Patently-O Bits and Bytes No. 56

  • Patent Reform 2008: The “Duffy Provision” correcting the BPAI appointments problem has now been signed into law by President Bush. [LINK]
  • Patent Reform 2008: The Duffy Provision is the only reform measure expected to pass before the November presidential elections. However, several reports indicate that there will be a push for reforms in September.
  • Secrets Revealed: A recent article raises more questions about Research-in-Motion’s ex parte lobbying at the PTO. The article lays the blame full on RIM attorneys but does not explain why the PTO is resisting efforts to eliminate wrongdoing. [LINK]
  • Patently-O Jobs: Ryan Swarts has revamped the Patent Law Job site. [LINK] I’m always happy to hear when we have helped link an employee and employer!

40 thoughts on “Patently-O Bits and Bytes No. 56

  1. 40


    I found the Translogic cases. Allow me to disagree with you.

    Even though Translogic reached final judgment, it did not reach finality. If you compare with In re Freeman, finality had been reached because Dr. Freeman had exhausted his appeals. This is the distinguishing characteristic between Translogic and Freeman: Translogic did not reach finality but Freeman did. Hence, the PTO was bound in Freeman but was not in Translogic.

    In my opinion, the PTO cannot be bound by a district court’s finding in parallel matters. In a re-exam, the PTO examines the patent from the point in time of the initial application. No court case could have existed at the time of application because there was no patent to litigate. It reviews the claims of the patent in light of the printed pubs and prior art that was known at that time plus the newly-discovered prior art that raised a substantial new question of patentability which triggered the re-exam in the first place. Moreover, the separation of powers demands the executive and judicial branches to perform their respective functions independently and without interference of the other. If the litigation has not reached finality, then to impose the district court’s findings upon the PTO is an encroachment upon the essential function of the PTO.

  2. 39

    you missed the point of hayburns – see the translogics dual appeal – final judgment from a d ct and from the executive – ie the board.

  3. 38


    re the Hayburn’s case

    Again, not sure I am following what you are saying, but here it goes…

    I looked at the following:

    link to

    In my opinion, the holding in the Hayburn’s case would apply to a statute which essentially states something to the effect that an “applicant for patent should apply at the federal court.” Examination of patents is “a non-judicial dut[y that] could not be assigned to federal courts in their official capacity.” (Wiki). Hence, the court would not allow the applicant to go to it for a patent.

    Given this, I don’t see how an issue relating to the PTO’s implementation of re-exam statutes or providing full faith and credit to a court’s final judgment relates to the Hayburn’s case.

  4. 37


    re re-examination

    I may be missing your point, but here I go. Isn’t the PTO bound by In re Freeman when it comes to, at minimum, a court’s claims construction after final judgment has been reached? The PTO evens states so in the MPEP.

  5. 36

    Jim, the 7th amendment codifies that cases tried at common law at the time of the enactment – have a right to a jury trial for issues of fact. Patents cases – at law – are covered by the 7th amendment (well at least legal damages for certain (read past damages) per scotus). Furthermore – the oft quoted remark is the – congress cannot conjure away a 7th amendment right – which is exactly what the 1999 amendments to reexamination do – imho. Finally the case of Hayburns – or Hayburns case – in many informed views also precludes the way in which pto is implementing the reexamination statutes – not giving full faith and credit to final judgments of courts – the pto in fact second guesses (assaults) the trial record. But who would have thought that the Bush administration would expand executive power and it might take a court and a good case to reign in the power? I am quite certain of my facts on the federal court not originally exercising equity jurisdiction – recall that congress gives subject matter jurisdiction to the federal courts by statute – so the constitution clause is the ceiling not the floor. Anyways, would be a great topic for a law review. It’s really crying out for some historical scholarship. BTW, i think Story talks about the origins of equity power of the federal courts in the section called equity jurisdiction or equity jurisdiction of the federal courts (when he does a comparative treatment).

  6. 33

    Thank you,
    Likewise, I’m sure (õ¿0).
    Till we meet again, stay well, live long and prosper…

  7. 32

    “I am a former patent litigator with BigFirm who now practices patent prosecution”

    That’s odd. Most usually go from prosecution to litigation 😉 I am one of the few prosecutors I know who actually wants to make an entire career of just prosecution.

  8. 31


    I guess the answer is “no” to the question

    “Because royalties are available, do you think that the Framers would have objected to the eBay opinion with the Court having to apply the traditional analysis before issuing an injunction (the dreaded “i” word is used because that was the subject of the whole issue in eBay)?”

    Your silence to the question speaks volumes, and respectfully, I will treat your silence as a tacit response of “yes.”

    JAOI, I appreciate the fact that you have your belief, and it is the passion with which you hold your belief that has kept me alive in this conversation. There’s a time, however, when a solidly-based legal arguments (like the plurality that I have made) will not penetrate the cranial of an recalcitrant mind previously solidified by past experiences and bound to stay the unsound course. I have answered your questions in depth upon a solid legal foundation, and you are intelligent, but yet you are dead set on showing that, in the end, your position is the one that is legally sound. I have listened to your arguments and have responded to them in a methodical fashion. You have admitted some insight on my part and errorneous assumptions on your part (e.g., “exclusivity” means “right to exclude”), but in the end, you passionately persist in believing you’re right. I cannot put off my work anymore; I need to get back to work so that I may bill the client (I am a former patent litigator with BigFirm who now practices patent prosecution).

    “More I cannot say.
    What more can I say?”
    (John Lennon, Number Nine Dream).

    I’m sticking a fork in this topic.

    And until the next new topic…

    …best of luck to you in your pro se endeavor.

  9. 29

    I.e., the result in eBay, upon tedious legal analysis, was Just not consistent with our Constitution.

  10. 28

    Jim, Hi again,

    I believe that a court should stop an infringement if that is what the patent owner wants unless stopping the infringement conflicts with: (i) the Commerce Clause (clause 3), (ii) the “common defence,” or (iii) the promotion of the general Welfare (in which case the court can exercise “eminent domain”).

  11. 27


    Do you realize that “i” relief is still available after eBay, but the patentee must prove the equities favor him?

    The eBay opinion simply means that a court will no longer rubber stamp “i”s.

  12. 26


    Sorry about the back-to-back messages, but the filter is playing havoc with me.

    Because royalties are available, do you think that the Framers would have objected to the eBay opinion with the Court having to apply the traditional analysis before issuing an injunction (the dreaded “i” word is used because that was the subject of the whole issue in eBay)?

  13. 25


    Even though you personally disagree with the opinion, do you nevertheless agree that — from our insightful and thorough technical legal analysis and the lengthy, light-hearted bantering between us — that the result in eBay was correct?

  14. 23

    Sorry, but, if that were the case, w/o the fear of an “i”, Mr. Big Business would not need to ever take a license until forced to after extensive litigation – indeed, if he voluntarily took a license, Mr. BB’s shareholders could sue him saying he isn’t doing his job (to not waste their money – Just tell the little inventor guy to fuc-off).

  15. 21


    “Do you agree that the Framers would not have objected to the Court stopping the infringer from infringing?, if that is what the patent owner wanted.”

    To the first half: Most certainly. They would not have objected to the court issuing the dreaded “i” word to enjoin the infringer.

    To the second half: No, not at all. I don’t know how you can construe the Patent Clause to make it “patentee’s choice of remedy” or “it the patentee’s call.”

    The Framers wanted only to secure a [single, sole, whole, and undivided] Right for the inventor, and if the inventor loses his attempt in court to stop the infringer, the Right in the invention nevertheless remains secured — it’s just the use of the invention that is not.

  16. 20


    Do you agree that the Framers would not have objected to the Court stopping the infringer from infringing?, if that is what the patent owner wanted.

  17. 19

    I also failed to finish my thought:

    …if that is what the patent owner wanted.

  18. 18


    I do agree.

    Do you agree that the Framers would not have objected to the Court stopping the infringer from infringing?

  19. 17


    No need to choose between “nonsense” and “poppycock.” It is moot.

    My sentence comprising of

    “In other words, the Framers intended on a one-time Compulsory License (without using these terms).”

    was wrong, hence, I was wrong. It is no excuse, but I failed to finish my thought.

    Please accept my mea culpa.

  20. 16

    Maybe “nonsense” would have been a gentler word than poppycock, but it doesn’t have the Happy Hour flair.

  21. 15


    You’re right. I failed to fininsh my thought and mis-typed. I meant to say that the Framers would not have objected to the inventor being granted monetary relief. Do you agree?

  22. 14

    Hello Leo,

    Just as I sit down with my Happy Hour Manhattan, there’s my friend Leo with his saga insight (õ¿Q).

    May I make a general inquiry — Whom among ye out there in Patently-O Land believes that:

    “In other words, the Framers intended [by the Patent Clause] on a one-time Compulsory License (without using these terms).”

    Maybe “nonsense” would have been a better word than poppycock, but it doesn’t have the flair.

  23. 13

    Unfortunately e6k is not around any longer, because after that you could have explained to him why Section 112 doesn’t limit inventors to a single claim.

  24. 12

    “Here’s the thing, with all due respect, that is poppycock. How you can suggest that after our discussion boggles my mind. Here are the Framers own Patent Clause words: ‘… by securing for limited Times … Inventors the exclusive Right to their … Discoveries.'”

    He’s got you there, Jim. Don’t say you weren’t warned. For your next project, you might want to consider explaining to Michael R. Thomas why he can’t have been the sole creator of every invention of significence (sic) since 1953.

  25. 11

    Dear Jim H.,

    With all due respect, I get the feeling that whatever opinion I advance, no matter how clear I make it, you will come up with a “lawyer’s” argument in rebuttal to avoid agreement.

    You focus on the notion of “injunction.” Please drop that notion and word from your thinking – as I’ve tried to explain, it has no demonstrable Constitutional connection to our intellectual discussion. Had the Framers used that word, perhaps they foresaw that it would allow lawyer’s argument dilution of what they said, what they meant and what they intended:

    “… by securing for limited Times … Inventors the exclusive Right to their … Discoveries.”

    You ask, in essence, how the Framers intended the Patent Clause “to promote the Progress of Science.” The answer is by encouraging Inventors to publish, period.

    You ask about the invention of the light bulb, internal combustion engine, transistor, or integrated circuit. The answer is: Inventors (a) want to see their invention put into practice and (b) want to make money. No Problem.

    The Framers only said “limited Times.” If you got a problem with “20 years” take it up with Congress.

    If you mean that “exclusive” also implies “single, sole, whole, and undivided” I agree, but I don’t follow the remainder of your thoughts in that penultimate 12:02PM paragraph.

    Finally, you say:
    “In other words, the Framers intended on a one-time Compulsory License (without using these terms).”

    Here’s the thing, with all due respect, that is poppycock. How you can suggest that after our discussion boggles my mind. Here are the Framers own Patent Clause words:

    “… by securing for limited Times … Inventors the exclusive Right to their … Discoveries.”

  26. 10


    A couple of more items…

    I quickly glanced Justice Story’s “Commentaries on Equity Jurisprudence (2 vols., 1835-1836),” and it is too long to read at this time. Any particular sections to where you can draw my attention.

    Second, don’t know if you were joking with respect to your commments about Amendment VII which appears to apply to cases of the common law. It begins “In Suits at common law…”. I’m not seeing how it applies to patent law. Also, I don’t believe the “re-examined” language of the Amendment is applicable to re-examinations in the context of patent law. 🙂

  27. 9


    With what you said, how do you square the following clause from Article III, Section 2:

    “The judicial Power shall extend to all Cases, in Law and Equity, arising under this Constitution, teh Laws of the United States…”.

    Federal Courts have power over cases in equity. As for patents cases, they could fall under “arising under this Constituion” (Patent Clause; law or equity) or “the Laws of the United States” (35 USC § 1 et seq (Patent Laws [of the United States]; law or equity).

    Our most recent discussions center on the “intent of the Framers,” and the language in Article III certainly reflects an intent that Federal Courts have jurisdiction over cases of both law and equity of Patent Laws.

    If you mean that Federal Courts didn’t exercise such power early in our country’s history, that may be and I don’t know; but the language certainly reflects the Framers’ intent to reserve Federal Court jurisdiction over both cases of law and equity over Patent Laws.

  28. 8

    The article you link to says: “The PTO’s finding of invalidity in re-exam seems to have been a tipping point for settlement, giving RIM a strong argument in court against the looming injunction, and eliminating, at least for the time being, NTP’s best leverage.”

    As I recall the sequence, the PTO issued its findings of invalidity and then there was a hearing in front of Judge Spencer where he was openly dismissive of the suggestion from RIM that the injunction should be put on hold in light of the fact that the PTO has issued final actions of invalidity (remember that it was before eBay). If the PTO decision had any effect on NTP it was only because they suspected that the Court of Appeal would stay any injunction.

  29. 7

    Good grief, JAOI and Jim. Federal courts did not even have equitable jurisdiction (only cases at lawl) in the first decades? (certainly years) of the Republic. Ergo, federal courts did not even have the power to grant an injunction (any injunction not just patents). After you won your federal ‘legal’ case – you could then ask a court of equity (state courts) to grant equitable relief. It was only after statutory authority was granted could federal courts sit as equity courts and grant equitable relief. Certainly an excellent topic for a law review. BTW cases at law at the time of enactment of the 7th amendment also implicate the current reexamination statutes (no jury or even Art III trier of fact under the 1999 amendments). Google books has Justice Story’s treaties on Equity online (“Story on Equity i think) – an excellent read of where equitable powers of federal (and state) court originate.

  30. 6


    First, you agree that the injunction predated the Constitution. Hence, if the Framers felt it necessary to direct an injunction for infringement, then I am sure the Framers would have included in Article III language to the following effect:

    “The judicial Power of the United States shall exercise the injunctive remedy of cease and desist upon a finding of patent infringement or upon the request of the inventor.”

    In my opinion, the lack of inclusion into Article III of such language means that the patent, although important enough to include in Article I, was not important enough to mandate injunctive relief in Article III.

    Second, assume for the same of argument that you are correct and that the Framers intended for mandatory injunctive relief? How then does this “promote the progress of science” if the inventor cannot share by insisting of injunctive relief (or such relief upon the will of the inventor)? If I invent the light bulb, internal combustion engine, transistor, or integrated circuit, and I have the right to elect exclusion, how then is the progress of science being promoted if others cannot use my invention for 20 years or risk infringement and accompanying damages? If your assumption is correct, then the progress of science would be hindered – not promoted—as you have argued. In my opinion, mandatory injunctive relief to exclude at the request of the inventor defeats the progress of science, and by force of logic, defeats the clear intent of the Framers’ so clearly expressed by them on the face of the Constitution.

    Third, “exclusive” is used as an adjective. Other synonym of “exclusive” that fit as substitute adjectives include “single, sole, whole, and undivided.” Let’s assume for the sake of argument that you are correct and that without injunctive relief, the Right loses being secured. Then, according to your argument, you lose the singleness of the right, the soleness of the Right, the wholeness of the Right, and the undividedness of the Right. If you step back at look at the Right in view of an injunction, you lose none of these features of the right. Do you still secure a single Right? Yes. Do you still secure a sole Right, i.e., is the Right solely yours? Yes. Do you still secure a whole Right, i.e., the Right is wholely yours? Yes. Do you still secure and undivided right? Yes. An injunction does not affect the attributes of this Right? While a denial of an injunction means you might have to share your invention under a Compulsory License, you as the patentee are still the only holder of the Right, i.e., you are the only one possessing a single, sole, whole, and undivided Right. It is by the very virtue of the Right that you get to get rewarded. The lack or denial of injunctive relief does not affect the attributes of the adjective “exclusive” that describes the Right. You still own the right – maybe just not the invention.

    Finally, by virtue of the Takings Clause, the Framers knew that an individual’s right to exclude others from trespassing on his property does not prevent a taking; if a taking occurs, the Framers insisting on just compensation. In other words, the Framers intended on a one-time Compulsory License (without using these terms). Now, would the Framers approve of interpretation given of the Takings Clause in today’s court? Probably not, but that misses the point. The point is is that the Framers (at the time the Patent Clause was crafted and not today) saw that takings may occur, and if so, monetary compensation (e.g., compulsory licensing) was adequate. I have no doubt that the Framers would approve of compensation for infringement, and in your words, a Compulsory License. If not, they would have included words to the effect of injunctive relief in Article III.

  31. 5

    Kudos to the Duffster. It must give him pleasure to think that one day, he’s sitting in his office thinking about a legal anaomoly and the next day, the entire U.S. Government is scrambling to its feet to fix ‘The Big Secret’ that some of them were hiding in the open through disregard.

  32. 4

    Dear Jim H.,

    Perhaps you will indulge my taking another crack at supporting my Constitutional opinion underlying the Supremes’ eBay ruling.

    Near as I can tell, the broad well-known notion of an “injunction” predates our Constitution, yet the Framers of the Patent Clause chose not to relate invention to an injunction. Instead, the Framers carefully used the terms “securing” (please see, e.g., definition 1 b: below) and “the exclusive Right.”

    The Patent Clause: “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;”

    Is it not plausible in your view that the plain meaning / clear intent of the Framers’ Patent Clause is / was to reward an inventor’s promotion of science thusly:

    “… by securing for limited Times … Inventors the exclusive Right to their … Discoveries.”?

    I believe this is exactly what the Framer’s said, meant and intended, because without “the exclusive Right” protection, an inventor’s discovery cannot be secured. And perhaps that is precisely why the Framers stayed away from invoking the well-known notion of an injunction.

    In stark contrast to the constitution of today’s Supreme Court, the Framer “folks – were – … as hot as all get out” (to borrow Alan Shore’s phrase).


    Main Entry: 2secure
    Function: verb
    Inflected Form(s): se•cured; se•cur•ing
    Date: 1588
    transitive verb
    1 a : to relieve from exposure to danger : act to make safe against adverse contingencies b : to put beyond hazard of losing or of not receiving : GUARANTEE c : to give pledge of payment to (a creditor) or of (an obligation)
    2 a : to take (a person) into custody : hold fast : PINION b : to make fast
    3 a : to get secure usually lasting possession or control of b : BRING ABOUT, EFFECT
    synonym see ENSURE
    – se•cur•er noun

    * * * * *

    PS: Thanks for you concern for my reply brief.
    I believe I found a “smoking gun” in the 70 pages of rambling by the Respondent-Appellee.

  33. 3


    There is at least one challenge out there in a § 145 review in the District Court of DC by an aggrieved applicant losing at the BPAI:

    link to

    Anybody care to check on the status? Check to see if Dudas has seized the moment and notified the court of the Duffy Provision just signed into law? Check to see the status, i.e., has a SJ motion challenging (as a question of law, i.e., no material facts to present) the constitutionality been filed?

    About the USSC petition in another matter (the caption of the case escapes me at the moment): I believe the Court is out until September and don’t think we’ll be seeing action on the petition until then.


  34. 2

    Still to be seen is whether the Duffy Provision can “retroactively” fix those appointments to the BPAI. May be Professor Duffy will speak to that issue.

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