Patently-O TidBits

  • MBHB has released Volume 5 of its snippets newsletter. snippets was originally started by a group of associates at MBHB (who are now partners). And, in many ways, Patently-O is a snippets spin-off. Contents of the most recent edition:
    • MedImmune’s Impact for Licensees by Josh Rich
    • Crafting the Cease and Desist Letter in Light of MedImmune by Dave Frischkorn and Rory Shea
    • E-Discovery FAQ by Richard Carden and Jennifer Kurcz
    • Trademark Infringement and Web Page Metadata by Eric Moran and Jim Suggs.
    • There is also a Special Alert discussing the impact of KSR v. Teleflex by Kevin Noonan, Jeremy Noe, Dan Williams, and Paul Kafadar.
    • Download snippets V.I;
    • Download KSR Special Alert;
  • Verizon v. Vonage: Many casual commentators have indicated their belief that Verizon’s VOIP patents are "junk." A jury held that they were nonobvious and the judge concurred.  On Friday, the CAFC rejected Vonage’s plea for an immediate retrial based on the outcome of KSR v. Teleflex. The appeal continues.
  • There has been some discussion on Patently-O regarding European and Japanese patent blogs.  My money is on IPEG (de Wit) and IP Kat (Phillips) as the best amongst several good in Europe and the UK. I don’t read Japanese, but I have not heard of anything comparable discussing Japanese patent law. The Japanese IP High Court does have a nice english website. Link.
  • Can someone fix this Wikipedia entry:
  • … I’m off to Bio2007 …

5 thoughts on “Patently-O TidBits

  1. 5

    Concerning “casual commentators” on the Verizon vs. Vonage case: “persons having ordinary skill in the art” of VoIP have stated that the patents are not combining anything new when looking at prior art – arguments are that the patents are a restating of prior art vs. an obvious or non-obvious idea based on prior art.

  2. 4


    Intellectual honesty when judging obviousness!, now there’s a thought I like.

    I’d certainly trust your intellectual honesty, even though I doubt you and I would tend to agree when it comes to a subjective judgment about obviousness. But, if there were evidence one way or the other, in which case sure, I’m confident we’d nearly always agree, both being intellectually honest as we are.

    However, can one really rely on the intellectual honesty of another when the value of his intellectual property is at stake and there is no evidence that speaks to obviousness/nonobviousness?

    Given the human condition, people, intellectual people or otherwise, can rationalize anything they want to if it makes them happy or suits their plan. Especially when IP people judge obviousness of another’s invention, intellectual honesty tends to fail because IP people almost always have their own motivations, agendas and or opinions and often there is so much at $take.

    Unfortunately, I think the time to find a new formula has come and passed last week. The Supremes found nothing new — they came up empty and rehashed the past. And while I don’t like their opinions of late, I’m confident all of the Supremes are mental giants par excellence, so much so they comprise the world’s most powerful nation’s highest court. That attests to how hard testing obviousness is.

    While the CAFC’s TSM standard may not may not be perfect, and it may have tolerated some abuse due to lack of vigilance on one level or another, at least TSM was more objective and less subjective than where the Supremes wound up.

    Riddle me this: What I cannot figure is why, Patently-O why, would the Supremes think they could do a better job than the dedicated and brilliant CAFC Jurists par excellence who specialize in this so difficult subject matter??

  3. 3


    Hindsight bias is a legitimate concern but you are presenting it as though that concern all by itself should over-ride rational inquiry and discussion. “Don’t ask the question, you might fall prey to hind sight bias.”

    People who are intellectually honest are capable of looking at something after the fact and then saying that it is obvious in the colloquial sense of the word while acknowledging that they would not have thought of it themselves. Bricklin and Frankston’s invention of VisiCalc was “obvious” to experienced computer programmers once they had seen it and yet it is, in my mind at least, an absolutely brilliant piece of work. The first time I saw a spreadsheet working I was blown away. When you slap your head and say “why didn’t I think of that” you’re acknowledging that some special act of creativity has occurred.

    The “obvious” test comes from the statute, not the Constitution and certainly not the underlying economic rationale. If you divide the practitioners having skill in an art into thirds then the PHOSITA would fall into the middle third. It makes no sense to grant exclusive monopolies to an idea that would be truly obvious to the top third and yet that is what you, in effect, say the statute requires. If that is so then the statute is, in my opinion, unconstitutional.

    We have areas of technology where the PHOSITA will have a masters degree or a PhD in computer science, physics or engineering and jurors who can’t set the clock on their VCRs are being asked to rule on whether or not claims are “obvious”. The word “obvious” does not accurately capture the concept which Congress was trying to express and it is time to find a new formula.

  4. 2

    Rule of Thumb:

    If you let geniuses skilled in the art judge obviousness, a gifted inventor with ordinary skill in the art will no longer be eligible to get his or her invention patented.

    That cannot be what the Framers had in mind, can it?

  5. 1

    Those Skilled with High IQs Needn’t Apply.

    Dear Not-So-Ordinary Joes:

    With all due respect, I seriously question if you are the right guy to judge obviousness.

    You are too smart – you know too much about physics, math, computer science, economics, research, programming, and the list goes on.

    You no doubt go well beyond “ordinary skill” in so many disciplines.

    And the rule, even after the Supremes’ failed rulings, hasn’t changed – obvious to a person having “ordinary skill in the art.” No doubt the Supremes also are over-qualified being equipped with well beyond ordinary brain power.

    You are the proverbial physicist who, upon seeing Albert’s formula for the first time, would have slapped your forehead and said, of course!, it is so obvious to me, why didn’t I think of that!

    You are also the proverbial proof of my pudding: Invention is what makes the non-obvious obvious: everything is obvious to very bright educated people after it has been invented – because they are just too smart to judge obviousness.

    A word to the wise-beyond-ordinary-skills in the arts: you cannot and oughtn’t to judge an inventor’s work for obviousness. You are incapable of doing so because you are too competent, and there is no way you can dummy-down to do the job. Bright brains just do not work that way. If you need to know if something is obvious, delete your own opinion and ask someone with ordinary obviousness skills in the art.

    Welcome to the “smartas ” club, and thank you for helping support my obviousness opinions to a T. Please, slap your head and say, by gosh, of course!, I see it so clearly now, why didn’t I think of that!

    All kidding aside, because testing obviousness is vital to the inventing arts which we all have a stake in: Am I getting through?

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