Bits and Bytes No. 125: Comments on Comments

  • Gil Hyatt’s attorney contacted me this morning and asked that a few “offending” comments be removed from the post associated with his case. I agreed that they were potentially problematic and removed them. Two discuss LL’s role as an examiner of HYATT’s cases. Because Hyatt’s applications were filed before 1995, those files are likely still secret and thus should not be publicly discussed. I also removed the “sleazeball” comments. As a reminder to commenters – you may appear anonymous, but a well heeled plaintiff could probably track you down unless you take special precautions. I have thus-far successfully resisted providing any identifying information to interested parties. However, I would obey a court order.
  • For PTO Examiners who Comment Regularly. I enjoy your comments and they helpfully reveal aspects of PTO operations that would otherwise be hidden. You should, however, occasionally re-read MPEP 1701: “Public policy demands that every employee of the United States Patent and Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or invalidity of, or the patentability or unpatentability of any claim in any U.S. patent, except to the extent necessary to carry out (A) an examination of a reissue application of the patent, (B) a reexamination proceeding to reexamine the patent, or (C) an interference involving the patent. “
  • Fraud not Inequitable Conduct: IPO executive director Herb Wamsley (writing as the IP LANGUAGE CURMUDGEON) argues that the term “Inequitable Conduct” is misleading. The doctrine does not follow a traditional balancing of the equities, but is seated in fraud. Thus, Wamsley “proposes scrapping the term ‘inequitable conduct’ in favor of ‘fraud,’ a term that is not very well defined in law either, but which better conveys the idea that patents should be unenforceable only if serious misconduct has been proven. If courts had to find ‘fraud’ before they could hold a patent unenforceable, perhaps they would apply the doctrine now called inequitable conduct only in cases of very clear intent and materiality” as the law requires. I think that Wamsley’s suggestion makes perfect sense.
  • IPO’s annual meeting is Sept 13-15 in Chicago: Link. Over 500 individuals (including yours truly) are already signed-up to attend this patent law powwow. This is probably the largest mixer of in-house patent counsel and patent attorneys in private practice. The only problem is the cost: IPO members pay $950; Non-Members pay $1,450; Inventors and academics pay $500.
  • Update on the Faculty Position at the University of Utah Law School200908142110.jpg : They are hiring, but may not have received your e-mail. “Due to a server switch, the email address facultyrecruitment@law.utah.edu was not functioning correctly for a few days in August. We sincerely apologize for this error. As of today, August 14th, the email address is once again fully functional. We encourage interested applicants to send their materials to us at that email address, particularly those who sent, or attempted to send, materials in the past two weeks, so that we can be sure that we received them.” [Read the Job Listing] [Klarquist Sparkman is also looking for an O-Chem Patent Attorney or Agent]

48 thoughts on “Bits and Bytes No. 125: Comments on Comments

  1. 48

    That Cohen lawsuit is in a different league entirely. The defendant made a blog devoted solely to trashing her. That’s a pretty far cry from making a solitary comment on someone else’s blog.

  2. 47

    “I know that this is at least the second time Moonbeams has stepped across the defamation line.”

    Looks like Babel Boy has been sniffing his fingers again. Please link me to the comment where “the patent holder … warned me about a year ago.” I have forgotten that somehow. But I certainly want to be prepared to defend whatever I might have said, by doing the necessary research in advance. You know how the law works, truth is the best defense, etc.

    It goes without saying that the patent bulls and Sunners around here would love nothing more than to threaten me (or 6 or any other commenter who occasionally derides the routinely dubious activities of patent applicants and their representatives) into silence.

    Then all that would be left would be the usual interests complaining about the PTO and trying to inflate the patent bubble … again.

  3. 46

    re: Moonbeams’ penchant for on-line defamation, with his best interests at heart, I posted a warning to him (and to LL) the day he made that “sleazball” comment and offered my legal services (at a discount), but Dennis deleted my comment, I believe because of a certain anatomical analogy I made, which it took me all night to come up with.

    I know that this is at least the second time Moonbeams has stepped across the defamation line. A patent holder warned him about a year ago after Moonbeams accused him of inequitable conduct. Third time should be a charm — a charm for some lucky civil attorney who gets to defend Moonbeams at $400/hr.

    BTW, here’s a timely article on how the courts can strip you of your e-anonymity in a heartbeat.

    link to huffingtonpost.com

    Play nice.

  4. 45

    I always liked Penn’s introduction to P$T’s first episode of Bullsh!t where Penn states (and I am praphrasing) – if we called these guys con artists and their actions fraud we could be sued for slander, but if we call them motherf***ers and their actions bullsh!t we are legally safe. –

  5. 44

    Actually, the point of my posts was merely to draw out a flaw in the court’s present indefiniteness doctrine. The weakness in the doctrine encourages applicants to write vagueness into their applications for the resaons I mentioned above. Perhaps this is merely taking advantage of the present status of the law, and not inequitable conduct. Good enough.

    The IPO post, seconded by Dennis, said “If courts had to find ‘fraud’ before they could hold a patent unenforceable, perhaps they would apply the doctrine now called inequitable conduct only in cases of very clear intent and materiality as the law requires.” The law does not require “very clear” intent, but merely intent, but the IPO wording suggests IPO thinks the inequitable conduct doctrine is applied too severely. Frankly, I think the opposite, the Fed Cir doesn’t find ineq cond unless they do in fact find very clear intent, so much so it has to stare them in the face.

    My practice involves a heavy dose of opinion work, and I often find that tactics employed in prosecution are often shifty and lack any amount of candor before the PTO, but would never be found as fraud under the present inequitabel conduct doctrine. There are often complaints about examiner’s not getting the gist of the invention, writing poor OA’s, or not following the bouncing ball in pat proc. I can’t blame them sometimes, since (in addition to LL’s comment above), they are faced with some applicants (not all applicants) playing hide the eight ball.

    If the indefiniteness doctrine were tightened up a bit then applicants would not be encouraged to write vague apps and play hide the eight ball during prosecution. If the inequitable conduct doctrine found fraud based on “intent” rather than “very clear” staring-you-in-the-face intent, then perhaps this too would encourage better (more candid) app writing and prosecution. Kappos has a load of issues to deal with, but I hope he does not blame poor patent quality and backlog entirely on the PTO and assume that all applicants are candid.

  6. 43

    “The clerk on the left strongly reminds me of a certain patent attorney of mature years whom I met in the 80’s (name forgotten, sorry). He had a practice near the PTO and sometimes helped out our NYC firm. Any ID’s?”

    Everybody wants to know who is the hottie.

  7. 42

    link to bit.ly

    The clerk on the left strongly reminds me of a certain patent attorney of mature years whom I met in the 80’s (name forgotten, sorry). He had a practice near the PTO and sometimes helped out our NYC firm. Any ID’s?

  8. 41

    “bring some civility to this forum”

    Getting rid of Mooney would be the best start. I believe he was the one responsible for the “sleazeball” comment (and I called him on it as usual) and generally sets the low water mark for civility around here.

  9. 40

    confused SCOTUS, I think you may be confusing actions that might constitute legal malpractice (intentionally drafting and getting paid to draft a likely invalid application) with inequitable conduct

  10. 39

    “What if the client requests the practitioner to prepare/file the patent application using vague descriptions and vague claims, and said practitioner does intentionally describe the invention using vague terms and vague claims? Inequitable conduct, or no?”

    Then the practitioner is putting the client’s application at serious risk of failing, but the answer to your question is still no. Absent false or intentionally misleading statements in the specification (I recall a case about an application that mischaracterized test results), the application is what it is. It either meets the requirements of 112 with regards to enablement and written description or it doesn’t. I don’t believe that there’s ever been a suggestion that the filing of an application constitutes an affirmative representation that the specification meets those requirements. Indeed, such a representation would often be hard to make – the requirements of 112 are evaluated with respect to what the description conveys to a PHOSITA. Neither the attorney nor the inventor needs to be a PHOSITA.

  11. 38

    confused SCOTUS,

    Please define vagueness. One person’s vagueness can merely be another’s broadness.

    Absent the largely missing intent prong, (that “somehow” is a mighty big “gimmie”), there isn’t a lot to discuss with your hypothetical. Are you asking if “vagueness” in itself rises to a materiality level?

    Put another way, is bad patent writing criminal? Fraud (and IC) smacks of criminal overtones (material AND intent). Vagueness is largely a subjective determination. To arise to criminal level, an argument that the application “could have been” written better (less vague), and meeting both material and intent prongs is difficult to fathom. There isnt’t anything that couldn’t be written better (and in the best self-depracating manner, including much of my posts).

    Regarding the subjective nature, how do you not conflate the examiner’s role? Something too vague should be rejected under 112. If accepted, then the examiner has, at least implicitly, made the subjective determination that the application is NOT too vague. Is your question more in regard to examiners who pass what you consider vague applications? Can an examiner’s subjective acceptance lead to an applicant’s criminality?

  12. 37

    In other words, is there a point at which intentionally injecting vagueness into a patent application can cross the line of what is candor or “equitable” before the PTO and constitute inequitable conduct?

  13. 36

    Okay, follow-up question. What if the client requests the practitioner to prepare/file the patent application using vague descriptions and vague claims, and said practitioner does intentionally describe the invention using vague terms and vague claims? Inequitable conduct, or no? What if we can prove (somehow) that the practitioner did in fact intentionally write the application in a vague way so as to get-around the PTO and get the case before the courts (with the presumption of validity)? Inequitable conduct, or no?

  14. 35

    “KSR smudges the lines between analagous art (When a work is available in one field, design incentives and other market forces canprompt variations of it, either in the same field or in another), so perhaps it is better that computers are used rather than searching papers.”

    Believe it or not, I’ve seen these “nonanalogous” arguments work at the BPAI recently to reverse the Examiner’s rejections – – BUT the cases were heard by panels of BIOTECH APJs surmising on what is or is not obvious in fields such as robotics and cryptography (i.e., arising from the MECHANICAL/COMPUTER art units) where they *obviously* didn’t understand the art.

  15. 34

    if the “vague” application deliberately withholds best mode or enablement information, maybe it is inequitable conduct? any thoughts anyone?

  16. 32

    Is it inequitable conduct (i.e. fraud on the PTO) to write a vague application including vague claims, knowing that the application will likely pass through the relatively more time-constrained and relatively less scrutinizing PTO (see LL’s comment above), and knowing that during litigation the courts generally take a soft approach to the written description and indefiniteness requirements (it is rare a claim is found indefinite), and therefore the patent owner, with relatively more time to formulate arguments, is provided with wiggle-room to “interpret” what the invention is at the time of litigation rather than at the time of filing?

  17. 31

    KSR smudges the lines between analagous art (When a work is available in one field, design incentives and other market forces canprompt variations of it, either in the same field or in another), so perhaps it is better that computers are used rather than searching papers.

  18. 30

    A big loss to moving from the paper to the computer is that examiners no longer know where the prior art is located/classified and can not find it again. And they do not learn the art any more.

    Odd as it may sound (though older examiners & searchers can back me up), the paper files gave you so many more sensory “hooks” to remember references.
    In addition to what the reference taught, there were written comments, as well as the tactile feel of the reference and the smell of the paper. (Smell is a very important memory trigger. How often do you guys smell a perfume & it reminds you of some old girlfriend?)

    With the computer we lost all of this & new examiners now struggle to learn what are in classes & subs & to learn the art in general. I often think that, assuming we had a good & active classification system again, examiners would be a lot better off, particularly to start, by searching paper instead of using the computer.

    thanks,

    LL

  19. 29

    Larry writes “I couldn’t imagine searching paper files. Talk about drudgery. Computers for the win!”

    One disadvantage of computer word searching is that a common word is found in a prior document and all of a sudden it has become analogous art.

    Searching paper files in the correct classes and subclasses did not have that result.

  20. 28

    link to people.bu.edu

    The inventor eventually overcame the Bilski rejections of the method claims, but claims to “propagated smoke signals” were rejected under Nuijten and are under appeal.

  21. 25

    If you guys like that picture you’ll love this thread about shoopin it.

    link to fark.com

    I’m going to start faving those so I can spruce up my site a bit. I’m trying to find some help amongst old site creators to do it but most of them haven’t done anything in years.

  22. 24

    >> Mark Nowotarski | Aug 15, 2009 at 09:00 PM
    I couldn’t imagine searching paper files. Talk about drudgery. Computers for the win!

  23. 22

    Okay, MM. If one thinks a particular patent of Mr. Hyatt’s is invalid, make an argument on why this is so. Has Mr. Hyatt ever threatened litigation against anyone simply for doing that?

  24. 21

    “There is no shortage of ways to criticize Mr. Hyatt within the safe harbor of the First Amendment, if that’s what someone wants to do.”

    Can you provide some specific recommendations, Andrew?

    Just curious.

  25. 20

    If a patent which I prosecuted and obtained for a client were to be litigated, would I (as the prosecuting attorney) rather be accused of fraud or inequitable conduct? Probably the latter, as it doesn’t sound as bad.

  26. 19

    Another way to solve the problem, Cooper, is to sign your posts with your own name, and post responsibly. There is no shortage of ways to criticize Mr. Hyatt within the safe harbor of the First Amendment, if that’s what someone wants to do.

  27. 17

    Morgan there is also some clause somewhere about if the subject matter in the application already published and is in the public domain the secrecy is somewhat limited. If you look inside some of the super secret dox from some of the appeals of secret cases you’ll see the app raisin a ruckus that his claim was published in the decision and the court cites some section and says it’s fine if the subject matter already published. I’m not sure specifically of the details on this, but that’s what you’ll find in those super secret dox.

  28. 16

    Who says that we don’t?

    I’m just a homeless person on the side of I-95. I have said as much since the beginning. Those of you who don’t believe me are mistaken.

    What makes you think you could scare off anyone is beyond me. You nublets think you’re the sht the day you arrive.

  29. 15

    Hey, where did 6 go? Did this finally scare him off? (crosses fingers)

    If examiners would stop identifying themselves as examiners, then they could comment on patentability or any other matter to their little hearts’ content without potential repercussions. Plus, not identifying yourself has the added bonus of aggravating Blimpy.

  30. 14

    Re: “Because Hyatt’s applications were filed before 1995, those files are likely still secret and thus should not be publicly discussed”

    I was told years ago that when an applicant appeals to the CAFC that the application file is no longer still secret, absent some kind of unusual protective order. Wrong? Also, have not some of the continuations, divisionals or CIPs with the same spec. issued?
    [Not to be confused with the MPEP 1701 restriction on Examiners whether the application is secret or not.]

  31. 13

    Who turned on the air care? It just got really chilly in here!

    “a well heeled plaintiff could probably track you down”

    Indeed. Well-heeled folks can do just about anything they want, no excuses necessary. Some may find that frightening, but that’s probably only because they are “asking for it” by making critical comments on a blog.

  32. 12

    The question should not be whether Gilbert Hyatt is a nice person or not, or whether he wins the high school “popularity” contest among USPTO examiners.

    The real question is whether ANY applicant who files under 35 USC 145 is entitled to “have remedy by civil action against the Director” and to have due process in such a proceeding, by for example presenting witness testimony or written declarations as evidence so that the case may be decided “as the facts in the case may appear” per the language of 145.

    I don’t understand why the comments on this site always descend into the ad hominem attack mode.

  33. 10

    I wonder how many rolls of toilet paper would be required to print all of Malcolm’s comments? That would be a hot seller. And Malcolm could market toilet paper rolls with all the “crap claims” printed on them. I wonder which set of rolls would be bigger?

  34. 9

    OMG OMG OMG OMG OMG OMG OMG OMG … I have to see these comments! Did anyone screenshot them? I didn’t read them because I thought the topic was boring until it got covered in the special drama sauce!!

  35. 8

    Thanks Dennis.

    I usually try to be constructive when possible & will continue to do so. I, like many inside & out, know that the PTO needs to make a lot of changes & improvements & try to push those ideas forward.

    thanks,

    LL

  36. 7

    LL – Thanks for the comment. I didn’t mean to imply that your posts violated MPEP 1701.

    I didn’t delete the first comment because it did not seem to be a problem. Your subsequent posts appeared to discuss the internal workings of how the PTO dealt with Hyatt’s applications. Those arguably violated some sort of confidentiality. I deleted them because they were questionable, although I don’t know if they crossed the line.

    Your comments have been very helpful over the past several years. Please continue.

  37. 6

    Dennis,

    You missed one of my posts. ๐Ÿ™‚ It was posted @ Aug 12, 2009 at 05:02 PM.

    Personally, I do not believe that any of my posts violated 1701. I tried to be very careful not to discuss any specific case or issue or subject matter from the cases. Nor did I even question the validity of his applications. My comments did not approach what the majority said in their decision. I primarily indicated my disagreement with the dissent. What little I commented about the prosecution, other than an explanation of his charts, was on the PTO side rather than Mr Hyatt’s.

    Actually, I explicitly stated, in comments you have since deleted, that I was NOT commenting, one way or the other, as to the validity of the disclosures of Mr. Hyatt to attempt to avoid such an issue.

    Further, my belief was that the court decisions in the case & associated materials were public, even if the actual specs & claims are not. So comments on such were believed reasonable. If I erred on that point, it was not intentional.

    Be that as it may, if somehow Mr Hyatt or his lawyers feel that any of my comments somehow divulged any material that was to still be secret or that I commented on the validity of his applications, such was not the intent & apologies are extended.

    thanks,

    LL

  38. 5

    “If printed, the pages would be sufficient to re-paper every wall inside the Patent Office.”

    Maybe this should be Kappos’ first project. ๐Ÿ™‚

  39. 4

    Dennis,

    Actually, inequitable conduct was, prior to 1977, called “Fraud on the patent office.” See In re Harita, 847 F.2d 801, 808 (Fed. Cir. 1988).

  40. 3

    “I just knew something like that could potentially happen with the Hyatt stuff. That was why I never said anything. And thanks Dennis, for reminding everyone about MPEP 1701.
    In other news, one of the parallel cases regarding PATENT TROLL tracker …”[emphasis added]

    LOL…the mask of faux civility dropped so rapidly.

  41. 2

    I just knew something like that could potentially happen with the Hyatt stuff. That was why I never said anything. And thanks Dennis, for reminding everyone about MPEP 1701.

    In other news, one of the parallel cases regarding patent troll tracker is coming up… “FINAL SCHEDULING ORDER: Jury Trial set for 8/31/2009 08:30 AM in Texarkana”

  42. 1

    Thanks for cracking down, Dennis! I would like to add that it does no good for our profession and the public image of our profession to write comments full of bickering, name-calling, and childlike insults. Does the anonymous shield of a computer screen really give us license to hurl invectives at our fellow men that we would never (I hope) use face-to-face?

    Let’s take this opportunity to turn the tide and bring some civility to this forum. Dennis has created a wonderful environment to learn about and discuss and even argue points of patent law. I believe that we can do so without degenerating into behavior unbecoming of professionals and adults.

Comments are closed.