There were no surprises with this morning’s consideration of Michelle Lee as the nominee to the position of Under Secretary of Commerce and Patent Office director. The Senate should – but will not – move quickly to confirm the nomination. In particular, Senator Grassley – upcoming Judiciary Chair – indicated that the Republicans will not allow a vote on the nomination until the next Congress begins in January. Because the new Congress would hold new hearings, confirmation is unlikely before March 2015. That timeline will mean that the USPTO will have been without a Senate confirmed director for more than two years.
For the past year, Lee has been serving as the USPTO’s unofficial director – leading the agency through a time of tremendous systemic change. However, her position has been without the imprimatur of Senate Confirmation as the official Director. In the politics-heavy beltway game, Lee’s lack of official leadership title has impacted her activities both inside and outside the USPTO. These challenges extend both to factions within the USPTO (e.g., patent operations and activities of the chief information officer); interactions with the White House and Commerce Department leadership; and in providing guidance to Congress regarding legislative reforms.
At times, the Senate has legitimate questions regarding a nominee’s qualifications or ethical lapses. That is not the case with Lee. In an email, Hal Wegner writes:
The nominee has been center stage for quite some time. No ethical blemishes or other smudges appear to tarnish a squeaky clean personal image. There is thus no reason to block her nomination. Indeed, it has been more than two full years since the most recent Under Secretary had announced his resignation. . . . [T]the nominee should be confirmed in the present lame duck session.
As Wegner notes, in DC politics – we often see a vast difference between what should happen and what does happen.
I’ve heard her speak both live and recorded. I’m underwhelmed. There are better potential nominees out there.
Google picked her.
link to youtube.com
This is about Citibank and finance, but one should be made about Google and Intellectual Property. Consider that –just think—Google gives more money than Citigroup.
And really Google is much more of a monopoly than Citigroup. And here we have a Google executive being moved into the PTO when she has openingly been hostile to patent.
It explains our Google court. Taranto, Hughes, and Reyna should resign.
Thanks for the “link” to IP watchdog’s take on the hearings including attaching a copy of the letter from a number of organizations representing the majority of inventors in the United States. The letter concludes with the following:
When I read that, I grimaced. Haven’t these folks heard yet that the Federal Circuit has already ruled in Patlex that patents are not property, but public rights?
I am glad that I am not standing alone here arguing that patents are indeed property and are indeed protected by the Constitution? But I am not glad that the folks who wrote that letter have no idea what they are talking about. The conclusion by the Federal Circuit in Patlex that patents are public rights is simply obscene.
Judge Newman (w/Markey and Friedmann) from the Patlex decision (CAFC 1985):
The reexamination statute’s purpose is to correct errors made by the government, to remedy defective governmental (not private) action, and if need be to remove patents that should never have been granted. We do not read McCormick Harvesting as forbidding Congress to authorize reexamination to correct governmental mistakes, even against the will of the patent owner. A defectively examined and therefore erroneously granted patent must yield to the reasonable Congressional purpose of facilitating the correction of governmental mistakes. This Congressional purpose is presumptively correct, and we find that it carries no insult to the Seventh Amendment and Article III.
The Commissioner reminds us of the complex structure of modern government through administrative agencies, and we agree that such delegation of administrative functions, often including quasi-judicial functions, is now beyond facial challenge–provided that constitutional safeguards are respected. The massive body of jurisprudence that suffered the evolution of administrative agencies in the federal government insisted on fair opportunity for judicial review and full respect for due process. When these standards are met, the Constitution does not require that we strike down statutes, otherwise having a reasonable legislative purpose, that invest administrative agencies with regulatory functions previously filled by judge and jury.
The extensive jurisprudence interpreting and applying the Seventh Amendment and Article III supports our conclusion, affirming that of the district court, that Gould has not suffered a constitutional deprivation of any rights under the Amendment or Article by virtue of either the postponement of the exercise of these rights, or by interposition of reexamination.
Sounds reasonable to me.
Translation of MM: when I turn off my judicial activism part, I suddenly find that Newman knows what she is talking about.
Night, wasn’t it you that told me that Judge Newman has completely changed her mind on this issue?
Newman has reversed her position, at least so far as the law now stands. To understand Patlex one must understand the statuary scheme in place at the time Patlex was decided. There was the Constitutional safety valve of 35 USC 145 for a reexamination action. Under section 145, de novo trial by PTO v Patent Owner, reexamination IMHO probably passes Constitutional muster because here it is a Art III Court issuing the adjudication and PTO actually DOJ stands in arguably no greater position that any private party challenging a patent. Since the AIA removed 35 USC 145 trials based on PTO reexamination grounds, Patlex is probably no longer controlling. IMHO, it is now a case of first impression.
it’s the mistake-based element of her reasoning that she abandoned in the Fresenius dissent.
in order to understand the significance of this, I recommend reading:
(1) McCormick Harvesting Machine v. Aultman (SCOTUS)
(2) Patlex v. Mossinghoff (CAFC)
(3) Joy Tech v. Manbeck (CAFC)
(4) Stern v. Marshall (SCOTUS)
the problem with her mistake-based reasoning is that any allegation of mistake in the first instance implicates invalidity, thus granting the claim to the Art I admin agency. this holding cannot be reconciled with McCormick, and I believe Newman in Fresenius recognized that her reasoning in Patlex (and, by proxy, Joy) was infirm. Her Fresenius dissent was likely about attempting to prop up Fresenius and Joy – not about distancing herself from these earlier decisions.
nonetheless, it is the nature of the right in question that controls. reissue survived only to the extent that it provided a remedial, non-substantive mechanism to the patentee. reexamination is a different story.
“When these standards are met, the Constitution does not require that we strike down statutes, otherwise having a reasonable legislative purpose, that invest administrative agencies with regulatory functions previously filled by judge and jury.”
“Regulatory functions” previously filled by judge and jury?
Her “must yield” statement lacks a cite of authority, and her “Comgressional purpose” incorrectly assumes that Comgress can make no mistake as to passing laws that do not violate any aspects of the constitution.
Here, the reasoning is simply too grandiose and reaching.
Also, Ned, as you have amply pointed out, scire facias was expressly removed, and elephants of reinstatement are not hidden in mouse holes of “clever interpretation.”
Patlex stands for the proposition that the AIPLA and the IPO can get away with murder.
As well as – also as you have pointed out – this reasoning can be seen as being built on the incorrect foundation that a patent is not an item of personal property.
Clearly, this is an example of how two wrongs do not make a right (pun intended).
You know, anon, the SC has already held in other cases that public rights do not apply to property cases, and Marbury and the patent statute has both already ruled that patents are property.
Patlex assumes that all rights granted by the government are public rights and the only thing not covered are “the liability of one person to another.” Patlex has it backwards. There are only a few things that are public rights, everything else is not.
Let me correct you in that Marbury did not speak to patents (speaking instead to something far more mundane and [shrug]-and-move-on-able: a Justice of the Peace commission), and let me also emphasize that it does not take a Flash of Genius to realize that the concept of “elephants of reinstatement are not hidden in mouse holes of “clever interpretation” ” applies to whatever the Court writes.
Oh yes they did, anon. The commission was analogized to a patent, and because the one appointed had a legal right to receive the commission, it became his property just as much as did a patent for land.
As to validity, that is a judicial question:
“The question whether a right has vested or not, is, in its nature, judicial, and must be tried by the judicial authority. If, for example, Mr. Marbury had taken the oaths of a magistrate, and proceeded to act as one; in consequence of which a suit had been instituted against him, in which his defence had depended on his being a magistrate, the validity of his appointment must have been determined by judicial authority.” 5 US 137, at 166.
We may be picking nits here Ned, but you are still off on both accounts.
1) your “was analogized” is a sign of your propensity to over-read. Anything “can be” analogized. There is a clear difference then between a case being directly about something and a case being “analogized.”
2) I have already posted as to the beating point, and what Congress intended. This is mirrored in your own past posts on scire facias and the fact that Congress has always intended property rights to best AT patent grant. In this sense there is a difference – a critical difference and it should be noted that the constitutional nature of statutory law versus judge-made common law has a bearing on (and yes, your continued avoidance of discussing this point has not gone unnoticed).
Perhaps you should enjoy watching the movie The Paper Chase, and notice the casual remark at the one hour six minute mark…
Then perhaps you can back up that lofty cloak of yours as “being a defender of the Constituion” perhaps a bit more non-selectively and realize that your adoration of the a Royal Nine when they selectively violate the separation of powers doctrine affects your credibility when you want to complain of violations that you do care about.
Pardon the auto correct errors – “beating” should be replaced with “vesting” and “best” should be replaced with “vest.”
Out of curiosity, as Art. 1, Section 8 ever been interpreted to create a right to intellectual property? If so, it is not an obvious conclusion from the text.
“The Congress shall have power… To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”
It sounds like Congress can create patents, but Congress isn’t mandated to create patents.
I think that you are trying very hard to make a point that is very moot.
But I will take this opportunity to stress that the authority so delineated was expressly NOT given to the judicial branch.
And, as we have seen, for very good reason.
It was more of a curiosity more than trying to make a point. Congress can and has legislated a patent system. I agree that a patent system should exist.
But the phrase “threatens the constitutionally-guaranteed property rights of innovators” seems to be the sort of bombastic rhetoric that turns what otherwise may be a well reasoned defense of the patent system into an argument that sounds like it is born of a mixture of panic and hyperbole.
I disagree, as others areas of permissible law – once activated – do in fact confer the status of “rights” every bit as defensible as any other right.
Don’t buy into the anti’ pooh-poohing attempts.
Keep your mind sharp and focused.
I agree that Congress has created a statutory right. But, if by some strange legislative fit, Congress were to prevent the patent office from issuing any more patents, then that statutory right would disappear.
My comment is more of a critique of style. It seems that they made an assertion that is not technically correct.
The point you seem to miss here is that your “by some strange legislative fit” has NOT been reached – quite opposite of what Newman advances, and that your characterization in the immediate context of “bombastic rhetoric” thus is also not reached – your post then serves to obfuscate rather than clarify.
Style? No, I think there be more than that, and that your seeming unawareness is not helpful here.
Ordinary, I agree.
However, is Congress, by issuing patents, empowered to promote progress everywhere, or just in the US?
Ned,
I do not understand your question.
You seem to be implying that the grant of a patent somehow carried with it a US sanctioned right that is beyond the territory of the US.
I think that you are confusing the right granted with some sense of where the invention was made.
There is no such requirement that only inventions made in the US can qualify for the rights that only apply territorially in the US.
The fact that progress may be promoted globally is thus a non sequitur to the legal proposition and has no bearing on the US Quid Pro Quo that still exists (regardless of any promotion effect anywhere else in the world).
As I indicated previously, you would be better off being direct in your attempt to rule out any type of “foreign” status for holding a US territorial right.
Of course, you then would have some serious retributive consequences to deal with, but hey, at least you would be on the up and up of what you are trying to do.
From what I have seen thus far in the new lawsuit challenging the CAFC public rights designation, the USPTO has nothing. It will be very interesting to see how that matter is ultimately resolved.
link to bbc.com
Well this report makes no sense. Talk of representing information and structure. Ned and MM need to phone these people and give them lessons on their physics.
If she is confirmed, we will get the patent system that Google wants, which is not the patent system that the majority want. Already under her de facto directorship, we have a “ground stop” on applications that are within the IT field with over-reaching and abusive use of 101 “abstract idea” rejections, unreasonable rejections under 112 based on alleged “functional claiming”, and generally a culture among examiners that the goal is to reject and force abandonment, rather than work toward finding allowable subject matter for inventions that are clear of the prior art. What a difference a Director makes, how we have turned 180 degrees since David Kappos brought a fresh breeze to the Office. She is an utter disaster. But don’t under-estimate the quiet dampening of these initiatives imposed by POPA. It has already shown that it can completely disable things like the After Final Pilot Program just by reminding its examiner members that they “don’t get paid” for doing after final allowances under that program.
If she is confirmed, we will get the patent system that Google wants, which is not the patent system that the majority want.
Can we see the poll you are relying on?
LOL – and soon as you provide the scientifically accurate polls for supporting all of your rants…
Oh wait, this is Malcolm, and he does not expect “the rules” to be evenly applied.
alleged “functional claiming”
Alleged?
Sounds like you’re pulling our legs here.
We all know that the only problem with functional claiming is that Lemley has chosen it as the new witch word.
For TC2600, we have not receive any particular guideline requiring us to reject and force abandonments. We received guideline regarding how to apply 101 and how to determine whether claims invoked 112 6th / 112 (f) and to determine if such 112(f) claims is definite under 112 2nd / 112(b), but we receive no direction that applications should be forcefully rejected under those grounds without proper basis.
Despite applying 112 and 101 analysis, i continued to issue patents while stating in writing the reasons why i believed claims are valid under these grounds. I can personally attest that there is no corps wide conspiracy to deny applicant’s claims by over applying 101 and 112.
Finally, i often advise attorneys that after-final pilot are properly used when the claims involved 101 and 112 issues but otherwise allowable under 102 and 103. However, a RCE is often necessary when claims are amended and there are 102/103 issues. Surely, you can’t expect examiners to search for new references and to issue office actions using new references within the three hour window of the After Final Pilot Program.
That’s great for a low level examiner, although some people SAWS it differently (off the record, of course)
😉
Patent Writer, at least from the hearings, Senators are hearing a lot from their constituents about the AIA, and the complaints are shrill. Apparently there are a lot of people who now recognize just what IPRs are – death squads for patents, denying patent owners fundamental due process by reading claims as broad as possible in order to read on prior art while denying any reasonable opportunity to amend their claims. This was highly predictable, and was architected into the implementing legislation. Postgrant reviews in my view not only should be repealed, I believe they are unconstitutional because patents are property, not public rights, and therefore the executive has no constitutional authority to litigate validity and revoke a patent against the will of the patent owner. That is the exclusive province of the courts under our Constitution. Moreover, the Supreme Court has already ruled that actions to revoke patents have a right to a jury trial.
I don’t know about Michelle Lee personally, but she does represent big business that were behind the AIA that in many ways has fundamentally weakened the patent system, including by pushing down our throats IPRs that are designed to weaken, not to strengthen the patent system.
Regarding functional claiming, the patent office never really has gotten this correct. The Supreme Court never found functional claiming objectionable except when the functionality was at the exact point of novelty. To the extent that the patent office does not recognizes this, they are being fundamentally unfair to patent applicants and owners without any good reason.
Regarding 101, I think the have it mostly correct now, but the primary focus must be on weeding out business method patents as opposed to anything else. If a patent is not obviously a business method patent, it should be given the benefit of the doubt, in my view.
“but the primary focus must be on weeding out business method patents as opposed to anything else.”
Sigh, the crusade (untethered to what the Legislative branch in Congress has written, untethered to the fact from the Judicial branch that 3, the new 4, is still not 5, and untethered to the fact that Executive branch enforces all patents through its business administration functions)
Clang clang clakity-clak, the empty wagon rolls on.
The fact is that the reduction in the number of patents granted in some art units from last year is shocking.
The nominee was an executive for the company which has spent hundreds of millions to destroy patent rights (and other intellectual property rights) in the US in the last five years – that is reason enough for her coronation to be withheld or at least held up.
Not only that but she has as much said that she agrees with it and we can expect her to serve that purpose as director.
Lol: It’s Time to Confirm Lee – Like O, she will be all things to all people
From IPWatchdog
“As Senator Grassley moved into his questions he asked both Daniel Marti and Michelle Lee whether patent trolls are a problem and whether they would work with the Senate, if confirmed, on new legislation to address any problems. Lee said that she does think there is a continuing problem with abusive patent litigation, further saying “there can and should be further legislation” to address patent trolls.”
…
“Senator Durbin then simply asked Lee, “What is a patent troll? What is your definition?” Lee responded: “it is not productive to define a patent troll,” but rather that it is important to “focus on abusive behavior.” Durbin also asked whether Lee agreed with what his constituents were telling him, that reform is not necessary and Congress should slow down. To this Lee responded: ” I couldn’t agree more.” “
Reminds me of a joke (variants abound):
St. Peter welcomes three men at the pearly gates, a mathematician, a philosopher, and an attorney.
To each in turn he bids the men to come forward and asks quietly, “To enter, you must answer honestly but a simple question, what is 2 plus 2?”
The mathematician is first, and immediately answers “4.” St. Peter smiles and bids the man to enter.
The philosopher is next, and takes more than a moment to reply: Dear Peter, I do not know the answer, as here in Heaven, the rules of math may not apply. St. Peter responds: you have answered honestly and without guile, enter.
Last comes the attorney, who stops, looks around, and beckons St. Peter to lean in close to hear the response: a What do you want it to be?
I think those were very appropriate answers. “Patent Troll” has only one definition that makes sense: a party that engages in abusive patent litigation. What defines “abusive”? It’s a multi-factor test.
– NPE or operating company does not matter. NPE’s have the same property rights in patents as do operating companies.
– More room for abuse if not a business competitor of the litigation target
– Age/ Type of the patent: mid-90’s software patents are extraordinarily ripe for abuse
– Provenance of the patent: patents obtained from failed companies or by bankruptcy etc. are more likely to be abused
-Settlement behavior: refusing reasonable settlement offers, seeking absurdly disproportionate royalty / license amounts
– Attacking customers of litigation targets, attacking many litigation targets at one time (if there are hundreds or thousands of inadvertent infringers, the patent is more likely to be invalid)
– Abuse of mediation process- entering mediation with no intent to seek compromise or equitable resolution.
– Intentionally driving legal expense via motion practice, needless discovery requests, non-germane expert activity, etc.
– Laying in wait while “infringement” occurs (laches)
– Starting litigation with zero warning or attempt at reasonable settlement, using excuse of fear of declaratory action
and of course,
-Using the patent system as a terror weapon (e.g Steve Jobs to the Palm CEO in re: hiring practices collusion) or as a sales tool (i.e to pump oneself to appear to own valuable/monetizable IP for the purposes of selling one’s company)
I have my personal Troll of course: it happens to be the preeminent user of our patent system.
They should be Exhibit A illustrating the need for reform.
Mr. Snyder,
Kudos on your post, you have been able to contain your utter disdain for all software patents and expressed points of concern in a thoughtful manner.
While I do not agree with all of your points (for example, having a defendant define anything as to what is “reasonable” is itself a target of abuse), your post is well written.
Martin, while I have dealt with many patent owners who had patents we allegedly infringed, but there was only one organization that dealt in abuse and that was the same organization that is now abusing you.
If the government is going to look into anything it should look into that company and its practices.
A troll is a patent plaintiff whose settlement demands are anchored to the defendant’s potential litigation costs, rather than to a good-faith assessment of the patent’s value to the defendant.
Dunno, man. De ms seem to cower when you tell them things like “don’t worry, as a Re pub, I promise to be just as cooperative supporting O bama’s nominations (and everything else) as you were during Bush’s second term.”
It’s funny how quick they seem to get all pale and shaky . . . hmmmm
LOL @ De ms are the cooperative group #revisionisthistory
It’s so very Lochnerian.
Blame…? Blame both sides.
My many friends in the US will be aware that I am an enthusiastic AIPLA member and that I have a record of attending the annual meetings for at least the last 15 years.
There used to be (I am not sure that there still is) a reception for politically active members aimed at lobbying for an improved IP system. However, as an alien (as I used to be reminded each time I arrived at Dulles from the UK) I was not eligible to attend because it was considered that the presence of foreign people might corrupt the purity of the US body politic.
Res ipsa loquitur, as lawyers sometimes say. There is no need for external input into the difficulties that the US political system now experiences, to the consternation of friends in other countries.
It appears that the US is not alone in such troubles – your thoughts Paul, on Mr. Battistelli?
Paul, the AIPLA has for some time been working for the infringer’s bar to weaken the patent system. Backing the AIA, backing reexaminations and IPRs and the like are not good for US inventors or the patent system. On 101, the AIPLA has backed 101 nominalism, which is simply out there if 102/103 do not exclude from patentable weight non integrated non statutory subject matter. The last annual meeting I attended was a nightmare of disinformation and pure hatred of patent owners trying to enforce their patents.
The organization to be has become part of the problem, not part of the solution.
Remember that the often unstated (but occasionally admitted) goal of the modern Republican party is to make the Federal government as weak as possible (except for the military, of course). We don’t have to guess about whose interests are best served when the Federal government is either ineffective or not functioning as it should or could were its various public service agencies appropriately funded and staffed.
For example, here’s Republican Senator Lindsey Graham on how he’d like to see things happen:
link to thehill.com
McCain’s ally, Sen. Lindsey Graham (R-S.C.), argues that restoring the 60-vote hurdle [for confirming judges and agency administrators — a rule that Republicans went apeshirt about when it was changed to 51 vote hurdle by Dems] will make it tougher for Obama to stock the courts in the next two years.
“I think it would be smart for us to go back to the way it used to be, getting the Senate back to the way it’s always been and making it harder to get people into the court and into the executive branch, not easier,” he told conservative radio host Hugh Hewitt.
Of course if we really went back to the “way it used to be”, there wouldn’t be an average of one filibuster a day and a Senate that was effectively a 60-vote institution. The “shutting government down” thing seems to be a fairly recent phenomenon: link to tcf.org
All that said, it’s true this particular nomination could have been avoided had Obama jumped on it sooner. As to the specific reason(s) it didn’t happen sooner is anybody’s guess but, in any event, the nomination either wasn’t at the top of Obama’s “to-do list” or the list of whoever was in charge of lighting a fire under Obama’s behind or both.
Just in case anybody missed it:
“[I[t would be smart for us to … mak[e] it harder to get people into the court and into the executive branch, not easier” <== Sen. Lindsey Graham (R-NC).
MM, your stress on this point suggests that you want to make it easy to get people into the judiciary and administrative plum jobs. Shoot, if we can indict a ham sandwich, we can also make a ham sandwich a Scotus justice by that line of thinking.
your stress on this point suggests that you want to make it easy to get people into the judiciary and administrative plum jobs
If getting the approval of a majority of elected Congresspeople is “easy” then, yes, I guess I would prefer that to a vacant seat and a judiciary/agency that is handicapped as a result.
If they really wanted to go back to the way things were, they would require any senator wishing to filibuster to get up and actually speak and hold the floor, rather than request anonymously that a “hold” be placed on any particular vote.
Visions of Jimmy Stewart dance in the mind.
They have medications for that.
I certainly hope that you realize the fallacy here of you (once again) charging at the red cape of “anon,” and what the take-away from the old Jimmy Stewart movies was.
Your smarm is not warranted.
It was a joke, anon. Lighten up.
When it is not possible to tell the jokes from your usual smarm, the response of “lighten up” is not appropriate.
I’m a registered republican. You have a much more favorable view of the current state of the party than I do.
Well, I don’t like her one bit, but if there is a reason to block her nomination then they should do it upfront and public. So, I grudgingly agree they should confirm her.
Thanks NWPA – I agree that the Senate here has an important role to play in this confirmation process. But it shouldn’t hold-up operation of the USPTO because of a general problem with President Obama.
Dennis, Hold up? You accuse Senate GOP of delay? Under the circumstances of Lee, and Obama’s loooooooooooonnnnnnng procrastination, there really is no urgency.
Lee’s been twisting slowly in the wind now for more than a year, and it is not the fault of the GOP that she has been put into this position.
Thanks Ned. My point was not to lay blame but to look toward how to move forward. I agree that the White House created this situation in the first place.