Citing References – An Alternative Look

A lot has been said for the increased number of references being submitted to patent examiners. It is true that the average number of references submitted per application continues to skyrocket and for patents issued in 2015 that average number is 40 references. However, the average is skewed by a relatively small number of applications with an unusually large number of references cited.

If we look at the median case — the number of references remains reasonable. The chart below shows the median number of references submitted by patentees – grouped according to patent issue year. 1 out of every 6 recently issued patents included no prior art submissions by the patentee.

ReferencesCited3

3 thoughts on “Citing References – An Alternative Look

    1. 74.1

      The **reset** button was hit (to protect the guilty).

      The restoration as it were, well, don’t hold your breath.

      1. 74.1.1

        (maybe “Server Admin” can take time away from his pretty pictures and restore the threads that he may not like the contents thereof…

        just a thought).

        More likely though, is that the icons will provide cover for yet another “reset.”

        …or is that too cynical?

  1. 73

    Back to the point of the thread, I am still curious as to:

    Within Rob Roy’s comments below is this statement:

    “It is a common and customary practice for biotech patent applications to include an IDS with at least 50 references, and it is common for biotech patent applications to have an IDS with 100 to 200 references. ”

    I wonder how accurate that statement is (that may account for Malcolm’s softer tone on the matter).

    Would it be possible to reshow the data segmented by art unit?

    …(maybe mode per art unit over time)…

  2. 72

    Dear Rob Roy,

    Thank you for your explanations. It’s very helpful.

    In speaking of “attorneys”, it gets me thinking why americans will become nervous when they meet attorneys? In my understanding attorneys are just humanbeings as normal as they are.

    I found it is very interesting that when two international companies are involed in some business negotiations. The U.S. company clearly express that during the negotiation, they don’t like attorneys of both sides at present. Does ‘attorneys” represent a kind of aggressive or something?

  3. 71

    I agree with MM about the limit of 30 or 40 references. I screening 200 references is too expensive for an attorney to do, one of the Ph.D. scientists at the company can easily do it for free. The attorney can give the scientist. Ten minute lecture on how to screen the references. –Rob Roy

  4. 70

    This is about patent attorneys introducing themselves as “patent attorneys” instead of “attorneys.” I can think of 3 reasons. First, it is a way of self marketing and of getting more clients. Second, it is a way of preventing strangers from pestering the patent attorney with questions about lawsuits or domestic law. Third, it is a way of preventing strangers from becoming uptight and nervous or from making “attorney jokes.” The term “attorney” can make people uptight and nervous, but the term “patent attorne” is non-threatening. –Rob Roy

  5. 69

    Nice L I E S, Malcolm – the rules for pulling the plug are quite clear: get your facts straight and get the law straight. Opinions – expressed in an inte11ectually honest manner are always welcome.

    I notice that you don’t actually answer my question.

  6. 68

    You are doing that A.O.O.T.W.M.D thingie.

    You seem to have something telling you something, but it is plainly not evident here there or anywhere.

  7. 67

    screeching “Ends” with NO discussion of law is not the same as lawyers and judges “using it.”

    To the extent that bad law is afoot, you rather miss the dialogue as to WHY it is bad law.

    As to “rich narcissistic entitled cohorts,” you never do explain the dichotomy as to why you think the form of innovation most accessible to everyone is somehow a “t001” of that “cohort.”

    The legend in your own mind – with zero actual legal thinkin from you, and nothing but short script baseless ad hominem (including the ever present AccuseOthersOfThatWhichMalcolmDoes…

    Yeah, that line of “Nobody could have predicted“…

    Just not how you try to spin it.

  8. 66

    Looks like more folks are piling on asking for the Supreme Court to fix the CAFC’s magnificent failure in Promega v. Lifetech. Countdown until cert is granted …

    link to law360.com

    Agilent Technologies Inc. and law professor Timothy Holbrook have filed amicus briefs supporting Life Technologies Corp.’s petition urging the U.S. Supreme Court to review the Federal Circuit’s interpretation and application of an infringement statute in a $52 million patent and licensing dispute over gene-testing technology.

    Agilent told the high court in a brief filed July 26 that the Federal Circuit’s ruling that reversed an order vacating Promega Corp.’s $52 million win in the dispute involving 35 U.S.C. Section 271(f)(1) — a rule against U.S. liability for foreign infringement — makes U.S.-based manufacturers a target for patent infringement allegations by exposing them to infringement liability for activities and sales occurring outside the country based on nominal connections to the U.S.

  9. 65

    I am curious as to why you do not DIRECTLY engage these people on that forum

    LOLOLOLOLOLOLOLOLOL

    That would be the forum where the Big Q regularly pulls the plug on people who don’t recite his inane scripts?

    And where you and your fellow junk patent lovers and wannabe “innovators” sit around and rub each others backs every day while pretending that you are the Most Important People Ever?

    LOLOLOLOLOLOLOLOLOLOL

    The forum which tell you out of one side of its mouth that “Big Corp” never innovates while on the other side of its mouth its continually extolling those innovations (even the ones that are transparently junk)?

    LOLOLOLOLOLOLOLOLOLOL

    You’re funny. You really are.

  10. 64

    one just has to throw a little (real) law and some facts on the table for dialogue and then watch them scatter and retreat

    Meanwhile, back on planet earth, I’m watching lawyers and judges take my “fake law” and use it to pound your favorite junk patents into dust.

    Nobody could have predicted.

    The best part is watching you and your rich narcissistic entitled cohorts wail and moan about how unfair it all is. Let me guess: soon we’ll all be living in the “iron age” like some third world country and then we’ll be sorry that we tanked those bingo management patents! That was a great script you used to recite all the time, “anon.” What happened? Please bring it back.

  11. 63

    Can you please turn up the crazee to 12, “anon”? It’s funnier that way.

    I do not in fact cheerlead them, much less “endlessly cheerlead them,”

    Riiiiiiiight. Because the little voice in your head assures you that nobody remembers what you write here, and what you write there, and why. Keep telling yourself that. After all, it’s worked so wonderfully for you and your cohorts.

    Hey, I heard that someone’s patent didn’t get tanked in an IPR this week. Maybe the wind is shifting and your favorite sooper junky patents will become all the rage in a year or two.

    LOL

  12. 61

    Thanks Serious, I do not take Malcolm seriously.

    It is like sport though to thoroughly debunk his “style,” if only he is so pompous in his own filth.

    It’s downright comical to see him rail against patents so “relig1ously.”

    And then to turn around and watch the Echoes exhort his “side” of things: it’s as if the Echoes have dru nk so deeply of their own K001-aid, that they really do believe that ad nauseum ad infinitum monologuing impresses anyone with more than a Lemming brain.

    For all the monologues, one just has to throw a little (real) law and some facts on the table for dialogue and then watch them scatter and retreat to either silence or well worn short script baseless ad hominem.

  13. 60

    At 5.3.1, on the issue of how to write a US patent application properly, with slack jaw I read:

    “….a story about the invention, what were the problems in the prior art and how the invention solved those problems. Get the judge and jury behind you — that is ticket. All that story-line has to be in the spec”

    Why slack? Because that is exactly the approach that works best in the world outside the USA and yet, and yet…..

    Time and again it is so, when prosecuting at the EPO a case drafted in the USA, the specification is devoid of any written description of what technical effects, what performance enhancements, are delivered by which technical features (claim elements, if you like) of the claimed invention. The solution to a “problem” is the “technical effect”. The claims define the invention in terms of technical features. So you can’t reveal how “the invention” solves “the problem” without tying the features to the effects (specially when claim 1 gets knocked out by the EPO search report and you need to stiffen claim 1 by amendment, with a further injection of a feature that does solve a trickier problem).

    How then can it be, that the specification written in 5.3.1 style fails to connect the effects to the features? I guess it is because, in the USA (and by the way, only in the USA) you can announce the invention for the first time long after the date you filed your patent application. Is this why many an IDS is so lengthy, cos you still don’t know which docs will one day turn out to be relevant?

    MM, biotech cases do seem to carry longer lists of references. At the EPO you see this in oppositions. Non biotech ones have a modest list of prior art docs. Parties don’t cite more than necessary if only because the more “near misses” there were before the date of the claim, the more that suggests that it wasn’t actually obvious. Yet biotech oppositions routinely have 5 or 10 times as many prior art references cited, perhaps for the reasons you give.

  14. 58

    Nothing like being off point, and patently false to just be the arse that you are, eh Malcolm?

    First, your post does not address at all the point of my post – that the propaganda style so prevalent from you and the Echoes is the dissembling tactic of posting relentlessly something that is NOT the law as if it were already the law. It is noticeable that you do not deny what I say, but then again, all I would need do is remind you of your own admissions against interests or venture into a real legal discussion and watch you run away.

    Second, what is your obsession with Mr. Quinn (and now Mr. Brachmann)???? They don’t even post here, nor is the thread concerning them, and yet you apparently cannot stop thinking about them. Also, what they do or do not do has NO bearing on my legal positions nor ANY dialogue here on this blog. I am curious as to why you do not DIRECTLY engage these people on that forum. Of course, I hope that you realize that by not doing so, you impugn Prof. Crouch and add to the impression (whether real or not) that there is some illicit relationship that allows you to “be Malcolm” nine years and running.

    Third, I do not in fact cheerlead them, much less “endlessly cheerlead them,” and even much less do any such thing for the denigrating reason that you suggest.

    Such is an utter falsehood. I suppose Prof. Crouch won’t care about that either.

    Fourth, the legend in their own mind is you and your fields of rye protection duty. You might consider though that you would be a touch believable in your “concerns” against “grifters” if you approached your campaigns with clean hands and just a little inte11ectual honesty.

    Maybe Malcolm you should spend less time trying to denigrate others and vom1t your C R P and just a little more time responding on point.

  15. 57

    “anon” These propagandists employ an ad nauseum ad infinitum repetition of a desired state as if that desired state were actual law

    Meanwhile “anon” can be found elswhere on the Internets endlessly cheeleading for deep thinking intellectuals like Big Q and Steve Brachmann. Because they’re like, totally, serious people and would never mindlessly shill for their own selfish interests.

    LOLOLOLOLOLOLOL

    Keep the laughs coming, “anon.” You’re so close to complete victory in your own mind it’d be a shame to stop now.

  16. 55

    Dear anon,

    I take it from your comments that you are perhaps a new examiner in a sovereign other than the United States.

    =========================================

    You are partially right. I am outside of the U.S..

    But I am not a examiner and not new to patent system.

    I am both regestered in the patent office and courts in other sovereign.

  17. 54

    ^^^ Do you know what is really rude and unprofessional?

    Hij@cking a nym with deceitful purpose

    ;-)

    You didn’t learn, did you sister anon?

  18. 52

    Mark,

    I take it from your comments that you are perhaps a new examiner in a sovereign other than the United States.

    You might enjoy the good idea from MaxDrei and my even better fine tuning at link to patentlyo.com

  19. 51

    Ned,

    As far as I know, your latest windmill only holds public meetings for which the minutes are published. See link to uspto.gov

    Contrast that (on several levels) with the “private” meetings that Miss Lee held with (yes Google) certain industry captains that to this day have never had their meeting contents been documented or made public.

    Your “angst” is (again) misdirected.

  20. 50

    Ned, the official PTO Advisory Committee* IS intended as a public interest committee to review PTO activities and and make recommendations. It has a mix of well known patent attorneys and inventors. However, the PTO decides who gets to be on it.

    *”The USPTO’s Patent Public Advisory Committee. The PPAC is a group of nine individuals selected by the Commerce Secretary (on the advice of the PTO Director). The committee’s purpose is to advise the PTO Director on the management of operations of the Office. The nine-member PPAC is on a three-year rotating schedule. Each year three new members are appointed. ”
    Nominations for .. appointment may be sent to PPACnominations@uspto.gov. .. Formal nominations are required.”

  21. 49

    If it turns out later that the claims are unpatentable over a prior art reference that the applicant and/or the prosecuting attorney not only knew about, but knew of it materiality, the patent should be held to be unenforceable,

    This has (not-so) unforeseen ill-effect:

    Taking the bar to an actual “know of” AND knew of materiality may encourage more shell games and “dumbing-down-don’t-look-at-what’s-out-there-because-you-get-punished-only-by-knowing-more” behavior.

    Ned continues to not see (or pretend not to see) the difference of Rule 56 during prosecution and the effect (separate) of gen eral inequitable conduct in a judicial setting.

    Ned, your take-away from Therasense is clearly – and expressly – wrong. This has been pointed out to you many many many many times, and yet, here again, you come with the Internet style shout down of ignor1ng what has been put in front of you and knowingly presenting a errant view.

    The blight of this drive-by monologue style would be alleviated if certain people would simply realize that this blog is being used as a forum for “professional” advocacy, and that the type of blatant dissembling by the likes of Ned and Malcolm should just not be tolerated.

    Hey, I am all for their ability to express opinions and desired changes in law.

    But what these propagandists are doing is NOT that.

    These propagandists employ an ad nauseum ad infinitum repetition of a desired state as if that desired state were actual law.

    That is decidedly unhelpful for the uninitiated and for the “ecosystem” at large. It is a leading source of something other than patent law.

    And it is something entirely within the powers of the editors of this blog to control.

  22. 47

    Within Rob Roy’s comments below is this statement:

    It is a common and customary practice for biotech patent applications to include an IDS with at least 50 references, and it is common for biotech patent applications to have an IDS with 100 to 200 references.

    I wonder has accurate that statement is (that may account for Malcolm’s softer tone on the matter).

    Would it be possible to reshow the data segmented by art unit?

  23. 46

    unreasonable to create a legal fiction presumption… and there should be no initialing-off of unread references

    Re-read Tafas Paul. your suggestion impliedly violates that case as you effectively attempt to switch the onus of examination to the applicant.

    The “ that could be done” of your opinion is simply wrong.

  24. 45

    Your ability to “consider” any and all possible prior art either set before you (or from your searches, for which the number is likely just as large), marks you as part of the problem of bad examination.

    I would LOVE seeing you put anything remotely like the admission you make into the written record.

    Absolutely love it.

  25. 44

    Long ago I was taught not to draft claims that I knew were unpatentable over art of which I was aware.

    I know of NOT a single attorney that will countenance such a thing.

    If I did I would report that attorney – there is that oath that gets signed (along with the rule that Ned wants to oddly abolish).

  26. 43

    When they cite me too many references I just write in the remarks section that “I had to mark this considered because it says we shall consider it, but I want any reviewing body to know that I haven’t in fact read any of these and its entirely possible they anticipate the invention or render it obvious.”

    I haven’t had a single person fight me on that yet. Apparently one BS move deserves another.

  27. 42

    I believe that one can prosecute cases with integrity and with zeal.

    With all due respect, Mr. Heller, your posts decidedly lack the first factor. Your lack of objectivity should be apparent to you, at the very least.

  28. 41

    I guess, Professor Crouch is working very hard, he reads a lot and squeeze time doing the analysis then give a post here almost everyday. It’s not easy for me to keep doing something like this.

  29. 40

    Dear Ned Heller,

    I don’t understand. Is there a sort of pride or something to be a “patent attorney” more than to be just an attorney or a patent agent?

    I see many people introduce themself as “patent attorneys”. My understanding is “patent attorney”=patent agent + attorney, and if people pass the two exams, they will become a patent attorney. Am I correct?

    According to my experiences, how difficult exams could be? So, my point is, why people care so much about if you have a registration number?

  30. 38

    I have had inventors come in who have been represented by others and who have openly talked about pulling fast ones, of hiding the ball, of using indefinite language both in the specs and in the claim, of calling the examiners when they need to fulfill their quota. These inventors got this from other patent attorneys and firms.

    I believe that one can prosecute cases with integrity and with zeal. There is no need to sacrifice one for the other.

    I am personally glad I have never had bosses that pull fast ones in prosecution, who obfuscate, and who lie to clients, or have ordered me to do the same. I try to make specs as clear as possible. Ditto the claims. These kinds of patents are easy to enforce, trust me.

    Litigators always want to tell the jury a story about the invention, what were the problems in the prior art and how the invention solved those problems. Get the judge and jury behind you — that is ticket. All that story-line has to be in the spec., and the claims have to be clear.

  31. 35

    Yes, the Feds are part of the problem. The other part is the basic dishonesty of the patent bar.

  32. 34

    It was forbidden and you followed blindly and without question or understanding…

    Why am I not surprised?

  33. 33

    Hahahahaha.
    I’ve actually had cases where the independent claim is a polyamide coating. Maybe if attorney’s drafted more like you Ned we’d all waste a lot less time and client money

  34. 32

    ^^^ more of that “6-is-a-genius-because-he-agrees-with-me” malady.

    The propaganda (anti-Rich when it was Congress that changed the law in 1952) continues…

  35. 31

    Anon,

    This practice was strictly forbidden where I worked, but it was unclear why to me exactly. My intuition is that there is case law where such discussions were used as ‘admissions’ of some sort and the patent was invalidated under 103.

  36. 30

    MM, seems like the German courts have some common sense, and somewhat like the US Supreme Court.

    Now, if we could only get the average patent attorney actually be good public citizens and actually consider the public interest when lobbying, perhaps the likes of the AIPLA will stop supporting the Rich view of the world of patents and come back to earth. (The AIPLA actually supported the Rich view in its amicus in Alice.) The bar’s amicus briefs are read with interest by the Federal Circuit.

    Also, we need to get rid of the Patent Applicant Advisory Committee because it is corrupting the system because there is no public interest committee that provides a counterbalance.

  37. 29

    discuss in the background section

    Now I know that you have not personally prosecuted an application in decades.

  38. 28

    As to “Applicants should also be allowed and encouraged to request examiners to pay particular attention to certain references or parts

    There be (judicial) patent profanity that blocks that.

  39. 27

    the new ruling from the [German] court that says [Apple’s swipe to unlock] patent wasn’t “based on an invention” but rather influenced by other real-world examples of swipe-to-unlock (such as door keycards),

    A refreshing moment of sanity in the n utty world of incredibly junky “do it on a computer” patents.

  40. 26

    What explains the number of references here?

    Probably a combination of worldwide prosecution (e.g., note the foreign office actions), the existence of a lot of close/relevant art and possibly Apple’s shifting its theory of patentability in different jurisdictions (resulting in different art being cited).

    Just a guess.

  41. 25

    …like Ned is the epitome of “apologizing”…

    (leastwise anything not aligning with his curse-ades)

    / off sardonic bemusement

  42. 24

    Paul, the Director needs to repeal Rule 56, and require only that applicants identify related applications, including foreign counterparts or litigation including IPRs. IDS’s should be banned. Discuss the prior art in the background section of the patent if needed.

    If it turns out later that the claims are unpatentable over a prior art reference that the applicant and/or the prosecuting attorney not only knew about, but knew of it materiality, the patent should be held to be unenforceable. The patent attorney involved should then also be disciplined to the extent of his culpability.

  43. 23

    RR: It is a common and customary practice for biotech patent applications to include an IDS with at least 50 references, and it is common for biotech patent applications to have an IDS with 100 to 200 references. Is this routine practice the result of overly zealous adherence of Rule 56? Is the goal of this practice an attempt to hide the most relevant prior art?

    It’s a combination of laziness and diligence. Many chem/bio applications begin with a draft research paper that is sent to the patent attorney shortly before the paper is submitted for publication/peer review. Those research papers invariably include citations to the scientific literature. In addition, the typical *well-drafted* chem/bio application will include extensive definitions of terms and detailed descriptions of conventional methods for preparing and measuring aspects of the inventions (to avoid indefiniteness). Those definitions will also include literature cites. The cited literature ends up in the IDS because the client doesn’t want to pay for the attorney to evaluate each cite for its cumulativeness or relevance.

    On top of this, most chem/bio applications are filed around the world. That means that in addition to other citations popping up from US searching and examination, there are international search reports and office actions popping up for years that are usually deemed relevant to Examiners (some of these are guaranteed to be cumulative but the “time is money” issue arises again, particularly if — for whatever reason — the attorney who first handled the case disappears and a new attorney takes over).

    In my opinion, whatever the motivation, it is arguably not prudent to submit more than 30 or 40 references

    With respect to literature and patent citations, if you’ve got the closest references cited among that list of 30 or 40, anything else you add is going to be cumulative.

    But there is a rub, I think: if there are ten different references in diverse sub-fields plainly teaching some fact that is relevant to obviousness, shouldn’t each of those references be cited? i.e., isn’t the scope of the teaching and its widespread understanding relevant? Certainly ten references would make the applicants counter-argument (“but this one reference here teaches away!”) far less likely to succeed. Food for thought.

  44. 21

    Rob, I think you might try a bit harder to apologize to Dennis. You said several things about his post here beyond that he was not a registered patent attorney.

  45. 20

    has to file any IDS on filing?

    That cannot be a serious question.

    You don’t get to “only look at” the Federal Circuit duty. It os beyond question that you have a different duty during prosecution.

    I asked before and I will ask again: when was the last time you personally prosecuted an application?

  46. 19

    Rob, let us set Rule 56 to one side. I respond only to the Federal Circuit on my “duty” because the duty is imposed by “law,” not by PTO rule. The courts have seen the PTO effort to makes its rules controlling on the duty of the disclosure and were trumped on that issue in Therasense. link to scholar.google.com

    The dissent in Therasense made that argument that Rule 56 sets the standard of disclosure. The dissent is not controlling law. Neither is Rule 56.

    On duty, I cannot know in advance what weird claim construction the office might come up with, and they do come up with some weird constructions. But if I, using conventional claim construction for BRI as dictated by In re Morris, am confident that the claims read over the prior art of which I am aware, I see no duty to disclose anything.

  47. 18

    Except not. Your example only moves the unsquare to a different part of the judiciary.

    The immediate point here is not the level within the judiciary making common law, but rather the distinction between common and statutory law in the first place.

    Of course, it helps to recognize and underarm as the difference between those two in the first place…

  48. 17

    We’re actually only required to give the same level of consideration to IDS references that we give to any other reference we come across in our search, i.e., once we determine that the reference isn’t relevant, we can move on. See MPEP 609.01.

    Depending on how far afield the reference is, this could be as simple as reading the abstract or the title, or as detailed as reading through the entire reference. For patent documents, it could mean doing a few keyword searches on the cited documents and checking the resulting keywords in context.

    As for pointing us toward references of particular relevance, I would love it if attorneys did that. Of course, I would also love it if attorneys didn’t file IDSes that cited every single reference ever cited in any of that client’s applications, which would likely obviate any need to make statements of relevance on the record.

  49. 16

    To Ned. Here is one reason why an IDS is needed, even if the attorney was careful to draft the claims to avoid prior art. Aside from the fact that Rule 56 requires it, please note that claim construction is a big gray area. For example, the word “gene” might be defined differently by reasearchers in northern Illinois and by researchers in Boston. Also note that functional elements are another gray area, since it is common for practitioners and examiners to have somewhat different interpretstions of the patentable weight of a given functional element. Thus, whatever comparison an attorney does between the claim and a reference, should be repeated by the examiner.

  50. 15

    ? The IPR system, with its requirements for specificity, claim charts, and page limits, is hardly a vehicle for a big “reference dump” like an application. Art submitted that way will not even be considered in an IPR.

  51. 13

    If you had done your due dilligence, you would know that Prof. Crouch has USPTO Reg. No. 55,091 and worked in a law firm for several years before taking his present position.

  52. 12

    Here is something that could be done, since it correlates with reality, but probably won’t. An edict from the PTO Director that when more than say 20 references are cited by an applicant it is unreasonable to create a legal fiction presumption that an examiner has had time to actually read them all, and there should be no initialing-off of unread references. Yet applicants should not be punished for citing large numbers of known references to avoid subsequent IC accusations. Applicants should also be allowed and encouraged to request examiners to pay particular attention to certain references or parts thereof from among long lists of references so as to make their effective consideration more likely, but this should not be mandatory.
    [Spare us the usual unreality nonsense comments that examiners should carefully read all of hundreds of cited references “because that is their job.”]

  53. 11

    The blurb by Mr. Crouch is impulsive, uninteresting, ignorant, and non- informative. But what would make sense is a comment from a person who actually has a patent bar number (this excludes most law school professors) on the following issue. It is a common and customary practice for biotech patent applications to include an IDS with at least 50 references, and it is common for biotech patent applications to have an IDS with 100 to 200 references. Is this routine practice the result of overly zealous adherence of Rule 56? Is the goal of this practice an attempt to hide the most relevant prior art? In my opinion, whatever the motivation, it is arguably not prudent to submit more than 30 or 40 references. What is your opinion (please, only people with patent bar number give an answer).

  54. 10

    Long ago I was taught not to draft claims that I knew were unpatentable over art of which I was aware.

    How is it that a patent attorney, having drafted claims which in his professional opinion, define over the art of which he is aware, has to file any IDS on filing?

    Of course, I agree that art cited in foreign prosecution that brings into question pending claims, that that art should be cited in an IDS. But, if there is no foreign prosecution, and no releated US prosecution, there should be no need to file an IDS at all.

  55. 9

    What explains the number of references here? (This, I believe, is the original Apple “swipe to unlock” patent, US Pat# 7,657,849.)

    link to patft.uspto.gov

    Apparently, the Germans don’t think it’s patentable:

    link to macnn.com

    Perhaps this is Apple’s normal procedure for references? Cite so many it makes the patent appear more “valid” than it really is.

  56. 8

    It’s not just ipr. I’ve had cases that cite hundreds of documents from epo cancellation or opposition proceedings. Its a giant pia, half is just office correspondence, a quarter is irrelevant, and the rest I’ve already seen. Still takes hours to go through, assuming EDAN is cooperating

  57. 7

    How does “fundamentally changed the law” square with “the court is merely interpreting the words of Congress”…?

    The CAFC’s interpretation of the “words of Congress” was fundamentally wrong. The Supreme Court said so and provided the CAFC with the correct interpretation.

    Squared.

  58. 6

    How does “fundamentally changed the law” square with “the court is merely interpreting the words of Congress”…?

  59. 3

    One of the reasons why some applications have so many references cited is that parent or related applications that are in litigation, and in particular, IPR’d, sometimes have pages upon pages of references cited that opposing counsel says is relevant. Even if they are not that relevant, a practitioner must submit those pages of references in an IDS to make sure that the art is put before an Examiner. One way to stop this insanity is to limit the number of references that can be cited in an IPR.

  60. 2

    THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS CORPORATION
    link to cafc.uscourts.gov

    After a jury verdict, an appeal, a cert. denied, a remand for supplemental damages, and a further appeal, the Feds held that the claims it had previously held not indefinite, were in fact indefinite under the new Nautilus standard because the claims required a particular slope of a measurement, which could be measured in at least four different ways, but the patent did not tell one which method to use.

    The case is fascinating, though, because of its discussion of law of the case, claim preclusion and issue preclusion. The supplemental damages proceedings were with respect to infringing acts occurring after the jury verdict. Thus, claim preclusion did not apply. But law of the case and issue preclusion did. However, these doctrines did not foreclose reconsideration of the indefiniteness issue due to an exception where the case law had fundamentally changed the law. The court held that Nautilus had done just that.

  61. 1

    Thanks Dennis. A chart showing distribution of the number of references submitted could be interesting. 0, 1-4, 4-8, 9-20, etc.

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