The Role of the Washington DC District Court in Patent Cases

Stuart Soffer has provided information on an interesting spike in patent litigation filings in the Washington DC Federal District Court (DDC). As the chart below shows, more patent cases against the USPTO have already been filed in DDC in 2009 than in any other year in recent history.

What's Going On: On my review, of 39 of the DDC patent cases filed thus far in 2009 (including those not-against the PTO), all of the cases fell into one of these two categories:

Most of the DDC cases are suits against the PTO. The 2009 spike appears to be largely driven by patent holders asking for a review of PTO calculations of patent term adjustment. See Daido v. Doll, 09-628; Biogen IDEC v. Doll, 09-754; Novartis v. Doll, 09-804. The outcome of these cases will likely be dictated by the Federal Circuit's decision in Wyeth v. Kappos. That case focuses how to calculate an adjustment when the patentee is eligible under both Section 154(b)(1)(A) and Section 154(b)(1)(B). Oral arguments were held in early October, 2009.

The remaining cases involved declaratory judgment actions filed against non-US patent holders under 35 U.S.C. § 293. That section of the Patent Act provides that DDC has in rem jurisdiction over the patent and is a proper venue unless the foreign entity has identified a designated agent in another US jurisdiction. In the case of HTC v. Luzzatto, 08-998, the Taiwanese company HTC sued to invalidate Luzzatto's patent covering a "telephone identification calling apparatus." That case is interesting because the district court refused to dismiss the case against Luzzatto even though he had assigned his rights to the patent to another entity. The court reasoned that Section 293 explicitly creates jurisdiction over the "patentee", and Section 100(d) defines a patentee to include "not only the original patentee to whom the patent was issued but also the successors in title to the patentee."

67 thoughts on “The Role of the Washington DC District Court in Patent Cases

  1. 67

    Lionel, thanks. Appreciated. I did reply but it hasn’t emerged yet. Rather than repeat myself, and for readers to suffer a double dose, I will wait to see if it appears belatedly.

  2. 66

    Max,

    Sometimes, you come across as straightforward and sincere. But the majority of your posts come across as patronizing. Instead of stating a point directly, you pose t as a question. Posing questions to which you believe you know the answer is condescending and/or patronizing. of coyrse, it may be neither of these and could be simple pomposity.

    Alternatively, it could express genuine insecurity about your position – however, that’s not the impression I get from you.

    However, I will admit I could be entirely wrong. The problem with written text communications among people who don’t know each other personally is that subtleties can be lost, irony can be missed, and meanings can be misconstrued. Perhaps I am guilty of that?

  3. 65

    Mr Hutz, I didn’t realise that I have a psychological “need” to be patronising. You’ve got me worried now. May I ask, which one of my sentences in particular did you take as patronizing, or as exhibiting false humility? Could it just be that I expressed myself flippantly, or clumsily? Or is it just there in everything I write?

  4. 64

    Dear Lionel,

    Perhaps not everybody believes I am misguided.

    Perhaps some think you ARE misguided.

    Thank you, Ah Pook.

  5. 63

    Eurodisnae,

    You are certainly correct and I did not express my thoughts very well. I knew European patents were registered in each nation participating and Of course relief may vary from country to country. I just was not thinking.

    Also, thanks for being a European who does not feel the need to be patronizing or use false humility to express his/her points.

  6. 61

    With respect, Lionel, if professional inventors aren’t entitled to express their opinions, misguided or otherwise, regarding the state of the law, then we’re all cuffed. If they ARE misguided, then they should be corrected. If they resist reasonable correction then, and only then, should they be mocked and derided.

  7. 60

    Just for the record, the EPO/EPC has nothing to do with deciding infringement or the relief available to a patent proprietor. This is explicitly reserved for national law, on the basis that contracting states should treat a patent granted by the EPO exactly the same as one granted by their domestic patent offices. In the UK at least, the grant of any relief provided for by the patent statute is subject to the discretion of the court following established principles for that kind of relief. The draft agreement on a unified European Patent Court defines the kinds of relief available but leaves it to the discretion of the court what relief should actually be granted in any case.

  8. 59

    JAOI,

    Please stick to inventing, as you repeatedly demonstrate a complete lack of understanding of the law.

  9. 58

    I have some thoughts on how the ideal patent system should work — how the American patent system was intended to work.

    Great deference should be given to the PTO — they are paid to be and are the experts when defining patentable subject matter and dealing with the issue of obviousness which, of course, is at the heart of the matter. It should be the objective of PTO management to insure Examiner’s are bright enough and dedicated to applying our patent laws as written by Congress.

    People will have different views on the validity of a particular patent claim dictated by their bias. The extreme case is when two opposing parties each have a dog in the race. The patent owner will no doubt believe his claim valid and the infringer invalid. However, the issue of validity in a patent case is a given, as it should be. That was the job of the PTO — to determine whether or not to grant patent and its claims.

    Patent practitioners, of course, will be influenced primarily to defend their clients’ patents if infringed, or defend their other clients against allegations of infringement.

    Others, such as lay people with less or no skin in the game, will be mostly influenced by what they read and hear on the Internet, TV, newspapers and other media.

    It should not be up to the judge or a jury to second-guess the experts in the PTO regarding the validity unless new prior art surfaces. The fundamental issue in court should in essence be, is there infringement or not. If there is infringement, then damages should be determined and if the patent owner chooses not to license its patent further, infringement should be forbidden by the court — if the infringement continues those responsible are guilty of contempt of court and should be punished accordingly.

    The problems our patent system has seen in recent years has been due to poor PTO management compounded by the fact that Cisco and its cohorts in the “Coalition [cartel] for Patent Fairness” has been phucking with their heads and with everybody else’s via promulgating misleading anti-patent propaganda for their greedy purposes in all forms of our media reaching citizens, IP professionals and government officials in all three branches.

  10. 57

    Dear Lionel,

    Re:
    “I did not realize it [the right to exclude] was as bright line and automatic as the US.
    “Personally, I have always thought Ebay was decided correctly, as I believe an analysis should be performed every time an injunction is requested. Further, I do not believe Ebay will affect grant of injunction in the vast majority of cases where a patent is found to to be valid and infringed.”

    With all due respect my friend, you are entitled to your opinion.
    But please realize that your past comments demonstrate that you lack of good judgment.
    Therefore, you would do better to mistrust your judgment and rely on others’.

  11. 56

    Dear Max,

    Re:
    “I had always thought that entitlement to an injunction was inherent in the “right to exclude” that is synonymous with the concept of granting a patent.”

    100% right. Only dimwits and patent-illiterates do not see it that way.

  12. 55

    Lionel, some people say that Hard Cases make Bad Law. I can imagine a court viewing with distaste the prospect of granting injunctive relief to the owner of an unattractive patent, and being rather creative in finding new ways to finesse that unpalatable outcome. As Patent Offices continue to grant patents with claims that invite ridicule, we will see surely more such creativity, perhaps expressed differently though, in Europe and the USA. Life’s rich tapestry can only get richer.

    Over on the Zura blog there’s a piece about opposition at the EPO and how it weeds out issued claims lacking in merit. Some startling money figures are to be found in the Paper co-authored by professors in CA and Munich. Example: USD 20k to kill a patent in inter partes adversarial opposition proceedings at the EPO.

  13. 54

    Honestly, I don’t know. It’s been a long time since I considered foregn filing. I just thought there was a greater awareness of and concern with the public good. I did not realize it was as bright line and automatic as the US.

    Personally, I have always thought Ebay was decided correctly, as I believe an analysis should be performed every time an injunction is requested. Further, I do not believe Ebay will affect grant of injunction in the vast majority of cases where a patent is found to to be valid and infringed.

  14. 53

    Lionel, if you have information on any case in Europe in which a claim was found valid and infringed but, still, the patent owner failed to get an injunction out of the court, please write in again. Despite historical roots in English equity, I had always thought that entitlement to an injunction was inherent in the “right to exclude” that is synonymous with the concept of granting a patent. What is the basis for your belief, may I ask?

  15. 52

    Max,

    I did not believe injunctions were given as freely in Europe after final judgment. In the US, it was 100% of the time automatically.

  16. 51

    Again, LaMonkey, at least I stick to one name at a time.

  17. 50

    Oh LaMonkey,

    The corpse of Che Guevara’s mule called (he is now working for the Obama administration)

    He said he is available for you any time…

  18. 49

    Hindsight writes:

    “take any subject and maxdrei will somehow find a way to fit in his epc praise, whether it fits or not.”

    To which I reply:

    “Where have I cited the EPC where it didn’t “fit”. Just one example will do”

    which prompts Hindsight to harrumph:

    “i’ll let you do the work yourself. catalogue your posts and provide a percentage where you don’t glorify the EPC at some point per each thread. you want to learn? do the work yourself.”

    At which point……I give up.

    i prefer to debate with more gracious contributers like JAOI, and Lionel Hutz, who wrote:

    “I believe the near automatic grant and near absolute right to an injunction once claims were found to be valid and infringed pre-Ebay was a bit stronger than that in the EPC. I thought the EPC put more effort into balancing the hardships mong the parties. That was why I thought you would agree with the Ebay decision.”

    which prompts me to reply with a thought that there is a difference between interlocutory injunctive relief, before final judgement at trial about infringement and validity, and the final injunction that should follow such a final judgement. Of course Europe has a balancing act to do, when considering whether to grant interlocutory injunctive relief. But I do not know of any such balancing, once the claim is found at trial to be infringed, and not invalid. Mind you, the patent owner might be a bit diffident about enforcing the injunction, while the possibilities to appeal to a higher court are still live. Is that OK, Lionel?

  19. 48

    Jules: “And if somebody changes their pseudonym from time to time, again, tell me this: who cares?”

    The irony, Jules, is that LeTroll has changed its pseudonym more times than Nancy changed Ronnie’s diapers.

  20. 46

    max, no.

    i’ll let you do the work yourself. catalogue your posts and provide a percentage where you don’t glorify the EPC at some point per each thread. you want to learn? do the work yourself.

    and that wasnt creativity i was accusing you of. it doesnt take a bunch of creativity to repeat yourself like a broken record no matter the topic of a thread.

  21. 45

    LeMieux…

    This is the internet, buddy. The whole world can look at this page and write something if they want. This sock puppet delusion of yours is actually humorous, in a sick sort of way. And if somebody changes their pseudonym from time to time, again, tell me this: who cares? For your own sake, I hope you get over it. May you be healthy and prosperous for years to come.

  22. 44

    Dear Lionel,

    In context, here is what I wrote:

    Re: [begin quote]
    “Isn’t the jury pool supposedly affected by every source of information, even yourself?”

    I have limited resources. Compare that to Cisco, with 65,000 employees and annual revenue of $36.10 billion as of 2009, the 125 members, many with numbers similar to Cisco’s, of the Coalition for Patent Fairness, et al.

    As I said earlier, I am the David fighting a cartel of Goliaths, a lone wolf crying in the wilderness of patent reform and Supreme Court decisions that are destroying my beloved profession one patent case at a time, one rule at a time, one decision at a time. [end quote]
    Posted by: Just an ordinary inventor(TM) | Sep 24, 2009 at 12:49 PM

    Does that help you understand what I explicitly wrote?

    Regarding seeing a “shrink”; yes, shouldn’t we all.
    Can you make any recommendations?

    Again, thank you for your comment and sound advice — I appreciated the opportunity to respond.

  23. 42

    MaxDrei=LeopoldBloom=LionelHutz=Mooney=professor

    But, to an outsider, it sure makes it look like something much bigger is going on, what with all these different “posters.”

  24. 41

    blah blah blah “Presumption of Validity”

    Now we know Max, like so many of the sock puppets, is a proxy for Mooney, or should I say the person behind Mooney.

  25. 40

    JAOI,

    Were you implying the influence of Rich Frankel’s blog was somehow more prominent because of the backing of Cisco when you wrote the following?

    “I have limited resources. Compare that to Cisco, with 65,000 employees and annual revenue of $36.10 billion as of 2009, the 125 members, many with numbers similar to Cisco’s, of the Coalition for Patent Fairness, et al.”

    Please see a shrink.

  26. 39

    Hindsight thanks. I’m flattered. I never knew I was that creative.

    Come to think of it though, is there any “evidence” of what you assert? Where have I cited the EPC where it didn’t “fit”. Just one example will do. I’m curious. I want to learn. Help me won’t you?

  27. 38

    Max,

    First, I did not read every post, so I may have misinterpreted a previous post of yours. If I did, I apologize.

    I believe the near automatic grant and near absolute right to an injunction once claims were found to be valid and infringed pre-Ebay was a bit stronger than that in the EPC. I thought the EPC put more effort into balancing the hardships mong the parties. That was why I thought you would agree with the Ebay decision.

  28. 37

    “what has my praise for the EPC got to do with ____” fill in the blank and realize that it doesn’t matter – take any subject and maxdrei will somehow find a way to fit in his epc praise, whether it fits or not.

  29. 36

    Come again, Lionel? I don’t follow you. I didn’t realise I was “lamenting” injunctive relief. And what has my praise for the EPC got to do with forms of relief from infringing acts?

  30. 34

    “There seemed no strong voices left in America that recognize the value and importance of a strong patent system to America and, for that matter, to the world.”

    Ned Heller 2010!

  31. 31

    Dear Noise above Law,

    Re:
    “Not to distract you, but “Corporations like Cisco enter broad cross licensing agreements with their competitors to minimize their exposure to patents held in their fields. This is counterproductive to innovation – cross licensing does not “promote the Progress of science.”” can be disputed.”

    Thanks for your comment.
    Yes, you are right, and I agree – cross-licensing is not always counterproductive – it can “promote the Progress of science.”

    I believe cross-licensing can both help and harm, depending on particulars.

    Thanks again for your edification.

  32. 30

    We rarely get a chance to see another country’s editorial about the USA

    Read this excerpt from a Romanian Newspaper. The article was written by Mr. Cornel Nistorescu and published under the title ‘C’ntarea Americii, meaning ‘Ode To America ‘) in the Romanian newspaper Evenimentulzilei ‘The Daily Event’ or ‘News of the Day’.

    ~An Ode to America ~

    Why are Americans so united? They would not resemble one another even if you painted them all one color! They speak all the languages of the world and form an astonishing mixture of civilizations and religious beliefs.

    On 9/ll, the American tragedy turned three hundred million people into a hand put on the heart. Nobody rushed to accuse the White House, the Army, or the Secret Service that they are only a bunch of losers. Nobody rushed to empty their bank accounts. Nobody rushed out onto the streets nearby to gape about.

    Instead the Americans volunteered to donate blood and to give a helping hand.

    After the first moments of panic, they raised their flag over the smoking ruins, putting on T-shirts, caps and ties in the colors of the national flag. They placed flags on buildings and cars as if in every place and on every car a government official or the president was passing. On every occasion, they started singing: ‘God Bless America !’

    I watched the live broadcast and rerun after rerun for hours listening to the story of the guy who went down one hundred floors with a woman in a wheelchair without knowing who she was, or of the Californian hockey player, who gave his life fighting with the terrorists and prevented the plane from hitting a target that could have killed other hundreds or thousands of people.

    How on earth were they able to respond united as one human being? Imperceptibly, with every word and musical note, the memory of some turned into a modern myth of tragic heroes. And with every phone call, millions and millions of dollars were put into collection aimed at rewarding not a man or a family, but a spirit, which no money can buy. What on earth unites the Americans in such a way? Their land? Their history? Their economic Power? Money? I tried for hours to find an answer, humming songs and murmuring phrases with the risk of sounding commonplace, I thought things over, I reached but only one conclusion… Only freedom can work such miracles.

    GOD BLESS AMERICA
    Cornel Nistorescu
    Thank you Cornel

  33. 29

    Re:
    “Isn’t the jury pool supposedly affected by every source of information, even yourself?”

    I have limited resources. Compare that to Cisco, with 65,000 employees and annual revenue of $36.10 billion as of 2009, the 125 members, many with numbers similar to Cisco’s, of the Coalition for Patent Fairness, et al.

    As I said earlier, I am the David fighting a cartel of Goliaths, a lone wolf crying in the wilderness of patent reform and Supreme Court decisions that are destroying my beloved profession one patent case at a time, one rule at a time, one decision at a time.

  34. 28

    JAOI,

    Not to distract you, but “Corporations like Cisco enter broad cross licensing agreements with their competitors to minimize their exposure to patents held in their fields. This is counterproductive to innovation – cross licensing does not “promote the Progress of science.”” can be disputed.

    Anyone entering into a cross license agreement does more (or should do more) than merely innoculate themselves aginst the threat of suit. Smart players take the opportunity to avail themselves of the technology thus obtained and advance the art, if only for their own corporate benefit, or to one-up the competition and distinguish themeselves from the competition.

  35. 27

    Also, perhaps you missed these excerpts from Business Week posted on the Troll Tracker Defamation … thread:
    link to patentlyo.com

    link to businessweek.com
    “… subject … “patent trolls,” a derogatory term … The “about me” section of the blog noted that the writer [Rick Frenkel] was simply “a patent lawyer trying to gather and organize information about patent litigation.”
    —————————————————
    … in its pointed commentary, Troll Tracker advanced views squarely in line with the company’s own agenda. Cisco General Counsel Mark Chandler even cited the blog as a good independent source of information while in Washington lobbying for changes to patent law that would rein in trolls, unaware he was plugging the work of a Cisco employee.

    Troll Tracker gained repute as a forum for information, not invective. But its more volatile content would eventually combine to blow up the blog and land its creator and Cisco in legal hot water.

    … Frenkel and Cisco are now defendants in a pair of defamation lawsuits, and they may be dragged into other litigation.

    … But when an employee blogs about company business, anonymity can spell trouble. “I think there’s very much a tendency to be reckless when you’re posting anonymously—and to be more biased than you normally would be,” says Dennis D. Crouch, a law professor at the University of Missouri, who runs Patently-O, the most widely read patent blog.

    …After his identity was revealed, Cisco took a path of contrition. In a Mar. 24 post to its corporate blog, Cisco said that even though Frenkel intended his blog to reflect solely his opinion, “Cisco takes responsibility for the content.” The statement concluded: “Blogging and blog policy are evolving areas for many companies. We believe we have learned a valuable lesson from this regrettable situation.”

    … the Eastern District of Texas, … Frenkel referred to it in an October item as “the Banana Republic of East Texas,” even as Cisco was defending litigation there.

    …”He did a very good job of cloaking himself,” the lawyer says. The search found that the blog was hosted on a Google server in Korea, and that the blogger filled out a profile in which he claimed to be from Afghanistan.

    … Cisco in a Mar. 24 blog post chastised some of its employees for “poor judgment,” and outlined a new policy.”
    —————————————————
    * * * * *
    Lionel, my friend, you wrote:
    “For the record, you post anonymously. How do I know you are not some shill for the Niro firm or some other disreputable, opportunist dirtbags?”

    Firstly: I would be careful if I were you of who you libelously defame!
    I suggest an immediate apology – you’ll thank me in the morning.

    Secondly: In the interest of Full Disclosure, please be advised that I am exactly who I say I am – no more, no less – patriotic and opinionated, proud and accomplished, yet still a humble “ordinary” inventor.
    You only need to read my numerous diatribes to know that to be true. Moreover, I’ve revealed much of my background and experiences, philosophy and principles by which I live, and even some of my habits, many times on Patently-O.
    Other than my litigations and bloggings, I prefer a quite, private life.

    I post anonymously because I do not want to tie my comments to past, present or possible future litigations, Just as other professionals who post here do not want to tie their comments to past, present or possible future litigations.
    After all, the practice of IP is fraught with litigation.

    Below is a link to an article you may find of interest,
    an article I think we should all heed – which is not to suggest there is anything wrong with anonymous blogging, as long as one doesn’t set out to materially defraud, but, rather, exercises “good Behaviour.”
    * * * * *
    Lionel, would you agree that attorneys, as Officers of the Court, should be held to a higher standard than the average (ordinary) bear blogger?
    link to nytimes.com
    Excerpts from this New York Times article:
    SOON, BLOGGERS MUST GIVE FULL DISCLOSURE
    By TIM ARANGO — Published October 6, 2009

    “For nearly three decades, the Federal Trade Commission’s rules regarding the relationships between advertisers and product reviewers and endorsers were deemed adequate. Then came the age of blogging and social media.

    On Monday, the F.T.C. said it would revise rules about endorsements and testimonials in advertising that had been in place since 1980. The new regulations are aimed at the rapidly shifting new-media world and how advertisers are using bloggers and social media sites like Facebook and Twitter to pitch their wares.

    The F.T.C. said that beginning on Dec. 1, bloggers who review products must disclose any connection with advertisers, including, in most cases, the receipt of free products and whether or not they were paid in any way by advertisers, as occurs frequently. …

    For bloggers who review products, this means that the days of an unimpeded flow of giveaways may be over. More broadly, the move suggests that the government is intent on bringing to bear on the Internet the same sorts of regulations that have governed other forms of media, like television or print.

    “It crushes the idea that the Internet is separate from the kinds of concerns that have been attached to previous media,” said Clay Shirky, a professor at New York University.

    Richard Cleland, assistant director of the division of advertising practices at the F.T.C., said: “We were looking and seeing the significance of social media marketing in the 21st century and we thought it was time to explain the principles of transparency and truth in advertising and apply them to social media marketing.”

  36. 26

    Re:
    “By the way, I’m still waiting for that evidence I requested from you that confirms that a judge or legislator has ever relied on PTT in making a decision relating to the validity of a patent or patentability of an invention, such that it can be said that PTT “contributed materially to diminishing the historic strength of the system of American patents … .”

    In general, people, including jurors and other lay people, reporters, authors and professors, and officials in all three branches of government, do not rely on one source for making decisions. I would guess few, if any, relied solely on PTT to make patent related decisions.

    However, realistically speaking, who could deny that Mr. Frankel’s PTT set out to and did tilt the patent playing field by falsely representing itself “a good independent source of information” about the American patent system?
    Who could deny that PTT didn’t have the Butterfly Effect in juries’ or judges’ minds, in legislators’ minds, in administrators’ minds – who can deny that PTT did not influence reporters, authors and professors?

    I expect we can all, including Cisco systems’ Mark Chandler, agree that Rick Frankel, one of Cisco’s in-house patent attorneys, lacked professional judgment by anonymously operating PTT, a blog with the purpose of defaming certain Texas Courts and non-practicing patent owners, while simultaneously operating multiple litigations for Cisco Systems involving patent infringement issues, the very “target” of PTT.

    Whether or not Mr. Frankel’s lack of judgment was or is actionable, tantamount to libel, is another question. Some, like me, believe so, and I believe that his actions constituted an actionable tort.

    However, despite my belief, I can understand why other people
    – such as people who disapprove of making money with patented inventions the patent owners themselves do not practice
    – would disagree with people like me. They would rather believe that what Mr. Frankel did should be protected under the First Amendment of our Constitution despite his lack of professional judgment, despite the fact that he operated Cisco’s patent litigation while simultaneously anonymously operating PTT which was falsely represented to the Internet community et al., as “a good independent source of information” — PTT even hoodwinked Cisco’s General Counsel, Mark Chandler while Mr. Chandler was lobbying for patent reform in Washington.

    If an attorney of Mr. Chandler’s extraordinary caliber can be hoodwinked, then so can others be hoodwinked, including jurors and lay people, reporters, authors and professors, and judges, legislators and administrators?

  37. 25

    Cisco’s PTT blog’s purposes were comprised of predisposing people against independent inventors by painting them as trolls preying on victims — that’s why Cisco called it “Patent Troll Tracker.”

    Frenkel’s anonymous Patent Troll Tracker blog’s purpose was to defame Texas’ Courts and independent nonpracticing patent holders for his employer-client, Cisco Systems, and by doing so they were advancing Cisco’s corporate agenda and tampering with the jury pool and the judges involved in infringement litigation brought on by independent patent holders.

    Here is a link explaining what Cisco General Counsel Mark Chandler thought about PTT:
    link to businessweek.com
    Excerpt:
    “Cisco General Counsel Mark Chandler even cited the blog as a good independent source of information while in Washington lobbying for changes to patent law that would rein in trolls, unaware he was plugging the work of a Cisco employee.”

    If an attorney of Mr. Chandler’s extraordinary caliber can be hoodwinked, then so can others be hoodwinked, including jurors and lay people, reporters, authors and professors, and judges, legislators and administrators?

    If you subscribe to Tom Friedman’s “Tilt Theory of History ” theory, as I do, you will agree we have a cause for serious concern.
    Excerpt:
    “The Tilt Theory states that countries and cultures do not change by sudden transformations.”
    Quote from the NYT article, “TILTING THE PLAYING FIELD”:
    link to nytimes.com
    Tom’s theory of course, runs parallel to the “Butterfly Affect.”

  38. 24

    Here are more of my opinions:
    Anybody who thinks that years of extensive defamation of a particular class of inventors
    by Cisco, the Coalition for Patent Fairness, et al.,
    as troll like creatures preying on victims
    via legal lobbying and “in camera” meetings on the Hill, in Agencies in Washington and Virginia, etc.,
    infiltrating every form of American media imaginable,
    especially the Internet and especially the patent blogs,
    had not succeeded in accomplishing their mission, including materially damaging the reputation of independent inventors,
    in the minds of American citizens,
    IP professionals,
    patent office staff and management,
    other government officials and legislators
    and juries deliberating patent infringement cases,
    as well as Clerks and Justices in our courtrooms, including those who work in the Supreme Court at One First Street*,
    [Anybody who thinks Cisco et al. didn’t accomplish their defamation mission]
    ought to “pull their head out and smell the coffee.”™
    * * * * *
    Some have opined above that “all that we have is our reputation.”
    LIONEL, wouldn’t you be furious if someone overtly, covertly and fraudulently besmirched your reputation with many years of expensive professional defamation of your particular class of lawyers?

    * Perhaps Professor Crouch could tell us how many hits Patently-O has gotten on an annual basis from the Court House at One First Street N.E., Washington, DC 20543 The United States Supreme Court.

  39. 23

    Dear Max,

    Thank you for your comment — I appreciate the opportunity to respond. Below is a compilation of comments from this article
    link to patentlyo.com
    for your browsing –
    therein you will find my opinion of

    “… what might actually be to blame for this unpleasant development.”

    Please excuse any repetition.
    Whether or not Cisco’s Rick Frankel got the facts right or wrong on his Patent Troll Tracker blog is not the fundamental issue.

    Frankel represented himself as an ordinary attorney interested in IP.

    That was a boldface lie and tantamount to fraud. The Patent Troll Tracker blog’s purpose was to defame independent nonpracticing patent holders for his employer-client, Cisco Systems, and by doing so they were advancing Cisco’s corporate agenda and tampering with the jury pool and the judges involved in infringement litigation brought on by independent patent holders.

    Prior to the widespread defamation, we independent inventors generally enjoyed the reputation of being bright, creative, productive and valuable American citizens. Our reputation has been fraudulently and libelously sullied by Cisco et al.

    Corporations like Cisco enter broad cross licensing agreements with their competitors to minimize their exposure to patents held in their fields. This is counterproductive to innovation – cross licensing does not “promote the Progress of science.”

    And by likening independent inventors to trolls, they have also diminished their infringement exposure to our inventions. This too is counterproductive to innovation.
    * * * * *
    Cisco’s Patent Troll Tracker blog contributed materially to diminishing the historic strength of the system of American patents, and in particular to the rights of self-employed, non-practicing Inventors.

    Goliath Cisco, and all its corporate might, perpetrated the defamation of independent Inventors by broadly propagandizing its lopsided anti-patent agenda to American citizens and government officials by infiltrating all avenues of our Nation’s media. America’s strong patent system suffered greatly due to the leadership of Cisco and its followers in the Coalition for Patent Fairness, et al.

    These are the facts, and they are not in dispute.

  40. 22

    JAOI, I had thought we could have agreed, that a failure to grant injunctive relief to the owners of claims held by a court of law to be suffering ongoing infringement, is a worrying development deeply to be regretted. Ned Heller is another who seems to think so.

    Do you think that this is a development that other countries might now be tempted to copy? If so, what might be the effect, for innovative US industry trying with their patent holdings to earn an honest crust outside the USA?

    With my bird’s eye view, I’m just suggesting what might actually be to blame for this unpleasant development.

  41. 21

    MaxDrei,

    Your crusade against Presumption belies your stated intent to learn. You seem to be saying that no matter what is posted, you will not change your belief.

    Presumption has been a lynchpin in the US system for a long time. The length of that time does not support your unfounded contention that it is the root of the problem. Other than your “wish” that it were so, you have provided no argument more than handwaiving why you think it is so critical.

    Tackling the mischief at source first requires an accurate assessment of the source, not a witch hunt. Lessoning the value of patents, especially espoused by someone who readily professes an ignorance of the system, is wrought with peril. You would do well to advocate less and listen (and mentally digest) more.

    Your penchant desire to transform the US into an EP style simply will not work. Why do you think that the US placement of value on innovation through the strong system of protection correlates so well with the rise in US world leadership? Why do you think that, “broken” and STILL, US patents are the most preferred patents to have in the entire world?

  42. 20

    Max, your leitmotif makes me sick.

    Learn from what Ned wrote, take it to heart, and shut the phuck up.

  43. 19

    Ned, isn’t the strongest sign of a “broken” patent system that palpably invalid garbage claims can’t speedily be revoked by the judge. Thus it is that the courts, intent on getting to a just result, have no realistic option but to withhold the grant of injunctive relief. It is the Presumption of Validity that is to blame for the broken system. Tackle the mischief at source, I say.

  44. 18

    Patent attorney, I think you’re a little premature. Dennis is saying that they’re all based on keeping a case pending for PTA reasons (we decided that we were required to do this for any case with the Wyeth issue).

    I think you’re going to see what you’re talking about next year. I’ve looked at some test cases for going from the BPAI to Fed, but just haven’t done it yet.

  45. 17

    MaxDrei, it would be nice if we still had a right to an injunction; but since EBay, all we have a right to is a compulsory license. Our patent system has now been elevated to the status of “banana republic” from its former status. To willful infringers, EBay is an important case, as they can now all but ignore patents. It was somewhat shocking that the district court recently enjoined MS Word due to MS’s litigation misconduct. But look to see that reversed on appeal.

    The United States for a very, very long time properly criticized countries that provided for compulsory licenses and not for injunctions. Injunctions are still awarded by US courts, but they are not guaranteed.

    It is the reliable threat of an injunction that underpins much of the value of a patent. One can usually tell just how much a patented invention is worth by how much one was willing to pay for a license in order to eliminate the threat of an injunction. Without that threat, patents are far less valuable and the reduced royalty rates reflect this.

    But reducing the value of American patents has been the leitmotif of many big companies who prefer simply to ignore patents as the conduct R&D and put out new products. They view the patents of others as brakes on the engine of progress; and further argue that their own monopolies are fairly won and maintained.

    What a joke.

  46. 16

    Fisher, the reason I “have a go” is to draw responses from which I can learn something useful. I keep doing it because I keep learning. I imagine your Supreme Court judges also never tire of getting better and better at their job.

    I didn’t know that c+c goes back to a case in 1934. Don’t know about you, but I prefer the patent-rich world of 2009 to that of 1934, when patents were nothing like as numerous.

  47. 14

    maxIII: “I just think that the Presumption (by which I mean the “clear and convincing” standard as opposed to the preponderance) does more harm than good.”

    Let’s see, last week you had a go at Justice Holmes (Milburn v. Davis-Bournonville Co.) for his formulation of US “102(e)” law; and now Justice Cardozo is your target for his formulation of the C&C standard for patent invalidity (Radio Corp. v. Radio Lab. (1934)). Holy Cow!, How do these misguided fellows get on our land’s highest court? They could have used a training course at the EPO or something. right?

  48. 13

    I read what you write Ned, and am not an economist or resident in the USA so it is presumptious of me to comment. I do so anyway because I think the fundamentals of any patent system are universal. Those with an issued claim are entitled to the respect due to a valid claim, until it is proven invalid. They are entitled to injunctive relief from any acts they can prove to be infringing. Let’s start from there shall we?

    I just think that the Presumption (by which I mean the “clear and convincing” standard as opposed to the preponderance) does more harm than good. It is a constant temptation to Applicants and their servants, to bamboozle the PTO. Hence it is the root cause of the adversarial relationship between the Office and its customers. Adversarial relations should be reserved for legal disputes, in the courtroom, between the party arguing for validity and the one who is asserting that the claim is bad.

    Any half-decent patent system has to recognise that disputes will occur and so has to provide a workable, practicable, proportionate way to resolve those disputes. The Presumption is not it.

  49. 12

    MaxDrei said: “Fascinating. Whereas the rest of the world takes it for granted that many of the patents that issue are invalid, the USA does not.”

    Max, there is the law and then there is reality. If you observe the statements of many on this blog and the public statements of the likes of Microsoft and Cisco in testimony, there seems to be a significant portion of American business that does not presume that patents are valid. In fact it seems that the presumption is to the contrary.

    I personally have had communications with corporate executives whose first question to me upon receiving an “offer of license” and the like, was whether the patent had been tested in court. From my entire career as a patent attorney, there was a general rule of thumb that one could not be sure that a patent was valid until one conducted the $75,000 validity search. (Obviously, the dollar amount varies over time, but you get the message.) Executives simply will not believe that a patent is valid (outside of perhaps the chemical and drug area) without first having conducted such a search or having had the patent proved in court.

    It is this attitude about patents that brought us re-examinations in the 1980s. It is the same attitude that is behind much of the attempt by Microsoft and Cisco and others to weaken the presumption of validity, to terminate the former presumption of irreparable harm when obtaining an injunction, and the current effort in Congress to amend section 284 which relates to patent damages.

    I will not pretend to give you full history of the development of the US patent system, but only wish to note that prior to 1836, we had a registration system. Patents were not presumed to be valid and for this reason were largely unenforceable except through extensive litigation, and even then patents were not respected. In 1836, Congress sought to strengthen the US patent system by providing for claims and an examination of those claims, and a presumption of validity based upon such examination. Thereafter, patents were respected — at least to a greater degree. Based upon this increased respect, the smart money was able to invest in businesses protected by patents with a greater likelihood of success than otherwise; not unlike the current situation we see in Silicon Valley. As a proximate result, American innovation took off much as it did in Britain primarily because of a strong patent system.

    History has proven that the American patent system functions well in providing incentives for innovation; but a keystone of this is the presumption of validity and the respect of patents that such a presumption commands. Patents should not be able to be overturned without clear and convincing evidence, beyond a mere preponderance.

    However, as I have noted, major corporations have been behind the weakening of the US patent system for quite some time now and have been successful in enacting a ruinous re-examination system, degrading the presumption of irreparable harm to obtain injunctions, etc. etc. etc. There seemed no strong voices left in America that recognize the value and importance of a strong patent system to America and, for that matter, to the world.

  50. 11

    The English cases originally giving the Chancellery jurisdiction over patent cases was on the basis that that what the location in government where the official patents were held. Sounds very in rem to me.

    But it was also decided that the patentee still had a right to jury trial on fact issues at Kings Bench.

  51. 10

    TJ, you might be right. It seems only fair that the patentee/inventor, if he is the only named party, should have a right to counterclaim for infringement. The plaintiff would then move to dismiss for want of standing on the basis that the patentee no longer owns the patent.

    Wow. I wonder how the court would decide that one.

  52. 9

    Fascinating. Whereas the rest of the world takes it for granted that many of the patents that issue are invalid, the USA does not. Everywhere else, it is just as simple to challenge validity as to issue infringement proceedings. I suppose it is this which has given rise to the mantra that the USA has a uniquely “strong” patent system. But no well-informed person can seriously deny that the UK also has a “Strong Patent System”, in which the English patent courts hear as many petitions for invalidity as assertions of infringement. Claims that are valid and infringed get speedily enforced. Invalid claims get exposed for what they are, within months. That’s how it should be, isn’t it? What else is an honest trader from Taiwan supposed to do, when faced with invalid claims?

  53. 8

    TJ I was in one of your prestigious institutes not long ago and was appalled at how little history your 1 and 2L’s knew about patent law.

    When you drop this name in an IP school and are met with blank stares and inquiries into who this person is there is a problem.

    link to en.wikipedia.org

  54. 7

    Ned, there is this case, and then there is the future cases that apply the principle. The principle, as I understand it, is that the language of section 100(d) compels the conclusion that the “patentee” always includes the original recipient of the patent issue, no matter how many times it has been subsequently assigned. As a linguistic matter, that is a pretty strong position. As a logical matter, it is absurd because that means the original recipient of the patent issue (whether it be the inventor or his employer) always can sue and be sued on the patent, even if that original recipient has long since assigned it away. You don’t get rid of the absurdity just by having the patent issue in the name of an employer–it only changes the person to whom the absurdity applies.

  55. 6

    TJ, the assignee has a right to have the patent issue to him rather than to the inventor. Assuming that the assignee owned the patent application at the time of issuance, he could have availed himself of that right and been the original patentee. If he had, there would have been no issue here.

  56. 5

    Yet another example of the sloppy language in patent laws that never seems to get fixed even with major patent reform legislation?

  57. 4

    Interesting, and I get the language argument. But it seems to be so obviously wrong that I don’t understand why the district court bought it. Under 35 U.S.C. 281, the “patentee” has a remedy for infringement. Under the section 100(d) theory that the patentee includes the original inventor no matter how many successive assignees there are, the original inventor always would have standing to sue for infringement. But they clearly do not.

  58. 3

    Just a point of clarification: had the patent issued to the assignee and not to the inventor, the result in HTC vs. Luzzatto would have, I believe, been the opposite.

  59. 2

    BB – My statements come from Luzzatto’s filings in court where he indicated that the patent has been assigned. Of course, the assignment recordation system does not include all patent assignments. Likewise, an assignment of rights is valid regardless of whether it is recorded.

  60. 1

    Dennis, I’m guessing the Luzzatto patent is 6449359; if that’s so, the patent is currently assigned to him and throughout its history has been assigned to a foreign entity, so the DCDC would apparently have jurisdiction no matter what. But since he’s the current assignee (as well as the inventor), I’m not clear about why there should be any question as to whether or not he should be named as a defendant.

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