Bits and Bytes No. 101: Patent Bill & the Patent Lobby

  • Reform: Today, the Senate Judiciary Committee met shortly and announced that an agreement is “close” on all of the controversial issues and that the compromise will result in a major overhaul of S. 515. Gene Quinn has instant-comments. Potential changes include: (1) codifying the existing law of damages rather than changing it – except that a judicial check on jury-awarded damages would be added; (2) eliminate “best mode” as a ground for invalidating a patent; (3) lowering the standard for post grant review to an “interesting question” rather than a “substantial new question of patentability.” We should see some language this week.
  • Reform: A reader sent me the following points on the potential agreed-to compromise Bill in the Senate:
    • Damages. The amendment will strike the contentious calculation of reasonable royalty damages provision and will replace it with the gatekeeper language developed by Senators Feinstein and Specter, which will provide more of a role for the judge to identify the appropriate legal standards and relevant factual contentions for the jury.
    • Inter partes reexamination. The amendment will strike the controversial “in public use or on sale” additions on inter partes reexamination.
    • Best mode. The amendment will retain the requirement that a specification contain the best mode of carrying out the invention as part of the patent application, but not allow best mode to be used as means to invalidate a patent.
    • Interlocutory appeals. The amendment will tighten the interlocutory appeals provision. The bill as introduced would have given the district court complete discretion whether to approve an application for interlocutory appeal of a claims construction hearing. This amendment will provide district court with specific standards that it must certify have been met.
    • Willfulness. The amendment tightens the willfulness provision to ensure is in line with the Federal Circuit’s decision in Seagate.
    • Venue. The amendment will strike the current subsection on venue, and replace it with a codification of the Federal Circuit’s recent decision in TS Tech.
  • Lobby Lobby: The IPO reports that “by early afternoon yesterday, 16 paid ‘line sitters’ were already in line in the corridor outside the [committee] room, holding places for lobbyists to be admitted to the room this morning.”
  • Patent Jobs: The Patently-O Job board has picked-up some steam over the past week. Here are some recent job postings.

23 thoughts on “Bits and Bytes No. 101: Patent Bill & the Patent Lobby

  1. 23

    I am planning to propose the following:

    (A) MARKMAN before DISCOVERY, and

    (B) DAMAGES ASSESSMENT after [finding of] INFRINGMENT.

  2. 20

    I agree that “interesting question” is a troublesome standard. Much like “reasonable man” and “person having ordinary skill in the art.” Just another attempt to make sure that litigators do not go unemployed.

  3. 19

    Mark Twain was right, Congress is the “insane asylum for the helpless.” Just when you thought Congress couldn’t do anything dumber, it surprises you with a new level of rhetorical nonsense: “an interesting question.” What in the world is that supposed to mean?

  4. 18

    “Because the most important thing is to keep the patent bubble inflated for as long as possible.”


    More “rhetorical nonsense” from the nonsensemeister.

  5. 17

    “Interesting question” standard would just be ridiculous. Without even going into the details, just the name itself crys out Ridiculous. Lowering the standard for reexamination would open the floodgates, and burden the PTO’s CRU (a small unit of examiners for reexams) even more. Unless patent reform increases the PTO budget, and increase the number for reexam examiners, this standard can singlehandledly cripple the U.S. patent system. Judges will not allow any stays of litigation pending reexamination/postgrant review, because reexams would take forever.

  6. 16

    Ya that one is a good patent i think i concieved it at bell south office in conversataion with the employees in ft myers.

  7. 15

    Paying in advance for a service, and then keeping track of how much credit you have against a service. Totally novel and nonbovious, especially when the storing is done digitally and there is “wireless” communication involved. Anyone who doesn’t read that patent, and its claims, and not think our system is very broken is drinking the PTO Kool-Aid.

  8. 14

    There close to agreement on making a human advancement retarding system even more than it already is.Arent they happy that intellectual property creation of significance has ground to a near stop do to there efforts.This bill does nothing to correct the vital issues and everything to discourage creative minds.

  9. 13

    “The amendment will retain the requirement that a specification contain the best mode of carrying out the invention as part of the patent application, but not allow best mode to be used as means to invalidate a patent.”

    Obviously this is a summary rather than the actual statutory language, but it sounds like best mode would remain a material element of patentability.

    So instead of arguing that the patent is invalid because of failure to set out the best mode, an alleged infringer will instead argue inequitable conduct because the patentee gave the wrong best mode or failed to set it out entirely? Or will the bill exclude best mode issues from inequitable conduct?

  10. 12

    (perhaps when there is MORE than a 16 % drop in new applications the tinkering will stop).

    Right. Because the most important thing is to keep the patent bubble inflated for as long as possible.

  11. 11

    >>let’s wait until ksr, bilski, etc. and new PTO >>management have had a chance to work before >>monkeying around with the patent statute


    Don’t you see, Congress would rather interfere with the statute (without knowing a scintilla about patent law – ask them what an office action is, I dare you), than let people who are relative experts in the field… the Supreme Court, CAFC, and the PTO (the authors of ksr, bilski…) make “reforms.”

    I agree, and predict another round of screwed up half policy being implemented by Congress that will create more confusion… (perhaps when there is MORE than a 16 % drop in new applications the tinkering will stop).

  12. 10

    >>let’s wait until ksr, bilski, etc. and new PTO >>management have had a chance to work before >>monkeying around with the patent statute


  13. 9

    let’s wait until ksr, bilski, etc. and new PTO management have had a chance to work before monkeying around with the patent statute

  14. 8

    LOL. “But this is all done without any wires!!!!”

    Did the PTO issue any valid wireless technology patents between 1995 and 2005?

  15. 7


    I have the OT catalouge. The following are the patents that were part of the pre-paid wireless lot:

    Telemac Corporation

    Featured IP Assets:
    US 6,480,710; US 6,625,439; US 7,406,305

    Related IP:
    US 5,577,100; US 6,198,915; US 6,650,887;
    US 7,245,901; US 6,725,031; US 5,325,418;
    US 5,625,669; US 6,243,574; US 7,058,386;
    US 6,138,004; US 6,424,827; US 6,836,655


    Patent Number:
    US 6,480,710

    System and method for managing prepaid
    wireless service

    Bernard T. Laybourne; Theodore W. Watler

    Issue Date:
    November 12, 2002

    Earliest Filing Date:
    July 16, 1998

    Representative Independent Claim:
    A method for managing a wireless prepaid service
    using a control arrangement and a wireless
    device having a memory, comprising the steps
    of: storing a device identification number, calling tariff data, an available amount and one or more programs in the memory of the wireless device; receiving a first signal from a telephone system, the first signal being indicative of a connection of a call; after receiving the first signal, modifying the available amount as a function of the calling tariff data and a length of the call using the one or more programs; and updating the calling tariff data in the memory of the wireless device using a first message sent via a data bearer communication service.

  16. 6

    As for those of you who participated in a completely off topic set of posts based on an obviousness rejection given to “me”, well, go read PatentlyO Bits and Bites No. 100 comments to “correct” your record.

  17. 4

    So we will get the “interesting question” standard for PGR and the “clearly more convenient” standard for venue.

    I have heard of the compromise as well, but the lobbyists I have heard from speak of a bit more centerist compromise…the deveil is the details, can’t wait to see the language!

  18. 3

    link to

    A patent for a prepaid wireless phone system sold for $1.5 million Friday at an intellectual property auction at the Ritz-Carlton in San Francisco, but the sale was the high point in an otherwise bleak event: Of the 80-odd high-tech patents offered, only six sold and just eight others attracted bids. …

    “Patents for a universal memory card and a mobile phone with programmable numbers sold, but buyers passed on many others – electronic exchange of tax information, 3-D navigation for gaming and so on.

    “In a recessionary period, people focus on what they need to have, not what’s nice to have,” said Jim Malackowski, Ocean Tomo’s CEO.


    Anybody have more info on that $1.5 million dollar “prepaid wireless phone system” patent. From the title alone, it sounds like a fantastic innovation, possibly days or weeks ahead of its time. But I’d love to see the claims.

  19. 2

    Meanwhile …

    link to

    Bummer Before the Summer: OceanTomo Auction a Bust

    “The first patent auction held by the firm since the economic crisis began did not go well. In fact, the sell-off proved even more anemic that Ocean Tomo’s loudest naysayers had predicted it would.”


    Gosh, er … nobody wants to buy pieces of paper with dumb computer-implemented garbage claims written on them? But why not?

  20. 1

    What kind of standard is an “interesting question”? Why not just change it to allowing a post grant review for anyone willing to pay the fee? I really don’t have any issues with lowering the standard, but if the new one is going to be as ridiculously low as “interesting.” Why even bother with a standard at all?

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