Pending Patent Cases in Decline

By Jason Rantanen

Over the past few months, I have heard numerous comments from folks about the perception that patents – or at least, enforcement of patents – is in decline.  Major substantive decisions by the Supreme Court – in Mayo, Alice, Nautilus, and Octane Fitness – have provided new tools for patent challengers to draw upon in infringement suits, and inter partes review has become an almost automatic procedure.   So far, the empirical evidence has supported this perception.  Last month, Dennis wrote about Lex Machina recent report on numbers of new patent case filings, which revealed a substantial drop in patent case filings over the past few months and a 40% decrease in numbers of filings in September 2014 as compared to September 2013.  Edit: yesterday Brian Howard of Lex Machina posted an update with October data showing a slight uptick over September.

Case filings tend to be highly stochastic, however, and a case that’s filed one day could be terminated the next or live on for quite a while.  To take another look at the state of patent litigation, I wanted to see whether there are changes in numbers of pending cases.  If cases are terminating faster than new cases are being filed, then the number of pending cases would drop.  On the other hand, if despite the drop in new filings the termination rate is also down, then the number of pending cases would remain stable or even go up.  My methodology is at the end of this post, but the bottom line is that the below chart reports the number of patent cases that are pending as of the first of each month using Lex Machina as my database.

Patent Cases PendingThe below chart shows the deltas from the above chart; in other words, how big the positive or negative change was from the previous month.

Pending Case DeltasThese charts are consistent with the conclusion that the number of patent litigations is indeed in a declining state, although it’s worth observing that the number of pending cases is still well above what it was as of October 2010.  Of course, one important piece of context is the anti-joinder provisions of the AIA, which led to at least some of the increase after September 2011.  If anyone has ideas for parsing these out (short of manual review), I’d be interested in hearing them. And this data doesn’t tell us anything about the quality of the patent litigation.

In addition to the decline in pending cases, I also thought it would be interesting to consider these numbers in contrast with the numbers of new applications, which, as the below chart indicates, do not exhibit a similar decline.  (Note that I set the vertical axis to start at 20,000 in order to improve readability).  One explanation is that it takes longer to shift out of application filing mode than it does to shut down a litigation.  That said, it’s also possible that companies continue to file patents based on the belief that patent law is like a pendulum and perhaps it will swing back in the other direction.  A third possibility is that the real value of patents lies not in their enforcement value, but in other areas: in signalling, in incentivizing employees, or in defensive publication. Apps

Methodology: For the first two charts, go to the “Cases” tab on Lex Machina.  Select “Patent” under “Case Type.”  Under “Filed On,” choose FROM 2000-01-01 TO YEAR-MONTH-01.  Run the search on a monthly basis (i.e.: as of the first of the month).  In addition, run a second search adding the TERMINATED “TO” field using the same YEAR-MONTH-01 dates.  Record those numbers as well.  To obtain the numbers of open cases as of each date, subtract the “Terminated” cases from the cases filed to that date.

For the second charts, the data is obtained from the Patent Dashboard (which appears to be very unstable at the present time and works only intermittently for me).  I used the downloadable excel file.  Also, as Chris Cotropia pointed out to me, pure continuations are included in the “new application” portion, and these are more like RCEs than new applications, or divisionals or CIPs.

Thanks to my research assistant, Alex Lodge, for help in collecting the Lex Machina data.

Edit: Anon observed that RCEs looked fairly constant and asked about a flipped graph.  Here is the graph with RCEs on the bottom. RCEs on bottom

121 thoughts on “Pending Patent Cases in Decline

  1. 12

    Pending patent case filings are down…

    That’s excellent news and hopefully, for the sake of the patent system, the trend will continue. It certainly should continue if the USPTO is earnestly working properly to rid itself of the lowest forms of patenting rather than doubling down on its traditional efforts to find magic words for its neediest applicants to rely on. Regardless, even with the small number of important decisions now in place, if we assuming that the prosecution side is rational and knows how to read a legal opinion, the decades-long stampede to stuff the USPTO and the courts with tin-guilded claims drawn to ineligible subject matter should show signs of subsiding.

    A return to something resembling normalcy is not going to happen overnight, of course. Thankfully, there’s more decisions to follow which are going to negatively impact “do it on a computer” “innovations”. Those decisions will help to clear up some of the the alleged “confusion” floating out there about what’s patentable and what it isn’t.

    1. 12.1


      1. A computer-implemented method for selectively trapping output streams containing one or more medication data intended for a pharmacy, comprising the steps of: (A) trapping a printer output stream of an order entry system, the printer output stream identifying a source of the printer output stream; (B) parsing the output stream for prescribed information in accordance with a set of configuration rules associated with the source; (C) testing the parsed output stream against an order database to determine suitability of the medication data therein for automated handling by a medication preparation system associated with the pharmacy; (D) using the medication preparation system, preparing one or more medications corresponding to the one or more medication data determined to be suitable; (E) releasing only those portions of the output stream that are not suitable, the released output stream being printed for manual handling; and (F) population a data structure with data parsed from the printer output stream in accordance with the set of configuration rules.

      Let’s remove all the silly, abstract labels about “pharmacies” and “medication data” and the source of the data (“printer data” — totally different from other data!) from the claim and see what sort of “technology” lies underneath this bold attempt to protect certain kinds of data from being processed by certain kinds of institutions:

      1. A computer-implemented method for selectively trapping output streams …, comprising the steps of: (A) trapping a …. output stream….; (B) parsing the output stream for … information in accordance with a set of configuration rules …; (C) testing the parsed output stream against a … database…; (D) [perform an old conventional task related to the data in the output stream]; (E) releasing only those portions of the output stream that are not suitable, the released output stream being printed; and (F) populating a data structure with data parsed from the ….output stream in accordance with the set of configuration rules.

      Is there any innovation there? I don’t see any. Just the usual functionally claimed nonsense describing conventional data processing steps (e.g., identify, compare, output, store).

      For that reason, the Federal Circuit affirmed the USPTO rejection of the re-examined patent today. Good riddance.

      1. 12.1.1

        So what are the new steps that are claimed in the smelly arts? None. What about the mechanical arts? None.

        So, MM, you are again playing your little hindsight games and characterizing information processing as something different than your smelly arts when it is not.


          Lots more. Which new steps depend on which product.

          Mechanical arts – depends on which art. There are lots of ways to implement a lever…

          You have no concept of information. As pointed out, math doesn’t care about units.


          characterizing information processing as something different than your smelly arts when it is not.

          Of course “information processing” is different from other “arts” that aren’t called “information processing.” Everybody knows that. In part, that’s why Mayo v. Prometheus was decided, 9-0, and it will never, ever be overturned. That was an information processing case. The data from which the recited “new” inference was drawn (inference = information processing) was obtained using conventional machines and chemicals but that was properly deemed to be insufficient to rescue the claim. Why? Because the claim protected that ineligible information processing step (the “inference”), certainly when read from the perspective of the skilled artisan praticing those old conventional data gathering steps.

          But you know all this already.

          what are the new steps that are claimed in the smelly arts?

          Depends on the claim. Typically, in an eligible chemical synthesis claim, it’s a new combination of physically transformative steps that is recited.

          And by the way … “smelly arts”? It’ s probably not wise to insult the Ph.D.s in the room … unless you know already that they aren’t going to like you for some other reason.


            >Depends on the claim. Typically, in an eligible chemical synthesis >claim, it’s a new combination of physically transformative steps >that is recited.

            As opposed to a new transformation of information. See no difference.

            >And by the way … “smelly arts”? It’
            If you haven’t figured it out (and you haven’t), I say that to illustrate that you are a thin-skinned dolt by the your reaction.


              See no difference.

              No, I just see you repeating your own unsupportable and soundly rejected conclusions. Again: processing information is different from objectively transforming physical matter. The law already recognizes the difference and so, too, does nearly everyone on earth. In part, that’s why we call it “information processing” and not just “processing.”

              you are a thin-skinned dolt

              Deep, thoughtful stuff. Keep it coming! You are definitely winning as long as you keep telling everybody that you are. Shout it from the rooftops. Hooray for you!


            By the way, that is the most lame response to my challenge. You have just proved that I am correct. Your argument: oh well we have a different molecule that is made and then mixed with another different molecule.

            Oh wow. Gee so different. MM I’ve done patents for mechanical, smelly arts, and ee/cs. There isn’t a difference in the arts. And you can’t even come up with one example. Not a surprise. Your arguments are always fallacious and here is another example where I go right to the core of what you argue and you can’t come up with one example. You lose.

            (I know professionals don’t change. Professionals don’t lose. Professionals come back the next day and write what’s on their policy sheet. I know. That might make a good song. )


              Your argument: oh well we have a different molecule that is made and then mixed with another different molecule.

              That’s not an “argument” but, far more importantly, it’s your “argument” and not mine.

              There isn’t a difference in the arts. And you can’t even come up with one example.

              One example of what? The difference between a car and a bike? Or the difference between a bike and “taking a ride on a bike”? Or the difference between a “taking a ride on a bike” and “determining what color handlebars my son would prefer”? You don’t see any differences?

              Your arguments are always fallacious

              Deep stuff, NWPA! You left out the part where you tell some lie about something you imagined that I said last year.

              I know professionals don’t change. Professionals don’t lose.



                So, you have NO examples of the difference between the smelly arts and information processing. So, your arguments that they are completely different must be wrong.

                You just don’t get it.

  2. 11

    The blog subject here is patent law suit pendency rather than just the admittedly erratic rate of new patent suit filings, which may be too soon to accurately judge. That raises an interesting question as to the pendency effect of the more than 1000 IPRs a year now being filed in response to law suits or threats of law suits. IPRs [and a few CBMs] are now an attractive alternative to a quick settlement payment to the patent owner to avoid litigation costs, which is presumably a major incentive for a major portion of the roughly 97% of patent suits that settle before trial? Could IPRs actually be increasing law suit pendency somewhat, for and during the time period in which the parties are waiting to see if the IPR petition is granted, or, waiting for a final IPR decision? Especially if a discovery stay is granted in the co-pending litigation, since that is usually the most costly initial impact on defendants.

    1. 11.1

      Good points Paul – there may be a bi-modal distribution that reflects your ‘hopes.’

      I just don’t think this story (or the data shared) can support that view.

    2. 11.2

      I’m looking into how to calculate IPRs. I agree – this would be useful to know. My intuition (based on the PTO’s own statistics on IPRs) is that the number of infringement litigations in which an IPR is co-pending and the number of infringement litigations that are stayed as a result of a post-issuance proceeding has probably risen substantially since 2011.

      1. 11.2.1

        Of course one way is comparing the number of new IPRs filed [times 0.8 for the rougly 80% that are clearly related to pending litigation] vs a vs the number of new patent lawsuits filed over respective time periods . But any data from prior to one year after IPRs first became available would be misleading and should be excluded because of the requirement for a defendant to file an IPR petition within one year of being hit with the complaint. Also [presumably somewhat as with the prior inter partes reexaminations], the usage of IPRs should increase once conservative attorneys and clients realize their odds of success vis a vis trying to assert invalidity based on prior patents or publications in jury trials.

    3. 11.3

      Paul Could IPRs actually be increasing law suit pendency somewhat, for and during the time period in which the parties are waiting to see if the IPR petition is granted, or, waiting for a final IPR decision?

      It seems reasonable that IPRs, when they result in a stay of pending patent suit, would increase the length of time that the lawsuit is pending. That’s not surprising, is it?

      I don’t often see that statistic (length of pendency prior to resolution, regardless of the form of the resolution — judgment, settlement, dismissal, etc) cited as it doesn’t seem particularly useful as an abstract measure, at least not compared to other measurements (e.g., time from filing suit to a verdict, in cases where there is a verdict).

  3. 10

    Small world:

    link to

    Patent litigation is inherently inefficient for business. Hardly surprising then, is it, that businesses are looking to prune how much of it they indulge in.

    Welcome to my world! England has long deemed litigation to a a “last resort” and Asia sees as a business failure every act of issuing court proceedings. On Mainland Europe, patent litigation is more like ADR than a full-on US-style adversarial action.

    In a world where more and more things “go viral”, perhaps the ROW mindset is spreading to America, where Business Efficiency trumps most everything else.

  4. 9

    Pending patent case filings are down…

    And that’s good news for everyone.

    Major substantive decisions by the Supreme Court – in Mayo, Alice, Nautilus, and Octane Fitness – have provided new tools for patent challengers to draw upon in infringement suits, and inter partes review has become an almost automatic procedure. So far, the empirical evidence has supported this perception.

    Really? That’s your explanation?

    Are you sure it doesn’t have anything to do with the extreme trend toward cross-licensing among large entities? Particularly in the year? Like, you know, these:

    Nokia, Samsung Extend Patent-Licensing Deal for 5 Years (November 4, 2013)

    Qualcomm Buys Mobile Patents from Hewlett-Packard (January 24, 2014)

    Google, Samsung Strike Patent Cross-Licensing Deal (January 26, 2014)

    Ericsson and Samsung Reach Agreement on Licensing Terms (January 27, 2014)

    Twitter Acquires Over 900 IBM Patents Following Infringement Claim, Enters Cross-Licensing Agreement (January 31, 2014)

    Google and Cisco Enter Into Patent Cross-Licensing Agreement (February 04, 2014)

    Patent War-Weary Samsung Inks Cross-Licensing Deal with Cisco (February 05, 2014)

    Nokia and HTC Settle Suits and Pen Cross-Licensing Agreement (February 10, 2014)

    Technicolor Signs New Patent License Agreement with Sony for Digital TV (February 27, 2014)

    Dell, Microsoft Sign Android Cross-License Patent Deal (March 26, 2014)

    Apple and Google’s Moto Settle All Patent Litigation (May 16, 2014)

    IBM and Pure Storage Announce Patent and Cross-License Agreements (June 20, 2014)

    Patent Cross-Licensing Agreement Signed by Microsoft and Canon (July 2, 2014)

    Samsung Case Shows Microsoft Reaping Billions from Android Use (October 06, 2014)

    Google, LG Shake Hands on Global Patent License Agreements (November 6, 2014)

    Given that the chart above closely matches the pace of cross-licensing in this area, I’d say that “empirical data” suggests a rather different cause for decreased filings than the Alice decision.

    1. 9.1

      That’s a good collection of recent major patent cross-licenses, and it is interesting to note their common technology – smartphones and other software related patents. Could the demontration of billions essentially wasted on ultimately unproductive patent litigation in the “smartphone patent wars,” especially by Apple, have had as significant an influence on other patent dispute settlements in that technology as Alice or other recent cases?

      Also, could another recent patent-litigation-reducing factor, not mentioned above, be the FTC’s view on trying to get an injunction, or refusing to give a reasonable rate royalty, with FRAND-subject patents?

      1. 9.1.1

        That’s a good collection of recent major patent cross-licenses, and it is interesting to note their common technology – smartphones and other software related patents.

        (My searching also revealed extensive licensing and cross-licensing from this year in biotech and other areas of electronics. I chose to list only the names of licensees that I thought we’d all recognize – adding the others might have diluted the point.)

    2. 9.2

      Good point – an increase in cross licensing could be connected to a drop in litigation rates. A few things to consider:

      1) That there were many reported transactions from the past year doesn’t tell us anything about whether there is actually an increase in the number of transactions. (And even an increase in reports of transactions doesn’t necessarily confirm that there are more transactions occurring, since it could just be due to greater publicity of these transactions.) To really rely on this point, we’d have to have some reliable way of demonstrating an increase in patent transactions.

      2) Since 98-99% of patents are never litigated, increased transactions wouldn’t have a direct impact on actual litigation filings unless the patents that are being licensed are those that would have been asserted in litigation. Rather, it is at least equally plausible that the cross-licenses are primarily coming from the other 98-99% of patents. One common argument for increasing the secondary market for patents is precisely to enable those patents that have previously lain follow to be monetized; this would suggest that the increase in licensing wouldn’t be connected with a drop in litigation.

      3) An overall topic of my post is about the perception that the game isn’t worth the candle; in part, I suggest, because of the recent Supreme Court decisions. Several of the prominent examples that you mentioned are litigation settlements (notably, after the Court granted cert in last term’s cases), which would be consistent with a perception that it’s not cost-effective to litigate patents. And if the majority of patent transactions are cross-licenses, it would further support the idea that litigation is dropping not because of increasing patent transactions but because companies are just getting out of the game with respect to their competitors – a devaluing of patents rather than an increase in their valuation.

      4) As NWPA noted, changes in who was and is no longer filing patent suits might help answer the questions about what’s going on. A project for another day.

      1. 9.2.1

        blockquote>1) That there were many reported transactions from the past year doesn’t tell us anything about whether there is actually an increase in the number of transactions.
        That’s true, but it’s notable that those deals include some of the most frequent litigants over the last decade. Also, these aren’t one-off deals for specific technologies: many of these licenses include large portfolios, extensive geographic reach, and extended durations.

        The wave of litigation over the last decade began with Apple’s “going nuclear” approach to Android, but it’s simmering down now – and was nicely bookended by the Apple/Google detente earlier this year. So if you’re going to make an argument about the cause of diminished litigation, the changing business climate should at the very least a strong contributor, and possibly the leading cause.

        While I agree with your comment that “98% of patents are not litigated,” there is certainly a correlation, right? Licenses suggest collaboration; litigation is premised on hostility that damages relationships. There are a few instances where companies can concurrently do both, but it’s unusual.

        On the other hand, Jason – if you’re looking specifically at NPE litigation, then, yes, PGR and fee-shifting are key factors. I don’t believe that Mayo, Alice, Nautilus, and Octane Fitness are as relevant, because the patent community is still digesting the impact of those decisions.

        As for filing rates: Outside of the realm of NPEs (which probably aren’t a significant source of filing, anyway), I wouldn’t expect a significant drop in filing. The public discussion of Alice has response of the patent community has not been toward filing fewer applications – but on filing different applications that are more likely to survive review under Alice. That seems appropriate, because the biggest filers are centrally technology companies, and their technologies don’t fit the description of the types of inventions that the Alice opinion targeted (“organizing human behavior,” etc.) So it’s not a matter of adjusting their patent portfolios; it’s a matter of ensuring that the applications accurately reflect the merit of their inventions. (I wrote about this topic over the weekend: Post-Alice Patent-Eligible Business Methods.)

        Jason, I support your efforts to report on trends in this area – but I believe that more analysis is required to support any specific statements about the causes. There are some strong narratives being constructed around current legal trends; and unfortunately, some narratives are driven by ideology and policy agendas, at the expense of objective accuracy. Patently-O has a strong track record of objective reporting, and I’d like to see that standard maintained.


          I’m curious about your comment that “As for filing rates: Outside of the realm of NPEs (which probably aren’t a significant source of filing, anyway), I wouldn’t expect a significant drop in filing.”

          My understanding is that NPEs did make up a significant source of infringement case filings during this period. The controversy is less over the % of cases filed by NPEs (although there is disagreement here that flows from classification issues) and more over whether there has been a meaningful change in the % of litigants that are NPEs (and whether it’s the latter that matters or the former). Cotropia, Kesan & Schwartz has some really carefully collected data on these numbers. (They report that 37.5% of patent cases filed in 2012 were filed by “Patent holding companies,” but they comprised only 15.4% of unique patentees that filed suit).


            My understanding is that NPEs did make up a significant source of infringement case filings during this period.

            Ah – yes, I meant application filing rates here. And I agree with you that application filing rates haven’t decreased, which reflects the reaction of the non-NPE patent community. I agree with you that NPEs are not significant as a percentage of application filings, and are a very significant percentage of litigation filings.


          The ‘strong narratives’ have a deeper history than any notion of ‘objective accuracy’ here
          (least wise if you include comments in the scope of ‘reporting’)


            The ‘strong narratives’ have a deeper history than any notion of ‘objective accuracy’ here

            Your super sincere concerns about “objectivity” are really appreciated, “anon.”


  5. 8

    “40% decrease in numbers of filings in September 2014 as compared to September 2013”

    Sounds like they’re taking the trash out rather nicely of late.

  6. 7

    Considering how many IPRs are now pending, if they stick to their one year deadlines I would think that alone should be increasingly reducing pending patent litigations?

    I also think there is a considerable disconnect between making decisons to file applications and decisions to file patent suits, including often not being made by the same personel, and a huge difference in anticipated costs.

  7. 6

    Willianson v. Citrix Online, LLC
    link to

    Reversing the District Court, the Federal Circuit held that “module” plus function is not to be construed as a means plus function element based on a strong presumption against claims being construed to be means plus function unless they use the magic word “means.” A dissent strongly disagreed, agreeing with the District Court that “module” was essentially a nonce word cannot convey specific structure. The majority held that module did convey structure.

    The claim term at issue read:

    a distributed learning control module for
    receiving communications transmitted between
    the presenter and the audience member
    computer systems and for relaying the communications
    to an intended receiving computer
    system and for coordinating the operation
    of the streaming data module.

    From the dissent:

    “Module” is a “nonce” word that can operate as a substitute
    for “means” in the context of § 112, paragraph 6.
    As the district court found, “‘module’ is simply a generic
    description for software or hardware that performs a
    specified function.”2 J.A. 31. Generic terms such as
    “mechanism,” “element,” “device,” and other “nonce”
    words that reflect nothing more than verbal constructs
    may be used in a claim in a manner that is tantamount to
    using the word “means” because they “typically do not
    connote sufficiently definite structure” and therefore may
    invoke § 112, paragraph 6.

    1. 6.1

      So Reyna another BA’er that never showed any interest in science before O’Bummer put him on the Fed. Cir.

      1. 6.1.1

        Reyna has it correct: one should not be able to get around MPF simply by using a “module”, “device”, etc. And this is why the whole idea of needing a strong presumption to overcome this is a bit crazy; what evidence can you present that a “module” is not MPF? To me, the best evidence is to look at the specification and see that the “module” has no structure whatsoever, but that means you’d have to already prove that “module” is MPF to do that. It’s a catch-22.


            “colorant selection mechanism for receiving said modified appearance signals and for selecting” held to be MPF. Massachusetts Institute of Technology v. Abacus Software , 80 USPQ2d 1225 (Fed. Cir. 2006)

            “a selection device adapted to determine whether data is able to be written directly to said peripheral device” held to be MPF. Intel Corp. v. VIA Technologies Inc., 65 USPQ2d 1934 (Fed. Cir. 2003)

            I could find more.


          Except to one skilled in the art (like me), structure is conveyed by the word module and functional description.

          That is reality.


            Google bucks can change the way the judges interpret reality, but they can’t change science.

                1. What reality jesse? It is pretty clear that you don’t understand information processing. You apparently are a long-time coder that never bothered to understand the theory behind his work. Pity. A miserable mind has evolved. Read.

                2. Poor jesse exhibits every sign of a kool-aid induced lemming mouthing the anti-software patent mantra with a world view shaped by a belief system that patents must be bad.

                  His version of “reality” is purely 2 Dimensional, and he appears unable to grasp the real world. He really does believe that his version of reality is the true reality and he really is trapped in a circle, unable to step above the line.

                3. “anon”: Poor jesse exhibits every sign of a kool-aid induced lemming

                  Just last week you were crying to Dennis about your little buddy NWPA being treated unkindly.

                  Funny stuff.


            structure is conveyed [to skilled people like me] by the word module

            Really? Please describe the structure in objective structural terms for everybody, such that the structure is distinguishable from prior art structures in those terms.


              This is one reason why I see the likes of NWPA resort to emotion laden posts.

              Malcolm, while using “objective structural terms” is an option under the law, such a manner of describing the invention is NOT a requirement.

              Of course, you already know this, right?

              And of course, instead of responding in an intellectually honest way (or better yet, stopping your relentless spin attempts and making this obvious point of law an issue), you “conveniently” ignore this valid (yes valid, regardless of the fact that it is ‘anon’ that supplies the fact, the fact remains a fact) counterpoint, and merely attempt to kick up dust in your usual manner.

              Please try to move the dialogue along by not resorting to your trite and stale tactics.



          It is another one of O’Bummer’s non-science (I hate bean boys) and yet I will do anything for an appointment as judge for life people.

                1. You keep saying that, but you can’t count.

                  I just pointed out that you don’t think about science.

                2. Mr. ankle bitter please try to get some substance to your posts. At least say something that has some meaning to it.

    2. 6.2

      Shalom 112(f) claim interpretation, shalom 101 rejections for pure software claims!

    3. 6.3


      Why do you bring up a case, show only a portion of the dissent, and omit any meaningful discussion of the rest of the story? (said in the best Paul Harvey tones)

      1. 6.3.1

        anon, the rest of the case is uninteresting. The majority all but says that if some structure is implied by “module” then that is enough given the “strong presumption.” That is the debate here.

        I thought you would approve of the majority view.


          I hardly think that the equivalency of hardware and software is “uninteresting.”

          Nor is it “uninteresting” the ability to use language that is functional outside of 112(f).

          Of course, we both know that these are things only too often ignored in discussions…


            Even worse than the tortuous interpretations is the clear choice of remaining in ignorance to the valid counterpoints put on the table for discussion.

            Ned’s tactic of ignoring these points of law and fact are tantamount to an internet- style “shouting down” of those things that are simply inconvenient for Ned’s IMHO version of law.


              It is ridiculous. It is in many ways worse than MM. R. Stern the architect of Benson is like Ned. My guess is that is Ned is merely copying Richard.


              Night, until you can tell me what the structure of a one is, or, for that matter, any number, then I would counter that it is you that is simply not getting it.

              Calculating numbers from numbers is, without more, useless. Without even getting into the constitution, there are multiple ways to see that information processing, without more, is simply non statutory.

              The Supreme Court, not just Stevens, has long required at least some useful application to be claimed. Simply ending in a number which has meaning to the beholder or that might be used in some manner that is useful is not enough. The unanimous Supreme Court said this in Benson. They unanimously said it again in Prometheus.

              Now there was a dissent in Flook by Stewart, joined by Burger and Rehnquist. These three described the principle of Benson:

              “In Benson the Court held unpatentable claims for an algorithm that “were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use.” Id., at 64. A patent on such claims, the Court said, “would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” Id., at 72.”

              Now there you have it. Producing a number not limited to any particular art, technology, apparatus or machine or to any particular use … is a patent on the number and the abstract process to produce the number.

              But you insist the entire Supreme Court is wrong and that you are right. But why? Simple calling them names is not persuasive. Calling Stern names is not persuasive. Tell us why calculating numbers is statutory.


              “But you insist the entire Supreme Court is wrong and that you are right. But why?”

              They were wrong in Dred Scott. They were wrong in Plessy. They were wrong in Korematsu. They were wrong in Kelo. They were wrong in Citizens United.

              Do you need an explanation why?

              They are not final because they are infallible. They are final because that’s the way our system is set up.


              Ned, you and I have argued about this “structure of 1” argument you trout out. What is a “1” Ned? Does a “1” exist without you? (Hint: No.) It must have structure or you couldn’t think about it. The structure may vary depending on how it is represented.

              Information processing is great mate.


            I find writings such as this, from NWPA, wantonly and gratuitously offensive. Who do you think you are, to dismiss a SCOTUS judge as having “low intellectual activity”? Somebody with a significantly higher “intellectual activity”? Come on, seriously?

            I hope Dennis deletes them.

            But Night, they are also counter-productive. It is my experience that those who are intelligent and able to communicate effectively do not come to the idea of insulting others. They have learned that there is no need to do it. Their arguments are effective. Nothing more is needed. Anything more is counter-productive because it dilutes the power of their arguments.

            Those who routinely fail to get their point of argument across are the ones who do all the insulting.

            So when I see the insults I stop wasting energy, trying to understand the content (if any) which is not insulting.



            It offends you? Too bad. Stevens writings offend me and offend modernity. What offends me is the propriety that scoundrels hide behind to continue hold untenable and offensive beliefs.

            I note that you don’t address the substance of what I said. Stevens’ beliefs offend modernity. Taranto’s beliefs offend modernity. It offends me that Obama keeps putting people on the court that have zero science background.

            And, Max, try reading the interactions on this blog and in our political world. People have stopped responding to the substance. A good smack of truth is what is needed. If you are offended, then try to address the substance of what I wrote.

            Did you understand it? Do you understand that I am saying that Stevens medieval views on thinking are at the root of his views on information processing eligibility.

            Try to respond to that. And try to get that our system is broken. Money buys all and there is no real debate anymore in the USA. Side issues may be debated, but when an issue strikes to the core of any money-driven goal, then all debate ends. Eligibility of information processing is now political. Google bucks are everywhere.


            “Who do you think you are, to dismiss a SCOTUS judge as having ‘low intellectual activity’?”


            The beauty of our country is that we are free to criticize our “leaders,” both elected an non-elected. Go read J. Stevens’s decision in Kelo v. City of New London. Pure garbage. About as intellectually lazy and dishonest a decision from a court of last resort as ever written. Beyond shameful.

            “Somebody with a significantly higher ‘intellectual activity’? Come on, seriously?”

            While I think NWPA goes overboard sometimes, in this case he is spot on. There’s no reason to buy into the idea that these 9 are somehow the “intellectual elite” when it comes to law. They are political appointees. Some do go on to develop an “intellectual gravitas,” so to speak, during their time on the court, others (e.g. Roberts, Alito, Scalia) simply spend their entire careers grinding the political ax their master appointed them to grind.


            the valid counterpoints

            Not everyone believes that your “counterpoints” are “valid”.

            That could explain why people don’t talk about them with you. There are probably other explanations as well that have already been listed for you in the past.


              What you ‘believe’ is pretty much meaningless – it is what you are able to intelligently add to the conversation that matters – and exactly why I keep on imploring you to try to provide some discussion on the valid counterpoints provided for that very discussion.

              The absence says far more than you think it does, regardless of your personal feelings about me or your ‘belief’ about the validity of what I say.


            And I am offended by Max being offended. I hope Dennis deletes your post for being offended by my post and offending me. It is offensive.

    4. 6.4

      Instead of the semantic hair-splitting over whether or not an apparatus claim subject word and its associated claim term is vague enough to trigger 112(f) without using the magic word “means,” why are cases like this not remanded for consideration of an alternative rejection for lack of 112 “enablement?” If a spec does not have any disclosure meeting the requirement for a “means for” 112(f) disclosure how can it have an adequate 112 enablement?

      1. 6.4.1

        The answer Paul has to do with the subtle empowering of PHOSITA.

        When the Court strengthened one edge of the double-edged sword, they necessarily strengthened the other as well. See KSR


          Yes, you can certainly argue that KSR made PHOSITA’s smarter, by having more “common sense” for looking further around for usable prior art. But that was for combinable 103 prior art. The Fed. Cir. does not equate 103 obviousness adequacy for prior art purposes with the 112 enablement requirement for patent specificatin teaching disclosure adequacy. If the Fed. Cir. has ever cited KSR for a lower 112 enablement requirement I do not recall seeing it?


            You make two mistakes Paul.

            1) whether or not the Fed. Cir. “equate[s] 103 obviousness adequacy… with 112 enablement requirement” is besides the point, and

            2) you won’t see any case for lowering the 112 enablement requirement becuase such is not needed.

            You see, there is no LOWERING of the requirement, as much as the SAME requirement is simply easier to meet, and the SAME notion of PHOSITA dictates both what is obvious (or not) as well as the standard for what needs to be included in the application at all.

            You try too hard to pidgeonhole the effect of PHOSITA where there is no case law supporting what you are attempting to do.

            That’s the ‘beauty’ of the unintended consequences of the Supreme Court messing around with PHOSITA – there is only one level of PHOSITA for all the uses of that notion per application. The very strength you add to augment your obviousness analysis must also go to the benefit of the applicant as to including less in the application (note too that this concept is especially apt for the notion of “team” inventor/PHOSITA and software arts and structures – as I have explained in the past that the TYPE of structure is well known to PHOSITA and those types of details need not be included in applications to meet enablement.


              By that logic, patents don’t need to exist, as only one person can be knowledgeable in the art of the patent…



                Do you realize how asinine you make yourself look trying to apply ‘logic’ in a world that you know nothing about?

                Do you know that PHOSITA is not a real person?

                Your comment makes absolutely no sense whatsoever in relation to my comment or the discussion underway.

                Please do everyone a favor and at least try to understand the topic before you take your cheap shot at a speaker.


                1. So, if patents are supposed to be usable by a POSITA and a POSITA isn’t a real person, then I suppose patents are useless to people.

                  Your words.

                2. No jesse – merely your attempted spin at logic in a terrain you do not know or understand.

                  see Sun Tzu.

                3. No jesse – merely your attempted spin at logic in a terrain you do not know or understand.

                  Seems to me he understands most of these topics far better than you do.

                  But go ahead and insult him anyway, hypocrite.

                4. Seems to me

                  That would be a bug, not a feature Malcolm, as your love of the ends justify the means and pound the table of policy because you have neither fact nor law to pound is a much more viable basis of your support of someone who is obviously clueless here.

                  And may I ask, what is the basis of your calling me a hypocrite? Coming from you, the most hypocritical person on these (or any other boards – how goes your comparison of “the sizes of [your] transparencies” coming along?).

                5. Still, it “seems to me” that you don’t know what you are talking about.

                  What is the structure of a number?

                6. Questions asked many times of you, and you can’t answer.

                  It is the root of your problem with information processing…

      2. 6.4.2

        Paul, do you think the outcome here would have been different on the MPF issue if the controversy involved infringement instead of validity? Most often in court, the defendant argues MPF simply to limit the scope of the claim for infringement purposes.

        I don’t think the answer should vary depending upon whether the underlying issue is validity or infringement.

        I further think that the answer to the question of whether the claimant is intending to claim under § 112(f) must be a determination made on the face of the claim without reference to what is disclosed in the specification. If one of ordinary skill in the art would recognize that the applicant is intending to invoke the protection of § 112(f), then his attempt to do so should be accorded effect. Otherwise, the statute itself would prohibit burdening the claim with the limitations of § 112 (f) because it says in its own wording that the choice to invoke the statute is “optional.”

        The present cases a close case primarily because “module” has no “definite” meaning or structure as opposed to a word like “screw.” Still, the applicant did not use the magic words and clearly did not intend to invoke §112(f), and that choice must be respected. I think that is why the majority came out the way it did.



          You are doing that ‘spin’ thing again.

          To wit, your comment of “because “module” has no “definite” meaning or structure as opposed to a word like “screw”” is blatantly false, and the majority opinion discusses this item.

          Once again, you stake a position based on minority dissent reasoning and omitting critical majority reasoning (on a number of interesting points) in order to proselytize on your well worn agenda.

          This is monologuing of the worst order. At least those like jesse monologue based on ignorance of the law – an excuse that you just do not have.

          It is one thing to argue for a new law but it is another thing altogether to omit critical elements of a legal discussion in an attempt to advocate for a certain view.


            I only speak where the law is wrong with respect to the field it is attempting to take over. It makes the law worthless.


              You speak nonsense because you neither know nor care to know that which you wish to speak of.

              There is no “trying to take over” going on here. Patent law applies everywhere there is innovation in the Useful Arts.

              That is a fact that you seem unable to comprehend, a fact that keeps you trapped in a circle, my 2 Dimensional friend, while everyone else steps over the circle to escape and continue the dialogue, you remain behind, trapped in your monologuing world.

              How very sad.

                1. As usual jesse, your 2 Dimensional version of “reality” is very limiting to any true dialogue.

                  You did not even grasp (because in part you do not care to challenge your own belief system) just how much you don’t understand of the conversation here.

                  My remarks on Sun Tzu and 2 Dimensional thinking fit you to a T.

  8. 5

    That’s why I believe we should wait a couple of years before passing/proposing any new legislation, until the dust settles from all of these recent Supreme Court cases.

  9. 4

    Patent litigation is seen by corporations as a time-consuming, risky, distracting way to make money, either by getting royalties or by shutting your competitor down so you can sell more.

    When the economy is bad, you suffer through it, and the distraction isn’t as important when there isn’t much to do. When the economy is good, there are easier ways to make money than patent litigation. There are too many opportunities to chase, rather than trying to squeeze revenue from your competitors. Litigation still happens, but not as much. This doesn’t address the trolls, of course.

    1. 4.1

      Charles, I think there are naive types, like Steve Job, who actually believed he could stop people from copying the iPhone through patent protection.

      There are others, like IBM, who make money by aggregating enormous mountains of patents and imposing patent balancing payments on the weak — not unlike the mafia who offer , for a small fee, the weak protection from the wanton exercise of their power.

      There are many who invest in patents simply because they have been abused by the likes of IBM, and perceive the need to have their own mountain to level the playing field in negotiations with the likes of IBM or their competitors who are assembling their own mountains.

      So long as inside counsel do not advise management of the foolhardiness of all this, and why should they — it is against their own self interest, the investment in huge piles of patents will continue in the manner of a war that has gone on so long that no one really remembers why it started.

      Patents are most valuable in the hands of or from the hands of failed startups who came up with something new, and that others then copied. Patents then can be the failed startups only really valuable asset.

      Big companies, like TI, also have a period of time before they utterly fail to transition from a patent producing entity, to a patent enforcement entity. If the patents are not widely licensed, which they usually are, these patents can be quite valuable.

      1. 4.1.1

        Ned, so what? I think it is true that on the ground level patents aren’t pretty. So what? That is true about every mechanism that drives our society.

  10. 3

    Wow. Look at this paraphrased claim from a recent Judge Robinson decision concerning a motion to dismiss:

    “A method of supplying in-room beverage service to a lodging
    establishment that provides beverage dispensers in rooms of the lodging
    establishment for use by a plurality of different lodging guests …
    (c) supplying the rooms with at least one of the plurality of disposable
    brew baskets;
    (d) supplying the rooms with at least one of the plurality of filter packs … ;
    ( e) after using the brew basket and filter pack in a single brewing
    operation, discarding the brew basket and filter pack, and supplying a new
    unused brew basket and new filter pack in the room.”

    US Pat. No. 7,258,884.


          Poe,Why do you think this claim has a problem at 101? Is it because the claim appears to be a method beneficial for conducting business?

          Well, if that is the case just remember, 3, the new 4, does not equal 5.

      1. 3.1.2

        Well, when read in light of the specification, and as interpreted by one of ordinary skill in the art, it might have a problem at 112. And depending on what’s in the prior art it may have problems at 102, and 103. But when considering the claim as an “Integrated whole”, as the Court in Mayo said we “must” do, I don’t see any problem at 101. How about you Ned?

  11. 2

    That third graph appears to have somewhat constant filing rate for RCE’s – can you flip it so that the blue data is on the bottom and the red new applications are on the top?

    1. 2.1

      Thanks Prof. Rantanen,

      The near steady state nature appears to indicate that the RCEs are more a function of examiners than a function of applicants.

      Yet another indicator that the business method of examination itself needs some re-engineering attention.

      1. 2.1.1

        That is very interesting. I think it is largely Examiner dependent. Some examiners really work with applicants to get the patentable subject matter out there and allow, while some examiners play the “reject everything” game until they have enough counts. (and lots of other, intermediate styles).

        Do you have, or know of, any legitimate proposals for revamping the examiner count system? It seems there are so many unpredictable factors in examining that it’s hard to paint a broad brush like the “count” system, but I also don’t see a particularly viable and/or significantly better system.


          I have several times offered suggestions for improving the system.

          Start with NOT treating all applications as interchangeable widgets (and not just for non-examination fee purposes).

          Have an elite team pre-screen and weight the applications based on complexity/difficulty of examination. Maintain some flexibility, but enforce stronger an “aging” policy inwhich the oldest items on sub-groups of a docket (the subgroups aligned with the weighted difficulty aspect) must be taken on a FIFO basis (eliminate game playing). Make “going final” more – not less – difficult (if you make the need for examination to be substantive, you will increase the odds of having substantive examination – eliminate the “easy” going-final path.

          I have shared other ideas as well, but these are the ones that come to mind immediately.

      2. 2.1.2

        Let me add a further subtle point for discussion.

        My pal Hal has a bugaboo for RCEs (as shown in a recent – an ongoing – cavalcade of emails on the subject).

        I wanted to stress the examiner-dependent functionality (as shown by the steady-state aspect) to point out (to Hal and others), that the backlog continues to be very dependent on Office examination tactics. I have often pointed out the “deck chairs on the Titanic” syndrome as well as pointed out how the Reject-Reject-Reject era is viscerally tied to the many different stacks of deck chairs (the shifting backlogs in unexamined apps, in process apps, RCEs, and appeals), the MIS-focus by agenda seekers on the Congress-law-changing front, and even the illegal power-grab attempts by the Office (e.g. Tafas anyone?) – all of which points out that what I long (and faithfully) pointed out as needing to be the focus of efforts to improve the system remains to be the necessary item to be focused on.

        Efforts spent kicking up dust on al types of (hint: 101) philosophic driven desired changes in the law merely distract everyone from what should be the focus, from where the energy should be put.

  12. 1

    You mention a possible value being as a “defencive publication.” There are certainly far less expensive ways to publish than filing patent applications.

    1. 1.1

      Other ways, Robert? Cheaper ways? Of course there are. But I don’t know another way to block the patents of others, starting 18 months before your disclosure is available to anybody except the USPTO. That 18 month black hole can be very potent, at least in such fields as medical devices.

      Sometimes I get the feeling that some patent practitioners in the USA still haven’t sussed out how First to File actually works, in practice.

      By the way, how expensive is filing a patent application, these days? Is it something on which a corporate filer can impose cost caps?

      1. 1.1.1

        >By the way, how expensive is filing a patent application, these days? Is it something on which a corporate filer can impose cost caps?

        There are good attorneys and bad ones. The bad ones cost less and accept caps. The good ones cost more and won’t cap if they have half a brain. And all applications are written from scratch, a complicated invention will cost more than a simple one. There is no standard price.


          This is completely false.

          The bad attorneys who refuse to operate under caps have small beans clients who don’t know better than to accept the attorneys’ inefficiency.

          The good attorneys are sought out by sophisticated clients with high volume work and capped or flat fee structures.

          I’m not sure what large portfolios you manage/farm out and pay market hourly rates, but if you are I assure you you’re doing it wrong.


            And when your small beans client gets bought by a large player with ‘half a brain,’ that large player will know you’ve been taking advantage of the acquired company and promptly transfer the work to the ‘bad’ attorneys.


              I think what in-house says is true. I think oddly that we patent attorneys can be much more efficient when we are pushed. It is kind of fun actually to become much more proficient at getting your job done.


                When I spend 100% of my time drafting, I turn out more work. When I’m spending 50% of my time looking for work, I turn out less work.

                The power of a large corporate client is to eliminate that 50% inefficiency of looking for work, and possibly even allow you to employee associates and train them to do the work properly.

                In reality, you’re capped either way. The difference is just how much hand holding you have to include in that cap.


              I just wish that there was some way to apply the same type of pressure to the PTO. The PTO needs to get better at examination.

                1. The root of all the problems is the mistaken belief that if only the USPTO were to get better at pre-issue ex parte examination all the problems with the patent system would disappear.

                  In the real world, the Examiner sitting in an ivory tower inevitably lacks vital information. For example, it simply is not possible in ex parte PTO examination correctly to sort the not invalid chemical process claims claims from the invalid ones because the Examiners have no chem lab at their disposal.

                  Inter partes proceedings are unavoidable. The problem is how to manage inter partes proceedings.

                2. >The root of all the problems is the mistaken belief that if >only the USPTO were to get better at pre-issue ex parte >examination

                  Not in our world. In the real world, one of the big arguments used to try to exclude information processing (and this goes back to Benson) was that the PTO would not be able to examine the applications. And, to a large extent examination at the PTO has not be modernized. And the SCOTUS’s cases have thwarted the Fed. Cir.’s efforts to put into place case law that the PTO could use to examine 100’s of thousands of applications a year.

                  So, –obviously—better examination isn’t going to solve all the problems and we need post-grant proceedings of some type, but better examination accounts for at least 90 percent of problems.

                  And, note, that our community organizer did not appoint a person with the experience to work on this problem, but rather a person with the skill set to burn our system down.

                3. “In the real world, one of the big arguments used to try to exclude information processing (and this goes back to Benson) was that the PTO would not be able to examine the applications.”

                  Funny how the real world has provided ample evidence of that having come to pass if only just over the last two years.

                  “but better examination accounts for at least 90 percent of problems.”

                  I think you mean “perfect examination” would account for 90 percent of problems. Mere “better examination” wouldn’t come close.

                  Even so, I will have to disagree, examination as it currently exists isn’t too bad itself. It is just about as good as the world (as opposed to you and some other few people) wants it to be. And in that respect, it is already “perfect”.

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