Apple Buys 200+ Patents from Freescale Semiconductor

Apple Inc. recently recorded the receipt of 200 patents and pending patent applications from the electronics company Freescale Semiconductor, Inc.  Although not recorded until May 18, 2011, the assignment is dated April 11, 2011.  Freescale began as a division of Motorola in 1949 and spun-off in 2003.  Some of the patents transferred originally belonged to Motorola.

The law does not require that patent assignments be recorded. However, the recordation of rights protects the assignee against others who may later claim rights under color of title.  The recordation statute is a “notice statute” and indicates that a prior conveyance of an interest in a patent “shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the [USPTO] within three months” from the date of the prior conveyance. 

To be clear, the assignment records available only indicate that Apple received an “assignment of assignors interest.”  Thus, it is unclear from the information now available whether (1) Apple obtained full title to the patents and (2) whether Apple purchased the rights or obtained them through some other type of transaction.  However, a cash purchase is likely because Apple has a large multi-billion-dollar cash surplus while Freescale has a large multi-billion-dollar debt that has come due.  The patents were previously mortgaged and a release of the security interest has not yet been recorded.

Assigned Patents include Patent Nos. 7929636; 7912083; 7881721; 7852811; 7813455; 7809074; 7808886; 7702029; 7693128; 7675844; 7627325; 7623599; 7609779; 7602861; 7603094; 7602837; 7599321; 7593485; 7590184; 7590419; 7539272; 7539462; 7495515; 7489202; 7486941; 7469020; 7421252; 7412006; 7403758; 7392026; 7369820; 7346317; 7346098; 7324558; 7313166; 7301402; 7266359; 7231586; 7227916; 7215972; 7209720; 7177616; 7158603; 7158578; 7148749; 7127563; 7120402; 7117234; 7109816; 7046977; 7042909; 7016398; 7010278; 6996158; 6982605; 6973142; 6961011; 6959035; 6952572; 6950634; 6950910; 6933766; 6930554; 6914935; 6889036; 6845233; 6839381; 6812802; 6804501; 6782038; 6768353; 6760386; 6751264; 6693490; 6625233; 6600344; 6594328; 6560447; 6490440; 6487395; 6487260; 6487398; 6445790; 6424825; 6400821; 6400218; 6393071; 6370211; 6356217; 6327313; 6317064; 6310856; 6301306; 6289060; 6275540; 6263199; 6259318; 6243410; 6233287; 6185411; 6137997; 6133793; 6130921; 6100721; 6073002; 6055436; 6049703; 6049233; 5960042; 5945878; 5943378; 5926052; 5905757; 5886547; 5874860; 5867063; 5812027; 5799043; 5799011; 5777516; 5778306; 5757236; 5757237; 5758275; 5748042; 5737327; 5734974; 5701600; 5696797; 5678223; 5673003; 5670951; 5633895; 5630222; 5606731; 5604926; 5584053; 5513382; 5493700; 5481226; 5478773; 5471665; 5448770; 5430416; 5387547; 5363071; 5194833; 5175729; 5128632; 5072193; and 5061911.

Assigned pending Patent Applications include Publication Nos. 20110096707; 20110019631; 20110009148; 20100322226; 20100202553; 20100115358; 20100110901; 20100113105; 20100091826; 20100061468; 20100061278; 20100042881; 20090304109; 20090245148; 20090245223; 20090238121; 20090232097; 20090201861; 20090190688; 20090181691; 20090181690; 20090116599; 20090051441; 20090034636; 20090034480; 20080318579; 20080267057; 20080268785; 20080268888; 20080232308; 20080233964; 20080233992; 20080232234; 20080229177; 20080227495; 20080165875; 20080165717; 20080101494; 20080080439; 20080080632; 20080080449; 20080076370; 20080075058; 20080043883; 20080025197; 20080009250; 20070293180; 20070280379; 20070274477; 20070201586; 20070109055; 20060239377; 20060223462; 20060170499; 20060035611; 20050111529; 20050079850; 20050042996; 20040041644; 20040041616; 20040019620; and 20030035498.

There is a substantial amount of diversity among this group of patents. They almost all relate to hardware for computers and wireless devices.

75 thoughts on “Apple Buys 200+ Patents from Freescale Semiconductor

  1. 75

    “Doesn’t the claim actually cover every chemical compound that performs the flagpole function regardless that it might do so in an entirely different way the the disclosed embodiments?”

    Probably. But idk for sure, I’d have to dig deep and this isn’t my case. In any event, that is no reason to hold the thing indefinite, at least under the old CAFC precedent.

  2. 74

    Well, I don’t look for the firm because I’m not looking to hire them, or provide anyone with a recommendation from me (typically I think examiners aren’t supposed to show bias towards or against firms if I understand the rules right). I did however inform my uncle that there is a listing of registered practicioners and that generally they will provide referrals. In any event, his company landed with a big firm in NY, but from what I gather it appears that his lawlyer is not very good despite how much he is getting paid. Additionally, I get the feeling he does not feel his lawlyer is very good. So, I’m asking other people who might know great lawyers who can get some sht persuasively done instead of some boob who can do little but sit and spout lawl and “disagree” forever. And then I might mention that there is a site where I noticed that someone had provided a glowing recommendation for someone I’d never heard of and am intentionally and unintentionally unbiased for or against.

  3. 73

    “6, I don’t think you can file an inter partes reexamination against one’s own patent.”

    That’s what I thought, I think my uncle had been mistaken as to whom was filing the re exam.

    Thanks though.

  4. 72

    6, I do not practice in the lighting business so I have no clue as to whom might have some expertise there. Why don’t you see which firms are listed on the patents issuing in the field?

  5. 71

    6, I don’t think you can file an inter partes reexamination against one’s own patent. You can file a request for an ex parte reexamination, or better, a no defect reissue where you simply disclose the problem art in an IDS.

  6. 70

    6, consider the disclosure in this case. A few examples of flagpoles and a guide to finding additional flagpoles by a suggested test.

    Now, can you tell me with any reliability that one of ordinary skill in the art would know whether a particular chemical compound that performed the recited flagpole function was outside the claim? Doesn’t the claim actually cover every chemical compound that performs the flagpole function regardless that it might do so in an entirely different way the the disclosed embodiments?

    But if you say no, why do you say no?

  7. 68

    Hardly working, had the Feds simply held that the functional claim cover the corresponding examples and equivalents, as I have suggested is the right approach many times, citing at least Westinghouse v. Boyden Power Brake, there would have been only one, not two, remaining problems.

    But the court seems highly resistent to the Supreme Court rules of construction of functional claims on this issues. Highly resistent.

  8. 66

    Perkins glue, among other Supreme Court cases, requires more than that a claim can be construed, especially when it claims a composition functionally, it requires that one be able to determine without undue experimentation whether a composition is within or without the claim limits. Merely providing data points in the specification is not sufficient.

    The Federal Circuit rule here is incomplete. What is missing is that the claim provide limits, or that the specification provides limits. Merely claiming all ways of achieving a result without any limit specified anywhere, makes the claim indefinite.

  9. 65

    My first thought is whether or not Perkins Glue is as on point as the one side (only) says.

    As A New Light asked above, Ned, please make the case why this is so.

    Please do not assume any answers. Answer fully as if you actually had to make a case.

  10. 64

    A new light, compare petitioner’s briefs, particularly at fn. 12 of the main brief, with the government brief. The government discusses all the Supreme Court cases discussed in the petitioners brief, including in fn. 12, all, that is, but Perkins Glue — yet that one is the one the petitioner primarily relied upon and discussed in the main text and not in the footnote.

    Now, if you are sitting in a clerk’s chair and are reading the briefs and sumarizing the what the various briefs argued about the Supreme Court cases on point, and you notice this, what is your first thought?

  11. 63

    I am pleased by the maturation that 6 continues to show…

    Really? You do know that this is the same guy that, two days ago, posted this: “I was just going to ask that they hold the base of my c k whilst I c kslap them.”

    If a patented reference serves close enough for 102 and 103, the examiner has provided the very proof that 112 and 101 rejections cannot be sustained.

    That argument has some initial intuitive appeal, but it’s a non-starter at the BPAI and at the Federal Circuit. “Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.” In re Gyurik, 596 F.2d 1012, 1018 n.15 (CCPA 1979).

  12. 62

    Dennis must still be digesting the Therasense decision.

  13. 61

    I am pleased by the maturation that 6 continues to show, and may even consider removing him from my list of individuals that merit a designation of “Do not respond.”

    6 raises a few good points above:

    Which, if true (and I note that I believe it is true), I wonder then why the office insists on making examiners do an art rejection when they are saying that a claim is supposedly indefinite?

    I too have wondered this point. And along with this type of rejection (112), I also wonder about rejections of the 101 nature and then the same Office Action goes on to provide 102 or 103 rejections based on patent prior art similar enough to have merit, but at that very same token similar enough to question the very validity of the 112 or 101 rejections being put forth. Seriously, isn’t the examiner’s own position on the advanced “questionable’ 112 and 101 rejections simply contradicted with the very supplemental granted patent references so close to make an argument for 102 and 103? If a patented reference serves close enough for 102 and 103, the examiner has provided the very proof that 112 and 101 rejections cannot be sustained.

    Is it because of the “lesser” threshold for the office to find indefiniteness pre-issue? lulz I doubt that.

    And doubt for good reason, as the threshold for the office is married to the concept of Broadest Reasonable Interpretation. This doctrine veritably forces a greater breadth of meaning (or at the least the broadest meaning) upon the applicant’s claims. Further, we all should remember the maxim that “Breadth does not equal Indefiniteness.” Breadth can include multiple meanings or shades of meaning and in itself does not mean that there is an indefiniteness problem. Thus, those who cry for “definitely one meaning” are misapplying the term “indefinite” and are not remembering the proper maxim. Even assuming for arguments sake that breadth may induce indefiniteness, if a claim survives the BRI examination – and assuming that the examiner has done his job (as we must), then by all means the various courts should have a high bar for later finding indefiniteness. Right or wrong – that is how the entire system is set up. Anyone can complain – but you better have a workable replacement system that covers both prosecution and litigation before you scrap the current system.

    As far as the various court’s stated position on the law – that is their job to interpret the word of the law and they have spoken. Language itself is just too malleable and too imperfect a tool to demand the strictest of interpretation. It should be noted that of any (ANY) legal document, patent applications already have the strictest requirements. Those wanting something stricter simply are not in touch with reality.

    Also, the case of Carnegie Steel Co. v Cambria Iron is indeed a good read as there the Supreme Court Justices clearly point out the rationale for interpreting the law as “loosey goosey” as they do. They make a compelling argument and one the current case as referenced by Ned must strive to overcome.

    Lastly, I am not yet ready to agree with 6 on his last point of whether Perkins Glue is on point here or not. Perhaps Ned can explain the link that he sees from that case in more detail.

  14. 60

    Please define “define” and “solution.” Or I suggest that you take an ESL class if you couldn’t understand.

    Obviously, these things are fact specifics. That’s a good reason not to be a fan of terms like “troll” and NPE. But, it’s my opinion, that there are definitely plaintiffs out there abusing the system and filing ridiculous lawsuits. I don’t think we’d have many problems if there was a “loser pays” system like England. Unfortunately, that’s not the American rule.

  15. 59

    IBP, according to the courts, 102(e) operates by determining whether the US patent was effectively filed in the US. If it was, it is prior art as of that date. Simple.

    The PTO is all over the map on this issue. For example, even when the US patent has an effective filing date in the US, the PTO looks to whether the patent issued on a PCT or on a 111(a) application. It looks to whether the PCT was filed on a certain date. It looks to whether the PCT was published in English. It looks to when the patent issue. Nothing in 102(e) supports this interpretation. It is wild and wholly, the 102(e) date changing by subsequent prosecution history without rhyme or reason. It has no consistent theory. The PTO’s interpretation, rather, is chaos.

    They cannot explain their rationale with any sense, as indeed, their position makes no sense. It is not based in law, and as a policy matter, it makes no sense whatsoever.

    I had a run in with the PTO several years ago on this issue. The issue was whether my own patent issuing on an international application was prior art as of its earlier US filing date of the application to which it claimed priority.

    They gave me an answer which they knew made no sense. As a result, they went out and tried to fix the statute. But still in the end, they did not fix their interpreation. It remains wrong.

  16. 58

    Sounds good, that’s basically what I figured would be the most effective. In the case being described to me it seems as if there are several limitations which are missing and they are still barrelling along with DOE. It is pretty outrageous, it makes me think that they’re basically just throwing the threat of litigation on them regardless of their chances of winning and regardless of the frivolity of their complaint.

    So you have nobody you’d recommend in such a situation?

    Any answer about the questions above regarding inter partes reexam?

  17. 57

    6 your hilarious (?) quote is telling us how sufficiency of description in the specification is to be judged. Does it matter whether or not that designated reader can make any sense of the claims?

  18. 56

    Hard to argue cases in the abstract, but if I were the defendant, I would argue that the claim limititation that was missing was the most critical limitation of all, and then apply the all element rule.

  19. 55

    Thanks for your thoughtful post.

    Still, the government’s brief sought to discuss the Supreme Court’s jurisprudence on the topic, but failed to discuss or to distinguish the main case relied upon by the petitioner, Perkins Glue, the case which is closest in facts to the case on appeal. I am sure the good clerks at the Supreme Court are going to notice this.

  20. 52

    Using perjoritives only reflects the subjective view of the user after the fact.

    That’s a truth a litle too close to home for Malcolm, King of the pejorative, Queen of the subjective, and unbridled Ruler of Animus.

  21. 50

    And please make sure these definitions pass legal muster (i.e., you are not merely wanking philosophic).

  22. 49

    Oh and Ned, I don’t think that the case you showed us is a very good vehicle. They have like 0% chance of winning so far as I can see and the cases where they win are usually the ones that provide the best vehicles in my limited experience.

  23. 47

    Now I have a question for you Ned, hypothetically speaking, if I were a small business with a much larger business breathing down my neck with a patent which the big company itself all but straight up admits that I do not literally infringe, what are some strategeries that you would use to shut down their DOE arguments persuasively? Also, if I were looking to hire the person you think most qualified to kick arse and take names in the lighting business in such a situation as mentioned whom would that be?

    Also, one last thing, if a company files for an inter parte reexam on its patent because someone found prior art likely to kill a few claims, can that company assert the patent while awaiting the initiation of the reexam by the office and during the reexam itself? Also, how much do you guesstimate it would cost a company to participate in an inter partes reexam on a different company’s patent where it is simple subject matter?

    i also note that this is hilarious:

    sTEEL ¢O. V. ¢AMBRIA iRON ¢O., 185 U.s. 403, 437
    (1902); SEE mINERALS sEPARATION, lTD. V. HYDE, 242 U.s.
    261, 271 (1916)”

    Very few people of ordinary skill can pick up a patent and read the claims and understand what they mean.

  24. 46

    I’ll tell you this much Ned, I love what the Fed said here:

    “If a claim is indefinite, the claim, by definition, cannot be construed. Without a discernable claim construction, an anticipation analysis cannot be performed. See Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1342 (Fed. Cir. 2003)”

    Which, if true (and I note that I believe it is true), I wonder then why the office insists on making examiners do an art rejection when they are saying that a claim is supposedly indefinite? Is it because of the “lesser” threshold for the office to find indefiniteness pre-issue? lulz I doubt that.

    In any event, after having read the petition for cert. and most of the Fed. decision, I have to say that Enzo’s position of indefiniteness of the claims is a tough sell. You would need a very high standard for definiteness for those claims to fail it seems from what they seem to be saying. I certainly can’t say if they are or are not valid, and I wouldn’t even in this case go so far as to say if they are or are not definite.

    I can say though that it does not seem to me that the Fed’s interpretation of the statute conflicts badly with the USSC’s writings on the matter. The USSC simply said that the claims perform a public notice function, it did not, to my knowledge state that the public notice had to be perfect which is essentially what Enzo seems to be asking for (and which I note I personally would also like for the public notice function to require). In short, Enzo is reading into the USSC’s writings what it knows/thinks should be there, but is in reality not there. Enzo also notices that we strive for perfection in the public notice function here at the office ala Miyazaki but that is not no basis to say that the fed’s position is inconsistent with the USSC’s rulings.

    To me the fed’s position does conflict with the statute itself though. The whole reading the presumption of validity into the definiteness requirement as a way of paying tribute to the administrative decision made by the office to issue the claim or as some sort of legislative hand out to inventors is flimsy at best. Just because some examiner made up some construction that made sense to him or didn’t understand the claim and issued the claim should in no way affect a determination of whether or not the claim is indeed definite. I realize that attorneys used to operating under the old standard feel like they have a pretty good grasp on definiteness because the current well accepted interpretation that we have has been around for so long but that interpretation was probably wrong from the get go. And just because we understand it well now is not a good reason to hold on to that erroneous interpretation. In other words, stare decisis is not good to apply here.

    Personally I think that a slightly modified version of the standard the PTO is applying would be best across all areas, in the PTO and the courts. The standard should be something like whether or not the claim is amenable to two or more interpretations which result in significantly different constructions of the claim. Like, basically the two or more interpretations standard except without a penalty if there is no big difference in the constructions. That is not that high of a standard to meet. All you have to do is not be loosey goosey with your language it isn’t rocket science. What is rocket science is figuring out how to be loosey goosey enough under the current regime so as to read on more than you ought to be able to without getting a 112 2nd. Also, it might be rocket science for some previous practicioners under the old way of doing things to get their minds right and do things properly.

    As to your question about the finding of the DC being clearly erroneous no I don’t think it was. But the ruling of indefiniteness that followed probably was erroneous.

    As to a claim covering all ways of achieving a result I don’t think that is really germane to this case. We were talking about linkages and inate qualities of linkages in this case, not “results”. So save that question for a case where it would matter. Also, just fyi, if the claim literally covers all ways of achieving a result then it covers all ways of achieving a result. Whether or not examples/embodiments are included is pretty much irrelevant generally speaking, but even when it is relevant you don’t simply limit the claim to the examples/embodiments.

  25. 45

    Please define, “abusive,” “facially valid,” “distort,” and “beyond recognition” and we’ll be at least half way to a “solution.”

  26. 44

    All, it should be apparent that the PTO position has been severely undermined by In re Giacomini. Its former position was based on the assumption that an international application was not legally pending in the US patent office so that there is a gap of co-pendency between the later issued patent and the earlier US application.

    But given the holding in In re Giacomini, all this logic flies out the window. The Feds there held that a patent was prior art as of its provisional filing date under this logic:

    1) the provisional is a patent application;
    2) the patent claims priority to it and, in dicta, its claims are fully supported in the provisional so as to provide an effective filing date as of the provisionals date; and
    3) the provisional thus provides prima facie evidence of prior invention of another in the US.

    Devoid in the opinion is any requirement for copendency. The Feds seem to have totally ignored Milburn’s “but for” rationale in according prior art status of a patent its filing date as counting as an effective publication as of its date of filing.

    The logic and holding of In re Giacomini now compels a finding that a patent issuing from or through an international application regardless of language is prior art as of its earlier effective US filing date where the international application claim priority to an earlier US application, provisional or not. There is no longer any rationale that the international application is not pending in the US until it enters its national stage and therefor could not have issued to deny that the earlier effective US filing date should have prior art effect.

    Therefor, regardless of the PTO position, we practitioners need to be aware of this and be prepared to assert such patents as prior art as of their earlier US filing dates where appropriate, such as in court or in reexaminations.

  27. 43

    This is fabulous news for those patent drafters who can do no more than picture claiming.

  28. 42

    You know, in a perverse way, claims, intended to demark the bounderies of protection with the zone of equivalents, have morphed into something entirely different. By using broad language, etc., claims are now used to nominally cover any and all ways of accomplishing the result achieved by the invention regardless of whether they variation is an equivalent of the disclosed means. And, as the present case shows, the Federal Circuit seems entirely willing to give claims that breadth.

    If ever the Supreme Court needed to do something to fix the patent system in a positive way, this case is it.

  29. 41

    The term troll is loosely bandied, its sweep is way too broad on the one hand, and tends to divert attention from real abuses by patent pilers that I have mentioned.

    There are legitimated licensing firms that are not like Lemelson whatsoever. They do not assert invalid patents, but rather assert the patents from failed startups, small inventors and, yes, patents purchased from large entitites.

    Even the likes of i4i, a genuine victim of monopoly power, is deemed a troll by the powers. That is unfortunate.

  30. 40

    Hardworking Using perjoritives only reflects the subjective view of the user after the fact. It should be clear that such views are unfounded in law and only reflect animus towards a larger philosophical view of the current reality.

    By demonizing such legitimate actions, the actual philosophy is being exposed – anti-patentism.

    This is a robust pile of horseshxt you’re shoveling.

  31. 39

    NEd And, lo and behold, the smear has been effective. The net result has been to weaken the patent system, IMHO.

    Tell us exactly how the patent system been “weakened” by giving patent trolls an appropriate name, Ned.

  32. 38

    I don’t have a problem with entities that assert patents that another actually infringes.

    I have a problem with entities that assert patents that no sane person could think were actually infringed, just to extort settlement out of the numerous defendants.

  33. 37

    Pretty much agree.

    The problem isn’t necessarily trolls/NPEs/licensing entities, but that some of these entities engage in abusive litigation tactics on patents that should never have been granted. Then, there are also the entities that take facially valid patents and distort them beyond recognition to cover every website out there (but the cost of litigation is too high to fight).

  34. 36

    Lionel, I am familiar to a degree with the Lemelson problem. I think there were two problems with his patents: ancient priority dates, and claims that were way too broad for the disclosure.

    We fixed one problem with legislation.

    The other problem is now at the Supreme Court in the Applera case involving indefinite claims, particularly claims using functional language at the point of novelty. As Judge Plager says, we do have a problem here. Even Judge Lourie recognizes that claims are now construed to cover embodiments not describe or enabled using broad functional language and generic terms.

    With minimal dislcosure, Lemelson was able to assert infringement against bar code readers, something he clearly did not invent, but was able to cover using indefinite claim language. Had anyone taken him to the Supreme Court, he would have been ripped to shreds. But I am cynical enough to believe that Rader would have found no fault in his claims.

  35. 35

    The problem is that too many have no actual inventions (e.g., Lemuelson) and hold up companies as it is cheaper to pay the license fees than to litigate.

  36. 34

    Well said.

    Yet you have guys like Lemley talk about “hold ups” and the like. The word troll, apparently coined by Detkin, now of IV, is designed to bias everyone against licensing firms. And, lo and behold, the smear has been effective. The net result has been to weaken the patent system, IMHO.

  37. 32

    Argue all you want, but let’s be open and clear here.

    Such selective “bug-splat” countouring of “Troll” around those entities that one does not want to include (for whatever reason) only goes to show that the term should be disregarded in its entirety.

    The fact of the matter is that making money off one’s property is a perfectly legal and legitimate exercise. This includes having nothing to do with actual “making or using” and only being involved in pure licensing. There is nothing anywhere in the laws and rules that mandates that having a patent means that one has to make (or use) whatever is covered by that patent. There is far too much focus here on the after effects of the exchange of information and the grant of the patent right. The real point to be asked and understood is whether or not the patent should have been granted at all. If the answer is yes – then grant the patent and let those who wish to own that established right try to maximize the value of that right – IN ANY LEGAL MANNER. Using perjoritives only reflects the subjective view of the user after the fact. It should be clear that such views are unfounded in law and only reflect animus towards a larger philosophical view of the current reality.

    By demonizing such legitimate actions, the actual philosophy is being exposed – anti-patentism.

  38. 31

    IBM aside,

    Many large industrial and tech companies own patents in their area of business tha they do not practice as only some of their R&D makes it into products.

    These patent portfolio are used defensively against competitors. It hardly makes them trolls.

    Your definition of troll is too large.

    I would ague that any company for whom licensing its portfolio is a significant part of its business model is likely a troll.

  39. 27

    But now, we have to deal with Judge Rader’s opinion in in Re giacomini, where he held that a provisional application, which does not have to be copending, can be the basis of section 102E prior art.

  40. 26

    I think the PTO’s position makes sense if one considers the international application not to be pending in the US PTO until it enters the national stage.

  41. 25

    Nothing anachronistic about them. It’s more economically efficient to have the ownership of patents recorded for the public than not (lower transaction costs etc.); the three month rule is to encourage prompt recording of transfers of ownership. Unlike some things at the USPTO, these rules actually make sense.

  42. 24

    Ned if you want me to look at this case or any other cases you’re rambling on about then you can at least provide links to specifically what you’re talking about so I don’t have to try to find them all.

  43. 23


    The PTO’s position is probably best represented by the handy flowchart that appears in the MPEP at 706.02(f)(1).

    In answer to your question, a US patent that was a national stage entry of a PCT application that wasn’t published in English and didn’t designate the US isn’t even prior art under 102(e) as of *its own* US filing date (the idea being that it doesn’t actually have a US filing date). Note that the face of a national stage patent/publication will say “PCT Filed” in item 22 instead of “Filed”.

    A continuation application of a PCT will have a US filing date because it’s an actual US application and not a national stage entry, but if the PCT wasn’t published in English and didn’t designate the US, then the 102(e) date won’t go back to the PCT or earlier ancestor applications.

    Of course, if the PCT was filed before 29 November 2000, all that goes out the window and the 371(c)(1)(2)(4) date comes into play.

  44. 22

    I presume he meant asymmetric warfare.

    And, yes, I think that that is a fairly good analogy for the problems faced by large companies when patent trolls assert patents against them.

  45. 21

    Let me ask you this 6, if a claim literally covers all ways of achieving a specified result and the specification has examples, is the claim limited to the examples and equivalents or does the claim cover any way of achieving the result?

    If the former, is why doesn’t the Federal Circuit simply say so?

    The way the Federal Circuit handles the issue is ambiguous at best, and raises all the problems associated with the claims in Perkins Glue.

  46. 20

    6, is the finding of the DC that

    “substantial interference has thus been left to the
    experimenter to determine the conditions under
    which detection and hybridization either succeeds
    or fails. Although the patent expresses a
    term of degree (“substantial interference”), expert
    testimony has shown the term to be an illusory
    yardstick which, if permitted to stand,
    would sweep all successful hybridization and detection
    into the ambit of the patents’ coverage,
    while excluding any unsuccessful procedures ….”

    Clearly erroneous then?

  47. 19

    “The brief argued that the Fed’s Circuit jurisprudence on 112, p.2, is in accord with Supreme Court jurisprudence.”

    Well since it is, then that is what they should have argued.

  48. 18

    ” troll is a pejoritive term meant to smear.”

    And thank go d for that feature of that term.

  49. 17

    Threadjack II:

    We need a post discussing the Government brief just filed in Applera v. EnzoBiochem.

    The brief argued that the Fed’s Circuit jurisprudence on 112, p.2, is in accord with Supreme Court jurisprudence. However, the brief did not cite or discuss Perkins Glue, a Supreme Court case most heavily relied upon by the petition and apparently directly on point.

    In my experience, when a brief ignores the most important point and supporting authority of the opposition, the brief essentially acknowledges that it has no answer.

    I have a lot more to say on this topic when posted.

  50. 16

    What is asynchronous warfare? Is that warfare between belligerents who are never on the field at the same time?

  51. 15

    Troll, NPE… tom-may-to, to-mah-to. I don’t see the use in finding the semantic dividing line. The proof is in the pudding and the pudding’s in my pants.

  52. 14

    They are Trolls because they are engaging in asynchronous warfare.

    Patent trolls are like Terrorists using a bomb to blow up a pipeline. The cost of the investment by Terrorist is insignificant compared to the cost of the damage to the Target.

    Not a f-ing Troll would sue a Target if they had significant factories and employees of their own at risk.

  53. 13

    You know, Malcolm, the problem is that troll is a pejoritive term meant to smear. If a firm asserts a patent that another actually infringes, what they are doing is entirely within the law, but under certain circumstances, they are labelled with the term troll.

    On the other hand, the well known “abuses” of patent pilers are never criticized. But I would suggest to you that their practices are borderline unfair under the laws of the United States. I certainly consider them unfair. The problem is that the FTC does not see fit to even investigate or to mention the problem in their various reports on problems in the patent system. I suggest that a major reason for this is that the FTC never asks the victims of piler abuse for their opinions, but only asks the pilers of their opinion about patent trolls.

  54. 12

    Anonymous: define troll.

    My definition, any entity asserting a patent it itself does not pratice.

    That’s an NPE. But it ain’t a patent troll.

    Patent trolls are entities who exist only to assert patents, unless you include hiring lawyers and experts to carry water for them.

  55. 11


    Ignore the following unless you are interested in patent law.

    The position of the USPTO is or appears to be that a US patent issuing from an international application published in a language other than English is not prior art as of its earliest effective US filing date, i.e., the date of filing of an earlier US patent application, including a provisional, to which it claims the benefit under the applicable statutes.

    I believe their position is flipped if the patent issues on a continuation from the international application.

    Are they right?

    The issue has NEVER been raised in court, AFAIK.

  56. 10

    Anonymous: define troll.

    My definition, any entity asserting a patent it itself does not pratice.

    What difference does it make where the patent came from, or why the patent is being asserted. If we start adding such considerations to the gloss, we quickly discover unpleasant facts, such as this:

    There are major patent holding companies in this and other lands who use piles of patents to intimidate others into paying big bucks to license the pile without any showing that the licensee is infringing any patent, just that they are practicing in the field and must infringe some patents. No one ever asks whether these firms themselves practice the patents, as that question is almost totally irrelevant.

    The small fry have to cave and pay or else they face actual litigation from the major company, who prosecute the litigation with maximum vigor and pressure, if you know what I mean. Only a major i d i o t would not pay.

    These major patent holding companies are lauded with high praise and are accorded deference in the halls of congrees; and their executives are given high administration jobs.

    But their practices are abusive beyond opprobrium, IMHO. So, if we are looking to reform anything, to put a stop to misuse of patents, let call a troll a troll.

  57. 9

    Or perhaps we can simply drop the demonizing and invectives and deal in simple facts without trying to color the perceptions of the audience?

    Can’t we all just get along?

  58. 7

    I don’t think it will be long now before the cries (accompanied by accusatory fingerpointing) of “Patent Troll” and “NPE” become as silent as those of “Cooties” and “Witch.”

  59. 6

    Something tells me that Apple’s legal staff isn’t particularly concerned about whether we label them an NPE or not. Who cares?

  60. 5

    … or it plans to practice them in the future.

    Plus, I believe “NPE” or “patent troll” is usually reserved for entities suing on patents that they don’t practice. I’m pretty sure that hasn’t happened yet.

    Moreover, if an entity uses patents–the subject matter of which it doesn’t practice–to prevent other entities from competing against it, then I don’t think that would qualify as a “patent troll” either. Although, I guess it might qualify as an NPE, all depending on how you define the terms.

  61. 4

    Shouldn’t we give them 12 months of lead time before labelling them a NPE? For the same reasons we let inventors file Provisional apps 12 months early and why 102(b) establishes a statutory bar at 12 months, why you can’t swear back more than 12 months to establish the date of invention? You know, ’cause nothing happens all at once, not even R&D.

  62. 3

    Hmmm, one or the other of two situations is true for each of these patents:

    Either Apple was an infringer before it bought them or it is an NPE now that it owns them and does not practice them.

  63. 2

    Dennis –
    That second batch of numbers look to be Pre-Grant Patent Application Publication numbers, not application serial numbers, which your label “Application Nos.” implies.

  64. 1

    Is there any justification whatsoever for these apparently archaic assignment rules? None that I can see. This isn’t real estate. But the person who wrote the statute or whatever it is, sounds like he or she flunked first year real property class in law school. I would guess Chuck Schumer, but he’s too young to be responsible for this travesty. He only starts banking panics, not legislation.

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