Energy Recovery, Inc. v. Hauge (Fed. Cir. 2014) 13-1515.Opinion.3-18-2014.1
Panel: Rader, Reyna, and Wallach (author)
At the heart of this case lies the question of “what is intellectual property?” Here, the answer has more than philosophical implications: a finding of contempt hinges on it.
Leif Hauge was a former president of Energy Recovery, Inc. (“ERI”), a company specializing in “pressure exchangers,” which are used in reverse osmosis. Mr. Hague and ERI apparently had a falling out, and in 2001 they entered into a settlement agreement, adopted by the district court, that included a section entitled “ABSOLUTE TRANSFER OF ALL RIGHTS IN PATENTS, PATENT APPLICATIONS AND ALL RELATED INTELLECTUAL PROPERTY, TO ENERGY RECOVERY.” That paragraph specified that Mr. Hauge:
“irrevocably and absolutely assign[s]” to ERI “all right, title and interest along with any and all patent rights,” [], which Mr. Hauge had in “(i) the patents and patent applications . . . ; (ii) any and all patent rights . . . , intellectual property rights, property rights . . . ; and (iv) all other intellectual property and other rights relating to pressure exchanger technology predating this Order.”
Slip Op. at 8 (citations to Joint Appendix omitted). He also agreed to a non-compete clause that prohibited him from making or selling energy recovery devices for use in RO salt water desalination for two years. Id. at 3.
After the non-compete clause expired, Mr. Hauge obtained a new patent on pressure exchanger technology and formed a company, Isobarix, that began selling its own pressure exchanger. In 2013, the District Court (acting on ERI’s Motion for Order to Show Cause) entered an order finding that allowing Mr. Hauge “to . . . develop new products using the very technology he assigned to ERI solely because those new inventions post-date the Agreement would render the Settlement Agreement and its assignment of ownership rights useless,” finding him in contempt of the 2001 Order, and enjoining him and Isobarix “from manufacturing and selling pressure exchangers and replacement parts for ERI’s pressure exchangers.” Slip Op. at 4.
On appeal, the analysis focused on whether Mr. Hauge had violated clause (iv) of the agreement, which required him to “irrevocably and absolutely assign”…”all right,
title and interest along with any and all patent rights,” which he had in “(iv) all other intellectual property and other rights relating to pressure exchanger technology predating this Order.”
Here is where the split over the meaning of “intellectual property” comes into play. ERI argued that Mr. Hauge was not, under the settlement agreement, able “to appropriate the very pressure exchanger technology” that he explicitly transferred to ERI in 2001. This was a view that the district court apparently agreed with when it concluded that Mr. Hauge should not be allowed to “develop new products using the very technology he assigned to ERI.” Id. at 4. Both approaches treat “intellectual property” as meaning “technology.” In other words, what mattered was that Mr. Hauge was allegedly using ERI’s own technology, including technical knowledge that he acquired while its president.
The Federal Circuit, on the other hand, agreed with Mr. Hauge’s view: that he had complied with the settlement agreement by “transfer[ring] ownership of the pre-Agreement pressure exchanger intellectual property.” Slip Op. at 8. He was “not claiming ownership of ERI’s intellectual property,” id. at 9, and “[n]othing in the 2001 Order expressly precludes Mr. Hauge from using any manufacturing process.” Id. at 8. Under the Federal Circuit’s approach, “intellectual property” is not treated as the technology itself, but the rights over that technology, rights that Mr. Hauge properly assigned to ERI. (To spark yet another debate: This is, in my view, the only correct way to view the term. Using “intellectual property” to refer to the underlying technology, as opposed to the legal regimes surrounding that technology, leads to chaos, confusion, and erroneous views about the law).
What about the argument that Mr. Hauge maintained ownership of ERI’s trade secrets, which operate a much grayer area of intellectual property law? The Federal Circuit declined to treat these as “intellectual property and other rights,” at least for purposes of a civil contempt finding. “Civil contempt is an appropriate sanction only if the district court can point to an order of the court which ‘sets forth in specific detail an unequivocal command which a party has violated.'” Id. Here, there was no such command.
(Only) slightly OT,
The splash page of the USPTO today had the headline:
Driving innovation and not litigation.
Um, somebody should inform the Office that the approved manner of enforcing a patent right is through litigation.
Litigation – on its face is not a bad thing.
It is this type of half-baked, ride the propaganda machine, nonsense that really makes a trained professional wonder who is running the show at the patent office.
lol, insecure much? It’s not the PTO’s fault everyone hates lawyers.
It’s not the PTO’s problem entirely. It is the single court that controls patent law that is the problem. This is a court that has brought us business method patents, computer implemented patents, functional patents and best of all, the indefinite claim. This is court of the patent bar, for the patent bar and by the patent bar.
Isn’t there a saying about a fox in a henhouse?
Once again Ned – you engage in pure legal error (knowingly) by falsely attributing who changed the law.
The law was changed by Congress – the branch of the government duly authorized to do so under the Constitution.
Isn’t there a saying about spreading 1ies?
anon, yeah sure. And you and I both agree that a lot of movers and shakers are behind the AIA, just like the NCPLA and the APLA were behind the “fixes” of the ’52 Act. They think they run things in DC, and to some degree, they do.
We agree then that it was Congress that changed the law that you are trying to attribute to the sub-Supreme courts…?
anon, not at all. Just think about our discussion regarding “on sale.” If the court is to read out the private commercial exploitation bar, then “on sale” becomes indistinguishable from public use. The statute seem ambiguous.
But Rich is a special case. He treated the ’52 Act as a fresh start. If a doctrine existed prior to the ’52 Act, he simply ignored it or overruled it unless it was clearly tied to a statute that was unchanged in the ’52 Act. I cannot think of an exception.
However, that was NOT congress’s intention. Congress was told that the law was a codification, except in some very limited circumstances, primarily related 271(b-d); 103, and 112, p.3, now (f).
“If the court is to read out the private commercial exploitation bar,”
? – did you miss the soliloquy? No court has discussed this – but Congress has.
“However, that was NOT congress’s intention”
I have been far less than impressed with your arguments to this effect.
Especially as you continue to ignore the fact that Congress stripped the Court of its common law evolution tool to define the 101 notion of invention.
What Ned-sense (none)!
Like Tarantula, or the other recent O’Bummer appointments. Please Neddy poo get a grip.
jonas,
Who said anything about being concerned with people hating lawyers?
You really haven’t been paying attention to who has been whining, have you?
Maybe you can find some funny gifs instead. This version of your persona isn’t working out too well for you.
“he patent grant rate is at an all-time high”
LOL – that would be incorrect, as we have discussed in the past, the patent grant rate has recovered to its historical norms after the Dudas Just Say No Reject-Reject-Reject era.
But hey, what would be another thread without the vapid Malcolm spin cycle in play?
I was referring to the rate of patents granted per year.
You really must be one of the densest human beings on the face of the earth, or you simply strive mightily to find the wrong interpretation of everything you read.
the patent grant rate has recovered to its historical norms
With “norms” in bold, as if the typeface makes any difference to anybody. Take some night school courses and learn to write.
the Dudas Just Say No Reject-Reject-Reject era.
Except for you and your fellow grifters, Tr0llb0y, most of the civilized world didn’t notice. The public certainly wasn’t troubled at all.
The fact is that all of that junk rejected during this “era” that you are so obsessed with should have been rejected, along with reams of other junk that didn’t get rejected.
But you’ve never seen a junk patent you could fluff all night long so there’s little point in trying to discuss anything related to patents with you, is there?
Let everyone know when you find a granted patent that you think is a piece of junk. Just one. That’ll represent a fresh start for you. Nobody will hold their breath, of course.
Reminds me when your bff Big Gene discovered for the first time last year that Google prosecuted junk patents. When he was born? Yesterday apparently. Just like you.
“I was referring to the rate of patents granted per year.”
Nice strawman. You are talking about something else and trying to give a false impression – gee, maybe somebody needs to look up the definition of the word ‘dissembling.’
Here’s a clue Malcolm: the meaningful definition of patent grant rate is the percentage of applications that turn into patents. It is that definition that is reflected in the hard factual data of the patent grant rate cliff used by the Dudas administration as “proof” of its “high quality” in the era of when Quality was attempted to be defined as Reject-Reject-Reject. Remember when you attempted to dissemble and implicate that Kappos did not say (or did not need to say) “Quality does not equal reject“? LOL – I sure do.
You want to think that the patent system should not be used. That is the Duell in you shining through.
Sorry Malcolm, but use of the patent system is a desired thing. More Quid Pro Quo is a desired thing.
You really need to understand that.
You are talking about something else
No, I’m not. You’re talking about “something else”.
the meaningful definition of patent grant rate is the percentage of applications that turn into patents.
Your definition is no more “meaningful” than the one that I gave. Nice try, Humpty.
Hilarious that you somehow managed to be confused, in spite of the fact that you are aware of the numbers and very proud of it, apparently.
This is your typical troll behavior: try as hard as you can to misread what the person is saying, then attack the person based on your inane interpretation.
Pathetic.
LOL – my definition accords with what the Office tried to do.
Hey, I did not start the definition so it really isn’t ‘my’ definition – you need to tell the Office that they are playing ‘Humpty.’
Tell me where my so-called “confusion” is. Is it with the Doll Quality claim? Kappos’ renunciation of the Reject-Reject-Reject era? Your attempted dissembling?
I think you need a bigger shovel (LOL).
“Your definition is no more “meaningful” than the one that I gave. Nice try, Humpty.”
But but but he insists! Profound need for interpersonal control.
“This is your typical troll behavior: try as hard as you can to misread what the person is saying,”
MM, if you truly think he’s psycho then you must know he’s not doing it on purpose. It’s because of his inability to understand other people’s thoughts or emotions correctly. It is a physical limitation of his brain man.
6,
You might look up ‘stalking’ in that psych book of yours. You seem to be doing that a lot and not paying too much attention to the content being expressed.
if you truly think he’s psycho then you must know he’s not doing it on purpose.
Right. He’s a s0ci0path.
A non-s0ci0path, after being corrected a thousand times for misinterpreting what other people write, would pause for a moment before being making an assumption and behaving like a jackxss based on that assumption.
One problem, of course, is that for whatever reason DC pretends that Tr0llb0y isn’t a s0ci0path and often tries vainly to “help him along”. Why is that? Anybody’s guess.
My guess is that (1) DC knows who anon is and feels pity for him, and (2) DC believes that banning Tr0llb0y would simultaneously feed into Big Gene’s bloated persecution complex and would result in Big Gene crowing about how “differing views” aren’t tolerated here (“just like at Big Gene’s place!!!”).
Of course, that’s complete b.s. as there are probably a hundred other willing commenters out there who share some, most or all of Tr0llb0y’s views but who aren’t compulsively lying s0ci0paths and who can articulate their beliefs in complete English sentences. They are all welcome to “discuss the law” here, of course (although probably half of them probably just want to complain about their patents being tanked and could care less about anything else (just like in the “vibrant” days of yore).
“Right. He’s a s0ci0path.
A non-s0ci0path, after being corrected a thousand times for misinterpreting what other people write, would pause for a moment before being making an assumption and behaving like a jackxss based on that assumption.”
That does actually appear to be the case. In some additional reading I had been doing that did appear to be the case as well.
Also, I was reading on how properly to deal with such folks in day to day interaction so as to minimize their impact. It seems there are some identified steps that you should take, and in fact, they’ve been used on these very boards to deal with him in the past where the individual unknowingly using the techniques had substantial success.
I do heartily recommend the following coping strategies:
link to masksofsanity.blogspot.com
Also anon will note that they put at the top of that article a good explanation in everyday language about what a controlling personality is and does. He doesn’t yet realize that this is what he is doing, but one day eventually he’ll likely come around. Maybe he’ll ask a few people irl that know him what their honest opinion is on whether he’s a tad controlling or not. Surely he does it irl as well.
LOL – 6 and his “how properly to deal” – gee, 6, it sounds like you want to control – what is with this obsession of yours and this control? Check yourself.
Then return to the substantive points under discussion and how Malcolm is also attempting to control (emphasis on attempt, as it is a failed attempt given how I merely point out his spin and why his notion of “record patent grant rate” is a good thing, seeing as more of the Quid Pro Quo means that the Office is meeting its designated function.
You do understand what Quid Pro Quo means, right?
“gee, 6, it sounds like you want to control”
OMG anon it’s so good to see your horizons expanding!
“what is with this obsession of yours and this control?”
Well I see your horizons haven’t expanded enough yet to tell what an obsession with control is and what a mere desire for control is. But hey, you’re making progress brother!
“Then return to the substantive points under discussion and how Malcolm is also attempting to control”
Wow, no sooner then you did reprimand me for wanting control over you to get you to stop trying to control people and you go and issue a command!
Man I can see you have a ways to go.
“(emphasis on attempt, as it is a failed attempt given how I merely point out his spin and why his notion of “record patent grant rate” is a good thing, seeing as more of the Quid Pro Quo means that the Office is meeting its designated function.”
Oh yes, yes, super important that you sorted that out. Everyone cares sooooo much that you think that the record patent grant rate is a good thing and that you think you have a good reason to think that and a good reason for us all to be talking about that.
But that exchange was interesting as well.
MM starts talking about one thing.
Anon thinks MM’s talking about another thing, or else is trying to force him into talking about another thing, or more likely a bit of both.
MM corrects him.
Anon still misunderstands and accuses mm of being “misleading” when nobody but himself was mislead at all, where he himself was only mislead because of his own inability to understand other’s thoughts or feelings. Anon also feels under siege at this point and a need to control MM into talking about what he wants to talk about so as to avoid having been wrong. To do so, he attempts to put forth reasons why they should be talking about what he wants to talk about.
MM states that anon was simply mistaken the whole time and he’s talking about his original topic.
At which point I jump into the fray and point out where MM was resisting anon’s attempt to control him with the humpty remark.
And then we talk about anon’s condition(s) which is much more interesting than the “substance” of your tit for tat with MM.
LOL – my making fun of your obsession over controlling me goes over your head…
“LOL – my making fun of your obsession over controlling me goes over your head…”
Right, my “obsession”. Yeah, you’ve got a ways to go till you understand that particular term brosefus. I just now have found your mental condition very interesting as it has affected all of us for literally years. I cannot be the only one considering how many people have been affected.
“Right, my “obsession”. Yeah, you’ve got a ways to go till you understand that particular term brosefus”
6, it appears that you are doing that projecting thing of yours again.
I wonder if you are even aware of your actions. You know, it might be a subconscious thing of yours. You might want to check yourself.
Let us all know how your prognosis goes.
“projecting thing of yours again”
“projecting”
K, yeah. You obviously don’t know what that word means. Like most big words you attempt to use.
You are doing that projecting thing again 6 – now coupled with an apparent lack of ability to understand someone else.
It appears that your symptoms are multiplying. You may want to check yourself on that.
A total non-answer, Malcolm.
Now how are we going to have any type of conversation when you do that?
“Now how are we going to have any type of conversation when you do that?”
Inability to understand the thought of MM’s to terminate the conversation.
6,
See the comment above by Apotu.
Litigation – on its face is not a bad thing.
In fact, the vast majority of people accept litigation as a necessary evil but readily acknowledge that going to court and arguing with people in front of judge is a totally suck way to spend one’s life (unless you’re a lawyer who enjoys that sort of thing).
More importantly, litigation doesn’t “drive innovation” except in the warped little minds of bottom-feeders and grifters like you.
this type of half-baked, ride the propaganda machine, nonsense that really makes a trained professional wonder
Did you talk to a trained professional? You should.
Malcolm,
Litigation is not only NOT a necessary evil, it is the very mechanism our society has set in place to enforce the patent right.
Your anti-patent bias (patents are the WORST THING EVER, and only followed by those wanting to ENFORCE their patents) is showing.
You really need to get into a profession in which you can believe in the work product you produce.
6,
You should read into that psych book and see what such prolonged cognitive dissonance and self-loathing that Malcolm exhibits is called.
patents are the WORST THING EVER
Hardly.
Again, you have habitually labeled anyone who disagrees with you about anything as “anti-patent.” It’s what you and Big Gene do every day. Dude has a whole blog devoted to doing just that and you are his favorite lap dog.
Litigation is not only NOT a necessary evil
Just caps and bold? No italics? C’mon. You almost persuaded everybody about how awesome litigation is and then for some reason you held back. Maybe try some underlining? Or you could just type it ten times, over and over and again, as if you were talking to your friends in your kindergarten class.
“ as if you were talking to your friends in your kindergarten class.”
Well Malcolm, it does seem to be slightly over your head… If I could have it appear in crayon, would you might then be more likely to grasp it?
…and yet Courts, government briefs and many others quite readily understand what I post.
In fact, it seems that only those trying hard not to understand are having the difficulties.
Does this really hinge on the meaning of “intellectual property”?
Seems to me it hinges on the meaning of “two years” and the meaning of “predating this Order”.
It seems to me that if someone is asked to, and agrees to, not compete for two years, one should assume that he will compete at the expiration of that two year period. Does the company claim to own all pressure exchanger technology? Is there nothing about pressure exchanger technology that is now common knowledge?
Turns out there’s plenty about pressure exchanger technology on the internet now:
link to en.wikipedia.org
Implied in this article is an assumption that the new devices include something old that was not patented, but was instead held as a trade secret. However, we are not told if that is the case or what that something might be….
Anyway, it seems this case hinges on the answers to my questions and not so much on the meaning of “Intellectual Property”.
I just wrote a whole examiner’s answer responding to a guy who is dead set on arguing steadfastly against my response to his previous arguments while neglecting to ever argue against the actual grounds of rejection.
If you wrote an Examiner’s Answer, he must have already argued against the actual grounds of rejection. Else to what did you answer?
To move the argument forward, it makes sense to focus on the errors in your response, does it not? Was your response not related to the “actual rejections”? If not, then perhaps your Response introduced new grounds of rejection and should have been presented in an non-final office action.
“If you wrote an Examiner’s Answer, he must have already argued against the actual grounds of rejection. Else to what did you answer? ”
His brief consisting of his “arguments” that consisted of “arguments” directed to my response(s) to his previous arguments. They still need to lay out the actual argument against the rejection. I could have been dead wrong in my response to his argument and yet the rejection could very well still be just fine. And it is.
See, the thing that this really highlights is when the examiner writes something in response to an argument that the applicant then misunderstands, or else was simply badly written by the examiner. Then you have people that are so argumentative that they want to argue against the response rather than continue to argue against the rejection. How does that help them? One does have to wonder.
In any event, it sounds like you might be the sort of person that does this, you may want to consider what you’re doing and how that affects the overall prosecution.
“To move the argument forward, it makes sense to focus on the errors in your response”
You still gotta make your actual argument. Appeal briefs aren’t just for “moving the argument forward”, You gotta move it forward after you set forth your actual argument against the grounds of rejection. Who knows? Perhaps I’ll respond differently after you’ve made me see the error of my previous response. Won’t change the grounds of rejection but at least we’ll actually be talking about the rejection rather than my response.
” Was your response not related to the “actual rejections”?”
My original response was related to his argument. That’s what responses to arguments are usually related to, that’s why they’re called “responses to arguments”.
“If not, then perhaps your Response introduced new grounds of rejection”
No new grounds brosef.
It makes sense to address the rejections first. That’s what I do. But, I’m sure your Answer refocused the issue on the reasons for rejection and his reply to your answer will no doubt address the rejections and the record will be complete, twice.
Regarding: ” …when the examiner writes something in response to an argument that the applicant then misunderstands, or else was simply badly written by the examiner. Then you have people that are so argumentative that they want to argue against the response rather than continue to argue against the rejection. ”
This highlights the frustration applicants and their representatives have when Final Office Action are issued when no clear issue has been established between the Applicant and the Examiner.
You see, the MPEP (section 706.07) indicates that “Before final rejection is in order a clear issue should be developed between the examiner and applicant.”
If it becomes clear to you, as it apparently has in this case, that the examiner wrote something in response to an argument that the applicant then misunderstood, or else was simply badly written by the examiner, then the final rejection should be withdrawn and a new non-final issued so that the “clear issue” can be developed.
“But, I’m sure your Answer refocused the issue on the reasons for rejection and his reply to your answer will no doubt address the rejections and the record will be complete, twice.”
Um, yeah, great job done by the both of us! Or wait, maybe not. In that case now my answer is for naught since he gets the last word in and I don’t get to respond to whatever his actual argument is going to be against the rejection (because of internal “policy” against the policy in the MPEP) in his reply brief. That’s how prosecution and appeals should work! Or oh wait, maybe not. Even presuming there was no internal policy preventing me from making a response to his reply brief then we’d have had to go yet another round of arguments wasting everyone’s time (which they’re already doing quite enough of in this particular case). Supposedly his additional arguments should be waived anyway, he should only get to reply to new stuff I’m bringing up. The grounds of rejection are not new, he shouldn’t get to make new arguments regarding them after wasting my time the first time around.
“This highlights the frustration applicants and their representatives have when Final Office Action are issued when no clear issue has been established between the Applicant and the Examiner.”
I think that people that get to this point should consider for a second that it is there job to establish any “clear issue” between the applicant and the examiner other than the biggie already on record: the grounds of rejection. And if they can’t think of one then they should focus on that. Failure to be able to highlight some incidental side “clear issue” they take with the rejection is their bad. Specifically it’s usually bad lawlyering, but yeah, still, that’s on them. It isn’t the office’s job to establish clear issues for them to take with the rejection. Even though I sometimes toss it in for giggles since they’re so obviously drowning and it is apparent what they’re trying to spit out.
If you’re ever drowning like that then just call up the examiner and explain that you’re drowning in your own inability to express the issue that you take with the grounds of rejection. There’s a chance the examiner can help you put it into words. Though the likelihood of those words then being all that persuasive are kind of low in my experience, they’re better than nothing!
Or you or they can call/email me, 100$ an hour, maybe doubled if I succeed where there was previous abject failure.
“You see, the MPEP (section 706.07) indicates that “Before final rejection is in order a clear issue should be developed between the examiner and applicant.””
Yeah, failure to do so should prevent appeal. But alas it wasn’t written into the statute and is a mere “should”.
“If it becomes clear to you, as it apparently has in this case, that the examiner wrote something in response to an argument that the applicant then misunderstood, or else was simply badly written by the examiner, then the final rejection should be withdrawn and a new non-final issued so that the “clear issue” can be developed.”
W T F? I should withdraw the finality of my rejection because he fcked up (aka misunderstood)? He has a phone. And in fact he already used it in this case. He understood. And even presuming he didn’t, again, that is on him. No reason for the office to take the hit for his incompetence.
Are you smoking crack cocaine lester? I mean seriously? The very idea!
Besides, they’ve already wasted a huge amount of time on this case. We hold interviews and then they ignore what they specifically learned from those interviews in their responses, or else make a huge fck up in misunderstanding what was said (which they made at least one of already and which was corrected). I mean huge. He ck, the attorney repeated back for me what I was trying to say and understood it on the phone. Like 3 times. The attorney gets it. Whether his client does is another matter. And even though I don’t really do 2nd action non-finals save when I’m being generous, and could thus do so in this sort of a case, I doubt my spe would even allow me to do so after we had the conference and went to all that trouble. Indeed, even my ridiculous generosity is expended on this particular case. Furthermore, I doubt the applicant would appreciate my doing so, you know, some applicants just want to appeal and see withdrawal of the finality as an attempt by the office to avoid the appeal. Perhaps a hypothetical particular invention is valuable, perhaps that hypothetical invention is very valuable because it claims them having done what a lot of people before them have been trying to do and which is valuable to do. And maybe they succeeded. Now maybe in such a hypothetical case they’re having a bit of trouble getting broad coverage on that which they accomplished due to the patent laws and some evidence. In such a case they may just want to take the 20% or so chance that they draw an incompetent board panel and get the rejections reversed so they can have a hugely valuable patent. Dolla dolla bills yo. My cases are almost all about them dollas (nobody here just wants the patent for their wall), and are almost all from the big boys in the space.
“W T F? I should withdraw the finality of my rejection because he fcked up (aka misunderstood)? He has a phone. And in fact he already used it in this case. He understood. And even presuming he didn’t, again, that is on him. No reason for the office to take the hit for his incompetence. ”
You know that’s not how it usually goes.
How it usually goes is the examiner pastes claim language into an Office Action template. Then every so often inserts something of the form (p 37, Fig.2) into the pasted claim language. The applicant reads paragraph 37 and looks at Fig. 2 and sees nothing remotely like the claim language with which the insertion is associated.
No clear issue is yet established.
The applicant files a response that says, we don’t see element x in paragraph 37 or Fig. 2, or even in the combination of the two, please explain yourself.
No clear issue is yet established.
Nevertheless, a final office action is issued, which may or may not explain the original rejection. Even if it does, the explanation, presented in a final, is too late, as the applicant cannot now amend the claims to compensate for the examiners bizarre interpretation without incurring the ridiculous costs of an RCE. The final was issued BEFORE a clear issue was established. …and thats the best case scenario.
More often, the response to arguments responds to the argument that cited paragraph 37 doesn’t disclose X by now citing paragraph 102 (in the response mind you, not the actual rejection) and the Office pretends that this is not a new ground of rejection. Again, in the best case scenario, the examiner could be viewed as having a point about 102, but the applicant can’t amend because its a final….in the more common worst case scenario paragraph 102 isn’t any closer to element X of the claim than was paragraph 37.
No clear issue, yet we have a final…
So yes, you should withdraw the final
That is what W. T. F means right? Withdraw the Final?
Was it not “Why The Face?”
Well les it appears my original long response did not post. Oh well. I appreciate your input but I’m not rewriting all that which I wrote.
Bottom line, you seem to be talking about a general situation in your most recent response. And not the situation at hand. Concerning the general situation and not the one at hand, I also disagree with you regarding whose responsibility is it to establish a clear issue. The office merely need provide notice of the grounds of rejection. It is up to the applicant to establish a clear issue that they wish to take with the ground of rejection.
Indeed, here the “clear issue” is any “clear issue applicant takes with the rejection”. The examiner technically need never concern himself with the creation of any clear issues against his rejection. The examiner only ever needs to concern themselves with giving notice of valid grounds of rejection and withdrawing them when appropriate. Nothing else concerning any “clear issues” is technically their responsibility, though surely it can be, and is, helpful for the examiner to help the applicant make the issue he takes with the claims clear for others to read. And we all ought to help folks out.
That presumes though that they want to be helped out. Some folks are dead set on framing their arguments in reta rded terminology, or attempting to frame what the examiner said in their own terms (aka erecting a strawman for them to knock down). This is preposterously common. That actually also happened in the instant case. More’s the pity. It happens so often that I’ve developed a response. See if you like it:
Applicant argues that the examiner says x. The examiner never said x and never will. (insert additional explanation if I feel like it or feel generous for the person obviously drowning). If the applicant requires further explanation the examiner is available as below.
“ The office merely need provide notice of the grounds of rejection.”
It’s a bit more than that.
“Applicant argues that the examiner says x. The examiner never said x and never will. (insert additional explanation if I feel like it or feel generous for the person obviously drowning). If the applicant requires further explanation the examiner is available as below.”
The above is fine, as far as it goes. However, if “Applicant argues that the examiner says x”, it can be because Applicant legitimately misunderstood what you said. So your template imho should be revised to include a spot to restate what you said in other terms.
Try to remember that when we read claims, we read them through the filter of what we meant to claim and you guys read them, with something beyond reasonably broad interpretation bordering on impermissible gist type reasoning. We are not mind readers. So, when you point to paragraph 37 without explanation or even with a terse half sentence of explanation, we don’t always understand what you are saying.
If you want to avoid confusion, try adding a glossary to the office action. something like
Ref1 item 423 is analogous to claim element A
Ref 1 item 210 is analogous to claim element B but doesn’t do c but Ref 2 item 101 is a little like item 210 and does do c…so we think it would be obvious to modify item 210 to also do c…
If you’re right your right. If you’re wrong we can explain why.
I have yet to see an office action that does that. Instead for element A I get directed to 3 separate paragraphs which mention 17 different components, none of which look like element A to me.
“it can be because Applicant legitimately misunderstood what you said.”
I totally understand that Les. And more’s the pity we must make a written notice of the grounds of rejection rather than an oral presentation where the party having the grounds delivered to them may ask a question when they become confused. But, we’re still stuck with the 18th-20th century model of prosecution. At least we’ve started the pre-first action interview practice. That’s a start. But when we’ve moved prosecution into the 21st century I’ll be a lot happier. This whole “just send them a written action” nonsense is a recipe for disaster and always was. But it probably was the best ancient people in 1951 could do.
“So your template imho should be revised to include a spot to restate what you said in other terms.”
Yeah I do that in my explanation sometimes. You also have to understand though that I’m a human being, and as a human I’m subject to simply being annoyed with someone’s incompetence at not understanding a very simple rejection and needing to get on with my day. I have a bit more to deal with than some dipsht that doesn’t understand basic prosecution in a given art. If it’s something super complicated then sure, I’m more generous than I am even with dipshts that need simple things explained to them. But yes, I try to explain complicated stuff in my FAOM.
“Try to remember that when we read claims, we read them through the filter of what we meant to claim and you guys read them,”
Well sometimes you do, if you drafted them and can remember what you meant to claim. But yes, I know that is sometimes done.
“with something beyond reasonably broad interpretation bordering on impermissible gist type reasoning”
Meh, maybe sometimes, but I wouldn’t say I do that anymore hardly at all. Even so, usually the issues between me and applicant have nothing to do with disagreements on the scope of the claim. I effectively rule the scope of contested claims with an iron 112 2nd miyazaki fist these days anyway. When either of us detects a claim construction issue, I either relent, or I make him relent. I have yet to have any serious claim construction disputes not resolved since miyazaki. So you’re welcome to have your secrit interpretation (i.e. what you “meant by the claim” that you didn’t bother to make explicit or very explicit), and I’m free to wrestle it out of you and put on the record in explicit terms. That’s usually what happens and claim construction differences are effectively ended, once they’re found, with miyazaki around. And I keep a sharp eye out for them.
“If you want to avoid confusion, try adding a glossary to the office action. something like”
Lulz because I have infinite time. I already include definitions of terms I think might be key to folks.
“Ref 1 item 210 is analogous to claim element B but doesn’t do c but Ref 2 item 101 is a little like item 210 and does do c…so we think it would be obvious to modify item 210 to also do c…”
Anyone writing the above is a ta rd. I don’t cite “analogous” elements as meeting limitations and nobody should be. It’s either the limitation or it isn’t. And I sure as sht don’t 103 a function of one “item” onto another “item” that doesn’t do that function. You either bring the whole “item” in or you leave the whole “item” out. You’ve been prosecuting softiewaftiewarez too much seeing that kind of nonsense. But yes, I understand what you want, an explanation built into the rejection, and I already do that anywhere I think it would be key.
In any event, good chatting, if you have anything further go ahead but I’m wrapping up my end.
Parallel to Les, it appears that you may be saying is that your response to his previous arguments had nothing to do with the actual grounds of the (initial) rejection.
If he has already argued against that (initial rejection), his current argument against your response seems on point, instead of how you seem to want to portray it.
Just an impression mind you, as the actual facts are not at hand.
“arguments had nothing to do with the actual grounds of the (initial) rejection.”
That’s correct, they had to do with his arguments. Not the grounds of rejection. Amazing find there sherlock.
“If he has already argued against that (initial rejection), his current argument against your response seems on point, instead of how you seem to want to portray it.”
You might disagree if you were present. I mean it’s almost laughable.
To be sure, I hope this guy wins, except on one of the grounds (a simple anticipation grounds for some claims). His invention is kick ass. He has accomplished something in the real world that’s actually valuable. And for inventions such as this, I’d be willing to give the guy a patent. But then, I’m not congress, or the courts. They insist on some other criteria being met as well.
Without the facts in front of me 6, all I can do is ‘sherlock.’
That being said, does his response to your response indicate either
a) he repeats the arguments in his first response as if reprinted in the second response, or
b) addresses the fact that yourreply to his first response had nothing to do with the actual grounds of the (initial) rejection?
Do you understand (yet) how path b) is possibly a viable response to your reply to his first response?
A further thought, did you in your reply also add a new grounds of rejection, without closing the loop on the first grounds of reject-his response to those first grounds of rejection?
In other words, it appears that you may have oopsied.
See 707.07 Completeness and Clarity of Examiner’s Action, citing
37 C.F.R. 1.104 Nature of examination.
(b) Completeness of examiner’s action. The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable.
“he repeats the arguments in his first response as if reprinted in the second response, or
b) addresses the fact that yourreply to his first response had nothing to do with the actual grounds of the (initial) rejection?”
Nope. And b would be irrelevant anyway. And I went ahead and presumed he meant to do a for the purposes of the answer.
BRAIN LIFE, LLC v. ELEKTA INC
link to cafc.uscourts.gov
The Federal Circuit ultimately held that the Kessler doctrine allowed an accused infringer the right to continue to manufacture and sell, and grant to his customers an immunity from suit, the products that were subject to a patent infringement suit after a judgment of noninfringement under circumstances where there is no claim preclusion and no issue preclusion that would otherwise prevent a lawsuit against further infringement.
OT, but why is Jimmy upset?
After all, it is only data and data wants to be freeee!
Free to be gathered. Free to be analyzed. But, ulp, let’s just apply that to others and keep our Disqus settings at maximum lockdown.
link to news.yahoo.com
/off sardonic bemusement
Ah, from his vapid script, meds only…?
Malcolm, you are slipping.
And in related news, Hal Wegner continues to point out how the Patent Office, at the control of the Executive Office (the same ones directing the gathering of the freeeee! data), continues to operate in the shadows with no nominated (and Senate-vetted) and thus to some degree accountable director. Instead, a sub-tier position with questionable authority continues to be the puppet of an un-named control point, all the while an identified political lobby group continues to have some rather un-freeee! (hrumph) data-style access and influence behind closed doors.
Where is Malcolm’s (considerable) outrage at those ‘gaming the system’ and ‘the system is broken,’ when it comes to some truly powerful machinations?
truly powerful machinations
LOL.
Keep drinking Hal’s kool-aid. The dude completely missed the boat on the most important Supreme Court patent decision in the past ten years and his underlings at firm-not-worth-mentioning continue to demonstrate that they simply do not get it.
As for these “machinations”, when there is evidence that this “identified political lobby group” (which for whatever reason you seem incapable of naming) is actually “breaking” anything at the broken PTO, please let everyone know.
for everything off of your limited crusade menu, you demand ‘proof’ and ‘evidence.’
Not at all.
I’m sure it seems that way to you, though. Keep digging.
Y.
A.
W.
N.
Hauge and ERI fall out, but reach agreement to allow them to go their separate ways in peace.
Hauge is an expert on “pressure exchangers” and has somehow to continue to make a living, doing what he is competent to do, and what he knows best. I imagine that also the law of the USA would see as unlawful any provision in a Termination Agreement that purports to stop such a technical expert from ever resuming practice in his/her field of expertise.
On that logic, “intellectual property” cannot stretch as far as everything Hauge knows about pressure exchangers, all the “know how” he has in his head. Or can it?
Max, On that logic, “intellectual property” cannot stretch as far as everything Hauge knows about pressure exchangers, all the “know how” he has in his head. Or can it?
To the extent he has an obligation of confidentiality, Mr. Hauge has an obligation to keep confidential information including trade secrets confidential. He cannot disclose, in my opinion, that information in patent application he files, or use it adversely against the owner of the trade secret.
Unfortunately in this case, the settlement agreement did not address any obligations of confidentiality or trade secrets. It simply assigned intellectual-property.
I think the question being begged is “Are Trade Secrets a form of Intellectual Property, broadly defined (broader than a strict “Patent Only” sense)?”
Is there some leaning towards such, given the Prior User ‘Right’ rationale present in the America Invents Act?
Absolutely not.
Thanks Jonas.
But once again, your brevity is not satisfying. – Just too simple.
One of my favorite Einstein quotes come to mind:
“Everything should be made as simple as possible, but not simpler”
Your response is that too ‘simpler.’
I think, Ned, that the scope of your “that information” is unclear. By that I mean that what is under the umbrella of “confidential” is not clear.
I see an undistributed middle between A) that which has been expressly picked out and identified as “Confidential” and B) that much more extensive knowledge of an employee, not yet expressly picked out and labelled as Confidential, which, in good times of harmony between them, neither the employee nor the employer would nevertheless think fit for the employee to divulge to a competitor.
When a technical expert is an employee, how much of that expert’s sheer technical know-how belongs to him, and how much is Confidential, that is to say, quasi the “property” of his employer? Is this a grey area?
Max, if the trade secret owner is going to contend that the ex-consultant or ex-employee has or possibly could use or disclose his trade secret, he must identify with particularity the trade secret, demonstrate “use” or potential use in business, and that it has given the owner of the trade secret an actual or potential commercial advantage over his competitors who do not know the secret.
I would add Ned, the general requirement that the Trade Secret holder took identifiable steps to protect the nature of the Trade Secret.
The fundamental value of patents is that the “technology” or “intellectual property” is spelled out in the spec and claimed in the claims. Anyone who has ever litigated a trade secrets case (on either side) knows that relying on them for protection of “technology” or “intellectual property” is a complete joke and a total disaster for both sides.