Guest Post: In Rush to Invalidate Patents at Pleadings Stage, Are Courts Coloring Outside the Lines?

Guest post by David Bohrer, Patent Trial Practice, Valorem Law Group.colored floppy

OIP Technologies v. and IPC v. Active Network are the most recent of a growing number of decisions dismissing software and business method patent lawsuits on the pleadings. In these decisions, the courts are finding that the invention alleged in the complaint is an abstract idea that is not eligible for patent protection.

While early resolution of patent litigation is laudable, motions directed to the pleadings generally may not consider matters outside what is pled in the complaint. Yet this is what courts are doing — they have been coloring outside the lines when deciding whether a patented software or business method is an ineligible abstraction.  They are looking beyond the allegations in the complaint to discern “fundamental economic concepts.”  Independent of anything pled in the complaint, they are making historical observations about alleged longstanding commercial practices and deciding whether the claimed invention is analogous to such practices.

Coloring outside the lines may not be acceptable.  The benefit of providing an early exit from otherwise expensive and burdensome patent litigation may be outweighed by the prejudice to all parties of eroding the rules regarding the matters that may be considered before throwing out a lawsuit. Perhaps there is a better solution. Perhaps pleading motions challenging patent subject matter eligibility should be converted to expedited and limited scope summary judgment motions, thereby allowing the parties to present declarations, testimony and other extrinsic evidence that better address whether a claimed economic practice is an unpatentable idea or a patentable invention.

Alice is being used to obtain early dismissal of lawsuits based on software and business method patents

Courts granting patent ineligible subject matter motions are using the Supreme Court’s 2014 Alice decision as an effective weapon to combat vexatious patent litigation brought by non-practicing entities (NPEs). See Curiouser and Curiouser Is Alice the Long Sought Troll Killer _ The Legal Intelligencer.  Alice provides relatively easy to satisfy requirements for demonstrating that an asserted software patent is claiming an “abstract idea” and therefore is not eligible for patent protection under section 101 of the patent statute.

Not only have courts found in Alice the tools necessary to dispose of vexatious patent lawsuits asserting software and business method patents, they also are willing to entertain an Alice challenge at the pleadings stage.  The procedural posture of a pleading motion is key to using Alice to “kill trolls.”  Defendants can challenge the merits of the patent lawsuit at the pleadings stage and before having to incur significant expenses associated with discovery, claim construction, experts and summary judgment. The nuisance value of the lawsuit goes way down.  Defendants are less likely to feel they have to pay a distasteful settlement or else bear the much greater expense of defending on the merits.

Recent Federal Circuit decisions continue the trend

On June 11, 2015 and again on June 23, 2015, the Federal Circuit affirmed decisions by the Northern District of California dismissing software patent lawsuits at the pleading stage. In each of these cases, OIP Technologies v. (underlying patent claimed offer-based price optimization) and IPC v. Active Network (retaining information lost in the navigation of online forms) the district courts granted Rule 12(b)(6) motions to dismiss on the grounds that the patents claimed abstract ideas ineligible for patent protection.

In each case, the Federal Circuit approved the resolution of 101 eligibility at the pleading stage with little to no analysis. In IPC, the Federal Circuit’s opinion includes one sentence in which the court states that claim construction (which had not yet occurred) is “not an inviolable concept.” In OIP, the lead opinion does not address how early in litigation alleged ineligibility may be resolved, but in a concurring opinion Judge Mayer supports addressing eligibility at the motion-to-dismiss stage.

Failure to recite statutory subject matter is the sort of “basic deficiency,” that can, and should, “be exposed at the point of minimum expenditure of time and money by the parties and the court,” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 558 (2007) (citations and internal quotation marks omitted). Addressing 35 U.S.C. § 101 at the outset not only conserves scarce judicial resources and spares litigants the staggering costs associated with discovery and protracted claim construction litigation, it also works to stem the tide of vexatious suits brought by the owners of vague and overbroad business method patents. Accordingly, where, as here, asserted claims are plainly directed to a patent ineligible abstract idea, we have repeatedly sanctioned a district court’s decision to dispose of them on the pleadings. See, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1349 (Fed. Cir. 2014); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 717 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). I commend the district court’s adherence to the Supreme Court’s instruction that patent eligibility is a “threshold” issue, Bilski v. Kappos, 561 U.S. 593, 602 (2010), by resolving it at the first opportunity.

Contrary to the suggestion made by Judge Mayer, the Supreme Court has not addressed whether it is appropriate to address a 101 challenge at the pleading stage. Bilski’s characterization of patent eligibility as a “threshold” issue was made with reference to the 102 and 103 invalidity defenses and did not address the procedural issue. Bilski also cites to extrinsic economic treatises and other evidence of economic practice in support of the decision reviewing the denial of a patent application. Alice did NOT address patent eligibility in the context of a pleadings motion, but instead reviewed a patent eligibility ruling that was made at summary judgment. Alice cites to the same extrinsic economic evidence relied upon in Bilski.

There is not supposed to be any coloring outside the lines on pleadings motions

The well-established general rule is that Rule 12(b)(6) motions to dismiss as well as Rule 12(c) motions for judgment on the pleadings are limited to the well-pled factual allegations made in the complaint. “A court generally cannot consider material outside of the complaint (e.g., facts presented in briefs, affidavits or discovery materials).” Chavez v. United States, 683 F.3d 1102, 1108 (9th Cir. 2012); In re American Cont’l Corp./Lincoln Sav. & Loan Sec. Litig., 102 F.3d 1524, 1537 (9th Cir. 1996) (As recognized in OIP and IPC, the Federal Circuit applies regional circuit law in deciding motions to dismiss.).

Yet this is what is happening

Notwithstanding these rules, OIP and IPC each looked beyond the complaint in determining whether the asserted claims are directed to ineligible abstract ideas. In OIP, the asserted price optimization claims were deemed “similar to other ‘fundamental economic concepts’ found to be abstract ideas.” In IPC, the asserted online information retention claims were deemed “well-understood, routine, conventional activities previously known.” In each instance, the court is looking at practices and activities outside of anything alleged in the complaint.

These Federal Circuit cases teach that it is acceptable to consider matters outside of the complaint, as confirmed by Affinity Labs of Texas v. (June 12, 2015 WD Tex.), in which the magistrate judge, applying 101 precedent from OIP and other Federal Circuit decisions, says that it is making “general historical observations that come to mind.” Based on such extrinsic “historical observations,” the court finds that the claimed invention of delivering selectable media content and subsequently playing the selected content on a portable devices is a “long-standing commercial practice and is therefore abstract.”

The Court notes that the first transistor radio, which delivers selectable audio media to a portable device, was developed in the late 1940s and was immensely popular in the succeeding decades. Similarly, the first portable televisions, another form of delivering “selectable” media content to a portable device, were introduced in the 1980s and 1990s. The above examples represent just a few of the many general historical observations that come to mind as evidence of the long-standing commercial practice of delivering selectable media content and subsequently playing the selected content on a portable device.

Reliance on extrinsic evidence of economic practices and concepts found in precedent

OIP and IPC support their abstract idea findings by equating the economic purpose of the asserted patent with the economic concepts successfully challenged in other cases. For example, in OIP, the Federal Circuit says offer-based price optimization (at issue in OIP) is analogous to using advertising as an exchange or currency (deemed an abstract idea in the earlier Federal Circuit decision Ultramercial v. Hulu). Likewise, in IPC, the Federal Circuit said that recent precedent illustrates the boundary between abstraction and patent eligible subject matter. But how is the court in a position to make the connection between the asserted claims and prior precedent on its own observation and independent of expert testimony or other relevant extrinsic evidence? Judge Mayer and many other respected judges might reply that it is acceptable to make this connection because it is “plain” or “obvious.” Yet this seems to invite the application of 20-20 hindsight and of the “I know it when I see it” standard.

Can’t take judicial notice of truth of findings made in other decisions

Furthermore, while a court may take judicial notice of another court’s opinion in ruling on a motion to dismiss, it may do so only as to the existence of the opinion and not for the truth of the facts recited therein. Lee v. City of Los Angeles, 250 F.3d 668, 690 (9th Cir. 2001). It appears that cases such as OIP and IPC are relying on the truth of factual findings made in other decisions regarding whether certain economic concepts are “conventional” or “well-known” – such matters appear outside the scope of what may be judicially noticed in a motion to dismiss.

Possible solution is expedited and limited scope summary judgment motions

A court’s consideration of information outside the four corners of the complaint, assuming it does not fall within exceptions such as judicial notice, converts a motion to dismiss into a summary judgment motion. Lee, 250 F.3d at 688. True enough, this raises the specter of time-consuming discovery and case development (see the criticism of ED Texas Judge Gilstrap’s requirement that the parties demonstrate that there is a good faith basis for such a motion). This said, district courts have the discretion to expedite such motions as well as limit their scope. They could, for example, specifically require the responding party to submit to expedited discovery on the issue whether the asserted patent claims eligible subject matter followed by expedited briefing and submission of evidence on both the question whether the purpose of the asserted claims is a conventional economic concept and therefore an ineligible abstract idea, and if so, whether there is an inventive concept that saves the claim from dismissal. They could stay other case development or discovery during the expedited resolution of the motion. It does not necessarily follow that the court would have to conduct claim construction as part of the process. The parties, as they do now, could brief whether claim construction is necessary, but would also have greater flexibility in terms of their ability to submit proofs in support of their claim construction arguments. Woe unto the party who purports without any reasonable basis to have compelling extrinsic evidence that they are not asserting a conventional economic concept or that their patent is directed to a protected inventive concept– the district courts have ample support in High Octane and its progeny for awarding fees under such circumstances.

If courts are going to color outside the lines, then let the parties do the same thing

Courts are willing to color outside the lines and consider extrinsic evidence upon addressing motions to dismiss challenging alleged ineligible patent subject matter. This contravenes well-established rules and policies regarding pleading challenges and may cause undue prejudice by denying a party the ability to submit extrinsic evidence in support of a well-pled claim. A possible solution is for the court to allow the parties to color outside the lines as well. The court has the discretion to impose time and scope limits on discovery and briefing without opening the door to prolonged, vexatious litigation.

62 thoughts on “Guest Post: In Rush to Invalidate Patents at Pleadings Stage, Are Courts Coloring Outside the Lines?

  1. 9

    One can sympathize with the author’s comment that: “Independent of anything pled in the complaint, they are making historical observations about alleged longstanding commercial practices and deciding whether the claimed invention is analogous to such practices.” [This could be considered another way of complaining about the confabulation of 103 issues in some current ab initio 101 decisions.]
    But taking early “judicial notice” of undisputed well know facts, or granting early pre-trial S.J.’s on undisputed facts, especially for 102, is not new, and often judicially expeditious and cost-saving. Will not erroneous or even validly factually disputable pre-trial judicial conclusions about longstanding common commercial practices and their application to claim terms be appealable from 101 preliminary decisions, just as from any other? Providing the patent owner provided support for that in response to the defendant’s motion to dismiss the case?

    1. 9.1

      P.S. I think there is a conclusion that can be drawn from the new patent litigation circumstances, which include not only this risk of an ab initio 101 attack, but also IPRs, CBMs and enhanced attorney fee sanctions risks. Namely that it is no longer a good idea to file suit on a patent without any advance preparation for how quickly unamended asserted claims may need to be defended from any of these new and faster attacks? In particular, what individual or combined claim elements are arguably novel and not just abstract claims to end results? [Not merely reasonably likely to be infringed by at least one defendant product or method.]

  2. 8

    Typical IP lawyer tunnel-vision. The patent itself is attached to, or referenced in, the patent itself. So there is nothing infirm about looking at the claims and the patent, and all of the statements in the specification (including admissions about prior art) at the pleadings stage. In the recent cases, there is often a heavy reliance on statements in the specification that concedes the “inventive concept” is simply an application of well-known technology.

    As to whether things are conventional or well-known, give me a break, IP tunnel vision man. Federal courts have been doing this for DECADES in ruling on Rule 12(b)(6) motions in antitrust and securities class action complaints, even before the more recent Twombly/Iqbal decisions that made this even more acceptable. Courts have, for decades, dismissed antitrust and securities claims where the pleaded theory of liability didn’t make sense, denied common sense or human nature, or defied basic concepts of economics.

    Jason, learn some civil procedure before you waste time with posts like this. The rules governing considerations of factual matters outside Rule 12(b)(6) motions has never forced courts to check their common sense and intellect at the door. Your bias is obvious, but I don’t see you actually showing that any of the statements in these Federal Circuit decisions about things being “conventional” is actually, factually, wrong. And if there was truly a factual basis to challenge those assertions, the plaintiff could easily oppose a Rule 12(b)(6) motion with a declaration to put it in the record, which as a practical matter will force the Court to convert the motion into a summary judgment motion.

  3. 7

    Sockie: “innocent people’s lives” in this context is referring to large corporations.

    Ah, I see. When a wealthy bottom feeding attrorney sues a “large corporation” with a junky patent, that’s totally different. Because nobody works at those places — which are totally non-innovative, btw! — and the costs of defending against those bottom feeders never, ever gets passed down to ordinary people. Sure, that makes sense.

    Meanwhile, back on earth, we’re not just talking about “large corporations.” Time to come out of the cave you’ve apparently been living in:

    link to

    Garofalo, who runs a small video contest website called, is now using his patent to file lawsuits against four small photo websites that “dared to ask people about their favorite photos.”

    One of the sites is, a photo community and contest forum run by a photographer named Ruth Taylor from Bucks County, Pennsylvania.

    More here: link to

    Garfum’s response to EFF’s claims was to file a brief explaining how its patent covers sharing multi-media “among a plurality of users in a computer network, a task which was notoriously difficult prior to the ’618 Patent.” It asserted that technology was innovative, going beyond “traditional databases,” although it didn’t explain how. “Traditional databases using conventional methods could not deliver the most relevant content, e.g., funniest videos, to users,” Garfum’s lawyers wrote. Yet Garfum’s own patent stated, twice, that “conventional database packages” could be used in implementing it.

    Garfum seems to have a great deal of difficulty telling the truth. Anyone surprised?

    Please educate yourself, sockie, so you don’t come across like a desperate shill who was born yesterday. Thanks.

    1. 7.1

      A corporation can’t have a life that can be ruined – it doesn’t feel. Inclusion of the term “innocent” is without meaning, since that’s the issue to be decided.

    2. 7.2

      Wow, so someone filed a lawsuit which you MM deem to be frivolous. I am pretty sure the courts are the ones to decide that and I am pretty sure the courts can punish people for doing that.

      I am also pretty sure there are IPRs at the PTO that stay court proceedings. So, it would seem the D’s have plenty of options.

      But, do keep telling us about every claim you don’t like and every lawsuit that YOU think is frivolous.

      1. 7.2.1

        NW so someone filed a lawsuit which you MM deem to be frivolous.

        Indeed! It happens fairly regularly.

        do keep telling us about every claim you don’t like and every lawsuit that YOU think is frivolous.

        I will.

        And please keep responding to the reforms that will minimize the frequency and costs of frivolous lawsuits with your awesome rants about “fascism”. Those rants are very serious! More importantly, it’s useful for everyone to see the unique brand of … brain power (?) … that the patent maximalists tend to attract to their super dooper important cause.


          it happens fairly regularly

          Nice – now take a look at the big picture. What is the properly normalized rate of patent lawsuits?

          Maybe you want to rail instead about all those automobile deaths and call for horses to be reintroduced; after all the number of death by horse is so small as to “signify” perfection while auto deaths are truly alarming.

          That is, if your penchant for saving children running through fields of rye does not extend to actually saving lives and you want to kvetch on those “worst-thing-ever” patents…

          Get into a profession for which you can believe in the work product you supposedly produce. Your cognitive dissonance is making you an Arse.


            “anon”: Maybe you want to rail instead about all those automobile deaths

            And maybe you want to rail about safety standards and seatbelt laws because “fascism.”


            Oh noes, Bo! Here comes Boss Hog!


              safety standards and seatbelt laws

              That’s even worse then, given the number of deaths tied to automobiles and the fact that such items are in place.

              Dabnit Gumby, your umbrage is in the wrong place – there be children in real danger, and not just running through the field of rye.



          MM, it is pretty simple. I don’t mind political fights in Congress. I do mind the SCOTUS creating case law like Alice that is an equity remedy that a judge with no evidence.

          I do think that fascism is judges appointed by big corp and laws like Alice. Maybe you should read up on fascism.


            B-b-b-but fascism is one of those things that only happens to other countries…

      1. 7.3.1

        MM: Boo hoo! Someone filed a complaint that includes a patent! They are criminals and cheats. How do we know that EFF isn’t the bully? Oh wait, ’cause you MM say so.

    1. 6.1

      >Summary: The rich and the powerful, as well as their lawyers (whose job is to protect their money and power by means of government-enforced monopoly), carry on whining after the Alice case, in which many abstract patents were essentially ruled — by extension — invalid

      OK. So we found where MM gets his material.

  4. 5

    This is what we (not part of the psychotic anti-patent crowd) have been saying since the start.

    And Newman’s last opinion moved towards making this clearer by saying that Alice does involve a 102 and 103 analysis. So, the real question is::::::Graham.

    I said that the first day after Alice—Graham is overturned.

  5. 4

    We are all SCOTUS now. The gist/abstract/heart-of-the-invention is now the standard. Claims? Rule of law? We are now firmly in the Justice Breyer era of social/economic/policy optimization (read: the collective trumps the individual). Of course, this was specifically overruled by the patent act of 54.

    1. 4.1



      Rader coined “abstract.”

      Kennedy developed the test.

      Rader and Kennedy. Rader and Kennedy.




      1. 4.1.1

        Yes Ned it was Rader and I remember you pointing out that abstract may end up as the standard when Rader wrote about it in Bilski.

        But, I doubt Rader would sign off on Alice. (And, let’s not forget that abstract was already one of the three magically created judicial exceptions.)


          And Ned you get full marks for picking up immediately the significance of Rader’s remarks regarding “abstract” in Bilski.


            Yeah, Night, “abstract” as used by Rader and by Kennedy is little better than a nonce word, a placeholder without meaning. We only learn what it means when the court tells us a particular example because they will not define “abstract.”

            As I said recently, a test without any definition of what it means is not law, but equity – the totality of circumstances. Scalia has again and again and again pointed out that “totality of circumstances” is essentially an equitable principle and not a legal principle. In deciding issues of law, we need a rule.

            When we are talking about the Supreme Court being “lawless,” well we now have a new definition of what that means. They are removing law from 101 and substituting equity. While many have pointed out the lawless nature of the recent Supreme Court jurisprudence in this area, I think we might get away from simple emoting and shift the focus to the fact that it the test of abstractness that Rader coined, and Kennedy adopted, is not law at all.


              Ned – that is part and parcel of what you get when you worship the Supremes and place them above the law (statutory law, as in the “form” of the words of Congress).

              You cannot have it both ways, my dear friend. You cannot have the Royal Nine disregarding what Congress has done merely when such aligns with your views and embrace the implicit and explicit re-writing of statutory law when that aligns with your views.


                anon, Rader was fired and I have heard talk from some that Kennedy should be impeached (for what?). The last time that happened is when Ford tried to impeach Douglas ostensibly for corruption, but really because, in his view, Douglas positions on the law and constitution.

                I wouldn’t say Kennedy is incompetent, but I am really starting to dislike his brand of reasoning. He is an imperial SOB of the first order.

                1. As I said, that’s what you get for placing the Court above the law.

                  Patent law is expressly statutory law – not common law. It is thusly for a reason.

                2. I have heard talk from some that Kennedy should be impeached (for what?)


                  As if.

      2. 4.1.2

        Rader came up with the “coarse filter” idea–which would have rendered 101 toothless. Maybe it’s supposed to be toothless, but that idea seemed pretty obviously made up (to me, at least).


            Read Chakrabarty.

            Nothing in Charkabarty suggests that patentees can scriven around subject matter eligibility concerns, which was where Rader’s inane understanding of 101 directly leads.

            Regardless, there are some far more important and recent 101 cases than Chakrabarty that you should read, “anon.” And they’re never going to be overturned, not by any Supreme Court or by Congress.


              Regardless you need to read the decision again.

              This time, try to understand it.


    2. 4.2

      iwasthere: you are, of course, right that Alice is not Constitutional. There are no boundaries to Alice. It essentially holds: any judge may invalidate any patent by saying it is abstract and following a ridiculous judge generated line of reasoning.

      And—guess what–when you couple that with judges that are appointed by Google you get a fascist state.

      Yes, friends, Alice + Google judges = fascist state. Thanks Obama and Lemley (Stern too.) Let’s hope the ovens aren’t reopened for people. They have been reopened for patents and remember that the fascist in Germany started with books and those with foresight said if they are going to burn the books they will burn us next.

      1. 4.2.1

        Your use of ridiculous analogies undermines everything you say, and is why people don’t take you seriously.


          It is NOT so ridiculous – if you recall the matter at hand that spawned Marbury – a mere justice of the peace commission – you should not dismiss this issue just because parallels are made with atrocious philosophies.

          That being said – the top definition at link to shows that we need to coin a new term because it is NOT only the Far Right that is attacking patents. The Far Left as well have co-opted Benito’s three principles. The telling line: “known for their harmony and lack of internal strife” – Jane’s strident hopes of us all getting down on our knees and praying that we become a particular way to achieve that peace for our time…


            It is important to keep the big picture in mind. What is driving all this is big corp’s influence of government.

            But, you are correct that it is a new thing that is forming.

            The thing to think about is everything that has happened since 2008 is in the wrong direction. More concentration of wealth. More influence for the big corporations.

            Alice is just a huge leap in the wrong direction. It is equity disguised as a rule.

            Anyway, keep in mind, that it is not just patents. Soon you will go before a judge and they will decide your fate on the totality of circumstances and the judge will be beholden to big corp. Fascism.


            It is NOT so ridiculous

            Ah, the Terrible Twins are back with their trademark tag-team effort to equate stricter patent laws with ethnic cleansing.

            Deep stuff! But these are very serious people! How do we know that? Because they keep telling us so!



                Bizarro spin job

                Says Kookoo McPatentpants after ranting about Jane Fonda.



          And yet “really?” I have consistently predicted what is going to happen.

          It won’t look like Nazi Germany because it was too outwardly vile. But, we are moving to fascist state. And note too that if you read journal articles you would read that many in criminal law are saying what I am saying too. Basically, if the federal government wants to prosecute you and you don’t have a stash of $20 million, they can do it. And, almost everyone is forced to plea bargain. That is fascism.


              Right MM. It is cr@zy ’cause a virulent anti-patent blogger says so.

              OK. My predictions have been pretty accurate through the years with you jeering me at each step. Gee, Obama appointed a bunch of non-science judges just like I said he would, didn’t he?

              The next giant step is when the big corps start giving the judges massive bucks like they have been the politicians. Maybe a Google judge will leave the Fed. Cir. after performing their service to the big corp and become an executive. That’s the next step we will see.


                Maybe a Google judge will leave the Fed. Cir. after performing their service to the big corp and become an executive. That’s the next step we will see.

                Alright, tell everyone which “Google judge” is going to do that.

                Meanwhile, here on planet earth, we know that two software patent lovers, (former) Judge Michel and Big Dave Kappos, had their own green dreams (apparently just being millionaires who get paid to spew b.s. in people’s ears at conferences isn’t enough):

                Dave Kappos and I [were] involved in an attempt to create a stock market for patent rights. It was called Intellectual Property Exchange International. And it went out of business in April because no one would take a license

                Boo hoo.

                Please tell everyone more about these “Google judges” and their devious plans, NW.

  6. 3

    Myriad was resolved on the pleadings, though the question was whether and when DNA is categorically patentable, not whether the individual application had an “inventive concept.”

  7. 2

    Take IPC for example — did the patent owner object that the claim elements other that what the spec insisted was the novel feature were not in fact old, old in combination and conventional?

    The reason I ask is that people have rights, but unless they are asserted, they can be waived.

    I do agree in principle that if the patent owner insists that novelty lies in something that is otherwise patentable subject matter, that one cannot dismiss the complaint on the merits.

    1. 2.1

      And what if the patent holder insists that the novelty of the claim IS the claim, you know, as a whole.

      (I see you snuck in “old in combination” there Ned, you sly goalpost-moving dog you)

      1. 2.1.1

        (Recognizing of course that “novelty of the claim” and “the claim is novel” have two different meanings)

        Sort of like “as a category” and “categorically.”

        Ah yes, the fun pedantic games.

      2. 2.1.2

        anon, yeah, like in Benson? Add a conventional computer to a new mathematical algorithm and we have the new machine?

        Talking to your crowd is like talking to Rich. One suddenly is transport to a different world where form is elevated over substance, where made up facts overrule well established case law to the contrary, and where one can with impunity overrule the Supreme Court.


          And form – as in the words of Congress – are pretty darn important. Not sure what your “substance” is that makes your world one of magic, but you might want to ground yourself in a proper understanding between the relations of statutory law and your common law Royalness.

    2. 2.2

      Ned: if the patent owner insists that novelty lies in something that is otherwise patentable subject matter, that one cannot dismiss the complaint on the merits.

      Because patent owners have a right to extract additional time and money out of innocent people’s lives based on the telling of obvious falsehoods in court?

      That’s interesting.

      My client invented doing business on the Internet, wherein the business is specifically what you think about to earn money except for the stuff that’s in the prior art. That’s the correct scope of his patent claim and we’ll find that out after claim construction. Dismiss my case on the pleadings? MY CLIENT HAS RIGHTS! MY CLIENT HAS RIGHTS!

      Pretty sure the “rights” of patentees are properly limited when the patentee’s are some of the most transparent con artists whoever walked the earth.

      Did you hear the one about the guy with the patent on holding a photo contest “on the Internet”? It’s a good one.

      1. 2.2.1

        MM, ever hear of honesty? There are sanctions for lying to a court and causing someone else to spend a lot of money because of it.

        There is also disbarment.

        But lying to the PTO when filing an IPR? The PTO looks the other way thereby forcing the patent owner to unnecessarily put up a very expensive defense. Then the PTO says one cannot even appeal institution decisions.

        The PTO allows petitioners to get away with outright fraud, and the patent owner has no remedy or appeal.

        Beyond fricken belief.

        Yeah. Let’s hear the outrage.


          Then the PTO says one cannot even appeal institution decisions.

          To be fair on this point, Ned, Congress said this first.

          And even as much as I am one to push for the proper recognition of which branch has been allocated authority to write patent law, even Congress has its constraints as to the form of that law.

          The real issue here at this point Ned is the takings clause being implicated by one of the sticks in the bundle of property rights being taken with no recourse and no recompense.


            anon, really? There are many requirements for an IPR, and many bars to an IPR. The statute says that decisions under section 314 are not appealable. The statute does not say that decisions regarding any of the other requirements in sections other than 314 are not appealable.

            The point I am making is that the PTO is making the argument that the bar against appealing decisions under 314 extends to decisions regarding all the other requirements in all the other sections.


            To be even more fair, note that one also cannot normally file an (interlocutory) appeal from a D.C. decision to allow a patent suit to be instituted. You almost always have to go through with it until a final judgment in order to be able to appeal then, just as in an IPR.


          Ned, you know perfectly well that any paper filed by a patent attorney in an IPR, just like any other paper filed in the PTO, is subject to factual and legal rebuttals by the other party, PTO and state bar disciplinary rules and disciplinary proceedings. Furthermore in an IPR false statements are subject to IPR statutory-authored sanctions, and IPR declaration authors are subject to live cross-examinations. There is no factual basis for more attorney misrepresentations in IPRs than occurs in D.C. patent litigations. Logically it is less likely as much less effective, since APJs are patent attorneys with technical educations, not lay jurors.

          The dislike of IPRs is natural, especially among many patent attorneys who’s billings have been greatly reduced thereby. But they should stick to legitimate complaints and not mislead the public in public forums.


            I read brief where the same company/firm had filed the 42.104(a) certification when it turned out that what was certified was not in fact true. The PTO was arguing that it could rely on the certification to avoid ordering discovery. The reply pointed out that the certification was at least unreliable in the case of the company/firm.

            But that was generous of them.

            So long as the PTO does not discipline attorney for this kind of foul play, they will continue to do it.

            No attorney would be able to get away with this kind of fast an loose handling of the truth in court.


              It should be pointed out that the same company/firm had filed certifications in approximate 20 other cases where turned out that the certifications were not exactly accurate.

              I can tell you that I have seen numerous reexamination and IPR petition’s that simply blow by and ignore claim limitations. I generally focus on these when I respond. But don’t you think is just a bit wrong that a firm can get away with this cr*p in the first place?

              If a complaint is filed in the future under the new pleading requirements and the plaintiff ignores claim limitations, the complaint should be dismissed on the pleadings. Moreover, the company filing the complaint should be sanctioned by an award of costs and attorneys fees. But what about the attorneys who actually file that complaint? Is this fair advocacy or is this fraud on the court?


                that simply blow by and ignore claim limitations

                Maybe they learned this “Gisting” trick from the courts?

      2. 2.2.2

        Once again, “innocent people’s lives” in this context is referring to large corporations. Let’s be honest here.

  8. 1

    Lines… We don’t need no stinkin lines.

    Not with our handy dandy “Gist/Abstract” sword. It cuts through civil procedures too (it’s a Royal thing, you know).

    Patent pieces for our time.


Comments are closed.