Therasense, Inc. (Abbott) v. Becton, Dickinson and Co. (Fed. Cir. 2010) (Case No. 2009-1511)
This detailed 67–page opinion includes several important issues. This post focuses on inequtiable conduct. The Federal Circuit recently released a parallel decision involving the same parties (but different patent) here.
After a bench trial, Northern District of California Judge Alsup held Abbott’s patent unenforceable due to inequitable conduct during prosecution. (Patent No. 5,820,551). On appeal, the Federal Circuit has affirmed that decision — holding that the prosecuting attorneys had violated their duty of disclosure by failing to dislcose statements made by Abbott to the European Patent Office during a proceeding involving the European counterpart of another patent family (the ‘382 patent’ family) also owned by Abbott. Although the court affirmed the finding of inequitable conduct, it offered the fig leaf that such a finding should be “rare.” (Note: Therasense originally filed both patent applications and also made the statements to the EPO. That company was subsequently purchased by Abbott.)
Patent applicants (and their attorneys/agents) are required to disclose to the US Patent Office any information that a reasonable examiner would likely consider important in deciding whether to issue a patent. Failing to submit the required information can lead to a finding of inequitable conduct if the information was both (1) material to patentability and (2) witheld because of an intent to deceive the Patent Office. Inequitable conduct usually results in a patent being rendered totally unenforceable. “The penalty for inequitable conduct is severe, as an entire patent is rendered unenforceable.”
During prosecution, the examiner rejected the application based on Abbott’s own ‘382 patent. In response, Abbott’s Director of Research submitted an affidavit attesting that the one skilled in the art would not consider the ‘382 patent to teach the invention as claimed in the ‘551 patent. [The claimed invention was a glucose-memter electrode strip without an intervening membrane layer — with the absense of the membrane being the distinguishing feature.] Based on that representation, the Examiner allowed the patent to issue. Meanwhile, in Europe, Abbott made the statement that the stated distinction was only a “safety measure” and was “preferred” but not necessary. [“It is submitted that this disclosure is unequivocally clear. The protective membrane is optional, however, it is preferred when used on live blood.”]
Based on these facts, the Federal Circuit found the statements material:
To deprive an examiner of the EPO statements—statements directly contrary to Abbott’s representations to the PTO—on the grounds that they were not material would be to eviscerate the duty of disclosure. Moreover, if this could be regarded as a close case, which it is not, we have repeatedly emphasized that the duty of disclosure requires that the material in question be submitted to the examiner rather than withheld by the applicant.
Lawyer Argument Regarding Prior Art: In several cases, the Federal Circuit has held that contradictory representations made during the prosecution of other patent applications should not be considered material to patentability if made in the form of lawyer-argument. See Innogenetics. Here, the appellate panel distinguished those cases because they all involved US applications rather than statements made to different institutions.
However, all of the cases Abbott cites involve patentees who simply made representations to the PTO about prior art in order to secure the allowance of their patents. None of these cases involved a situation in which contradictory arguments made in another forum were withheld from the PTO. They do not speak to the applicant’s obligation to advise the PTO of contrary representations made in another forum. Before the EPO, Abbott made statements that contradicted the representations Abbott made to the PTO regarding the ’382 patent. An applicant’s earlier statements about prior art, especially one’s own prior art, are material to the PTO when those statements directly contradict the applicant’s position regarding that prior art in the PTO. See 37 C.F.R. § 1.56(b)(2). In any event, the representations to the PTO were not merely lawyer argument; they were factual assertions as to the views of those skilled in the art, provided in affidavit form.
Intent: The Federal Circuit agreed that the lower court’s finding of subjective intent was “amply supported.”
Holding:
Because the district court’s findings that the EPO submissions were highly material to the prosecution of the ’551 patent and that Pope and Dr. Sanghera intended to deceive the PTO by withholding those submissions were not clearly erroneous, the district court did not abuse its discretion in holding the ’551 patent unenforceable due to inequitable conduct.
Judge Linn filed a dissenting opinion: Judge Linn argues (1) that there is an explanation for the statements that does not lead to them being directly contradictory and (2) that the individuals involved “produced a good faith explanation as to why they withheld the EPO submissions.” Such a good faith explanation should defeat charges of inequitable conduct if it is plausible.
The question, thus, is not whether it is plausible that the information is immaterial—a question asked under the objective materiality prong—but rather, whether it is plausible that the individuals subjectively believed that the reference was immaterial at the time they withheld it—a question presented under the subjective intent prong.
IANAE, you are an idealist. Such idealism is undoubtedly behind the mistake that is Rule 56. It has lead to perversity beyond measure, idiocy the details of which we do not have to discuss in detail here.
The ROW does not suffer from Rule 56. We should learn from them.
Maxie,
You really really should listen to IANAE, he has the answers:
“The problem is in the cases that are arguable either way, which I’m sure is a large proportion of the ones that find themselves in court.”
Ned: “If a claim is held invalid over art known to the applicant, the disclosure or non disclosure of that art to the PTO is simply and totally irrelevant. If a court determines that the applicant knew the patent was invalid over the art, but still proceeded, then a remedy could then be imposed on other, valid claims and related patents,”
Every system works well in clear cases. Sure, if the patent is clearly valid over the art there’s no harm in not disclosing it, and if the patent is clearly invalid anyway any remedy seems fine.
The problem is in the cases that are arguable either way, which I’m sure is a large proportion of the ones that find themselves in court. The point of the duty of disclosure is to let the examiner make his own determination as to validity over the art, before the patent issues and can be used to threaten other people who might not have the means or desire to unearth that particular piece of prior art or litigate.
IANAE: “Why bother disclosing anything at all to the patent office, if your infringement litigation will stand or fall on the 102/103 validity of your asserted claims anyway?”
The result is fully intended.
In most regards, I defend the US patent system vs. other patent systems. But in this regard, I have to strongly disagree with the US system and look with favor on the ROW. The “duty of disclosure” is absurd the way it is now recognized and enforced.
Kappos needs to “repeal” rule 56. Kappos needs to further state that there is no “duty of disclosure” and there never has been. If a claim is held invalid over art known to the applicant, the disclosure or non disclosure of that art to the PTO is simply and totally irrelevant. If a court determines that the applicant knew the patent was invalid over the art, but still proceeded, then a remedy could then be imposed on other, valid claims and related patents, just as in Keystone Driller.
In the UK, it appears, that if any claim is held invalid, valid claims cannot be enforced. Now, this used to be the law in the US as well and gave rise to the “dislaimer” statute. We NEED to consider adopting this UK rule as the law in the US. We cannot dispense with the equitable defense of unclean hands, but this should be an extraordinary defense based upon egregious facts, such as found in Keystone Driller.
Ping–
Unjust enrichment = an equitable doctrine.
Contract theory…something like the doctrine of mutual mistake–i.e. both parties mistakenly believed that patentable subject-matter was the foundation for the licensed rights.
“Where’s the “doubt” pingie?”
Really bright boy Maxie? The doubt is the atmosphere of patentability and the rules governing such – If you haven’t been paying attention, the industry is in just a little bit of flux and uncertainty. If you are acting like there is no uncertainty, I pity the people paying for your services.
And clients don’t pay for that discovery – they pay for prudent actions in light of that discovery – those prudent actions are: “file (and bury)”.
“But clients have to make a profit too.”
It seems that you are inferring a number of things;
1) lawyers charge when they are not supposed to
2) lawyers charging or not influence client success
3) I give a rip about either 1) or 2)
Maxie, if a lawyer does not represent his client to the best of his ability, he does not deserve to be a lawyer, nor to have clients. The first is based on rules of ethics, the second on rules of economic nature. That being said, you make the mistake that I care whether lawyers abide by these rules or not. I don’t. Like I have said in previous posts – there is a sucker born every minutes and the lawyer’s availability of clients will not subside – look at the record abysmal performance of the USPTO and the near worst depression of the last two hundred years and we still have near record filings.
“ suffer the truly ferocious sanctions imposed on one whose conduct has been proven by due process to be inequitable? Reasonably high, I fancy” For someone interested in the client’s money, you seemed to have overlooked the cost of defending the mere accusation – rather sloppy bright boy.
IBP,
“ We all know that there is a scale of what can ultimately be ruled IC, from innocent omission despite best efforts,”
Really? Is this a legal principle or your perception of a legal principle, perhaps misapplied in a given set of facts?
“ or on a contract theory”
Or perhaps on a theory of equity…hmmm?
IANAE,
“ Inequitable conduct shouldn’t be worth a try”
Right again – there is a reason you are my hero. That being said, let’s make charging such a terrible deed commensurate with the deed. We shouldn’t make blindly charging Inequitable conduct worth a try, now should we? Let’s curb all that flying-around-allegations, shall we?
Ned,
“Moreover, the courts need to emphasize that the patent office does not have substantive rule making authority. While it may or may not list the things it would like disclosed, it cannot impose any legal duty on the public to disclose anything. That, my amigos, is substantive and exceeds the authority of the PTO.
You sound a bit like NAL there (except in only one paragraph rather than four pages). Isn’t it her peverse penchant for assailing the Office when it steps outside its legal bounds?
IBP: “But the possibility exists, and we are rightfully paranoid, when so much is potentially at stake.”
Are you this “rightfully paranoid” about 102 also? A judge could just as easily find a patent anticipated for no good reason as find inequitable conduct for an innocent omission despite best efforts.
Being worried merely because the possibility exists is just plain “paranoid”. “Rightfully paranoid” is a contradiction in terms. Besides, even if you changed the rules as you suggest, you’d still have to be “rightfully paranoid” because a judge could still theoretically reach the same result. If innocent omission can be inequitable conduct (in your rightfully paranoid mind), why couldn’t it be “serious” inequitable conduct? There is no assuaging the “rightfully paranoid”.
IANAE: “Is it really as common as all that to find IC in cases of “innocent omission despite best efforts”?”
From what I understand, the answer is no.
But the possibility exists, and we are rightfully paranoid, when so much is potentially at stake.
Ned: “It should not be a defense to a claim of infringement that something was or was not disclosed until after an affected claim is held invalid. If such a claim is held invalid, then and only then should a remedy for “non disclosure” be imposed on other claims or related patents that may be valid.”
I don’t even want to begin to think about the sort of prosecution and litigation chicanery that would result from such a rule. Why bother disclosing anything at all to the patent office, if your infringement litigation will stand or fall on the 102/103 validity of your asserted claims anyway?
Ned: “Moreover, the courts need to emphasize that the patent office does not have substantive rule making authority. While it may or may not list the things it would like disclosed, it cannot impose any legal duty on the public to disclose anything. That, my amigos, is substantive and exceeds the authority of the PTO.”
Funny that with all the allegations of inequitable conduct flying around in pretty much every single patent litigation case, this glaring flaw in the duty of candor remains uncorrected.
As I have often said and it needs repeating. We need to go back to the roots, Keystone Driller. There, the remedy was to hold unenforceable other claims and other patents. The predicate was the claim in question is invalid and prior art was deliberately withheld from the court and the PTO.
We need to go back to the roots. It should not be a defense to a claim of infringement that something was or was not disclosed until after an affected claim is held invalid. If such a claim is held invalid, then and only then should a remedy for “non disclosure” be imposed on other claims or related patents that may be valid. Moreover, if the non disclosure is of prior art, the holding of invalidity should be with respect to that prior art.
The courts should conduct a separate hearing on IQ after the predicate holding of invalidity. The jury should hear nothing about alleged fraud as it would bias their verdict.
Moreover, the courts need to emphasize that the patent office does not have substantive rule making authority. While it may or may not list the things it would like disclosed, it cannot impose any legal duty on the public to disclose anything. That, my amigos, is substantive and exceeds the authority of the PTO.
I regret the passing of the old UK way of dealing with IC.
Validity post-issue hangs on the preponderance. Put validity in issue and you get discovery. In the end, one bad claim in the patent is enough to invalidate the patent. Amendment (or deletion) of the offending claim, to cure the invalidity, is within the equitable discretion of the court to refuse.
In other words, inventors, Applicants and patent owners decide for themselves what facts they perhaps ought to cough up to the PTO (and if they are in any doubt, pingie, they will either disclose or live to regret it, down the line).
IBP, will your fee be the same, for the patent on a blockbuster drug and one on a blockbuster hand tool? Or do you envisage a sliding scale? And small entities?
IBP: “But does the “punishment” fit the “crime”?”
Probably not. Unenforceability is clearly intended to be a punitive measure (and all IC is considered “serious”), so the punishment is designed to remove any possibility of profiting from the “crime”. If someone has improperly obtained a patent, take away the patent. If he could have gotten the patent without the inequitable conduct, he should have thought of that before. Inequitable conduct shouldn’t be worth a try.
Is it really as common as all that to find IC in cases of “innocent omission despite best efforts”?
A declaration of unenforceability from IC does not seem to me to be the “best” solution possible to the problem presented by IC.
When there is genuine IC, there has been a wrong committed against the public–the question is, how best to redress this wrong? To declare a patent unenforceable is one way–the patent-holder will have no patent rights as against any member of the public.
But does the “punishment” fit the “crime”? We all know that there is a scale of what can ultimately be ruled IC, from innocent omission despite best efforts, to fraud. Maybe in the case of fraud or intentional misrepresentation with intent to deceive, unenforceability would be appropriate–but what about the other categories?
I think that the solution in less serious cases should be a fine, payable to the public via the PTO.
The PTO would collect money, and the patent would either be valid or invalid based on the new information.
In the event that invalidity results, any past awards of damages could possibly be addressed on some theory like unjust enrichment, and license fees paid by third parties on the basis of the patent could possibly be recovered on a similar equitable basis, or on a contract theory.
Tanto1967:
The Fed. Cir. does not think. Clearly.
In my own practice, I now routinely “flood” the PTO with all prosecution history worldwide, not only the references, but every word, every copy, every nuance said by me or the examiner anywhere in the world.
After all, it is required. Clearly.
Idiots.
“Someone else, pingie? Well, we all know who that is.”
What are you talking about?
“That’s what you are there for, to anticipate what could go wrong, no?”
Again, Maxie, you are trying too hard to be too clever.
Speak plainly. The over-clever route is not working for you.
Someone else, pingie? Well, we all know who that is.
Where’s the “doubt” pingie? Is it in your mind, or in the mind of client, after you have subjected him to all your dire warnings. Is there ever a moment when your mind or his is completely free of doubt? Clients pay you to discover doubts, don’t they. That’s what you are there for, to anticipate what could go wrong, no?
So, what what level of practical usefulness has the test “when in doubt” then, pingie?
Then again, the more docs you submit, the more time there is to bill, eh pingie. But clients have to make a profit too. Otherwise they won’t be employing you next year and the year after that.
What’s the evidential standard, on materiality and intent, that your accuser must reach, before one can suffer the truly ferocious sanctions imposed on one whose conduct has been proven by due process to be inequitable? Reasonably high, I fancy.
Generally, I cling to the idea that, when all’s said and done, the law handed down by judges in a common law jurisdiction is what a reasonable man would find reasonable. You cling to that too, I like to think.
Maxie,
The lesson is when in doubt, submit.
Your statement “You have a duty of candor. Incompatible with that duty is to bury the Examiner in a cumulative pile of documents of marginal relevance.” is rather meaningless in this context. Nowhere does candor indicate that you must not bury the Examiner – especially with items of marginal relevance, as due caution indicates that what appears merely marginally relevant to the applicant, may indeed be highly relevant to someone else down the road.
Tanto I suggest you think it through. English law expects conduct to be equitable and declines to assist those whose conduct is inequitable. That’s a good principle, isn’t it? Otherwise, you have the law the way it works elsewhere, with your competitor knowing full well that its claim is invalid but nevertheless asserting it against you anyway, when it thinks it can get away with it.
Look at other Patent Offices, like the EPO and the UK IPO. They also invite an Apllicant to disclose everything relevant. What happens if they don’t?
Think self-interest. If you tell the PTO the truth and show the Exr the best attacks, and still get to issue, your patent then looks (to those contemplating infringing) quite resilient. Not so if the PTO file wrapper lacks a full discussion of the best validity attacks.
You have a duty of candor. Incompatible with that duty is to bury the Examiner in a cumulative pile of documents of marginal relevance. What’s new?
What we learn from the Therasense case is “If you dissemble, you could live to regret it”. Lesson: Don’t cheat and you should be OK.
I work in Europe for an international company. Did the Fed.Circ. really think this one through??? We are not just talking about prosecution before the EPO here. This holding encourages companies to flood the US patent office with prosecution histories with ALL of their worldwide filings. To do otherwise, ie, sort through every file and determine whether the arguments are “lawyer” arguments or “factual” would require an army of professionals. Now multiply my case by every applicant who files abroad, which is practically every corporate entity who files patents. Is a tsunami of cited overseas responses what the US PTO really needs right now? They are already busting at the seams.
I find it questionable that a court would hold a patent unenforceable for violating a rule crafted by the patent office. They can find a patent unenforceable for coming into court with “unclean hands” under Keystone Driller; but that case involved an agreement to suppress evidence of prior invention, among other nefarious acts.
With respect to ex parte conduct with the patent office, unclean hands would seem to require intentional misrepresentation of fact, or a failure to speak when circumstances indicated a clear duty to speak regarding factual issues.
In the case at bar, the real question is did the affidavit lie about a material fact. As MaxDrei pointed out, the EPO statement and the US affidavit are statements of fact about two different things, whole blood and live blood. Now, if it can be shown that the difference between whole blood and live blood within the context of the statement was immaterial, then it is clear that there is a conflict between the EPO statement and the US affidavit. This would then require, it seems to me, a finding of which statement is correct, the one made to the EPO or the one made to the USPTO.
But if the US statement turned out to be factually correct, what we have here is a holding that a US patent is held unenforceable because the applicant lied to the European patent office. The result is absurd.
If you have to prove that they believed that they were lying, you would never be able to prove inequitable conduct at all. But I see why the people around here are all upset about that: they are worried about losing patents whenever someone shows the PTO that five minutes with Google were enough to find all kinds of citations that make the patent look a lot less novel. Or is there really some other reason why people would want a standard that neuters the inequitable conduct standard by requiring courts to attempt to read the minds of people who fail to disclose material facts to the PTO?
Also, isn’t there any after-the-fact moderation around here? I understand not wanting to put this place under moderation, but the spam and comments like that by “Adam Smith” are pointless and annoying.
I know that trolls naturally appear in every online forum, but it’s bad when the only way that you can tell them from the spammers is that they don’t include a link of keyword soup.
“That’s false. I give answers all the time, NAL.”
I mean substantive answers to the actual questions – not fluff answers in misdirections.
I must have been too vague…
NAL Funny – you never seem to actually give answers, do you?
That’s false. I give answers all the time, NAL.
What are you afraid of?
Nothing whatsoever. What did you mean by “belief systems” in your comment upthread?
Go ahead give it a try. I won’t assail you if you honestly try and don’t unerstand one of my oh-so-confusing-and-vague terms.
Do the supposed mispoken terms prevent you from answering the substantive matter Malcolm?
Funny how you clamored and clamored for me to answer (which I did, in detail listing majority and dissenting viewpoints), and now you clamor and clamor for finer detail on terms that you nitpick on.
C’mon, entice me to answer by giving an answer yourself.
Funny – you never seem to actually give answers, do you?
What are you afraid of?
NAL Malcolm, if you feel that they should be simple
They should be simple for *you* to explain NAL becuase *you* made the statements initially. I made that perfectly clear (and I made it clear for a reason — because I suspected you would dissemble, which you did).
Try again, NAL. What “belief systems” were you referring to? What is the difference between “apparent conflation” and “conflation”?
It’s not a problem to admit that you mispoke. At least, I won’t hold it against you.
…and yet another diversionary tactic by Malcolm.
Care to actually address the substance Malcolm?
Go ahead give it a try. I won’t assail you if you honestly try and don’t unerstand one of my oh-so-confusing-and-vague terms.
At least, not too badly.
What are you afraid of?
“Blog history estoppel.”
that is funny.
“They are direct requests for clarification of statements you made and should be simple for you to answer.”
that is sad.
Malcolm, if you feel that they should be simple, why are you confused? If you feel that they are not simple, simply say so. The language I used is not so confusing and vague – unless you purposely want to be confused (or you want to inject confusion, inter alia, obfuscation). That’s a pretty standard MO for “the club”. I’m pretty sure most attorneys can figure out what I’m saying.
“So why not just explain what you meant?”
Blog history estoppel?
NAL: Up to the old trick of asking for repeated answers in hopes of obtaining conflicting results.
It’s not a trick. I’m repeating questions that were never answered the first time in hopes of trying to understand what the heck you are talking about. They are direct requests for clarification of statements you made and should be simple for you to answer. What’s the problem?
If you do not understand “threshold”
I understand what a “threshold” is, generally. I just have no idea what “threshold” you are referring to you when you say “Review how the court approached intent and which factors of materiality were used to reach the threshold level“. It’s confusing and vague, NAL.
Also confusing and vague are your references to “apparent conflation” (how does it differ from actual conflation?) and “belief systems”. That’s why I am asking you to clarify. Just trying to understand what you are talking about.
I may decide to provide answers to nonmeaningful questions
NAL, you are the one making “non-meaningful” comments. I’m just asking you to explain them. Why so resistant? I assume it’s not because you made the statements thoughtlessly out of an attempt to kick up and dust and make your comment seem responsive when it actually wasn’t. So why not just explain what you meant?
Malcolm,
Up to the old trick of asking for repeated answers in hopes of obtaining conflicting results.
Oh, how 6 of you.
“It does not make sense to “talk only about the CAFC decision.”
Um, yes it does. In fact, this is done quite often. If you cannot do this, then you have no business commenting on the thread (after all, what are the threads for?).
I may decide to provide answers to nonmeaningful questions once you start answering questions put to you. Replying that you have answered is not an answer. I need not entertain your pedantic semantics.
If you do not understand “threshold”, you need to reread both the CAFC case and the comments above.
Tags were messed up in previous comment. Here’s an attempt to correct:
NAL: There are evidently political overtones coinciding with various belief systems coloring one’s position on this matter.
Could you be more specific? What “belief systems” are you referring to?
How does “apparent conflation” differ from “conflation”?
Review how the court approached intent and which factors of materiality were used to reach the threshold level.
The threshold level of what?
test
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Tags were messed up in previous comment. Here’s an attempt to correct:
NAL: There are evidently political overtones coinciding with various belief systems coloring one’s position on this matter.
Could you be more specific? What “belief systems” are you referring to?
How does “apparent conflation” differ from “conflation”?
Review how the court approached intent and which factors of materiality were used to reach the threshold level.
The threshold level of what?
NAL:
I was explicitly talking only about the CAFC decision and explicitly said that the lower court decision was not part of my reply
But the lower court’s decision is a major part of the CAFC’s decision. This is an IC case. It was a bench trial. It does not make sense to “talk only about the CAFC decision.”
What did Malcolm provide as the basis for his reasoning? NOTHING from the CAFC decision.
What are you talking about? My first comment refers directly to the CAFC decision.
There are evidently political overtones coinciding with various belief systems coloring one’s position on this matter.
Could you be more specific? What “belief systems” are you referring to?
How does “apparent conflation” differ from “conflation”?
Review how the court approached intent and which factors of materiality were used to reach the threshold level.
The threshold level of what?
mea culpa MaxDrei and Malcolm, I took MaxDrei’s comment in reference to Malcolm’s reply to my post, rather than Malcolm’s reply to MasDrei’s post.
“You’re on the button, as usual.”
except MaxDrei, Malcolm is not – as usual.
Don’t be fooled by Malcolm’s non-arguments and twisted replies.
“That is not true. This was a bench trial”
except I was explicitly talking only about the CAFC decision and explicitly said that the lower court decision was not part of my reply. Stay on point Malcolm.
“Talk about punting.”
except – there was no punting as I explained why I found Linn’s position more tenable. I included the majority’s position and pointed out explicitly the point in Linn’s argument that is most persuasive. What did Malcolm provide as the basis for his reasoning? NOTHING from the CAFC decision. Know what is the point Malcolm.
“What is your basis for the statement that “apparent conflation is still the rule”? As noted upthread, proving inequitable conduct is difficult and it’s the rare case where it succeeds”
The basis for the statement is there – try again. The note you provide is a non-sequitur – rarity has nothing to do with the case at hand. Review how the court approached intent and which factors of materiality were used to reach the threshold level. This level is supposed to be met BEFORE balancing takes place. Clearly, by depending so heavily on materiality prior to the balancing point, conflation is indeed the rule. Put the handwaving away Malcolm and address the points in the CAFC decision.
Can’t argue with much of that Malcolm. You’re on the button, as usual. But, at least in Europe, and depending on context, there’s a decisive qualitative difference between “optionally” and “preferably”. A statement of preference in an app as filed is a toe-hold Applicant can lever up on, with post-filed evidence of surprising and unexpected effects (an Affidavit, for example), to get the claim to issue. The word “optionally” wouldn’t cut it.
MD Malcolm yes the operative word is “optional”.
Max, seems to me that “preferable” is just another shade of “optional.”
If something is strictly necessary, describing it as “preferable” is incorrect (and vice versa) and to ignore the difference is misleading. e.g., “it is preferable to unplug the small appliance before immersing it in water for cleaning”. As in-house counsel, would you recommend that your company put those instructions on the back of the applicance if, in fact, it was actually *necessary* to unplug before immersing? Would you be willing to take the stand in court in front of the parents and children of the electrocuted mother to argue that “anyone who regularly reads these instructions understands that ‘preferable’ means ‘required'”? Would $1000 in your pocket change your mind? $10,000? $100,000? $1 million? $10 million? $100 million?
Now assume that you secretly know for a fact that nobody will be physically or emotionally injured, ever, as a result of your unusual choice of words (i.e., it’s just about promoting sales of the ‘water-resistant’ product and/or the company itself).
It’s an interesting exercise. Of course, what’s most important is not money or lives but your reputation, right? Nobody wants to be known as a multi-millionaire who is sort of loose with the English language. Or so we’ve been told.
MD I suggest that this Exr got “worn down” by the determined and unrelenting assault from the Applicant. In the end it did the Applicant no good
Oh, I think it did the Applicant quite a bit of good:
link to sanfrancisco.bizjournals.com
Tuesday, April 6, 2004
Abbott Laboratories said Tuesday it completed its $1.2 billion acquisition of TheraSense of Alameda after a majority of TheraSense Inc. shareholders approved the transaction on Monday.
TheraSense makes blood glucose monitors for diabetics.
“What “belief systems” are you referring to?”
She’s referring to having a sense of right and wrong. Some people more or less have one, like the folks on your side. And some people, like those on her side, more or less do not. I believe she was also stating that generally speaking this translates into democrats and republicans respectively on the political scale.
NAL: just how “extremely careful and cognizant the district level was” cannot be the main focus here.
That is not true. This was a bench trial. The Federal Circuit routinely overturns district court decisions relating to IC and every other issue of patent law because the district court did not do the job of fact finding and/or recording its fact finding or analysis of the facts. The district court’s understanding of the law and its explanation of its decisions are nearly always the main focus of a Federal Circuit case, and this is especially true in an IC case.
I found Linn’s position simply to be more convincing in case law citations and legal logic.
Talk about punting.
I’m just thinking that if “inequitable conduct” means what lay people think it means, then it includes the deliberate use of the word “whole” instead of the word “live” to bamboozle the PTO into issuing a patent. Mulling over your comments (thanks)
I guess the problem is to prove “deliberate”.
Still, it beggars belief that it was not a deliberate choice of the word “whole”. I recall that the source of the Affidavit was the party praised throughout by the Dissent for its unrelenting and scrupulous adherence to the verbatim text (“live”) of the prior art reference.
NAL Neither will I, but that is not surprising, as at this level, apparent conflation is still the rule.
What is your basis for the statement that “apparent conflation is still the rule”? As noted upthread, proving inequitable conduct is difficult and it’s the rare case where it succeeds. It seems, then, that “apparent conflation” of intent/materiality is not “the rule” but rather the rare exception.
Also, how does “apparent conflation” differ from “conflation”?
There are evidently political overtones coinciding with various belief systems coloring one’s position on this matter.
Could you be more specific? What “belief systems” are you referring to?
Tell me, pray, where’s the flaw in my assessment?
Inequitable conduct is not about whether or not the patent should have issued.
Technically, validity isn’t even about whether or not the patent should have issued, because of the different evidentiary standard. But that’s another show.
Awesome, Noise! That glasses metaphor really makes things clear for me – I understand perfectly when I put on your glasses.
MaxDrei,
the flaw: “It ought to have been decisive to the outcome.”
When an obvious solution presents itself, it is NOT a universal solution. You point out a very real concern between “whole” and “live”. However, that concern does not provide answers to all questions.
If it helps, think of when I assail you for trying to make your pair of glasses work for everybody, regardless of their eyesight. You are falling into the same mode of thinking here.
There is a very real tension between the requirement to find an appropriate level of evidence for each of the two prongs of materiality and intent BEFORE any balancing is contemplated, and the conflation of strong materiality infecting the intent analysis.
So in a sense, you may be perfectly correct in the “whole” versus “live” scenario, but that answer won’t be the answer that the judges are looking for – they are looking at a different outcome from a different question.
Your glasses will not help.
Noise, Malcolm, Anybody: It is my assessment that in this case, apart from A and B, nobody involved “got” the decisive point, that “whole” blood and “live” blood are not synonyms but different (whereby the Affidavit that got the patent to issue fooled the Examiner).
That specific difference doesn’t take a genius to appreciate. It ought to have been decisive to the outcome. It ought to have stopped the patent from issuing in the first place.
Tell me, pray, where’s the flaw in my assessment?
That’s not an elephant in the room, its just Mooney’s a ss. It gets bigger with every twinkie.
Malcolm yes the operative word is “optional”. My elephant in the room (I should stop using cliches) is that the app should never have got through to issue, but nobody points that out.
The Exr didn’t notice that the carefully crafted Affidavit evidence, when read equally carefully, lacked any reason for the Exr to relent in relation to the obviousness objections.
I suggest that this Exr got “worn down” by the determined and unrelenting assault from the Applicant. In the end it did the Applicant no good, but what a lot of billable hours were caused, by letting the miserable thing through to issue.
“[I am not changing my IDS filing protocol] based on what happened here.”
Neither will I, but that is not surprising, as at this level, apparent conflation is still the rule. Prudent representation dictates that IDS filing practice continues to take this into account.
RE: “Again, Judge Linn can say this…” and “In fact, the district court seems to have been extremely careful and cognizant of the relevant law.”
Whether it is so or not is hardly the point – obviously Linn is in the minority on this case. Equally obviously, the facts and writings at the District Level were not reviewed (by me, not sure if anyone else posting here has actually read them either) – my comments were strictly based on the reading at the current level, and so just how “extremely careful and cognizant the district level was” cannot be the main focus here. At this level what is the main focus are the legal arguments concerning what this level CAN and DID review. I found Linn’s position simply to be more convincing in case law citations and legal logic. The majority punted per Linn’s analysis.
Likewise, it is not a surprise that you do not find Linn’s position nor legal analysis convincing. The comment of “But neither the district court nor the majority dismissed the second prong” can be equally met with the reply of “Again, [fill in the blank] can say this but that doesn’t make it so.” Especially as the majority at the current court level DID punt on the second prong review – Linn was correct in this point. What is evident in THIS level’s legal analysis is that conflation is (and remains) a problem with the application of the two prongs.
Yes, proving intent IS a difficult thing to do – thank God for the presumption of innocence in this country and for the fact that proving intent remains a difficult task – as it should be. There are evidently political overtones coinciding with various belief systems coloring one’s position on this matter. That difficulty notwithstanding, conflating the materiality prong with the intent prong in order to reach some minimum level of the intent prong PRIOR to the balancing of the two prongs is not satisfying here. To paraphrase a line from the movie “Field of Dreams”, the majority took two 1950’s and moved right on into the 1970’s.
MD The prior art, in relation to the special case of blood that is whole AND live, teaches that a membrane is “preferred”. In all other situations (including test strips for blood that is whole but not live) a membrane is “optional”.
Why then the big fuss about the totally irrelevant word “preferred”?
Just so I understand, MD, what do you believe is the relevant word? “Optional”? What is the “elephant in the room”?
is wool-pulling a basis to revoke the patent?
Certainly, particularly where you make a point of doing so to obtain an interpretation of a phrase opposite to an interpretation which you previously asserted was “unequivocably clear,” and wherein such interpretation was critical to obtaining the patent.
Somebody here was deliberately blurring the distinction, no? Wasn’t it that which upset the court? But the professional skill of all lawyers and judges is to be able to blur distinctions, no? So, to call out a lawyer for blurring a distinction is bad form and betraying one’s fellow jurists, no?
No.
NAL Just as your sockpuppet didn’t count
I’ve no idea who or what you’re talking about.
If the courts continue to conflate the two prongs
What do you mean by “continue to conflate”? Seems to me (and the majority here) that the Federal Circuit has set it up so that it is only the very rare case where inequitable conduct can be properly found and upheld on appeal. Nothing about the findings in this case will change the way I currently prosecute and handle IDS subsmissions. I won’t be filing any more references than I already do based on what happened here. Will you?
From the dissent: Indeed, on closer examination, it becomes apparent that the district court simply disagreed with Attorney Pope’s and Dr. Sanghera’s interpretation of the EPO submissions.
Again, Judge Linn can say this but that doesn’t make it so. The district court found Pope and Sanghera’s explantions to be “incredible” and their demeanor to be that of people engaging in a cover-up after the fact.
The discussion of intent as segregated from materiality is critical, especially when one leans so heavily on materiality to satisfy the intent prong – its almost like dismissing that second prong altogether based on what you believe from the first prong.
Almost like? I don’t know. But neither the district court nor the majority dismissed the second prong. In fact, the district court seems to have been extremely careful and cognizant of the relevant law. It is not the fault of the district court that the facts smelled and presented the patentee with the difficult task of providing a credible explanation for those facts, which they apparently failed to do in a spectacular fashion (I was not at the trial or the depositions, so I have to take the district court’s word for what was observed).
As I previously noted, my problem with Judge Linn’s dissent (and with the case law he cites, if it turns out to stand for what Judge Linn believes it stands for) is that short of uncontested written documents stating “we are intending to deceive the PTO” or a direct admission from a witness, there would appear to be no practical way to prove inequitable conduct. I understand that there are practitioners who are obsessed with IC and the mythological “plague” who would applaud this result. I’m not one of them. I also understand that there are practitioners who believe that IC should be treated exactly as fraud is treated. Certainly what happened here could reasonably be characterized as fraud on the patent office. I don’t know anyone who believes that proving IC before the PTO should be more difficult than proving fraud (except perhaps for Judge Linn).
Interesting, MaxDrei.
Perhaps the policy battle eclipsed the elephant.
Did you trace the battle back to the beginning of the court saga?
Noise, I will be more specific:
The claim is to a test strip for whole but NOT live blood.
The prior art, in relation to the special case of blood that is whole AND live, teaches that a membrane is “preferred”. In all other situations (including test strips for blood that is whole but not live) a membrane is “optional”.
Why then the big fuss about the totally irrelevant word “preferred”? That’s a diversion and a wild goose chase, pursued by everybody involved in this case, all the way to the EPO and back.
I find both the Decision and the Dissent unsatisfactory because they both fail to confront what to me looks like the elephant in the room.
Interestingly, my response to Malcolm, which had posted has been removed.
in short, some of my post on another thread deals with Malcolm’s two-faced position and some will be briefly summarized here: – the “very rarely” comment is outright laughable. The fool provocateur fools no one.
Again, your call for Dennis backing you up conflates two different theories – my how your defense includes a point already defeated (a classic obfuscation tactic).
As to including MaxDrei in your little group, I distinctly do NOT. In fact, my assailing of MaxDrei has borne fruit in that MaxDrei will actually involve his critical faculties (at times – although he sometimes slips back to old habits). My asailing of you and 6 merely hits those shields of persistent ignorance.
As to what comment threads are for – Let’s see you apply that comment to yourself in more than one or two threads and leave out your patently absurd conduct that generates my voluminous rebuttals. Not surprising that you seem to ignore that fact in your analysis. Just as your sockpuppet didn’t count your voluminous contributions to the gargantuan thread – in which by the way, you never seem to provide the answer that several people seek (some would see this as duplicitous on your part in so ardently calling for answers that you yourself refuse to give).
MaxDrei,
Have you read the district court level documents? (I have not – yet).
So upon merely reading the current level, I would posit that the crux of the matter is NOT a whole-live debate; but rather, a materiality/intent debate. I place more importance on what the judges are debating than any implied subterfuge of counsel.
The majority sets the stage with
““The party asserting inequitable conduct must prove a threshold level of materiality and intent by clear and convincing evidence. The court must then determine whether the questioned conduct amounts to inequitable conduct by balancing the levels of materiality and intent, ‘with a greater showing of one factor allowing a lesser showing of the other.’” Digital Control, Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006) (quoting Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 693 (Fed. Cir. 2001)) (citations omitted).”
followed many pages later with
“In concluding that Abbott’s representatives—Pope and Dr. Sanghera—intended to deceive the PTO by withholding the EPO documents, the district court made five findings: (1) that the statements made to the PTO concerning the prior art ’382 patent were absolutely critical in overcoming the examiner’s earlier rejections of the claims of the ’551 patent; (2) that the EPO statements would have been very important to an examiner because they contradicted the representations made to the PTO; (3) that Pope and Dr. Sanghera both knew of the EPO statements and consciously withheld them from the PTO; (4) that neither Pope nor Dr. Sanghera provided a credible explanation for failing to submit the EPO documents to the PTO; and (5) that Pope’s and Dr. Sanghera’s explanations for withholding the EPO documents were so incredible that they suggested intent to deceive. See Trial Opinion, 565 F. Supp. 2d at 1113–16.”
Further, the majority states
“The district court’s fourth and fifth findings regarding intent are based on the district court’s assessment of witness credibility.”
I find the dissent’s position very tenable on its face. The discussion of intent as segregated from materiality is critical, especially when one leans so heavily on materiality to satisfy the intent prong – its almost like dismissing that second prong altogether based on what you believe from the first prong. The Law says that each prong must be proven to have been met, and THEN the balancing can be undertaken – it is not balancing just how the prong is met based on the strength of either prong. This is the conflation origination.
At this level of appeal, the scope is limited. But that is not to say that the conflation of prongs is not one of those items that is off limits to the judgment at hand. The majority seems to be saying its hands are tied in reviewing the intent prong, and wants to dismiss any efforts in so doing. I do not agree with that stand. Not that this level court CAN review something only the trier of fact witnessed, but this level CAN review just how the trier of fact weighed the various elements and CAN determine if undue conflation between the two prongs occurred.
The dissent in fact appears to be trying to un-conflate the two separate prongs in stating:
“The question, thus, is not whether it is plausible that the information is immaterial—a question asked under the objective materiality prong—but rather, whether it is plausible that the individuals subjectively believed that the reference was immaterial at the time they withheld it—a question presented under the subjective intent prong.”
and
“Consistent with this subjective standard, “[i]ntent to deceive cannot be inferred simply from the decision to withhold the reference where the reasons given for the withholding are plausible.” Dayco, 329 F.3d at 1367.” (added emphasis not repeated)
and
“Indeed, far from being “irrelevant,” any facts tending to show what Attorney Pope and Dr. Sanghera did or did not know during prosecution are critical to discerning their intent and the plausibility of their explanation.”
***and to me the highest impact statement of the dissent:
“While considerable deference is owed to a trial court’s credibility determinations, this does not mean that a trial court can “cloak the application of an erroneous legal standard in the guise of a credibility determination, and thereby shield it from appellate review.” Andreu v. Sec’y of Dep’t of Health & Human Servs., 569 F.3d 1367, 1379 (Fed. Cir. 2009). Indeed, on closer examination, it becomes apparent that the district court simply disagreed with Attorney Pope’s and Dr. Sanghera’s interpretation of the EPO submissions. The district court’s opinion reflects that what proved “unconvincing” to the court was not the truthfulness of the witnesses’ subjective beliefs, but rather the notion that the submissions were not in fact material.”
If the courts continue to conflate the two prongs, it is not defensible for counsel to NOT submit everything on hand that meets any of the possible standards of review (including the mythical “reasonable examiner” standard). CYA is simply mandated by the jurisprudential stance.
MaxDrei,
Could you be more specific about what you found unsatisfactory in the decision and the dissent?
Malcolm,
Can you actually supply answers and answer challenges as often as you request others to do so? Can you abide by the conduct that you ask others to abide by?
I should like to have a civilised discussion about this case. Is that possible on this thread.
I have read the Decision and the Dissent. I think neither Decision is satisfactory. I think that the crux of the struggle lies in the switch from “live” to “whole”, as in parenthetical “but preferably when being used on live blood” in the prior art and the affidavit evidence from Applicant with the words “if it were to be used with a whole blood sample”.
Was that switch material and was it adduced with an intent to mislead the PTO (at the end of a line of continuations) into issuing a patent? Frankly, to me, it looks like classic pulling of wool over Examiner eyes.
But is wool-pulling a basis to revoke the patent?
The claim in suit is for a test strip. Whole blood but not live blood. Somebody here was deliberately blurring the distinction, no? Wasn’t it that which upset the court? But the professional skill of all lawyers and judges is to be able to blur distinctions, no? So, to call out a lawyer for blurring a distinction is bad form and betraying one’s fellow jurists, no?
Just trying here to provoke a discussion about the merits of the unsatisfactory decision and the unsatisfactory Dissent.
You know if we had only one patent agency to deal with for patents all over the world, then we wouldn’t have this problem now would we. What is more interesting is that this comes on the heels of Obama’s town hall meeting where an alleged small inventor compalined about the exhorbitant cost of international protection. Then you have the banks want to create a world wide tax that goes into an international kitty to pay for failed banks internationally. They you have SCOTUS allow foriegn investors to manipulate our elections with corporations that they own. HMMMMMMMMMM this smacks of an opinion with the subtle desire to coerce applicants into a one world patent system. In short, I believe the court is wrong and we should not consider what happens in foreign tribunals. In fact there are SCOTUS cases that reject out of hand arguments and theories set forth on similar facts before them on the grounds that it is of no consequence what is done in other jurisdictions. In my opinion this case is radically flawed and runs afoul of established SCOTUS law on the concept of looking at foreign arguments. In short we are a sovreign, a court should not be allowed to look overseas for some acts to invalidate a patent here.
Or are you merely trying to obfuscate the fact that you post under many different names
Noise, I’m not trying to obfuscate any facts. I’m telling you that I don’t engage in habitual sockpuppetry. Have I ever posted under a pseudonym other than Malcolm Mooney? Highly likely. Do I do so frequently? No, very rarely. Do others do so habitually? Yes. Do those others tend to cheerleaders for you and vice versa? Yes.
Again, Dennis can back me up on this. Not that it would matter to you one way or the other. You don’t seem interested in patent law or patent practice nearly as much as you seem obsessed with me and 6 and MaxDrei.
Anyway, getting back to the thread, do you think the majority or Judge Linn is correct here? A little of both? State your answer and your reasons and be prepared to defend them or clarify if asked to do so. That’s what comment threads are for.
Zing!
“Dennis Crouch can set you straight regarding this smear, NAL.”
I believe that you are confusing you rposting under many names with t he smear that you are Dennis posting under many names including Malcolm.
Two different theories.
Or are you merely trying to obfuscate the fact that you post under many different names with the Dennis=Malcolm theory in order not to give an affirmative answer to the question of “Malcolm, do you post under more than one name?”
…thought so.
Gee, Malcolm commenting on someone posting under another pseudonym yet sounding so amazingly similar to the postings of a first pseudonym.
Again: what are you talking about, NAL?
Umbrage from the person who probably has more pseudonyms than anyone else
Dennis Crouch can set you straight regarding this smear, NAL.
who demonizes others who dare to have other political viewpoints
LOL. Demonizes? I admit to having a bit of fun at the expense of dittohead/teabaggger types and their inane fantasies. But this is true of nearly all honest, educated people who are interested in politics.
who runs at the slightest request for a substantive discussion.
Yes, you keep saying that but I’m right here, having made my substantive point in the second comment in this read (expressing my view that Judge Linn’s dissent is nonsensical when one considers the facts of the case, which I summarized in my comment). You’ve done nothing, as usual, except hurl insults.
I’ll repeat that: you’ve made no comments, as usual, except to hurl insults and re-cast your judgments on this blog for the billionth time.
Do you think the majority or Judge Linn is correct here? A little of both? State your answer and your reasons and be prepared to defend them or clarify if asked to do so. That’s what comment threads are for.
Just out of curiosity, how long ago was it that I made the crack about Caveman smoking Ron’s weenie? Two years? I’m amazed that you still haven’t recovered. Maybe a dating service could help you.
“Gosh, this sounds so familiar,”
Like that rash you have that won’t go away? Or the voices in your head?
The Duty of Disclosure is hard to deal with. Here’s a simple rule of thumb. If you think it hurts your cause, disclose it.
7: yes, it does appear that Dudas took his stubornness out the door with him.
No One in Particular,
I dealt with a reasonable examiner just yesterday. Received a first office action, i responded with a minor amendment defining over the prior art together with a proper argument of why it did so (and why that art could never ever disclose the claim term). He called me with a concern he had about a claim term if he allowed the case, suggested an examiner’s amendment to take care of his concern (that I felt was reasonable), and I agreed. That should be it.
Granted, things like this happen only, say, 1 out of every 20 cases or so, but it does happen. I’ve had many more calls from examiners looking to allow a case (that should be rightfully allowed) under Kappos than I ever did under Dudesass.
The disclosure or non disclosure of the misstatement had nothing to do with whether the statement was a lie. If it was a lie, there was fraud on the PTO regardless of whether there was disclosure or non disclosure. Anyway you cut it, non disclosure had nothing to do with the issue of fraud and disclosure should not have anything to do with a cure.
Rule 56 brings irrelevancies into the discussion of inequitable conduct.
“Patent applicants (and their attorneys/agents) are required to disclose to the US Patent Office any information that a reasonable examiner would likely consider important in deciding whether to issue a patent.”
It’s been years since I have dealt with a reasonable examiner.
They’re all like 6 now.
“Except that I didn’t say anything ridiculous. Try a new sockpuppet.”
What’s a Malcolm post without straw?
“…starting to get vapid like 6.”
Preacher – starting to? I think you are a little late (or perhaps for some strange reason you are trying to be kind).
Gee, Malcolm commenting on someone posting under another pseudonym yet sounding so amazingly similar to the postings of a first pseudonym.
Umbrage from the person who probably has more pseudonyms than anyone else, and as we learned from the spammies, even posts more than most people under the main pseudonym. There is no end in sight of the chutzpah.
But let’s hear a sermon on honesty and integrity from the poster who is fascinated with oral copulation of deceased presidents, who demonizes others who dare to have other political viewpoints, who relishes derogatory sexual terms, and who runs at the slightest request for a substantive discussion.
Oh wait – no need to ask for such here at the trainwreck.
Tickets, I’ve got tickets – buy your tickets hear…
it is pretty ridiculous that you would call a federal judge “ridiculous.”
Gosh, this sounds so familiar, Caveman.
…come to think of it, it is pretty ridiculous that you would call a federal judge “ridiculous.” You’re problem is that you have no respect. That’s why you are so miserable and everyone, including your mother, h8tes you.
“Preacher Heck Mooney, I can’t think of a worse person to accuse anyone of being “ridiculous.”
Except that I didn’t say anything ridiculous. Try a new sockpuppet.”
Except that no one said you said anything ridiculous, what is ridiculous is you of all people accusing someone, of vastly higher stature than you I might add, of “being ridiculous” – its called irony.
Try making sense for a change. You’re starting to get vapid like 6.
“The BPAI is getting pretty aggressive with affirming. Read the appeal briefs and decisions in 10/869,931. I see more and more requests getting denied. Someone needs to appeal to CAFC.”
I reviewed the case. IMO, it’s a prime example of really poor advocacy and lazy APJ’s.
When you fail to explain the issues as questions of fact or law, and fail to state the standard of review, and provide persuasive arguments why the examiner failed to make a prima facie case, for whatever rejection is made, you make it extremely easy for the BPAI’s lazy APJ’s to rubber stamp rejections.
Maybe with the USPTO tightening up we can purge our ranks of the hacks who are here just to make a buck and not for the advancement of the sciences.
If you check your constitution (you are, after all, a scholar), you’ll notice that it’s up to Congress to advance the sciences. Not the PTO, not the applicant, and not the agent. As long as the existence of a patent system generally advances the sciences, no more is required.
Requiring a practitioner to undertake part of that for which the USPTO is paid, i.e., search, is a taking pursuant to Fifth Amendment, pure and simple.
Funny, funny stuff.
Attempting to move around the taking issue and requiring a licensed patent practitioner to undertake the same task without compensation is a violation of the 13th Amendment.
You know a practitioner who undertakes tasks without compensation? Is he any good?
This is probably not the best time to point out that no applicant is required to retain an agent/attorney at all, much less pay him to conduct a search.
You know what I like about the BPAI, they make it clear that if you are gonna prosecute patent applications, you better know what you are doing from a procedural perspective, i.e., you had better be a good attorney. Maybe with the USPTO tightening up we can purge our ranks of the hacks who are here just to make a buck and not for the advancement of the sciences. I mean it is really cool to be a patent attorney, compared to other attorney practice areas.
Here is my take on inequitable conduct. Requiring a practitioner to undertake part of that for which the USPTO is paid, i.e., search, is a taking pursuant to Fifth Amendment, pure and simple. An applicant pays for a search and the Government, as recipient of those funds must perform a reasonable search . . . PERIOD. If the Applicant is required to pay a private attorney to conduct a greater search of that which is clearly available to a government agent, i.e., a patent examiner, that is a taking or worse a fraud. Congress and the President have spoken as to how much a search shall cost. It is ultra vires for the USPTO to require more. The next case I anticipate is an action against the USPTO for a taking, because a patent owner had a patent invalidated based upon non-citation of prior art that is easily accessible through PALM or public PAIR.
Attempting to move around the taking issue and requiring a licensed patent practitioner to undertake the same task without compensation is a violation of the 13th Amendment.
With respect to the Courts decisions, given these opinion on inequitable conduct and that ridiculous SCOTUS opinion about Corporate Campaign donations, I feel it is time that we enact one of the Constitutional Amendments that Theodore Roosevelt proposed. A plebiscite so that the people of our great nation can repeal any SCOTUS precedent the people find offensive. Just imagine if we could have repealed the Dred Scott decision, there would have been no war between the states. Remember ‘ol Teddy was the first President to take on Corporate Trusts.
The BPAI is getting pretty aggressive with affirming. Read the appeal briefs and decisions in 10/869,931. I see more and more requests getting denied. Someone needs to appeal to CAFC.
Preacher Heck Mooney, I can’t think of a worse person to accuse anyone of being “ridiculous.”
Except that I didn’t say anything ridiculous. Try a new sockpuppet.
There is nothing wrong with making good faith legal arguments, even seemingly contradictory ones, when characterizing prior art.
It’s likely that you merely intended to beat a strawman here.
But there is something wrong with making “seemingly contradictory” legal arguments: you open yourself to allegations of inequitable conduct. In the previous thread you’ll find lawyers arguing that the fear of such allegations demands taking such extreme measures as filing 15,000 pages of IDS material.
The better practice is to avoid “seemingly contradictory” legal arguments altogether or, if you must make them, include well-reasoned, comprehensible and credible explanations for the “seeming contradictions” on the record. This isn’t terribly difficult, unless you are hell-bent on obtaining rights that you aren’t entitled to. It goesw without saying, of course, that huge piles of money can motivate certain types of individuals to engage in all sorts of practices that are (ahem) “seemingly” unethical.
The key aspect is intent to deceive. There is nothing wrong with making good faith legal arguments, even seemingly contradictory ones, when characterizing prior art.
It’s a little more dicey when you have contradictory characterizations of your own invention vis a vis the art. An affidavit raises further questions – a good reason to avoid them.
“Linn is being ridiculous…”
Heck Mooney, I can’t think of a worse person to accuse anyone of being “ridiculous.”
Crawl back into your dark hole.
Judge Linn argues (1) that there is an explanation for the statements that does not lead to them being directly contradictory
As noted in the majority’s decision, Abbott had the opportunity to provide such explanations and they were not deemed credible by the Judge who was present in the courtroom when the witnesses were being cross-examined.
Judge Linn’s argument basically boils to a requirement that one go back in time and read the mind(s) of the applicant. In order to obtain the patent, the applicant argued that the term “black” would be understood to mean “white”, and failed to disclose their statement in the EP that “black” meant “black” and was unequivocably clear. But, Judge Linn argues, can you PROVE that applicant KNEW this was material?
Linn is being ridiculous.