            David, indeed, among them, McCormick Harvesting that actually holds that the PTO does not have the authority to reexamine an issued patent and revoke its claims.

            Ditto ALL the public rights cases, and there are a lot of them. All such cases since Murray’s Lessee require cases that were litigated in the English courts at common law to be exclusively litigated in the the Article III courts as a matter of separation of powers. Revocation actions were litigated in England at common law.

            The Federal Circuit is engaging, it appears, in one more battle with the Supreme Court. It does not appear inclined one iota to follow the law.

        2. 20.1.1.2

          Once back in the Office Ned, your distinction holds no difference.

          That is why I make a different point: the executive action that is a taking of a stick from the bundle of property rights at the time of the institution (for those actions under the AIA in particular).

          It is that taking – separate from and independent of any “examination result” that is problematic given that it is a taking without any recompense and without any judicial review.

          The value of that stick is reflected (but not limited to) your notion here about unamended claims.

          1. 20.1.1.2.1

            Look, anon, I don’t believe the PTO can invalidate claims at all without the consent of the patent holder. But they can examine new or amended claims, and they should.

            I think the original claims should be subject to clear and convincing for the reasons stated.

            So, I am not sure the patent owner here, in this case, received the kind of de novo review the Supreme Court had in mind in Executive Benefits. So, I think the whole proceeding remains unconstitutional and the patent owner would be wise to raise that issue before he or she gives up.

            1. 20.1.1.2.1.1

              Once again Ned, you are not grasping the point of impact.

              Your focus on new or amended claims is thus off.

              You don’t even get to that point unless you have already suffered the loss of that particular stick in the bundle of property rights. That is the driver.

              The law is just not written (and passed by Congress) does not have any such notion as split levels. As far as I know, your typing it here is the very first time that notion has existed.

              I think that your hold on the differences between real law and Ned-IMHO law is already tenuous at best, so I would recommend that you do not get too “creative” with your orals coming up.

              1. 20.1.1.2.1.1.1

                And, might I add, that the government does not have standing to be in court challenging the validity of a patent.

                1. Please point me to the words of Congress that reflect this standing requirement that you are going on about….

            2. 20.1.1.2.1.2

              anon, agree. We are talking hypothetical s. Any patent owner can and should challenge the constitutional jurisdiction of the patent office to involuntarily reexamine one’s patent. The procedure should be limited to patent owner requests.

      2. 20.1.2

        What was surprising to me was that there was no mention of In re Teles AG, where the CAFC affirmed the D.D.C. holding that because of the 1999 amendments to the patent statute, 35 USC 145 actions are not available for ex parte reexaminations.

        It was the 1999 amendments, not the AIA, that changed this. Therefore, the district court did not have jurisdiction in this case.

        1. 20.1.2.1

          In re Teles was clearly wrongly decided. Nevertheless, AIA removed the reference in 306 to 145.

          And my I comment further, that there is something fundamentally wrong with the Federal Circuit. Fundamentally. One only has to read Teles to figure it out.

  9. 19

    Media Rights Technologies:

    unlike Inventio, the claims do not use the term “compliance mechanism” as a substitute for an electrical circuit, or anything else that might connote a definite structure. Rather, the claims simply state that the “compliance
    mechanism” can perform various functions. A review of the intrinsic record does not change this conclusion. … None of [the] passages [from the specification], however, define “compliance mechanism” in specific structural terms.

    We have never found that the term “mechanism”—without more—connotes an identifiable structure; certainly, merely adding the modifier “compliance” to that term would not do so either.

    All well and good but wait! Here comes the CAFC with its self-serving k00kiness again (the worst kind of transparent k00kiness that continue to rot out the entire patent system from the inside):

    we require that the specification disclose an algorithm for performing the claimed function. The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.

    Got that? You need specific structure … except when you don’t. The exception is where you have an “algorithm” — a method of logical operations expressed in any manner that you like — with “sufficient” fake “structure” that pleases the CAFC.

    Of course the hypocritical, hysterical whiners who never, ever stop crying about how 101 is “just like an obscenity test!” will suddenly clam up tight when presented with the CAFC’s ridiculous patent party-promotin’ nonsense here.

    1. 19.1

      except when you don’t.

      No Malcolm that would be wrong.

      Clearly your attempt to spin structure to ONLY mean what you want it to mean is just that: spin.

      Get over yourself. After all, PHOSITA is not called PHOSATM (…According To Malcolm)

      1. 19.1.1

        your attempt to spin structure to ONLY mean what you want it to mean

        … which would be objective physical structure, instead of a series of logical steps.

        Yes, I know it sounds like a totally radical proposition, at least if you are one of the rich entitled one percenters out there deeply invested in the current k00kiness. But to most people it’s just common sense.

        And the wind is blowing in one direction, in case you haven’t noticed.

        Don’t you want to “step on the gas pedal”, “anon”?

        LOLOLOLOLOLOLOL

        1. 19.1.1.1

          …and again the quick retreat to the tired script of “rich entitled” when you are attacking a form of innovation most accessible to everyone…

          You funny.

          As far as that “wind blowing,” mayhaps (this being a law blog and all) you want to pay attention to the means to those ends.

          1. 19.1.1.1.1

            the quick retreat

            LOL I didn’t “retreat”. On the contrary, I’m right here standing by my statements. I just pointed an additional fact about you and cohorts — a fact that everybody knows but you and your cohorts are loathe to discuss.

            a form of innovation most accessible to everyone

            ROTFLMAO. Logic patents for everyone! What a wonderful world that will be in your own mind.

            1. 19.1.1.1.1.1

              Innovation rewarded and protected – just like any other patent worthy invention.

              You seem unable to grasp that.

              And the retreat was from the meaning of PHOSITA with the insertion of your duplicitous and quite frankly asinine “for the rich” C R P.

              I am not loathe to point out your duplicity, and I know of no “cohorts” that are “loathe to discuss” the single most accessible form of innovation that you are trying to deny protection to.

              Your mantra is simply not logically consistent, and further, the kernel of what you say would apply across the board to ALL patents.

              Are you against all patents?

          2. 19.1.1.1.2

            you want to pay attention to the means to those ends.

            For years I and others have been paying close attention to the CAFC pulling nonsense out of thin air (e.g., fake “structure” is “sufficient” if you use a flow chart or the magic word(s) du jour) for no reason except to please a class of applicants who don’t belong in the patent system.

            “Logic” isn’t eligible subject matter. Never was. Never will be. Calling logic “structure” is a bad joke that has benefitted nobody except for the already wealthy who can afford to play at the patent casino.

            1. 19.1.1.1.2.1

              MM, no doubt a programmed computer without more is not eligible at least in part because there is not new machine.

              However, a programmed computer in the context of a larger machine or process clearly does not involve the question of a new or improved machine or process, unless the programmed computer is doing nothing to the machine or process.

              1. 19.1.1.1.2.1.1

                a programmed computer in the context of a larger machine or process clearly does not involve the question of a new or improved machine or process, unless the programmed computer is doing nothing to the machine or process

                When a smarter person steps into a car (purpose of car: to be driven by a rational driver) and uses “better” logic to drive the car, is that person rendering a patent-worthy “improvement” to a “machine or process” as those terms are understood by the patent act?

                If I “discover” a shortcut to my neighbors house across town or a safer way to drive there, can I protect that “improvement” with a patent?

                The lowest forms of innovators are waiting to hear the analysis, Ned.

                1. MM, if the programmed computer is applied to improve the car, it makes no difference if the programming itself is not new. See, Flook. Do you want a quote?

                  Now, since using programmed computers to improve cars is known, the use of an old program or real world logic, is not going to improve the car in any unknown or unexpected way. But this is a 103 question.

                2. Anthropomorphication

                  Once again: your silly slogans aren’t arguments. It might make you feel good to shout them all day long but other than that, you achieve nothing. Maybe if you tried using 100 s0ckpuppets a day you’d have better luck? LOL — I forgot that you tried that already.

                  All your slogans do is advertise the fact that you either don’t have an argument or you lack the intelligence to articulate one in English. Try harder, “anon.” Even if you still continue to fail miserably, at least you won’t look like such a d0rk.

                3. You are confused Malcolm, as the word is not a “silly slogan,” and encapsulates a full argument that I have explicated in the past. One from which you ran away from.

                  Plus, it is an awesome word that fits exactly to debunk your attempted goalpost moving to claims somehow purely in the mind.

                  Maybe, just maybe, someday you will grow a pair and be able to engage in a conversation on the merits with a minimal amount of inte11ectual honesty and treat software for what it is:

                  A manufacture by the hands of man in its own right and a machine component.

                  Software is not the thought of software.
                  Software is not the execution of software.

                4. Anon, you’re forgetting about Allvoice v. Microsoft again.

                  Allvoice tried to argue that software claims necessarily implicated hardware – an argument rejected by the court.

                  The court also held that software, without explicitly claimed hardware, was not a manufacture.

                  Perhaps you should consider modifying your short script to take these into account. (Not that I expect you to, mind you.)

                5. I am not forgetting about that case at all.

                  On the other hand, you are forgetting that I have distinguished that case (several times now), and that case simply does NOT serve for what you want it to serve.

                6. Anon,

                  No, you have repeatedly claimed to have distinguished the case, without ever having done so.

                  As I pointed out the last time you made this inaccurate claim.

                7. Wrong again Dobu.

                  Just like you were last time.

                  And no, this is NOT mischaracterizing what someone else says.

                  That you don’t get why the case has been distinguished is a “you” problem.

                  You are letting your own level of misunderstanding drive your conclusions. Nothing more.

                8. Dobu, you are onto anon. He always says that he has addressed an issue without ever actually having addressed the issue.

                  This is almost like the attorney objecting to the first question to the witness with, “Asked and answered.”

                9. LOL

                  Such “help” from Ned only proves my case.

                  Ned being the guy that accused me of “shouting down” while I was exhorting him to speak up.

                  And yet, Mr. Heller, how many open questions for you yet remain on your doorstop?

                10. Ned,

                  Indeed, such is anon’s short script. And when called on the fabricated history, it’s always somehow the other person’s shortcoming. Funny how that always works out.

                11. Anon,

                  That you don’t get why the case has been distinguished is a “you” problem.

                  Oh, I do get why you have failed to distinguish the case. It’s because you attempted the same “software necessarily implicates hardware” stance that failed Allvoice in their case, and had no answer for the court’s rejection of that position.

                  You are letting your own level of misunderstanding drive your conclusions.

                  LOL. Doesn’t everyone?

                12. Dobu,

                  There is no “fabricated” history – only the real history which does include the distinguishment that I presented.

                  I laid this out for you previously.

                  The Allvoice case just does not hold what you want it to hold. It is clearly constrained to its facts and that fact remains a fact whether or not you want to acknowledge that fact.

                13. “constrained to its facts”?

                  Here, the disputed claims merely claim software instructions without any hardware limitations. Allvoice attempts to overcome this hurdle now by arguing that the claimed software must necessarily be in a machine readable, physical state in order to exist, and that the district court therefore should have concluded that these claims are directed to a manufacture, one of the four categories of patentable inventions.

                  But, as this Court has recognized, instructions, data, or information alone, absent a tangible medium, is not a manufacture.

                  [emphasis added]

    2. 19.2

      We have never found that the term “mechanism”—without more—connotes an identifiable structure; certainly, merely adding the modifier “compliance” to that term would not do so either.

      Shoulda gone with “compliance circuitry”. That’s, like, a totally identifiable structure.

      LOL

    3. 19.3

      “compliance mechanism” — totally not structure!

      “processor configured to compare acts to a set of pre-determined rules for compliance, wherein if said comparison results in a determination that the acts comply with the rules, go to step B” — totally “sufficient” fake “structure”

      Sure, that makes a lot of sense.

      Now, watch this drive! Wheeee!!!

      1. 19.3.1

        MM, 112(f) equally applies to “steps.” Thus if a process is claimed, there has to be corresponding process steps described in the specification.

        Now consider

        1. Apparatus comprising:

        an improved car having a microprocessor programmed with Algorithm X.

        Algorithm X would need support in the specification. Thus, the algorithm would have to be disclosed. I don’t know why we have to go through all these hoops — first finding that 112(f) applies and then finding them indefinite if there is not corresponding algorithm.

        Next consider,

        2. Apparatus comprising:

        an improved car having a microprocessor configured to do function X.

        The answer here should be the same as for Algorithm X.

        The overall point is that it makes no difference whether a program is structure or not when 112(f) applies equally as well to methods and processes.

        1. 19.3.1.1

          Ned: 1. Apparatus comprising:

          an improved car having a microprocessor programmed with Algorithm X.

          Algorithm X would need support in the specification. Thus, the algorithm would have to be disclosed.

          Setting aside the other obvious and huge problems with claims like this, “X” would not have to be “disclosed” or “supported” in the “specification” if it is fully set forth in the claim as originally filed.

          2. Apparatus comprising:

          an improved car having a microprocessor configured to do function X.

          The answer here should be the same as for Algorithm X.

          Again, setting aside the other far more severe and important issues presented claims of this type, the answer depends on exactly how “X” is presented in the claim (which is to say I agree that the “answer” is the same).

          And now let’s turn to the far more severe and important issue: you can’t protect an algorithm or any other kind of logic with a patent. Limiting the algorithm or logic to a pre-existing field of use doesn’t cut the mustard. The system went off the rails when it forgot the fundamentals and ignoring the bigger issues is why we the CAFC ends up playing silly games like this. “Using information and logic to determine [e.g.,] when to accelerate a vehicle” isn’t eligible subject matter. And it doesn’t become eligible subect matter merely because you use more or fancier words to describe the logic you are using to make that determination, or because you invoke 112(f). The CAFC is trying to build a house on a foundation of nonsense. That silly foundation of sand was put there for one purpose: to divert more money more quickly into the hands of rich people who never needed that assistance.

          1. 19.3.1.1.1

            In a nutshell:

            In a nutshell:

            There is a clear difference from the looking at each element AND looking at the claim as a whole compared to what you (and Ned) are attempting with a “take the claim as a whole AND dissect it, then if one element is not to your liking, Gist away the rest of the elements, point to that one element, call it the “Point of Novelty” and attempt to apply 101 to that less than whole claim element.

            1. 19.3.1.1.1.1

              Except that if I was doing what you suggest, “anon”, I’d just cut to the chase and say “any claim with an algorithm is ineligible.”

              But I’m not saying that. In fact, I’ve been very clear for years that such a statement is inconsistent with my views.

              Your failure to appreciate that, of course, is just another indication of the low level at which your lizardbrain functions. You’re like the typical Republican types who assume that everyone is motivated by greed and self-interest — because that’s what motivates them! They are so narcissistic and self-absorbed they can’t wrap their heads around the idea that other people are concerned about issues besides the size of their personal bank account.

              1. 19.3.1.1.1.1.1

                say “any claim with an algorithm is ineligible.”

                Actually, you HAVE said that.

                Perhaps not on those exact words, but your position of all things software being per se ineligible is effectively the same thing.

                So tell me, how does old box come to have new capabilities with the mere change of software?

                Was (all future) improvements “already in there?

                Please go ahead and use the proper patent doctrine of inherency in your “well-thought-out” answer….

                (and you don’t even have to use short declarative sentences)

          2. 19.3.1.1.2

            MM, limiting the use of a programmed computer to a field has not been patentable subject since Flook. Now the CCPA and the Federal Circuit recognized that the likes of Rich tried to confine Benson and Flook to mathematical algorithms AS IF computers did something other than adding, subtracting, comparing, etc., but in truth, a naked programmed computer, not confined to any particular use, has not been patentable subject matter since Benson, and it is not made eligible by limiting their use to a field since Flook. Whatever doubts about that were eliminated by Alice.

            Next, consider a graphics processor as in Alappat. One of its circuits is called a rasterizer because it operates to smooth the display of lines on a display that would other wise appear to be jagged edges. This is known as antialiasing.

            Alappat involved a specific circuit that did that function. That circuit was claimed in means-plus-function format where the means-plus-function claim elements specified mathematical operations. But the Federal Circuit had no problem in determining that the corresponding structure recited the specification were in fact circuits.

            But the patent office contended that the claims nevertheless had a 101 problem in that the mathematical operations claimed in the means-plus-function claim elements could be performed by programmed computer and thus where a means-plus-function equivalent. The Federal Circuit did not disagree with the patent office that the program computer was an equivalent of the disclosed circuits.

            With that assumption in place, the Federal Circuit nevertheless held the claims eligible under 101 because the claim was specifically to a rasterizer of a graphics processor for a display. (I am paraphrasing here.) In other words, the claim was interpreted to “cover” the use of a programmed processor in a graphics processing unit that perform the function of a rasterizer.

            (As an aside, I believe most graphics processing units today adopt the approach of using programmed general-purpose processors in their pipelines.)

            So what we see here is that the graphics processing unit is improved, and display is improved by the use of the programmed processor in place of specific circuits. This defines in my opinion an improved machine, is not an attempt to claim mathematics or algorithms in the abstract.

            Regarding the decision-making of a car performed by a programmed computer, whether to stop, turn or whatever, I am not certain that such a programmed processor does not improve a car. But that is the question has to be answered – whether a car is improved with the use of the programmed processor having the algorithms claimed.

              1. 19.3.1.1.2.1.1

                And, anon, Diehr is an example of such an application.

                You have to begin to read what is written, not what you think is written. When people use works like “naked,” “mere” or “without more” as I often do, the words are intended to convey some meaning. Instead, you consistently ignore them and are quickly off in left field. I spend so much time trying to get you back in center that I am frankly tired of it. That is why I simply skip your posts, and do not even read them for the most part.

                1. Ned the hypocrite strikes again.

                  You have to begin to read what is written, not what you think is written.

                  You do that first with Alappat and find the multiple holdings (not dicta) of the case that are required to defeat each of the government’s arguments.

                  You always seem unable to grasp the most important one.

                2. iehr is an example of such an application.

                  That is entirely disingenuous of you to attempt to twist Diehr into that particular quote of Benson.

                  Let me remind you of the context with a few more words from the Benson case:

                  a patent for any program servicing a computer.

                  Please note that this is not any execution of a program.

                  Please note that this is not any thought of a program.

                  And directly on point here, this is not any larger system that has a program as a component.

                3. anon, prove that the Supreme Court had something in mind beyond Diehr. I certainly held the claims in Benson, Flook and Alice ineligible and they all were directed to programming a GP digital computer.

                4. If you persist in saying that Alappat held that programmed GP digital computer was patentable subject matter without more, you are going to throw Alappat into question as a whole.

                5. As to Alappat, the holding is as it is.

                  It is not so because I say it is so.

                  I say what the holding is, because that is what the holding is.

                  As to your rather p@thetic “prove it,” with all due respect, Foff. I need prove no such thing, as the plain words do NOT reach what you are attempting to spin – for the very reasons that I have already given to you:

                  program – NOT so hold.

                  not execution of a program
                  not thought of a program, and certainly
                  not a larger system with a program as a component.

                  Those just are not in Benson.

                  You are going to have to accept that as well.

            1. 19.3.1.1.2.2

              whether a car is improved with the use of the programmed processor having the algorithms claimed.

              Once upon a time there was a car. Once upon time there was a processor that could take information — any information — and process the information according to instructions, exactly as a well-trained human would but without becoming tired, and that information could be used for any purpose. Once upon a time people realized you could combine such a processor with any device that was operable by a human.

              All that was a long time ago. So exactly what is the nature of these “improvements” we’re discussing? Are they eligible for patenting? That is the question that must be answered. And the answer, of course, will depend on how those “improvements” are described. Claiming them as improvements in logic or “functionality” presents a wee problem for the patent system as most people have understood for a long time( and more and more people are starting to understand every day).

              It probably hasn’t escaped everyone’s attention that many (if not all) of these “improvements” to the ancient and obvious concept of a “self-driving” car are based on an understanding of the information processing that takes place in our brains (or would take place if we had the information) when we drive. And that’s going to be the case as long as there are humans behind the wheel.

              1. 19.3.1.1.2.2.1

                MM, again, a programmed computer can improve a car. So a programmed computer that is claimed to improve a car has to be analyzed from the point of view of whether in fact the car is improved, not so?

                Perhaps the car can be taught to not lock the brakes in icy conditions. I think this is an improved car.

                Now if the car can display information, I do not see any improvement to the car if the information displays are stock quotes as in David’s PTO example of patentable subject matter.

                Again, the analysis should be whether “a claim containing a [programmed computer] implements or applies that [programmed computer] in a structure … which the patent laws were designed to protect …, then the claim satisfies the requirements of § 101. Diehr at 192. link to scholar.google.com

                I would again add that 101 also requires that the “structure” be new or improved. Thus I do not believe the display of stock quote is an improvement to the car.

                However, consider speed limits. I am not sure that we might not also need some control of the car in reaction to the speed limit to define an improved machine. Merely displaying a speed limit might not be enough.

                Thus, if your quibble is that providing new information to the driver is not enough, I would tend to agree. But I hope that you would agree that using a programmed computer to control skid in icy conditions is the kind of thing that should be patentable.

                1. Perhaps the car can be taught to not lock the brakes in icy conditions. I think this is an improved car.

                  But whether the claim is eligible depends on how that “improvement” is implemented and claimed.

                  “Car that doesn’t lock brakes in icy conditions” may be an “improvement” in the abstract sense — just as “car that hovers over tire-punching road obstacles” is also an “improvement” — but it’s not a patentable claim. That’s just a concept.

                  You and I can sit here all day and come up with “improvements” along those lines. We shouldn’t be rewarded with patents and neither should the b0tt0m feeders who are positioning themselves to tr0ll the r0b0t car “industry.”

                2. using a programmed computer to control skid in icy conditions is the kind of thing that should be patentable.

                  Programmed computers are old. Cars are old. Using computers in cars is old. Using computer to automate stuff in cars is old. In theory, there is nothing — nothing — that a human can do in a car that a computer can’t be “taught” how to do in the human’s place. It’s all obvious per se unless and until the claims get down to a granular level where there might be some unexpected results. But the “information processing types” abhor such claims, for well-known reasons.

                  Starting as you do, Ned, from the perspective that “But this is soooo important it has to be patent-worthy” is a huge error. That’s how the system got into the present mess.

                3. MM, of course everything is old but the software that controls the skid. So the only question left is whether the skid is controlled in an improved way. If it is, then at least 101 is passed. If it is also does so in a non obvious way, then the claims pass 101/102/112.

                4. There would have to be some sort of interface to the mechanicals of the car. A claim directed to the entire system including the mechanicals would probably be completely eligible under §101 just as the Diehr ‘142 claims were patent-eligible.

                5. JM,

                  Under today’s “logic**,” Diehr would not have passed 101.

                  That is very much the issue here in the so-called “the law was always like this” (but wasn’t) judicial muckery.

              2. 19.3.1.1.2.2.2

                exactly as a well-trained human

                First, that is simply not true at all.

                Second, even if true, would not be material to the law in question.

                Machines are not people.

                People are not machines.

                The claim does NOT cover a person thinking whatever thoughts.

                It just does not and no one except you (and perhaps Les) EVER beat up that straw man.

                There is a single word that summarizes that concept extremely well.

                Can you figure it out?

                And once you step away from your straw man, and overcome the banality of the mere no aggregation claim doctrine (importantly – with or without steps sounding in mental steps), maybe then you will be “grown up” enough to engage in an inte11ectually honest dialogue.

                After nine years and running, I won’t be holding my breath.

  10. 18

    MEDIA RIGHTS TECHNOLOGIES v. CAPITAL ONE FINANCIAL CORP.
    link to cafc.uscourts.gov

    The odd two-step of the Federal Circuit continues. Rather than holding “compliance mechanism” indefinite directly, the first holds that it is means plus function because it has no corresponding structure, and then holds is indefinite because it has no corresponding structure.

    1. 18.1

      Are you leaving something out of your two sentences of “because it has no corresponding structure”…?

      Is the first item left out pertaining to the claims, while the second item left out pertaining to the rest of the application?

      Are you aware that that is NOT a minor omission?

      Mind you I have not read the case yet and am only basing the comment on your comment here.

      1. 18.1.1

        Try reading the case and make your point in declarative sentences “anon.” Save the crazee for your shrink.

        1. 18.1.1.1

          Clearly, the point of the post is to ask a clarifying question, noting that the sentences are not at all equal if the parts have been left out, and if so, then there is indeed no “odd two-step.”

          If you were not so intent on being an arse, you would be able to pick that up.

      2. 18.1.2

        Actually, anon, the reason it was found to be MPF was unlike prior authority the claim term was not supported by corresponding structure. In that prior case, a particular circuit.

        In contrast, “screw means” would not be MPF because a screw is known structure.

        Ditto, X means, where X is the name of specific structure in the specification.

        So we get MPF if there is no corresponding structure associated with X, such that X is wholly functional.

        That the claim is indefinite is therefor forgone conclusion.

        1. 18.1.2.1

          You managed to not answer the actual question I asked if you Ned.

          You want to try to answer that question?

            1. 18.1.2.1.1.1

              It should go without saying that any such answer is not kept within your head, but shared on these boards.

              Thank you ever so much.

    2. 18.2

      Great to see Media Right’ junk patents getting smacked down. If there’s any justice here, there will be some serious fee shifting and, ideally, Media Rights would be given the corporate electric chair.

      1. 18.2.1

        MM, how to you feel about Kyle Bass. He continues his piracy in the name of the public interest according to Greg A.

        “Hedge-fund manager Kyle Bass isn’t taking his early losses to the drug industry lightly. The Hayman Capital Management founder claims the Patent and Trademark Office is purposefully denying his challenges to drug patents because it finds him “too disruptive.”
        His response: File more cases targeting what he contends are patents of questionable validity that he said are protecting overpriced drugs from competition. “It’s clear they want us to go away,” Bass said Thursday in a telephone interview. “We’re not going away.”
        Bass has filed nine petitions challenging patents since Aug. 24, the day the Patent Trial and Appeal Board declined to review two Acorda Therapeutics Inc. cases. Four petitions filed Wednesday again challenge Acorda patents on the multiple sclerosis drug Ampyra.
        In all, Bass’s Coalition for Affordable Drugs has filed almost three dozen petitions since February. The Acorda petitions were rejected after the Patent Trial and Appeal Board said the information he provided wasn’t publicly available. A different three-judge panel on Sept. 1 said information of a clinical trial wasn’t evidence that could be used to challenge Biogen Inc.’s MS drug Tecfidera.
        “They threw Acorda out on a technicality; they threw Biogen out by ignoring the law,” Bass said. “They’re acting like a kangaroo court, and we are not going to stand for it.” Patrick Ross, a spokesman for the patent office, said the Alexandria, Va.-based agency had no comment.”

        “The fact that a hedge fund or others can file endless challenges to the same patents over and over again, forcing small companies like Acorda to divert their time, attention, and limited resources to fighting these improper attacks rather than focusing on bringing new cures to patients, is outrageous and offensive,” the Biotechnology Industry Organization said in a statement. “His abuse of this system highlights the need for reform.”
        Ardsley, N.Y.-based Acorda, in a regulatory filing, said it would oppose any effort to institute the review and defend its patents.
        Bass accused patent office director Michelle Lee of directing the judges to find ways to not institute any reviews. “What Michelle Lee and the PTAB need to do is call balls and strikes and not try to change the rules of the game that were legislated to them by Congress,” Bass said.
        By law, the board’s administrative patent judges are independent of oversight by the director. Their decisions on whether to begin a review or not can’t be appealed.
        Bass can ask the panels to reconsider their decisions, but most of those requests are denied, said Lana Gladstein, a patent attorney with the Boston firm of Nutter McClennen & Fish, who’s been involved in other cases before the board.
        In both the Acorda and Biogen cases, the drug makers argued that Bass is misusing the system to make money by undermining drug patents. Neither panel addressed that issue. A different three-judge panel has asked Bass and Shire PLC’s NPS Pharmaceuticals to provide legal arguments on whether that should be a consideration. NPS is scheduled to file its arguments next week, with Bass given another seven business days to respond.
        The board has allowed third parties to proceed with other petitions. In those instances, it’s been a group like Unified Patents, which collects money from technology companies to challenge patents that are being asserted in specific fields.
        Bass said he is motivated both by the desire to make money and an urge to “go after the worst offenders” when it comes to drug pricing and patent quality.
        “If not me, then who?” Bass said. “I don’t see anyone else hiring legal teams with purely altruistic motives.”

        1. 18.2.1.1

          The article says it all:

          Bass said he is motivated both by the desire to make money

          “If not me, then who?” Bass said. “I don’t see anyone else hiring legal teams with purely altruistic motives.”

          But there’s plenty of people out there working to fix the system and get rid of the worst patents who aren’t motivated by “the desire to make money.” Kind of important. And Bass knows that.

          He’s just an obscenely wealthy pr ck who enjoys attention. No doubt on one of his yachts he’s got a framed and autographed picture of Gil Hyatt.

          1. 18.2.1.1.1

            What the PTO appears to be doing is imposing some sort of “standing” requirement. Guy like Bass have no standing. Accused infringers clearly do.

            1. 18.2.1.1.1.1

              …and you like that the executive branch appears to be writing its own laws…?

              (Did you see what I SAWS there?)

          2. 18.2.1.1.2

            What is “kind of important” is the rule of law and that such applies to everyone, regardless of how much or how little money they may have.

            Your “class warfare” baiting schlock should not “grace” this blog because your animus remains untethered to any actual law.

            And for your info (again), I am not a republican, so your attempted smirch is (again) a FAIL.

            1. 18.2.1.1.2.1

              “class warfare”

              Does everyone remember when “anon” used to endlessly harass the Big Q about the “little guy versus BigCorp” mythology that Big Q has been peddling since, well, forever?

              Me neither.

              1. 18.2.1.1.2.1.1

                Notwithstanding Citizen’s United, Class warfare involves classes of people.

                Machines and legal constructs and people… You DO have a difficult time distinguishing these things, eh?

      2. 18.2.2

        Unless there really was structure recited in a C++ algorithm that an incompetent expert witness was unable to execute. That does not mean that the structure is absent when such declarative structure performs the limitations. The wheels of justice grind slowly, but agendas don’t grind at all in settled minds, they just lay there and whine until the vibration paralyzes the players. Algorithms Lives Matter, and great code doesn’t just happen, see Oracle v Google exposition at Florian Mueller’s Foss Patents, nor it is free for the open source taking , then locked away as no big deal. As they said in the G -house, they needed another ‘ half-an ass’.

  11. 17

    In re Tam ( order on motion for leave to participate in oral arguments)

    Denies NFL / grants ACLU to participate.

    Should make the constitutional issue more interesting.

    Sort of in contrast to the CAFC actions with williamson and limelight: receiving amici and even granting leave to argue versus just issuing a new en banc opinion.

  12. 16

    DYNAMIC DRINKWARE LLC v. NATIONAL GRAPHICS, INC.
    link to cafc.uscourts.gov

    Another “Wertheim” case.

    Here the Federal Circuit affirmed Board’s holding that the petitioner loses because it never showed that the claims in the reference were supported in the provisional even though it showed, using a claim chart, that the disclosure in the provisional anticipated the claims in the patent at issue in the IPR.

    Random, are you listening yet?

    The argument that it should be presumed that the claims of the reference are so supported was rejected by the Federal Circuit. The Federal Circuit noted that the patent office does not routinely examine whether the claims are supported in a priority document. Random has said that he routinely does, but that is not the usual practice.

    1. 16.1

      Much silliness here.

      Note that to overcome an invalidity argument under 102(e) which relies on an earlier application filing date, the patentee/applicant must still request that evidence of provisional support for the claims be produced or the “defense” is waived.

      A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. Dynamic did not make that showing.

      The decision dances around the factual issue as to whether, in fact, the provisional did provide “written description support for the claims.” It appears that there is no question that the provisional disclosed the patentee’s invention.

      So, in the case where the specification or claims of the cited patent don’t disclose the invention but where the priority provisional does disclose the invention, is it theoretically possible for the “fourth party” patentee (the patentee whose patent is being cited as prior art) to “fix the problem” by filing a continuation or reissue application which claims the matter disclosed in the provisional?

      1. 16.1.1

        MM, the issue really is not academic. Without the claims being supported, the reference is not entitled to the priority claim.

      2. 16.1.2

        MM, typically, the reason the claims are not supported in the provisional is because they depend upon new matter added in the non provisional. Therefor, it will be unlikely that a reissue could fix that problem.

        Still, the reissue is not the reference, but a different patent.

  13. 14

    As to disciplinary rule issues, recall the last words of Searle v. Pennie & Edmonds:


    However, this Court has concluded that a violation of DR 105 has occurred and by a copy of this order will report its findings to the Disciplinary Committee.

    Dated: January 14, 2004

    The two clients of P&E (Searle and URochester) were not competitors, but UR did sue Searle the day the UR patent issued, and the interests of these two clients were adverse in the area of COX-2 inhibitors.

  14. 13

    In general, there’s a really great discussion here regarding this article. I’m curious how others think we should draw the lines for binning potential conflicts. I see three categories:

    (1) a true conflict where clients cannot consent to ongoing representation even if informed,
    (2) a potential for conflict where clients can consent to ongoing representation if informed, and
    (3) a potential for conflict that does not require consent of clients for ongoing representation.

    For (1) above, I equate this to a true interference between claims.
    For (2) above, here I would include the need to submit a client’s patent document in another client’s application and/or characterize that client’s patent in another client’s OA response – I think client’s could consent to this activity.
    For (3) above, I would include general economic competition or seeking patent rights in a general field does not, on its own, require informed consent.

    The last sentence above is where people are going to argue. Thoughts?

    1. 13.1

      I question your inclusion of 3) as you have portrayed it.

      Either a potential exists or it does not.

      If exists, must clear with client, or remove yourself.

      Otherwise, you invite too much of a grey zone (where – and how – do you draw the line consistently).

      Remove the temptation to not inform the client, and do a better job of informing the client of the lower risk. But still maintain the client’s ability to make the call.

      1. 13.1.1

        I used the phrase “potential for conflict” in (3) above as a placeholder to enable this discussion. I’m not sure I agree with your comment: “Either a potential exists or it does not”. Any time you represent more than 1 client in patent law there is more than a zero percent chance of a future conflict. Any client can invent something in the future that could possibly overlap with another client’s work. Or, an application owned by a current client (that you have never seen before) could be filed that partially overlaps with another client. If I represent two clients that create mobile applications in completely different fields, I respectfully disagree that I need their informed consent. However, there is more than a zero percent chance of a potential conflict at some point in the future for these two clients.

        1. 13.1.1.1

          Your version of any client can do anything is beyond the scope of all possibilities of resolving conflicts then.

          Good luck with that.

          That is clearly not what I (nor you initially) meant, now was it?

          1. 13.1.1.1.1

            My original intent was to have an open conversation about this. Doesn’t sound like you are game. Too bad.

            1. 13.1.1.1.1.1

              Quite the opposite – you are not being very “open” yourself, even as you “say” that 3) is where people are going to argue, you jump to the preposterous when I put forth my position.

              Too bad indeed – but on your end, my friend.

              1. 13.1.1.1.1.1.1

                Anon – Take a look at my comments 8.2 and 8.1. These examples do happen. Is your position that an attorney must seek informed consent when either (a) economically compete or (b) both invent in the same general area?

                1. Your points below at 8 are distinct from this sub-thread.

                  As to NOT being a “one and done,” I completely agree with you – conflicts are not static. I have never treated them so (but do recognize that many might).

                  My comments on this sub-thread still stand though. I do not see why you cannot see that they would.

                  I have “real world” experience before becoming an attorney, so the fact that businesses change and evolve is something that I recognize from the get-go.

  15. 12

    I remember several years ago sitting in the firm’s main conference room with a room full of attendees taking in a CLE webinar on conflicts of interest in patent prosecution when the presenter said, “And then we had the case of the firm that found itself on both sides of an interference. What a bunch of bozos.”

    We all laughed. It was the IP boutique that our firm had merged with years earlier. Some of the old geezers from that boutique were still around. Strutting around the office in their pinstripe suits and tasseled wing tip loafers. A truly clueless group of lazy old f#rts as there ever was.

  16. 11

    According to the brief, “A contrary rule would deprive patent lawyers of the ability to specialize in fields of technology. This would deprive the public of the expertise that specialization creates.

    I think most attorneys would (or could) make an easy distinction between broad “fields” of technology (“biochemistry”, “lubricants”, “sporting goods”) each comprising untold thousands of variants and innovators, on one hand, and sub-sub-sub-fields such as “screwless eyeglass hinges” where the number of competitors is going to be fairly limited and “expertise” is something that a reasonably intelligent patent attorney could acquire in a matter of days (if not hours).

    In order to survive in the face of such a rule, law firms would tend to select only a single large client to fill each technological niche. Only these larger clients could provide the law firm with enough work to keep the firm’s attorneys fully employed. Smaller clients then would be turned away due to the conflicts created by the larger client.

    Total red herring. Law firms with big clients regularly turn away small clients due to clients and have been doing so for years. And rest assured that the the ones that don’t have a “single large client” will do whatever they can to rationalize away any conflicts with their existing smaller clients if a chance arises to snag that giant golden goose. At the end of the day, law firms are businesses. Welcome to the shark tank.

    “If Finnegan were required to obtain informed client consent for the concurrent representation of Maling” and its other client, then Finnegan would be caught in a Catch-22 because to obtain informed consent from one client would require disclosure of another client’s confidential information, and vice-versa. Thus client consent would not be a practical solution, assuming it were required.

    That is absurd. Look, there is no disclosure of “confidential information” when a new client approaches a firm and the firm informs the client, “Sorry, we see a potential conflict and we can’t represent you.” Likewise, if a conflict arises between two existing clients there is no need to tell the client who is presenting the conflicting matter any “confidential information.” The client is simply told: “We can’t do that because we have an existing and conflicting matter with another client. You’ll need to ask another firm to prosecute that application.”

    Now, whether that conflict could have been forseen is another question that the booted client might want answered. But that’s a separate issue from this silly “there’s no way to obtain informed consent” baloney.

    1. 11.2

      There is clearly no way to get informed consent when you’re not telling the client ANYTHING !

      “I’m a doctor, I proceed with my treatment, and I’m not even going to discuss it with a patient. Got it? F consent.”

    2. 11.3

      I generally agree with that, but note that neither of the examples in the penultimate paragraph result in informed consent (they are however good examples of how to avoid conflicts, or the perception thereof, in patent prosecution).

      1. 11.3.1

        neither of the examples in the penultimate paragraph result in informed consent

        I grant that on rare occasions you won’t be able to obtain “informed consent” from two xisting clients wishing to prosecute conflicting subject matter. But, as you appear to recognize, those times are going to be exceedingly rare, especially if you are diligent about advising clients of actual or potential conflicts in the first instance. The fact that “informed consent” can’t be obtained in some instances isn’t a “catch 22”. It just means that you can’t avoid the conflict. Someone else gets the work, and the world keeps turning.

  17. 10

    Let me guess. You’re interning at Hillary PAC and the candidate keyword got flagged by your algorithm. Pretty nice scanner. But this blog has nothing to do with presidential elections.

  18. 9

    I’m crying my eyes out. Finnegan’s getting sued for malpractice, and its defense is, “If you find against us, inventors won’t be able to get competent patent counsel.”, a defense supported by a number of other large IP firms. What hubris. And what a whopper. Here’s some news for the bloated egos at Finnegan and places like it: there are many good practitioners out there who don’t work for firms of 500 or 100 or even 50 attorneys. Many of them used to work at places like that, until they realized that most of the money they billed to clients was going to pay for (more) senior partners’ vacation homes and yachts, and that they could give their clients the same or better service for less money in a smaller organization.

    Finnegan in particular makes its size – by its reckoning, the largest IP boutique in the world – a cornerstone of its advertising. Indeed, Finnegan seems to be guided by the principle that bigger equals better and biggest means best. Well, boys and girls, live by the sword, die by the sword. If Finnegan wants to be the biggest, and its decision-makers are so greedy that they need to bill their third-year associates at over $500/hour, then they Finnegan should put mechanisms in place to make sure it doesn’t even have the appearance of conflict. The situation that’s the subject of the lawsuit shouldn’t have arisen, period, even if Finnegan is ultimately exonerated by the courts.

    And the argument that the attorneys were in different offices gives the lie to the claim that it’s all one, big, seamless office.

    Like Dennis, I’ll be interested to see where the OED comes out on this.

    1. 9.1

      Finnegan judges the “quality” of its work the same way the PTO does, by measuring the quantity of it.

      “Finnegan seems to be guided by the principle that bigger equals better and biggest means best.”

      Well, that’s what Sophia I’s sister Amber would say, so I believe it.

  19. 8

    Dennis – I think the most difficult aspect of conflict analysis for a practicing attorney in patent law arises under the following scenario:

    Client A and Client B invent in a very general field, and their initial claims in each application do not overlap in any way. So, it passes the initial conflict analysis. Later, during prosecution, one client wants to broaden their claims in a way that could begin to overlap with the subject matter disclosed or claimed by the other client. Now you are facing a potential IDS scenario where you may be called upon to characterize one of those references.

    1. 8.1

      Client A and Client B invent in a very general field, and their initial claims in each application do not overlap in any way. So, it passes the initial conflict analysis. Later, during prosecution, one client wants to broaden their claims in a way that could begin to overlap with the subject matter disclosed or claimed by the other client. Now you are facing a potential IDS scenario where you may be called upon to characterize one of those references.

      Now imagine that you are in-house counsel for a hyper-litigious entity who owns 30,000 maintained patents and 10,000 pending patent applications in overlapping fields. Many assertions about the art were made to the PTO to obtain those patents. What happens (or should happen) when those assertions need to be challenged or contradicted to overcome a rejection in one of the pending cases?

    2. 8.2

      Another scenario (the probability of this happening is equal to 1.0) – Client A and Client B sell products in entirely different fields (e.g., airplanes and application programs). The clients meet without your knowledge to collaborate on a project. They both file invention disclosures with the same invention. Attorneys reading those invention disclosures are in the same firm, but in different practice groups (e.g., mechanical vs. software). The take-away here (I think) is that conflict checks are not a one-and-done thing.

        1. 8.2.1.1

          And if the applications are not published yet and there’s been no public disclosure, what then? And why would you perform your own search?

          1. 8.2.1.1.1

            Dear Patent Bob.

            The two invention disclosure applications in question are on the servers of the same law office, not the Google index.

            1. 8.2.1.1.1.1

              Dear Patent Bob.

              Let me be even more clear. The two disclosures are on the servers of the law firm. The law firm can run its own search engine unattended, 24 x 7 x 365, specifically for the purposes of finding such conflicts.

              There is no need for publication in the internet, printed publications, or whatever. There is no need for publication by the USPTO. We are not talking here about public disclosure. We are talking here about the law firm using its own search engine and analytics to determine whether there are conflicts between clients on patent disclosures and applications which it is confidentially working on for clients. In other words, the law firm simply runs its own search and analytics in the background on its own servers and discovers potential conflicts automatically. It’s not really complicated.

              1. 8.2.1.1.1.1.1

                Server Admin: The two disclosures are on the servers of the law firm. The law firm can run its own search engine unattended, 24 x 7 x 365, specifically for the purposes of finding such conflicts.

                Not sure about the “24 x 7 x 365” aspect but this is the way it already works at some law firms every time a new matter (e.g., a new application for drafting/prosecution) is opened (and I’m not suggesting you didn’t already know that).

                The trick, as ever, is the choice of search terms. The usual problems with identifying the targets that should be identified is the well-known ability of patent lawyers to deliberately obfuscate the subject matter they are trying to protect.

                Maybe someone should “innovate” a patent application searching system that automatically translates obfuscatory mumbo jumbo into plain English. Oh wait — I just did. LOL

                1. If you have some pizza, I know a guy (US Supreme Court, but I don’t want to drop names ;-) ), who think s he knows some guys that might be finishing up a bird photo app (any year now) that can likely help you out.

                  link to xkcd.com

                2. Anon. Don’t be one of the wing-tipped douche bags mentioned above. There is a difference between photos of birds and patent text. Furthermore, you certainly know first hand that Google has done a great job of filtering adult images from your search results. So it’s all readily possible. It’s just that perps like you refuse to invest in anything more than a laptop running Windows.

                3. I admit that there was a bit of snark in my original question about automated conflict checking systems, but that Metropolis platform is intriguing – thanks!

                  Of course, assuming a workable automated system is available, the next trick will be convincing law firm management to invest in new technology that will help turn away business …

                4. The bird app is shockingly easy.

                  Step 1: Claim an app which determines if a bird is in an image.
                  Step 2: disclose an algorithm that checks if the image filename is “a_bird”. If it is, flag the image as including a bird.
                  Step3: Argue enablement until the examiner gives up and allows the claim.

                  The comic takes place in the world of computer science, where unqualified processed worm without qualification.

                5. RICO,

                  If anything, your uptightness marks you for those wingtips…

                  Have a slice and chill.

                  As to Alexander, your “argue… until the examiner gives up” marks you as not having a clue.

                6. Really, anon? You’re opinion is that enablement is a strong rejection for examiners in front of PTAB?

                7. My opinion, my dull witted friend, is that the canard of “wearing down the examiner” shows that you are unfamiliar with the reality of patent prosecution.

                8. Fascinating opinion, but not relevant since I never said anything about “wearing down the examiner” (putting phrases in quotation marks when they haven’t been stated is mildly dishonest).

                  Argue, go to the board, get the board to force the examiner to allow. My comment was about the low bar for enablement. My method enables “determining if a bird is in the image” about as well as many business method patents are enabled. I think you understood the argument and just decided to insult me for fun instead of replying.

                9. Somehow “until the examiner gives up” is different than wearing down the examiner…?

                  There is nothing dishonest about my paraphrase – mild or otherwise.

                  You might want to bone up on the meaning of certain phrases in the patent landscape before you visit.

                  I also suggest you read (and understand) a little Sun Tzu as well.

                  Clearly, you don’t even get to your “argument” when you engage in canards that show that you lack actual involvement in the process.

                10. It all depends on how you interpret the phrases, but you knew that already. You enjoy playing word games until someone else draws a subtle distinction and then you throw a fit.

                  Once more I invite you to comment on how very patentable (aside from Alice) the “bird photo app” is despite the real world technical difficulties. But since you won’t comment on that, I’m done.

                11. Not at all.

                  And as far as “interpreting the phrases” if you want to play in the legal world, I suggest that you do not “interpret” however you want to phrases that do carry certain meanings.

                  That won’t work out too well for you.

                  As for your bird app, and setting your lack of knowledge of the system aside for the moment, it was unclear what exactly you are looking for. You commented “is shockingly easy” but left out what exactly the thing that is “easy.”

                  Easy to innovate? (if you meant that, then clearly you missed the joke of the link and can add not understanding technology to your repertoire).

                  Easy to write a claim? Sure, but again, add another check for not understanding the game (of course, if you follow Echoes here, you may think that sniffing claims is all you need to do).

                  So tell me, friend, what was your point?

          1. 8.2.1.2.1

            Dennis wrote: Back in 2003, Maling hired Finnegan Henderson to prosecute a set of patent applications relating to screwless eyeglass hinges. According to the allegations, it turns out that Finnegan was also representing a competitor (Masunaga) with a similar invention in the same screwless eyeglass hinge field. Finnegan says that these were “attorneys in different offices.”

            The applications were on servers in the same firm. They could have been flagged for conflicts by automated search and analytics software. Then the client could have been allowed to decide whether to continue with the firm. It makes absolutely no difference in 2015 whether the prosecuting lawyers were in the same office or a different office.

            1. 8.2.1.2.2.1

              Nah – those may likely be the heavier use days (with a mobile app, one can both check the birds and do business on the links with an immediate answer to the client/foursome.

              At least when that bird app is done… (I think we need more pizza).

  20. 7

    How does the duty to disclose work when you have such similar clients? If I know of art because of my representation of Client A, must I disclose that in an IDS for applications for Client B?

    Even if the two clients are not “direct competitors”, what about if I receive a rejection for an application for Client A that uses an application from Client B? My duty to Client A may be to disparage the reference. How does that affect my duties to Client B? Is this made worse if my firm is also prosecuting that reference?

    1. 7.1

      In my view, it’s very likely that you have a conflict (or at minimum it’s a potential conflict) if you are even deciding whether a reference of Client A should be disclosed in an application of Client B. Once that reference is disclosed, you are now traveling down a pathway where you may be called upon to characterize that reference, and at that point you will likely violate the bar rule regarding the “materially limited” aspect of representation.

    2. 7.2

      Forget about the details. If two clients are competitors or they are not competitors yet but have filed applications in the same classification or specific technology, then THE LAW FIRM SHOULD SIMPLY ASK THE CLIENT FOR A WAIVER.

      This is not something that a law firm should get to decide. The rule should favor the client and error on the side of obtaining a waiver and consent.

      1. 7.2.1

        Since applications are secret until published, how do you ask one client for a waiver without revealing the confidential information of the other client? And if your waiver request is vague enough to avoid revealing the other client’s confidences, then isn’t there an issue of whether the waiver was based on “informed” consent?

        1. 7.2.1.1

          Of course you cannot disclose another client’s confidential information. But that’s not the issue. The issue is who gets to decide. THE CLIENT SHOULD GET TO DECIDE.

          Right now there is NOTHING for the client to decide. How “informed” it that !

          1. 7.2.1.1.1

            Okay, you’re right. Now, what does the law firm tell the client in order to get a waiver, and on what facts does the client make the ‘informed’ decision?

  21. 6

    I would agree with other commenters that the answer to the title question is “no.”

    The assertion of Finnegan’s that seems most odd to me is the assertion that “screwless eyeglass hinge” is a “field.” Seems more like a sub-sub-sub-field to me which is where Finnegan’s “nothing to see here” arguments break down.

    For example:

    Finnegan also explains that conflicting-out large law firms would make it difficult for inventors to find representation — quoting Hricik as saying that “a rule that limits a firm to representing only one client in a particular technical field ‘imposes unnecessary costs on lawyers, clients, and the system.’” Hricik & Meyer, Patent Ethics: Prosecution (2015).

    I haven’t read the paper but I can see where, if the term “field” is defined too broadly and the “rule” is without reasonable exception, some “unnecessary” costs will be created.

    That said, the existence of conflicts shouldn’t be blamed for the difficulties that “inventors” in certain fields might have finding representation. If a firm without a conflicts problem can’t be found in a particular market, there’s too few firms (or solo practitioners) in that market.

    The write-up says the attorneys handling the two cases were in “different offices”. Presumably those attorneys were associates…? Were these two clients of the same partner? When the conflict check was done on the incoming work, why didn’t the pre-existing client (“Masunuga”) show up?

    Ah, the problems of big patent firms. Too many clients! Heart wrenchning stuff.

    1. 6.1

      MM – I think the problem here (particularly with big firms) is that conflicts in patent law are multi-dimensional. For example, you can pass a conflict check at an initial stage, but later the applicant wants to claim broader subject matter in an application, or invents in an entirely different area from its core business.

      1. 6.1.1

        No different than any other ongoing representation, all adequately handled by the rules of professional responsibility and case precedent. There is no need for some silly exception for the privileged patent bar.

        1. 6.1.1.1

          I agree that there is no need for a silly exception. I’m merely pointing out that conflict analysis in patent law is challenging – not an excuse – but challenging.

          1. 6.1.1.1.1

            Clients don’t think it’s challenging. Only patent lawyers think it’s challenging.

        2. 6.1.1.2

          True dat. It’s a pretty simple calculus actually: Would current client be happy to learn that we are taking on new client and new client subject matter?

          We were recently “fired” by a firm. They claimed they had passed up some tasty and lucrative work due to their representation of us. Not sure how our new status as a “former client” is going to allow them to take on all that snout-in-the-trough work, but they did terrible work anyway so it’s actually a win for us. They’re not going to be allowed to be adverse to us on pretty much everything, and if they try, we’ll raise such a ruckus with the court that their “new client” will quickly learn that it would be much faster, cheaper, and easier to just hire somebody else.

            1. 6.1.1.2.1.1

              We’re not exactly hurting for people trying to get our work. There’s no need for us to put up with firms that do cr#ppy work and complain that they’re losing out on “opportunities” because they’re half-a$$ing their way through our stuff. Good riddance.

              Actually it might be fun to let them be adverse to us. Tearing them a new one in court would be enjoyable.

      2. 6.1.2

        I think the problem here (particularly with big firms) is that conflicts in patent law are multi-dimensional. For example, you can pass a conflict check at an initial stage, but later the applicant wants to claim broader subject matter in an application, or invents in an entirely different area from its core business.

        All true. It’s difficult for a large patent firm to manage this stuff. But it’s do-able. Last time I checked Finnegan could afford to take the extra steps. The pain in most instances is not acute for the firm itself (as if they need both these eyeglass clients to survive!) but for the partner who may be forced to choose between jettisoning a favorite client or finding a new firm.

        Anybody who’s seen or been involved with the political power plays that take place when these conflicts arise knows how wonderfully fun they are for everyone involved.

        1. 6.1.2.1

          MM – totally agree. Also, the narrowness or breadth of their conflict analysis is driven by the magnitude of the client fees at issue. Most of the “conflict” referrals that I’ve seen are clients that are a pain in the ass of the referring attorney, and pay relatively small fees. Conflict referrals for large paying clients do not exist.

  22. 5

    There is only one question to be answered:

    Who should get to decide, the client or the law firm?

    That’s the public policy issue.

    Obviously the answer is clear to anyone but patent lawyers:

    THE CLIENT SHOULD GET TO DECIDE WHETHER TO WAIVE THE CONFLICT OR NOT. PERIOD.

    1. 5.1

      The question here is whether there is a conflict to begin with. Good luck trying to get a client to waive a “potential conflict” without violating other bar rules.

      1. 5.1.1

        Well then, that’s the result. Too bad. They lose clients. Deal with it. Partner business model be damned. Profits don’t determine whether a lawyer is scrupulously advocating on behalf of the client. That fundamental requirement of legal system comes first. Not profits.

    2. 5.2

      I agree wholeheartedly. If I was a client of any of the firms who put their name to the amicus I would be straight on the phone to them today asking whether or not they also represented my direct competitors. I can’t imagine any client being happy for their attorney (patent or otherwise) to also be representing direct competitors.

      Regardless of whether or not there is any actual legal conflict in representing direct competitors, there must surely be a perception of conflict to outsiders. Something that should be avoided if at all possible.

    3. 5.3

      These kinds of conflicts are so clearly improper, and the feigned mental gymnastics to ignore them so facially unscrupulous, that I often wonder if any of you big patent firm clowns are actually lawyers at all, and if so, where the hell did you get your professional responsibility instruction.

  23. 4

    I tend to disagree on this one…. I havent seen the claims, but I don’t think you can prosecute claims for both clients when they are close enough to suggest that they COULD both cover the same embodiment in some instances. You would then be in a position of deciding which client should secure such protection, or, worse, getting both clients protection for overlapping subject matter. If the claims really have zero overlap, that’s a different issue.

  24. 3

    Dennis, as patent counsel of a major company I always insisted that the firms prosecuting patents for us not prosecute patents for our competitors.

    I have been on the other side to when I was prosecuting for firms. At one point I found myself crafting claims for one client that I knew would read on the products of another. I stopped, raised the issue with the senior partners, and we stopped representation of one of the clients. Some have suggested that we should have stopped representation of both clients.

    From personal experience, I think the major problem is infringement, not inequitable prosecution or anything else.

    1. 3.1

      Ned – It seems to me that you were able to insist here because of the market power of the major company that you worked for. This doesn’t mean there was a conflict. Your decision as a client was wise. However, from a conflict perspective, mere economic competition does not create a conflict on its own.

    2. 3.2

      As a follow-up – I’m assuming that you were speaking of a continuation application here:

      “At one point I found myself crafting claims for one client that I knew would read on the products of another.”

      Otherwise the products of the other company would likely be prior art that should be disclosed in the application. I think that aspect creates the potential conflict – disclosing and/or arguing prior art of another client.

  25. 2

    ” This, of course, is disingenuous as the pre-AIA system included a large number of adverse impacts caused by delays in filing.”

    Disingenuous? Your pro-first-to-file bias is showing.

    I’m not sure which adverse impacts you are referring to. But under the Inventor gets the patent rules, if an attorney delayed filing a patent application of a client in favor of the application of another client, evidence could be submitted showing inventorship by the first client to rectify any harm.

    Not so now….

    So, I don’t think it is disingenuous.

  26. 1

    To answer the question directly: No.

    A better question: under what other circumstances would the inherent conflicts be mitigated enough to allow such representation?

Comments are closed.