Patently-O TidBits

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  • More meetings with the OMB regarding continuation rules: the NanoBusiness Alliance asks that the PTO at least provide some “analysis of the effect these two rule packages might have on innovation or the economy . . . we are very skeptical that the most cost-effective solution involves curtailing of continuations and the number of claims per application.” Maebius Letter.
  • Solveig Singleton on patent trolls and the “loser pays” rule: “As a general rule, the “loser pays” rule is more fundamentally fair than a rule where each party pays his own costs. Only ‘loser pays’ fully compensates the winning party in a lawsuit and makes him whole.”
  • Technology Liberation Front (TLF) on patent damages reform: “The result will be to reduce protection for all patents, not just the bad ones.”

2 thoughts on “Patently-O TidBits

  1. 2

    After several false starts, OMB finally has our materials properly posted. The meeting summary is at

    link to
    Our materials are at (caution – 7MB)
    link to

    The bits that most reward a quick read are –

    Page C-4 (PDF page 10), footnote 24: Commssioner Doll admits that the PTO did no study to differentiate possible sources and causes of backlog

    Page D-2 (PDF page 13), footnote 31: In a 2000 paper, now-Deputy-Assistant-Commissioner John Love advised applicants that the most efficient application is the type of application that the PTO now wishes to curb in the Limits on Claims rule

    Cages D-3 to D-5 (PDF pages 14-16) – the applications targeted by the two Rules are precisely the applications that applicants signal to be most valuable

    Attachment J (PDF pages 65-67): the proposed counterbalances to the rules, Petitions re Premature Final Rejection, do not exist in actual practice, because of lack of careful and timely adjudication by the PTO, and stated refusal to consider precedent

    Pages M-5 to M-6 (PDF pages 82-83): In late fall 2006, the PTO estimated that Examination Support Documents would impose a paperwork burden of zero, or possibly negative – after receiving comments in May to the contrary

    Page M-5 (PDF page 82): Solicitor John Whealan advises patent attorneys that “the good news” is that attorneys’ fees will go up.

    Page M-6 (PDF page 83): Solicitor Whealen stated at a public presentation that “nobody’s going to want to” use the ESD procedure, that it is a sham “poison pill” to hide the confiscatory effect of the Limits on Claims rule

    Pages C-3, C-4, L-1, L-2 (PDF pages 9-10, 72-73): The PTO payed “hide the peanut” with its data, models and assumptions. Compare the PTO’s conduct to a civil litigant that hides relevant documents during discovery and then selectively drips them out after close of discovery as it becomes advantageous to do so.

  2. 1

    The TLF blog entry only underscores how poorly understood the apportionment issue is.

    Contrary to the central assertion in the Rooklidge article, i.e., that “[a]t least since the Supreme Court’s 1877 decision in Elizabeth v. Pavement Co., the infringer has had the burden of proving that apportionment is appropriate,” the burden of apportionment, except in the very narrow circumstance described in Elizabeth, has always been on the patentee. Moreover, the patentee had that burden in every case, although where the patent was for entire marketable article (as in Elizabeth), the patentee essentially enjoyed a presumption that 100% of the profits on infringing product were attributable to the patent. The Entire Market Value Rule’s sole purpose was to provide the patentee with the means to meet its apportionment burden where the claimed invention was for a component for or improvement to a marketable article. These principles were summed up by the Supreme Court in 1884:

    “The patentee … must in every case give evidence tending to separate or apportion the defendant’s profits and the patentee’s damages between the patented feature and the unpatented feature, and such evidence must be reliable and tangible, and not conjectural or speculative; or he must show, by equally reliable and satisfactory evidence, that the profits and damages are to be calculated on the whole machine for the reason that the entire value of the whole machine, as a marketable article, is properly and legally attributed to the patented feature.

    Garretson v. Clark, 111 U.S. 120, 121 (1884). The same rule was reflected in dozens of other Supreme Court cases.

    In other words, the Entire Market Value Rule FOLLOWS the burden of apportionment. Separating the two as the as TLF blog entry attempts to do simply has no historical basis.

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