Patentlyo Bits and Bytes by Anthony McCain

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About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering. anthony.mccain@patentlyo.com

26 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 8

    Happy Friday to all.

    Is it just me or is that Forbes article a nearly incomprehensible mish-mash of mixed-up, apparently poorly understood patent law related concepts?

  2. 7

    link to nytimes.com

    You know what would be even more awesome than a video of your mom floating above your hood ornament? An advertisement.

    Of course all this talk about distractions during driving will be moot when we’re all sitting behind the non-wheels of our self-driving robot cars … sometime next century, maybe. Or not: link to slate.com

    1. 7.1

      link to nytimes.com

      Another take on the fledgling technology comes from a Vancouver, British Columbia, start-up called DD Technologies — started by two entrepreneurs who said they were inspired to build a head-up display after watching an “Iron Man” movie.

      Who says science fiction movies and books and comics aren’t “analogous art”?

      They certainly are when the claimed information-providing or processing methodology is described in functional terms.

      1. 7.1.1

        MM, obviously science fiction can provide the suggestion to do something, but the first to accomplish it should be able to patent the method and means of that accomplishment.

        1. 7.1.1.1

          he first to accomplish it should be able to patent the method and means of that accomplishment.

          No doubt, assuming the means are recited in the claim (directly or indirectly) and assuming that the means are not obvious in view of the prior art, including the functionality disclosed in the movie/story/comic book.

          That’s a big assumption these days.

  3. 6

    A “bits and bytes” post is somewhat fitting for an otherwise OT post…

    Anyone see Greg Aharonian’s beautiful rant today on the absolute mess in patent law (derivable from the Royal Nine)…?

    In pertinent part:

    The courts and PTAB are on a tear, pretty much invalidating every method patent in the Electronics Arts on 101 grounds, citing the unconstitutional illogic of Alice/CLS. Well, its time to infect the entire system with this disease.

    Stomp on that gas pedal folks.

    1. 6.2

      “Unconstitutional Logic”

      I would be interested to know just what provision of the Constitution is violated and how.

  4. 5

    Heads up: In re Tam vacated; en banc rehearing ordered

    link to natlawreview.com

    The U.S. Court of Appeals for the Federal Circuit issued a sua sponte order vacating its April 20, 2015, decision in In re Tam to consider the constitutionality of Section 2(a) of the Lanham Act, which provides that the U. S. Patent and Trademark Office (PTO) may refuse to register a trademark that “[c]onsists of or comprises . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols . . .”

    The en banc order appears likely to be the Court’s response to Judge Moore’s “additional views” that were appended to the Court’s April 20 panel decision, which affirmed the Trademark Trial and Appeal Board’s (TTAB’s) refusal to register the mark THE SLANTS, concluding it is disparaging to a substantial portion of people of Asian descent. In re Tam, Case No. 14-1203 (Fed. Cir., Apr. 20, 2015) (Moore, J.) The order requests that the parties file new briefs addressing the question of whether “. . . the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violates the First Amendment.”

  5. 4

    Or is Shoen (even though he himself might not realise it) asking for an end to the discrepancy (preponderance or C+C; BRI or not) between the Courts and the PTO when it comes to validity? As I read him, it is this discrepancy that the clever hedge funds are exploiting, to make money for themselves and mischief for patent holders.

    You know, Validity Y/N is much harder to do than Infringed Y/N. It needs a mind that is learned in BOTH the law AND the subject matter of the claim in view. Increasingly hard (all over the world) to find that outside the Patent Office, isn’t it? For me, the best place to do validity exhaustively is the Patent Office. But to do it satisfactorily, you need both sides of the argument ie inter partes contested proceedings. Nobody should be surprised then, by the high rates of revocation in current inter partes proceedings at the USPTO. Holders of quality patents should rejoice, along with all those who write quality patent applications and all those who prosecute them through the USPTO.

    1. 4.1

      Max, BRI is designed to read on prior art.

      Secondly, the standard for institution of an IPR is not preponderance, but a much lower standard. But the same people make the final decision on the same evidence. What do you expect?

      The combination is lethal.

      Yet, patents are the property of their owners and our constitution says they have a right to their day in court before their patents are invalidated. The day of the IPR with such low standards will soon come to an end.

      1. 4.1.1

        Hi Ned,

        Is there a specific example of an IPR where the low standards have caused a problem? A ‘poster child’ showing an IPR where higher standards would have had a different outcome would be very helpful to having the system changed.

        1. 4.1.1.1

          I think dramatic difference between the courts and the PTO in finding patents invalid demonstrate the problem in spades. But until we get more Federal Circuit decisions on the merits to talk about, it would be premature to talk about still pending cases.

          1. 4.1.1.1.1

            …for example, Ned has an active case before the courts…

            (of course, posting policies here -if actually followed – would already be posts only in a personal capacity, and Ned would be able to talk freely and openly… alas, not to be ;-) )

    2. 4.2

      Max Drei said, “For me, the best place to do validity exhaustively is the Patent Office.”

      Are you serious?

      1. Have you heard of the SAWS program (or whatever they are calling it now)?

      2. BRI really means Broadest Un-Reasonable Interpretation (BURI).

      3. And under the Court standard of review of substantial deference the lies that the examiner tells are transformed into “facts.”

      The only way the Patent Office could deserve any respect at all is to require that:

      1. All examiners must be attorneys and be a member of a Bar somewhere in the U.S. It would be nice if examiners actually knew the Law.

      2. All examiners must have taken (and passed) the MPEP Exam. It would be nice if examiners actually knew the rules.

      Until this is done the courts should stop giving substantial deference to uneducated and malicious examiners.

      Some of them post in this forum.

      1. 4.2.1

        Some of them post in this forum.

        Therein the source of:
        a) laughter
        b) sorrow
        c) derision
        d) any combination of the above
        e) add in reply below:

      2. 4.2.2

        No One, you assume too much. I did not say that the best venue was the USPTO. My observation that the best way to explore the validity of a claim of a patent is at “the Patent Office” is informed by my experience since 1978 at the European Patent Office, in opposition and on appeal.

        I should have pointed out that the EPO is not under the thumb of any court. When a Technical (!) Board of Appeal of the EPO finds a claim invalid, that’s it. End of story. That is why the substantive law of patentability under the European patent Convention is so crisp and clear.

        Compare EU trademark law, where appeals against decisions of the Office go all the way up, to the Court of Justice of the European Union. That is why EU trademark law today is so unclear.

        1. 4.2.2.1

          Kindly respect our sovereign Max. The “EP uber alles” that your posts are drenched in (and that you apparently are not aware that most readers here presume that threads – unless otherwise indicated – are discussing US law, make your “clarification” necessary every time you post.

  6. 3

    How do other readers understand Doug Shoen in Forbes? To me he seems to be saying that what has “broken” the US patent system is the deadly combination of i) “frivolous” law suits brought by trolls that are “nearly always” dismissed and ii) the USPTO’s excessive strictness on patentability, what he calls its great “anti-patent bias”. What does he want the USPTO to do: issue more borderline patents to deserving inventors, or fewer of them in case they find their way to undeserving trolls?

    Has he got his knickers in a twist? Or is somebody pulling his leg or otherwise leading him on?

  7. 2

    What is increasing is hedge fund managers exploiting loopholes in the PTO to make a quick buck by shorting stock of American companies and then challenging their legitimately granted patents. This is happening to companies that have products on the market and have successfully commercialized their ideas – particularly medicines.

    Yeah, I recently encountered this tactic head-on.

    There’s a valuation company that is notorious for publishing valuations that are not only overdramatized and consistently inaccurate, but also just plain wrong about basic patent law concepts. Seriously, a Patent Law I student would be able to pick out several flaws in its arguments.

    I’ve been aware of this company for a while, but I recently encountered a report from the company that dumped all over a host of patents held by a major pharmaceutical company. True to form, this company’s report was light on facts (presenting a laundry list of random patents, with a “look at all dis prior art!” type of caption) and long on speculation (“all of this stuff is old and obvious!”)

    Moreover, the company rep who posted the article also cross-posted it to several forums about investing and stock tips, with headlines like: “Pharmaceutical Company’s Patents Will Be Invalidated.” Ultra-sketchy.

    1. 2.1

      that are not only overdramatized and consistently inaccurate, but also just plain wrong about basic patent law concepts.

      Sounds like the nine years and running Malcolm meme here.

  8. 1

    Watch out, folks. Some bald guy at Forbes — he’s totally middle-class — is really, really concerned:

    What is increasing is hedge fund managers exploiting loopholes in the PTO to make a quick buck by shorting stock of American companies and then challenging their legitimately granted patents.

    LOL.

    And this is a problem with the patent system?

    Too funny.

    1. 1.1

      Your post has an odd ring to it.

      Are you saying that this particular behavior should be addressed outside of the patent system?

      Like gen eral court process reform?
      Like gen eral business formation reform?
      Like gen eral contract reform?

      1. 1.1.1

        None of the above. The alleged conduct sure sounds like stock price manipulation to me. SEC has all the tools it needs. No new laws are needed. This is one of the most ridiculous arguments for patent reform I have heard of. The entire Forbes article is a joke.

        1. 1.1.1.1

          There is NO question that such is stock manipulation.

          The question is rather, is such stock manipulation “fair game?” (in the strictly legal sense)

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