Federal Circuit: State of the Court

On May 15, 2008, Federal Circuit Chief Judge Michel presented his “State of the Court” address at the well attended Federal Circuit Judicial Conference.  As usual with the Chief Judge, his remarks were upbeat but unsatisfied.  Several particular issues were emphasized:

  • Aging of the CAFC Judges: Within two years, eight of the twelve regular active CAFC judges will be eligible for senior status. 
  • Settlements: About half of all CAFC appeals settle prior to decision.
  • Speeding Up: “Expedition is a top priority.” Median time from docketing to disposition was nine-months for FY07. The current inventory of cases is now just over six months.
  • More Clerks: Judge Michel has requested a fourth law clerk for each judge to keep up with the complexity of the appeals.
  • En Banc and Supreme Court Review: Continue to be exceedingly rare. “Despite news reports of a surge in the last three years in the Supreme Court review of our patent cases, the data shows little change. I believe these data illustrate how well our panels do in nearly all appeals. We can all be proud of the work of the Federal Circuit.”
  • Read the remarks. Judge Michel’s charts are reproduced below. (Click to expand).

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143 thoughts on “Federal Circuit: State of the Court

  1. 143

    Dear Mr. Dhuey,

    Thanks for your comment, I thought I lost you.
    Thanks also for the Cap tip. I miss bold, ital, underlining, small caps etc.

    With all due respect, I think you may be the odd man out on this score: What solid rebuttal do you think tops “anonymous’s” “Commerce Clause” lawyer’s-argument rebuttal? (Of course, the Supremes’ eBay ruling was not as creative or clever as anonymous’s Commerce Clause argument).

    What did you think of step back’s comment away up-thread?
    link to patentlyo.com

    I was hoping when you and your team face the nine Justices you might point out their “eBay” blunder, but I can understand your reservation to risk antagonizing them with so much personally at stake.

    I guess it would be too much to ask you to criticize those nine ninnies now since you are hoping they will buy your California should be liable for infringement argument (I certainly agree with you on that score, especially under your particular circumstances – the Eleventh Amendment has always stuck in my craw).

    Remember: There is science, logic, reason; there is thought verified by experience. And then there is California.

    –——————–———— * * * * * ————————–——–

    Be thankful, ever so thankful on so hallowed a holiday — Memorial Day.

  2. 142

    JAOI, I’m a big supporter of the inventive, unconvential mind, but please be aware that FREQUENT USE OF ALL CAPS makes their user SEEM A BIT NUTTY.

    As for the solid rebuttals, you’ve gotten some already. You don’t agree with them, but there they are.

  3. 141

    Remember America’s finest this Memorial Day Weekend.

    –———————— Strength & Honor ————————–

    Every good citizen makes his country’s honor his own, and
    ——cherishes it not only as precious but as sacred.
    He is willing to risk his life in its defence and
    ——is conscious that he gains protection while he gives it.
    —————— Old Hickory, Andrew Jackson ——————

    One minute of Memorial Day silence:
    link to youtube.com

    3:54 min:sec of: Na•tion•al•ism
    noun
    : loyalty and devotion to a nation ; especially : a sense of national consciousness exalting one nation above all others and placing primary emphasis on promotion of its culture and interests as opposed to those of other nations or supranational groups
    link to youtube.com

    –——————–———— * * * * * ————————–——–

    Nationalism, as compared to a Flat Harmonized World:
    link to patentlyo.com

  4. 140

    Who can doubt that
    Our Founding Fathers
    meant us to have a strong patent system,
    or none at all,
    to wit:

    Article I, §8, The Patent Clause, which has never been amended, reads:
    “The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    Thus, Congress can tinker with the criteria for patentability, authorize different types of patents, terms of the patents, maintenance fees, etc., it cannot water down “the exclusive Right” of patentees to their inventions.

    Without securing “the exclusive Right” TO EVERY INVENTOR’S DISCOVERY, the Patent Clause would be tantamount to compulsory licensing for some patents and not others. A “compulsory licensing” interpretation of this nature (or any other) is Just not plausible.

    A patent without the ability to stop infringement
    ———–———— is like a revolver without bullets.

    Our Founding Fathers knew that.
    ———–———— We the American People know that too.

  5. 139

    Dear big hr,

    Yes, don’t we all, some more than others, some less.
    For you my friend, please consider the enduring adages Old Hickory, Andrew Jackson (March 15, 1767 – June 8, 1845, the 7th President of the United States, 1829–1837) was credited with:
    link to thinkexist.com

    I do not forget that I am a mechanic. I am proud to own it. Neither do I forget that . . . the apostle Paul was a tentmaker; Socrates was a sculptor; and Archimedes was a mechanic.

    I’ve got big shoes to fill. This is my chance to do something. I have to seize the moment.

    One man with courage makes a majority.

    Americans are not a perfect people, but we are called to a perfect mission.

    As long as our government is administered for the good of the people, and is regulated by their will; as long as it secures to us the rights of persons and of property, liberty of conscience and of the press, it will be worth defending.

    It is to be regretted that the rich and powerful too often bend the acts of government to their own selfish purposes.

    The mischief springs from the power which the monied interest derives from a paper currency which they are able to control, from the multitude of corporations with exclusive privileges which they have succeeded in obtaining…and unless you become more watchful in your states and check this spirit of monopoly and thirst for exclusive privileges you will in the end find that the most important powers of government have been given or bartered away….
    – Andrew Jackson, Farewell Address, 1837

    And last but not least:

    Any man worth his salt will stick up for what he believes right, but it takes a slightly better man to acknowledge instantly and without reservation that he is in error.

  6. 138

    “This is the last Patently-O call for SOLID REBUTTAL ”

    JAOI, you need to get over yourself.

  7. 137

    IF YOU ARE DENIED AN INJUNCTION Please
    feel free to plead the — “Jaoi™ eBay Gambit”

    — — — — VERY LAST CALL — — — —

    This is the last Patently-O call for SOLID REBUTTAL to counter the assertion that the Supreme Court eBay opinion stands in violation of Article I, §8, Clause 8 of the United States Constitution.

    ANY PATENT OWNER whose valid patent is found infringed, and is denied an INJUNCTION by any Court, please feel free to argue the “Jaoi™ eBay Gambit,” that eBay stands in stark violation of the Constitution and MUST BE STRUCK.

    If I, Jaoi, can help in any way I’d be delighted – address a comment to me here on Patently-O and I will follow up and contact you in confidence.

    The Jaoi™ eBay Gambit was summed up by “anonymous” a way way up tread:

    “Article I, § 8 gives Congress the power to promote the progress “by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.” (emphasis added)
    Thus, although Congress can tinker with the criteria for patentability, the term of a patent, maintenance fees, etc., it cannot water down “the exclusive right” of patentees to their inventions.”

    — — — — * * * * * — — — —
    — — — — URGENT — — — —

    HELP STAMP OUT PATENT REFORM.

    REMEMBER,
    No matter where PATENT REFORM comes from, whether from:

    1) the PTO (currently “deceased”),
    2) Senate Patent Reform bill, S. 1145 (currently pending),
    3) the “Coalition for Patent Fairness” (propaganda horseshit still pending) or
    4) Cisco’s “Patent Troll Tracker” (now departed, defunct & deceased)

    REMEMBER,
    ONLY YOU CAN PREVENT PATENT REFORM BILLSHIT

    Those IP professionals in the know say the
    “BUSH ADMINISTRATION
    CONTINUES ATTEMPT TO
    DESTROY U.S. PATENT SYSTEM”
    link to patentlyo.com

    This is Jaoi, and I approved this message & guarantee success or double your money back, Just pay shipping (õ¿Q)

  8. 136

    Dear anonymous,

    I see a conundrum re:
    “JAOI, the Commerce Clause has been used to justify many, many things by the Supreme Court that have no clear relation to ‘commerce.’ It may be a ‘lawyer’s argument,’ but it also might work.”

    Let’s assume Plaintiff “P” prevails against infringer “I” – the Court finds P’s valid patent is infringed but his demand for an injunction is nonetheless denied. P takes his case to the Federal Circuit and argues the “Jaoi™ eBay Gambit” that eBay stands in violation of the Constitution and must be struck. Judge Newman rules “go tell it to Judge Roberts” and P successfully Certiorari Petitions Judge Roberts and P then files its S. Ct. Appeal Brief.

    Here’s the conundrum: ¿Can “I” argue your points (1) to (6) and sum up saying that:

    “… under the Supreme Court’s case law, the grant of power under the Commerce Clause seems limitless.”
    Here’s the thing— other than Boston Legal’s Alan Shore, Esq., ¿Do real live attorneys licensed to practice in front of the S. Ct. have such hudspa (õ¿Q) ?

    But I do agree with you, your argument could succeed; a judicially dishonest Judge certainly could find a basis for rendering a result-oriented decision given your arguments (1) to (6¿©).

    * * * * *

    Dear your friend,

    I see your point regarding my comment:

    “eBay favors big business while screwing the little guy.”

    I agree with you – my comment was too sweeping. I think the best that can be said is that eBay can be viewed in differing ways depending on one’s particular circumstances.

  9. 135

    I’d like to close for the day with my very own poetry:

    If I can tear my self a way,
    Here is the last thing for the day:

    Without “the exclusive Right” [to] — for every— one’s invention, the Constitution’s Patent Clause would be tantamount to a Compulsory Licensing deal — for some and not others —, and that interpretation would be Just plain laughable. Anyone advancing that notion ought to be tarred, feathered and run out of town on a rail the Old Fashion way.

  10. 134

    Another Correction:

    In “Oh Brother Where Art Thou,” Baby Face Nelson said “give it a tink.”

    I said, maybe over a couple of Old Fashions, like Old Hickory used to drink (and in this regard, I admit I bullshitted – I don’t really know what Old Hickory drank, but I’m pretty sure he did, and I’d bet even money he drank bourbon, which is how to make an Old Fashion).

    Boy, you’s guy is making me work for my eBay position. Thank you all — there is no finer blessing in life than to have a purpose. Protecting my patent portfolio while fighting for the strong American patent system works Just fine for me.

    It is rapidly approaching that time of day. Aw heck, close enough; Cheers!

  11. 133

    >>>It clearly undercuts your statement that “under the Supreme Court’s caselaw, the grant of power under the Commerce Clause seems limitless.” You seem to be confusing hyperbole with legal argument.<<< It clearly does undercut that statement. I asked the question I did because I was wondering if you meant anything beyond that. Apparently not.

  12. 132

    Dear Lionel & your friend,

    Re:
    “If the Constitution meant what SCOTUS says it means, that would render Article V somewhat impotent and let the Supremes write into law any changes they see fit to make.”

    You are both right as rain, I misspoke — Oooops, sorry.
    Please let me amend my thought as follows:

    “If the Constitution meant what SCOTUS says it means, that would render Article V somewhat impotent and let the Supremes [write into law] — reinterpret long-standing existing laws making — any changes they see fit to make.”
    [deletions] —insertions—

    Re:
    “Actually, the SCOTUS is the ultimate interpreter of the Constitution. There is not one objective interpretation that everyone can agree to and various limits to the powers of the federal government have been subject to SCOTUS interpretation of the Constitution over the years.”

    I find it hard to swallow on several levels. Please clarify.

    For example, above I wrote:
    While minds may differ on what the Founders intended by this or that when the this or that is liable to reasonable and differing interpretations, when the Constitution specifies with sufficient clarity about this or that, such as in Article I, §8, Clause 8 (“one”), Clause 12 (“two”) and Clause 17 (“100”)(also, please see the Endnote found in the link below), there is no wiggle room whatsoever no matter what the President, the Supremes or Congress says even if they were to all together in unison say something contrary to the Constitution.

    Of the three Clauses with specified limits among the 18 Clauses in Article I, I think our government has adhered to at least two without disparity or disagreement (please correct me if I’m wrong). As President Jack Nicholson said in “Mars Attacks,” “Two outta’ three ain’t bad.”

    Consider this: If there was any possible wiggle room in Article I, §8, Clause 12, President Bush would no doubt attempt to take advantage of it.

  13. 131

    “Leopold Bloom, if you think US v. Morrison undercuts the argument, I’m interested in knowing how it does so.”

    It clearly undercuts your statement that “under the Supreme Court’s caselaw, the grant of power under the Commerce Clause seems limitless.” You seem to be confusing hyperbole with legal argument.

  14. 130

    “If the Constitution meant what SCOTUS says it means, that would render Article V somewhat impotent and let the Supremes write into law any changes they see fit to make.”

    Not correct. The Supremes can say, “here’s what this law means” or “this law is unconstitutional,” but they can’t pass any laws. In other words, they can keep the other branches from doing something, but they can’t force them to do something.

    “If that were to happen, my friend, if our government’s three branches were to run amuck together, the only recourse for We the American People would be to utilize our Second Amendment Rights and Join an insurrection.”

    This statement is more correct and complements my statement above. If all three branches were “in it together,” then you’d have to worry. As it is, though, Ebay v. MercExchange didn’t give me any impression of collusion between the three branches of government.

    I doubt an armed insurrection would result over disagreement in how to interpret patent laws.

    “eBay favors big business while screwing the little guy.”

    Um, no. Rather, I would say that eBay (the concurrence at least) favors practicing entities over non-practicing entities. For you, eBay (the majority) might say that it’s ok to just give the little guy money, there’s no reason to keep the big business from selling its product. I think that as long as the little guy gets the royalty he wants, why should he care whether it’s this big company or that big company who sells the product? I assume that the little guy can’t sell his product as effectively, of course.

  15. 129

    JAOI wrote “I don’t mean to sound flip, but the Constitution means what it says, not what the President, the SCOTUS or Congress says it means.”

    Actually, the SCOTUS is the ultimate interpreter of the Constitution. There is not one objective interpretation that everyone can agree to and various limits to the powers of the federal government have been subject to SCOTUS interpretation of the Constitution over the years.

    “If the Constitution meant what SCOTUS says it means, that would render Article V somewhat impotent and let the Supremes write into law any changes they see fit to make.”

    No, it would not. The SCOTUS cannot enact legislation. All they can do is judge whether it is Constitutional or not. The SCOTUS does not share your interpretation of the Constitution. You are both interpreting the same text. Unless you have some external data that supports your interpretation, the SCOTUS’s interpretation is just as valid as yours. SCOTUS believes monetary damages are sufficient to protect the patent holder in some cases.

  16. 128

    JAOI, the Commerce Clause has been used to justify many, many things by the Supreme Court that have no clear relation to “commerce.” It may be a “lawyer’s argument,” but it also might work.

  17. 127

    Leopold Bloom, if you think US v. Morrison undercuts the argument, I’m interested in knowing how it does so. The Patent Act seems to me to have a much clearer connection to interstate commerce than the Violence Against Women Act. And, of course, you can explain your argument to Angel Raich.

  18. 126

    Dear anonymous,

    At first glance, and I hope I say this right, your argument does not sound like a 102 knockout, and it seems to lack 103 muster as well.

    But I have to tell you, I love it!

    As a “Judge Bryson lawyer’s argument” it certainly could give a judicially dishonest Judge a basis for rendering a result-oriented decision.

    I’ve wondered from time to time over about 40 years about the IP implications of the anti-trust statutes and assumed that therein was a reasonable time-tested balance between those anti-trust and IP statutes.

    Your argument, however, would run in direct contrast since eBay favors big business while screwing the little guy. That don’t seem to wash because anti-trust statutes fundamentally are meant to foster competition, but I’d like to “give it a tink,” as Baby Face Nelson said in “Oh Brother Where Art Thou,” maybe over a couple of Old Fashions, like Old Hickory used to drink.

  19. 125

    E#6K wrote “The amount of art examiners do not have convienent (or anywhere near convienent) access to is nearly infinite in this day and age. Without a convienent access to the info the examiner will not find it in 20 hours or less. Keep on repeating that “examiner did a poor search” to yourself at night to make you feel better for being an arse.”

    If the Examiners cannot access the information, how do you expect the Applicants to do so? The Examiners have access to much more info than the Applicants.

  20. 123

    Andrew Dhuey wrote “JAOI, I’m sorry but even after reading your posts above (and the link) I just don’t understand your position. Like Mr. McDonald, I cannot reconcile your concession that there can be permissible denials of injunctions after a finding of infringement, and your position that eBay is inconsistent with the Patent Clause.”

    There is a large distinction between JAOI’s position and that of the E-Bay court. The E-Bay court stated that the standard four injunction considerations b used to determine whether an injunction should issue. This is different than saying that an injunction will issue subject to public policy considerations.

  21. 122

    Dear Big hr,

    Please tell me to which counter argument you refer.
    Many/most counter arguments were overcome with my response in the link found at the bottom of this comment.

    Re: “Further, the Constitution means what SCOTUS says it means.”

    Sorry to say No way No way – I must so strongly disagree. And I can tell you why.

    I don’t mean to sound flip, but the Constitution means what it says, not what the President, the SCOTUS or Congress says it means.

    If the Constitution meant what SCOTUS says it means, that would render Article V somewhat impotent and let the Supremes write into law any changes they see fit to make. That would give the Supreme Court power superior to that of the executive and legislative branches, and it would undermine the very notion of our three branch democratic system of government checks and balances.

    Here’s the thing, and the only thing relevant to this subject:
    The Constitution means Just what the Founders intended it to mean, no more no less no matter what everyone else combined may say. The only way to change the Founders’ intended meaning of the Constitution is by formal Amendment invoking Article V.

    While minds may differ on what the Founders intended by this or that when the this or that is liable to reasonable and differing interpretations, when the Constitution specifies with sufficient clarity about this or that, such as in Article I, §8, Clause 8 (“one”), Clause 12 (“two”) and Clause 17 (“100”)(also, please see the Endnote found in the link below), there is no wiggle room whatsoever no matter what the President, the Supremes or Congress says even if they were to all together in unison say something contrary to the Constitution.

    If that were to happen, my friend, if our government’s three branches were to run amuck together, the only recourse for We the American People would be to utilize our Second Amendment Rights and Join an insurrection. I for one am a pretty good shot — I can still drop a deer at 300 yards with a clean head shot from a rested position.

    Old Hickory, Andrew Jackson, was credited with saying:
    “Any man worth his salt will stick up for what he believes right, but it takes a slightly better man to acknowledge instantly and without reservation that he is in error.”

    When I say, as I did up thread yesterday, I will happily stand corrected as rebuttal may merit, I meant it to be interpreted literally, Just like our Founding Fathers meant Article I, §8, Clause 8.

    One more time, HERE’S THE BIG THING:
    Without “the exclusive Right” to one’s invention, the Constitution’s Patent Clause would be tantamount to a Compulsory Licensing deal, and that interpretation would be Just plain laughable. Anyone advancing that notion ought to be tarred, feathered and run out of town on a rail the old fashioned way.

    link to patentlyo.com

  22. 121

    “…under the Supreme Court’s caselaw, the grant of power under the Commerce Clause seems limitless…”

    Try telling that to Christy Brzonkala.

  23. 120

    JAOI, try this. A patent system with watered-down exclusivity is authorized by the Commerce Clause. As the IP clause is a limited grant of power to Congress and not an affirmative grant of rights to inventors, Congress can look outside of the IP clause if it wants to do something not authorized by that.

    (1) The IP clause of the constitution grants Congress the power to promote the progress of science and the useful arts “by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.” (emphasis added).

    (2) The power given to Congress under the IP clause is limited by the words “the exclusive right” such that, if Congress uses that power to create a patent system, the owner of a valid and infringed patent must be entitled to exclude others rather then being forced to accept damages or some other remedy.

    (3) If Congress creates a patent system that doesn’t fully recognize “the exclusive right” of inventors, then Congress is acting outside of its authority under the IP clause of the Constitution.

    (4) If Congress is acting outside of its authority under the IP clause of the Constitution, the question is whether its acts are permitted by some other grant of authority found in the Constitution.

    (5) The Commerce Clause provides all of the authority Congress needs to create the current patent system, complete with something less for patentees than a full right to exclude others.

    (6) If (5) is correct, then it follows that there’s no problem with eBay.

    I haven’t picked up Eldred v. Ashcroft in a while, so I don’t know if the government argued that de facto perpetual copyrights were doable under the Commerce Clause, but I wonder if it would have worked.

    The only problem I see with the argument is that it makes the IP clause more or less fully redundant with the Commerce Clause, and the Supreme Court is reluctant to read the Constitution that way. On the other hand, under the Supreme Court’s caselaw, the grant of power under the Commerce Clause seems limitless.

    You might argue that the IP clause says that the *only* way Congress can “promote the progress” of science and the useful arts is through copyrights and patents with full exclusivity rights, but if that’s right, then the NIH, the NEA, and a lot of other government-funded R&D is unconstitutional.

  24. 118

    “I trust my post 5PM exuberance yesterday didn’t offend anyone.”

    It did not make me think less of you.

    “Anyone with a solid rebuttal please speak now or forever accept that, notwithstanding the Supreme Court…”

    Just because you do not accept the counter arguments does not mean they are not solid rebuttals. Further, the Constitution means what SCOTUS says it means.

  25. 117

    Good Morning again Patently-O Fans,

    As a young man I repaired apparatus that had a QWERTY typewriter input.
    After repairing the failure-prone keyboard, I typed the typing exercise sentence,

    “Now is the time for all good men to come to the aid of their country.”

    This brings to mind the following suggestion.

    Now is the time for all good
    law professors,
    patent professionals,
    inventors and other
    patriots to come to the aid of their country.

    HELP STAMP OUT PATENT REFORM.

    REMEMBER, ONLY YOU CAN PREVENT PATENT REFORM BILLSHIT!

    Please take to heart to the Patent Reform Warning in the article by Kevin E. Noonan, Esq., a partner in Professor Crouch’s law firm, titled,

    “BUSH ADMINISTRATION CONTINUES ATTEMPT TO DESTROY U.S. PATENT SYSTEM”

    In closing, Mr. Noonan said:
    “Passage [ of the Senate Patent Reform bill (S. 1145) ] would not represent compromise but rather capitulation, to those WHOSE INTENTION IS TO GUT RATHER THAN BOLSTER THE U.S. PATENT SYSTEM. It is still time for us to remain vigilant.” (insert and emphasis added)

    This link contains one concise, compelling comment that ties the knot that binds all us serious IP people (excluding, of course, present PTO management) together:
    link to patentlyo.com

    This link
    link to patentlyo.com
    contains another link to Kevin Noonan’s Patent Reform Warning in his article titled,

    “BUSH ADMINISTRATION CONTINUES ATTEMPT TO DESTROY U.S. PATENT SYSTEM”

    as well as my comment about what I, Jaoi, find so off-putting and remarkable about the “Coalition for Patent Fairness” i.e., that critical portions of President Bush’s anti-patent legislation, which Mr. Noonan describes as Bush’s “Attempt to Destroy U.S. Patent System,” run directly parallel to the very same Patent Reform positions advocated by the Machiavellian “Coalition for Patent Fairness” whose members have fraudulently Lobbied Congress for the Patent Reform Billshit that would destroy our patent system. You Just can’t make up this kind of nefarious tale.

    再 見
    只 是 一 個 普 通 的 發 明(技 術 備 忘 錄)(o^õ)

  26. 116

    LAST CALL

    This is the last Patently-O call for SOLID REBUTTAL to counter the assertion that the Supreme Court eBay opinion stands in violation of Article I, §8, Clause 8 of the United States Constitution.

    Anyone with a solid rebuttal please speak now or forever accept that, notwithstanding the Supreme Court eBay opinion, and subject to the specified exceptions provided in The Constitution, every valid U.S. patent owner enjoys
    “the exclusive Right” to exclude others from making, using, offering for sale, or selling the patent owner’s invention throughout the United States…

    Thus, QED, a patent owner enjoys “the exclusive Right” to stop all others from making, using, offering for sale, or selling the invention throughout the United States … without his, her or its permission.

    As precisely summed up by “anonymous” way up tread:

    “Article I, § 8 gives Congress the power to promote the progress “by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.” (emphasis added)

    Thus, although Congress can tinker with the criteria for patentability, the term of a patent, maintenance fees, etc., it cannot water down “the exclusive right” of patentees to their inventions.”

    “anonymous”: Thank you again for your helpful and inspiring comments.
    It’s not that easy being an ordinary inventor, like being green like the frog Hermit—we get little or no respect.

  27. 115

    I trust my post 5PM exuberance yesterday didn’t offend anyone.
    If it did, please accept my apology. Also, try to develop thicker skin and greater tolerance and appreciation for passionate, jingoistic inventors.

    You’ll want to thank me later.

  28. 114

    Good evening stepback,

    Re:
    The Constitution “… of itself does not create a legal ‘right’ for inventors.”

    True, but there is a “Conditional” Right: IF Congress takes the Constitution’s gambit and enacts the “Patent Clause” into legislation, the Founders threw in a kicker, i.e., the Inventor secures for a limited Time “the exclusive Right” to his/her Discovery.

    Here is my kind of simplistic but compelling view of the Patent Clause:

    Logically, how the heck is a patent gonna’ work if it does not convey “the exclusive Right” to the Inventor?

    Without granting “the exclusive Right” to an inventor for his discovery, all the Patent Clause is is “Compulsory Licensing,” and that in no way no way is what the Framers had in mind when they enacted the Constitution’s Patent Clause — it is beyond foolishness to interpret the Patent Clause as a “Compulsory Licensing” deal.

    And a “Compulsory Licensing” deal, my friends, is Cisco Systems’ agenda, the same horseshit agenda of the “Coalition for Patent Fairness,” the agenda which parallel’s Congress’s Patent Reform BillShit.

    Boy, this goes on and on and gets better and better. You gotta love Congressional “BillShit.”

  29. 113

    Jaoi,

    While you probably mean well, I respectfully suggest that you are barking up the wrong tree by arguing the US Constitution. Article 1, section 8 clause 8 is an empowerment clause. It empowers Congress to pass certain legislation. It of itself does not create a legal “right” for inventors. It is directed only at Congress; what Congress can and cannot do.

    The question I’ve been raising (and I don’t know the answer) is whether there is a remedy at law separate and apart from an in-personam equitable injunction for preserving the inventor’s exclusive right in the res itself. (Sorry for the lawyer talk. They didn’t teach us in law school how to talk in human. :-) )

  30. 112

    This is perhaps a place where a professor in remedies law can chime in.

    As for myself, it has been many eons since I last took a remedies course and all those maxims of equity have thermally diffused out of my brain.

    For purpose of background, here is a link to one law school remedies outline:
    link to stu.findlaw.com

    And then again, there is always the every authoritative (cough cough) wikipedia:
    link to en.wikipedia.org

    That said, I think most of us can agree that an equitable injunction is in personam. Money damages are also in personam because the sued party is the one ordered to pay the money.

    So let’s say Big Bad Wolf Company sells infringing widgets X in the USA. Inventor, Goud Gracious sues BBW and wins money damages for the bad acts done by BBW. However, that does not compensate Goud Gracious for continuing bad acts by users of widget X. It does not of itself preserve Gracious’s “exclusive right”. So perhaps a court might be asked to issue an in res order prohibiting use of widgets X by current users until they receive permission to use from the inventor? Just a thought. :-)

    One of the maxims of law is that for every right there is a remedy at law (even if it is an inadequate remedy).

  31. 111

    (I “past posted” on a an older thread ’cause I was retrieving John Wayne’s quote – Ooops.)

    Dear big hr,

    Thank you for your comment, but I am constrained to disagree.

    Re:
    “When the Constitution says that the patentee will have the exclusive right it may mean nothing more than that the patentee has the right to sue in law for damages.”

    With all due respect, that kind of leap of faith is commonly saved for religious beliefs.

    For the reason described in the Endnote on this link:
    link to patentlyo.com
    the normal, natural, neutral reasonable interpretation of “the exclusive Right” may be Just that, “the exclusive Right,” i.e., the Right to exclude all but “one,” the patent holder, just as it says on the ribbon cover of my patents since 1968:
    “Therefore, this United States Patent
    Grants to the person(s) having title to this patent THE RIGHT TO EXCLUDE OTHERS FROM MAKING, USING, OFFERING FOR SALE, or selling the invention throughout the United States of America …” (emphasis added)

    Here’s the thing: The Constitution is THE Law of the Land—the Constitution is not common law; rather, it is THE SUPREME LAW. The Patent Clause’s “exclusive Right” is THE SUPREME LAW of the LAND, the supreme LAW that supersedes ALL Congressional and ALL States’ laws and statutes.

    The Patent Clause is not common law; the Patent Clause trumps ALL other laws including Congress’s 35 USC 283 and even the Supremes’ eBay opinion which is Constitutionally DEFECTIVE.

    Boston Legal’s Alan Shore’s stunning lambasting hit the proverbial nail on the head when he said to the nine Justices, “You folks aren’t as hot as all get out.”

    The Supremes screwed up, they made a serious Constitutional mistake when they took away with their eBay ruling the self-employed independent inventor’s bullets from the patents that have historically been granted to inventors throughout our American patent history.

    A patent without “the exclusive Right” to stop infringement is like a revolver without bullets— as Rooster Cogburn, played by that great American hero, JOHN WAYNE, said in “True Grit” to Mattie Ross of Dardanelle in Yell County (who drew her noble lawyer, J Noble Daggett, like a gun):

    “Well, a gun that’s unloaded and cocked ain’t good for nothin’ ”.

    While YESTERDAY’S FOUNDERS KNEW HOW A PATENT MUST WORK, today’s Supremes are plagued with gobbledygook and don’t comprehend the most fundamental patent precepts of LAW (and it remains to be seen if they understand the fundamental Second Amendment).

    I truly appreciate your courtesies nonetheless and offer my sincere appreciation for your candor. Wouldn’t it be great for Professor Crouch to throw a Patently-O Bash in DC and invite all his loyal readers to March on Congress to stop the Patent Reform billshit.

  32. 110

    “With great respect to the passion and industry that some of the posters are exhibiting, it appears to me that much of the commentary in this thread misunderstands the limits on common law remedies and the nature and historical origins of injunctions.”

    If you have anything useful to say to clear up the misunderstanding, go ahead.

  33. 109

    Step back said

    “An injunction is a remedy in “equity”. However, the exclusive right of a patentee is a right created in law and is thus a remedy in law rather than in equity. Accordingly, the judge should not be able to exercise his equitable discretion when dealing with a remedy in law. If there is infringement, then the remedy at law is automatically invoked by law. Interesting point. Thanks.”

    You are confusing rights and remedies. The common law remedy for a breach of a right, even a right of ownership of land, was damages. The Court of Chancery could, on a discretionary basis, give additional equitable remedies such as an injunction. When the Constitution says that the patentee will have the exclusive right it may mean nothing more than that the patentee has the right to sue in law for damages.

    With great respect to the passion and industry that some of the posters are exhibiting, it appears to me that much of the commentary in this thread misunderstands the limits on common law remedies and the nature and historical origins of injunctions.

  34. 108

    Dear Leo,

    On this key point I’ll go with what “anonymous” summarized yesterday:

    “Article I, § 8 gives Congress the power to promote the progress ‘by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.’ (emphasis added) Thus, although Congress can tinker with the criteria for patentability, the term of a patent, maintenance fees, etc., it cannot water down ‘the exclusive right’ of patentees to their inventions.”

    And this would bind a Judge to uphold the patent holder’s “exclusive Right” by excluding all but “one,” the patent holder, just as it says on the ribbon cover of my patents since 1968:
    “Therefore, this United States Patent
    Grants to the person(s) having title to this patent THE RIGHT TO EXCLUDE OTHERS FROM MAKING, USING, OFFERING FOR SALE, or selling the invention throughout the United States of America …” (emphasis added)

    But hey, great minds can differ. Oops, it Just hit that magic hour – please join me wherever you are…

  35. 107

    “It has been my understanding that where there is a law, a Judge is bound thereby.”
    That’s correct. In the case of the patent law, the Judge is bound to allow an injured patentee access to a legal remedy – money damages.

    “the only reasonable interpretation of ‘the exclusive Right’ means ‘the exclusive Right.'”
    As a tautology, that’s obviously correct. The Constitution says that Congress may provide inventors with a legal right to exclude. However, that’s just about all that the Constitution says on this matter.

    “Leo, would you agree with me here that that is somewhat speculative?”
    Of course, as is any discussion on previously-unrecognized Constitutional rights. Hopefully, my speculation is based on a little bit of knowledge and training.

    “I will happily stand corrected as rebuttal may merit.”
    Meaning no disrespect, I doubt it. But that’s OK. I’m just telling you what I would tell a client; I have no axe to grind here. My clients don’t always listen to me either.

  36. 106

    Dear Leo,

    Re:
    “…the fundamental concept of ‘equity’ is the power of the court to go beyond the legal remedy to do what it thinks is just.

    It has been my understanding that where there is a law, a Judge is bound thereby. The Constitution is, of course, Law, and the Supreme Law at that. Its Patent Clause says without ambiguity that “… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.” (emphasis added) I understand that to be LAW, and, until it is formally amended, it trumps all other law including 35 USC 283.

    Re:
    “The Constitution was written in the context of a very strong tradition of law and equity.”

    I can neither agree nor disagree so I am happy to accept that.

    Re:
    “There is no real reason to believe that the Framers ever considered ‘exclusive right’ to imply that the rightsholder had an automatic right to what has always been considered an equitable remedy.”

    With all due respect, here I cannot agree: The Constitution set down the Laws of the Land. On this I cannot see any reason to think otherwise. For the reason described in my first comment a good time ago (linked-to and excerpted in the Endnote) the only reasonable interpretation of “the exclusive Right” means “the exclusive Right.” Despite what may or may not have “always been considered an equitable remedy,” “the exclusive Right” is the Law. There has been no amendment to this Constitutional Law.

    Re:
    “It’s much more likely that they would expect exactly what the statute (and the Supreme Court) says. That is that normally a patentee may be compensated for infringement by money damages. In some cases, that may not be enough, in which case an injunction may be appropriate.”

    Leo, would you agree with me here that that is somewhat speculative? Also, since the beginning of American patent time right on up to eBay, in 99.9% of patent cases, “the exclusive Right” of the patent holder has been upheld. That not only is the Constitution’s Patent Clause Law, that has been American Patent tradition.

    Congress made the original mistake by enacting 283 because it violates the Patent Clause, the Supreme Law of the Land, at least it ought to be. And the Supremes eBay opinion compounded that patent mistake.

    If I am mistaken and sound brash, please take no offense—I certainly mean none, and I will happily stand corrected as rebuttal may merit.

    * * * * *
    Endnote
    Below is an excerpt form this link:
    link to patentlyo.com

    Most of the 18 Clauses of Article I, Section 8 of the Constitution allow Congress discretion to set the limits for the Powers given to it. For example, the limits of the following Powers granted to Congress are left to Congress’s discretion: taxes; duties; pay debts; borrow money; regulate commerce; rules for naturalization and bankruptcies; coin money; punishments; rules governing military bodies; and to make laws as necessary to fulfill its “Powers, and all other Powers vested by this Constitution in the Government of the United States, or in any Department thereof.” (Clause 18).

    However, three Clauses of Article I, Section 8 of the Constitution contain SPECIFIC, ENUMERATED LIMITS. The limits in these three Clauses have never been amended.

    The limit in Clause 17 is: “100”:
    The limit in Clause 12 is: “two”;
    The limit in Clause 8 is: “one”;

    It has never even been suggested that the Framers of the Constitution meant for these three specific limits to be interpreted in any way other than plainly, naturally, by the numbers; and so, historically, until the eBay ruling, they have been interpreted literally.

    Clause 17: “The Congress shall have Power …
    “To exercise exclusive Legislation in all Cases whatsoever, over such District (not exceeding ten Miles square) as may, by Cession of particular States, and the Acceptance of Congress, become the Seat of the Government of the United States, …”
    Washington, D.C. is 68 sq. miles; “ten Miles square” = 10 x 10 = 100 sq. miles.

    Clause 12: “The Congress shall have Power …
    “To raise and support Armies, but no Appropriation of Money to that Use shall be for a longer Term than two Years;”
    Congress’s military appropriations (which may include appropriations to pay for patent royalties, discussed below) have never exceeded two years.

    Clause 8: “The Congress shall have Power …
    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”
    The “exclusive Right” means the Right to exclude all but “one,” the inventor (please see a patent’s cover).
    Congress, by permissible statute, i.e., 35 USC 261, gave inventors the further right to formally assign their patents.

  37. 105

    Jaoi(tm),
    stepback appears to be correct that remedies is not his strong suit. I’m no expert either. However, a couple things:

    Yes, an injunction is generally an “equitable remedy.” But that’s mostly a historical matter. Keep in mind that you’re already “enjoined” in the broad sense from infringing a patent. The statute says that you may not do it. An injunction is simply a specific order from the court not to engage in a specific activity, in this context, not to infringe a particular patent. An injunction makes you subject to court-ordered sanctions, in addition to damages to the patentee.

    The general problem with your theory (which I don’t think is crazy, but I do think is wrong) is that the fundamental concept of “equity” is the power of the court to go beyond the legal remedy to do what it thinks is just. The conventional remedy available to a wronged party is a legal remedy – usually money damages to make him “whole.” The principles of equity allow a court to alter the legal remedy in the event that it appears that the legal remedy is too harsh, or if it appears that the legal remedy won’t adequately protect the wronged party.

    The Constitution was written in the context of a very strong tradition of law and equity. There is no real reason to believe that the Framers ever considered “exclusive right” to imply that the rightsholder had an automatic right to what has always been considered an equitable remedy. It’s much more likely that they would expect exactly what the statute (and the Supreme Court) says. That is that normally a patentee may be compensated for infringement by money damages. In some cases, that may not be enough, in which case an injunction may be appropriate.

    Where the Federal Circuit went wrong was in suggesting that an injunction MUST always ensue. That clearly contradicts the terms of 283 – judicial discretion consistent with the principles of equity is built into the statute (and not inconsistent with the legal backdrop against which the Constitution was written). Thus, the holding in eBay was (in my opinion) a foregone conclusion.

    The Supreme Court could ignore the Constitution in its written opinion because the Constitutional issue was never raised. In my view, for good reason – it’s pretty weak.

  38. 104

    Dear stepback,

    Picking up from my first comment a good while back, yesterday, “Patenly-O Fan” posted what I like to call the “original sin,” 35 USC 283, committed by Congress in regard to missing “the exclusive Right” boat. The Supremes based their in-conflict-with-the-Constitution eBay Opinion on 283. The Supremes never once mentioned the Constitution in their eBay opinion – most remarkably, it appears the Supremes did not consider the Constitution relevant (that would be funny if it weren’t so scary)!

    Patenly-O wrote:
    “The basis for the Supreme Court’s mistake is the PRESUMPTION found on page 3 of its Merc v eBay Opinion:

    ‘… Indeed, the Patent Act itself indicates that patents shall have the attributes of personal property ‘[s]ubject to the provisions of this title,’ 35 U. S. C. §261, including, PRESUMABLY, the provision that injunctive relief ‘may’ issue only ‘in accordance with the principles of equity,’ §283.’ (emphasis added)

    While 35 USC §261 is consistent with Patent Clause 8 of Article I, §8,
    35 USC §283 is not:
    ‘The several courts … may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.’ ”

    §283 would cede DISCRETION to courts to diminish the Power the Constitution gave Congress. In view of the Supremacy Clause, Article VI, such judicial DISCRETION would require a formal amendment in accord with Article V. No such amendment to the Patent Clause has been made.”

    Do you think this cuts to the heart of the matter?

  39. 103

    Hi again JAOI,

    After hitting “submit”, I had an oh oh moment given that “remedies” is not exactly my strong suite.

    So back to the statutes (35USC):

    § 281. Remedy for infringement of patent: A patentee shall have remedy by civil action for infringement of his patent.

    § 283. Injunction: The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

    § 284. Damages: Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154 (d) of this title.
    The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.

    As seen in §283, this type of injunction is based on equitable principles and is permissive in nature (the court “may” …).

    As seen in §281, the remedy by civil action is not limited to monetary damages.

    As seen in §284, the monetary remedy for past infringement is at minimum equal to reasonable royalties. (One cannot enjoin past activities, only future ones.)

    Accordingly (and again, “remedies” is not my strong suite), it seems that an eviction order (whether in rem or in res) is not precluded by the patent statutes.

    P.S. A remedy at law does not eviscerate the Supreme Court’s eBay decision because the latter was directed only to equitable injunctions.

  40. 102

    Hi Leo,

    If an injunction is a remedy in “equity,”
    and the Constitution and 35 USC 154 comprise the law
    regarding the remedy for infringement of a valid patent,
    i.e., “the exclusive Right” and the “right to exclude,” respectively,
    would an “injunction” be the right remedy for a Judge to impose to
    exclude an infringer from “making, using, offering for sale, or selling”
    the claimed and infringed invention?

    Can an injunction stem from either “equity” or “law” or both?

  41. 101

    Jaoi(tm),

    If you simply substitute the synonymous term “hereby enjoined from” for your “hereby commanded / ordered to stop,” then you’ll see that you’ve just defined an injunction.

  42. 100

    It will operate more in the pleadings stage.
    Patentees will still ask for equitable remedies (including equitable injunction), but they will also ask for an eviction order under law as an additional remedy.

  43. 99

    Dear step back,

    Thank you. I am more than happy to share my thunder – I appreciate all the help I can get.

    I now begin to understand why my suggestion above about “Cease and Desist” orders are not the answer either. Perhaps the answer lies in invoking this statute:

    “35 U.S.C. 154 Contents and term of patent; provisional rights.
    (a) IN GENERAL.-(1) CONTENTS.-Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States …”

    In practice then, would it work something like this?:
    Upon a finding of infringement of a valid patent, a District Judge might say to the infringer, “In accord with patent law 35 USC 154 which you are in violation of, you are hereby commanded / ordered to stop making, using, offering for sale, or selling the patentee’s invention as claimed in the patent-in-suit. If you continue your infringement hereafter, you will be in Contempt of Court and subject to fine or jail or both.”

    Would I be going to far to suggest that, ever since 35 U.S.C. 154 or its predecessor if it was sufficiently similar, became law, infringement should not have been deal with by an injunction but rather as described above or some such fashion?

    If the suppositions here pan out, perhaps you could email Chief Justice Roberts Jr. and ask him to recall and reissue a Constitutionally lawful eBay Opinion (I’m prone to rant and rave like Boston Legal’s Alan Shore, Esq.õ¿Q).

    Seriously, I really appreciate your help, Thank You. Drinks and dinner are on me anytime.

  44. 98

    JAOI,

    You make an interesting point.
    Of course, in not being a lawyer, you don’t know how to phrase it with the magic words that will get some lawyers thinking about it more deeply. So please allow me to supply the magic words without stealing from your thunder because it is you who came up with the basic idea.

    An injunction is a remedy in “equity”. However, the exclusive right of a patentee is a right created in law and is thus a remedy in law rather than in equity. Accordingly, the judge should not be able to exercise his equitable discretion when dealing with a remedy in law. If there is infringement, then the remedy at law is automatically invoked by law. Interesting point. Thanks.

  45. 97

    Re:
    A patent without a “Cease & Desist” order is like a revolver without bullets.

    Dear Mr. Dhuey et al.,

    Thank you all for a most interesting Constitutional conversation yesterday which started with my question:
    Can you reconcile the Supreme Court “eBay” Opinion with the United States Constitution given the substance of this comment I posted a good while back?
    link to patentlyo.com

    As you who read the “comment I posted a good while back” on the link (directly above) may have noticed, analyzing the “eBay-is-unlawful-under-the-Constitution” argument is tedious. That does not undercut its merit. My comment was the Second of a two-part comment* addressed to “Brian” (however, not The Brian Mark Buroker, Esq. representing MercExchange)

    Why neither Brian Mark Buroker, Esq. nor Seth Paul Waxman, Esq. made my argument might be explained by the first paragraph in the link above as follows:

    “Dear Brian,
    From what I know, MercExchange is entitled to an Injunction notwithstanding the USSC’s eBay Decision. Merc’s stronger argument is supported in well founded case law precedent and need not follow the conceptual Constitutional issues I, just an ordinary inventor (I’m sure readers realize that I say that proudly) discuss below.”

    Beyond that explanation, I would suggest that many great lawyers throughout history have missed many great arguments, especially in the light of cool Monday morning hindsight and considering the heat of litigation battle.

    Yesterday “anonymous” correctly pointed out that there was “…230 years of practice where injunctions are not automatic” to which I replied, “I would be surprised if there were more than 2 or 3 cases in all those 230 years wherein “the exclusive Right” of a valid patent was not upheld and the infringement stopped by the Court.”

    Is it not a fact that there have been far more denied injunctions post eBay than in all the patent years that preceded eBay?

    Yesterday I wrote:
    If I’m not mistaken, the confusion behind the Supremes’ eBay mistake arises from the misuse of the term INJUNCTION. An injunction is not equal to THE EXCLUSIVE RIGHT— these two terms do not have the identical meaning. The Framers never once used the term INJUNCTION, nor have I found any term directly akin thereto in the Constitution and its amendments. Be that as it may, the Framers specified “the exclusive Right” for an Inventor’s Discovery, not an “injunction”.

    Is it naive of me to suggest that the confusion surrounding “the exclusive Right” and an “injunction” could have been avoided if, back at the beginning, Judges issued “Cease and Desist” orders to stop infringement and reserved injunctions for other matters?, thus creating at least one clear distinction between a patent’s C & D and an injunction— please note that, Just as with the term “injunction,” I could not find “cease” or “desist” in the Constitution. Or is this “C & D” suggestion merely a semantic “lawyer’s argument” of the type I railed against again only yesterday?

    Be that as it may, another comment I made yesterday described constitutionally limited exceptions to granting an inventor “the exclusive Right” to his Discovery:
    link to patentlyo.com
    I think most of yesterday’s commenters are basically in the same ballpark on this score.

    Yesterday “anonymous” also made these two comment:

    (1) “Article I, § 8 gives Congress the power to promote the progress ‘by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.’ (emphasis added) Thus, although Congress can tinker with the criteria for patentability, the term of a patent, maintenance fees, etc., it cannot water down ‘the exclusive right’ of patentees to their inventions.”
    &
    (2) “Alan, the ‘greater power includes the lesser’ argument doesn’t always work. Congress doesn’t have to create the patent system–it only has ‘the power’ to–but once it does, JAOI has a decent argument that the holder of a valid and infringed patent holder must be allowed to exclude others [ with Constitutionally authorized exceptions as noted ]. I don’t have the time to dig into this and do the research, but the argument is at least facially plausible and I HAVEN’T HEARD A SOLID REBUTTAL YET.” (insert and emphasis added)

    To (1) I commented that this “precisely summarizes my argument. Thank you.”
    To (2) I would be most interested to HEAR ANY AND ALL SOLID REBUTTALS.

    (If there were SOLID REBUTTALS yesterday that I missed, please forgive and point me to them.
    —————————-

    * This link goes to my First comment a good while back to “Brian” titled “Part I, my background”; it also discussed what I thought of the blunder of KSR (KSR is a blank check for Judges to write “result-oriented patent decisions”:
    link to patentlyo.com

    * * * * *
    Today or tomorrow I’d like to get back to my campaign against the “Coalition for Patent Fairness” and their fraudulent Lobbying tactics such as those perpetrated by Cisco Systems, and to my promised Part IV of my miniseries. Such fraudulent Lobbying shenanigans have contributed-in-part to huge financial loses for me and mine.

  46. 96

    “You must have gone bat sht ins ane. I said it wasn’t my job to do it, not that I could not do it. I don’t appreciate being forced into doing it, I do it on my own if I feel like it for the case at hand.”

    Funny, I said “I recall you being adamant that it isn’t your job to tell applicants what possible claim amendments could be made,” and you agree by saying “I said it wasn’t my job to do it.” These appear to be identical???? So What is your problem???? BTW: The MPEP is littered with statements that the Examiner SHOULD suggest amendments regarding allowable subject matter. You really need to work on your reading comprehension skills. Suggestion, try reading the MPEP.

    “Maybe up to a 50000$ fine and 10 years in jail would do the trick?”

    Your suggested punishment illustrates just how irrational you are. BTW: What should the fine be examiners that shirk their responsibilities and reject applications based upon bogus prior art?

    You guys should be forced to obtain malpractice insurance … hey, maybe that is a good reason to privatize the USPTO … to get rid of government immunity from lawsuits. When you start writing checks for malpractice insurance and realize that the smallest mistake could cost you your career and possibly your life savings after a couple million dollar judgment, you’ll realize that a vast majority of patent attorneys would much rather have killer prior art submitted than to risk the consequences of trying to bury the prior art. If you are ever fortunate to join our ranks, you’ll realize that only i diots would risk trading their careers over a single patent application.

    “Heck, I’d settle for abandonment of the application as a reasonable remedy for the situation.”
    Not too current on the law regarding inequitable conduct, are you???

    “And I agree, but being better suited doesn’t mean sht if his resource of time isn’t 1/1000th that of the applicant. That’s a rather key resource don’t you think? Especially in searching.”
    Next time, try writing these sentences in something that resembles clear English.

    “Hardly. The recent boom of the overclaiming is due to law schools training attorneys a certain way and that same way being reinforced in practice.”
    You think law schools actually teach claim writing???? Wow … you are really out of the loop. There are probably a handful of law schools in the country that spend any real time on claim writing, and if I ever got somebody who took one of those courses in my firm, I would immediately to him/her to forget everything he/she learned about drafting claims. BTW: underclaiming can lead to claims for malpractice, whereas your “overclaiming” at worse, leads to an amendment to the claim.

    “Keep on repeating that “examiner did a poor search” to yourself at night to make you feel better”
    I cannot help it if that is your job. You are the fact-finder. If you are not finding the facts, then what is your purpose? Being a leach on the system? If I want legal conclusions, I’ll go to the BPAI. You are there to be the fact finder and to bungle your way through the law as best you can.

    “They could give a crp less about whether it’s an invention”
    Your problem is that you don’t understand the word “invention.” If they come up with it on their own, they’ve invented it. There is a difference between “an invention” and “a patentable invention.” You, for example, invent stuff all the time … like your cockamamie ideas as to patent law. Applicants disclose what they’ve invented … it is up to the attorneys and the USPTO to wrangle over what is patentable about that invention. Sometimes, all of it is patentable; others some of it; and still others, none of it. However, even if none of it is patentable, it still doesn’t mean that applicants didn’t invent what they disclosed, they just happened to be the 2nd, 3rd … nth person to invent it.

    “Yet one more reason why dealing with the applicant rather than their attorney is known to be the quickest way to issue.”
    And the surest way to get lousy claims that don’t prevent anybody from practicing the invention since the inventor and examiner are rarely capable of seeing the big picture unless they’ve been trained to do so. Just as any i diot can write a picture claim, any i diot can design around a picture claim.

    “the congress may want to attempt something else that may work.”
    I’ll make a few suggestions: (i) hire some competent examiners; (ii) actually give the examiner training instead of a mantra to reject, reject, reject; and (iii) give the examiner some time to do the job right the first time.

    It seems to me that you’ve realized that trying to improve the examining corps is a waste of time. Perhaps you are correct in that evaluation. However, I think that most examiners, including yourself, can be redeemed given some decent guidance/resources/training.

  47. 95

    JAOI, I wholeheartedly support your broad thinking on this issue. For the past 13 years, I’ve represented individual inventors and no accused infringers. Believe me, I’d like to support your position.

    Seth Wexman was dealing with the Patent Clause in eBay, but he chose not to make your argument (or, far less likely, he missed it). That’s a really bad sign. I can’t get behind your argument, and that’s an even worse sign, as I’m very biased toward inventors.

  48. 94

    “If they claims get busted at trial, it means that the examiner did a poor search.”

    Haha, say it again for laughs ok? The amount of art examiners do not have convienent (or anywhere near convienent) access to is nearly infinite in this day and age. Without a convienent access to the info the examiner will not find it in 20 hours or less. Keep on repeating that “examiner did a poor search” to yourself at night to make you feel better for being an arse. You try to view the system as if it produces anywhere near perfect products, when in reality you know that the situation is nowhere near that, and wouldn’t be even if the best examiner that ever lived was on each case. Even so, your implied point here is that the office should have done a better job. Tell me, when do you judge a search to be complete? Iirc that’s one of the things that you’re qqing about re the AQS because it is impossible to tell. Maybe when you come up with the perfect answer to that you’ll let us here at the office know and we’ll be doing a 1000x better job since you were able to give us guidance.

    “If the Examiner couldn’t find the prior art with all the prior art databases at their command, why do you think applicant will find the prior art?”

    He could crack open all the books that he used as reference (or the one’s he learned his art from) while he was “inventloling” and that might be a start.

    “Far better that than to miss or mischaracterize a reference and then be latter on accused of inequitable conduct. BTW: Once the invention has been “invented,” most inventors don’t care about seeing more art, they just want to move on to the next project.”

    Don’t say stup id things, don’t say false things. Simple amirite? And yes, you’re right, they just want to move on to the next project, and that’s part of the problem. They could give a crp less about whether it’s an invention and they’ll get rights to it because the megacorp that is the assignee gets all the rights. Assigning patents, while partially the saving grace of the system is also part of the worst problem with it. The inventors no longer even hardly care about their inventions because they aren’t seeing the $$$ from it. The only people that care are the ones that get the rights and the attorney. Yet one more reason why dealing with the applicant rather than their attorney is known to be the quickest way to issue.

    “Yet again, if a patent is blatantly obvious, it means it was issued with the USPTO’s blessing, and thus, the blame should be placed on the USPTO for failing to find prior art. Remember THAT’S YOUR JOB …. TO FIND PRIOR ART … if you cannot do it, don’t blame applicants.”

    ^ This is what your argument boils down to. “It’s the examiners job”. Simple, let’s keep it that way for the rest of the convo ok? My position is also simple, we already know that it’s the examiners job, we also know that if that portion of the process can’t be, or is not being fixed, which presumably it is not or cannot be (especially since according to you guys examiners are ESL class takers that come from a different art than what they’re examining, and even if they do know their art then their expertise isn’t worth sht) the congress may want to attempt something else that may work.

    This grand democracy of ours is all one big experiment you know pds. Maybe it turns out nobody wants a patent when aqs’s are involved and congress changes its tune. Maybe it turns out that applicant’s claims get narrower from the get go, cases issue faster and less bad ones are even filed while good ones still flow in regularly, and people are still willing to pay for the costs associated with obtaining a patent. In the second situation I think it’s fair to say the congress may regard it as a win.

    Love how you just pop in to take a big crp in the middle of the discussion without saying anything further JD.

    ^ that was what this comment was going to say until I noticed that some hours later you pop back in to go ahead and give us another 2 sentences or so explaining yourself.

    Oh and JAOI yes they’re pretty much right about the reasons behind ebay being correct, funny how a literal reading of the law or article doesn’t work out for you the common man because of fancy interpretlolations eh? Just one more example of how the law is failing the common man because they do not figure in 1000’s of other things when reading it.

  49. 93

    “My point is that in the vast majority of the cases I see, the examiner is better positioned to be the better searcher given their training, experience in the particular field and resources.”

    And I agree, but being better suited doesn’t mean sht if his resource of time isn’t 1/1000th that of the applicant. That’s a rather key resource don’t you think? Especially in searching.

    “Overclaims are inherent in the system, which doesn’t require perfection in claiming the invention. However, overclaims that are allowed to issue are a result of a bad search by the USPTO/examiner.”

    Hardly. The recent boom of the overclaiming is due to law schools training attorneys a certain way and that same way being reinforced in practice. Finally, there are any number of reasons an overclaim can be issued, the examiner not understanding that it is an overclaim, the words having dual meanings in the claim thus having one meaning not be an overclaim and the other being one (with the attorney arguing that the overclaim version is not reasonable ivo the spec) etc. etc. with only one small part being a bad search. Which, noticably, the bad search would be what AQS would help to remedy amirite?

    “The backlog is a result, in part, of examiners being strong-armed to reject claims based upon bogus art.”

    I agree only somewhat, because the only evidence I have of this happening is anecdotal evidence only. Evidence which I have to say largly conflicts with my everyday experience.

  50. 92

    “Funny, I recall you being adamant that it isn’t your job to tell applicants what possible claim amendments could be made to obtain allowable matter. However, on this issue of your responsibility as fact finder, you now want to get all buddy-buddy with applicants after previously turning a cold shoulder to applicant.”

    You must have gone bat sht ins ane. I said it wasn’t my job to do it, not that I could not do it. I don’t appreciate being forced into doing it, I do it on my own if I feel like it for the case at hand. I also don’t like to be put on the spot by the attorney asking me to do it. Even so, that entire portion of your response is irrelevant since the topic at hand is searching not figuring out what should be a claim. Turning to that we see I’ve never turned away any proffered help searching by the applicant. However, hitherto that has been strictly restricted to IDS submissions, even though in some cases you can tell the attorney or someone did a search. Bottom line is, if you want to help find art I’ll welcome it. Especially if you don’t find ridiculous off the wall bs art and submit it en masse.

    “Applicants are already required to provide the USPTO with what they know about the prior art that is material to patentability per 37 CFR 1.56. ”

    I know, maybe we could start enforcing that and giving it some teeth. When it turns out the applicant himself has his name on a patent that issued three years prior to the filing date of the instant app and is nearly the exact same thing, or, reads on claims in the instant app. then maybe a small punishment is in order? Maybe up to a 50000$ fine and 10 years in jail would do the trick? I doubt Just an Ordinary Manufacturer appreciates people trying to shut down his line or extort money from him. Heck, I’d settle for abandonment of the application as a reasonable remedy for the situation.

  51. 91

    “Funny, I recall you being adamant that it isn’t your job to tell applicants what possible claim amendments could be made to obtain allowable matter. However, on this issue of your responsibility as fact finder, you now want to get all buddy-buddy with applicants after previously turning a cold shoulder to applicant.”

    You must have gone bat sht ins ane. I said it wasn’t my job to do it, not that I could not do it. I don’t appreciate being forced into doing it, I do it on my own if I feel like it for the case at hand. I also don’t like to be put on the spot by the attorney asking me to do it. Even so, that entire portion of your response is irrelevant since the topic at hand is searching not figuring out what should be a claim. Turning to that we see I’ve never turned away any proffered help searching by the applicant. However, hitherto that has been strictly restricted to IDS submissions, even though in some cases you can tell the attorney or someone did a search. Bottom line is, if you want to help find art I’ll welcome it. Especially if you don’t find ridiculous off the wall bs art and submit it en masse.

    “Applicants are already required to provide the USPTO with what they know about the prior art that is material to patentability per 37 CFR 1.56. ”

    I know, maybe we could start enforcing that and giving it some teeth. When it turns out the applicant himself has his name on a patent that issued three years prior to the filing date of the instant app and is nearly the exact same thing, or, reads on claims in the instant app. then maybe a small punishment is in order? Maybe up to a 50000$ fine and 10 years in jail would do the trick? I doubt Just an Ordinary Manufacturer appreciates people trying to shut down his line or extort money from him. Heck, I’d settle for abandonment of the application as a reasonable remedy for the situation.

  52. 90

    As I exit, thoroughly exhausted owing to excessive blogging, for today’s Happy Hour exercise to my dining room bar, may a reiterate one more time as I depart:

    Isn’t it apparent that the Coalition for Patent FAIRNESS has been LOBBYING Congress so LOUDLY as to be heard by the main stream Media, little tributary Media and by We the American People, as well as the PTO management team including its most impressionable dimwits, by Judges across the Land and in Washington’s use-to-be patent-friendly patent-savvy Federal Circuit Court of Appeals, and by our Honorable Supreme Court Justices who, as Boston Legal’s Alan Shore’s stunning lambasting thereof put it so well, “You folks aren’t as hot as all get out” (and that was in regard to a capital matter; patents are more obscure and far beyond the reach of the Supremes) to VIOLATE the Constitution mostly unwittingly, BUT WITTINGLY AS WELL for it seems our government’s three branches “don’t give adamn for our greenbackin’ dollar” (lyrics by the Kingston Trio) any more than they do for one of the most stunning achievements of our Founding Fathers, The United States Constitution— we went off the gold standard and now are mostly off the Constitutionally standard, but I suspect I am beginning to repetitively preach to the choir majority (this is one long sentence, like a claim)?

  53. 89

    Dear Mr. Andrew Dhuey et al.,

    Normal, Natural & Neutral:

    It was President Clinton who argued, “It depends on what the meaning of ‘is’ is,” and we have been gaining momentum sliding down that slippery semantics slope since.

    You professionals out there in Patently-O Land are a brilliant bunch, and I’m sure you can find excellent “lawyer’s arguments” pro and con any issue.

    It reminds me of the Gillespie v Dywidag oral argument in which Judge Byrson indicated to one of the attorneys that his position was a “lawyer’s argument” (about the Starbuck’s coffee cup — too contrived and would not pass muster at Home Depot).

    Thinking purely objectively, the eBay argument being advanced is based on a normal and natural interpretation of the language-of-the-day deployed in our Constitution, neither too strong nor too weak, neither pro nor con — it is purely neutral.

    Given the full context of The Constitution, the Framers use of the phrase “the exclusive Right” allows no wiggle room except as specifically provided therein or as may be provided by (formal) Amendment.

  54. 87

    Dear anonymous,

    Re:
    “On one hand we have a strong literal reading of the Constitution (which may or may not be supportable), and on the other is 230 years of practice where injunctions are not automatic…”

    With all due respect, I would be surprised if there were more than 2 or 3 cases in all those 230 years wherein “the exclusive Right” of a valid patent was not upheld and the infringement stopped by the Court.

  55. 86

    A patentee has the right to exclude others. If that right is infringed, the patentee has the right to a remedy, or relief. If the remedy at law (i.e. money damages) is adequate, then the patentee is not entitled to equitable relief (i.e. an injunction).

    Although law and equity have been merged (except in a couple states), the principles of equity still apply. The Constitution did not change that.

  56. 85

    Dear Alan McDonald, Andrew Dhuey, anonymous, BigGuy and big hr & Lionel Hutz (alphabetically):

    I trust my last comment above clarified and strengthened my argument.

    Given its comprehensive extent, The United States Constitution is an amazing document.

    * * * * *

    Dear Mr. Alan McDonald,

    Thank you for helping support my bigger point:
    America is no longer on the Constitutional standard.
    Our precious democracy is beginning legal freefall.

    No one I know, and I know a lot of non-patent attorneys too, thinks the Supreme Court’s Kelo v. New London opinion is consistent with the Constitution.

  57. 84

    Once again, I concur with Mr. McDonald re eminent domain. More fundamentally, though, I don’t read the Patent Clause as a limitation on Congress or the courts with respect to what is or what is not required with respect to injunctions. The only limitation on congressional power I see in that clause is that the exclusive right must be for “limited times” — an issue in Eldred v. United States (long extension of copyright duration held constitutional).

  58. 83

    “Rat – I disageee. E-Bay was about a permanent injunction after a finding of infringement, denied by the DC, reversed and granted by the CAFC and reversed again by the Supremes.”

    I went back and checked. You are right and I was wrong.

  59. 82

    JAOI – be careful what you wish for.

    If eminent domain trumps the patent clause, then under the Supreme Court’s recent decision allowing eminent domain to take real property for private purposes, the courts are free to not grant injunctions at all in patent cases, instead taking the patent property for the private (infringer’s) purposes upon paying an amount to reasonably compensate the patent owner.

  60. 81

    “Everyone seems to lose sight of the fact that eBay was not really about injunctions following a finding of validity – it was about injunctions pending trial.”

    Rat – I disageee. E-Bay was about a permanent injunction after a finding of infringement, denied by the DC, reversed and granted by the CAFC and reversed again by the Supremes.

  61. 80

    Gentlemen,

    Here is an excerpt from my argument that addresses exception to “the exclusive Right”:

    Further, within the Constitution itself, one finds authority for Congress to exercise its Power to moderate “the exclusive Right” under certain constitutionally certified circumstances:

    (A) To regulate Commerce,
    (B) provide for the common defense, and to
    (C) promote the general Welfare.

    Article I, §8, Clause 3: “The Congress shall have Power … To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes;”
    Thus, in its body of antitrust statutes, Congress imposes certain limits when exercising a patent’s “exclusive Rights” in order to regulate Commerce.

    The Preamble: “We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.”

    Eminent domain power, when exercised over a patent’s “exclusive Rights,” for national security and defense, is absolutely consistent with the Preamble, i.e., to “provide for the common defence.” Thus, military appropriations bills in peacetime and wartime routinely include allocations for patent royalties.

    If an independent inventor discovered and patented a vaccine for Anthrax, but refused to license or manufacture it for his anti-American religious reasons, eminent domain could absolutely and reasonably be asserted to “promote the general Welfare.”

  62. 79

    “If JAOI made that concession, then I agree that that’s irreconcilable with the argument that eBay is inconsistent with the Patent Clause.”

    Does that mean that JAOI(tm) is now estopped from ever raising this argument again?

  63. 77

    Perhaps I missed it in the flurry of posts, but I didn’t see the concession that there can be permissible denials of injunctions after a finding of infringement. If JAOI made that concession, then I agree that that’s irreconcilable with the argument that eBay is inconsistent with the Patent Clause.

  64. 76

    JAOI, I’m sorry but even after reading your posts above (and the link) I just don’t understand your position. Like Mr. McDonald, I cannot reconcile your concession that there can be permissible denials of injunctions after a finding of infringement, and your position that eBay is inconsistent with the Patent Clause.

  65. 75

    “As memory serves, I didn’t make that argument. If I did I misspoke.”

    eBay was about injunctions. You say that based on the Constitution, eBay is wrong. QED.

    (Everyone seems to lose sight of the fact that eBay was not really about injunctions following a finding of validity – it was about injunctions pending trial.)

  66. 74

    “Equitable considerations trump the law sometimes.”

    I agree. So where is the line? Isn’t that what E-Bay was all about?

  67. 73

    Oops. JAOI should ignore my reference to him as he has already confirmed my suspicion.

  68. 72

    Alan,

    The Supreme Court would reverse. I would suspect that even JAOI would allow for public policy exceptions to a right to exclude. If the court determines that the public welfare is at risk, they would not uphold an injunction.

    Equitable considerations trump the law sometimes.

  69. 71

    Dear big hr,

    Re:
    “If ‘Exclusive Right’ is not equivalent to ‘Injunction’ then how can you argue that the constitution requires the granting of injunctions.”

    As memory serves, I didn’t make that argument. If I did I misspoke.

    This is my argument: If a patent is found valid and infringed, the owner has “the exclusive Right” thereto, meaning the Right to exclude all others from infringing, except as referred to in my last comment above.

  70. 70

    Alan, *if* EBay was decided the way JAOI argues, the Supreme Court would affirm. More likely, it would deny cert.

    Also, a few other things would probably happen:
    (1) the government could pay you for your cure for cancer and take your patent through eminent domain.
    (2) if the drug would cure cancer with one dose, some companies would probably make it, distribute it and pay the consequences later in the form of contempt or damages

    (3) also, civil disobedience aside, in 20 years the world would have the cure for cancer, unburdened by patent rights and available at something close to marginal cost.

  71. 69

    “I also concede that there are cases where the public interest is strong enough to overcome the presumption that a permanent injunction should issue after a District Court’s finding that a patent is valid and infringed”

    JAOI – As soon as you concede this point you put the case right back where we are today, when is it in the public’s best interest that an injunction not be granted. It’s no longer a Constitutional Right. All you are able to argue now is where that line should be drawn. You can’t have it both ways.

  72. 68

    Without taking sides on any particular issue, I will say the following:

    A stronger patent system does not necessarily equal greater patent holder rights

  73. 67

    Mr. Dhuey, even if the argument is “correct” as a formal matter, it probably wouldn’t have persuaded more than 1 Justice. On one hand we have a strong literal reading of the Constitution (which may or may not be supportable), and on the other is 230 years of practice where injunctions are not automatic, as well as a tradition in the courts that equitable remedies are a matter of some judicial discretion. My money would be against the strong literal reading of the Constitution.

  74. 66

    Let’s take this to the extreme.

    Assume that the Supreme Court decided E-Bay the way JAOI says it should have.

    I obtain a patent on a drug proven to cure all forms of cancer with one dose.

    However, I am the meanest person in the world and not only do I refuse to practice the invention myself (now I’m a NPE), I refuse to license anyone under the patent because I like seeing people suffer and die (so I’m not a troll).

    Giant Pharma Co. wilfully infringes the patent and I sue, seeing an injunction to make sure people die.

    Infringement found. DC and CAFC grant injunction in addition to money damages, both ruling that the general welfare does not overcome my right to an injunction.

    Will The Supreme Court affirm or reverse?

  75. 65

    Dear Mr. Andrew Dhuey,

    Please see my last comment above. In my argument, found by clicking on the link, I also concede that there are cases where the public interest is strong enough to overcome the presumption that a permanent injunction should issue after a District Court’s finding that a patent is valid and infringed, and my argument comprises specific examples of such exceptions.

  76. 64

    JAOI said:

    “If I’m not mistaken, the confusion behind the Supremes’ eBay mistake arises from the misuse of the term INJUNCTION. An injunction is not equal to THE EXCLUSIVE RIGHT— these two terms do not have the identical meaning. The Framers never once used the term INJUNCTION”

    If “Exclusive Right” is not equivalent to “Injunction” then how can you argue that the constitution requires the granting of injunctions.

  77. 63

    JAOI, are you aware that Seth Waxman, counsel for MercExchange, did not make the argument you are making? See link to abanet.org He conceded (p. 33) that there could be cases where the public interest is strong enough to overcome the presumption that a permanent injunction should issue after a finding of infringement.

    It could be that you are right and Seth Waxman missed a great constitutional argument here. Nothing personal, but my money’s on Mr. Waxman.

  78. 62

    Dear Mr. Alan McDonald,

    Mr/s. anonymous precisely summarizes my argument above as follows:

    “Article I, § 8 gives Congress the power to promote the progress ‘by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.’ (emphasis added) Thus, although Congress can tinker with the criteria for patentability, the term of a patent, maintenance fees, etc., it cannot water down ‘the exclusive right’ of patentees to their inventions.”

    With all due respect, Mr. McDonald, which part(s) of my argument do you find flawed?
    link to patentlyo.com

  79. 61

    Alan, the “greater power includes the lesser” argument doesn’t always work. Congress doesn’t have to create the patent system–it only has “the power” to–but once it does, JAOI has a decent argument that the holder of a valid and infringed patent holder must be allowed to exclude others. I don’t have the time to dig into this and do the research, but the argument is at least facially plausible and I haven’t heard a solid rebuttal yet.

  80. 60

    Dear anonymous et al.,

    Thank you for considering my views — my 2¢¿Õ happens to be correct.

    It seems clear that Kevin E. Noonan, Esq., a partner in Professor Crouch’s law firm, McDonnell Boehnen Hulbert & Berghoff LLP, mbhb, also agrees with me, although Mr. Noonan doesn’t express his views as passionately as I tend to do at times.

    Mr. Noonan’s article, found on this link,
    link to patentdocs.net
    posted only yesterday, was titled:

    “Bush Administration Continues Attempt to Destroy U.S. Patent System”

    What I find so off-putting and remarkable about the “Coalition for Patent Fairness”
    is that critical portions of President Bush’s anti-patent legislation,
    which Mr. Noonan describes as

    BUSH’S “… ATTEMPT TO DESTROY U.S. PATENT SYSTEM”
    (emphasis added)

    run directly parallel to the very same anti-patent positions
    advocated by the Machiavellian “Coalition for Patent Fairness.”

  81. 59

    “Also, JAOI you have grant them that perhaps since patents are to have all the qualities of physical property”

    Wrong.

    Though not having a clue as to what you’re talking about has never stopped you before.

  82. 58

    Just because the Constitution grants Congress the power to do something does not mean that Congress has to exercise that power. Otherwise, power would not be granted to Congress, the “right” or “result” would itself be mandidated by the Constitution.

    If Congress passes an amendment to the patent laws requiring that an injunction must issue in any case where infringement is found (overruling E-Bay)it has the power to do so and such a law would be upheld by the Supreme Court. JAOI, you are free to lobby for such a law, just as I am free to lobby against it.

    However, it is not unconstitutional for Congress not to use its full power and enact a statute that makes injunctions possible but not manditory.

  83. 57

    Yes, qwert, I have one for you: Commonwealth Scientific and Industrial Research Organisation v. Buffalo Technology Inc. Thanks to Dennis, you can see the PDF of this district court decision: /media/docs/2007/06/BuffaloTech.pdf

  84. 56

    Can someone provide good examples of NPEs successfully obtaining permanent injunctions against corporations in the wake of the eBay ruling? Based on the four-prong equity test I’m having difficulty seeing how an NPE could convincingly satisfy any one of those tests, let alone all four. Thus, despite the CAFC’s assurances to the contrary, the eBay decision seems like a de facto ban on permanent injunctions for NPEs.

    Thanks in advance!

  85. 55

    JAOI, people can disagree a bunch of different ways on what “strengthens” the U.S. patent system. Plaintiffs focus on lowering the expense of enforcing a patent and making the remedies easier to obtain. Defendants focus on the invalidity doctrine and think that the patent system is “stronger” when it’s pickier about what gets patented and what showing is necessary to support an injunction. The patent system is a bargain between inventors and the public–disclosure and innovation for the right to exclude, and reasonable people can disagree about who gets the short end of the stick in any particular case or category of cases. You and the Coalition apparently see it differently.

  86. 54

    “Efficient or not, if we both do a good job then the process goes much faster.”

    Funny, I recall you being adamant that it isn’t your job to tell applicants what possible claim amendments could be made to obtain allowable matter. However, on this issue of your responsibility as fact finder, you now want to get all buddy-buddy with applicants after previously turning a cold shoulder to applicant.

    Applicants are already required to provide the USPTO with what they know about the prior art that is material to patentability per 37 CFR 1.56. If the potential prior art doesn’t fall under that section, then what we are talking about is who is the better searcher capable of finding the potential prior art: applicant or the examiner? My point is that in the vast majority of the cases I see, the examiner is better positioned to be the better searcher given their training, experience in the particular field and resources.

    “And thus the overclaim was born. As well as it’s evil twin the backlog.”
    Overclaims are inherent in the system, which doesn’t require perfection in claiming the invention. However, overclaims that are allowed to issue are a result of a bad search by the USPTO/examiner.

    The backlog is a result, in part, of examiners being strong-armed to reject claims based upon bogus art. Granted, some of these applicants should be abandoned; however, an attorney that doesn’t want to get later sued isn’t going to recommend an application be abandoned on weak prior art. Find good prior art the first time around, and then applicants will come to the table to find some middle ground (if there is some).

    “How much good does it do them to have overlaims then get busted in trial? None. How much trouble is it to search google for a few hours (maybe even days) in exchange for a legal right to exclude? Practically none.”
    If they claims get busted at trial, it means that the examiner did a poor search. If the Examiner couldn’t find the prior art with all the prior art databases at their command, why do you think applicant will find the prior art? If the examiner did his/her job properly, this wouldn’t be a problem.

    “I would think that the applicant saving a 10 grand on my taking him through 2 RCE’s might be in his interest. That’s not even to mention the benefit they gain in seeing more art and being able to improve upon those pieces of art as well.”
    Far better that than to miss or mischaracterize a reference and then be latter on accused of inequitable conduct. BTW: Once the invention has been “invented,” most inventors don’t care about seeing more art, they just want to move on to the next project.

    “1. Not having bs suits filed against you when the patent is blatantly obvious. (This being the big one)
    2. Not filing bs suits against people when your patent is going to be subject to invalidity during trial.
    3. Companies not forced to pay royalties to avoid litigation on obvious ideas and thus either a. going out of business or b. raising prices on the goods they sell.”
    Yet again, if a patent is blatantly obvious, it means it was issued with the USPTO’s blessing, and thus, the blame should be placed on the USPTO for failing to find prior art. Remember THAT’S YOUR JOB …. TO FIND PRIOR ART … if you cannot do it, don’t blame applicants.

  87. 53

    Dear anonymous,

    Re: “PATENTEES HAVE A RIGHT TO EXCLUDE, but they’re not exempt from the normal processes of enforcing/vindicating their rights–i.e., either negotiations or filing a lawsuit.” (emphasis added)

    I agree— I find we are in 100% agreement.

    Re: “As for the Coalition for Patent Fairness … The name shouldn’t be too offputting.”

    On this I also agree with you. This comment describes what I do find offputting about the “Coalition.”
    link to patentlyo.com

    Here are excerpts:
    It is clear to me that this [ Coalition for Patent Fairness ] letter is based on presenting a bold face lie to Congress! Yet it was signed by the Coalition’s 108 members. For example, the first sentence of the Coalition’s letter to Congress says:

    “… the COALITION FOR PATENT FAIRNESS … applaud your leadership and commitment to the American worker IN SEEKING TO STRENGTHEN THE U.S. PATENT SYSTEM.” (Emphasis added to the boldface lie.)

    Here’s another real pip: “Each of the Supreme Court’s decisions has been consistent with proponents of patent reform who have urged the court to safeguard patent owners…”

    Is the Coalition referring to the Supreme Court that gave us Festo in 2002?, eBay in 2006?, KSR in 2007? Safeguard patent owners? What kind of horseshit is that? While we good IP People may know better, others DON’T KNOW SQUAT ABOUT PATENTS!, and those others include lay citizens, the Media and Government Officials INCLUDING Congressmen, PTO management and the Supremes. What they collectively know about patents wouldn’t fill a comic book.

    End excerpts * * * * *

  88. 52

    JAOI, I think you’re getting into a hyper-literal reading of the Constitution. Patentees have a right to exclude, but they’re not exempt from the normal processes of enforcing/vindicating their rights–i.e., either negotiations or filing a lawsuit.

    As for the Coalition for Patent Fairness, they’re just one more interest group that chose a name meant to sound like they’re out to promote something no one could possibly be against. See also the American Association for Justice (ambulance chasers), the Coalition for Common Sense in Government Procurement (rent-seeking pharma), the American Constitution Society (liberal federal judges), People for the American Way (liberal federal judges), National Right to Life Committee (anti-abortion). The name shouldn’t be too offputting.

  89. 51

    I would also like to say though that it’s funny how, when the courts come out with a decision that is taking the laws or articles in a way that isn’t favorable to the patentee they’re beside themselves. Oh, but when a decision is made to interpret the laws in a way that rails directly against the wording used to draft the statute oh, that’s just peachy fine.

    Also, JAOI you have grant them that perhaps since patents are to have all the qualities of physical property since there are plenty of exceptions to the absolute right to keep people off of your property, or at least exceptions to what force can be used to keep them off iirc, then there may be some limits on the right to exclude. Though imo that’s pretty shaky.

  90. 50

    Please note,I’ve corrected the spelling error in this paragraph:

    If I’m not mistaken, the confusion behind the Supremes’ eBay mistake arises from the misuse of the term INJUNCTION. An injunction is not equal to THE EXCLUSIVE RIGHT— these two terms do not have the identical meaning. The Framers never once used the term INJUNCTION, nor have I found any term directly akin thereto in the Constitution and its amendments. Be that as it may, the Framers specified “the exclusive Right” for an Inventor’s Discovery, not an “injunction”.

  91. 49

    Dear anonymous, Mr. Dhuey et al.,

    I, Just an ordinary inventor™, don’t pretend to be a Constitutional scholar, but I have studied this crucial Supreme Court mistake which contravenes the eBay Opinion. As I mentioned in this comment

    link to patentlyo.com

    A PATENT WITHOUT AN INJUNCTION IS LIKE A REVOLVER WITHOUT BULLETS.

    The eBay decision can readily devastate a non-practicing self-employed inventor’s patent portfolio’s potential (and, e.g., perhaps to significant extent, Academia’s patent portfolios as well) because it gives financially sound reason for unprincipled infringers* to refrain from taking a license until after litigation.

    If I’m not mistaken, the confusion behind the Supremes’ eBay mistake arises from the misuse of the term INJUNCTION. An injunction is not equal to THE EXCLUSIVE RIGHT— these two terms do not have the identical meaning. The Framers never once used the term INJUNCTION, nor have I found any term directly akin thereto in the Constitution and its amendments. Be that as it may, the Framers specified “the exclusive Right” for an Inventor’s Discovery, not an “injuction”.

    * * * * *

    *For example, some, if not most, members of the “Coalition for Patent Fairness.”
    I’ve been waging my personal campaign against this unscrupulous “Coalition”; e.g., please see these comments:
    link to patentlyo.com
    link to patentlyo.com

    Here is an excerpt from my comment:

    Isn’t it apparent that the Coalition for Patent FAIRNESS has been LOBBYING Congress so LOUDLY as to be heard by the main stream Media, little tributary Media and by We the American People, as well as the PTO management team including its most impressionable dimwits, by Judges across the Land and in Washington’s use-to-be patent-friendly patent-savvy Federal Circuit Court of Appeals, and by our Honorable Supreme Court Justices who, as Boston Legal’s Alan Shore’s stunning lambasting thereof put it so well, “You folks aren’t as hot as all get out” (and that was in regard to a capital matter; patents are more obscure and far beyond the reach of the Supremes) to VIOLATE the Constitution mostly unwittingly, BUT WITTINGLY AS WELL for it seems our government’s three branches “don’t give adamn for our greenbackin’ dollar” (lyrics by the Kingston Trio) any more than they do for one of the most stunning achievements of our Founding Fathers, The United States Constitution— we went off the gold standard and now are mostly off the Constitutionally standard, but I suspect I am beginning to repetitively preach to the choir majority (this is one long sentence, like a claim)?
    * * * * *

  92. 48

    I’ll be honest JAOI at the time you typed up the monstrosity that can be summed up in a paragraph awhile back I was at just as much a loss as I’m pretty sure Dhuey et al. and everyone else is. The only real explanation appears to be that you have just pointed out one more facet of LOL land. Imo you should take a case to the supremes on this issue and have them sort it out if it will hurt your interests.

    “The Supremes’ eBay ruling reserves a patent’s “exclusive Right” for big businesses while denying a patent’s grant of “the exclusive Right” to independent non-manufacturing inventors.” This right here might be your answer. Perhaps they’re merely reigning in trolls before congress does it for them.

  93. 46

    Dear anonymous,

    Your comment:

    “Article I, § 8 gives Congress the power to promote the progress ‘by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.’ (emphasis added) Thus, although Congress can tinker with the criteria for patentability, the term of a patent, maintenance fees, etc., it cannot water down ‘the exclusive right’ of patentees to their inventions.”

    precisely summarizes my argument. Thank you.

  94. 45

    JAOI’s argument is correct: Upon inspection,
    link to patentlyo.com
    one is compelled to conclude that the Supreme Court’s eBay Opinion is in conflict with the Constitution’s Patent Clause.

    The basis for the Supreme Court’s mistake is the PRESUMPTION found on page 3 of its Merc v eBay Opinion:
    “… Indeed, the Patent Act itself indicates that patents shall have the attributes of personal property ‘[s]ubject to the provisions of this title,’ 35 U. S. C. §261, including, PRESUMABLY, the provision that injunctive relief ‘may’ issue only ‘in accordance with the principles of equity,’ §283.” (emphasis added)

    While 35 USC §261 is consistent with Patent Clause 8 of Article I, §8,
    35 USC §283 is not:
    “The several courts … may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”

    §283 would cede DISCRETION to courts to diminish the Power the Constitution gave Congress. In view of the Supremacy Clause, Article VI, such judicial DISCRETION would require a formal amendment in accord with Article V. No such amendment to the Patent Clause has been made.

  95. 44

    —change the system so that the patentee pays all legal fees if the defendant is innocent or the patent is invalid based on art—

    This aspect of the system is not unique to patent litigation only, but instead occurs throughout civil litigation in the US. If I remember correctly (and law school was a while ago), the fee-shifting statutes generally kick in after a verdict has been rendered. As I recall, this is supposed to encourage plaintiffs to sue if they feel they have a meritorious case without scaring them away from the case due to having to pay both sides’ costs, yet give the two parties an incentive to settle as well. Remember, our system is not supposed to discriminate against small litigants, whom such costs will disproportionately affect.

  96. 43

    Last post on this–Markman was an affirmance for the CAFC, but I don’t see the lack of similar affirmances as a sign that the Supreme Court disapproves of the CAFC’s work. As I’ve probably repeated enough times, most if not all of the reasons to grant cert only apply in a patent case from the CAFC if the Supreme Court is seriously thinking of reversing.

  97. 42

    JAOI, I haven’t given that any thought. My off the cuff reaction is that the Patent Clause probably shouldn’t be read as restrictively as I think you’re suggesting it should.

  98. 41

    JAOI, I think you bring this up every few months or so. It’s an interesting argument–Article I, § 8 gives Congress the power to promote the progress “by securing for limited Times to Authors and Inventors THE EXCLUSIVE RIGHT to their respective Writings and Discoveries.” (emphasis added) Thus, although Congress can tinker with the criteria for patentability, the term of a patent, maintenance fees, etc., it cannot water down “the exclusive right” of patentees to their inventions.

    I don’t know what the answer is to your question. I haven’t read eBay closely in a while, and it doesn’t appear that the court directly addressed your argument. Rather, it perceived the case as being about the equitable remedy of an injunction and the power of courts to grant it. Obviously, that’s not fully responsive to your question.

  99. 40

    Dear Mr. Dhuey et al.,

    Can you reconcile the Supreme Court “eBay” Opinion with the United States Constitution given the substance of this comment I posted a good while back?

    link to patentlyo.com

  100. 39

    Interesting.

    Markman was 10-1 at the CAFC, with concurring opinions from Mayer and Rader. I’m not sure why the Supreme Court granted cert in that case, but your description of it is correct.

  101. 38

    Markman v. Westview Instruments is an example of an affirmance with different reasoning. Compare the Supreme Court decision with the CAFC’s (which was 2-1, with a concurring opinion by Judge Rader and a dissent by Judge Newman). These opinions reach the same result, but they take significantly different paths en route.

  102. 37

    I can’t think of any cases offhand where the Supreme Court said “right disposition, wrong reasoning.” Usually if the only cert-worthy argument is one that wouldn’t affect the outcome of the case, the Supreme Court denies cert because it doesn’t want to render an advisory opinion.

    Even if you’re right, though, that still means that there’s no reason for the Supreme Court to grant cert in a patent case unless it wants to correct *something* that the CAFC did, even if it won’t necessarily affect the result.

    If that’s true, then there’s no real significance in the fact that the last 8 patent cases have been reversals. If the Supreme Court approves of what the Federal Circuit has done in a patent case, there’s no reason for the court to grant cert to say “good job.” Instead, it will deny cert, the case won’t get to the Supreme Court, and the people who watch the CAFC will continue to argue that the CAFC is on the Supreme Court’s bad side in patent cases because of the percentage of reversals.

    If you look outside the patent cases, as CJ Michel did in his speech, the CAFC’s record starts to look a bit more like the other courts of appeals. In US v. Hinck, the CAFC split with the Fifth Circuit on a question of the Tax Court’s jurisdiction under federal statute. The Supreme Court granted cert and affirmed the Federal Circuit’s decision. That made sense because the question at issue affected all thirteen courts of appeals, and it required the Fifth Circuit to reverse course in the future.

    In John R. Sand & Gravel, the Supreme Court granted cert where there was no split and addressed a statute concerning the jurisdiction of the Court of Federal Claims. That case, though, involved the question of whether a particular statute of limitations is jurisdictional or waivable, which had implications in other areas. In that case, the Supreme Court again affirmed the CAFC’s reasoning and made some broad statements about statutes of limitations generally.

    The CAFC is as good as any other court of appeals at interpreting the law and figuring out what the Supreme Court has done. In patent cases, however, the legal questions that come up usually don’t matter to the other courts of appeals. As such, I don’t think the Supreme Court is generally interested in taking patent cases unless it wants to change something that the CAFC did. If the Supreme Court likes a patent case, it’ll deny cert, and the CAFC’s affirmace/reversal record in patent cases at the Supreme Court will generally be 0-and-something.

    The trend against patent holders that you note is interesting, however. I wonder if it’ll continue and where it will go next.

  103. 36

    It is not necessarily a waste for the Supreme Court to affirm a CAFC patent decision. In several cases, the court has agreed with the CAFC’s ultimate disposition of the case, but not the reasoning behind it.

    The last eight cases (probably nine after Quanta), however, have been reversals. While the number of cases might not impress, these are broad decisions with large impact. The CAFC can feel the heat, and they have responded.

  104. 34

    “If you seriously think that there are less of those now than there were in 1975, you need a remedial math course.”

    … FEWER of those now …

  105. 33

    “I have been in the business for nearly thirty years and I have not noticed that the quality of patents has declined.”

    Let me make a subtle but important and irrefutable point (and one I’ve made a dozen times before): the overall “quality” of patents is not the problem. It’s the absolute number of patents containing facially invalid and absurdly broad claims that it is the problem. If you seriously think that there are less of those now than there were in 1975, you need a remedial math course.

  106. 32

    Dear Darth Dudas,

    You are my hero – your short sweet sarcastic succinct up-thread comment sure hit the mark when you wrote:

    “You are underestimating the power of the dark side of the bureaucratic force, Darling. Our job is not to grant patents, but to reject them. We have already established that we do not have to follow the law, our underwriters are paying me to kill off patents entirely. Only then will Master Gates be able to unite all of mankind under Windows.
    Posted by: Darth Dudas | May 17, 2008 at 11:28 AM ”

    Lest anyone think differently, neither Jaoi(TM) nor I nor anyone we know wrote that super-comment, but I sure wish we did. Darth, I’m sure you could teach my owner, Jaoi, a thing or two about brevity. (Please don’t tell him I said so, but sometimes he is soo verbose and bloviates ad nauseam.)

    BTW, are you going to take Jaoi’s test and try to win the prize for your high-score on these two threads?:

    Part II — link to patentlyo.com

    Part III — link to patentlyo.com

  107. 31

    Blaise:
    “Actually”, except in niche technologies, that’s bull. Just saying, most inventors can’t tell a claim from a title, and don’t read any patents. In my experience, only inventors that have a personal stake in their invention or that work in the aforementioned niche markets (these are mostly Professors, BTW) ever read any patents. The majority of inventors work for large companies and don’t give a rats behind about their invention or the prior art. Their work has typically moved on beyond the invention by the time filing for a patent has come up, and they care about meeting their next deadline in some other work unrelated to the invention.

  108. 30

    Andrew Dhuey writes:

    “The court has reversed the the CAFC in each of the last eight patent decisions, and I think Quanta will make that nine. Years ago, there were a number of affirmances. Now, it’s all reversals.”

    Interesting point, but why would the Supreme Court grant cert in a patent case if it intends to affirm? It seems to me that it would be a waste.

    If there’s a developing split in the regional circuits, the Supreme Court could grant cert in one of the “correct” decisions to affirm it just as easily as it could grant cert in one of the “wrong” decisions to reverse. Even if there’s not a split in a non-patent case, the Supreme Court could grant cert and affirm to send a message to the courts of appeals that haven’t weighed in yet.

    With patent cases though, there are no splits and no undecided courts out there who would benefit from a Supreme Court affirmance of a CAFC decision. If the CAFC gets an important patent case right, it seems to me that the Supreme Court would probably rather deny cert than grant it and affirm.

    Perhaps the change from the past (I’m assuming that you’re right that the Supreme Court used to grant cert from the CAFC and affirm fairly often) can be explained by the current court’s apparent desire to reduce its docket and cut unnecessary cert grants.

  109. 29

    BTW pds, I’d like to know Specifically why you think I’m just qqing to make my job cake. If I didn’t care about the Impact the work I put out has I could allow cases left and right, send out bad OA’s every other day, and not care one little bit. I’d probably not have to work even 40 hrs a week, I could just come in for around 6 hrs, skimp a search, find something that reads on the ind. and a few deps, indicate some so/so claims as allowable and be out with about 25 hours worked. Heck, work an actual 40 hours and do it hard and I could probably claim 20+ hours overtime every bi week. Do you know how much bank I could make doing that? Just below or into the three figures my friend. That’s 2 years out of undergrad, not too bad for a public sector job. All in exchange for not caring one little bit about what happens after the document leaves my desk.

    Stop thinking I only give a rat’s arse about my job being easy, it’s simply not true.

    On the other hand, tell us right fast, do you give a flying sht about what happens to the people paying royalties on your overclaims? What about the ones that face an injunction and the company going under? Simple victims of the system I suppose. Right?

  110. 28

    “Funny, you contradict yourself in the same paragraph. If the Examiner is in a far better position to know the prior art, then the Examiner is also in a far better position to know the closest thing to applicant’s invention. BTW: this isn’t about “judicial problems,” this is about simple efficiency (at which the USPTO is entirely ignorant).”

    If you read my comment what I said was that the applicant is in the best position to tell me what he thinks is closest to his invention, yet I don’t see them submitting art or background. I did not presume that the applicant will be right about it being the closest thing, nor that the examiner might not know something closer. Efficient or not, if we both do a good job then the process goes much faster. If you can tell me with a straight face that an applicant invented oh, I don’t know, the latest improvement on a method of making a pbj sandwich he could at least start us out with some background showing the process he learned as a boy.


    In many instances, that is exactly how applicant came up with the invention. They don’t search the prior art for the closest thing that they are going to invent because in many instances they don’t what they are going to invent (many inventors don’t even know what the term “prior art” is). They have a problem and then they solve the problem. It could be that the problem was recognized and solved in some paper presented in some obscure journal 15 years ago but never commercialized. You think the inventor is going to know about that? Some inventors don’t know what is even going on their own company.”

    Not in my art it isn’t. One in ten thousand sprung whole from the apps mind. Maybe in your art it’s different, but it’s sure that way in mine. You think I care about the mom and pops inventors shooting crp at us? No, it’s unavoidable. But when you have a world renowned expert in his field with his name plastered all over art that is .00000001 cm from the instant invention it’s fair to say he knows something about what came before wouldn’t you agree?

    “However, the vast majority of the times, I just trust the applicant.”

    And thus the overclaim was born. As well as it’s evil twin the backlog.

    “My job is to describe the applicant’s invention. Your job is to find facts that would lead to the conclusion that the invention is not novel or is obvious. Given the training, the access to all the prior art databases, and the expertise you have, is it your position that you are incapable of finding the best prior art? Are you begging for help because you are incapable or too lazy to do the job properly yourself?”

    I’m not begging for help, I’m merely telling you my view on how to make the system work better for the American people as a whole, as well as the inventor. How much good does it do them to have overlaims then get busted in trial? None. How much trouble is it to search google for a few hours (maybe even days) in exchange for a legal right to exclude? Practically none.

    “Let’s face facts here, the public is NOT aided by the rehashing of prior art …. because it is already in the public domain. As such, forcing applicants to do their own search is for the benefit of the USPTO and nobody else.”

    Hmm, that’s funny, I would think that the applicant saving a 10 grand on my taking him through 2 RCE’s might be in his interest. That’s not even to mention the benefit they gain in seeing more art and being able to improve upon those pieces of art as well. I’m actually quite inspired by some art I see. I could make combinations like the ones I see in apps literally all day long, it’s far from rocket science. You’re well aware of the value of knowledge of the prior art to anyone, you’re just saying it’s useless to prop up your bs about it only benefiting the office which totally ignores the benefits to the public in terms of:

    1. Not having bs suits filed against you when the patent is blatantly obvious. (This being the big one)
    2. Not filing bs suits against people when your patent is going to be subject to invalidity during trial.
    3. Companies not forced to pay royalties to avoid litigation on obvious ideas and thus either a. going out of business or b. raising prices on the goods they sell. Don’t give me bs about “oh, they couldn’t raise prices, prices are based on supply/demand.” Well guess what, if the whole industry has to pay those prices then the prices will go up.

    All in all you mean that the applicant doesn’t get immediate intellectual property benefits out of presearching and the only one that gets immediate benefits is the office. To that I will agree (except the part about saving the app 2x rce’s), but you must look beyond the short term. And when you do it’s blatant that the app (presuming he’s not wanting to rip people off by overclaiming anything beyond what he actually contributed), the public, the office, and maybe even the attorney (depending on the situation) benefit from extra searching no matter where it comes from.

    Your argument is weak, and merely your wanting to be conservative. My QQ is not for my own job so much as it is for the system and everyone involved being affected by any, great or small, thing that goes wrong with my job being done 10000%. Including especially Mr. innocent forced to litigate or settle. Tell you what, change the system so that the patentee pays all legal fees if the defendant is innocent or the patent is invalid based on art and I’ll shut my qq up entirely.

    “PTO (mis)management is constantly spouting off this myth that “applicants are in the best position to know the closest prior art” and they are never challenged by the nitwits in Congress or the media as to how they “know” this to be true.

    The problem is: it’s not true. If any of the (mis)managers at the PTO had ever actually practiced, if they’d ever actually met an inventor, they would “know” that their position is BS. Of course, they “know” a lot of their positions are BS (e.g. the backlog and pendency are entirely the fault of applicants and practitioners), but that doesn’t stop them from continuing to shovel it.”

    Good dam it JD if I could post even a dozen of the apps I have on my docket right now you’d be eating these words so fast you’d probably choke to death. You expect me to believe the guy that just got done creating the bicycle with 2 handlebars, multiple rims for each wheel, and a reflector in back doesn’t know what the closest prior art is on his newest bicycle with 2 handlebars, multiple rims for each wheel, and a reflector in the front and back is? How about the new guy at a company, that just invented a manufacturing process a few years ago, who came up with *gasp* a method of testing the products in the new manufacturing process exactly like was done in all of the old manufacturing processes nearly exactly alike! Are you trying to tell me they couldn’t possibly know of any prior art? It’s easy to armchair undersecretary but when you get there you’d be seeing things a bit differently I bet.

    I could QFFT BHR all day but I’ll give it a rest.

  111. 27

    “some of the worst stuff issued just a few years ago”

    Malcolm, you are quickly becoming a respected thought-leader on a variety of IP-related issues. I hearby charge you with writing the scholarly work of the century illustrating all the technological and societal damage that these *bad* patents have wrought. Given that these horror patents have been in force for years now, you ought to be able to produce case upon case of frivolous litigation and licensing harrassment borne out of these ill-intended and undeserving takings. Show us the cancer-curing startup company run out of business for accidentally infringing BigPharma’s “me-too” drug. Show us the 8-year-old girl dragged crying into court for entertaining her pet kitty with a laser pointer. Show us the threat to the institution of marriage posed by elaborate patent-based proposal schemes, the starving artist denied his commission on masterworks painted with baby buttocks. Oh, the endless injustices you will surely encounter…

    I know this is no small task, but only someone with your stellar cachet and indefagitable ingenuity can hope to expose to the world the truth on this. I trust you can do it – we’re all counting on you!

  112. 26

    Malcolm —

    “some of the worst stuff issued just a few years ago”

    I have been in the business for nearly thirty years and I have not noticed that the quality of patents has declined. In fact, I think the quality has improved.

  113. 25

    “Judge Mayer said at the conference that he believes IP law will not be “hot” going forward. I could see from the reaction of the IP lawyers in the room that a lot of them reluctantly concur with Judge Mayer on that prediction.”

    Does that mean that securities and construction attorneys will stop advertising themselves as “IP lawyers” because they helped draft some discovery motions in a trade secret case?

    Or does it mean that seasoned patent litigators are going to start passing themselves off as environmental lawyers to get work? Let me know when that happens.

    As I see it, there are more patents out there than ever before. When everything else is gone and you’ve only got one of those pieces of paper in your hand, you’re going to want to make some money off it somehow.

    There’s no shortage of work until the PTO’s poopoo is entirely cleaned up. After all, some of the worst stuff issued just a few years ago.

  114. 24

    Chief Judge Michel is quite correct in noting that there hasn’t been a surge in the frequency of Supreme Court review, but that’s not the only thing going on. The court has reversed the the CAFC in each of the last eight patent decisions, and I think Quanta will make that nine. Years ago, there were a number of affirmances. Now, it’s all reversals.

    More important, the trend in the reversals is almost completely unfavorable to patent holders. With the Supreme Court patent case law in mind, Judge Mayer said at the conference that he believes IP law will not be “hot” going forward. I could see from the reaction of the IP lawyers in the room that a lot of them reluctantly concur with Judge Mayer on that prediction.

  115. 23

    “However, the vast majority of the times, I just trust the applicant.”

    That’s an astounding statement coming as it does right after your statement that most inventors don’t know what the state of the art is: seems like wilful blindness to me. Surely it would be mere prudence to search for prior art to: (1) avoid wasting money making doomed claims; (2) articulating the meritorious claims in a way which sets them clearly apart from the prior art.

  116. 21

    “helped me to see a variety of solutions missed by other inventors” = obvious.

  117. 20

    Actually, a smart inventor probably would read every single patent published related to his or her field of invention. For example, I read every single patent related to microelectromechanical systems and nanomaterial technologies and it certainly has helped me to see a variety of solutions missed by other inventors and to track emerging trends by giving me a broad overview of competing approaches. Depending on the scope of the inventors field of endeavor one would only have to read (or at least briefly review) from a few dozen to a few hundred patents a week based on focused keywords or patent classification searches and the insight obtained by doing this gives an invaluable edge to the inventor.

    link to tinytechip.blogspot.com

  118. 19

    You are underestimating the power of the dark side of the bureaucratic force, Darling. Our job is not to grant patents, but to reject them. We have already established that we do not have to follow the law, our underwriters are paying me to kill off patents entirely. Only then will Master Gates be able to unite all of mankind under Windows.

  119. 18

    6k has the typical view of the PTO on how inventors invent something. PTO (mis)management and the examiners think that “inventors” (a term which would include everything from engineers, doctors, software programmers, etc.) sit around all day reading prior patents and “just combining them.”

    It’s a fantasy. One in which the PTO has been living for the past couple years.

    Actual inventors don’t have an encyclopedic knowledge of the prior art. That is why 35 USC 103(a) sets up the hypothetical person of ordinary skill in the art. And why Graham requires a factual determination of the level of ordinary skill in the art.

    PTO (mis)management is constantly spouting off this myth that “applicants are in the best position to know the closest prior art” and they are never challenged by the nitwits in Congress or the media as to how they “know” this to be true.

    The problem is: it’s not true. If any of the (mis)managers at the PTO had ever actually practiced, if they’d ever actually met an inventor, they would “know” that their position is BS. Of course, they “know” a lot of their positions are BS (e.g. the backlog and pendency are entirely the fault of applicants and practitioners), but that doesn’t stop them from continuing to shovel it.

  120. 17

    “I agree, but what’s your point? That just because the examiner is in a better position then he should do it? Hmmm, interesting line of reasoning. The applicant is in the best position to tell me about the closest thing to what he made that exists is, but yet I repeatedly get people that don’t do it. Don’t go judicial problems qq on me now.”

    Funny, you contradict yourself in the same paragraph. If the Examiner is in a far better position to know the prior art, then the Examiner is also in a far better position to know the closest thing to applicant’s invention. BTW: this isn’t about “judicial problems,” this is about simple efficiency (at which the USPTO is entirely ignorant).

    “the applicant did not come up with his invention out of thin air and that is how way too many apps are presented.”
    In many instances, that is exactly how applicant came up with the invention. They don’t search the prior art for the closest thing that they are going to invent because in many instances they don’t what they are going to invent (many inventors don’t even know what the term “prior art” is). They have a problem and then they solve the problem. It could be that the problem was recognized and solved in some paper presented in some obscure journal 15 years ago but never commercialized. You think the inventor is going to know about that? Some inventors don’t know what is even going on their own company.

    Regardless, once an inventor has solved a problem with something (i.e., their invention) that they’ve never seen before, this is where I get involved. Admittedly, if I see something that I think has to be obvious/anticipated, I’ll do a search on my own. However, the vast majority of the times, I just trust the applicant.

    My job is to describe the applicant’s invention. Your job is to find facts that would lead to the conclusion that the invention is not novel or is obvious. Given the training, the access to all the prior art databases, and the expertise you have, is it your position that you are incapable of finding the best prior art? Are you begging for help because you are incapable or too lazy to do the job properly yourself?

    Let’s face facts here, the public is NOT aided by the rehashing of prior art …. because it is already in the public domain. As such, forcing applicants to do their own search is for the benefit of the USPTO and nobody else. When balancing the needs of the USPTO (which is a necessary leach) and the inventors (who actually provide value to the public), the needs of the inventors should deemed more important. You don’t ask an inventor to do something that the USPTO has spent hundreds of millions(???) on infrastructure, hiring, and training to accomplish. If you think applicant has knowledge of value, then that is what 37 C.F.R. §§ 1.56, 1.105 are for.

    Stop QQing about not having the best prior art when your job is to find the best prior art.

  121. 16

    “And yet it seems to me that I see enormous amounts of hostility directed towards examiners who dismiss patents as obvious or anticipated. I think that if you are going to invoke the expertise of the examiners then you need to be willing to accept what they say.”

    Being an expert at the prior art does not necessarily make them an expert (or at least competent) at 35 U.S.C. §§ 102, 103, which is needed to make a proper rejection. You need to employ better logic in your arguments because this one is paper thin.

    Come on … even a 1L could see through this weak attempt at an argument.

  122. 15

    My purpose behind getting appli-CANTS to submit prior art admissions is just to make the record clear that everything that could be invented has already been invented, as my predecessor Duell said so eloquently over 100 years ago. It also has the added benefit of a massive increase in inequitable conduct claims, so that private attorneys will all be heavily fined – those guys make way more money than our honorable bureaucrats, such as myself. It won’t have any effect on the allowance rate, which I will get my minions to reduce down to 0.0% by 2010. The goal is to quash the plague of inventors and entreprenuers, who are destroying the fabric of bureaucracy by luring intelligent examiners that are capable of leaving the office into private practice.

  123. 14

    “That isn’t the well-established quid pro quo for obtaining a patent (i.e., inventor discloses invention for limited rights to the invention).”

    No wai?

    “Why should an inventor be required to know the state of the art, which could include hundreds, if not thousands or tens of thousands of patents, publications, etc., when the applicant may only file a couple or a few patents in that field their entire career?”

    Because they would like a legal right to exclude others (a power over his fellow man).

    “On the other hand, the Examiner lives his or her career within a particular art (unless transferred to another art). ”

    Your point is what? Their knowledge means exactly squat unless they can dig up papers showing what they know in 10 hours or so.

    “As such, the Examiner is in a FAR BETTER POSITION to know the prior art than applicant.”

    I agree, but what’s your point? That just because the examiner is in a better position then he should do it? Hmmm, interesting line of reasoning. The applicant is in the best position to tell me about the closest thing to what he made that exists is, but yet I repeatedly get people that don’t do it. Don’t go judicial problems qq on me now.

    “Such a simple concept, yet a few people still cling to the notion that applicants are better positioned than examiners to do the searching. As 6K has already claimed this week, he’s “reviewing” hundreds of references a day. Do that 250 days a year for even a couple of years (or even a couple of weeks) and most examiners should have a breadth of knowledge that exceeds those of ordinary skill in the art.”

    I don’t think anyone actually clings to that notion, everyone knows the examiner is in a better position to search if given plenty of time. What everyone knows is that the applicant is in a great position to provide the office with useful information and at present they gracefully decline way too often. Also, I would say I look over 100’s, but conduct in depth reviews on a hundred or so only every few days.

    “I’ve said this dozens of times, inventors are best at inventing and the examiners should be best at knowing what is in the prior art.”

    I’m pretty sure I or others have said in Re dozens of times that we don’t dispute that but that the applicant did not come up with his invention out of thin air and that is how way too many apps are presented. Also, I believe we may have approached the topic of both the applicant and the examiner doing what they can to find art in a manner that shows that the applicant is playing a part in ensuring that he has a valid legal document.

    Also, all that is ignoring the cases of applicant’s that I have several of where they are one of 1-4 major corporations, often competitors, who are the only people even doing things in that particular field and likely worked on half of any relavant art pertaining to the application HIMSELF. In those cases it would be nice if they would just at least tell me in a lot of detail (as much detail as the deps go into) as to what he improved so that once I find his improvment I don’t have to co ck around with 25+ deps that are meaningless to his invention and he won’t be moving up even if I said it was allowable.

    “And yet it seems to me that I see enormous amounts of hostility directed towards examiners who dismiss patents as obvious or anticipated. I think that if you are going to invoke the expertise of the examiners then you need to be willing to accept what they say. The attitude that seems to exist among patent prosecutors towards the examiners is “catch me [claiming something obvious] if you can”.”

    QFMFT AGAIN!

  124. 13

    “yet a few people still cling to the notion that applicants are better positioned than examiners to do the searching”

    And yet it seems to me that I see enormous amounts of hostility directed towards examiners who dismiss patents as obvious or anticipated. I think that if you are going to invoke the expertise of the examiners then you need to be willing to accept what they say. The attitude that seems to exist among patent prosecutors towards the examiners is “catch me [claiming something obvious] if you can”.

    “I think I may know who big hairy is”

    It is extremely unlikely that you are right.

  125. 12

    “If by that you mean: know what the state of the art is and point out what it is about the claimed invention that is new; then, yes, the applicant should do that.”

    QFMFT, big hairy weren’t you an attorney? Where do you get these ideas? I think I may know who big hairy is.

  126. 11

    “If by that you mean: know what the state of the art is and point out what it is about the claimed invention that is new; then, yes, the applicant should do that.”

    That isn’t the well-established quid pro quo for obtaining a patent (i.e., inventor discloses invention for limited rights to the invention). Knowing the “state of the art” should rest with those in the best position to do so.

    Why should an inventor be required to know the state of the art, which could include hundreds, if not thousands or tens of thousands of patents, publications, etc., when the applicant may only file a couple or a few patents in that field their entire career? On the other hand, the Examiner lives his or her career within a particular art (unless transferred to another art). As such, the Examiner is in a FAR BETTER POSITION to know the prior art than applicant.

    Such a simple concept, yet a few people still cling to the notion that applicants are better positioned than examiners to do the searching. As 6K has already claimed this week, he’s “reviewing” hundreds of references a day. Do that 250 days a year for even a couple of years (or even a couple of weeks) and most examiners should have a breadth of knowledge that exceeds those of ordinary skill in the art.

    I’ve said this dozens of times, inventors are best at inventing and the examiners should be best at knowing what is in the prior art. This is why we have a back-and-forth examination process between applicants and the examiner because each brings a different expertise to the table. Requiring applicants to do their own search (and analysis of the search) is a colossal waste of money and expertise.

  127. 10

    “He ll, in 10 years you could probably submit an application and get a response back by the end of the week.”

    Hitting the bottle early this weekend?

  128. 9

    “I guess it is not enough that we prepare the application. We should do it all!”

    If by that you mean: know what the state of the art is and point out what it is about the claimed invention that is new; then, yes, the applicant should do that.

  129. 8

    “The Patent Office wants us to essentially prepare our first office action and first response before the Examiner even examines the application (that is what performing your own search”

    Where did you hear that? I said above that some people proposed doing that, not necessarily the office.

  130. 7

    “I believe these data illustrate how well our panels do in nearly all appeals.”

    I want to see the cert/granted graph of the CAFC vis-a-vis all other circuits, not vis-a-vis the past CAFC.

  131. 6

    Chief Judge Michel says: “I believe these data illustrate how well our panels do in nearly all appeals.”

    Not really. I think the CAFC does a good job, but the Supreme Court’s reasons for taking or not taking a case on cert have only a little bit to do with whether they think the decision was right or wrong.

  132. 5

    Oh really, the more of the Patent Office’s job we do, the quicker examination will be?

    The Patent Office wants us to essentially prepare our first office action and first response before the Examiner even examines the application (that is what performing your own search, characterizing the prior art, and showing how you define over the prior art entails). I guess it is not enough that we prepare the application. We should do it all!

    It seems the Examiner’s job will eventually be to just read the examination support document (or some variation thereof) and pass the case to issuance. By that time, we’ll probably have the threat of sanctions or disbarment for any misleading statement in the ESD, so we will all err on the side of caution, ensuring that there is never a reason for the Examiner to issue anything other than an allowance.

  133. 4

    btw, if we adopted the change that some people suggest with regards to examination, just making the applicant do a good search and submit the results then have the examiner judge them and check for technicalities then you would see a massive production boost. He ll, in 10 years you could probably submit an application and get a response back by the end of the week.

  134. 3

    lulz, good one.

    To the top guy, wouldn’t it be nice if we only had 1,500 cases to go over? Considering the caseload, and I believe it was around 18 judges, they go through cases at just about the same rate examiners do. And that’s without having to go through the art to see if something exists or not. All they have to do is make sure what the board/DC said was correct. Gee, that’s a real tough one in 90%+ cases. I’d like some statistics about how often the board or DC is upheld. It had nearly got to be a fairly high number.

  135. 2

    You assume that the Patent Office cares about the speed of examining patent applications. Since I am transforming the Patent Office into the “No-patent Office,” it doesn’t really matter how fast my minions examine your pathetic excuses for applications.

  136. 1

    ““Expedition is a top priority.” Median time from docketing to disposition was nine-months for FY07. The current inventory of cases is now just over six months.”

    wouldn’t it be nice if the PTO could be that quick in examining patent applications

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