Billups-Rothenberg v. ARUP: The Dangers of FIling Too Early…Or Too Late

By Jason Rantanen

Billups-Rothenberg, Inc. v. Associated Regional and University Pathologists, Inc. (Fed. Cir. 2011) Download 10-1401
Panel: Gajarsa (author), Linn, and Moore

Billups is a classic example of the difficulties companies face when engaging in patent races.  Patent races occur when two or more entities are in competition to be the first to develop and patent a new technology.  In these sitautions, companies race to file patent applications, hoping to gain a competitive advantage.  Sometimes, however, the applications are filed before the inventors have really developed a patentable invention; othertimes, the applications are filed too late, after a competitor has filed its own application or published crucial information. In this case, Billups filed Patent No. 5,674,681 too early and Patent No. 6,355,425 too late, losing on both ends.

The patents-in-suit relate to a genetic test for Type I hereditary hemochromatosis that involves the detection of specific mutations in genes involved in regulating iron absorption.  The district court granted summary judgment of no written description for the '681 patent and anticipation of the '425 patent.

Lack of Written Description of Earlier Patent
On appeal, the CAFC first affirmed the district court's ruling that the '681 patent lacked written description, applying its customary approach to biotechnology inventions.  Here, Billups disclosed only the approximate location of the relevant mutation in the '681 patent, a disclosure that it argued was sufficient to place the inventor in possession of the invention (which in this case included the step of detecting the mutation) when combined with the knowledge that existed at the time of invention.  The CAFC disagreed.  "Given the lack of knowledge of sequences for the hemochromatosis gene and its mutations in the field, the limited extent and content of the prior art, and the immaturity and unpredictability of the science when the '681 patent was filed, Billups cannot satisfy the written description requirement merely through references to later-acquired knowledge."  Slip Op. at 11. 

The panel also, unnecessarily in my opinion, addressed the problem in genus-disclosure terms.  After quoting the relevant case law regarding disclosure of genus claims, the court concluded that the the patent failed because it "does not not identify even a single species that satisfies the claims.  In this case, the eventual discovery of only one species…within the claimed genus does not constitute adquate written description of that genus."  It is opaque to me what relevance a post-filing discovery of a species, let alone one by a third party, has to a species-genus analysis.

Anticipation of Later Patent
At the same time that Billups was conducting its  research, another group of scientists isolated and sequenced the hemochromatosis gene, published their results, and obtained Patent No. 6,025,130, filed nearly three years before the '425 patent.  The CAFC agreed with the district court that the '130 patent was anticipatory.

The inquiry focused on whether the '130 patent disclosed the diagnosis of an iron disorder using a specific mutation, the S65C mutation.  The '130 patent reports the genetic sequence of the S65C mutation, among with others that the inventors believed relevant to hemochromatosis, and describes techniques for conducting genetic assays that it states can be used to design a diagnostic device and method for screening the mutations.  Billups argued that this disclosure was not anticipatory because the '130 patent did not conclude that the S65C mutation was related to a hemochromatosis disease state, merely that there was a correlation and thus, Billups argued, the S65C mutation may have been only  a clinically insignificant polymorphism. 

Relying on the doctrine that a "reference is no less anticipatory if, after disclosing the invention, the reference then disparages it" (Slip Op. at 15), the CAFC rejected BIllups argument.  Here, "the '130 patent disclosed using the S65C mutation when diagnosing hemochromatosis, but qualifies that disclosure with the obseravation that the mutation "may only be a polymorphic variant."  Id., quoting '130 patent (emphasis in opinion).  Although the prior art questioned the utility of the application of the disclosed invention, it nevertheless disclosed it, thus rendering the '425 patent anticipated. 

79 thoughts on “Billups-Rothenberg v. ARUP: The Dangers of FIling Too Early…Or Too Late

  1. 78

    I would support immediate publication if you would support immediate enforceablity.

    What I envision is a hybrid system, combining the systems of 1789 and 1836 into one. Until the formal claims are granted in a ribbon copy, the printed patent application would remain enforceable, but only by showing that the infringer was using that which is described in the specification and equivalents. Since there is no examination, there are no claims that can be declared invalid. Rather, non infringement could be shown on the basis of prior use, i.e., that the accused infringer or others were practicing what is accused of infringement prior to the patent’s filing date.

  2. 77

    What justification? The same justification as applies to real property. No public purpose is served if real property is left unused for extended periods. Thus ownership can potentially accrue to someone who actually uses it. In fact, between the two, I think there is far more justification in alienating the patent monopoly in due time versus taking adverse possession from a real property owner.

  3. 76


    do not siwh ti engage in” should be replaced with:

    “do not wish to engage in”

    Haste indeed makes waaste – the errors of typing too quickly when I should be busy with other matters…

  4. 75

    I have two qualms regardin Adverse Possession that jump to mind. The first is that typically a lengthy time period is required, variable by state with up to fifteen years if I recall – this is on par with the actual patent grant and seems to weaken the aptness. The second is that it seems to place a new burden on the patent holder – what justification can be found for such a burden?

  5. 74

    I agree and apologize, mostly to Cy Nical. I admit that his previous posts have put my on warning as I do not siwh ti engage in the likes of certain posters – 6, IANAE and Ping, for example. I enjoy thoughtful discussion and choose not to join inthe pig wreestling contests, so my verge of ad hominem is a point I take to heart – again, my apologies.

  6. 73

    What I Wanna Know,

    Yes, I think we are drawing different lines in the sand. And yes, I believe that you did not actually really want to know anything, but rather wanted to have your line drawn without regard to the actual context and history of patent law. Yours is a philosphical difference, but one adrift from actual context.

    The difference, though is the critical point I have emphasized, and will repeat here:

    And I wish to remind everyone that even in the changed quid pro quo (with pre-patent publications), the exchange, the quid and the quo balancing, is still explicitly not an exchange of a public disclosure for the possibility of an eventual patent grant. I cannot stress this enough because this is still the context of where the fulcrum is placed.

    A critical mistake, in my opinion, is your presumption that the applicant “need to examine it now” and the presumption that the public deserves transperancy – you simply do not have the correct quid pro quo – a grievious error – you have created some new and very different quid pro quo, not one that is recognized in any current legal understanding.

  7. 72

    But never mind the inventor, WIW. How important is it, to the US economy in the future, that American inventors should be able to build effective patent portfolio rights in China? How much of the US economy in the future will come from making and selling hard goods, and how much from foreigners paying tribute (royalties) under American-owned IPR?

  8. 71

    New Light. Your answers can be helpful – especially the facts. But if we are throwing adjectives around, then indignant, righteous, condescending and presumptuous come time mind. Be careful about starting ad hominem attacks. They can easily come back to bite you. I don’t see anything offensive about a “so what” reply. You’re simply being asked to defend the position you’ve taken. Can you do that? Or is it easier to just start the name calling?

  9. 70

    One good perfunctory answer deserves another, I say.

    We also need to get some thicker skin around here.

  10. 68

    If a monopoly in China is important to the inventor, then the inventor should just file concurrently there, or anywhere else for that matter, when they file in the USA. The fact that this is costly or troublesome to the inventor is not the concern of the public in the USA. I’m not aware of a public policy that says, “Congress must help inventors avoid concurrent filing of foreign patent applications”.

  11. 67

    With respect to constructive enablement, Non-Practicing Entities, non-publication, etc., I think that patent law should simply apply the “adverse possession” rules used in real property law.

    That would put a quick end to a lot of the nonsense that goes on today.

  12. 66

    Given the Paris Convention 12 month period to get on file all patent applications world-wide stemming from the same US priority filing event, should not the Applicant have the comfort that the PTO will refrain from publishing till the Paris year is over? For, otherwise, won’t (say) the Chinese see the PTO publication and then file in their own country, to frustrate the ambitions of the American inventor for a patent in China, long before the end of the Paris year?

  13. 65

    I think you’re just saying where the line should be drawn in the sand.

    I contend the line should be drawn when you file for a patent. That’s the time you need to tell the public your intentions. In other words, if you don’t like the fact that you will be “teaching” the public as soon as you file your application, then too bad. Don’t go it. Keep your trade secret. Nobody is forcing you to ask for a monopoly through use of the patent system.

    On the other hand, if you want the monopoly protection that goes with a patent, then the public needs transparency into the merits of giving you that monopoly. They need to examine it now. Along with the inherently conflicted Examiner in the patent office, who’s supposed to help you get a claim as long as all the other requirements are met. The public doesn’t want to know three years later when there is nothing to protect their investment in the same domain. They want to know, and they should have the right to know, now — when you file the claim. If that’s not what the inventor want’s the don’t do it. But to say that the inventor somehow has a natural right to keep a secret, or that this policy encourages innovation, is simply unproven and specious.

  14. 64

    When I started in this profession, in 1973, the UK law was from 1949. It published only after the PTO had issued a Notice of Allowance. One could then oppose. Priority between rival filers was done by a “prior claiming” regime (a bit like FtF Interference proceedings).

    Then, in 1978, after I had qualified by rigorous examination as a UK Chartered Patent Agent, the new pan-European regime came in, and all the difficulties fell away. Likewise in Germany (and all the other States that signed up to the European Patent Convention). You see, no provision of national patent law made it into the EPC, that could not withstand criticism from the other governments drafting the EPC. I was impressed then, and I’m even more impressed now, how well drafted that 1973 EPC was. Its drafters knew about the rubbing points of US patent law too, of course.

    So, when Ned (above) advocates reliance upon EPC prior user rights and its Art 54(3) “whole contents” novelty approach to resolving priority between rival filers, he makes sense.

    For me, the new FItF is a “First to Publish” regime, that suits those academics that are interested only in the domestic US market, and nowhere else (insofar as they have any “commercial” interest at all). Start-ups and VC can prosper under the EPC. But the USA has a culture of risk that most of Europe does not “get”. I think it is this, not the US patent system, that gives the USA the edge, making money out of inventions, science, innovation and new technology.

  15. 63

    And I wish to remind everyone that even in the changed quid pro quo (with pre-patent publications), the exchange, the quid and the quo balancing, is still explicitly not an exchange of a public disclosure for the possibility of an eventual patent grant. I cannot stress this enough because this is still the context of where the fulcrum is placed.

    It is for this reason that vestigal protections exist for the applicant. It is important to keep this in mind and remember that the change to afford pre-patent publication was not (and rightly so) lightly taken. It seems apparent that no thought at all is being given to the applicant when a “publish immediately” sentiment is floated – as if the applicant has no position in the balancing that is to be done.

    Such is simply a gross error.

  16. 62

    Cy Nical,

    Apology accepted.

    I am not contending that the balancing of benefits and harms is not part of the public policy question. Clearly, I was establishing the baseline of that balancing. If one does not know where the fulcrum rests, how can balancing be attempted?

    There are far too many people with their own different agendas that would be willing to have a “balance” that does not keep in mind the actual parties involved, that does not keep in mind the proper context – with no disrspect intended, your own comments of “So what?” provides a great example of how not to understand the context of the balancing.

    The answer to “So what?” is that that information provides the fulcrum, provides the context. Are you seriously contending that context is immaterial here?

    Good thought provoking dialouge!

  17. 61

    Red October,

    An applicant still has the right to keep the entire proseecution private. This option is under the non-publication route, but an accord to internatioanl treaties makes this option only available to applicants who must state that they are not seeking international patent protection for their invention.

    Here then, is another reason for maintaining the information I provided above. Cy Nical, I do not know if you will consider this “assailing”, but this avenue makes your flippant “So what?” evidently improper, immature and counterproductive.

  18. 60

    ALN, I certainly didn’t intend to be belicose. And I apologize for mis-ordering your initials.

    However, you say “yes, there is a weighing of harm to the inventor and harm to the public …” You then say that “none of that has to do with the understanding that What I Wanna Know was looking for.” That confuses me. What I Wanna Know asked “What is the public policy rationale for not publishing patent applications as soon as they are filed?” Are you seriously contending that the balancing of benefits and harms is not part of the public policy question?

  19. 59

    What I Wanna Know,

    Thank you for the follow up. Your view highlights the misundertanding that I think you have of what the inventor is bringing to the table, and what the patent system (ours or any patent system) is for.

    Do you know what trade secrets are? Do you understand the historical context of why the patent system is even here? Do you realize that the system is precisely here to reward inventors for sharing what is otherwise kept in privacy, and thus stands in sharp contrast to your example of a civil suit, which by its own distinct nature is public (for the most part, I hope you realize that even in such public contexts, protective orders are avaialable to shield information that will not be made public).

    Once again, I think that you show by the choice of your example the opposite of what the patent system stands for.

    In your emphasis on the public side of any balancing, you remind me of the person on Gene Quinn’s blog who does not understand that half of the equation in the quid pro quo (both the older historical version and still in the current version) is the inventor. Cy Nical is correct that there is a weighing. We need to keep in mind that the weighing is to achieve equillibrium between two parties, and that both parties have very real stakes here. I do recognize that I am pro-patent, bu tthat does not mean that I do not recognize the public end of the balancing. None of my commetns provide any sort of carte blanche to inventors; rather, I point out that secondary and later inventors simply are out of luck in any type of patent system. That is simply the nature of any system that awards exclusive rights. If you want to rewrite the constitution to change that critical element, there are proper political paths (albeit very difficult ones) that can be taken.

    One point I attempted to make above was that Thinker ve Doer brought up a good and valid point – but that good and valid point was a non-sequitur to your point. Not keeping these things distinct runs the risk of conflating issues and confusing the separate points that need to be understood.

    THere are some very good points here for everyone to mull over. I will be mulling these over and I hope other swill do so too.

  20. 58

    How long can a determined applicant keep a patent application out of public view before it’s granted, assuming today’s typical 36 month prosecution timeframe.

  21. 57

    Cy Nical,

    Your repeated assertions that I am someone else, your belicose attitude and trying to wrestle my point into other matters mars your otherwise bringing up of good discussion points.

    I wish that you would separate the juvenile from the adult and I would be happy to engage you in a conversation. I do not understand your “ready to be assailed” comment, especially when it seems that you are the one who is always too eager to “assail” anyone with a pro-patent viewpoint.

    Cy Nical, you ignore that my historical setting is indeed important to the actual question presented above. You say “So what?” as if that question was not even asked. While unimportant to you, understanding where the system comes from still is important, if for no other reason than to understand the vestigal safeguards that Congress implemented when they implemented the change in the quid pro quo. As Ned can attest to, sometimes the best move is to restor the patent system to a point before changes were made (I reference the aberrant 1940’s Supreme Court anti-patent decisions). There are those who do not understand the history here and look at the safeguards for the inventor and wonder why we have them. This is evident from comments on recent threads – and thus the history still is important to answer those questions.

    Instead of playing the blame game – I was making the point that no matter what system you have in place, whenever you provide property rights – whenever you have a patent system, you run the risk of “alienating” secondary independent inventors. I apologize if you find this concept “assailing”, but it is a fact that cannot be ignored. Yes, there is a weighing of harm to the inventor and harm to the public regarding independent invention and capital expenditures on the independent invention. Yes, I tend to favor those who use the patent system over those that chose not to. Yes, there are already procedures in place in the system to sort out the close calls. But none of that has to do with the understanding that What I Wanna Know was looking for.

    PLease try to stay on point. Please understand that not everything posted is “an argument” and that some postings are “answers” that need to be understood in order for “arguments” to have the proper context. You do bring up good questions, but you mar those in your rush to judgment, in your rush to “So what?”

  22. 56

    We don’t know the outcome of a civil law suit when it filed. That doesn’t prevent if from being disclosed to the public. The suit could be nonsense, as is often the case as we see in the press everyday. The fact that the public sees it in a timely manner is the most important public policy served, not protecting the privacy of the litigants until they can agree on which causes of action apply, or what the jury instructions should be.

  23. 55

    Understanding the original quid pro quo is the central point to What I Wanna Know’s quest for information.

    I think we all understand the “original quid pro quo.” But so what? Congress changed the quid pro quo, under a permissive authority granted to it by the (C)onstitution. Some people like the change, while others don’t.

    Thinker points out that the non-publication approach increases the risk that substantial investments are wiped out. That’s obviously not a good thing. ANL brushes that aside by saying that “this can happen no matter what type of patent system you have.” However, this ignores the fact that the time to grant is often 4 or 5 years these days and is getting worse. Publication at 18 months obviously cuts short this “blind” period.

    NAL also correctly points out that you can’t force people to read publications anyway. That’s true, but if it has been published, we can then properly blame the latecomer if he subsequently throws away his capital investment.

    Simply noting that the quid pro quo has been changed from its “historical” roots is not an argument. The question is what harm this change effects, and whether that harm outweighs the benefits of early publication.

    I stand ready to be assailed.

  24. 54


    You raise a good point, but I think you overlook a factor in your slanted presentation. Not only that, but your issue exists no matter what type of patent system we have, and thus is not really aimed at what I posted above, now is it?

    You premise the Thinker as “without actual reduction-to-practice” and “Thinker never did manufacture a machine based on the patent” and you premise the Doer as “[doing] everything to produce and sell his machine without any “teaching” from Thinker.” You do realize that “constructive reduction” has never been required, that “enablement” is required and that you cannot force people to review any patents at all that have been granted, no matter if or when they are published. Your premises are thus all non-sequiturs to my points above.

    Ned is not correct that the issue you identify here is a “prior user” type of issue. Ned, I will point out that in this hypothetical, it is given that the second inventor is later in time, so “prior user” rights would not be an answer here. As I said above, this can happen no matter what type of patent system you have, and the premise is one that is often put forth by those who would wish to eliminate patents altogether.

    As MaxDrei suggests, I will mull this separate issue over, but in the meantime I would remind everyone that no patent system is perfect and when property rights are granted, those who independently create the same invention at a later date are simply out of luck – with any patent system.

    I would also like to draw people’s attention back to the actual gist of my message above – there was a radical change to the historical quid pro quo that should not be missed. Understanding the original quid pro quo is the central point to What I Wanna Know’s quest for information.

  25. 53

    Actually, ANL, the two main reasons for publication were related to 1) the need for investors in new plants and equipment to conduct clearance studies, and 2) the need to get secret prior art out there, on the table, at a reliable time so that it may be considered in prosecution of other patents. Historically, such prior art could issue after one’s own patent had issued and could render it invalid. But the patent itself needs to be rock solid in many cases to justify the enormous investments in plant an equiment or, in the case of drugs, goverment approvals.

    There are solutions to both these problems that are perhaps better solutions: 1) grant prior user rights; and 2) eliminate secret prior art, or at least its use for obviousness purposes, just as in Europe.

  26. 49

    The problem remains.

    Thinker applied for a patent without actual reduction-to-practice of a carbon sequestration machine. The application of course was invisible to Doer for many years. Because Doer had no idea that Thinker’s patent was lurking, Doer made significant investment in organization and capacity in his own carbon sequestration machine. Doer did everything to produce and sell his machine without any “teaching” from Thinker. When Thinker’s patent grant issued, Doer’s substantial investment was rendered useless by an injunction against Doer obtained by Thinker. Thinker never did manufacture a machine based on the patent.

    Doer didn’t feel any better after his lawyer gave him a book called “The History of Patents”.

  27. 48

    What I Wanna Know,

    You raise a very good question, but the answer is probably the opposite of what you might think.

    The short answer is that the monopoly/teaching quid pro quo is understood to be an exchange of a grant of “monopoly,” otherwise known as a patent, for the teaching and public disclosure of the patent application. Traditionally, publication only happened at patent grant. And every patent grant is published with absolutely no exceptions. In this traditional setting, a patentee could protect his newborn invention until he actually achieved the exchange that you note.

    Youshould note that this even exchange is not what currently happens.

    You ask a seemingly loaded question about a “filer’s right to escape public disclosure as even considered constitutional”, but you should realize that what you should be asking is why a public disclosure prior to patent grant should be considered constitutional in light of the exchange of a grant of “monopoly,” otherwise known as a patent, for the teaching and public disclosure of the patent application. Note that the exchange is explicitly not an exchange of a public disclosure for the possibility of an eventual patent grant.

    When an application is published, there is no exchange of a exchange of a grant of “monopoly,” otherwise known as a patent, for that teaching and public disclosure of the patent application. None. In fact, there may never be, as the life of the application often now (in this day of typical three plus years of pendency) has not even begun its tortuious route through examination, and patent applications
    fail to mature into actual patents for quite a number of reasons, including those that have nothing at all to do with patentability.

    The switch to publishing applications was driven by a number of both stated and unstated policy reasons. The policy reason most publicly stated (I believe, but I may be wrong), was that “Submarine patents” needed to be curbed and that publication would put the public on notice of what might possibly mature into a patent at an appropriate time.

    This policy can be seen to be needless for two very different reaons. The first is that the start of the clock ticking on the length of patent term was also changed from issue to earliest priority date. This action alone forcifully depth charged submarine patents out of existence. The second reason is the risk of treble damages to companies that infringe and that can be shown to have had knowledge of the patent. This penalty, while seemingly there to protect the patentee and the historical quid pro quo that you mention (the exchange of “monopoly,” otherwise known as a patent, for the teaching and public disclosure of the patent application, while that patent application was in its relative unprotected state of being a “pre-patent”, has actually had the opposite effect of dissuading the widespread knowledge of patents and patent applications. It might be helpful to note here that you cannot bring suit to protect your newborn invention until you actually have a patent. Having a patent application is simply not enough.

    So in a very real sense, any publication at all exposes the patentee with only the most threadbare of assurances of protection for the newborn invention. Your question actually highlights a real misunderstanding of the historical quid pro quo, and is a really good question. Hopefully, you now understand why the constitutionality question actually lies on the other side of your implied answer. Whether a “consitutional question” actually arises is of course debatable, but there was a very clear abrogation of the traditional quid pro quo.

  28. 47

    What is the public policy rationale for not publishing patent applications as soon as they are filed?

    Why is the filer’s right to escape public disclosure even considered constitutional?

    Isn’t an 18 month period directly opposed to the monopoly / teaching quid quo pro?

    That’s what I would really like to know.

  29. 46

    For instance Cy, if you are using the latest version of IE, you can use the functionality which gary is claiming. Take the divider between two toolbars on your IE interface and make some icons disappear. That is what he is claiming. The prior art, so far as I can see, does not show that. In the prior art, you could only make the toolbar longer or shorter but there was no indication that such movement got rid of any icons. And in the other prior art they “minimized” all icons of the group basically getting rid of the group entirely, not “altering” it.

  30. 45

    I should hasten to add that the confusing use of the nested wherein’s probably got Odom in trouble. If you don’t already understand what he is claiming then reading the claim will not help you understand the claim.

    See, for instance, in Fig. 9 which they use to invalidate his claims, you see an adjustable divider, but when you adjust that divider you don’t necessarily hide any icons within the left or right toolgroup on either side of the divider and indeed there is no indication, that I can see, of the reference disclosing changing which icons are in the group itself or even which icons are displayed. And according to the claim you have to have “altered the condition of the toolgroup”. That is, you need to have changed the number of icons or the display of the icons in the “group”. There is no indication that Fig. 9 shows this. So, they jump to the secondary reference which shows collapsing a toolbar that shows a group of tools in its entirety, basically minimizing it.

    Bottom line, you have a missing element, the altering of the toolgroup, aka showing different icons in the group or at least displaying a different number of icons in the group. This is what he should have argued and he should have been clear about it.

    Then maybe we’d have seen MS get off its lazy ar se and 101 this nonsense.

  31. 44

    Well id k, I didn’t see the references, but the way they’ve explained it, and the way ha wk specifically told us what was in the references matches up pretty close. The “coll apsing” or “expa nding” is not moving the little divider. He is concerned about the little divider. And the way he has chosen to distinguish this is by using his st upid little “tool groups” terminology which nobody understands to mean the same thing which he does. He means for his “tool group” to be the group you currently see, visible, after you’ve been messing or haven’t been messing with the divider. The “sections” or “toolbar sections” are the total icons in the toolbar, not just the ones visible after you have or haven’t been messing with a divider. Iirc.

    Bottom line, I don’t see all elements present but the reason is because I understand what he is talking about after having discussed it with him for years whereas his making these wild arguments in court aren’t going to go over very well since nobody can understand wt f he’s talking about.

    Also I don’t think his drafting was bad, indeed, for pro se it is pretty outstanding, it was his lawlyering that was bad.

  32. 43

    An application invalidated on SJ is not a great application. Maybe it was a great invention, but a terrible application.


  33. 42

    So much for Hawk’s claims that he drafts great applications.

    It might have been a great application. It apparently was not a great invention, however.

  34. 41

    That’s not how the court saw the reference. They said that “it teaches that the standard toolbar (120) can be collapsed or expanded to allow the user to view as many or as few buttons as the user desires.” And your concern is apparently not what Odom argued either. He apparently was trying to disinguish between his “tool groups” and the toolbar “sections” in the reference, both of which could apparently be controlled by the user to display as few or as many tool icons as the user wished.

    The court quoted (apparently approvingly) the district court’s announcement that this was the most obvious case of obviousness it had ever seen…

  35. 40

    So much for Hawk’s claims that he drafts great applications.

  36. 39

    i lulzed most heartily. KSR’d. Although, he probably should thank his lucky stars that he was suing MS and not someone that would have beat his brains in with 101 and possibly 112.

    As to the merits however I do find it a bit disconcerting that they stated that his advance was “an insignificant advance over [the reference]” or whatever. Is that the new obviousness standard? Because if so, then cool, but if not, then let’s not have that in the decision.

    Also as to the merits it does appear that there is some merit to what PH is always saying, he attempted to claim, and apparently did claim, the act of moving those little dividers back and forth to hide icons (which seems blatantly 101 ineligible to me, and of course is a question for a court to sort out, but I digress). The reference appears to be saying that you can “collapse” the toolbar itself into a smaller form, that is, you can “minimize” it.

    I don’t know, it is one of those cases where most people are just glad to see the claim die for whatever reason, but I don’t think 103 was properly applied and I am sorry for PH on that front. Or, at least if it was applied it wasn’t applied the same way it is applied for big corp when they come asking the court to review obviousness. But then, maybe I’m wrong, this is the new KSR era and I haven’t focused my reading on the most recent 103’s.

  37. 37

    The “effect” i’m going for is discovering HIV was clearly not obvious because it took a lot of groups of smart people a long time.

  38. 35

    It’s not a fallacy, it’s a standard.

    Your denial of reality needs no further words.

  39. 34

    6, have you seen the Patent Hawk decision yet? Came down today. Not too good for Mr. Odom.

  40. 33

    I take it ping, you actually do not read Supreme Court cases, at least none of vintage. Otherwise, we could have a discussion about Pennock v. Dialogue. Now that would be a very good discussion. But, since you steadfastly refuse to read the case, what is the point of trying to engage you in any conversation?

  41. 32

    Well you don’t have to wonder Lester, I’ve already told why I’m in favor of that sort of scheme. Simplicity of the application of the lawl in terms of what is prior art and what is not. I’m a big fan of uncomplicated lawls. Huge even. Also I should note that I am in favor of generous grace periods to file and not be hit with your own work as prior art. However, I am not a huge fan of grace periods in terms of you waiting to file and someone else creating art that invalidates your claims.

    On the other hand I’m also a fan of the present system except for the nonsensical system we have setup for interferences. But we have made it too complicated so I’m all in favor of tearing it down and starting afresh with a simpler scheme.

    Of course I’m also of a mind to eliminate “constructive reduction to practice”. If you’re such an awesomesauce inventard and you’ve just inventored up something amazing then I don’t feel like it is too much to ask for you to build it or perform it before you can get a patent.

    I’m not even sure where the concept came from, but I might look into the history of it sometime.

  42. 31

    if finding the existing thing is not obvious,

    Who ever said it wasn’t obvious?

    If having the idea that an ordinary uninventive technical person would have is the textbook definition of obviousness, then finding the existing thing is the etymological definition of obviousness.

    If the effect you’re going for is “discovering HIV was clearly non-obvious because HIV is really, really important”, you might find a better audience in a certain Mr. Rader than you’ll find in me.

  43. 30

    Which is more obvious discovering something that already exists or solving a problem for which no solution exists?

    Clearly if finding the existing thing is not obvious, even if separate discoverers find it simultaneously, then finding the previously nonexistent solution is not obvious, even if separate discoverers find it simultaneously.


  44. 29

    This falls to the fallacy of Flash of Genius.

    It’s not a fallacy, it’s a standard. Also, it wasn’t what I was talking about. I was using the word to describe the inventors, as opposed to the invention.

    I am sure you know that this discredited fallacy was expressly written out of the law in 1952.

    But inventiveness is still required by law, is it not? If the solution immediately pops into the head of an ordinary person skilled in the art (or two) when confronted with the problem, that’s virtually the textbook definition of obviousness.

  45. 28

    Why not have a look at the HIV example. Was that obvious?

    I don’t know. But it certainly wasn’t invention. I hope you can appreciate the difference between trying to solve a problem for which no solution exists, and looking for something that already does exist.

    But that’s kind of also the difference between invention and obvious modification of the art. Sometimes the solution really is sitting right under one’s metaphorical nose, if one has enough skill in the art. When that happens, it’s much more likely that several people will come up with the same answer at the same time.

  46. 27

    both inventors were coincidentally the exact same kind of creative genius, or you didn’t have to be very inventive to think of it after all

    This falls to the fallacy of Flash of Genius.

    I am sure you know that this discredited fallacy was expressly written out of the law in 1952.

    Yet still some people are running that race.

  47. 26

    The Soviets gave up after Apollo 8. I’m not sure what baring that has on the point that it is possible that multiple parties might work on a non-obvious solution to a problem at the same time and arrive at a solution at close to the same time. That does not mean that the solution was OBVIOUS to anyone involved. Obvious means you have the solution almost immediately..without effort.

    Why not have a look at the HIV example. Was that obvious? The timing of the solutions was so close they were charging each other with stealing…

  48. 25

    Yes, I know who was in the space race. I’m trying to explain to you the difference between two people running a race, and two people reaching the finish line at the same time.

    I also note, purely for historical reference, that even the winners of that particular race didn’t stop running for a few years after the losers stopped running. The race ultimately wasn’t really that close, with the second “finisher” tripping over lots of hurdles near the end. They stopped running because they couldn’t do it. And in fact, both countries had very different solutions, insofar as one can have different ways to move a small container a quarter million miles.

    There’s a big difference between a problem being obvious and a solution being obvious. Actual simultaneous invention is rare, and when it happens it really does suggest that either both inventors were coincidentally the exact same kind of creative genius, or you didn’t have to be very inventive to think of it after all.

  49. 24

    IANAE –
    Surely you know who was in the space race. That they stopped running when the winner was determined doesn’t mean there wasn’t a race.

  50. 23

    Wrong again.

    I thought 6 made a decent point. I won’t hold it against him that his posts are often ridiculous (and too long for me to read because I’m lazy).

  51. 22

    Les: That multiple parties see a problem to be solved at the same time, does not mean that the ultimate solution is obvious.

    Competition to solve a known problem isn’t simultaneous invention. Simultaneous invention is two people reaching the solution at around the same time.

    That race to get to the moon, for example – remind me again which country was the second to put a man on the moon, and how close they were to the US, timing-wise.

  52. 21

    Les – I agree that what I said was an overstatement / exaggeration. I do tend to spout out nonsense from time to time on these boards. However, sometimes “simultaneous invention” is an indicia of obviousness (although not always). Please see link to

    ping – Nope, I’m not an examiner. I have no interest in living in DC (or Detroit if that ever happens). Plus I’d prefer not to take a giant pay cut (to live somewhere with a higher cost of living). It puzzles me when people say examiners are overpaid.

  53. 20

    That’s nonsense Tony –

    There was a close race to get to the moon. I’m pretty sure there are plenty of guys that will tell you that the how of it was not obvious. There was a race to find HIV. No one on the US or French teams will tell you it was obvious. I’m pretty sure the Wright Bros. had some competition too. That multiple parties see a problem to be solved at the same time, does not mean that the ultimate solution is obvious.

  54. 19

    I want to pick up on Maxies words:

    (I don’t know)

    most on point observation by the Maxster

  55. 18

    And it will lead to “poor patent quality” or poor quality applications that the PTO, 6, Dudas and his ilk bemoan all the time….I wonder why they are in favor of “first-to-file”…I wonder…

  56. 17

    I want to pick up on David Boundy’s words:

    “The window for filing a “not too early, not too late” application is narrow enough today. H.R. 1249 makes the window much narrower.”

    and assert that, in RoW FtF, the “window” is much wider than it is in US law, with or without HR1249.

    True, in RoW FtF you get wiped out if you jump the gun, and file before your supporting disclosure is enabling for what you claim. But how easy it is to satisfy the RoW standard for enablement might surprise some readers. Question is, what happens if you B are not the inventor A who was first to the PTO with an enabling disclosure. You take a little longer to perfect your idea and flesh out your disclosure before you file at the PTO. Maybe discuss it in confidence, get backers, explore markets, and so on. What then?

    In the USA, if I understand it right, the entire content of A’s Monday filing, when published later by the PTO, is available under 35USC103 to attack every claim of B’s filing the next day, Tuesday, when (years later) B’s app gets examined on the merits.

    Not so in Row FtF, where A’s later-published epic is applicable only for novelty attacks. Thus, for every scrap of info B brings to the table, that is novel over A’s disclosure to the PTO one day earlier, patent rights beckon. Prosecutor readers, when were you ever stopped from getting a patent by a novelty attack based on an earlier filing by some other inventor who was working in complete ignorance of what your client was doing.

    35USC103 might be OK in a FtI environment (I don’t know). I see it as totally disproportionate and destructive, when grafted into a FtF environment.

  57. 16


    Yup, I reckon Tony is an examiiner – who else is deranged enough to agree with 6?

  58. 15


    Cepts it aint a monopoly granted, thereby authorized, under the (C)onstitution. The actual monopoly period that is granted, thereby authorized, under the (C)onstituion would be identical.

    There be a phrase here that fits: “It be new to me.” The rationale under the Quid Pro Quo (ya know, the one ya helped rape) would just as well be met, since teh deal is for exchanging the limited term for the sharing – and rightly, if it was trade secret prior, it done wasnt shared. Look, ya want the sharing ta happen or not?

  59. 14

    I’m pretty sure there is case law

    I’m pretty sure that Tony is an examiner.

  60. 13

    David, I saw your summary of the new statute and your contention that allowing a long time trade secret user to file and obtain a patent is unconstitutional.

    I assume you were refering to Pennock v. Dialog which seemed to use exactly that rationale in condemning trade secret use in that case. The trade secret use was there considered a period of monopoly use. Allowing it to be extended by a patent could unlawfully extend the monopoly period beyond the limited times authorized by the constitution.

  61. 12

    Agreed – you get an exclusive right in return for disclosing your invention to the public. Sitting on your butt and waiting to file doesn’t help the public. If A invents and B invents 5 days later but files first, why is A more entitled to a patent? It doesn’t help society that he came up with the idea 5 days earlier. Had he never been born, the invention still would have been invented.

    If A is a poor lone inventor (too poor to even file a provisional application), then under the patent reform drafts he or she can technically just publish (such as for free on the internet) and then take advantage of the 102(b)(1)(B) and 102(b)(2)(B) exceptions. (I think I have those right.) Although maybe better than nothing, I’d definitely counsel to file and not risk that exception.

  62. 11

    Jason and Les:

    If there really are these patent races with multiple entities “inventing” the same thing, it sounds like the “inventions” are obvious. In fact, I’m pretty sure there is case law stating that evidence of simultaneous “invention” can be used as evidence of obviousness.

  63. 9

    Dave I have a question as I’m not in industry myself.

    My question is this, if you are an inventor working in your laboratory and you invent something, reduce it to practice and all that, is it really all that much to ask of you to have you go and file an application? That is, taking into account that you want a legal exclusive right to your invention, and also considering that there are others out there working on the exact same thing which you are attempting to beat them to the patent office on, is it too much to ask? And if so, why is that too much to ask?

  64. 8

    Les has his finger on the problem. The window for filing a “not too early, not too late” application is narrow enough today. H.R. 1249 makes the window much narrower.

  65. 7

    Billups is a classic example of the difficulties companies face when engaging in patent races.”

    …and a classic illustration of the nightmare that will befall us if the first-to-file provisions of the “patent reform act” is allowed to pass.

    Ah yes, a genetic test for Type I hereditary hemochromatosis falls into the public domain because someone filed a patent before they had enough data to support their claims.


  66. 6

    “Billups is a classic example of the difficulties companies face when engaging in patent races.”

    …and a classic illustration of the nightmare that will befall us if the first-to-file provisions of the “patent reform act” is allowed to pass.

    Please write your congressmen and ask them to oppose HR 1249 and its first-to-file provisions!

  67. 5

    I think the court is saying that at least one species must be disclosed and must meet the written description requirement to claim a genus.

  68. 4

    I have not reviewed the case law for this specific issue. Under the case law as it existed prior to this case, if a post-filing discovery could have been used to argue that a genus-only disclosure met the written description requirement, then the court may have wanted to “plug the hole.” Based on your comments I’m guessing that the “hole” was non-existent, and so there was no need to plug it.

  69. 3

    since the species wasn’t actually disclosed in the patent.

    Are all species actually required to be disclosed in a patent that has claims to a genus?

  70. 2

    I changed the phrasing slightly. Still, although I could perhaps see some relevance of the post-filing discovery to the written description inquiry general (perhaps indicating the knowledge of a PHOSITA at the time of filing), it seems unnecessary to even get to the question of whether disclosure of a species was adequate to support a claim to a genus since the species wasn’t actually disclosed in the patent.

  71. 1

    Dennis said: “It is opaque to me what relevance a post-filing discovery of a species has to a species-genus analysis, let alone one by a third party.”

    May be the court was pointing out that a post-filing discovery of a species is not evidence that the genus disclosure meets the written description requirement.

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