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.

34 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 8

    The filing of a defamation suit against the EFF—a group that has fought numerous legal cases to defend online speech—is a stunning turn of events, with a cast of characters that you can’t make up. The plaintiff, Scotty Horsehockey, is a patent lawyer who also has a side business of “inventing”—that is, not just prosecuting patents for clients but also convincing the US Patent and Trademark Office to grant him his own patents, many of which include broad claims to Internet and mobile technology.

    Is the best part of all this where Scotty’s defamation suit completely mischaracterizes the statements made in the blog post?

    Or is it the part where Scotty “Unblemished Reputation” Horsehockey drops his silly defamation lawsuit and scurries back under his rock?

    Asman said the lawsuit had been dismissed, and declared victory. “[M]y client believes his action has had the desired effect.”

    ROTFLMAO. Indeed, Mr. Asman (LOL)! It had the desired effect of turning your client into an even bigger joke than he already was. Well done! Well done! [golf clap]

    1. 8.1

      Asman said the lawsuit had been dismissed, and declared victory. “[M]y client believes his action has had the desired effect.”

      Is EFF going to “integrate your counterarguments” from now on?



          the “just declare victory” spiel is more your motif.

          Sure it is, Billy. Keep telling yourself that.


          That’s funny Malcolm

          Maybe it’s time to send your li’l buddy Scotty some flowers, “anon.” He’d like that.

  2. 7

    Just a friendly reminder that what seems “new” to certain folks is often ancient …

    link to

    A thousand years before Isaac Asimov set down his Three Laws of Robotics, real and imagined automata appeared in European courts, liturgies, and literary texts. Medieval robots took such forms as talking statues, mechanical animals, and silent metal guardians; some served to entertain or instruct while others performed disciplinary or surveillance functions….

    This original and wide-ranging study reveals the convergence of science, technology, and imagination in medieval culture and demonstrates the striking similarities between medieval and modern robotic and cybernetic visions.

    The PTO probably could use a copy in its database. Maybe some chapters should be required reading for examiners.

  3. 6

    The question as always: are the patent maximalists incredibly ignorant, or just dishonest?

    With respect to amendments to the patent act to curb forum shopping by patentees, a well-known defender of the worst patents ever writes:

    a legitimate patent licensing company that does not manufacture their own goods may only be able to bring suit in a limited number of locations

    Right. So far, so good. It’d be a real problem if you missed that much. As for “legitimate patent licensing companies”, that seems like an oxym or 0 n but we’ll let it slide for the moment.

    if Congress wants to stop patent infringements lawsuits from being filed in the Eastern District of Texas perhaps they would be better off to pass a bill that simply says: “Patent infringement actions cannot be filed in the Eastern District of Texas.”

    No. Congress would not be “better off” doing that.

    a discriminatory approach to venue that applies only to patent infringement cases

    All laws “discriminate” against the actors whose behavior the law is intended to change. It’s odd to have to explain this to an adult who pretends to be a legal expert on the Internets but so it goes.

    special interest carve out

    Another news flash: minimizing the ability of a tiny, tiny, tiny group of abusive “non-practicing entities” with offices in east texas from dragging any individual or business across the country into their ba nan a republic is hardly a “special interest carve out.” Rather, it’s the “special interests” of that tiny class of patentees that is being eliminated by Congress. Why is this so hard to figure out? Oh, right. It’s not hard to figure out. Everybody knows what’s going on. The issue, as always, is that these obnoxious, entitled “special interests” always act suprised and cry their crocodile tears whenever their schemes are foiled by citizens justifiably grown tired of their relentless, money-gr u bbing behavior.

    1. 6.1

      And speaking of “special interest carve outs”:

      Recently, Gilstrap published an order saying any defendant who wants to file an early motion under Section 101 “may do so only upon a grant of leave from the Court after a showing of good cause, which shall be presented through the letter briefing process.”

      Rodney Gilstrap is a joke.

  4. 5

    Now this is really interesting:

    “But successful trial court rulings still largely depend on a very difficult task: Judges must determine whether slight innovations in complex technologies are unique enough to deserve a patent.

    To do this, they compare the invention to what a hypothetical peer of the inventor would know at the time.

    This is known as “the person having ordinary skill in the art.”
    U. of C.’s Masur calls that task ‘almost impossible.'”

    My point, made many times here. Judge Rich proclaimed loudly for all to hear that he was replacing a subjective, seat of the the pants test for invention, with an objective test. But because the call has to be made by a hypothetical person, not a real person, and is an opinion and not something objectively measurable, the call in the end is just a flip of the coin. In the end, the court (or jury) is going to make the call he or she personally thinks is right, but he or she will clothe their opinion in appropriate words to make it seem that he was following the statute.

    The test that was replaced in ’52 was actually an objective test — whether there was an improvement, different in kind, not degree.

    Now that test WAS objective and could be proved by actual evidence. It also seems to be the test used by the ROW.

    1. 5.1

      You are trying to play the blame game again Ned and aiming at Rich for what Congress did.

      That’s a cheap an dishonest trick, respecting NEITHER Congress nor Judge Rich.

      For shame.

  5. 4

    Mr. Williams discussion of the patent dance in Amgen v. Sandoz is very interesting. The statute provides that one who files an application for approval using the data of a reference product sponsor but who does not comply with the patent dance procedures may be sued pursuant to the following:

    “If a subsection (k) applicant fails to provide the application and information required under paragraph (2)(A), the reference product sponsor, but not the subsection (k) applicant, may bring an action under section 2201 of Title 28, for a declaration of infringement, validity, or enforceability of any patent that claims the biological product or a use of the biological product.”

    Two things I notice about this. First, the subsection K applicant is stripped of all right to sue and I presume that would include a right to counterclaim for declaration of invalidity or unenforceability or for noninfringement. But what about an affirmative defense of invalidity? Is that excluded as well?

    Secondly, the statute authorizes the patent owner file an action against the subsection K applicant for declaration that is patent is valid.


    1. 4.1

      Is quite clear to me that whoever wrote the statute authorizing a cause of action for declaration that a patent is valid had no basic grasp of patent law.

      Does anybody know where the statue came from and who possibly wrote it?

  6. 3

    From Lemley:

    “The fact that the law encourages inventors to file first and figure out later how (or even if) the invention works for its intended purpose is unfortunate. It produces underdeveloped patent applications that do not communicate useful information to the world. It facilitates the rise of patent trolls who obtain patents but never bother to produce a product, instead making a business of suing those who do. And it pushes people to patent things just in case, adding more patents into a system already overburdened with them.

    I reject proposals to go to the opposite extreme, requiring patentees to make products. But we should not be in the position in which we currently find ourselves: treating inventors less favorably if they try to build and test their inventions In this paper, I offer some thoughts on ways we might seek to protect inventors who actually decide to build and test their products.”

    I haven’t read the paper yet, but I look forward to it.

    At least under 1st to invent, the party who reduced to practice was given a lot of benefit in interferences and in 131 affidavits.

    1. 3.1

      Ned I have read the Paper. What a disappointment. Lemley writes as if the First to File environment is virgin territory, never before trodden by Man.

      He refers to Ariad v Lilly and to the extra pressure on Applicants under FtF to “jump the gun”. He tells us that it will be the requirement for a “written description”, further developed, which will deter them.

      You bet. I have been urging for years that jumping the gun is the worst thing one can do under First to File. You fail with your own patent application and you fail to stop rivals getting through to issue with claims of useful scope that are not invalid.

      Many Americans are scathing about the EPO’s strictness on “added matter” issues. But that is what a developed “written description” requirement looks like. First to File is not unexplored territory. On the contrary. It is quite well-trodden. Wait and see what happens when the Federal Circuit starts to adjudicate between rivals who have all drafted and filed under a FtF regime.

      1. 3.1.1

        By “written description,” do you mean the key ingredient, step, or apparatus that one typically discovers when one actually builds something. Without this Key Ingredient, one cannot actually build the claimed device without some experimentation, and perhaps, not at all.

        But, during prosecution, can one distinguish a reference because it does not disclose The Key Ingredient? (This seems like our own defense that a reference is non enabling. But, I cannot remember the last time a court found a reference non enabling.)


          Under the EPC, Ned, you have to provide a disclosure that enables over the full scope of the claim you make. You can’t patch it afterwards. You can’t shift afterwards to an invention different from the one you disclosed on your filing date.

          Many Americans don’t understand why a prosecution amendment, to introduce a claim having a scope intermediate between claim 1 as filed and the embodiment of the detailed disclosure, can add matter. It can be legitimate in Europe to file on a new and inventive selection (for example, a new aluminium alloy composition range that delivers an enhanced paint bake performance to auto makers). But you have to include that selected composition range in the application as filed, and announce, also in the application as filed, the nature of the performance enhancement it delivers. The strictness on prosecution amendments is to stop an earlier filer that missed the mark from stomping on a later filer who was, in fact, the FIRST to hit the mark.

          In other words, you do need, in the appln as filed, a “written description” of what is your patentable subject matter.

          Courts in Europe are not shy of finding some disclosure to be non-enabling, whether the appln as filed or the reference invoked as novelty-destroying. But this is much more common in chem/bio than in mech or EE.


            Thanks, Max. From what you just said, you can overcome a reference if the reference itself is non enabling for what one claims. Let me see if I understand this.

            I claim a metal shield. I disclose embodiments of shields with every kind of metal known to man, all fully enabled.

            A reference discloses a bronze shield, but claims metal. Assume first that the reference is enabled for bronze, but not for metal.

            Does that mean I can get a claim for a metal shield given that bronze is in the prior art? Not in the US. All I can get are subgenus and species claims, if any.

            Next, assume even bronze is not enabled. Does that means I can claim both a bronze shield and a metal shield?


              OK Ned. I’ll try to explain, using your hypo.

              The reference, D1 claims a special sort of “shield” made of any metal. In its detailed description it teaches to use (only) bronze.

              You claim the very same shield, and take care to enable it for all metals.

              Does D1 destroy your novelty?

              First question: does D1 “disclose” your shield, made of bronze? That is to say, can the skilled person derive from D1 directly and unambiguously, such a shield made of bronze? If YES, continue.

              Second question: Does D1 enable its disclosure of the bronze shield? If yes, that is enough to puncture the validity of your claim. Something inside your claim envelope lacks novelty.

              But if the D1 disclosure fails to disclose and also enable a bronze shield, your validity is intact. Go on to look at obviousness.

              But if a bronze shield lacks novelty, you will have to claim more narrowly, to get bronze out of the ambit of your claim.

              No surprises for you in any of that, I hope.


            Max, what I really want to know is what is the criteria for determining a reference is not enabled for something.


            Your attempted point is a bust, MaxDrei – just like every time you attempt it.

            Here in the U.S., it is but standard boilerplate to open up that “intermediates” thing you clutch so fervently.

            The last time you tried your “paint bake” example you whimpered away with your head between your legs. Why on earth do you think this time would be any different?

      2. 3.1.2

        MD: First to File is not unexplored territory

        Most of the grown ups have been playing by international first-to-file rules for a long time. We explained all this to the “first to invent” crowd years before the AIA.


          MM, international filing is important for international businesses. For startups, it is less important if not totally unimportant.

          Just because international business like to call themselves sophisticated, grown up, or whatever, does not mean that we should adjust American patent law to service only their needs — to the exclusion of the startups.

          Besides, Lemely makes many a good point adjusting the law to favor reduction to practice goes a long way to preventing trolls who rely on paper patents that claim disembodied ideas and research plans.


            Just because international business like to call themselves sophisticated, grown up, or whatever, does not mean that we should adjust American patent law to service only their needs — to the exclusion of the startups.

            No doubt. That wasn’t my point. I was just responding (favorably) to MD’s observation that jumping the gun and filing an appliation that does little more than describe a concept, absent any non-abstract disclosure (e.g., devoid of any specific detailed disclosure of a new structure or physical transformation of matter) and expecting that someone else will reduce it to practice afterwards is unwise.

            I do have a specific issue with the relentless focus on “startups” because in almost every case we’re talking about software or other information-processing “startups”. You’re absolutely correct that patent law should not be “bent” to specially accomodate those parties but that is what has happened. You’re seeing now the “unbending” and there’s great reasons for it. Nobody is going to miss any of the “start-ups” that don’t get “started up” as a result of the recent (and ongoing) patent reforms. Nobody, that is, except for a tiny handful of gamblers and the bottom-feeders they enable.


              The kind of startup you describe that prey on the faults in the patent system created by Judge Rich and crew, paper patents on business methods, mostly known techniques since the days of Julius Caesar, are indeed not worthy of consideration or protection.

              I however exist in Silicon Valley and have personally seen small startups become major companies because they had the better mousetrap. Apple, Intel, HP, Sandisk, AMD, Seagate, Google and even IBM’s disk drive division, now part of Western Digital.

              And now we have Elon Musk.


          MM, international filing is important for international businesses. For startups, it is less important if not totally unimportant.

          Just because international business like to call themselves sophisticated, grown up, or whatever, does not mean that we should adjust American patent law to service only their needs — to the exclusion of the startups.

          Besides, Lemley makes many a good point adjusting the law to favor reduction to practice goes a long way to preventing trolls who rely on paper patents that claim disembodied ideas and research plans.

  7. 2

    Patent troll “Virginia Innovative Science LLC” lives to fight its target Samsung another day after the Federal Circuit vacates the district court judge’s claim construction (and resulting holdings of both infringement and invalidity) and replaces that claim construction with “suggestions” for consideration on remand.

    The good news for lovers of functionally-claimed software patents is they dodged a bullet because the claims at issue are “module plus function” garbage of the lowest order. The Federal Circuit apparently decided to punt on the juicier aspects of the dispute, issuing instead this weak, non-precedential opinion that only wastes more of everybody’s time.

    The claims here are atrocious and the claim construction misery is the result of VIS weaving back and forth during prosecution and at trial, trying to grab Samsung and avoid the prior art.

    The “technology” in a nutshell: the claimed invention addresses the problem of diminished enjoyment of received video content displayed on a mobile phone’s small screen by converting the received video content to a format that can be displayed on a larger screen.

    Got that? Content received on small display -> same content on large display. Wowee zowee! I guess you’ll need some “converter modules”. Plus some way for the small and large displays to receive and send video information. Can I haz patent now?

    Here’s the sooper dooper techno claim the trolls are pressing:

    23. An apparatus for processing signals to accommodate reproduction by an alternative display terminal, the apparatus comprising:

    an interface module, which receives a video signal appropriate for displaying a video content on a mobile terminal [because mobile is totally different!], the video signal being received from a cellular network communication [because cellular communication was invented tomorrow!] that is sent to the mobile terminal and then received by the interface module;

    a signal conversion module, in operative communication with the interface module, which processes the video signal to produce a converted signal for use by the alternative display terminal, wherein processing by the signal conversion module includes converting the video signal from a compression format appropriate for the mobile terminal to a display format for the alternative display terminal that is different from the compression format, such that the converted video signal comprises a display format and a power level appropriate for driving the alternative displaynterminal [nobody could have predicted some functionally claimed junk would appear here!]; and

    a device interface module, in operative communication with the signal conversion module, which provides the converted video signal to the alternative display terminal to accommodate displaying the video content by the alternative display terminal. [how unexpected!]

    Millions and millions of dollars spent litigating this incredible junk. Our patent system is a joke.

    1. 2.1

      MM, I would say this is another example of a method claim masquerading as an apparatus claim. The drafter of the claim had no intention to claim specific circuits or algorithms. They this intended to claim the functional result of converting from one format to another format.

      I wish litigators and the Federal Circuit would address this issue soon so that we would stop claiming methods as apparatus. Further, if that is all there was to it, simply the idea of converting formats, the claim should be as obvious as all get out as format conversions for one display format to another have to be as old as displays.

    2. 2.2

      Actually, mobile video content is quite a bit different than video for, say, Internet applications. For instance, the mobile could be closer or farther away from the cell tower, and the bandwidth would change correspondingly. Changing the bandwidth means that the data encryption technique could be changed to accommodate the bandwidth change, or other techniques could be used to accommodate the bandwidth change.

      Then, you have to convert whatever you get into something to be shown on a much larger display.

      By the way, the ability for cellular systems to handle video was really developed not that long ago. Remember when we had flip phones that didn’t need video? That wasn’t too long ago.

      Also it wasn’t too long ago when CDMA was the preferred technique (remember 3G?) and that was tough to use for video. LTE (aka 4G) has helped in that regard, but 4G hasn’t been around long.

      Without more (such as knowing the filing date of this application, the patent number, etc.), I wouldn’t be too dismissive of these claims.

      1. 2.2.1

        Hey Patent Bob, read the claim. All it says is “do it.” The claim does not say how to do it, what to do, nor does it specify any particular apparatus for doing it. It claims a result. So if there is an invention here, other than the idea of accomplishing the result, it is not claimed.

        The claim suffers the same problem as the claim in Rubber-Tip Pencil, the case often cited by the Supreme Court as simply claiming an idea.


          Hey Patent Bob, read the claim.

          He doesn’t have to. He knows that this technology is super valuable therefore the claim is valid and Samsung must have copied the technology from Virginia Innovation Sciences LLC which, as every schoolkid knows, was one of the pioneers of cellular communication.

      2. 2.2.2

        Without more (such as knowing the filing date of this application

        When do you think it was filed, PB? 1982?

  8. 1

    Thanks for the pointer to the Paper by Mark Lemley, on the problem of timing the filing of patent applications under a First to File regime. I shall read with interest.

    1. 1.1

      You know Max, what we really need is an international e-mail address for us to notify the international police or some such about scam artists such as the below. I just got this on Skype.

      “[10:19:47 AM] *** I am ( Abdullah Aziz ) i am Accountant Officer in FIRST GULF BANK
      DUBAI(U.A.E)…I have a financial transaction that will benefit both
      of us It’s my urgent need For a foreign partner that made me to
      contact you I have a business deal worth $26,000,000.00 (twenty six
      million dollars ) i want to transfer out of my country. ***”

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