Taltech 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.
The 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. . . .
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).
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.
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.
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.
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.
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.
“Ned, none of the cases you have cited support your point”
Absolute shocker.
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.
“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.
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.
If you say so. I’m off now.
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.
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
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.
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…
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).
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.
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.
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.
Then how can anyone prove that the accused device was on sale.
Hire a competent litigator to conduct the discovery.
“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.
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.
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.
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.
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.
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…
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.”
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).
IANAE, try the example, then lets discuss.
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.
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.
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.
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.
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.
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.
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.
Maxie,
This is off-topic, but just caught this over at 271 – would love to have your input:
link to 271patent.blogspot.com
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?
I dunno – something about hiding and concealing that speaks to non-patentability of the Coke formula…
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.
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.
That was awesome INANE HAHAHAHAHHAAAAAAHHHHAAAAAA.
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.
The recipe for Coke. On sale for a hundred years? Really. News to me.
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.
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
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.
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.
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.
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.
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?
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.
“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).
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.
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.
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.
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.
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?
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.
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.
Where does the USPTO get the authority to enact Rule 1.56?
Takes one to know one Ken – your grasp of facts is just as slippery.
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.
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.
IANAE, I look forward to your thoughts over morning coffee.
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.
IANAE, I cannot read your mind. I have explained why I believe they are inconsistent.
Your turn.
OK, reconcile Orion IP and Avid.
Do you want to take another crack at it first, now that you know a solution exists?
INANE, OK, reconcile Orion IP and Avid.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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).
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?
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.
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?