by Dennis Crouch
The Wi-LAN decision focuses on a litigation discovery dispute. In 2009, Wi-LAN had its attorneys at Kilpatrick Townsend (then Townsend) analyze the scope of LG's infringement. After LG refused to pay, Wi-LAN forwarded the results of the Townsend inquiry (the Townsend Letter) to LG. Once litigation started, LG requested that Kilpatrick disclose documents and testimony relating to the Townsend Letter. Kilpatrick refused based upon its argument that the requested information was protected by attorney-client privilege. On the other side, LG argued that any privilege was waived by Wi-LAN's voluntary disclosure of the results. The district court sided with LG and held Kilpatrick in contempt-of-court.
On appeal, the Federal Circuit has vacated the decision – holding that the district court applied the wrong standard in determining the scope of waiver. Hefe, the court focused on Ninth-Circuit law to determine the scope of privilege waiver and held that – if faced with this case – would require a fairness balancing before requiring disclosure of otherwise privileged information.
The most inwardly interesting aspect of the decision stems from the short opinion dubiante by Judge Reyna. A dubiante opinion is typically seen as the weakest form of concurrence. Here, Judge Reyna writes:
The majority embarks on a winding course as it explores Ninth and other regional circuit case law, and evidentiary rules. At the start of its journey, the majority recognizes, “The parties do agree that the Ninth Circuit has not spoken squarely on this issue, i.e., whether fair-ness balancing is either required or proscribed in this case.”
Still, the majority discerns a trend in the law and on that basis takes a guess that the Ninth Circuit, if its hand were at the helm, would hold that there must be a fair-ness balancing in the context of express extrajudicial waivers.
I examine the trend and find in it no gates that lead to secure blue water. Indeed, I find that even a route that lies opposite the route charted by the majority is as good a route as any.
Thus, while instinct tells me the majority could be correct, I am concerned that our heading is not based on an accurate bearing. As I cannot prove or disprove our result, I go along with the majority—but with doubt.
Certifying Questions of Non-Federal-Circuit-Law: The decision here could well be contrasted with the court's recent opinion in Preston v. Marathon Oil (Fed. Cir. 2012). That case involved a patent ownership dispute between Mr. Preston and his former employer Marathon. At oral arguments, the court discovered a disputed question of Wyoming law as to whether particular additional consideration is necessary to support an IP assignment agreement signed by an at will employee. The Wyoming supreme court took-up that case and held that the continuation of the at-will employment is sufficient consideration. Preston v. Marathon Oil Co., 277 P.3d 81, 82 (Wyo. 2012). Based on the state court decision, the Federal Circuit then quite easily held that the assignment agreement was valid and that the disputed patents were owned by Marathon.
Perhaps Judge Reyna would have been more satisfied with certifying the Wi-LAN case to the Ninth Circuit for determination of the privilege question in that case.
= = = = =
Employment agreements are generally covered by local law – thus, this result may vary state-to-state. One catch is that the court has federalized some bits of the law of IP assignments. Probably most importantly, the Federal Circuit has held that a prospective assignment agreement works to automatically transfer ownership rights at the moment of invention – so long as the previously-signed agreement includes the correct magic words.
Made or Conceived: As an aside – but critical to Preston's case – the IP assignment agreement included an assignment of any “invention … made or conceived” while at Marathon. Preston argued that he had the idea for the invention before starting work. The Federal Circuit found Preston's argument lacking, even if factually correct since the invention was made (i.e., reduced to practice) after Preston joined Marathon. The Court did not indicate whether this aspect of its decision was decided under state law or federal law.
Mr. 101, let the record show that I do indeed duck your challenged. I am not worthy, Mr. Expert, as you well know. I am not an expert in the same class as you claim to be. Not at all. Unworthy…..
Mr. Heller:
First, let the record show, you Ned Heller continue to duck the challenge to:
Perform the “Integration Analysis” of the USPTO Official Guidelines to Ultramercial’s claims. Second, no one is denying Benson. That is a pure strawman argument meant to distract from your blatant intellectual cowardliness in applying the Official USPTO Guidelines on Integration Analysis, to Ultramercials claims. Third, you implicitly deny Diehr as controlling case law, by refusing to specifically acknowledge it as such, and not accepting the concept, application, and Integration analysis the Court has said the case stands for. Now on to your conflation and willful misrepresentation of the law.
Ned: 1. The claim seems to manipulate or transform abstract concepts. For example, providing access to proprietary content in exchange for reading an advertisement.
WRONG: The claim “applies” an abstract concept, which is the way to establish statutory subject matter. ( See Diehr). The abstract concept has been objectively defined by the court and the actual inventor as ”
“Using advertising as currency” See (Ultramercial defining the abstract concept.) “providing access to proprietary content in exchange” Is a physical act carried out in the real world. It can’t be solely performed in the mind and therefore is not abstract, see (CAFC defining Abstract ideas in Cybersource, also see Research Corp, and Alice, relying on that definition.)
Ned: “Reading itself is a mental step. Let’s move on…”
WRONG! You are not allowed to ignore and skip steps, even if they are mental steps, and simply move on. That would be dissection analysis which is expressly prohibited by Diehr, see footnote 12. Most importantly dissection is NOT integration analysis, which is now required. See (Prometheus describing integration of Diehrs claims.) Also see the new Office Guidelines, example number 3 using Integration for process claims.
Ned: “If the details of how access is provided is detailed and claimed, we may have something physical and patentable.”
WRONG: The details are in the specification. That is a 112 issue. This case and analysis is a 101 issue. You are NOT allowed to conflate the separate categories of the statute. See (Prometheus rejecting just such an approach.) Second, “patentable” is not the same as statutory or 101 eligible. Again, that would be conflating all the categories 101, 102, 103, and 112, and all that is required here in a 101 analysis. Andour entire point at number 2 about use of machines, is irrelevant because of the fact that no machine is required in order to determine the claims statutory. Diehr, Bilski, and Prometheus never said such! SO STOP THIS WILLFUL DISHONESTY & MISREPRESENTATION OF THE LAW!!!
Ned: “It varies from the prior art only in its abstract content.”
How any machine used or step performed varies from the prior art is a 102 or 103 issue. You are NOT allowed to bring 102, 103 issues into 101. You know better than to conflate the categories. To continue to do shows the ultimate contempt for the current law. Shame on you Ned Heller.
Ned: “Which leaves us with only one possibility for patent eligibility, right. ”
Right, Apply the integration Analysis from the Official USPTO Guidelines to Ultramercial’s claims and you will reach the right conclusion.
A lot of time and energy by Ned Heller avoiding the point better served by takiing up the challenge by 101 Integration Expert.
Why are you so afraid Ned Heller?
Mr. Benson-denier,
You said, "Furthermore there is nothing in the case law, that so states a process that does not use machines is not tied to the physical world, and is therefore abstract. That is a classic example of your "wish is was" the law."
I don't think that that is what I said or even implied.
Let's break down what I said in detail,
1. The claim seems to manipulate or transform abstract concepts. For example, providing access to proprietary content in exchange for reading an advertisement. The actions: reading, and then being provided access. Reading itself is a mental step. Let's move on to the providing access. The step is abstractly stated. If the details of how access is provided is detailed and claimed, we may have something physical and patentable.
2. The fact that the advertisement has to be displayed in some fashion is the use of a machine. But the machine is simply being used. It varies from the prior art machines only in the abstract content being displayed.
3. The fact that the proprietary content must be stored someplace is itself only using a storage device for its intended purpose. It varies from the prior art only in its abstract content.
Which leaves us with only one possibility for patent eligibility, right. It is the details on how access is provided, what machines and programming do that. If that is detailed and claimed, then we might have something.
“Mr. Expert, if there is no tie to the physical world other than the use of machines, and all that is being transformed are abstract ideas, I think the case law would suggest that the ship has long ago left port and is now gone, never to be seen again.”
Mr. Heller, that is not a very cogent argument. At the least, I don’t see the point you are trying to make. Furthermore there is nothing in the case law, that so states a process that does not use machines is not tied to the physical world, and is therefore abstract. That is a classic example of your “wish is was” the law.
Now if you want to discuss “actual case” law then there can be no dispute, that concept, application, and integration is all the Court requires for a process to be 101 statutory subject matter. Follow the cites:
“The application of an abstract idea to a “new and useful end” is the type of invention that the Supreme Court has described as de- serving of patent protection. Gottschalk v. Benson, 409 U.S. 63, 67 (1972).”
” It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. Diehr Page 450 U. S. 188″
“”The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” See From the Syllabus in Prometheus: (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. describing Diehr. Opinion of the Court) Emphasis added.
Oh and Mr. Heller, as for as Benson being good law, yes it is only in so much as Diehr has cabined Benson and remains the case most on point.
See Bilski 14, citing Diehr as controlling case law and Prometheus citing Diehr as the case most on point.
Now, I suggest you stop ducking the challenge and go find Ultramercial’s claims, and look up the Official USPTO Guidelines on Integration, and apply Integration Analysis.
Mr. Expert, if there is no tie to the physical world other than the use of machines, and all that is being transformed are abstract ideas, I think the case law would suggest that the ship has long ago left port and is now gone, never to be seen again. Benson is good law, Mr. Expert.
“Why do you think that Ned Heller never actually engages in a meaningful discussion?”
I must concur. Ned, wants to Shilll for M o T, or some version of it, because it effectively eliminates a large swath of software and business method patents, and narrows the Congressional intent of a broad interpretation of the Statute at 101.
This is why Ned will not engage in the “Integration Analysis” and refuses to apply The Office Official Guidelines to Ultramercial’s claims.
He knows he can’t defeat the “Integration Analysis” and therefore it is a threat to his agenda.
He would rather spin his own version of what he wants the law to be, rather than discuss and debate the actual law, as it exists today.
I wonder what David Hricik, the new commenter with a background in legal Ethics, would think of Ned Heller’s online Ethics and antics?
Well, anyway I am sure you right and the shilling shall continue, but so will the facts, the law, and Integration Analysis.
Just as MaxDrei is “here to learn,” Ned Heller wants “to have a meaningful discussion.”
Neither wants anything of the sort.
Both are here for one thing and one thing only: to shill.
Why do you think that MaxDrei never actually learns?
Why do you think that Ned Heller never actually engages in a meaningful discussion?
“The central problem with the first court opinion was that it seemed to assume that a programmed GP computer without more was just such a special purpose computer. Had that been the case, I believe, the claims in Benson would have been patent eligible just as Rich said in In re Benson.”
Mr. Heller:
What does any of the above have to do with the “Integration Analysis” from Prometheus and adapted in the Official Guidelines of the USPTO?
Furthermore, the fact that a computer may be used in Ultramercial claims does not mean it is required.
You do remember, there is NO Machine or Technology requirement whatsoever for 101 statutory purposes.
Therefore the presence of a computer, no matter how you define it, can’t render a claim non statutory.
Which brings us back full circle to the issue you duck.
“Integration Analysis” is the key to as the Court said: : transform a process into an inventive “application” of a concept/formulae.
A fact you apparently can’t dispute.
“David, why should I perform any analysis on Ultramercial.”
Mr. Heller:
First of all demonstrate that you can show some decency and respect in a conversation by not calling me David. I am not David. I am 101 Integration Expert. I am not calling you any other name but that which you wish to be called, so try to do the same in return please.
Second, you should accept the challenge and perform the “Integration Analysis” on Ultramercials claims, according to USPTO Guidelines to prove to yourself that “Integration” is indeed the key to as the Court said: : transform a process into an inventive “application” of a concept/formulae. A fact that you have explicitly denied, based on mere opinion. Of course if you do not want to face the truth, nor have an honest presentation and discussion of the law, then refuse to accept the challenge. The choice is yours.
“You give me different answers all the time, su ckie, whether I ask for them or not. That’s because you’re a m-r-n completely lacking in intellectual rigor and integrity.”
Compare
MM said in reply to Give A Little Instead Of Always Taking It…
At 1:24:
“Of course you fxxxxxing idjit.”
At 1:25:
“LOL. Of course not, you f—-ing ijdit.”
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MM, your ability to troll and to exhibit the tendencies that you accuse others of is astounding.
David, why should I perform any analysis on Ultramercial. The courts have not done so, and this is a case that might require a remand to the District court to conduct the analysis in the first instance.
“David, “Because” is a proper answer to “why.”
First of all who is David?? Oh never mind. “Because” does not provide an explanation of why you will not Apply “Integration Analysis” to Ultramercial’s claims. To refuse and then not provide an explanation, followed by a flippant remark of “Because” clearly shows you are not interested in honestly discussing and applying the law.
“As I said before, with a proper analysis, the Ultramercial claims may be valid.”
The “Proper” Analysis is the Official Office Guidelines for Integration Analysis.
” I really do not have time to read your entire post and respond to it.”
You don’t have to. Read the Office Guidleines and apply the Integration Analysis to Ultramercials claims. That is the challenge before you.
“I think the Court needs to show “integration” sufficient to make the programmed computer into a special purpose machine, as it appears to be a given than the claims do not pass the MOT. (The claims do appear to be attempting to claim a abstract business concept.)”
M o T is irrelevant. And no one has asked for your supposition on abstract business concepts or interpretation of other cases. We have Official Guidelines now for the use of Integration Analysis. Do not tell me what something “appears to be attempting”. Perform the analysis according to the Official Office Guidelines for Integration Analysis, and come up with a result. The ENTIRE Examining Corps is required to do it.
Why do you refuse??????
Let's not put words in my mouth please. I think Stevens in Diehr was wrong.
David, "Because" is a proper answer to "why."
As to your litany, that ends in "Because of all of that?", I reply, "David, I really do not have time to read your entire post and respond to it."
As I said before, with a proper analysis, the Ultramercial claims may be valid. I think the Court needs to show "integration" sufficient to make the programmed computer into a special purpose machine, as it appears to be a given than the claims do not pass the MOT. (The claims do appear to be attempting to claim a abstract business concept.)
The central problem with the first court opinion was that it seemed to assume that a programmed GP computer without more was just such a special purpose computer. Had that been the case, I believe, the claims in Benson would have been patent eligible just as Rich said in In re Benson.
Ned replies “The SC Wrong” when the previous poster is pointing out errors in a dissent.
Way to go Ned.
So notwithstanding the fact that the Supreme Court can be (and has been) wrong in majority decisions, you are attempting to paint dissents as “not wrong.”
No wonder you like dissents so much. Stevens in Diehr and Stevens in Bilski must have made you wet your pants (no matter how wrong each were).
Ned Heller: “Because ….”
Because of what exactly Mr. Heller?????
Because In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency”?
Because Claiming a concept without applying it is considered an abstract idea. Abstract ideas, like a law of nature, or physical phenomena, are not patentable subject matter. Therefore the question before the CAFC is as follows: Is Ultramercial’s claims an abstract idea in view of Prometheus?
Because the answer is clearly no?
Because the claims in Ultramercial are an inventive application of the concept.
Because of the way the steps of the process “integrate” the concept into the process as a whole?
Because we can see Prometheus citing Diehr and Flook:
“ Diehr and Flook, the cases most directly on point, both ad- dressed processes using mathematical formulas that, like laws of na- ture, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012) )
Because if Ultramercial’s claims were a mere application of a concept without integration they could read as follows:
a method for using advertising as currency.
1. offering a service
2. accepting advertising as payment
And if the specification to the above claims offered no further definition of the terms then the CAFC could rightfully rule Ultramercial’s claims to be an abstract idea based on the “integration analysis” used in Prometheus and referenced to Diehr. The claims would in effect be no more than simply stating the concept and saying apply it. See Prometheus as Authority (Still, as the Court has also made clear, to transform an un-patentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.) (( Opinion of the Court 3, Prometheus V Mayo 566 U. S. ____ (2012) )
Because Ultramercial’s claims integrate the concept with 11 steps that when viewed as a whole and as an ordered combination offer more than the parts do separately?
Because we can see Prometheus explaining why the claims as a whole are not fully integrated: “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.” ( Opinion of the Court 11, Prometheus V Mayo 566 U. S. ____ (2012) )
Because Ultramercial’s steps can’t be completed in the mind and are not mental processes. Nor can they be completed with mere verbal instruction or with pencil and paper?
Because the concept of the claim is still free to use in all fields and technological environments. Therefore the invention does not violate the pre-emption analysis from Benson?
Because the CAFC and The USSC should hold Ultramercials claims as statutory subject matter?
Because the steps of the process “integrate” the concept into the process as a whole and thus transform the claims into an inventive application of the concept.?
Because of ALL that Mr. Heller?
:: Awaits Your Answer::
suckie First I want to thank everyone that responded to this thread
Man, this blog has the d-mbest trolls.
Can you give me a cogent reason why AI should not continue to speak?
It’s more difficult for Nurse Ratched to put the pills in his mouth when he’s speaking.
Yes or no: does your theory require [oldstep] to be a patent ineligible step?”
LOL. Of course not, you f—-ing ijdit.
Yes or no: does your theory require [oldstep] to be a patent ineligible step?”
Of course you fxxxxxing idjit.
6 would write:
“I don’t have to apply the “Integration Analysis” because I don’t agree with it, and I am smarter than you all. Besides, you (BPAI) panel members are all Tards.”
“and yet you continue to ignore the critical aspect of modern day law. Personal attacks when I ask you to provide a timely legal citation is the stuff of trolls.”
Compare
“You have to be smoking something!!!!!!!!!”
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Ned, what is wrong with you? Find a quote from the modern era or STFU. At the very least, stop with the nonprofessional personal attacks. What Modern Day Law is asking for is completely reasonable. You keep on citing cases before the critical time period which prove nothing. You are doing a ton of work looking up these cases. Can you not find one in the modern era? If you cannot, what do you think that tells you?
Fix italics tag.
“Evaluating your approach based on its acceptance by patent professionals is certainly a reasonable approach, albeit not foolproof.”
I am not saying or implying that a certain number of Patent Professionals agree with me in anyway. Although in the months to come we will certainly find out how many Patent Professionals agree with the Office Guidelines.
What I am saying is that a TRUE Patent Professional, e.g., a Patent Examiner working for the Office, or a Patent Attorney representing an Actual Inventor, would recognize the use of “Integration Analysis” in the new Office Guidelines, and be prepared to deal with it, one way or another.
On the other hand, someone that ducks and ignores what the Office has acknowledged and written, is not someone I consider exhibiting professional behavior, and not someone I would ever hire.
Finally, the vocal minority, has muddied up this blog for so long, that calling them out to respond on a substantive issue like “Integration Analysis, can only help to elevate the discussion of patent law for everyone.
First I want to thank everyone that responded to this thread, pro, or con. Of course you all know 6, has rationalized in his mind that you ALL must be Actual Inventor. But that is another issue. In response to you 6, I simply want to say…
I DON’T CARE WHAT YOU …”THINK!”
I care first and foremost for the LAW.
And I mean the actual law, as it is written by Congress and not how you, Ned, or MM wish it was written.
And as someone that truly cares about the law, and the Congressional mandate to Promote the progress of the useful arts, I will not in good conscience sit back and allow your vocal minority to flat out ignore, and/or obfuscate, conflate, and twist the law to advance your own philosophical agenda’s.
I am not asking you to respond to me. I am demanding that you respond to the Official Office Guidelines incorporating “Integration Analysis”. While I did champion this concept after Prometheus, the Office wrote the instructions for applying the concept of Integration Analysis, and it destroys each one of the vocal minorities pet theories.
MM. dissection theory is DECIMATED!
Ned’s, irrational reliance on MoT as definitive is DONE!
And 6, your own misuse, abuse, and inappropriate overreaching with Benson’s Pre-emption has been put in check and is FINISHED!
You want me to be quiet?
You want me to stop calling you out to apply the Office Guidelines to Ultramercial’s claims?
Fine, you, Ned and MM, cease vocalizing your wish it was the law theories as if they are the actual law and I won’t say a word.
But the minute ANY of you resort to your usual antics I will be right here, to B slap you with Prometheus and The Office Guidelines rolled into to one! And I plan to use this moniker all the way up until the Court rules, on Ultramercial. So get use to the issue of “Integration Analysis” being in your face!
Modern, state for the record whether a recorded employment agreement automatically assigns all future inventions of the employee.
That is, after all, your position and it is contrary to law and to common sense. Contract law cannot have anything to do with this. This is Federal Patent Law.
Not my battle, but 6, it is easy to see why “AI” does not just sit back and be patient. The “vocal minority” is not sitting back. The “vocal minority” still have not acquiesced to the reality that is now. The “scoreboard” is what it is. The official Office guidance is what it is. You are still denying something that you must follow (the Office guidance). You are still in a state of denial (Ultra dies) without explaining why you hold that view. You still refuse to defend that view by the very means that you must use.
Can you give me a cogent reason why AI should not continue to speak? I do know one thing that would shut him up: you acknowledging that he is correct (that is, as the current legal situation presents itself).
“Why is well established law bad law?”
Because the foundations of those decisions: contract law, has shifted.
It’s that simple.
I have met my burden by multiple examples of what that modern day law is. The ball is fully in your court to present some modern day legal foundation to replace the old foundation which is no longer suitable.
And if you think I am “a pest,” then fumigate with a dose of a proper legal citation that is timely; that is, that properly accounts for the shift in the foundational contract law.
As it is, your edifice is built on a foundation that does not pass inspection. Shore up your foundation with a cite to proper modern law.
“Why is well established law bad law?”
Because the foundations of those decisions: contract law, has shifted.
It’s that simple.
I have met my burden by multiple examples of what that modern day law is. The ball is fully in your court to present some modern day legal foundation to replace the old foundation which is no longer suitable.
And if you think I am “a pest,” then fumigate with a dose of a proper legal citation that is timely; that is, that properly accounts for the shift in the foundational contract law.
As it is, your edifice is built on a foundation that does not pass inspection. Shore up your foundation with a cite to proper modern law.
Modern, you are sounding more and more like a pest.
Bad Law?
The language was put into the statute in 1836. Cases interpreting the statute date from that time.
Bad Law?
Nothing has changed in the statute. The cases have considered the issue and they have been decided. Why is well established law bad law?
It is rather you burden to show any case where an employer filed suit on a patent owned by an inventor in his own name where there was no assignment of the patent or application and only an employment agreement to assign future inventions.
Look hard. Such a case does not exist.
Modern Day, is it your position that an employment contract automatically passes legal title to all employee inventions?
Ned,
Your posting bad law in several places on a single thread is making this thread difficult to follow and is unduly repetitive.
It also does not make your posts any more correct.
You are not providing a simple thing that you need to provide: a modern day citation. Why are you spending an incredible amount of effort in avoiding what would make the case you are trying to make?
Ned,
Your posting bad law in several places on a single thread is making this thread difficult to follow and is unduly repetitive.
It also does not make your posts any more correct.
You are not providing a simple thing that you need to provide: a modern day citation. Why are you spending an incredible amount of effort in avoiding what would make the case you are trying to make?
Ned,
Your posting bad law in several places on a single thread is making this thread difficult to follow and is unduly repetitive.
It also does not make your posts any more correct.
You are not providing a simple thing that you need to provide: a modern day citation. Why are you spending an incredible amount of effort in avoiding what would make the case you are trying to make?
“then it is YOUR position that recording of an employment agreement in the PTO automatically assigns title in all future inventions of the employee without MORE?!!!!!!!!!!!!!!”
I do not think the excessive use of exclamation points makes up for the fact that you are misrepresenting what I am saying.
I have been polite, yet direct. You can only be misunderstanding me if you are trying to misunderstand me.
The point is simple and straight forward: You need to account for the modern day law of contracts.
You have not.
It is as simple as that. Find some legal authority that actually addresses the issue as it exists today. Without doing so, you are only addressing an issue that no longer applies, because you are using law that requires contract law to be a way that it no longer is.
Getting excited about law, any law, even Supreme Court law that is no longer applicable does not make that law applicable. Try to remain calm and professional about this. Getting excited and out of control only hurts your effectiveness. Pounding the table with more force is simply not effective.
Mr. Day, I do not. I only have to point out that your position makes no sense. If you record an employment agreement in the PTO it does not automatically assign title to all future inventions of the employee to the employer. That is more than ridiculous. The law has been to the contrary for nearly 200 years!
Mr. Day, then it is YOUR position that recording of an employment agreement in the PTO automatically assigns title in all future inventions of the employee without MORE?!!!!!!!!!!!!!!
You have to be smoking something!!!!!!!!!
The personal obligations between the employee and the employer are one thing. Title is quite another. Title vests by law in the inventor and can be assigned legally only after the invention is described in a specification and filed as a patent. See the fricken Supreme Court cases I cited!!!!!!!!
Ned,
As previously posted, you need a modern day law cite to carry the day. All of the citations that depend on contract law pre-acceptance of the second restatement of contracts are quite meaningless and carry no legal weight.
In fact, your knowing that such are meaningless and still advancing the argument can be considered unethical. Yes, I know a blog is not a legal forum, but you are advancing a legal position that you must know is not sustainable. At the very least, such is intellectually bankrupt and should be avoided by those who consider themselves professionals.
“explain exactly what I have been saying”
Except what you have been saying is legally inaccurate.
Ned, you still fail to incorporate the modern understanding of contract law. All of your references are from an era that did not contemplate the modern legal understanding and thus fail to adequately represent the law as it is today. You merely repeat the error that Justice Breyer did in his dissent in Stanford (one of his errors).
I do not appreciate all of the dust you try to kick up and yet you continue to ignore the critical aspect of modern day law. Personal attacks when I ask you to provide a timely legal citation is the stuff of trolls. You must eventually open your eyes and accept that what is, is.
See the case authority I just posted, especially Gibson v. Cook.
The SC wrong?
Read the statute.
Then read the cases I cite. They discuss the point precisely, expecially Gibson v. Cook.
Cite That, I have cited a series of cases that explain exactly what I have been saying. Search for Gibson v. Cook, and Gayler v. Wilder in this tread.
Gibson v. Cook, reported in Curtis (1867, at Section 184): a contract to assign future inventions does not pass legal title.
“”Probably it has occurred within the professional experience of many of my readers to be called upon to consider the operation of contracts, sometimes made by inventors, by which they have obligated themselves to convey inventions not in esse; and the question may arise whether tlie recording of such contracts in the Patent Office, within three months from the time of their execution, will operate as notice of title, so as to prevent the acquisition of a title by another purchaser after a patent has been obtained.
We have seen that a contract of sale of a future invention, although in terms an absolute sale, can operate only as a contract to convey; and there is no statute which contemplates or requires the recording of any conveyances excepting assignments of existing patents after patents have been obtained, or assignments of inventions made and perfected, when it is intended to have the patent issue to the assignee. It has always been assumed that the object for which the act of 1836, § 11, requiring the recording of assignments of existing patents within three months, is the protection of subsequent bona fide purchasers; although this object is not specially declared. Assuming, then, that the recording of such an assignment operates as notice to everybody of the title of the assignee, can such an effect be attributed to the recording of a contract to convey an invention that is not only not patented, but has not yet been made?
With respect to patents already issued, an assignment necessarily points to the patent conveyed, and the public records afford to everyone the means of ascertaining what has passed by the assignment. But a contract to convey an inveution not in esse, although recorded, affords a subsequent purchaser of an interest in a patent no means of ascertaining what the inventor had bound himself to convey to another person. It is true there might be cases where it could be made certain by inquiry whether the invention contemplated by the contract was the same as that subsequently patented. But is the subsequent purchaser bound to institute such an inquiry? We are considering a question of notice of title; and if the instrument supposed to operate as a notice could not, in the nature of things, give the information, can the subsequent purchaser be bound to look elsewhere? This difficulty, as well as the further consideration that the statute does not contemplate the recording or such contracts, should, perhaps, lead parties to understand that contracts for the conveyance of future inventions are really of no greater force than as the personal covenants of the inventor, to be specifically enforced against him; and that to record them will not necessarily operate as notice of title, so as to defeat a title made by the inventor to another person after he has perfected the invention and applied for or obtained a patent. At the same time, there may, in some cases, be a practical benefit to be derived from recording such contracts.”
Ok AI, then why don’t you just hush until we see the results of the pending cases? I’ve said that Ultra dies, you say it lives. You can stop trying to “make” people respond to you now. Just sit back and be patient.
Gayler v. Wilder, 51 US 477 – Supreme Court 1851
"The inventor of a new and useful improvement certainly has no exclu~ive
right to it until he obtains a patent. This right is created by the patent, and no
suit can be maintaiued by the inventor against anyone for using before the patent
is issued. But the discoverer of a new and useful invention is vested by law with
an inchoate right to its exclusive use, which he may perfect and make absolute by
proceeding in the manner which the law requires. Fizgerald possessed this inchoate
right at the time of the assignment. The discovery had been made, and
the specification prepared to obtain a patent."
Curtis (1867), Section 170: "The statutes, however, which authorize the assignment
of an invention before the patent has been obtained, appear to emhrace
only the cases of perfected or completed inventions. There
can, properly speaking, be no assignment of an inchoate or incomvlete
invention, although a contract to convey a future invention
may be valid, and may be enforced by a bill for a specific performance.
2 But the legal title to an invention can pass to another
only by a conveyance which operates upon the thing invented after
it has become capable of being made the subject of an application
for a patent."
More to come.
The language was first introduced in 1836. That act required the recording of patent assignments to be effective.
SECTION 11. Ahd be it further enacted, That every patent shall be assignable
in law, either as to the whole interest, or any undivided part
thereof, by any instrument in writing; which assignment, and also every
grant and conveyance of the exclusive right, uDder any patent, to make and
use, and to grant to others to make and use the thing patented within and
throughout any specified part or portion of the United States, shall be recorded
in the Patent Office within three months from the execution thereof,
for which the assignee or grantee shall pay to the commissioner the sum of
three dollars.
Q: “how many true patent professionals have signed on to your “Integration Analysis” approach, whether on this forum or elsewhere?”
A: All of them.
That’s the real point here. The USPTO has published Official Guidance to the entirety of the examining corps. There is no option but to use the “Integration Analysis” approach. The fact that the vocal minority run away and refuse to answer on this blog (for whatever reason: “because” or otherwise) is quite besides the reality that the artist formerly known as AI was correct in his legal assessment of 101.
The score is on the scoreboard. The vocal minority cannot do anything to the reply of pointing up to that scoreboard.
Reality wins.
Wanted, I will see if I can find case on on this for you. It is an interesting point.
I found that the current provision essentially copies the provision from the 1870 patent act. I'll check earlier versions to locate just when the concept was introduced into the statutes.
From the 1870 Act:
"SEC. 36.
And be it further enacted, That every patent or any interest therein shall be assignable in law, by an instrument in
writing;"
A true patent professional would appreciate that “Integration Analysis” is from the case most on point and integral to the hot button issue of the day, 101 statutory subject matter. And so a true patent profession would gladly accept the challenge and engage!
Evaluating your approach based on its acceptance by patent professionals is certainly a reasonable approach, albeit not foolproof. So, how many true patent professionals have signed on to your “Integration Analysis” approach, whether on this forum or elsewhere?
“ this appears to be a straightforward admission that you are attempting to incite a response, aka trolling”
You have a rather odd definition of “trolling” young man if you think that asking questions in order to obtain meaningful responses rises to the level of “inciting.” Your personal interaction skills need some serious work.
“more a matter of making”
You desire power. Sad you don’t have any isn’t it? I also note that this appears to be a straightforward admission that you are attempting to incite a response, aka trolling.
“more a matter of making the most vocal posters actually say something worthwhile”
I’ve said things which are worthwhile. It is up to you to go and read them.
Now, if you don’t mind, please stop trolling.
Try extending your understanding to the depths of the USPTO Official Guidance.
Such does include the “integration analysis” and your job depends on it.
I think the “and without requiring any further act by the assignor” with proper legal citaion trumps your “one must reduce the assignment to a legal assignment” without legal citation.
I don’t know about you, but I just find it oh so much more convincing.
“To be a legal assignment, the res must be in existence and must be identified with particularity.”
Cite please.
Oh wait, you have already ignored this call for citation repeatedly.
Oh well, yet another call for proper legal citation that Ned must reply with silence.
Sotomayor was wrong.
Breyer was wrong.
It happens.
Lucky for all their opinions in dissent and support of the dissent don’t mean diddly as the rest of the Court told them to F.O.
The plain fact is that if Stanford was successful in arguing the assignment was one or equity, Breyer’s position would have held.
It didn’t.
That’s the law.
“Because”
Oh, the stunning legal mind at work.
/off sarcasm
Ned,
Still guessing wrong?
(yes)
I think it’s less a matter of caring what you think and more a matter of making the most vocal posters actually say something worthwhile.
It’s also a matter that you three have been the most wrong on an issue that 101 Integration Expert has been right on, and he is justly validated by rubbing your noses in what the Office has published as Official Guidelines.
Whether you actually come out and apply the Office Guidelines is not what matters. What matters is that you three consistently choose not to because (and seemingly ONLY because) 101 Integration Expert was right in his views.
The scoreboard says what the scoreboard says. There is a lot of satisfaction in that. Does he really care what you all think? I highly doubt it.
David, still trying?
Sent from iPhone
Because
Sent from iPhone
“He simply can’t do it. It is something that is apparently beyond his intellectual capacity.”
It is true that my intellectual capacity does not extend to understanding the depths of your tar d mind and its contents, including the “integration analysis”.
I don’t understand why you’re so interested in my, MM, or Ned’s views though. Why do you care what we think?
The SC held nothing of the kind. The issue was not raised as noted by the concurring opinion of Sotomayor.
Enforceability is quite beside the point. Quite.
The statute requires a legal assignment.
To be a legal assignment, the res must be in existence and must be identified with particularity.
We assign patent applications and patents by number or by some other reliable and clear identification, such as divisions and continuations thereof. If the invention is assigned, all continuations and divisions are automatically assigned. There is a Supreme Court case exactly on point.
On initial filing, the assignment can refer to the invention by title and be filed with the application.
Regardless of whether other assignments are filed in the PTO, their effect remains subject to court interpretation.
If one has only an equitable assignment, one must reduce the assignment to a legal assignment or join the legal title holder.
Thus, if an employer has only an equitable assignment and the inventor has legal title, the employer cannot sue on the patent without joining the inventor. For example, if all the employer has is a present assignment of future inventions made by the employee, he still must obtain title from the employee inventor in some fashion, especially if the employee has filed the application himself.
Again, the central problem here is that the statute requires a legal assignment, so the fact that modern law has largely ignored the distinction is immaterial.
The fact that Stanford’s attorney did not properly raise this issue is quite beside the point. The three SC justices did raise it. It is not an issue that is going to go away.
“Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing”
I think a better reading of the statute indicates that “any interest” related to a patent assignment is automatically deemed to be an assignement in law. That any such assignment by an instrument in writing shall be “in law.” The Majority of the Supreme Court, after all, do say “In most circumstances, an inventor must expressly grant his rights in an invention to his employer if the employer is to obtain those rights.” Tellingly, “most” is NOT “all.”
To answer Wcfmul, there is no such legal requirement for the patent or application number to be listed. This is not the Library of Congress where the copyright office DOES require such exactitude. Assignments not listing numbers are routinely filed, and all perfectly legal.
Ned does not answer you because (as typical when he does not answer a question), the answer shows that he is wrong.
What’s the point being made by Ned (and 6 and MM) in refusing to apply the OFFICIAL USPTO post-Prometheus guidance to the Ultramercial claims?
What was that quote?
Oh yeah:
What you don’t say speaks volumes. When you don’t say it screams so loud I cannot hear anything else you are trying to say.
Maybe Ned’s still having trouble locating the claims…
After all, he always has trouble when it comes things that prove him flat out wrong.
What you call “avoiding” other people merely call focusing on the right issue.
But let’s see where you stand on this question:
Is “I do hereby assign” the same legally as “I do hereby agree that I am obligated to assign in the future.”
It’s a really simple question, even if three of the Supreme Court Justices can get it wrong.
Apply “Integration Analysis” to Ultramercial’s claims.
If you continue to refuse then explain to me why .
” You studiously avoid discussing it.”
You would know all about that Ned. The way you “studiously avoid” performing the “Integration Analysis” for Ultramercial’ s claims.
Coward!
Ned,
Once again, you refuse to provide a proper citation.
I ask for a citation to your assertion. Your assertion does not match the statute. Thus, the statement “Read the statutue” is not an appropriate response. Posting a link to the statute is not a proper response. Saying people don’t understand the difference between a legal assignment and an equitable assignment is not a proper response.
The problem is that you are not giving a proper response.
So once more,
“In patent law, one has to assign a patent or application by number, or by attaching the assignment to the invention on filing, identifying it. Anything else is an equitable assignment.”
Cite please.
Well below MM posts a question to several posters. It appears that MM thinks this a definitive victory.
It is not.
“Next consider the following: 1. A method comprising carving a piece of wood into the shape of a violin and [thinking newthought]. Is this claim ineligible subject matter? Why or why not?”
While several posters note your apparent intention to drive my desire to understand your “theory” into the weeds (someone correctly noted that it is you that is playing dodge by asking more questions and not answering my question which only sought clarity), I will answer the question that you seem to have fallen in love with (you will have to forgive me if I do not answer right away as I do have real work to do).
Before I do, I will also point out that regardless of what you say, your mantra is only a theory and while “prove” may not technically be precisely the proper word, you do need to ground that “theory” with a proper legal foundation. You have shown no such legal foundation as of yet.
The answer: The claim is most likely not patent eligible subject matter.
As to why, (the answer below of the claim failing 112, while may be true, is not an answer to the patent eligibility question), the claim, as a whole, is drawn to mere carving into a shape, which WITHOUT MORE can still be thought of artistic, and thus still falls to the non-Useful Arts (I leave room for design patents, which evidently is not part of our discussion).
I purposefully note that while carving into a shape may be a manufacturing step, it is probably the least likely patent eligible step you could have chosen. And make no mistake, I do notice your attempt to drive this discussion into the weeds by choosing such a step (my words were merely “a step in the manufacturing of a violin). You could have quite easily chosen a step squarely in the Useful Arts.
Regardless of your attempts, I wish to take the necessary steps to keep you out of the weeds as we take each step towards grounding your “theory” properly. Whether or not you have done this before, I really do not know. I do know that you have not done so for at least the last three years. If you have done so, I suggest you cut out the juvenile antics and make a case for yourself . As abundantly noted, your asking questions is not the way to do that.
The reason I noted in my comment that we were getting to something “interesting” was because you appeared to be on the verge of changing your own ground rules about [oldstep] being patent ineligible. I wanted to see if you were attempting to move the goalposts without saying anything. It’s an old examiner trick to purposefully “flub” like that, and let the other person do too much talking down the wrong garden path. Even so, moving on let me attempt to preempt what I think your next question may be (and I am still expecting clarification from you that [oldstep] must be patent ineligible).
Let’s consider the following: 1. A method comprising [patent eligible step] and [thinking newthought].
The claim is most likely patent eligible subject matter.
I base this on Prometheus and looking at the claim as a whole. Since the example is a little sparse on both just what the new thought is, and on what the patent eligible step is, I take the liberty when I evaluate the claim as a whole to decide that in this particular case the claim as a whole is more concerned (overall) with the patent eligible first step. This accords with Prometheus in that for that case, the Court evaluated the claim as a whole and concluded that the claim as whole to be more concerned (overall) with the non-patent eligible Law of Nature. The converse holds.
Of course, the rest of the patent statute must still be satisfied (including 102, 103, and yes, 112).
And of course, I could have chosen the claim as a whole to mainly focus on an inventive aspect that would violate one of the judicial exceptions in the Court’s eyes and thus be patent ineligible (ala Prometheus, and quite possibly Myriad). You asked an open question and I have provided an answer. I trust that we can get back to you providing a little more substance as to the legal foundation of your views. And please note, that taking such an absolutist view that [oldstep] + [newthought] is ALWAYS patent ineligible is disproved with but a single example.
Be careful what you say your “theory” is.
And in closing, I choose to ignore your baseless questioning concerning the performing arts and if only playing a violin so qualifies. The better point in that discussion would be your explanation as to why something drawn to the performing arts would be patent eligible. As I posted in my earlier response, that way is optional. However, a snarky response from you again stating that you are not entirely convinced that all processes for making music are ineligible and then asking me to explain my example of the playing the violin will not fly. You asking someone to define “the performing arts” is not germane to understanding your theory and does not fly. People should run away from these obvious attempted trainwreck diversions. As I said, you should stay away from your silly strawman restatements and stick to a professional discussion. You need better tactics than what you may be used to using. I suggest you get your game in order.
If you have a point to make, make it.
You must identify the patent application, patent or the invention when you file. That is a legal assignment of the application for patent or patent. The statute says that applications and patents may be assigned in law. link to uspto.gov
The problem we are having in this conversation is that the people here do not understand the difference between a legal assignment and an equitable assignment.
Do you understand the point I am making? You studiously avoid discussing it.
I am officially calling out Ned, MM, and 6 to perform the “Integration Analysis” to Ultramercial’s claims, using the USPTO Official Guidelines on “Integration”.
If you continue to fail to perform, I thus declare you nothing more than shameless Trolls, Shills, and Intellectual cowards.
After all I am not asking you to prove some whacky theory I dreamed up. You are being directly challenged to apply actual case law from a 9-0 Supreme Court decision that has been adapted by the USPTO in their official guidelines, and remanded to the CAFC for review.
A true patent professional would appreciate that “Integration Analysis” is from the case most on point and integral to the hot button issue of the day, 101 statutory subject matter. And so a true patent profession would gladly accept the challenge and engage!
Even if you continue to duck this issue as you have for the last month, I will continue to confront you with it, and shine a light on your cowardliness for all the patent community to see, right up until the time the CAFC comes back with it’s response to the USSC.
You all can run but you can’t hide!
Fix busted italics tag.
Fix busted italics tag