Should anyone really be allowed to request Reexamination?
- Since 1981, there has been over 11,000 ex parte reexam request submitted to the PTO. As you would guess the majority (66%) being filed by a 3rd party and 33% being filed by the actual patent owner. In 1982 there were only 187 reexam request compared to 780 in 2010, this is over a 300% increase in request. Also, reexam certificate results show that the actual claim changed 66% of the time. Out of the total request for reexam, only 8% of the requests were denied. This leads me back to my question; should the PTO allow anyone from the general public to request a reexam? I would argue no, essentially because a single individual or company could in theory request a reexam for any and every patent. [USPTO Ex Parte Reexam Statistics]
Will Apple Sue?
- On June 21st Apple was granted patent # 7,966,578 for a “Portable multifunction device, method, and graphical user interface for translating displayed content” essentially a touchscreen device such as the IPad or IPhone. Apple could potentially use patent “578” to force their competitors to either, stop manufacturing infringing products or pay licensing fees. This patent is extremely broad and could cover a lot of items currently on the market such as smartphones, e-readers, and tablets to name several. One of Apple’s competitors will surely request a reexam on this patent and patent “578” is more than likely to end up in litigation. [Link]
USPTO Appoints New Deputy Commissioner for Trademark Operations
- Mary Boney Denison has been appointed the new Deputy Commissioner for Trademark Operations. Denison will oversee the examination and processing of applications in the trademark division of the USPTO. [Link]
Patent Jobs:
- Baker & Daniels is looking for an IP associate with up to 5 years of experience prosecuting patents, to work at their Fort Wayne, Indiana office. [Link]
- Amgen is looking for an individual with 4 or more years of experience in patent or IP law to join their company as Senior Counsel. [Link]
- Monsanto is seeking a patent scientist with a MS degree or higher and 2+ year’s research experience. [Link]
- The Marbury Law Group is seeking an IP associate with 2-8 years patent experience and a telecommunications background, to work at their Reston, Virginia office. [Link]
Upcoming Events:
- The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]
- The American Conference Institute (ACI) will hold a Hatch-Waxman Boot Camp July 18-19 in San Diego. ACI’s Hatch-Waxman Boot Camp has been designed to give counsel and advisors to brand name and generic drug critical insights into commercialization and the pre-approval process, and also provide an in-depth review of Hatch-Waxman and other IP basics relative to small molecules and biologics. [Link]
- World Research Group is holding the 8th Annual Patents for Financial Services Summit on July 27-28th in New York. Guest speakers include David Cunningham, Larry Bromberg, Matthew Krigbaum, and Moshe Malina. (Patently-O readers can use Promo Code ENN794 for a $200 discount) [Link]
Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.
“… a single individual or company could in theory request a reexam for any and every patent“: which is precisely one reason why the presumption of validity is so important, so as to reduce the risk (or at least the effectiveness) of that kind of harassing behavior. Luckily, i4i laid that particular worry to rest. Thank you, SCOTUS.
. A method, comprising:
at a portable multifunction device with one or more processors, memory, and a touch screen display;
displaying a portion of web page content in a stationary application window on the touch screen display,
All of this old. Touch sensitive screens where you can move things around with finger movements are old.
wherein the portion of web page content includes:
a frame displaying a portion of frame content, and
other content of the web page, comprising content of the web page other than the frame content;
Absolutely irrelevant what’s on the screen. Doesn’t matter if it’s a picture of a cube or a web page or any other virtual object that can be virtually manipulated. It’s old and it’s all the same. To the extent that the virtual object isn’t the same as other virtual objects because of a problem that would have presented a hurdle the skilled artisan, then the solution to that problem must be recited in the claim.
detecting a translation gesture by a single finger on or near the touch screen display;
in response to detecting the translation gesture by the single finger,
Again, old.
translating the web page content to display a new portion of web page content in the stationary application window on the touch screen display,
wherein translating the web page content includes simultaneously translating the displayed portion of the frame content and the other content of the web page;
detecting a translation gesture by two fingers on or near the touch screen display; and
in response to detecting the translation gesture by the two fingers, translating the frame content to display a new portion of frame content in the stationary application window on the touch screen display, without translating the other content of the web page.
This is nothing more than the expression of a desired result of an old method (touching a computer screen). Is the PTO’s position that as long as I put in some new results after the “translating” clauses that I can get a patent?
This is just a quintessential example of the laziness of the USPTO and it’s willingness to grant patents in the computer-related arts to just about any pxxce of cxxp that comes across the Examiner’s desk. When will these art units grow up?
It is truly amazing how poorly they examine in some AU’s. Where’s the 101 cannon?
A method comprising: at a device…
A GPU comprising: …. wherein method steps…
w t f.
Of course it’s very easy to draft around prior art if you can dodge and duck into other stat classes at will.
Couldn’t claim 1 be anticipated just by a portable laptop computer with a touchpad mouse since the touchpad mouse is near the screen?
Let him (or her) who claims that the PTO should not have unleashed this abomination upon the world, kindly supply the prior art to support their allegation, or else even more kindly shut the eff up.
1. A method, comprising:
at a portable multifunction device with one or more processors, memory, and a touch screen display;
displaying a portion of web page content in a stationary application window on the touch screen display, wherein the portion of web page content includes:
a frame displaying a portion of frame content, and
other content of the web page, comprising content of the web page other than the frame content;
detecting a translation gesture by a single finger on or near the touch screen display;
in response to detecting the translation gesture by the single finger, translating the web page content to display a new portion of web page content in the stationary application window on the touch screen display,
wherein translating the web page content includes simultaneously translating the displayed portion of the frame content and the other content of the web page;
detecting a translation gesture by two fingers on or near the touch screen display; and
in response to detecting the translation gesture by the two fingers, translating the frame content to display a new portion of frame content in the stationary application window on the touch screen display, without translating the other content of the web page.
8. A graphical user interface on a portable multifunction device with one or more processors, memory, and a touch screen display, comprising:
a portion of page content in a stationary application window on the touch screen display, which includes:
a frame displaying a portion of frame content, and other content of the page;
wherein: in response to detecting an N-finger translation gesture on or near the touch screen display, the page content is translated to display a new portion of page content in the stationary application window on the touch screen display,
wherein translating the page content includes simultaneously translating the displayed portion of the frame content and the other content of the page; and
in response to detecting an M-finger translation gesture on or near the touch screen display, where M is a different number than N, the frame content is translated to display a new portion of frame content in the stationary application window on the touch screen display, without translating the other content of the page.
You’re just mad because you didn’t think of that sweet new finger motion. Sour grapes, sir.
Watch that tone, the dude.
The shoddy English is less annoying than the shoddy reasoning.
“Since 1981 there has been over 11,000 ex parte reexam request submitted to the PTO. As you would guess the majority (66%) being filed by a 3rd party and 33% being filed by the actual patent owner.”
Mr. Higgins: please learn to write in English. There is no excuse for “There…has been…” or the non-sentence that immediately follows.
Bite You
Funny how that sounds just like Hardworking when he is calling out the other blog comment police…
Same results as well.
Funny how “Hardworking at Keeping Conversation Civil” is never around when you need him/her.
Not buying it – neither the post here nor the post below from humble public servant.
“Broad” in patent terms does not need the emphatic “extremely,” now does it?
And that’s not even getting to the point of discussing the effect of “comprising” has on the metes and bounds of the patented invention (regardless of the “breadth” involved).
Gladly, we suffer the fools in our midst.
Thank You
‘Broad’ in patent terms generally refers to the scope of the claims of a patent, the part of the patent application that describes the legal bounds of the invention.
So, while Mr. Higgins statement is true, I think it is a commonsense.
Good to have you back, Mr. Higgins.
Paul, BRI means broad. With terms not defined in the spec., it means as broad as that term can mean and not limited to the usage in the spec unless that usage is tantamount to a definition.
What does this give one? It gives claim constructions in the PTO in many, if not most, cases far, far different than the construction they would be given in court. Just for example, there is no requirement in the PTO for claims to actually read on any embodiment. See, In re Morris.
With such broad constructions, the claims examined in the PTO are not only broader than the claims as normally construed, they are construed so broadly as to be directed to entirely difference inventions. The articles point this out, and argue that this construction, in principle, violates the statutory framework regarding examination of patents.
With such broad constructions, art that may not be pertinent at all in court becomes highly pertinent. Art that might be the most relevant in court might not be considered relevant at all in the PTO. It is a crapshoot at best.
As I said, this whole practice is a major waste of time by all concerned. The claimed invention is not being reexamined at all, but something entirely different.
Now it is true that the Patent Owner might clarify the claims to overcome a broad construction that reads on substantially irrelevant prior art, but not necessarily all the time. But even so, you must recognize the substantial harm such clarifying amendments might have in terms of lost damages and intervening rights to a patent owner. Broad constructions essentially deprive Patent Owners of their rights.
Now, if you want to compare the relative skills of the examiners and the various district court judges, I’ll side with the judges in every case. They are not only intelligent beyond the intelligence of most examiners, but they are well informed by briefs, arguments and expert witnesses in court. They normally get it right even if the Federal Circuit judges may not agree.
“This leads me back to my question; should the PTO allow anyone from the general public to request a reexam? I would argue no, essentially because a single individual or company could in theory request a reexam for any and every patent”
So what does a small business do when a “bad patent” prevents them from implementing their business?
“The patent is broad in the sense that it uses “comprising”.”
SERIOUSLY???
Leave the profession. Now.
The patent is broad in the sense that it uses “comprising”, instead of other trasnsitions. The patent was filed right before the 1st IPhone came out, after the IPhone came the IPad. The patent has a far reach in terms of what it can cover in the future.
The patent is broad because of the definitions it uses in the spec. (i.e. portable device). The Comprising
I never stated the patent covers products currently in the market, I stated the patent could cover products currently in the market. Of course if this patent covers the IPhone, it is likely that it covers the IPad. As we all know these are not the only devices like this currently in the market, I have an IPhone so I personally can’t tell you about how any other phone operates.
The 1st claim states that a person can basically go on a webpage and scroll around with 1 finger, and be able to switch to a different frame on the same page and use 2 fingers to navigate in that frame. While this claim can be determined to be somewhat narrow, the definitions used and the other claims make the patent broad.
Also I do not think anyone should be able to request reexam. While it is unlikely that everyday citizens, will all of a sudden decide to request a reexam, it is the law and they have that right if they decide to act on it. While the numbers are not high now,that does not mean they will not spike at some future time. Most patent laws are the same, anyone can complain if they choose to do so. (i.e. false marking)
Ned, how could the PTO possibly NOT read claims with its normal BRI [broadest reasonable interpretation], since the whole point of a reexamination is to see if the PTO would have allowed the claims to begin with in a normal examination over the prior art that was not considered?
Also, are you really arguing that lay juries can compare claim scope against prior art better than CRU examiners? If the CRU BRI was really NOT “reasonale” that’s a good issue to take to the Board and the Fed. Cir.
Plus, unless the patent is expired. the patent owner can amend the claims or file new claims in the reexamination to better distinguish the previously considered art.
The Fed. Cir. has thus repeatedly held that the kind of flexible and often flaky “claim interpretation” used in District Courts [and readily RE-interpreted by CAFC panels de novo][when they want to narrow claims] does not make sinse in, or apply to, reexaminations, reissues, interferences, or any other PTO examinations.
As the Board has told patent attorneys for generations, arguing distinctions over the prior art for which they cannot point to anything in the claims to support just doesn’t work legally [even though it may bambozzle some juries].
It’s still baffling to me that years (decades?) after touch-sensitive screens were invented, broad claims to methods of manipulating information on such screens using “new” finger movements are being found non-obvious and granted by the USPTO.
The only explanation is the usual one: the Examiners at the USPTO in the relevant art units for such “technology” are not very intelligent and/or poorly trained, and their bosses at the USPTO are industry plants/shills.
Evil joy-killing Attorney is more like it.
Re: Apple’s Patent, check out this interpretation. Seems to be a bit more narrow than people are saying.
link to thisismynext.com
“The number of patent reexaminations filed is per year is an extremely small percentage of total patents, and is not even nearly as large as the number of patent lawsuits per year [much less adding in assertion threats].”
I agree with Paul that this is such a relatively small piece of the pie as to amount to being a trivial issue.
Slow day at the Blog mill?
Re: Apple patent – looks to be just like all the rest of the patents Apple has already asserted against plenty of competitors. Long live the SmartPhone wars ($$ for me).
This one is particularly glaring for its lack of older and/or JP citations. Touch screens have been around for quite awhile. Also funny how they carefully include a two finger limitation when US 5615384 to IBM (zoom and pan on a handheld touchscreen device) does nearly the same thing without that key feature. Oh yeah, ‘384 isn’t of record either… (Note: I have not reviewed the FW, so do not know the ‘reason for allowance’.)
Read claims properly?
Oh, come on Paul. The PTO is commanded to use BRI, which means the claims are construed in a very broad manner so much so that the examination in the PTO may have nothing at all to do with the invention actually claimed. There is at least one and maybe more law review articles that point this out. Let me assure from a practitioner that this is almost always the case.
Until the PTO stops doing this, using BRI, reexaminations are going to be very frustrating for all parties.
Readers do you think Mr Higgins included his bizarre “In theory….” sentence deliberately to draw “Don’t be silly” replies. I suspect his game is to show how ridiculous it is, to suppose that the USPTO will be over-run by the Bill’s post-issue validity attack provision.
“This patent is extremely broad…”
Really? On what basis do you conclude that? No offense, but you sound like a patent examiner, i.e. somebody who has no understanding of a claim’s actual scope.
“…and could cover a lot of items currently on the market such as smartphones, e-readers, and tablets to name several.”
Really? Please give us some examples. And feel free to throw in some analysis of how each example infringes, either literally or under the doctrine of equivalents, any of the claims.
“I would argue no, essentially because a single individual or company could in theory request a reexam for any and every patent’
And what criteria for requesting a reexam would you put in place of the current criteria?
I forgot to also mention that reexaminations can also be quite dangerous. Losing an attack on a claim weakens both invalidity and IC arguments re the cited prior art. In the case of an inter partes reexamination it creates an outright estoppel against the reexam requestor preventing ever asserting that same prior art again AND any other prior art that COULD have been asserted. That double estoppel is apparently still in the new patent legislation for new inter partes reexaminations.
Re: “..a single individual or company could in theory request a reexam for any and every patent.”
“In theory” indeed! It would cost Billions of dollars a year! Reexaminations have high fees, high costs for prior art searches and paperwork, and most companies are not run by Don Quixotes wasting money attacking the vast majority of patents that are never asserted against anyone. The number of patent reexaminations filed is per year is an extremely small percentage of total patents, and is not even nearly as large as the number of patent lawsuits per year [much less adding in assertion threats]. Patent lawsuits are what causes most reexaminations, and is what reexaminations are intended to reduce. Furthermore, a large part of the increase in inter partes reexaminations was due to the fact that they are not available for patents for which the application or re-file was prior to its 1999 legislative enactment. Plus the resistance, especially among trial attorneys, to try anything new and much cheaper until after statistics conclusively proved just how much more likely a PTO reexamination is [than a typical lay jury and judge] to understand the technology and how to read claims properly against prior art patents or publications.
On June 21st Apple was granted patent # 7,966,578 for a “Portable multifunction device, method, and graphical user interface for translating displayed content” essentially a touchscreen device such as the IPad or IPhone. Apple could potentially use patent “578” to force their competitors to either, stop manufacturing infringing products or pay licensing fees. This patent is extremely broad and could cover a lot of items currently on the market such as smartphones, e-readers, and tablets to name several. One of Apple’s competitors will surely request a reexam on this patent and patent “578” is more than likely to end up in litigation
Please please please tell me that the claims in this patent were not distinguished over the prior art by virtue of the type of content (e.g., “web pages”) being manipulated.
In 1982 there were only 187 reexam request compared to 780 in 2010, this is over a 400% increase in request.
It’s actually a 317% increase. Which isn’t very much at all, considering how few requests there were in 1982, how long it’s been since then, and how many more issued patents we have now.
a single individual or company could in theory request a reexam for any and every patent.
Theoretically. But in practice that isn’t even close to happening.
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