Inequitable Conduct: Forming the Doctrinal Boundaries

TALtechTaltech v. Esquel Enterprises (Fed. Cir. 2010)

After a prior remand, the W.D. Washington district court held Taltech’s patent unenforceable due to inequitable conduct during prosecution and awarded over $6 million in attorney fees and costs to the defendant.

Section 285 of the patent statute allows a prevailing party to obtain reasonable attorney fees in “exceptional cases.” Typically, exceptional cases involve misconduct during either prosecution or litigation. Here, the lower court found three independent grounds for finding an exceptional case: (1) Taltech’s inequitable conduct in failing to disclose a prior-art raincoat seam to the PTO (labeled the “undisclosed raincoat seam” or URS); (2) Taltech’s inequitable conduct in misrepresenting the double top-stitch seam; and (3) abusive litigation tactics.  On appeal, the Federal Circuit (Judges Mayer and Friedman) found no clear error with the lower court ruling.

PatentLawPic988The compelling element of the decision comes from Judge Gajarsa’s dissent:

This case exemplifies the ongoing pandemic of baseless inequitable conduct charges that pervade our patent system. For the reasons stated below, I respectfully dissent from the majority opinion.

Defendants’ inequitable conduct claim rests on a handmade drawing that the inventor, John Wong, sketched on a piece of paper during his deposition. Defendants’ counsel requested that Wong draw the prior art that “inspired” him to experiment in making pucker-free seams in dress shirts. In response, he sketched a prior art seam used to waterproof raincoats manufactured in the TAL factory. During litigation, Wong’s drawing was labeled the “Undisclosed Raincoat Seam” (“URS”). After a bench trial, the district court found that Wong committed fraud on the U.S. Patent and Trademark Office (“PTO”) because he failed to disclose the URS as the “inspiration” for his invention. 

We vacated the inequitable conduct finding on the first appeal because there is no legal requirement that an inventor disclose the “inspiration” for his invention to the PTO. We remanded the case for a proper substantive inquiry into whether the URS was merely cumulative of the prior art on record with the PTO. Taltech Ltd. v. Esquel Enters., Inc., 279 F. App’x 974, 977 (Fed. Cir. May 22, 2008) (“If the undisclosed raincoat seam was merely cumulative to Robers, then no inequitable conduct lies in its nondisclosure.”).

On remand, the district court again found that Wong had committed inequitable conduct based on his failure to disclose the URS, but did so based on a flawed cumulativeness inquiry. The district court erroneously limited the teachings of both the URS and the Robers reference in order to render them non-cumulative prior art. Had the district court properly interpreted the teachings of both references, it would have found that the URS was merely cumulative of Robers.

The district court also improperly inferred intent to deceive from the materiality of the non-disclosed reference and several statements Wong made to the PTO. In both instances, the district court drew an inference of bad faith despite an equally plausible, and likely more reasonable, inference of good faith. Such an analysis has been rejected by this court and is legally erroneous. See Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365, 1376 (Fed. Cir. 2008) (“Whenever evidence proffered to show either materiality or intent is susceptible of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor of another equally reasonable inference.”). The district court’s numerous legal and factual errors are discussed in more detail below. . . .

 

 

238 thoughts on “Inequitable Conduct: Forming the Doctrinal Boundaries

  1. 238

    they probably would have held that the foreign public use was an effective abandonment of the right to file US application.

    Once again, who cares how the court characterizes foreign use? Don’t get me wrong, I’m glad they found some part 102 that applies, but I still don’t understand what that is supposed to tell us about public use in this country. For which there is an almost suspiciously specific basis for invalidity under 102(b).

  2. 237

    Regarding foreign public use, what philosophical difference is there between telling an applicant that he has abandoned his right to a patent in United States by patenting his invention first abroad (102(d) but allowing him to patent an invention in the United States if he simply uses the invention abroad for a number of years without ever filing in United States? One can instantly see that the result is absurd.

    Even though the patent office continues to rely on Gandy vs. Main Belting cited above, that Supreme Court case never discussed “abandonment.” Had they discussed Cooper V. Shaw, they probably would have held that the foreign public use was an effective abandonment of the right to file US application.

    Foreigners are “saved” from legal abandonment if they file a patent application in United States within the year of filing a patent application in their home country and claiming Paris convention priority to that application giving them an effective filing date prior to the date of abandonment.

  3. 236

    Again, tell me just how private use in the US is prior art to third parties.

    I want to say “102(b) if it’s on sale”, but I can’t help thinking you want a more involved answer.

  4. 235

    IANAE, try the example.

    It is not prior art. No Supreme Court case, no Fed. Cir. case or CCPA case has ever held it to be prior art effective against 3rd parties.

    Rich should have made this clearer, but the vice goes back to 1836, 1830, and 1870, where the concepts were mixed in the statutes.

    Again, tell me just how private use in the US is prior art to third parties.

  5. 234

    the theory and principal behind “on sale bar” is that it is a form of abandonment.

    But it’s clearly not. Abandonment is one section of the statute, and on-sale is a completely different section. The abandonment section is phrased to be specific to the inventor, such that his abandonment clears the way for a subsequent inventor to obtain a patent. The on-sale section is phrased to make an on-sale event prior art against the world, in the same way as any other 102(b) art. Can an invention on sale in the US for less than a year be evidence of abandonment? Maybe. Who cares? After a year, it is prior art.

    Sure, when the on-sale event doesn’t occur in “this country”, you have to resort to a different section to invalidate the patent. Sure, on-sale events outside “this country” aren’t prior art. None of that is at all relevant to my point.

    “A person shall be entitled to a patent unless … the invention was … in public use or on sale in this country[.]”

    It doesn’t matter who placed it on sale. It’s prior art a year later.

  6. 233

    IANAE, I think the point I was making originally is that private use is not prior art to third parties as the theory and principal behind “on sale bar” is that it is a form of abandonment. With respect to parties other than the applicant, the invention must be in public use or be described in a printed publication of some kind, or patented abroad prior to the filing of a United States on the invention on an application filed more than 12 months prior to the filing of the US application.

    Now, IANAE, please try to answer the questions I posed in the example I gave. It’ll illustrate, I believe, the point I am making here very strongly.

  7. 231

    Ned, none of the cases you have cited support your point. Sure, they all show that sitting on your unpatented invention for years (while selling it abroad) counts as abandonment, which seems a pretty obvious conclusion, but they don’t actually say anything about 102(b) bars.

  8. 230

    “Hire a competent litigator”

    As opposed to you, right?

    A litigator can’t make up facts out of thin air, discovery or no discovery. If there is no information out there about what was on sale, there is no on-sale bar.

  9. 229

    The 271 blog relays Mueller. Only to that extent does it disseminate ignorance. I mean no disrespect to the esteemed Mr Zura. As to the Printed Matter Doctrine (and whether Mueller is “correct”) I have commented on the other running thread.

  10. 227

    Thanks Maxie,

    I thought this quip from the German court was interesting: “the Court argued that a software-related teaching is technical if it relates to the operational capability of a computer system as such and enables the direct co-operation of the elements thereof.

    Meuller’s thought that the German (and EP) line of thought follows the US Printed Matter Doctrine fairly well is actually quite accurate (I didn’t care to follow all of his rant) – an observation: pretty poems, no matter how “novel“, no matter how much they may “do” for uplifting the human spirit are not the same as computer code (e.g. software) that “do” something in a computer system or enable a computer system to do something (even if it is software that enables the application of pretty poems to the outside of my mug.

    As to “picked up from ignorant commentators“, in addition to Mueller being correct on the major point, the 271 blog is hardly a source of ignorance, so Iza don’t know why you be flustered. Iza think that the ignorance is closer to your door than you might think.

  11. 226

    Ping, as to your request at 09.55 yesterday, I commend the following link, to a commentator who knows something about the subject of the German Bilski. Otherwise, beware stuff picked up from ignorant commentators.

    link to ipjur.com

  12. 225

    OK, IANAE, tackle the example I gave. It is not simple. What, if anything qualifies as prior art or is a bar to the inventor.

  13. 224

    I would argue that you keep citing case law that is more than 100 years old does not in any way advance the notion that you are “current” with the law. If anything, it shows that your mental processes are stuck in the far, far distant past.

    Reds, blues and greens – but get the number of each correct…

  14. 223

    But check this:

    § 88. Actual abandonment of an invention occurs whenever there is an entire relinquishment of all expectation of securing a patent therefor, and an accompanying formation of an expectation that the invention will always be free to the public.1 Such a relinquishment may be shown by direct, or by circumstantial evidence.2 It may be proved by things done or omitted by the inventor, or it may be proved by his omission or delay to do what the law requires to be done in order to secure letters patent. And the fact which constitutes an actual abandonment of an invention, may have occurred within two years before the inventor endeavored to recall that abandonment, by filing an application for a patent on that invention.3

    Walker, Patent Laws 4th Ed., 1904, p. 79.

    I would argue that reading Shaw v. Cooper and Gandy v. Main together, that an one who uses his invention abroad for more than 1 year abandons his right to a patent. 102(c).

  15. 222

    But see, Gandy v. Main Belting Co., 143 US 587 (1892)which appeared to hold the opposite without, however, citing Shaw v. Cooper or Pennock v. Dialogue.

      Conceding that there was sufficient evidence of the use of such belting in England, we think that this does not vitiate the patent. Section 4886 declares that “any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor.” It is true that the language of this section contains no restriction as to the place or country wherein the public use 593*593 is made of the invention; but taken in connection with section 4887, providing that no person shall be debarred from receiving a patent, by reason of the invention being first patented abroad, “unless the same has been introduced into public use in the United States for more than two years prior to the application,” we think that the public use or sale contemplated by section 4886 must be limited to a use or sale in this country. That this was the intent of Congress is also manifest from section 4923, providing that whenever it appears the patentee believed himself to be the original and first inventor of the thing patented, his patent shall not be held void “on account of the invention or discovery, or any part thereof, having been known or used in a foreign country before his invention or discovery thereof, if it had not been patented or described in a printed publication.” So also in section 4920, providing what the defendant may plead under the general issue in actions for infringement, there is included the defence “that it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public.”

      Taking all these provisions of the patent law together, we think it was manifestly the intention of Congress that the right of the patentee to his invention should not be denied by reason of the fact that he had made use of it, or put it on sale abroad, more than two years before the application, provided it were not so used or sold in this country.

  16. 221

    Note, in Shaw v. Cooper, the public use in England and/or France by third parties would not have been prior art in the US. It was the public use there by the inventor (his brother) prior to his filing of a patent application that caused the “abandonment” of the right to an patent.

    Had he filed in England before he publicly used it there, the result may have been different as he might have been able to claim some reasonable time to get a patent on file in the US even though we may not then have had a treaty recognizing formal rights of priority.

  17. 220

    SHAW V. COOPER, 32 U. S. 292 (1833)

      In the case under consideration, it appears, the plaintiff came to this country, from England, in the year 1817, and being an alien, he could not apply for a patent, until he had remained in the country two years. There was no legal obstruction to his obtaining a patent in the year 1819; but it seems that he failed to apply for one, until three years after he might have done so. Had he used proper diligence in this respect, his right might have been secured; as his invention was not sold in England, until the year 1819. But in the two following years, it is proved to have been in public use there, and in the latter year, also in France. Under such circumstances, can the plaintiff’s right be sustained?
      His counsel assigns as a reason for not making an earlier application, that he was endeavoring to make his invention more perfect, but it seems, by this delay, he was not enabled essentially to vary or improve it. The plan is substantially the same as was carried into public use through the brother of the plaintiff in England. Such an excuse, therefore, cannot avail the plaintiff. For three years before the emanation of his patent, his invention was in public use, and he appears to have taken no step to assert his right. Indeed, he sets up, as a part of his case, the patent of Forsyth as a reason why he did not apply for a patent in England. The Forsyth patent was dated six years before.
      Some of the decisions of the circuit courts which are referred to, were overruled in the case of Pennock v. Dialogue. They made the question of abandonment to turn upon the
      Page 32 U. S. 323
      intention of the inventor. But such is not considered to be the true ground. Whatever may be the intention of the inventor, if he suffers his invention to go into public use through any means whatsoever, without an immediate assertion of his right he is not entitled to a patent, nor will a patent, obtained under such circumstances, protect his right. The judgment of the circuit court must be
      Affirmed with costs.
  18. 219

    Then how can anyone prove that the accused device was on sale.

    Hire a competent litigator to conduct the discovery.

  19. 218

    “That’s ridiculous. An offer for sale of a product that I don’t show you, that you end up not agreeing to buy and never receiving, and for which I never tell you anything about the patented part, is a 102(b) bar. ”

    INSANE, you don’t know what you’re talking about. If you didn’t show me anything, I didn’t receive anything, and you didn’t tell me anything. Then how can anyone prove that the accused device was on sale.

    You are full of shxt.

  20. 217

    There is a Supreme Court case

    You’ll forgive me for asking that you provide a citation. I don’t trust your conclusory characterizations of precedent.

  21. 216

    There is a Supreme Court case that interpreted “abandonment” to apply to a situation where the inventor publicly used his invention in England before applying for a patent there. He later filed in the US. The English public use was not prior art in the US.

    Abandonment.

  22. 215

    INANE, I believe 102(c) or its predecessors have been construed to mean

      abandoment of ones right to a patent.

    102(b) does not strictly apply to private use. So, what is the theory behind barring an inventor who uses his invention in private and never applies patent until years later? The courts use 102(b), but it may be they should use 102(c).

    The obvious problem with this, is that 102(c) has no grace period.

  23. 214

    One way of interpreting the statutes is that 102(b) relates to 3rd party sales, but 102(c) relates to personal commercial use and sale.

    That’s not a reasonable way of interpreting the statutes. An on-sale event might be described as an abandonment of patent rights, but it’s clearly not an abandonment of the invention under 102(c) since the inventor continues to profit from the invention. Also, 102(b) doesn’t use language like “by another” or “before the invention thereof by the applicant” that would tend to indicate it doesn’t apply to the applicant.

  24. 213

    With Science… slam dunk DNA…. Tell me a scientist can’t figure it out. i happen to think Sams Cola is the way Coke used to taste when it cost me a dime.. Vanilla or otherwise…

  25. 212

    Willton, Pennock v. Dialogue, 27 U.S. 2 Pet. 1 1 (1829)

    Here the invention was a method of making fire hose. The inventor (through Jenkins) made and sold fire hose for years. Only when someone else discovered the secret, did the inventor apply for his patent.

    The original theory of “on sale bar” was abandonment. We now have 102(b) that theoretically gives a one year grace period. In contrast, 102(c) has no grace period.

    It may be that the CCPA and Fed. Cir. do not fully understand “on sale” bar. One way of interpreting the statutes is that 102(b) relates to 3rd party sales, but 102(c) relates to personal commercial use and sale.

    He is the holding of the case:

      “It is admitted that the subject is not wholly free from difficulties, but upon most deliberate consideration we are all of opinion, that the true construction of the act is that the first inventor cannot acquire a good title to a patent; if he suffers the thing invented to go into public use or to be publicly sold for use before he makes application for a patent. His voluntary act or acquiescence in the public sale and use is an abandonment of his right, or rather creates a disability to comply with the terms and conditions on which alone the Secretary of State is authorized to grant him a patent.”
  26. 211

    IANAE, the recipe itself has never been on sale. The product has been on sale, but unless I’m unaware of something from CocaCola’s history (like perhaps a proposed merger), the recipe has never been offered for sale.

    However, many of us are forgetting about the rarely used 35 USC 102(c): the abandonment section of 102. While I forget the case name, I remember that at least one court has held that a company who obtained a patent for a method of manufacture that it had kept as a trade secret for a very long time was deemed to have abandoned its patent rights to the method under 102(c).

  27. 209

    Somewhat real case:

    Inventor develops secret process for company under contract. It has confidentiality provisions.

    Contract period ends. Inventor has no further association with company, or knowledge of its actions.

    After the contract ends, Inventor develops improvements and files two applications: A and B.

    Company begins commercially using in private the processes before the invention of both improvements and more than a year prior to the filing of B, but less than a year prior to the filing of A. The products produced by the processes do not reveal the processes.

    Discuss.

  28. 208

    The Supreme Court has yet to weigh in on this.

    Have you even read Pfaff v. Wells? The bar applies when there is an offer for sale and the invention is ready for patenting. No further requirement.

    Also, the entire point of the on-sale bar is to prevent inventors from selling inventions that are impossible to reverse-engineer and later obtaining patents on them.

  29. 207

    IANAE, just one more point. If due to secrecy, it is impossible to discover the invention, it is not prior art. If the Coke formula could be reverse engineered from what is available publicly, then maybe.

    The Supreme Court has yet to weigh in on this. But it would be interesting.

  30. 206

    IANAE, I think you are wrong on the law. Private commercial use bars the applicant and those in privy. Third part private used falls under 102(g), where it is has to be disclosed to the public at some point.

    I do not know of any case where the courts have held that third-party private commercial use is prior art to third parties without ever having been disclosed to the public. If there is such a case, I would speculate that it would not be an en banc case as it would seem contrary to very old Supreme Court case law and thus would not be a proper interpretation of the statutes.

  31. 205

    it makes sense when you come round to the view that the 20 year patent monopoly is the reward for giving the public an enabling disclosure of some industrially useful, new and non-obvious contribution to the art.

    Yes, that’s the sensible way of doing things. Trade a patent for a disclosure. Reward the first person who gives the invention to the public, because that’s the act that advances the useful arts.

    The US, in its finite wisdom, rewards the first to invent. That inventor has to choose whether to take his money in the form of a 20-year monopoly or a trade secret for as long as he can keep it secret. He can’t have both. The result is to create a class of prior art that nobody in the art could possibly have known about.

  32. 204

    ping, I did glance at it on 271 but was not moved to write anything. But if it’s that important to you, perhaps if I have time I’ll re-visit 271.

    As to the state of the art under the EPC, and the continuing chance to patent the recipe for COKE, it makes sense when you come round to the view that the 20 year patent monopoly is the reward for giving the public an enabling disclosure of some industrially useful, new and non-obvious contribution to the art. What complements the EPC definition of the state of the art is a personal right to prior users to continue using, unmolested by the patent, exactly that which they had used before the filing date.

  33. 203

    IANAE,

    A bit of pedantry perhaps, but the “recipe” has not been on sale – ever.

    The product made from the recipe, well of course, that’s been hawked, like forever.

  34. 201

    I’ve enjoyed it all my life. But if the “recipe” for it has still not been “made available” to any member of “the public” then (outside the USA) it (the recipe, not the drink) is still not part of the “state of the art”.

    That’s exactly my point. The recipe is not available to the public because it has not been disclosed to the level (enablement) required by the rest of the world. And yet, in the US, the recipe is prior art under 102(b) because it’s been “on sale”. And yet, if you somehow filed a patent application on the recipe, you’d probably get it because the company would never admit that’s the correct recipe by claiming prior inventorship.

    It’s almost crazy enough to make you reach for a pint.

    the EPC has its 100+ year grace period.

    And there was me thinking the EPC had no grace period at all. 100 years from when the invention was first not disclosed to the public, you say?

  35. 200

    I dunno – something about hiding and concealing that speaks to non-patentability of the Coke formula…

  36. 199

    IANAE, if it helps, think of it like this. The USA has its one year grace period but the EPC has its 100+ year grace period.

  37. 198

    6: it’s not a joke, about US patents in German. Something about the language the people living in Pennsylvania used at the time.

    IANAE: I do know the famous drink. I’ve enjoyed it all my life. But if the “recipe” for it has still not been “made available” to any member of “the public” then (outside the USA) it (the recipe, not the drink) is still not part of the “state of the art”. In other words, to this day it is still patentably “new”. I’m also thinking that, in Europe, a claim to a process includes within its scope the direct product of that process. Forgive me for dragging the non-pint sized world into it. I was just commenting on your assertion that, even though Coke sales do not make the recipe available to the public, you obviously can’t patent Coke any more.

  38. 196

    The drink has been on sale, Max. The drink made using the recipe.

    You might have seen it. It’s the fizzy brown stuff that doesn’t come in pints.

  39. 194

    Pfaff doesn’t add anything to the law. If a public use is not an enabling disclosure of the claimed invention, it isn’t a 102(b) bar. It never was.

    That’s ridiculous. An offer for sale of a product that I don’t show you, that you end up not agreeing to buy and never receiving, and for which I never tell you anything about the patented part, is a 102(b) bar. It is also clearly not an enabling disclosure.

    If you wanted to patent the recipe for Coke, do you think you’d get a valid claim issued? It’s been on sale for about a century, and despite many people’s best efforts the drink clearly does not enable the recipe.

  40. 193

    INANE you don’t understand what I’m talking about (much less what you’re talking about).

    Pfaff doesn’t add anything to the law. If a public use is not an enabling disclosure of the claimed invention, it isn’t a 102(b) bar. It never was. Please explain how or whether “ready for patenting” changes that?

    Hint: it doesn’t

  41. 192

    a public sale essentially amounts to a disclosure and thus must satisfy the same kind of test as any prior art “reference,”

    Actually, no it doesn’t. A public use or sale does not have to be enabling. The “ready for patenting” test at least requires it to be enabled.

  42. 191

    The decision was entirely unnecessary since a public sale essentially amounts to a disclosure

    A disclosure of what? If you can’t explain to someone how to make and use it even with the added benefit of pen and paper, there is nothing to be disclosed.

    Also, what sense does it make to start the clock running to file a patent before a patent could possibly be filed?

    whether it is reduced to practice or not.

    The invention in Pfaff had not been reduced to practice. Reduction to practice isn’t the same thing as ready for patenting.

  43. 190

    The Pfaff “ready for patenting” test is the most ridiculous and unnecessary test I have ever heard of. The decision was entirely unnecessary since a public sale essentially amounts to a disclosure and thus must satisfy the same kind of test as any prior art “reference,” under 102(b) whether it is reduced to practice or not.

  44. 189

    Whatever was shown at the trade show in Avid was not the invention either.

    It was not the invention, but it was close enough to be material. That’s the standard for disclosure, despite your continued insistence that it’s not.

    “Not ready for patenting” actually implies that whatever was shown in Orion IP actually was the invention, but it was not yet ready for patenting, whatever that means in terms of software.

    Yes, it does imply that. Whatever it means in terms of software, the court found it to be the case.

    Regardless of the phraseology, we do not have enough information to distinguish the two cases.

    Yes we do. Not ready for patenting means not prior art. If you disagree with the finding of fact, that’s a whole other story, but the fact was found and it makes all the difference.

  45. 188

    ping, you are a complete * * * * *. I say, describe it including drawing it and label the drawing prior art. You say, use a pen to describe it and if necessary take a picture.

    Do you realize just how blinking * * * * * you sound?

  46. 187

    anon, just as aside, I believe we just misunderstood each other.

    On the other hand, you should be aware that what an inventor knows about is prior art to him under 102(f) even if it is not prior art under any other portion of Section 102. OddzOn Products, Inc. v. Just Toys, Inc.,122 F.3d 1396, 43 U.S.P.Q.2d (BNA) 1641 (Fed. Cir. 1997). So, you really need to carefully consider and disclose anything the inventor actually knows about. I suspect that Wong’s patent attorney may not have known of this case.

    Now compare this to what you just said, and I will quote it below, as I continue to understand that you suggest that you would not disclose anything that does not qualify as prior art under 102(a)-(g), exclusive of (f) because even though the inventor knows about it, it may not be prior art under the other sections of 102.

    You said:

      I am also saying that it is a worthless risk to characterize any prior art and stick that characterization into the application’s background to the invention section. Even more so when you are relying on an inventor’s perception of what is or is not prior art. Inventor’s by and large simply do not understand all of the legal nuances. In this environment, making no characterizations is the prudent path to take. It appears that you have not been able to separate the practices as you have been taught from the current legal environment. Such is an open invitation to malpractice.
  47. 186

    pointers on how to disclose in an IDS non public, prior use, prior art known only to the inventor

    I can help – there’s this great little gizmo called a pen. You take it (step one) and use another prior art item called paper (step two). What follows next is called writing (step three).

    You can even avoid steps one through three: If it is prior art, that is not written itself, take a picture. If it is writing, just submit that.

    Geesh, Ned, I thought I esplained this to ya before.

    I think anon’s point though, Ned, is that the less you write the better.

    Anon just doesn’t realize how true this statement is concerning you (and how it applies to blog writing as well).

  48. 185

    OK, we mostly agree anon. But, please give me pointers on how to disclose in an IDS non public, prior use, prior art known only to the inventor?

    We had a discussion on this point before. What we concluded was that we should describe it in the background section and label the figures as prior art. If more is actually required and you actually have a way of citing such unpublished art in an IDS, please let us know.

  49. 184

    IANAE, huh? Is that your distinction?

    Whatever was shown at the trade show in Avid was not the invention either. There was no anticipation when whatever was shown was placed before the jury. Whatever was shown clearly was not the invention.

    “Not ready for patenting” actually implies that whatever was shown in Orion IP actually was the invention, but it was not yet ready for patenting, whatever that means in terms of software.

    Regardless of the phraseology, we do not have enough information to distinguish the two cases. There might be something there, but on its face, they actually seem very close.

  50. 183

    Mr. Heller,

    You admonish me to think, yet refuse to do so yourself. You continue to make assumptions that are not warranted and not related to the particular discussion between our two methods. At least with IANAE, I know not to expect a reasoned discussion on the merits. It appears that you cannot partake in one as well, but for a different reason.

    I think you advocate not describing what the inventor is trying to improve, but instead just simply submitting references from a search.

    You think wrong.

    Had Wong’s patent attorneys did the above, the URS issue would not have emerged at all.

    Also, you are drawing a distinction that is not germane to the actual differences we are discussing. As I previously said, your method may have done exactly as you claim. The point is, mine would have done so just as assuredly.

    We both are sharing with the Office all of the material information that we are aware of. You are attempting to make a distinction where there is none, yet missing the actual distinction and refusing to acknowledge the risk you are creating. Put simply, your method entails unnecessary risks. Mine does not. Clarity can be achieved in writing without characterizing any prior art.

    I am saying that both known items from the inventor and any search results both belong on an IDS. The IDS is the appropriate tool for informing the Office of all known items. I am also saying that it is a worthless risk to characterize any prior art and stick that characterization into the application’s background to the invention section. Even more so when you are relying on an inventor’s perception of what is or is not prior art. Inventor’s by and large simply do not understand all of the legal nuances. In this environment, making no characterizations is the prudent path to take. It appears that you have not been able to separate the practices as you have been taught from the current legal environment. Such is an open invitation to malpractice.

    On top of that, you turn a blind eye to the fact that the environment has indeed changed and pretend that my manner of dealing with that change is the manner more likely to bring risk. This is delusional.

    The comment by IANAE that “the prior art is what it is” does not address the fact that any addressing of “what it is” in a background section can only hurt you. It can hurt you if you mis-characterize it in more than one way. The obvious way related to this thread is the IC angle. But it can also hurt you in that anything you say in the background section can be taken as de facto prior art – even if it is not truly prior art. Further, you have no way of knowing what broad reasonable (or unreasonable and irrational) interpretation will spawn from the Examiner. In many aspects, saying less means more – having less on the record matters more – this is one of those aspects. To subdue another of IANAE’s strawmen, please be clear that I am advocating a well written application with a well supported layered claim structure. Your job is of course made better by knowing the actual state of the art to the best of your ability and drafting truly inventive claims that have the best chance of passing through with the widest deserved scope.

    None of that depends on anything one can stick in the background section of an application. None.

    The point of the matter – and the only point – is that the IDS takes care of any requirements for disclosure that you may be concerned about with discussing prior art in the application itself. Such discussions in an application are simply a bad idea given the legal environment that we operate in. Today. Now. In this world.

  51. 182

    INANE, OK, reconcile Orion IP and Avid.

    Both are cases of public use/sale of a device.

    In Orion, the “district court did not clearly err by finding that the Case-1H agreement and the parts fair were not material given the evidence showing that the invention was not ready for patenting until after the critical date.”

    You may recall from Pfaff v. Wells that a public use or sale doesn’t start the clock until the invention is ready for patenting. In Orion, the invention was not ready for patenting until after the critical date, therefore the disclosure was not “prior”, therefore not prior art, therefore not material prior art.

    In Avid, there was no such finding.

  52. 181

    once the patent issues, any violation of rules per se cannot be a reason for invalidating or rendering unenforceable a patent.

    So then, if the court adopts a reasonable examiner standard for inequitable conduct, who cares what Rule 56 says or what it said before?

  53. 180

    Ken, exactly.

    It has no substantive authority whatsoever. What it can do is provide procedural rules for disclosing prior art the statutes or courts required to be disclosed, but it cannot create legal duties the failure to abide by results in the equivalent of invalidity.

    I have a right to a patent that mets the statutory requirements. The patent office cannot change the statutes. It has no substantive rule making authority. It can provide rules of procedure, but once the patent issues, any violation of rules per se cannot be a reason for invalidating or rendering unenforceable a patent. Otherwise, the so called rules are equivalent to a statute or are substantive.

    Any such rules that go beyond statutory requirements and have post-grant impact are truly ultra-vires.

  54. 179

    anon, think.

    Most times an inventor is simply working on a project. He knows what he is trying to improve, why the improvement is needed and what is invention is.

    I think you advocate not describing what the inventor is trying to improve, but instead just simply submitting references from a search.

    Now, if those references are not as good as the specific prior art the inventor was trying to improve, you may have gotten your client in to deep do do.

    At times, references will show the same prior art as the inventor knows. But at times, it might not be as pertinent.

    Now, I do not advocate not disclosing any references one knows about. Nor do I advocate describing references in the background section. I am just advocating describing what the inventor knows to be the prior art, its problems and his solution. This is quite a different thing than describing references which, I agree, speak for themselves.

    If there was any misunderstanding here, I hope this helps you understand what I advocate.

    Had Wong’s patent attorneys did the above, the URS issue would not have emerged at all.

  55. 176

    IANAE appears to be a politician, because he refuse to address the facts before him. Rather he states that the facts are different and then argues from that.

  56. 175

    Mr. Heller,

    Please stop giving legal advice.

    At the very least, please stop misrepresenting positions. At 11:45 AM you state that had Wong described the prior art seam in his background section, he may would have won the case. At that same time you allude to MY practice of avoiding such descriptions as not in the client’s best interest. You could not be further from the truth.

    For you to state “your whole approach to writing patent applications is fraught with IC danger for exactly this reason” at the same time makes both a critical error in judgment concerning what I advocate and an error in not recognizing the critical, and needless potential risks you expose your clients to.

    I do not state that material references should not be shared with the Office. I state that the background section is not the best way of doing so, and is fraught with more peril than it is worth. The proper procedure is to share anything that may be considered material. ALWAYS. In no way should my statement about what is considered good practice for application writing to be misconstrued with purposeful violation of an ethical tenant. Even Malcolm Mooney realizes that an IDS is the appropriate place to share such information.

    You go on to state at 2:22 PM “Unless the prior art known to the inventor and the references sumbitted are 100% congruent, your approach will always result in a IC charge”, you should be aware that you never control when an IC charge will be brought. Again, I do not advocate non-sharing of material references. Material References should be shared liberally – just not in the specification. In fact, it is you that runs the serious risk of mismatch when you selectively put things in the specification. You would be much better off leaving the interpretation of prior art to the examiner.

    Finally at 2:52 PM you state “Disclosure in an IDS is not the issue at all.
    You are incorrect again. Disclosure in an IDS is EXACTLY the issue. There, you limit your downside and meet all the upside requirements.

    Writing a good understandable application need not focus on the prior art. IANANE would have the section in mere general terms – He at least tries to distance himself from your view. He will still play semantics and include obvious strawman arguments like poor claim writing, but only because he his an _ss and likes to be contrarian. Nowhere am I advocating writing a sloppy or poor application. What I advocate is proper risk management. So while you may be correct that Wong may have prevailed if his counsel had included the Wong information in the background section, you may also have opened other cans of worms that need not have been opened. At the same time, the actual position I advocate would just as assuredly prevailed without creating unnecessary risk. Cleanly submitting the information on an IDS would have also prevailed at far less risk.

    I suggest that you reconsider.

  57. 173

    I have explained why I believe they are inconsistent.

    You haven’t, really. You said the cases are irreconcilable because one found a prototype to be material and the other found a prototype to not be material.

    That’s exactly as irreconcilable as if one case found a patent to be material and another case found a different patent to be immaterial.

    Go ahead and sleep on it. I’ll enlighten you tomorrow. I’m not in the mood to try to convince you that yet another word doesn’t mean what you think it means.

  58. 172

    IANAE, I cannot read your mind. I have explained why I believe they are inconsistent.

    Your turn.

  59. 171

    OK, reconcile Orion IP and Avid.

    Do you want to take another crack at it first, now that you know a solution exists?

  60. 169

    Malcolm, true, because your question related to office actions. My “attitude” is this: cite the related case and let the exmainer look at the office actions on line. My practice is to inundate the examiner with all actions, responses and references cited worldwide.

    From this milieu, the Examiner can figure out what the claims are and what the issues are if he wants.

    BTW, I thought examiners in the major offices were supposed to talk to each other about cases in common? Perhaps we should make it a requirement by rule if the practice is useful, and it obviously is. All cases should be prosecuted in the USPTO, Korea, JPO and the EPO in tandem to the extent can be worked out.

  61. 168

    Ned: The Feds decided a case today, Orion IP v. Hyundai, that cannot be reconciled with Avid.

    It’s actually pretty easy to reconcile the two decisions, unless you’re very determined not to be able to.

    MM: Is this a response to my hypothetical question?

    It is. He’s saying that the contradictory positions make your patent unenforceable for inequitable conduct no matter what you put in an IDS.

  62. 167

    Ned Malcolm, I don’t think disclosure is the problem. I think the problem is taking two different positions on the same issue.

    Is this a response to my hypothetical question? It doesn’t seem like it.

  63. 166

    The Feds decided a case today, Orion IP v. Hyundai, link to cafc.uscourts.gov

    that cannot be reconciled with Avid. Here the Feds found no IC based on a prior public disclosure at a fair on the basis that the invention was not ready for patenting until after the critical date.

    In other words, what was disclosed at the fair was a prototype at best.

    But that is exactly what was held to constitute material prior art in Avid, a prototype.

    I submit, no one can tell from Fed. Cir. cases just the law is.

    Tell us, Federal Circuit, what are the elements one must prove to determine when a reference is material.

  64. 165

    Well, even if the folks at Abbott had disclosed the entire prosecution history of their EPO application, they still would have been guilty of IC if they made inconsistent statements concerning the prior art that could not be explained. Disclosure in an IDS is not the issue at all.

    Their only hope is to explain just how the statements are consistent.

  65. 164

    I think the problem is taking two different positions on the same issue.

    Taking two irreconcilably contradictory positions in the same issue probably isn’t easily curable by disclosure or otherwise. On the other hand, if there is some way to reconcile the statements, at least you’re sort of forced to construe both such that they are consistent, which may give rise to estoppel or other consequences.

    Also, the examiner has a chance to call you on the contradiction. Assuming without any evidence that the examiner actually reads all five thousand references you disclose.

  66. 163

    Malcolm, I don’t think disclosure is the problem. I think the problem is taking two different positions on the same issue. This cannot be cured by disclosure of the contrary statements.

    Litigators will find the discrepancies in position. Those who cannot explain the discrepancies will be hammered as the folks were in Theresense.

  67. 162

    INANE, the Feds recognize the rule change, but most of the cases involving IC until recently were prosecuted before the rule change. For this reason, the Feds have said in those cases they do not have to decide the impact of the rule change.

    But that is no longer true. In recent cases, they simply rely on the “reasonable examiner” rule while at the same time citing Rule 56. Read the Avid case on this issue, for example.

    They are avoiding the issue. Seriously avoiding it.

    That is one reason I believe they have decided to take Therasense en banc.

  68. 161

    anon, you say, “Don’t discuss the prior art. Simply submit the reference.” But don’t you see? Robers was more pertinent than the prior art used in the factory that Wong knew about, but still Wong was hammered. Unless the prior art known to the inventor and the references sumbitted are 100% congruent, your approach will always result in a IC charge against your client and if this case is any guidance, your client will likely lose because, it seems, intention not to disclose implies materiality.

  69. 160

    If we can just step off the thin crust of Ned’s planet for a moment and return to Earth, I’d like to discuss a practical matter concerning inequitable conduct.

    Under the current IC regime, it is clear that one should try to disclose office actions received in foreign jurisdictions that are non-cumulative and that reach conclusions which differ from the Examiner, particularly if the conclusions relate to novelty and if the foreign office actions rely on information and/or arguments that were missed by the Examiner.

    Question: is it inequitable conduct to fail to include a set of the pending claims when submitting a foreign Office Action (assume the claims are not set forth in the foreign Office Action, nor is their scope detailed but the pending claims are easily accessible online at the foreign patent office website)? Also, assume two distinct fact scenarios: (1)the claims are broader than those pending in the US; and (2) the claims are narrower than those pending in the US case.

    In my view, this is where IC gets fuzzy and where the opportunity for abuse is greatest. There is a duty to disclose, but there is not a duty to hold the Examiner’s hand and essentially examine one’s own application (at least, not outside of the accelerated exam context).

  70. 159

    What the Feds have failed to recognize is that this whole mess is caused by original Rule 56.

    Inequitable conduct is a plague, right? Pleaded in 80% of all patent cases, in which the Federal Circuit has exclusive appellate jurisdiction. Why has nobody brought this “whole mess” to their attention yet? Is this the first case since 1992-ish that turns on the distinction?

    It would be one thing if the Feds had explicitly followed the old rule and we were waiting to hear from the Supremes about how different the new rule is, but don’t you find it the least bit odd that the Feds have not even been asked the question?

    Why are you the only one who has the courage to ask these questions? Also, is the courage Dutch at all?

  71. 158

    INANE, I think the current Rule 56 IS in accordance with Supreme Court case law and what was not in accordance with Supreme Court case law but was instead “legislation” was the original Rule 56. What the Feds have failed to recognize is that this whole mess is caused by original Rule 56.

  72. 157

    I think you and I would agree that the PTO cannot legislate.

    So why do you keep insisting a rule change had any effect on the law?

  73. 156

    Ken, I think you and I would agree that the PTO cannot legislate. The problem we got into is caused by the original Rule 56 that went way beyond the Supreme Court case law and significantly lowered the materiality bar.

    Fortunately, all Commissioners subsequent to Mossinghoff have recognized the problem and have tried to correct it by changing the rule. Unfortunately, the Federal Circuit to this day has ignored the reform in Rule 56.

  74. 155

    Reasonable examiner standard explained:

    A reference is material when a reasonable examiner would find it important.

    “Important?” What does that mean.

    Fed. Cir., a reference is important if it is material.

    So we have a clearly defined standard, do we not?

    A reference is material if a reasonable examiner would find it material.

    Wow!!

    Clarity beyond measure. We know exactly what our duty of disclosure is.

    Good job, Federal Circuit is laying out the duty so clearly.

  75. 154

    Malcolm,

    Easy answer – the IMHO-Ned school of law.

    You get to cite cases and make illusory holdings while self-evidently spuriously ignoring the parts of legislative law you find inconvenient.

    Ken Brooks is a star pupil – still mixing up enforceability and invalidity I see.

    IANAE, why don’t people listen to you? You done esplain this all clear as day.

  76. 153

    Ned If there were no searches, we generally filed applications without an IDS as we drafted the whole patent application with an eye to improving the prior art that we described in the background section.

    You served your clients poorly, Ned. I would have put the closest art that you described in the background section into an IDS and, before the patent issued, made sure that the Examiner signed off on it. Where did you allegedly “learn patent law”?

  77. 152

    Ned You will first note that the reasonable examiner standard flowed from the 1977 Rule 56. The PTO revised the rule to its current “objective” form specifically intending to do away with the reasonable examiner standard. But, the Feds have never actually addressed the new objective standard and how that affects materiality in any case.

    *Yawn* Maybe because it doesn’t really change much, Ned.

  78. 151

    Ned Heller and I on another post quite exhaustively showed why a Federal Court has not the power to render a patent uneforceable absent a failure to satisfy one of the provisions of Title 35 United States Code.

    I recall you guys discussing the court’s lack of power to render a patent invalid absent a failure to satisfy a provision of 35 USC. Is that what you’re talking about?

    I means which party is in the best position to keep frivolous litigation out of court 1) the patent prosectuor; or 2) the patent litigator.

    The prosecutor. He’s the one who should be disclosing the art in the first place, and settling the question of patentability over that art long before trial.

    It’s also pretty motivating for a defendant to settle a case if he can’t find a decent way to invalidate the patent.

  79. 150

    Alright here is the deal, the way I see it. Ned Heller and I on another post quite exhaustively showed why a Federal Court has not the power to render a patent uneforceable absent a failure to satisfy one of the provisions of Title 35 United States Code. Failure to comport with 37 CFR 1.56 is not one of those provisions that allows a Federal Court to render a patent unenforceable. However, rendering an award of attorney fees is an entirely appropriate means by which to punish a patent holder for trying to assert a patent when the duty of disclosure was not satisfied. I think this case is a harbinger of things to come. Litigators MUST complete analyze the prosecution history of ANY patent that they seek to enforce. Otherwise, they may be subjected to having to pay the other side’s cost of litigation what would essentially be a worthless patent. In this manner, the patent system serves its intended purpose, disclosure of useful knowledge and the courts are not flooded with frivolous litigation. I means which party is in the best position to keep frivolous litigation out of court 1) the patent prosectuor; or 2) the patent litigator. Clearly this is a good and acceptable result.

  80. 149

    But, the Feds have never actually addressed the new objective standard and how that affects materiality in any case.

    If the rule change had made any significant difference at all, don’t you think someone would have mentioned it to a judge by now?

    Rule 56 says “information is material … when”, not “information is material … only when”. Even the duty of candor itself is defined inclusively. It’s completely reasonable for the court to still require you to disclose anything a reasonable examiner would want to see, for the very fact that a reasonable examiner would have wanted to see it. You’ll have a very hard time arguing that a reference that would interest a reasonable examiner is not material to patentability, without sticking very close to the letter of the Rule, and possibly ignoring some of the more interesting letters.

    I agree with you on the seam case. A good background would have saved the patent, and also saved it a trip to the CAFC.

  81. 148

    6, finally. Someone from your side of the argument set forth the currently operating legal standard for “materiality.” It is the “reasonable examiner” standard.

    Now that at least one of you has set forth the standard, we can actually begin to discuss the issue of materiality.

    You will first note that the reasonable examiner standard flowed from the 1977 Rule 56. The PTO revised the rule to its current “objective” form specifically intending to do away with the reasonable examiner standard. But, the Feds have never actually addressed the new objective standard and how that affects materiality in any case. I think they will do so now in the en banc Theresense case. But they really need to take Avid and Taltech en banc as well.

  82. 147

    anon, had Wong described the prior art seam in his background section, he would may have won this case. Apparently he lost because he was represented by attorneys such as yourself who preach avoiding such descriptions. In fact, anon, your whole approach to writing patent applications is fraught with IC danger for exactly this reason. I suggest you reconsider.

  83. 146

    You personally can choose to minimize the reality of examination quality as it stands today,

    Well-drafted applications get better quality examination. When you review a cited reference, don’t you get more out of your review if it’s well drafted?

    You personally can choose to blame the examiner for everything that happens in prosecution, but you aren’t doing your clients any favors if you don’t do your part to fix the problems.

  84. 145

    IANAE,

    You seek to bait me with trivial taunts while missing (purposefully?) the gist of my message.

    I have neither the time nor the inclination to play your games on this blog.

    Those who prepare applications will know where to spend their efforts and why. You personally can choose to minimize the reality of examination quality as it stands today, but you do no one any favors by preaching that position.

  85. 144

    Backgrounds are dumb. The risk of inadvertantly expanding the prior art or placing a motivation for arriving at your invention in is just too great. What do you gain from a nice big background? Nothing, except maybe a fat malpractice suit.

    To cite or not to cite? There is no question. When in doubt, send it out. Again, why risk the malpractice? Just have your secretary file the IDS and be done.

    Reason #101 to have a search done by OUTSIDE personnel…. They are neither the attorney/agent nor the inventor. There is no duty to disclose on them. Thus, when you get the report back, you CITE ALL REFERNCES IN THE REPORT. No bound party (rule 56) has become aware of any references that they have not cited. Step 3 for avoiding that malpractice suit is complete.

    If you don’t search, no worries, just cite anything the inventors have told you about and inform them of their on-going duty.

    Why risk the malpractice suit? Anyone who tells you not to cite or to include a big background section probably prosecutes malpractice suits.

  86. 143

    Sorry, but that is plain laziness on the part of the examiners, and completely unfair.

    Yes, that sounds like a nice mix of laziness and hindsight. On more than one occasion I’ve had to explain to an examiner the difference between a general desire to make things better and the particular improvement disclosed and claimed.

    That’s why the problem you identify in the background should be suitably general, like “this costs money and people like money” or “people generally always want these things to be faster/more reliable/whatever”. Not “there is a need in the art to have an improved widget wherein the first member is hingedly joined to the second member near the end of the second member”, or worse, “the ones we sold last year were dangerously unsafe to use”.

  87. 142

    >>If your claims are rejected over your >>background, you almost certainly do have >>poorly drafted claims.

    Now, now. Let’s be fair here. What I am seeing is claims rejected based on APA + the invention with a motiviation to solve the problem explained in the background. It is outrageous. The examiners are saying gee here is the APA and you explain a problem with the APA, well gee, it would have been obvious to have modified the APA as your claim in your invention to solve the problem you explain in your background.

    Sorry, but that is plain laziness on the part of the examiners, and completely unfair.

  88. 141

    I’ve seen your views of KSR – that it didn’t really change anything.

    It did change one thing. Now when examiners make a “come on, that’s totally obvious” rejection, the letters “KSR” on their keyboard get slightly more worn.

    Examiners are receptive to what gets them paid.

    Examiners get paid by the job, not by the hour. If a well-written application means they spend less time getting their counts, don’t you think they’d appreciate that?

    I am getting the optimum protection for my client.

    Evidently not. You want to write your patent so whoever reads it can understand it. Examiners, infringers, judges, and jurors all need to get some idea of why your invention is so all-fired awesome before they’ll start caring about your rights.

    You assume I have poorly drafted claims

    If your claims are rejected over your background, you almost certainly do have poorly drafted claims. Their broadest reasonable interpretation is broader than you thought. Of course, it’s still better to have your claims rejected over your background than invalidated in litigation over what a competent patent agent would have put in the background had he thought to include one.

    I’m glad you think all the claims you draft are awesome. Too bad it’s not your opinion that counts.

  89. 140

    I see we disagree again.

    (1)”to characterize the art”
    There is no benefit to characterizing someone else’s art. None. Your characterization holds no force and can only serve to hurt you.

    (2)”any more of a road map to invalidity”
    I’ve seen your views of KSR – that it didn’t really change anything. You are wrong on both accounts.

    (3)”Examiners are probably more receptive…”
    Examiners are receptive to what gets them paid. The rest of your writeup can be convincing – a prior art background section is the wrong place to be spending your efforts. Plus you cannot in any way predict what art the examiner will come up with to apply.

    (4)”when a patent is cited against me…”
    I don’t write applications for the other guys, to make it easy for them to distinguish. I am getting the optimum protection for my client.

    (5)”your poorly-drafted claims.”
    You assume I have poorly drafted claims – You may as a matter of course, I do not. That is where the proper focus is rather than on a background section. Alternative and third positions are also planned – but this too is not in the background section.

  90. 139

    (just because you improved the prior art, doesn’t mean you clear the obvious hurdle)

    The prior art is what it is. As long as what you describe in the background is definitely prior art, and you don’t make any extra admissions of prior art, you’re not providing any more of a road map to invalidity than already exists.

    The background section is your first chance to characterize the art, and set the tone for your application by showing why the invention is really important. Examiners are probably more receptive to a case when it seems like you have a good invention. Also, when a patent is cited against me I find a good background section very useful for quickly understanding and distinguishing the reference.

    And if your claims are rejected over prior art in the background, you know exactly what to fix – your poorly-drafted claims.

  91. 138

    Without more, this still seems legitimate to me. If you disagree, why?”

    The ruling in KSR and an anti-patent mindset are reasons why what may seem legitimate does not make good sense for your clients.

    Background sections merely give road maps and often the simplest of design considerations as to why the invention will be found obvious (just because you improved the prior art, doesn’t mean you clear the obvious hurdle). Until the creative inventive gestalt reflex has subsided, and the words in 103 are taken at face value, the less ammunition provided, the better.

  92. 137

    So, A is more relevant than B, but not invalidating. What does this mean?

    It means that material and invalidating are not the same thing.

    It means that examiners want to see the closest prior art you’re aware of, and the courts agree.

    It means that you still don’t understand Rule 56, because you always stop reading right before it gets interesting.

  93. 136

    If there were no searches, we generally filed applications without an IDS as we drafted the whole patent application with an eye to improving the prior art that we described in the background section.

    If you don’t know of any references you don’t file an IDS? Great practice tip. Not sure how that sheds any light on the actual standard for disclosure when you do have a reference, though.

  94. 135

    Max,

    I’m all for a proper background section, and I think clients who do not want one are shooting themselves in the foot.

  95. 134

    Ned Heller writes:

    “….when I learned patent law, I learned one had a duty to not file claims unpatentable over any references. (I don’t think that has changed.) While it was commonplace to submit the results searches, searches were not required. If there were no searches, we generally filed applications without an IDS as we drafted the whole patent application with an eye to improving the prior art that we described in the background section.

    Without more, this still seems legitimate to me. If you disagree, why?”

    Bearing in mind Mooney’s reassurances that ongoing honest and full disclosure of the closest art should insulate against a finding of IC, I’m curious to read answers to Ned’s question.

    6 advocates a proper “Background” section. If that advice is as crazy as that from Ned and Heller, tell me that too. Meanwhile, to me it all reads like good common sense. See how charmingly old-fashioned and naive we are, in Europe.

  96. 133

    Ned, I’ve told you this several times now. Materiality has nothing to do with whether the reference actually anticipates or not (though if it did then there is a dam near certainty that it would be deemed material).

    The U.S. Court of Appeals for the Federal Circuit has expanded this definition to encompass “any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow the application to issue as a patent.” And that was what the DC no doubt applied.

    REASONABLE EXAMINER STANDARD. Sir.

    I tire of explaining this to you so I’m going to stop.

  97. 132

    IANAE, when I learned patent law, I learned one had a duty to not file claims unpatentable over any references. (I don’t think that has changed.) While it was commonplace to submit the results searches, searches were not required. If there were no searches, we generally filed applications without an IDS as we drafted the whole patent application with an eye to improving the prior art that we described in the background section.

    Without more, this still seems legitimate to me. If you disagree, why?

  98. 131

    6, agreed that the Feds need not discuss every detail in the appellate opinion, but they did cite Judge Ward’s reasons for materiality. We do not have to speculate. They are

      “The district court found that sales demonstrations would be important to a determination of patentability under § 102(b). See 35 U.S.C. § 102(b) (“the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States”). The district court found that the precursor product, while not invalidating, reflected the closest prior art, and thus was highly material to patentability. We hold that the district court’s analysis of materiality is not clearly erroneous.”

    So, A is more relevant than B, but not invalidating. What does this mean? Neither A or B are material as defined by Rule 56, even though A is closer.

    What else could it mean?

    There is nothing in the court’s opinion that the non disclosed prior art was material for any OTHER reason.

  99. 130

    By the way, how often do you file applications without submitting IDSs, Ned?

    Presumably all the time, since he believes his claims are patentable and therefore no art anywhere in the world is material.

  100. 129

    If I file a PA, obtain a FAOM allowance, never submit an IDS, sue, have the patent’s validity sustained over reference X, have I committed IC if I knew about X?

    It depends.

    By the way, how often do you file applications without submitting IDSs, Ned?

  101. 128

    But when the issue is narrowed down carefully, they, ping, INANAE, et al., will in the end never agree with the plain language of Rule 56.

    My objection, actually, was that you narrowed the issue so carefully that you cut out the most important plain language of Rule 56.

    I do not repeat the omitted portions again and again because I agree that to the extent a claim is patentable based only on secondary considerations, then a reference may still be material.

    No, you do not repeat the omitted portions because you’d rather pretend that they don’t exist and the reference has to actually invalidate a claim to be material. If you were being honest, you would recognize that secondary considerations is far from the only difference between invalidity and Rule 56, and most importantly you wouldn’t re-punctuate the rule as if the offending words didn’t exist.

    BRI is a red herring. No one knows what the BRI is until the examiner has told us his opinion.

    Nobody knows what the true claim construction is until the court decides it, but BRI is exactly what it says on the tin. The broadest reasonable interpretation. The entire purpose of BRI is that you don’t need anyone to tell you what it is. It’s the broadest reasonable interpretation. If you can think of a broader reasonable interpretation, your interpretation is not the BRI. If you can interpret the claim to encompass a device without the use of recreational drugs, that’s how broad BRI is.

    What part of BRI do you have trouble figuring out? Is it the “R”?

  102. 127

    “In the end, especially with Avid, we have no idea just how the non disclosed prior art is even relevant to the patentability of any claim.”

    Try reading the District Court opinion Ned. That should be where the details you seek are. The CAFC has no reason to reopen issues that are not being argued on appeal. The reference was apparently clearly material to the claim but for the things the applicant argued. None of the arguments were successful, and thus the DC is not being reversed.

    “They seem to infer materiality from intent.”

    They did not do any such thing. A DC found materiality and the CAFC reviewed their work and contemplated the arguments presented to them without having reconsidered all the basis for having made the original finding. They state clearly that they are not the ones in the best position to make such a finding. They field arguments Ned, they don’t necessarily do the whole analysis thing de novo.

    ‘we have no idea just how the non disclosed prior art is even relevant to the patentability ‘

    Again, try reading the DC opinion.

  103. 126

    6, if a reference is not material to the patentability of any claim and is not inconsistent with any argument or position, can I intentionally not disclose it without committing IC?

  104. 125

    6, inconsistency with arguments aside, what are the elements of proof that reference is material?

    Ditto IANAE or anyone else.

    If I file a PA, obtain a FAOM allowance, never submit an IDS, sue, have the patent’s validity sustained over reference X, have I committed IC if I knew about X?

  105. 124

    Wilton, the TOPIC at hand is the non disclosure of a reference, per se, and without the reference being inconsistent in any way with any representations or arguments.

    I agree that if I say X while a reference I have, but do not disclose, refutes X, then the reference is material and its non disclosure evidence of an effort to obtain a patent through IC without more. But that is not the issue we are talking about.

    So, I carefully limit the issue. The issue is whether a non disclosed reference is material to the patentability of a claim. The issue is not whether the reference is inconsistent with any argument, etc..

    The question I ask is what is the standard, the rule, the law, the elements of proof, or whatever, on how one determines whether the reference is material. Rule 56 states that the reference must render the claim (alone or in combination) unpatentable, regardless of rebuttal evidence of long felt need, etc.

    Now, I have repeatedly had to carefully narrow the issue down in this manner so as to not let these slippery animals slide so easily bye as they are wont. But when the issue is narrowed down carefully, they, ping, INANAE, et al., will in the end never agree with the plain language of Rule 56.

    Now one can easily see just how and why the Federal Circuit goes wrong in cases like Avid and Taltech. They seem to infer materiality from intent. They do not actually compare the claims to the reference and show just how the claims are unpatentable over the reference either alone or in combination. There similarly is no element by element comparison vs other disclosed prior art on the issue of cumulativeness. In the end, especially with Avid, we have no idea just how the non disclosed prior art is even relevant to the patentability of any claim.

    While we are dealing with the issue of unclean hands, our duty of candor is set forth in Rule 56. It has specific, objective, elements of materiality that must be met before there is any duty of disclosure. It would that seem proof of IC should require rigorous proof of all the elements of materiality set forth in this rule.

    But, if this is not the case and if the elements of proof of materiality are different, such that one can be found guilty of IC for non disclosure of a reference even if one fully complies with Rule 56, there is something seriously wrong in the “law.”

    Now the munchkins here would place great store on the “omitted” portions of the standard for prima facie case. I do not repeat the omitted portions again and again because I agree that to the extent a claim is patentable based only on secondary considerations, then a reference may still be material.

    But, BRI is another matter. BRI is a red herring. No one knows what the BRI is until the examiner has told us his opinion. But the issue of IC is decided in court, not in the patent office. If BRI is a required element of proof, cite me one just case where any defendant proved this element? And, if it is required, are we to have two claim constructions in court, one for validity and infringement and one for IC? Nuts.

  106. 123

    “I think there is no duty of disclosure at all with respect to such a dependent claim.”

    HAHAHAHAHAHAAHAHAHAHAHAHAHAHAHAHAHAHAHHAHAHAH

    Be clear Ned, even the patentee in the case before us didn’t argue that. Look at their arguments that they actually did make and LOL.

  107. 122

    That explains the brain rot.

    Is it not a well-established principle of equity that he who claims seams shall not be unseemly?

  108. 121

    “…watches his ridiculous “raincoat seam” patent go up in smoke. You’ll excuse me if I’m not outraged.”

    Obviously Mooney never wears a raincoat. No need to in mom’s damp basement. Seems that Mooney never gained an appreciation for keeping dry. That explains the brain rot.

  109. 120

    Ned,

    We have addressed your impermissible parsing of the rule before – or did that escape your notice?
    Was that self-evidently spurious?

    Now you be going to the well again with the same spurious argument. Notice teh “or’s” of the construction in the rule. Leaving out a reading you don’t happen to like – specially when it’s been shoved in your face – won’t make that perfectly legal reading of the rule go away.

    That dog don’t hunt.

  110. 119

    I was thinking more about the definition of “prima facie case”, which is conspicuously different from the standard for invalidity (unpatentability) in at least three easily-identifiable ways.

    It’s not “when the information compels a conclusion that a claim is unpatentable PERIOD”.

  111. 118

    Ned, I gotta agree with IANAE here. If you’re going to quote a rule that defines materiality, you should quote the whole rule, not just the part that helps your argument.

    For those of you playing along, Rule 56’s definition of materiality is under subsection (b):

    (b) Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and

    (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

    (2) It refutes, or is inconsistent with, a position the applicant takes in:

    (i) Opposing an argument of unpatentability relied on by the Office, or

    (ii) Asserting an argument of patentability.

  112. 117

    6, the vice of which you are complaining is caused by “compact” prosecution. It requires examiner to actually examine dependent claims before their materiality become an issue.

    But the duty of disclosure varies according to the materiality of a reference to the patentablity of a claim. If the patentablity of a dependent claim is not separately argued, I think there is no duty of disclosure at all with respect to such a dependent claim.

  113. 116

    Now, what is the duty of disclosure of a reference when it has no relevance whatsoever to materiality as defined by Rule 56?

    I’m not surprised you take a narrow view of the duty of disclosure. You didn’t even disclose the most material part of Rule 56. Even worse, you put a period at the “end” which is about a third of the way into the Rule’s most important sentence.

    I don’t think someone as intellectually dishonest as that should be deciding duty-to-disclose policy.

  114. 115

    Rule 56, in material part:

    “information is material to patentability …when …it establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim;

    “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable.”

    Now, what is the duty of disclosure of a reference when it has no relevance whatsoever to materiality as defined by Rule 56?

  115. 114

    “They would be patentable even if the reference were disclosed.”

    Well, I’m not so sure about that, I haven’t reached a decision as to that as I haven’t personally gone over the references. But I will say that it appears that the court found as you are stating.

    “They continue to insist, it appears, that if a non disclosed reference discloses any element of any dependent claim, whose patentablity does not depend in the slightest on the element, the failure to disclose the reference is IC.”

    Ned, you’re just going off the deep end now man. I never said any of that and indeed, that is false in a great many cases under the current lawl.

    “Also, if this is the current state of the law, it represent just how far down the abyss we have descended.”

    I’m all for switching to my advocated system.

    “But more on the type of polyamid, it was my understanding that the genus was in the prior art and that the only issue with the particular polylamid might have been best mode. Is this entirely incorrect?”

    The genus was not in the refs that were candidates to be a primary reference. It was, so far as I understand it, in secondary references that might or might not have been available for combination with any of the candidates for a primary ref.

    And no, the only issue is not “best mode”. It is whether or not the inventor’s hand written admission was material and should have been submitted to the PTO. It was and should have been.

    “That was my understanding, too. I don’t understand why the inequitable conduct decision focused on the particular adhesive, rather than whether the reference disclosed an adhesive combined with more claimed features than any cited reference. That’s why I asked 6 whether that reference really was material.”

    Because we are talking about a specific genus of adhesives not simply “an adhesive”. That’s why.

    And if the standard for materiality is more or less whether or not an examiner would have wanted to see the reference then F YES WE WANT TO SEE THESE TYPES OF REFERENCES. They are in fact some of the best kinds of references to put on an IDS. They could save an examiner a day of wild goose chasing after your ind fell, in the event that it falls. They also assist in making my allowability case to my SPE. If I can go to him and say ok, I’ve got pretty much everything save for this limitation, or this relationship between limitations, and I’m going to say it is allowable then bam, your case likely gets approved on the spot without further ado.

  116. 113

    IANAE In Therasense, it looks like the live blood/whole blood distinction was a relatively fine one that deserved an explanation. I bet they thought they were pretty clever for coming up with such nuanced arguments that they could take both positions in a technically consistent manner.

    Except that they were, in fact, unable to take both positions in a technically consistent manner. So they had to resort to making stuff up that didn’t make sense, and which came out during trial in a smelly way.

    Wilton What we’re saying is that the law that was followed led to an outrageous result in this case, as explained by Gajarsa.

    Doesn’t seem so outrageous to me. Inventor with profound credibility problems watches his ridiculous “raincoat seam” patent go up in smoke. You’ll excuse me if I’m not outraged.

  117. 112

    6 and IANAE both seem to agree that the non disclosed reference had nothing to do with the patentability of the dependent claims.

    I’m pretty sure I never agreed to that.

    Rule 56 that requires that a claim be unpatentable over a reference as an essential condition of materiality.

    Fixed. I’m pretty sure Rule 56 does not require that.

    Also, if this is the current state of the law, it represent just how far down the abyss we have descended.

    That is not the current state of the law. We’re not far down the abyss, but you probably think we are because it’s so dark where your head currently is.

    it was my understanding that the genus was in the prior art and that the only issue with the particular polylamid might have been best mode. Is this entirely incorrect?

    That was my understanding, too. I don’t understand why the inequitable conduct decision focused on the particular adhesive, rather than whether the reference disclosed an adhesive combined with more claimed features than any cited reference. That’s why I asked 6 whether that reference really was material.

  118. 110

    6 and IANAE both seem to agree that the non disclosed reference had nothing to do with the patentability of the dependent claims. They would be patentable even if the reference were disclosed. But they continue to insist that the reference was material nontheless.

    They continue to INSIST that materiality of a reference and the patentability of a claim are unrelated issues. They continue to insist, it appears, that if a non disclosed reference discloses any element of any dependent claim, whose patentablity does not depend in the slightest on the element, the failure to disclose the reference is IC.

    Now, if this is in fact the current state of the law, it cannot be reconciled with Rule 56 that requires that a claim be unpatentable over a reference as an essential condition of patentablity.

    Also, if this is the current state of the law, it represent just how far down the abyss we have descended.

    But more on the type of polyamid, it was my understanding that the genus was in the prior art and that the only issue with the particular polylamid might have been best mode. Is this entirely incorrect?

  119. 109

    I agree with Linn’s dissent that the statement made about the “membrane,” “live blood” and “whole blood” to the EPO and the PTO were all consistent, not inconsistent; and the statements made about what one skilled in the art at the time “thought” were in fact statements made in good faith.

    While there is no legal duty to err on the side of disclosure, it’s certainly good practice to do so. Also, materiality is determined on a prima facie basis – not whether the claim is actually invalidated, but whether the reference appears on its face to be relevant to patentability or inconsistent with the applicant’s position.

    In Therasense, it looks like the live blood/whole blood distinction was a relatively fine one that deserved an explanation. I bet they thought they were pretty clever for coming up with such nuanced arguments that they could take both positions in a technically consistent manner. Whenever you think you might have to explain yourself at some point, that’s the time to start filling out an IDS form.

  120. 108

    Malcolm, I say again and again and again because I thin all of the recent IC cases are wrongly decided. That includes Taltech, Avid and Therasense.

    In Taltech, the non disclosed prior art was unambiguously cumulative. Additionally, there was no proof of any misrepresentation of material facts. There was an opinion of counsel expressed about the acceptability of certain kind of stitches. There was proof that the opinion was honestly held. This proof should have prevented a finding of misrepresentation.

    In Avid, there was no proof of materiality. We were left completely in the dark about what the non disclosed prior art was and how it related to the claims.

    In Therasense, there again was no proof that the statements made to USPTO were false or misleading or that the statements were made with knowledge of their falsity. Even if the issues were “close,” there is no legal duty to “err” on the side of disclosure. There has to more: actual intent to mislead. I agree with Linn’s dissent that the statement made about the “membrane,” “live blood” and “whole blood” to the EPO and the PTO were all consistent, not inconsistent; and the statements made about what one skilled in the art at the time “thought” were in fact statements made in good faith.

  121. 107

    None of the other cited art disclosed any other member of the claimed genus IN COMBINATION with many of the attributes from the ind.

    If you say so. I was genuinely asking, as I hadn’t reviewed all the prior art on the cover.

    Of course a reference that discloses elements in combination is more pertinent than two references that disclose the elements individually. It just seemed like all the hullabaloo was over the particular adhesive disclosed, rather than the other features disclosed in combination with it.

    If there is a takeaway from this case it is to include a background section where appropriate in your applications.

    Agreed.

  122. 106

    “From a patentability point of view, are the dependent claims patentable over the non disclosed reference?”

    Yes, what of it? Materiality has zip to do with whether the reference invalidates or not.

    Sorry I missed your comment until I’d already posted the one I just posted above.

  123. 105

    Except this case does not create any new law. You know these inequitable conduct cases are highly fact-dependent, right?

    I don’t think anyone is saying that this case creates new law. What we’re saying is that the law that was followed led to an outrageous result in this case, as explained by Gajarsa.

  124. 104

    “Did none of the other cited art disclose any other member of the claimed genus? ”

    None of the other cited art disclosed any other member of the claimed genus IN COMBINATION with many of the attributes from the ind.

    What don’t you guys understand about this part of the decision? Did you not read it? Or do you simply not understand it? The inventor disclosed a piece of prior art that had lots of stuff from the ind AND some deps, the closest prior art disclosed previously would have had, for an example to make the situation crystal clear to you, only stuff from the ind, while you had to look to other prior art to find a disclosure for the stuff in the deps.

    That, my friends, is a material reference. So sorry.

    If you want to bugger out on the intent prong then fine, but the non-cumulative materiality prong is SATISFIED in spades.

    If there is a takeaway from this case it is to include a background section where appropriate in your applications. Many of my apps already do this, surprise surprise.

  125. 103

    From a patentability point of view, are the dependent claims patentable over the non disclosed reference?

    That would be a very pertinent question if this case depended in any way on the patentability of one or more claims.

  126. 102

    Wow, is there such thing as comparative intential tort. It appears there will be argument over what portion of the $6 million dollars is attributable to the litigators. Then again if the litigators knew about the failure to disclose perhaps the patent holder could sue the litigators for the whole amount, because they should know better than to bring a suit in which there is a failure to disclose prior art.

    I guess this begs the question, in the myriad of antitrust lawsuits that are bound to follow, who is liable, the patent holder, the litigators or both?

  127. 101

    6, just assume for the moment you are right about the “genus” issue. Now, assume for the sake of THIS argument that the independent claims are all patentable over the non disclosed art. ASSUME this, and do not assume otherwise.

    From a patentability point of view, are the dependent claims patentable over the non disclosed reference?

  128. 99

    You know these inequitable conduct cases are highly fact-dependent, right?

    Yes, but in this case it looks like only the dissent was fact-dependent at all.

  129. 98

    Invalidating it on an inequitable conduct pretext leads to nothing but bad precedent.

    Except this case does not create any new law. You know these inequitable conduct cases are highly fact-dependent, right?

  130. 97

    mooney's brain

    This is the area of Mooney’s brain where we believe most of the bad ideas and attitudes are emanating from…

  131. 96

    Specifically, the genus to which those specific polyamide’s belonged was claimed in the deps.

    Did none of the other cited art disclose any other member of the claimed genus? It only takes one member of a genus to invalidate a claim, so the second member of the genus is cumulative unless specifically claimed.

    If the court’s real problem was that he withheld his best mode, the patent should be invalidated for best mode. If best mode wasn’t pleaded or something, that’s not the patentee’s problem. Invalidating it on an inequitable conduct pretext leads to nothing but bad precedent.

  132. 95

    “The issue about the particular type of polyamide, Vilene, has nothing to do with prior art, because the type of polyamide had nothing to do with the claims. ”

    Um Ned, the “particular type” of polyamide does have something to do with whether or not his admitted prior art was better than (non-cumulative with) the prior art they gave the office. The “type” of polyamide had something to do with the dep claims. Specifically, the genus to which those specific polyamide’s belonged was claimed in the deps. The prior art given the office didn’t have that genus in combination with other things in the ind so far as I can read the facts as they are presented.

    Thas IC when you combine it with the rest of what they did bucko.

  133. 92

    Well exccuuuussseeee me. I meant tax paying folks! Which would carry a bigger pocket loss to the user.
    BTW I came into this an Ignoramus. And I still would want EVERY THING related to my Idea on record. that’s why I sent in my own art that was more than relevant. Hopefully the RCE ruling and the fact that crap should be culled by the Attorney/ USPTO from the very beginning. is at least a start.
    It is up to Congress to put a barrier between what a Union is for, verses it’s out of control relationship with the people they serve. The Business world that is not controlled by Unions wouldn’t put up with this crap for a moment. Again the Country has lost sight of another organization that was put in place to protect the worker, not the slacker.

  134. 91

    Ned Equity, again and again and again has become a frightening thing

    “Again and again and again.” Is that your attempt to be quantitative, Ned?

  135. 90

    Sarah, NAL – the USPTO is not tax funded.

    It makes money via user fees, and the Congress diverts some hundred millions of dollars each year in PTO “profits” for Congress’ own uses.

    Nice tidy little no-oversight slush fund there.

  136. 89

    Sarah, NAL, the EPO no longer separates search from examination. Its BEST (Bringing Examination and Search Together) programme started a generation ago. Its search and exam reports are excellent.

    But, just as NAL reports, we are dealing here with a Government and a Trade Union. Worse. In the case of the EPO we are dealing with a 36-member Committee of representatives of Member States, and a workforce selected by quota from those 36 States.

    So, it is not good enough to imply that the reason why the USPTO is hopeless is that it is Government and Union.

  137. 88

    NAL not to continue to beat a dead Horse….But why would the US Government allow a Union to destroy the USPTO?

  138. 87

    Agreed Sarah,

    However, you are dealing both with a government agency and with a union.

    Reality means that a radical overhaul is not likely. Look how difficult it was to make the minor change to the RCE count system, and the result of that change.

  139. 86

    To continue to throw taxpayer money at a system that thinks more Examiners are the answer,is wrong. If the Examiners need to be held accountable, then do so. And to consider other alternatives to the same answer is the only way to attack the Problem. Why is it so hard to remove Examiners that don’t work, or cause problems? Why is it so hard to change direction and attack from another angle? The USPTO can not continue to throw money the same way at the same problem. They must change the way it works.

  140. 85

    sarah,

    I believe the historical downfall of the system you propose is the supposed strength you see – the separation of search from examination. Since the searcher has no responsibility for the end product, there is no driver for a quality search. Likewise, since the examiner has no control over his input – the search – he has no compunction to NOT rubber stamp.

    In a word, you receive the worst of both worlds.

  141. 84

    “I share my profession with some of the most clueless infants in the legal world.”

    Your “profession” as what, exactly, Mooney? The diaper launderer at the firm nursery?

  142. 83

    So, Malcolm, is Taltech a case of killing the goose (equity) that lays the golden eggs?

  143. 82

    Malcolm, “When doing a search we inherently choose not to cite thousands of references. Are we committing IC by not citing those thousands? All of those references are relevant (that’s why they are in our field-of-search), but we only cite the particularly relevant ones…

    No, because almost all of those thousands of references are cumulative with respect to the most relevant references.”

    Only if this “law” were what actually happened in court. In this case, Taltech, the dissent showed beyond reasonable doubt in my opinion that the “withheld” reference was cumulative of the best art disclosed and STILL the Wong was hammered by the majority who simply refused to compare the non disclosed art to the disclosed art element by element. There was venom in the hearts of the district court and the Federal Circuit majority that would not be set aside by the law or the facts. They wanted to hang Wong because of his apparent general dishonesty and his litigation counsel’s abusive tactics.

    But now, we the public have to deal with this case. What do we learn?

    Cumulative no longer requires an element by element comparison? If it is close, disclose.

    I am all for dumping every reference that meets certain search criteria on the examiner’s desk. If I am met with some objection that this is not necessary, that I should “cull,” I will cite this case and say that I cannot afford not to disclose. Not only is there no room for error, this case stands clearly for the proposition that if the court doesn’t like you, it will do everything in its power to hang you.

    But this case does argue that we really need to keep equitable defenses out of the patent cases except in the most egregious of circumstances. Equity, again and again and again has become a frightening thing, akin, as I said before, to the false accusation so often used for spite in the French Revolution. It is a monster that can no longer be tolerated.

  144. 81

    If we somehow get a Patent, that’s nor enforceable, this happens. But if it happens more than it should then the Examiner needs some help. And if the Examiner is not doing his job for onr reason or another. then hiring Researchers to cut the examiners job in half, so he can get more done is the answer.
    To say don’t whine and cry is a cop out. Especially if you work or worked there! It is the reason why the USPTO exists.And if little ideas that people give to help the system seem workable. Then try it with one Art Unit. Unemployed Paralegals would be a perfect fit for the job.

  145. 80

    When doing a search we inherently choose not to cite thousands of references. Are we committing IC by not citing those thousands? All of those references are relevant (that’s why they are in our field-of-search), but we only cite the particularly relevant ones…

    No, because almost all of those thousands of references are cumulative with respect to the most relevant references.

    If your claim is to a wagon with three lights and five wheels and an electric horn, and you’ve got a reference citing a wagon with three lights and four wheels and an electric horn, and a reference citing a wagon with two lights and five wheels and an electric horn, you’re pretty much done, you don’t need to cite that reference which teaches a four wheeled wagon without any lights or horns, nor do you need to cite Schmidt’s “History of the Electric Horn.”

    Of course, if you somehow get a patent over that art, don’t whine and cry if you have trouble enforcing it.

  146. 79

    Dear Mr. Robert Stoll,
    I think the Examiner level has a very high step from the level it steps`from…I think the need for a level before Examiner will not only save money, but free up the Examiner to get more out.
    This is what I see. There are people out there that do Ebay for instance. Some really research each item before listing it. And they show in sales their ability to get the job done. You need a step not unlike the ebay seller,that knows where to look to list. Although a look not truly deep enough, a start. What do you say about a level before Eaminer. called a CR, a citing researcher. People that cite. Only what they see as the most relevant. Then the Examiner that knows the MPEP… uses the relevant Art from the Researcher before him. And what he may also see, also as relevant then do his Job deciding the claims as valid. Now not to take the power from the Examiners job. Knowing that would be where the buck stops. But it would give him hours of not having to research, but, immediately having it in front of him to work from.
    Now you have less need to pay high pay to Examiners.
    And now a cheaper answer to your problem. And less stress on each level. Now hiring qualified Examiners. And now a pool of qualified Reasearchers too.

  147. 78

    Getting back to culling and French Seams,

    If the Patent is all about how a seam lays, then the first book I’d search if a Researcher.. would be a sewing book on how to sew different seams. but then that is why there are textile Examiners, Right?

  148. 76

    Ping, a question. You said:

    “”culled the herd”

    can’t – that’s what will get you in trouble because you would be making judgments that an examiner should.”

    As a searcher, I receive patentability search requests from clients that include a list of several hundred known references. They will ask me to include them in my search considerations. Do these several hundered known references then need to be cited in an IDS or just the ten most relevant references I provide to the prosecuting attorney? Will the attorney be excluded from IC since they have passed the culling or vetting burden to someone else? What if I have a registration number?

    When doing a search we inherently choose not to cite thousands of references. Are we committing IC by not citing those thousands? All of those references are relevant (that’s why they are in our field-of-search), but we only cite the particularly relevant ones…

    With an excess of fear, I can see why some attorneys and clients explicitly do not want searches performed. It must be tough drafting claims and getting allowance without multiple RCEs with your head in the sand though.

  149. 75

    I was only asking if if in fact the seam is French,then would both be weakened? Therefore making both moot in patent land?

  150. 73

    did i miss something here?

    at the base of this whole discyssion, doesn’t the prior art (urs ribers etc cie.) make that patent claim effectively invalid? or at the very least dimisish its scope considerably?

    doesn’t that matter?

  151. 72

    “If” the TAL is in fact a French Seamed Rain coat? Wouldn’t that say Wong is not Infringing?
    Inquiring minds want to know.

  152. 70

    Yes, our “only hope” is for courts to continue to do what they already in most cases: reach the right result. That is the only way we can avoid the potential disaster of courts not reaching the right result most of the time.

    We still need the occasional bad result, so we can complain about how hard it is to be patent agents.

    I find it amusing that everyone carries on about how the caselaw requires them to submit thousands of references, when the caselaw could not be clearer on the point that cumulative references need not be submitted.

  153. 69

    We actually have clients?

    And we want to protect their property to the best of our abilities?

    Here’s my advice: do your job, do it well, don’t freak out everytime a case is found invalid on inequitable conduct grounds, and when it’s time to litigate the patent, recommend some experienced litigators to your client.

    Or you can follow some of the commenter’s advice: send this case to your client and tell them every one of their patents is unenforceable because you didn’t cite everything and you are going to spend the next month working 24/7 preparing a 35,000 reference IDS to make sure you are complying with the present case law.

  154. 68

    culled the herd

    can’t – that’s what will get you in trouble because you would be making judgments that an examiner should.

  155. 67

    IANAE Our only hope is for the courts to have some sense and not find inequitable conduct where people didn’t do anything wrong.

    Yes, our “only hope” is for courts to continue to do what they already in most cases: reach the right result. That is the only way we can avoid the potential disaster of courts not reaching the right result most of the time.

  156. 66

    Dennis, I urge you to post the figures from Gajarsa’s dissent. They show the URS side-by side with Fig. 3 of Robers and a Figure from the patent. Also include Gajarsa’s summary of the elements of the figures which clearly demonstrate that Robers is more material than the UBS. It also illustrates why both references are not all that relevant to the patented invention.

  157. 65

    6, compare the figures illustrated in Gajarsa’s dissent. I would hope that Dennis would reprint them here. Compare yourself the URS with Robers Fig. 3, and the patent’s figure. You can see at an instant that the URS is merely cumulative of Robers.

    The issue about the particular type of polyamide, Vilene, has nothing to do with prior art, because the type of polyamide had nothing to do with the claims. If Vilene was not disclosed in the specification and if Vilene was the best mode polyamide, then the patent is invalid. But that is a separate issue from IC.

  158. 64

    MM: “I share my profession with some of the most clueless infants in the legal world. What is the matter with you people?”

    We actually have clients?

    And we want to protect their property to the best of our abilities?

  159. 63

    He states for instance that Vilene being discosed by the inventor at trial is no issue because the examiner considered lots of types of polyamide adhesives in various pieces of prior art OTHER than the one we’re currently looking at with regards to cumulativeness, roberts. That doesn’t seem like a very good way to determine materiality.

    How about, the patent application itself didn’t disclose Vilene, which was a whole other can of worms. How can Vilene be more material than a generic adhesive when the patent itself makes no mention of Vilene?

  160. 62

    You’re going to cite everything? That’s going to take a long time and all of your client’s money.

    Assuming you actually have a thousand references in front of you already, it’s much cheaper for your client to file them all than to check which of them are the most relevant. That’s a job for some salaried clerical worker.

    The real problem is when you have a few select references you know are pretty close, and also a thousand other references you’d rather not look too closely at.

    Coming soon: allegations of inequitable conduct because you filed a thousand references when you really should have suspected that a handful were significantly more material than the others, and culled the herd on that basis.

    It doesn’t matter what the rule is or what you actually do. Litigators will always find something questionable. If they don’t, they’ll question whatever’s findable. Our only hope is for the courts to have some sense and not find inequitable conduct where people didn’t do anything wrong.

  161. 61

    “Sigh. This case does seem to lead to that. I hope it is reversed. I would much rather cite relevant prior art than everything I have ever seen that might be related in some manner. I think the Examiner would prefer my way as well. But if it is going to get a client’s case thrown out down the road, I have no choice.

    I share my profession with some of the most clueless infants in the legal world. What is the matter with you people?”

    Malcolm, pleeeese, as a publc service, clue us in.

  162. 60

    After having read the decision I must say that I believe Garjarsa is wrong about the non-cumulativeness. He states for instance that Vilene being discosed by the inventor at trial is no issue because the examiner considered lots of types of polyamide adhesives in various pieces of prior art OTHER than the one we’re currently looking at with regards to cumulativeness, roberts. That doesn’t seem like a very good way to determine materiality. If we’re looking for the cumulativeness of one reference with another reference we can’t go simply stating that the parts that make it non-cumulative with that piece of prior art were disclosed in ANOTHER piece of art and so it is non-cumulative. That would fail to take into account the difficulty in making 103 combinations and the benefit of having more limitations in one reference when trying to make a combo.

    Overall, I find Garjarsa’s dissent to be unconvincing on the other matters as well.

    Ned why do you think this decision is gross? It seems perfectly in line with the law as it stands today.

  163. 59

    Sigh. This case does seem to lead to that. I hope it is reversed. I would much rather cite relevant prior art than everything I have ever seen that might be related in some manner. I think the Examiner would prefer my way as well. But if it is going to get a client’s case thrown out down the road, I have no choice.

    I share my profession with some of the most clueless infants in the legal world. What is the matter with you people?

  164. 58

    One can only have the abiding conviction after having review Gajarsa’s dissent that a profound injustice has been upheld by the Federal Circuit.

    You could get a similar feeling from reading Judge Newman’s dissent in Abbot Labs v. Sandoz.

    But everybody agrees that dissent is totally wack.

    Somehow two judges managed to disagree with Gajarsa. Maybe they are communists or something.

  165. 57

    “Nothing is cumulative. Cite early, cite often, and cite everything.”

    Sigh. This case does seem to lead to that. I hope it is reversed. I would much rather cite relevant prior art than everything I have ever seen that might be related in some manner. I think the Examiner would prefer my way as well. But if it is going to get a client’s case thrown out down the road, I have no choice.

  166. 56

    BJA Of course there’s a takeaway, the some one from McKesson: Nothing is cumulative. Cite early, cite often, and cite everything. Then cite some more.

    You’re going to cite everything? That’s going to take a long time and all of your client’s money. You must not mean that.

    So let’s stop kidding each other, BJA. What is the real take home from this case?

  167. 55

    Any fair reader viewing the side-by-side comparison of the URS (not disclosed), Fig. 3 of Robers (disclosed), and the patent’s Fig., could not but conclude that Robers was indeed more relevant than the URS, and that neither was all that relevant to the claimed invention.

    One can only have the abiding conviction after having review Gajarsa’s dissent that a profound injustice has been upheld by the Federal Circuit.

    Given that the issue of IC has already been taken up by the Feds. en banc, they should take this case up as well.

    But, the stink of this opinion is so gross that if I were on the Supreme Court, I would use this case as the vehicle to review the whole issue of IC, as this case clearly needs to be reversed.

  168. 54

    Mooney, you’re so cute when you’re naive. Of course there’s a takeaway, the some one from McKesson: Nothing is cumulative. Cite early, cite often, and cite everything. Then cite some more.

  169. 52

    Malcolm: The man made fundamental advances in telegraphy, sound recording, generation of electrical power, microphones, electric lamps, alkali batteries and cinematography to mention only those that I recall, and not to mention the Edison effect which pointed the way towards vacuum tubes. One of his biographers concluded that he had single-handedly advanced technology by a generation, and the wealth that flowed from his inventions is almost beyond calculation. Does it matter that he was not always straightforward in his personal dealings and would almost certainly not survive the questioning of the present breed of litigators? The danger is that we will end with people who are honest and true, but invent little of value.

  170. 51

    Gajarsa The district court also improperly inferred intent to deceive from the materiality of the non-disclosed reference and several statements Wong made to the PTO. In both instances, the district court drew an inference of bad faith despite an equally plausible, and likely more reasonable, inference of good faith.

    See 9:52 am post for information relevant to the “likelihood” that Mr. Wong was acting in “good faith” with respect to his patent procurement activities.

  171. 49

    PC Malcolm – was your Edison remark meant seriously?

    Yes, except to the extent that it implies that I don’t already know the answer: the people who would care are the people whose livelihoods were destroyed because Edison was granted patents to which he was not entitled.

  172. 47

    A shame that he’s so often finding himself in the dissent.

    That’s where voices of reason tend to find themselves.

  173. 46

    Written description, double patenting, means-plus-function interpretation, and inequitable conduct – Gajarsa is, time and time again, turning out to be a clear voice of reason on this court. A shame that he’s so often finding himself in the dissent.

  174. 44

    IANAE: No, he is the grumpy old man who characterizes everything in terms of the trouble it will cause him, and whose life would be meaningless if it were not for a wonderful lad.

  175. 43

    Maybe there was a low life slimeball Seamstress in the Jury?

    Usually it’s counsel, not jurors, who are likened to seamstresses (hem, hem).

  176. 42

    The date of Wong’s in court statements and the URS document came into existance after the issue date of the Wong patent, so it’s not how there things would be prior art subject to disclosure.

    Huh? Are you really suggesting that there was no duty to disclose because the drawing was created after the patent issued?

  177. 41

    I watched Dennis the Menance on the Internet. MM’s personality is very similar to Mr. Wilson’s personality.

    Is he the well-meaning adult whose entire existence is defined by his futile interactions with a troublesome brat?

  178. 40

    >>This is one of the reasons we have Rule 56 and >>the inequitable conduct defense
    so said MM.

    I watched Dennis the Menance on the Internet. MM’s personality is very similar to Mr. Wilson’s personality.

    Did you watch Dennis the Menance as a child, MM?

  179. 39

    The date of Wong’s in court statements and the URS document came into existance after the issue date of the Wong patent, so it’s not how there things would be prior art subject to disclosure.

  180. 37

    Where I come from that is very similar to a French Seam. which I believe would give the same effect.

  181. 36

    Paul Cole, writing in response to poster ping, “Is that a view that professionals in the US would like to become widely accepted in Europe?”

    Paul, is it your view that ping is actually a professional?

  182. 35

    “Defendants’ counsel requested that Wong draw the prior art that “inspired” him to experiment in making pucker-free seams in dress shirts. In response, he sketched a prior art seam used to waterproof raincoats manufactured in the TAL factory. During litigation, Wong’s drawing was labeled the “Undisclosed Raincoat Seam” (“URS”). ”

    OMFG!!!!!!!!!!!!

    PWND!!!!!!!!!!!!!!

    This is the kind of sht that makes me want to go into litigation!

  183. 34

    Gajarsa the district court drew an inference of bad faith despite an equally plausible, and likely more reasonable, inference of good faith. Such an analysis has been rejected by this court and is legally erroneous. See Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 528 F.3d 1365, 1376 (Fed. Cir. 2008) (“Whenever evidence proffered to show either materiality or intent is susceptible of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor of another equally reasonable inference.”).

    As I noted in a previous thread, the Scanner Tech standard is ridiculous and needs to be overturned. I suspect that most judges on the Federal Circuit agree with me.

  184. 33

    It seems to me that it is never good to have your deponent making drawings or writing on exhibits during a depo.

    The answer is: it depends.

    But never doubt the ability of a prosecutor to dig some absolutist rule out of an extraordinarily fact-dependent case.

    BJA: where’s Moonpie to tell us why there’s no need to cite anything in light of McKesson and this case?

    I’ve never said anything of the sort, BJA. What are you driving at? Do you think there is some “take home” from this case that is relevant to all prosecutors? If so, I’d love to know exactly what you think that is.

  185. 32

    Paul Cole How would Thomas A. Edison have fared in today’s climate

    Better question: if Edison fared worse, what possible difference would it make to anybody except for Edison?

  186. 31

    NWPA Fisher ames: that has been my experience. When an honest person is aginst a liar, the liar usually wins.

    This is one of the reasons we have Rule 56 and the inequitable conduct defense.

  187. 29

    While the court applied the 1992 Rule 56 regarding “misstatements,” it did not applied the revised rule to the issue of materiality of the URS. The only issue litigated and decided regarding the URS was whether the URS was closer prior art than a German reference with a questionable translation. That is NOT the standard of materiality required by Rule 56. In fact, it the rule of the court greatly exceeds that required by the Rule.

    What appears to have happened here is that the patent was held unenforceable primarily for failure to disclose non material prior art.

  188. 28

    IANAE: “Slimeballs have a harder time winning the sympathies of judges and juries, nice people make more friends, hotter waitresses get bigger tips.”

    The corollary of which is that slimeballs get dates with hot waitresses, while nice people end up as “just friends”.

  189. 27

    Is the fact that he or she is a slimeball then good reason for depriving him or her of an enforceable patent?

    Not really, but it’s an unavoidable part of life. Slimeballs have a harder time winning the sympathies of judges and juries, nice people make more friends, hotter waitresses get bigger tips.

    The answer here, I guess, is to preemptively not be a slimeball if you plan to ever assert any of your rights. If it turns out later that you need a slimeball to assist in litigation, there are plenty of them for hire.

  190. 26

    It seems to me that it is never good to have your deponent making drawings or writing on exhibits during a depo.

    Would a litigator who reads this blog please advise on depo defense strategies that can be used to keep that from happening?

    I was also taught that it is never a good idea to ask your own deponent questions during the depo. If your deponent has to make drawings or write on exhibits, is it advisable to try to rehabilitate him when it is your turn to ask questions in the depo?

    Thanks in advance for any advice.

  191. 25

    Anon (or anyone else) are there links to the trial opinions which it would be good to be able to read? If so, please post the links as it would be very helpful.

    It occurs to me that an absolute slimeball may have made a brilliant invention. Is the fact that he or she is a slimeball then good reason for depriving him or her of an enforceable patent? How would Thomas A. Edison have fared in today’s climate (I am not saying he was a slimeball but according to his biographers he was not always an easy person)?

  192. 24

    anon:
    the not “credible” because of inconsistent testimony can be great sport for lawyers and judges who find a witness naive, or actually having faulty memory, enough to play the game. Doesn’t work with Sergeant Schultz: “I hear nothing, I see nothing, I know nothing! …”. That dude rarely leaves a paper trail either (unless it’s self-serving).

  193. 23

    Maybe they misunderstood a rule about requiring the deponent to produce a document.

    LOL – nicely done

  194. 22

    Depositions are for giving testimony, not making pretty drawings. ;)

    Maybe they misunderstood a rule about requiring the deponent to produce a document.

  195. 20

    This case reads just like McKesson:

    “Man, we really really h@te that guy. How can we find his patent invalid? Well, he was cagey at trial. I know, inequitable conduct. Everything this guy has done amounts to inequitable conduct.”

    “Wait wait wait. I’ve got it. EACH and every thing this guy has done BY ITSELF amounts to inequitable conduct. Yeah, that’s the ticket.”

    Way to write case law guys. The dissenter has this one right.

    Hey, where’s Moonpie to tell us why there’s no need to cite anything in light of McKesson and this case?

  196. 19

    I am puzzled why the trial attorney allowed the inventor to sketch the thing in the first place. Depositions are for giving testimony, not making pretty drawings. ;)

  197. 18

    “And there are STILL people who assert that the system does not need fixing??”

    You can’t “fix” bad decisions in courts of law. Materiality and intent, while seemingly simple, are subject to interpretation, particularly in light of cumulativeness.

  198. 16

    “And there are STILL people who assert that the system does not need fixing??

    Paul,

    Your point is very well taken when it comes to the morass that the inequitable conduct doctrine is and remains in the States. We would do well to follow the ROW and ditch this turkey completely.

  199. 15

    IANAE: “How do you list that on an IDS? “Hand sketch by inventor, circa 2007″?”

    Perhaps as Figure 1 of your disclosure, labeled “Prior Art”.

  200. 14

    Go back and read the trial opinions.

    (1) The district court felt that plaintiff’s litigation tactics alone merited an award of fees.

    (2) The district court judge didn’t trust the inventor.

    From the 2007 opinion regarding the undisclosed raincoat seam:

    “At trial, Mr. John Wong testified on direct that he became aware of the John Wong Undisclosed Raincoat Seam “after 1994.” Then he testified that he became aware of it at “almost the same time” that he learned about the TAL Disclosed Raincoat Seam, which would have been in late 1993, at the latest. On cross, he then testified that he did not know about it until one to two years ago. Finally, Mr. Wong admitted during cross-examination that he knew that TAL Apparel made raincoat seams with one set stitch and one top stitch before he filed his patent application on May 17, 1994. He further admitted that in early 1994, he took apart and tested raincoat seams with set stitches and raincoat seams without set stitches. During his May 3, 2006 deposition, Mr. Wong testified that he knew TAL was using two different structures for its raincoat seams — one with a set stitch and one without a set stitch — as early as 1992. (Ex. 839 John Wong Dep. May 3, 2006 at 16).

    . . .
    The Court finds that Mr. Wong knew that TAL Apparel made raincoat seams with one set stitch and one top stitch (i.e., the “John Wong Undisclosed Raincoat Seam”) prior to filing his patent application on May 17, 1994. Any testimony of Mr. John Wong to the contrary is not credible.”

  201. 13

    IANAE: take a picture of it or a drawing, but if it is prior art and the inventor knows about it, then he needs to convey that to the PTO.

  202. 12

    NWPA: On the other hand, the inventor probably should have disclosed this to the PTO during prosecution.

    How do you list that on an IDS? “Hand sketch by inventor, circa 2007”?

    Paul: As a European patent attorney, this is very much my business and the business of every one of my colleagues in Europe.

    You don’t need to justify your interest. Everyone files in the US. US law affects us all. This much is readily understood by minds willing to understand.

    This is a bad case, to be sure. But it’s not a case that shows any problems with the substantive rules. The courts at both levels clearly wanted to hold the patent unenforceable, and they found a reason why this art (for art it was) was very important. No substantive rule holds the answer to result-oriented reasoning. Had the actual rule been applied, the “reference” would have been cumulative, and everything would have turned out fine.

  203. 11

    Has anyone an online link to the first instance judgment appealed here?

    As Ping has noted, I do not care for the appeal judgment, but I might well be mistaken. Reading the first instance judgment might make the conclusions more understandable. But it seems that Judge Gajarsa did not like it either.

    As a European patent attorney, this is very much my business and the business of every one of my colleagues in Europe. We all represent clients who apply for patents in the US, and the requirements of US law with which we have to comply are of importance to us all. In particular they need to be reasonable, readily understandable and reasonably easy of compliance. Otherwise our clients may vote with their feet and cut the number of their US filings, on the ground that US patents are in practice too difficult and risky to assert, and hence are of no practical value. Is that a view that professionals in the US would like to become widely accepted in Europe?

  204. 10

    I think the courts encourage the liars in subtle ways. The courtts tend to diminish the impact of the lie and focus on the main issues with the facts in front of them and discount the importance of one side having been caught in a few lies. The court seems to poo poo the lies, and miss the fact that if you caught them with one or two lies that in fact there are probably 100’s of lies and that their entire case is probably built on lies.

    The court just doesn’t seem to get how hard it is to catch people at lies.

    Not sure how to express this.

  205. 9

    Fisher ames: that has been my experience. When an honest person is aginst a liar, the liar usually wins. What bugs me so much is that time and again you see the courts encouraging the liars.

  206. 8

    Gee, wonder why witnesses spontaneously develop selective recall disorders? sure it has nothing to do with the judicial system communicating to the public that the potential upside of being fully honest is +1 and the potential downside is -100.

  207. 7

    Paul,

    From your comment “This falls into the second category. And there are STILL people who assert that the system does not need fixing??

    I would take it that you think this is a bad decision and that the process for reaching this deicsion is broken. Aside from being a Brit and being none of your business, why do you think the system did not reach a correct conclusion here?

    I should add that I haven’t read the Decision or the Dissent yet, but I am not opining about it either.

  208. 6

    Always a delight to read anything from Maxie that begins:

    Haven’t read the Decision or the Dissent yet, but

    Forewarns the bias coming. Funny how Maxie never seems to learn and presents the same bias over and over and over…

  209. 5

    There are good precedents and bad precedents. This falls into the second category. And there are STILL people who assert that the system does not need fixing??

  210. 4

    I’m assuming that the raincoats in question were imported into the United States. But if they were not, and the TAL factory is in China, wouldn’t this be use outside the country and thus not prior art?

    Does an inventor have a duty to investigate whether something he sees in a foreign country is being used in the United States or disclose said foreign use?

  211. 3

    Naive question from a Euro: Is the inventor being scapegoated here. Haven’t read the Decision or the Dissent yet, but I have a suspicion that:

    1. The District Court couldn’t stomach the plaintiff

    2. The DC could not find a way to hold the asserted claim invalid

    3. So the DC looked for another way (any way) to decline to enforce the claim.

    4. Thereafter, the court of appeal lacked the will to reverse the first instance (put emphasis on the public policy objective of, whenever possible, not interfering with a decision at first instance).

  212. 2

    This is one to remember. Sketch the inspiration for your invention. So the lesson is to warn your client about this type of question prior to a deposition.

    On the other hand, the inventor probably should have disclosed this to the PTO during prosecution.

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