Advanced Software Design v. Federal Reserve Bank of St. Louis (Fed. Cir. 2009)
Advanced Software’s patents relate to software methods of detecting fraudulent bank checks. The patentee sued three Federal Reserve Banks and Fiserv for patent infringement in Federal Court in the Eastern District of Missouri. On a preliminary motion, the district court dismissed the infringement claims – finding that the claims must be litigated in the Court of Federal Claims because the alleged acts of infringement were “for the United States.” 28 U.S.C. 1498(a). Section 1498(a) provides that the the Court of Federal Claims is the forum to redress unauthorized use of a patent “by or for the United States.” Under Sectio 1498(a), work is considered “for the United States” if it is (1) conducted for the US and (2) with “authorization or consent” of the US.
Advanced Software argues that the Federal Reserve banks are private entities and that the US government expressly avoided becoming a party to any contract relating to the technology at issue. As such, the Federal Reserve’s alleged infringing activities should not be considered activities done “for” the US.
On appeal, the Federal Circuit affirmed the dismissal – finding that the proper forum is the Court of Federal Claims. In particular, the court noted that no particular or explicit authorization or consent is required.
The most interesting aspect of the decision is that the Federal Circuit appears to have allowed the US government to take-on liability post-hoc. In the appeal, the US government filed an amicus brief and was offered time to argue. During that argument, the government gave its authorization and accepted potential liability under Section 1498.
K. Can you also try and explain to me why MM defends this unfair rejection policy (assuming MM is not an Examiner desperate to reject the claims when no good art is available)?
“But if you try to observe which slit the photon passes through, the interferecne pattern disappears. ”
Actually I’ve personally tried to observe it before and it didn’t disappear. If you simply use your eye nothing happens to the pattern and the interference continues unless you put your eye in the way. It’s only when you use a special setup to try to observe it that it gets all pissy and says it won’t make you a pattern at all.
“Why?”
I’ll trade you my copy of what the bleep do we know and the sequel for your copy of chisum for awhile.
I’ll warn you though, it gets kinda boring.
In a nutshell though, personally I say it is because the path of the light particle is a wave of “probability” and thus the path of the light doesn’t exist in a SPECIFIC WAY until observed. That is, it exists in both ways (both slits have the particle’s path going through it) until you observe it. Since it doesn’t exist in either specific way the probability wave interferes with itself as any wave would do.
That is to say, the interference pattern occurs if you don’t try to observe the photon at either slit because the photon’s path has not yet been set. However, by observing it you destroy the probability and thus the the interference which the probability was causing, and set the path.
Of course Feynman’s Double slit presents some related things.
link to upscale.utoronto.ca
(there are two refs at the bottom as well)
Iirc all that above are currently the most accepted answers in the field. But there is a fair amount of disagreement because nobody really knows wtf they’re talking about.
In simple terms, “there is no fate (or reality or double slit pattern or path) but what ‘we’ make”. A lot of people on these here boards don’t like that answer tho.
I’m also available for 25$ per hour to help you further.
It’s also like the famous double slit experiment. If you shoot a photon through two parallel slits, there will be an interference pattern liek the one that is produced when a wave of water passes through two slits. But if you try to observe which slit the photon passes through, the interferecne pattern disappears. Its as if you had covered one of the slits and made a wave though it, and then covered the other slit and made a wave though it. But it happens even if you try to detect the photon at both slits simultaneously, and only send one photon. The interferecne pattern only occurs if you don’t try to observe the photon at either slit, even though you send only one photon. Why?
It’s like when my quantum mechanics prof years back told me this. If we observe a particle and measure its position, and then stop observing it briefly and observe it again, it will be in the same place. But if we stop observing it for a longer period of time and then observe it, it will have moved to a random position within a range of possible positions. I can’t understand why. I need someone to explain it to me. Remember, I said “why.”
“I can’t understand why you would defend this type of unfair rejection policy.”
can’t broje, or prefer not to?
And let me just add, I think that result is symptomatic of this recurring problem. If the Examiner can’t find a reference better than one that teaches something so incompatible with what you are doing, that should tell you to get ready for a ridiculous and unreasonable rejection.
I can’t understand why you would defend this type of unfair rejection policy.
“there is nothing per se wrong with “a reference applied that teaches “A welded to B,” where the claims recite “A movably connected to B.”
Nothing at all.”
I disagree. It strikes me as ridiculous. I certainly don’t agree that the Examiner could sestablish a prima facie case by citing only that one referecne and saying a movable cionnection would be a known alternative from a range of known alternatives. They are not remotely equivalent, especially in the context of the art in question.
I think the Examiner would need to cite an additional reference teaching a movable connection of some kind.
In the case I am working on, the Examiner cited a refertnce showing A welded to B, and citing another reference showing A movably connected to C. But if you used the type of movable connection he cited to connect A and B, the result would be truly comical, until someone lost an eye.
Most of the comments here are not on point. This case wasn’t about patent validity or whether infringement had occurred. It was about whether the infringement had been done for the benefit of the United States Government, in which case 28 USC 1498 gives jurisdiction to the Court of Federal Claims.
The Treasury Department had asked the Fed to do something, and that made the Fed a Government contractor, with the protections of a contractor under 28 USC 1498.
Under 28 USC 1498, the Government or its contractors can infringe any patent at any time, without giving notice to the patent holder, and maybe pay damages later if the Government loses in the Court of Federal Claims.
DoD routinely does this. Patent rights do not confer an advantage in bidding on DoD contracts. DoD is free to award a contract to a bidder which must infringe to perform on the contract, and DoD will do so if the infringer’s bid is lower. As a result, the National Defense Industrial Association advises its members to use trade secrets, rather than patents, to protect their technology.
This has been going on in the DoD world since World War I. In 2001-2002, though, it came up in a drug patent context. The Secretary of HHS suggested that this provision be used to have generic ciprofloxin manufactured in bulk to prepare for an anthrax epidemic. The lobbyists for Big Pharma were horrified, and descended on Washington. HHS backed down. (See “http://www.cptech.org/ip/health/cl/cipro/” for background documents.)
broje: “But I guess it just as easily falls out in the analysis that combining the references would achieve an inoperable result. It certainly would in the case I’m dealing with.”
Only you can say. But going back to the original proposition, there is nothing per se wrong with “a reference applied that teaches “A welded to B,” where the claims recite “A movably connected to B.”
Nothing at all.
“That’s not the opposite.”
You’re the only one bringing “opposite” into the discussion. The rest of us discuss the issue in terms of “different” and “same”.
“It’s not some overlapping range of values in which some criticality is required.”
I wonder why you cited that case if it is so easily distinguished?
“But I guess it just as easily falls out in the analysis that combining the references would achieve an inoperable result. It certainly would in the case I’m dealing with.”
That’s more persuasive anyway.
“‘Ricoh offers no explanation as to why EP ’272’s teaching of a particular type of medium limited to use below 5.0 m/s would criticize, discredit, or otherwise discourage a person of ordinary skill from using the write strategy of EP ’272 at speeds beyond 5.6 m/s (the upper limit claimed by EP ’272) when writing to optical media not limited to use below a speed of 5.0 m/s.'”
That’s not the opposite. “Rigidly welded” is the opposite of “movably connected.” It’s not some overlapping range of values in which some criticality is required.
As I already said, in Dystar, the parties agreed that there was no explicit teaching away. That in no way impacts whether an explicit teaching towards one thing is an explicit teaching away from the opposite.
But I guess it just as easily falls out in the analysis that combining the references would achieve an inoperable result. It certainly would in the case I’m dealing with.
broje, you stepped in it. It’s okay to admit the mistake and back off. No biggie. As you are aware, we all make mistakes.
“It follows that if a reference teaches towards that which is diamterically opposed to… the claimed invention, it must teach away from it.”
Um … no. As noted upthread, your own cases (Dystar, Ricoh) disagree.
Another goodie from the same case:
“Ricoh relies on this same “teaching away” to support its assertions that the linear speed range of 5 m/s to 28 m/s claimed in the ’109 patent is an unexpected result over the teachings of EP ’272.”
You’re doing exactly what Ricoh did. Asserting a “teaching away”, notice the quotes.
“”A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be … led in a direction divergent from the path that was taken by the applicant.””
Why find something “overruling” when you can simply point out the proper context of the quote?
“Referring to the statement of inferiority in the Yamaguchi reference, Mr. Gurley argues that Yamaguchi “teaches away” from Gurley’s invention. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. See United States v. Adams, 383 U.S. 39, 52, 86 S.Ct. 708, 714, 15 L.Ed.2d 572, 148 USPQ 479, 484 (1966) (“known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness”); W.L. Gore & Assoc, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550-51, 220 USPQ 303, 311 (Fed.Cir.1983) (the totality of a reference’s teachings must be considered), cert, denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984); In re Sponnoble, 405 F.2d 578, 587, 160 USPQ 237, 244 (CCPA 1969) (references taken in combination teach away since they would produce a “seemingly inoperative device”); In re Caldwell, 319 F.2d 254, 256, 138 USPQ 243, 245 (CCPA1963) (reference teaches away if it leaves the impression that the product would not have the property sought by the applicant). ”
link to precydent.com
It doesn’t really mean what you want it to mean.
One could also simply tell you to read your own case citation:
“Ricoh offers no explanation as to why EP ’272’s teaching of a particular type of medium limited to use below 5.0 m/s would criticize, discredit, or otherwise discourage a person of ordinary skill from using the write strategy of EP ’272 at speeds beyond 5.6 m/s (the upper limit claimed by EP ’272) when writing to optical media not limited to use below a speed of 5.0 m/s.”
Careful broje, you better check your person for deathhead moths.
MM, I don’t know where you will possibly find such a holding. Maybe you could start by looking for a decision that directly overrules this:
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be … led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)).
Just trying to be helpful.
“Maybe you need to go back to beginning of our conversation where I challenged YOUR notion of what “teaching away” was.”
MM, on second thought, I would like a cite. Please provide a cite to a case holding that teaching towards something is not a teaching away from the opposite. Thanks in advance.
>>ROTFLMAO. And then they went to the PTO to >>examine software patents.
It would be intereseting for you to actually invent something, MM. Try. See how easy it is.
You may find that your attitudes change when you actual try.
broje: “See Schenk v. Norton as discussed at MPEP section 2141.02 an invention is non-obvious if it is contrary to the understandings and expectations of the art.”
That is the most worthless statement of what is or isn’t obvious that I have ever read.
“The Dystar case established that the Court will not read into a reference a teaching away where no such language exists.”
Thank you, I knew that. Maybe you need to go back to beginning of our conversation where I challenged YOUR notion of what “teaching away” was.
“That’s not “teaching away.” Do you know what teaching away is? Do you need a case cite?”
MM, I think you are the one who needs a case cite or two.
See Schenk v. Norton as discussed at MPEP section 2141.02 for support that an invention is non-obvious if it is contrary to the understandings and expectations of the art.
These days, the BPAI likes to cite to the Dystar case. The Dystar case established that the Court will not read into a reference a teaching away where no such language exists. In that case, the parties admitted that no such language exists.
Dystar further states that whether prior art suggestions teach away or toward the claimed invention is a finding of fact that is a “subsidiary requirement” of the “scope and content of the prior art” Graham factor. See Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed Cir. 2006).
Here, they framed the issue as teaching away versus teaching towards. That is how the issue has been framed for decades. If a reference teaches away from the claimed invention, it cannot teach towards it. It follows that if a reference teaches towards that which is diamterically opposed to or completely incompatible with the claimed invention, it must teach away from it. There are District Court cases acknowledging that teaching towards one thing teaches away from the opposite.
That teaching towards one thing is necessarily a teaching away from the opposite is a conventional wisdom taught in your typical patent law class. Maybe you should take one of those.
“MM, what do you think “long felt need and failure of others” refers to?”
I think it means that there is evidence in the art of people saying “It would be great to have this but nobody has figured out how to do it yet.”
It certainly does NOT mean “nobody previously did this in this particular way before.”
“Your pencil and eraser comparison and your bag slots comparison are not illustrative, because there are no problems being solved.”
Coming up with a “problem” that is “solved” by an invention requires very little imagination, broje. Every invention solves a “problem”. In certain circumstances, a 9 creased bag opening has advantages over a 12 creased bag. The advantages may seem trivial and ridiculous to others, but let’s face it: that has never stopped anyone who wanted a patent from filing an application.
“I used to teach business students computer science long ago and I remember that the concept of a folder holding files on a computer was terrible difficult for most people to understand.”
ROTFLMAO. And then they went to the PTO to examine software patents.
Now Jame’s trying to steal my “assail thee” thunder.
I haven’t had an update from the examiner tracking my kills, but I think I am up to 107%.
“LOL. The old “reverse hindsight” argument. If the paper bag with ten creases at the opening was so obvious, then why does the prior art bag have only 9 or 12 creases? Take that Examiner! I assail thee!”
MM, what do you think “long felt need and failure of others” refers to? If it solves a problem that’s been around awhile, that’s enough evidence of non-obviousness to shift the burden back onto the Examiner. Your pencil and eraser comparison and your bag slots comparison are not illustrative, because there are no problems being solved.
“suddenly the mob thinks it is oh so easy and they could have done it.”
If they couldn’t have done it then it likely wasn’t enabled in 90%+ of cases. Cases that actually explain “how to do” some new technical concept are few and far between. And when they do happen then it is somewhat rarer for the mob to think they could have done it.
“I used to teach business students computer science long ago and I remember that the concept of a folder holding files on a computer was terrible difficult for most people to understand. And these were students in an elite school who had done very well in high school.”
I told you stup id comes in all shapes and sizes.
“The problem is that the reference teaches the exact opposite of what is claimed. It teaches towards connecting A and B in a rigid, non-movable manner. Therefore, it teaches away from connecting A and B by a movable connection.”
Broje surely you know that is not teaching away. That is teaching something different. There is a difference. I know, I know, you just spent the last 20 years arguing wrong, but it is never too late to rectify your practice.
“I dare say that when the level of ordinary skill in the cryptography field is pretty high – certainly higher than simply having heard of it.”
Little kids practice your “art”. I dare say it isn’t all that high.
“I simply argued that in this case, a PHOSITA would understand quite clearly what the claim term meant, even if you don’t. You’re not very good at staying on point, are you?”
And I asked what the term meant specifically. You’re not very good at enunciation of this are you?
Either it has a specific answer or it does not.
“One laptop for 1 day sounds pretty practical to me. A million laptops for 100 years was probably not so practical at the time of filing. Fortunately there aren’t very many people marketing “practicably irreversible” cryptographic schemes that can be reversed in a day. Surely you can do better than that.”
2 laptops? 2 days? Is there a graph of when practical becomes impractical as plotted as a ratio of computing power to time? Maybe you can show me that graph? Or simply tell me when it becomes impractical for either category. 3, 4, 5, 10, 50, 100, 1000 laptops? 3, 4, 5, 10, 50, 100, 1000 days? What if the person doing the decryption is a hacker with 1 million slaved laptops? Is it a practical decryption if it takes him a day or two?
Relative terms, killin your claims bra.
>>Society comes out ahead because, at any given >>time, anyone can practice the patent with >>a “lame” scheme or pay a premium to the >>patentee for a “very good” scheme.
Or maybe there were other methods that used encryption that weren’t very good. Maybe some type of encryption that could be decrypted with a pencil.
What I find amazing is that once an invention is laid out before the mob to see with explanations on how and why it works explained by highly paid writers suddenly the mob thinks it is oh so easy and they could have done it. Yeah, sure you could have.
MM you couldn’t invent your way out of a 9 crease paper bag welded to a pencil. And I’ll bet you couldn’t figure out an invention unless it was laid out before you with someone holding your hand and explaining the invention.
I used to teach business students computer science long ago and I remember that the concept of a folder holding files on a computer was terrible difficult for most people to understand. And these were students in an elite school who had done very well in high school.
I enjoyed reading that, Mr Gur. Found myself nodding along and enjoying the positive take on things. Thanks.
I did not review the patent but it seems that although one can argue whether “practicably irreversible cryptographic scheme” is clear or not, it does not really seem to matter.
Apparently the term “practicably irreversible” is synonomous with “really good”.
If there was 102 art including all the other steps but using a “regular” cryptographic scheme, then using a “really good” scheme would probably be obvious and the patent would not have been allowed.
The excellent examiner probably realized this and decided, instead of getting easy counts and wasting everyone’s time, to allow the patent.
The only one who might be hurt is the patentee who chose to add the feature “really good”, giving a possible infringer the chance to prove that an alleged infringing product used a “lame” scheme.
Society comes out ahead because, at any given time, anyone can practice the patent with a “lame” scheme or pay a premium to the patentee for a “very good” scheme.
Ned, a comment on who litigates patents in England.
A generation ago, infringers kept their powder dry, and Plaintiffs were always patent owners. Currently, it is not like that at all. As often as not, Plaintiff is a generics manufacturer, taking the patent owner on, close to the end of the patent term, and “clearing the way” for the market launch of the generic product. The courts are there to serve the needs of business people, competing for customers. They are doing that task expertly, just at the moment. You want a final decision on patent validity within 15 months? Get one in England. In Germany forget it, for it will take you 7 years.
The English courts BTW are brutal with litigants who waste their precious time. The UK sees litigation as a “last resort” to solve a patent dispute. By contrast, in Germany it is more or less a “first resort” to go and see Uncle Judge. Think of litigation in civil law mainland Europe as “ADR with injunctions”. Horses for courses. In “Europe” there’s a rich tapestry to examine, if you have a patent dispute there. Every culture in Europe has its own way of doing things. You need advice from an expert who can operate across these various cultures (and isn’t just peddling the dubious merits of his home jurisdiction).
MaxDrei, thanks for your response. Obviously the British and the old US system, pre-reexamination, have much in common.
I assume there is nothing like reexamination in England. If so, I will begin seriously thinking about litigating there first. The presence if reexamination in the US is already seriously undermining the US system.
“Removable” is an excellent claim term to debate. Take a van with variable load space, characterized over the art by “removable” rear seats. But wait. How about the driver’s seat? Might that be “removable” too (even if it takes a little longer)?
Ned, you ask me to compare the German twin track system with the English way of patent litigation. Being myself British, I of course advocate the English view and am sceptical about deciding infringement in the Duesseldorf OLG and validity in the Munich BPatG. My colleagues tell me that the judges are careful to confer, so they all construe the claim the same, and everything ends up all together in the Supreme Court in Karlsruhe anyway, but I can’t say I’ve seen much sign in Germany of the “squeeze arguments” that are at the core of English patent litigation. Typical of a squeeze argument is (in a nutshell): “The claim means either A or B. If it’s A then it is wide enough to include within its scope subject matter that is old or obvious. If it’s B, then we don’t infringe. Which is it to be?” Often, patent owner can’t come up with a way of interpreting the claim that navigates between these two rocks. One supposes that in Germany, meanwhile, it’s A in Duesseldorf….and B in Munich.
broje: “If it were so obvious, why was it not implemented sooner?”
LOL. The old “reverse hindsight” argument. If the paper bag with ten creases at the opening was so obvious, then why does the prior art bag have only 9 or 12 creases? Take that Examiner! I assail thee!
broje “The problem is that the reference teaches the exact opposite of what is claimed. It teaches towards connecting A and B in a rigid, non-movable manner. Therefore, it teaches away from connecting A and B by a movable connection.”
That’s not “teaching away.” Do you know what teaching away is? Do you need a case cite?
Znutar: “My beef, shared at least by broje and curious, is with the leaps of logic that tranform red into green because the specification didn’t define green as being between wavelenghts x and y.”
An impressive non-sequitur, meaningless without context.
MM – what’s 103 got to do with it? I kicked off this particular line, so I’ll put one more post into it.
My beef, shared at least by broje and curious, is with the leaps of logic that tranform red into green because the specification didn’t define green as being between wavelenghts x and y. The burden should be on the examiner to offer plausible rationales for claim constructions, not bare assertions that opaque membranes are transparent, etc. Or, in your hypothetical, the eraser is “removable” because I took a pair of pliers and voila the eraser came right off! I have my own issues with how 103 is applied, but I didn’t come here today to stand on that soapbox.
I leave you with a quote from Catch-22 in which Yossarian is in a hospital editting soldiers’ letters. I think it’s a model for examiner training, I’m afraid:
“Death to all modifiers, he declared one day, and out of every letter that passed through his hands went every adverb and every adjective. The next day he made war on articles. He reached a much higher plane of creativity the following day when he blacked out everything in the letters but a, an and the.”
“Sample claim:
1. A process for enhancing the security of a cheque, comprising:
selecting information, A, found on the cheque wherein said selected information varies for each instantiation of the cheque presented by the same payor; …..”
zzzzzz
If you were worth your salt Mooney, you’d be getting paid to write claims.
MM, “Please explain why it would be wrong for such a reference to be cited against any such claim in the context of an obviousness argument.”
The problem is that the reference teaches the exact opposite of what is claimed. It teaches towards connecting A and B in a rigid, non-movable manner. Therefore, it teaches away from connecting A and B by a movable connection. Moreover, the movable connection is significant. It avoids a serious problem of the prior art. If it were so obvious, why was it not implemented sooner?
Interesting. Thirty one comments, none of which so far as I can tell have any bearing on the case at hand.
Merely as an aside, having read the opinions of both the CAFC and the court below I have not a clue whether or not the plaintiff could have maintained a suit in district court against FISERV. Specifically, were one or more of the “sell”, “offer to sell”, and “import” rights implicated in any manner? Each decision waxes poetic about “technology”, but does not define what the term means, so I am in the dark about what is was that FISERV actually did.
This is an important point in 1498 litigation so long as the statute continues to be viewed as a “waiver of sovereign immunity” that is to be narrowly construed. (See, e.g., Degraffenreid v. US (COFC) and Zoltek v. US (CAFC))
MaxDrei, no doubt the EPC is brilliant; but it is only a half-measure without the enforcement side.
What is your view on deciding both validity and infringement in one court with one claim construction for both? That was also a major recommendation from your noted UK jurist.
broje: “For example, I’ve recently seen a reference applied that teaches “A welded to B,” where the claims recite “A movably connected to B.”
Please explain why it would be wrong for such a reference to be cited against any such claim in the context of an obviousness argument. I know that’s how certain art units operate (low-level inventions demanding low-level creativity among all parties involved in the prosecution, including the Examiner) but seriously. Would you whine about a rejection of a “A pencil with a removable eraser” in view of a prior art pencil with a glued-on eraser and further in view of a stand-alone eraser plus separate pencil kit?
Yawn. How many times must I repeat it? The EPC (from 1973) is brilliant, but the post-issue landscape for patent litigation in Europe is something else again. Are we in this thread still not able to distinguish the substantive law of novelty, obviousness, clarity and enablement (as developed by the EPO) from procedural law relevant to infringement actions (as developed peicemeal, by national courts in Europe). The EPO is pan-European, the patent litigation environment in Europe most decidedly….NOT.
BTW, read the EPO file wrapper. The DSS Euro-patent is clearly invalid. So there.
Regarding the bank litigation in Europe: The PO sues the European Central Bank in the European court, and his case is dismissed. The Bank appears to be located in Germany, so I presume the patent employed was the German national patent from the base European patent. The Bank responds by filing nullity actions across Europe – probably in every jurisdiction the patent is in force. To date, the patent is upheld in Germany, The Netherlands; and held invalid in England and France. I have no idea where the PO is suing for infringement, if at all. But it would appear to me that a single lawsuit in a German national court might be sufficient to effect the whole EU. But the problem is, the German national court may not have jurisdiction over the European Central Bank. If this is true, the PO has no remedy whatsoever.
In the UK, a prominent jurist states the EU (patent) litigation system is a shambles and is an embarrassment. He calls for reform in two measures: 1) a forum to resolve EU-wide disputes and 2) a system where validity and infringement are decided at the same time — dispensing with separate validity challenges.
Now, it is interesting to me how many in the US like to cite to Europe as a better, more perfected patent system than the US, when the exact opposite appears to be the case. Forcing the PO into numbers of separate validity challenges where the one side is financed by the government and the other by the PO has one primary objective: to financially drain the PO ’till he gives up and to teach future PO’s, who might even momentarily consider suing a EU government entity, a lesson they should never forget — that your patents are worthless even if valid. You cannot win, as even if the right is on your side, the might is on ours.
Such a system is decidedly and unambiguously anti-patent and anti-inventor.
“‘You gonna tell us that you’re an expert in cryptography as well as leet?’
Is one of ordinary skill an expert? News to me.”
I dare say that when the level of ordinary skill in the cryptography field is pretty high – certainly higher than simply having heard of it.
“Poshita accepting relative words in their vernacular doesn’t necessarily make relative words A OK for claims. It might, but it might not.”
I never argued otherwise (except that I only have a guess at what a “poshita” is, and you might well qualify as one of those). I simply argued that in this case, a PHOSITA would understand quite clearly what the claim term meant, even if you don’t. You’re not very good at staying on point, are you?
“… how much time I would need to spend before it is deemed ‘not practical’? …A laptop? 1 day?”
One laptop for 1 day sounds pretty practical to me. A million laptops for 100 years was probably not so practical at the time of filing. Fortunately there aren’t very many people marketing “practicably irreversible” cryptographic schemes that can be reversed in a day. Surely you can do better than that.
“Is pig latin ‘not practical’ to reverse?”
Apparently you can’t do any better than that… It’s pretty practical to reverse pig latin, so you’re perfectly free to use pig latin to secure your checks.
You’re welcome.
“n cases like this, we often have to appeal to get the rejection withdrawn, but then we get another equally ridiculous rejection in its place. That’s what happens when Examiners can’t find the art, but are forbidden to allow anything.”
yes, this happens frequently
Znutar said, “you get ‘Lee teaches a flexible connector (see rigid member 23; examiner notes that anything will flex if you hit it hard enough).'”
In case anyone was wondering, Znutar is not exaggerating at all. We really do see fudged rejections like this one all the time. For example, I’ve recently seen a reference applied that teaches “A welded to B,” where the claims recite “A movably connected to B.” This was a primary Examiner. In cases like this, we often have to appeal to get the rejection withdrawn, but then we get another equally ridiculous rejection in its place. That’s what happens when Examiners can’t find the art, but are forbidden to allow anything.
Max: “how’s a poor judge to decide?”
Come on, Max. Words like “flexible” are commonplace in claims. Here’s a decision on the word “smooth.” How’s a judge to decide whether something is smooth?
“We hold that smooth means smooth enough to serve the inventor’s purposes, i.e., not to inflame or irritate the eyelid of the wearer or be perceived by him at all when in place.” Bausch & Lomb, Inc. v. Barnes-Hind 796 F.2d 443
These terms make sense to those of ordinary skill, but those of ordinary skill are not the ones sitting in the PTO. Instead you get “Lee teaches a flexible connector (see rigid member 23; examiner notes that anything will flex if you hit it hard enough).”
Hang on there MaxDrei,
The inventor is presumed to know the best way to describe his/her invention before the USPTO. The inventor may be represented by a lawyer or agent.
“No dispute.” Don’t be silly. Terms of art seldom have a precise definition. I am one skilled in in an art and I could write a book about the different ways experts in my art use terms of art.
Terms of art should be permitted to be used. Simple. 6 should see that if an inventor wants a term of art in the claim that it is the examiner’s responsibility to make an effort to understand the term of art. Simple.
And I like to think that I am an excellent claim drafter. Thank you very much.
Well thanks for the answer Night. You speak for yourself and your own drafting difficulties. You raised my eyebrows, but that’s what these threads are for.
If I want to bill USD 800 (or even USD 200) per hour for drafting services, then I want it to be a hard task. If it were easy, I would not be able to bill so much for an hour of my time. I find it astonishing that you write that the inventor is the best person to draft claim 1. I like to think that there is no mutual exclusivity between 1) using the correct terms of art and 2) writing a claim that’s clear. The point about terms of art (or established terminology) is that there is no dispute, between one PHOSITA and another, what they mean. Even so, relative terms can still be unclear.
This last limitation :
comparing the first control code with the second control code and refusing to honour the cheque if the first and second control codes are not identical.
is so easily gotten around (by using a system where the codes must differ by 1 for example), that one wonders why someone would infringe the patent…
>>And isn’t 6 just doing his public duty, in >>denying issue to unclear claims? He might get >>a bit over-zealous, from time to time, but >>then it’s time for calm persuasive lawyering, >>to help him see the error of his ways.
No. Here in the States there is a presumption that the inventor is the best person to describe his invention. There are many terms that used in the arts that are difficult to describe in other ways. If the inventor wants to use a term that is understood in the art, they should be allowed to do so. Their attorney/agent knows that it might turn into a battle of the experts in court. So what. That may be better than alternative claim language. It can just be hard to impossible sometimes to come up with claim lanaguge that doesn’t use these terms of art and yet captures the invention.
We observe here an argument between an Exr and a layman. Bit embarrassing really. But imagine up before the court for construing, a claim containing a relative term, say “flexible”. Defendant contends “Mine is very definitely NOT flexible, your Honour. It’s rigid.” Patent owner avers “Your Honour, anybody can see that his thing is indisputably flexible, in accordance with the claim”. How’s a poor judge to decide?
Might not that unfortunate judge castigate the poor PTO Examiner, for ever letting through to issue a claim that contains a relative term? Might not the warring parties BOTH castigate the poor Examiner, for causing them so much time and trouble, to litigate what ought to have been an open and shut case?
And isn’t 6 just doing his public duty, in denying issue to unclear claims? He might get a bit over-zealous, from time to time, but then it’s time for calm persuasive lawyering, to help him see the error of his ways.
>Finally, what happens 10 years from now when we >have the equivalent computing power in a laptop >as deep blue currently provides? Does the scope >of the claim magically change? What infringes >the day of issue no longer infringes 10 years >from now? Practicality. Fin your claim bra.
We all know that in court it is at the time of the invention.
“It means that it is not practical to reverse the cryptographic scheme”
Oh, just “not practical”? How “not practical”?
Poshita accepting relative words in their vernacular doesn’t necessarily make relative words A OK for claims. It might, but it might not. If it can be established, factually, that it could mean several different things and the accused infringing device is one of those “different things” then you’re in for a fight. TO THE DEATH!!!!!!!!!!111!!!!!!!!!!!!
“armchair patent critics forget that the test for 112’s 2nd paragraph is whether the claim reasonably apprises ONE OF ORDINARY SKILL IN THE ART”
Actually I don’t forget that, ever. Perhaps one of ordinary skill would be so kind as to let me know precisely how much computing power, and precisely how much time I would need to spend before it is deemed ” not practical”?
Or maybe you could? A laptop? 1 day?
“You gonna tell us that you’re an expert in cryptography as well as leet?”
Is one of ordinary skill an expert? News to me.
Is pig latin “not practical” to reverse? Or is that encryption “practical” to reverse?
Finally, what happens 10 years from now when we have the equivalent computing power in a laptop as deep blue currently provides? Does the scope of the claim magically change? What infringes the day of issue no longer infringes 10 years from now? Practicality. Fin your claim bra.
Fact of the matter is, people (many examiners) accept relative terms without using their brains. They say to themselves, “well poshita understands what it means and so do I hur hur hur”. Oh really? How well does poshita understand it? And is the definition static or does it bounce around person to person and day to day? Is a definition that changes from day to day a good standard for definiteness?
Check yes or no.
Actually scratch that, don’t bother. I’m through discussing the issue with you because I don’t have time for this nonsense today I have a lot to get done.
“What exactly does it mean? How precise is it?”
It means that it is not practical to reverse the cryptographic scheme. It might be reversible, given enough time and computing resources, but the necessary time and computing resources are impractical. That’s precise enough for those of ordinary skill in the art to know what the claim covers. It doesn’t cover an ordinary substitution cipher. It almost certainly does cover the SHA-1 hashing function.
You and other armchair patent critics forget that the test for 112’s 2nd paragraph is whether the claim reasonably apprises ONE OF ORDINARY SKILL IN THE ART of the bounds of the claim. You gonna tell us that you’re an expert in cryptography as well as leet?
>>Sample claim:
>>1. A process for enhancing the security of a >>cheque, comprising:
Yes, MM-trollbot, you could figure that out in an instant. Why if you didn’t need to make your points you’d be rich with all the inventions you’d come up.
Hahahaha. Yeah, right. You would have never figured that out. You’d probably be writing letters to the DOJ saying if they’d only hang the offenders the problem would go away.
Silly MM-trollbot, patent law is for people.
“Um, how else do you think those checks get manufactured?”
I think they can be manufactured by people who aren’t printing “encrypted” pictures/numbers on my checks. But maybe you’re right, maybe we pay top dollar for checks because they’re printed with special “top of the line” “encryption”.
“Good luck with that – those of us who actually know something about cryptography know exactly what that means. Further, it’s as precise as the subject matter allows, which is all the actual “lawl” requires.”
What exactly does it mean? How precise is it?
It doesn’t mean anything solid? It isn’t precise at all?
Good answers.
Erez, I agree that it is not every case in which every Euro note in circulation in Europe is an infringing embodiment. If the asserted claim is wide enough, and valid, there’s surely a lot of money involved (HaHa).
Even so, the queue of cases on appeal from the first instance (BPatG) that tries patent validity in Germany is 5 years long.
However, if the case is important enough, the 5 year waiting list is avoided, like when the BPatG recently found a blockbuster pharma patent claim lacking in novelty, the District Court trying infringement went ahead anyway and enjoined the infringer, and the Supreme Court(BGH) chipped in PDQ, immediately to over-rule the finding of invalidity.
One is left with the feeling that, each for its own reasons, neither the ECB nor DSS wants the BGH to get to their case any earlier than normal. Hope I live long enough to enjoy the outcome.
Is it a surprise that the pro-patent Newman wrote this opinion?
Max:
If it was just a run of the mill case, I suspect things would have been better.
I suspect that a problem here is that the ECB is the alleged infringer.
Thanks Mr Gur. The most recent thing about the ECB litigation that I could find on the DSS website was:
Taiko III Corp., a newly formed New York-based corporation, will provide the line of credit to DMC. In addition, management of DMC and Taiko are discussing a more comprehensive arrangement for the long-term financing of the litigations.
but that was in a Press Release back in May 2008.
Will Euro-land ever do patent litigation properly? No.
…before dropping the N word.
6 states “One of the two Bobs is asking “what is it that, would you say, ya do here?””
Nice to see that 6 has already had his meeting with the productivity consultants Lord Kappos brought in.
No doubt, 6 told them all about how he is a people person.
Max,
The patent was invalidated in the UK and France (under appeal) and upheld in Netherlands and Germany.
You can follow developments of the case on the DSS website.
Interestingly, DSS stock has been going up recently.
“And be honest kev, you’re going to tell me that there is a ‘company’ in charge of printing pretty pictures/numbers etc. on my checks for the purposes of security?”
Um, how else do you think those checks get manufactured?
“‘with a practicably irreversible cryptographic scheme’ 112 2nd paragraph.”
Good luck with that – those of us who actually know something about cryptography know exactly what that means. Further, it’s as precise as the subject matter allows, which is all the actual “lawl” requires.
“6:
I don’t think the plaintiff in this case is a troll. I think it is the company started by the inventor.
Does that make a difference in your thinking?
”
That’s all good and well for this particular case Kev and that’s fine.
My thinking wasn’t necessarily predicated upon this particular example, it just happened to make me think how awesome it would be.
I still it would be awesome if more trolls sued the gov. They’d be like “yes, patents are the awesomez” on their way to court as a defendant in a “business (ahem, government) method” patent suit.
And be honest kev, you’re going to tell me that there is a “company” in charge of printing pretty pictures/numbers etc. on my checks for the purposes of security? What, precisely, does this company do? One of the two Bobs is asking “what is it that, would you say, ya do here?”
The “useful arts” requirement advocated in that brief looks better and better with each passing day.
“with a practicably irreversible cryptographic scheme”
112 2nd paragraph, sux to be your claim bra.
Reminds me of the case in Europe, in which DSS (could it be a troll?) is asserting that every single Euro banknote in circulation includes its patented security feature. The asserted Euro-patent was got through to issue by its inventor alone. Defendant is the European Central Bank.
English judges cite the case in calls for reform of the European patent litigation system:
link to managingip.com
The DSS litigation seems to be going nowhere, not even in Germany where an attack on the validity of the patent failed before the Federal Patents Court.
May I ask, does anybody have any news on that?
6:
I don’t think the plaintiff in this case is a troll. I think it is the company started by the inventor.
Does that make a difference in your thinking?
To be 100% honest I wish more trolls would litigate against the US gov. No faster route to reform.
Sample claim:
1. A process for enhancing the security of a cheque, comprising:
selecting information, A, found on the cheque wherein said selected information varies for each instantiation of the cheque presented by the same payor;
selecting an encryption key not associated with information found on the cheque;
encrypting a combination of the selected information and the encryption key with a practicably irreversible cryptographic scheme to thereby generate a first control code;
printing the selected information and the first control code on the cheque;
reading the selected information from the cheque;
encrypting a combination of the read information and the encryption key with the encryption scheme to thereby generate a second control code; and
comparing the first control code with the second control code and refusing to honour the cheque if the first and second control codes are not identical.
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