The First Patent Litigation Explosion

Professor Christopher Beauchamp has released his interesting new article titled The First Patent Litigation Explosion.[1]

The twenty-first century “patent litigation explosion” is not unprecedented. In fact, the nineteenth century saw an even bigger surge of patent cases. During that era, the most prolific patent enforcers brought hundreds or even thousands of suits, dwarfing the efforts of today’s leading “trolls.” In 1850, New York City and Philadelphia alone had ten times more patent litigation, per U.S. patent in force, than the entire United States in 2013. Even the absolute quantity of late-nineteenth-century patent cases bears comparison to the numbers filed in recent years: the Southern District of New York in 1880 would have ranked third on the list of districts with the most patent infringement suits filed in 2014 and would have headed the list as recently as 2010.

This Article reveals the forgotten history of the first patent litigation explosion. It first describes the rise of large-scale patent enforcement in the middle of the nineteenth century. It then draws on new data from the archives of two leading federal courts to trace the development of patent litigation from 1840 to 1910 and to outline the scale, composition, and leading causes of the litigation boom. Finally, the Article explores the consequences of this phenomenon for the law and politics of the patent system. The effects of the litigation explosion were profound. The rise of large-scale patent assertion provides a new explanation for patent law’s crucial shift from common law to equity decision making in the middle of the nineteenth century. And at its height, the litigation explosion produced a political backlash that threatened to sweep away the patent system as we know it. Recovering the history of patent law during this formative and turbulent era offers fresh perspectives on the patent reform debates of today.

Read the article on SSRN: http://ssrn.com/abstract=2699964.

[1] Forthcoming in 125 Yale Law Journal ____ (2016).

156 thoughts on “The First Patent Litigation Explosion

  1. 6

    “And at its height, the litigation explosion produced a political backlash that threatened to sweep away the patent system as we know it.”

    And what just happened?

    CAFC in MCM:

    ““there are matters, involving public rights, which may be presented in such form that the judicial power is capable of acting on them . . . but which congress may or may not bring within the cognizance of the courts of the United States, as it may deem proper.” Id. at 281; see also Crowell v. Benson, 285 U.S. 22, 50
    (1932). That is, Congress has the power to delegate disputes over public rights to non-Article III courts.”

    The academics just aren’t as bright as they used to be.

    1. 6.1

      “anony”: The academics just aren’t as bright as they used to be.

      How do you get from your cite to this “conclusion”?

          1. 6.1.1.1.2

            ^^^ as if Malcolm ever answers questions put to him….

            (Gee, maybe this is “tame” enough to survive the censor’s blot, or maybe I could tame it down like post by patentcat at 3:30 pm – 4 series)

            1. 6.1.1.1.2.1

              Ooh lookie! “anony” has a special friend polishing his buttons.

              So cute.

              Maybe between the two of you you can come up with an explanation for how “anony” got from his cites to “academics just aren’t as bright as they used to be.”

              Go ahead, kiddies. Surprise everyone.

      1. 6.1.2

        On a positive note old man, unlike the academy, you never were as bright as you used to be.

        Now eat your soup.

  2. 5

    ‘The effects of the litigation explosion were profound. The rise of large-scale patent assertion provides a new explanation for patent law’s crucial shift from common law to equity decision making in the middle of the nineteenth century. And at its height, the litigation explosion produced a political backlash that threatened to sweep away the patent system as we know it. ‘

    In the 1800’s Samuel Morse’s telegraph company created enemies with the newspapers of the day as they were unhappy with the rates he charged, or perhaps that they had to pay anything. The newspapers used their papers to dupe the public and government and turned them against Morse and the patent system. The same approach is being used today by powerful and influential large Chinese and multinational corps to use public relations and media in an effort to weaken or destroy the patent system so they can rob and crush their small competitors.

    Also, because of recent changes in patent law inventors are now required to file separate cases for each infringer whereas before they could and would commonly include tens or more in a single case. Those who make these unsupported accusations about an explosion do not factor that in and thereby intentionally mislead. While the number of case may be up, inventors and their attorneys will tell you the number of defendants has plunged. Prior to AIA in 2011 the number of cases filed was consistently about 3000 per year. That the number of cases is only now about 5000 per year supports that contention. It is now far more expensive, lengthy and difficult for us to get and enforce our patent rights.

    Don’t fall for the lies of thieves.

    1. 5.1

      staff; The newspapers used their papers to dupe the public and government and turned them against Morse and the patent system. The same approach is being used today by powerful and influential large Chinese and

      And then I stopped reading and started laughing.

      Any “innovators” out there wondering why it keeps getting “harder” to monetize your junk? The answer is right there in staff’s comment.

      1. 5.1.1

        And then I stopped reading and started laughing.

        I am quite sure that the irony goes over Malcolm’s head with (yet another) example of Malcolm’s favorite rhetorical technique…

        1. 5.1.1.1

          Ah, so you’re on the board with the “Chinese are duping the public” explanation for patent reform.

          Great to know. But you’re a very serious person. Sure you are.

          1. 5.1.1.1.1

            Ah, maybe pay attention to what I actually stated.

            Then again, you are on record as “Believing” that there are no forces from either the Left or the Right that do not like patents and want to diminish them.

            Very “serious” indeed, you are (right back atcha)

            1. 5.1.1.1.1.1

              “anon” you are on record as “Believing” that there are no forces from either the Left or the Right that do not like patents

              Actually I’m on the record as saying that you’re a path0l0gical liar and you’ve just provided additional evidence. I’ve never said any such thing, on or off the record. Or perhaps this is just another example of your reading disability? Oh, so many mysteries to ponder.

              maybe pay attention to what I actually stated.

              What you “actually” did was spew out an insult, presumably because you agree with “staff”‘s silly conspiracy theory. But go ahead and come up with some other awesome excuse.

              1. 5.1.1.1.1.1.1

                Actually you are the one that is the l i a r.

                Ad nauseum
                Ad infinitum

                You can “say” such without saying it expressly – and do so here – when you mock ANY indication that even the concept of such has plausibility.

                Your relentless mantra is what makes you the l i a r.

                1. You can “say” such without saying it expressly

                  That wouldn’t qualify as a statement “on the record”.

                  you mock ANY indication that even the concept of such has plausibility

                  What I have questioned is (1) the conflation of “not liking patents” with “not liking the patent maximalist direction towards which the patent system is (was?) heading”; and (2) the implication that “not liking the patent maximalist direction towards which the patent system is (was) heading” isn’t a view shared by vast numbers of people of all political leanings, including the center.

                2. You really don’t get what “on the record” means, do you?

                  We have traded exchanges often enough concerning the Left AND the Right for your position to be clear.

                  You engage in nothing but banalities when it comes to the fact that certain philosophies are not only adverse to strong patents, but are very much active in making patents as weak and as useless as possible.

                  For you to take ANY other position here and now is nothing but disingenuous dust kicking.

                3. “anon” : You really don’t get what “on the record” means, do you?

                  It doesn’t mean what the aliens in your fillings are telling you it means, “anon.” Thanks for the laughs, though.

                4. B_b_because (short scr1 pt says) “al1 ens”…!

                  Thank you for that “wonderful” contribution to the “ec(h)osystem.”

                  What mindless dr0ss, Malcolm.

  3. 4

    I wonder if a considerable part of the U.S. patent suit explosion in the 1800’s was due to the incredible number of really fundamental and widely used inventions and their improvements as the industrial revolution exploded in the U.S.? Telephones, electric lighting, sound recording, mass steel making, petroleum products, vulcanized rubber and many new chemicals, camera film, typewriters, sewing machines, automobiles, indoor plumbing, and an endless list of other inventions for which there was far less “prior art.” As a recent author noted, these were not mere “social media” software products being invested in back then.

    1. 4.1

      (1) As if information processing is summed up with only “social media,” and

      (2) Bizarre that we continue to see the disparagement of technology that is generating massive numbers of jobs (and replacing massive number of jobs) and is changing the way we all live.

      And yet, there are those smarty pants that just know it is garb@ge–somehow, ’cause they are smarter than we are. I guess. I get the feeling an apt nickname might be the hindsight smarty pantsers.

      1. 4.1.1

        To continue Night Writer’s thought, say you use various information to gauge traffic flow through some area involving, say, multiple stoplights, stop signs, merging traffic, etc. By analyzing that data and applying a new and useful algorithm to it, one can determine a better light timing, perhaps one that varies over the course of a day. By implementing the determined light timing, it saves you 5, 10, 15 minutes that you’re no longer in traffic on your way to work. This is data analysis, and who is to say it’s better or worse than a typewriter or other “invention” from the 1800s? Considering that typewriters no longer exist save for in museums, I’d say the traffic invention is much better.

        But — gasp! — the traffic invention is an “abstract idea” that results merely in data (subsequently implemented via traffic light timing) and therefore must be condemned.

        1. 4.1.1.1

          You could try to claim the invention using the same language as McRO (Planet Blue) v. Activision Blizzard:

          obtaining a first set of rules that defines a sequence of traffic light duration signals as a function of the number and speed of cars which have passed a plurality of traffic speed sensors at previous times

          obtaining a plurality of measurements of the number and speed of cars which have passed a plurality of traffic speed sensors at previous times

          generating a sequence of traffic light duration signals by applying said first set of rules to the measurements of the number and speed of cars which have passed a plurality of traffic speed sensors at previous times

          And of course this would thrown out as an abstract idea by Judge Wu (control traffic automatically).

          However if you disclosed the algorithm, for example:

          For each block controlled by a signal
          Compute the block load (number of cars * average car length / block length )
          Compute the block to block flow (more formula)
          Compute max flow ( more formula)
          Determine traffic signals by (some big formula using load, flow etc)

          You would have a useful invention tied to a physical result and controlled by physical data, in fact it looks like Diehr! Not abstract at all!

          Plus if your algorithm is truly inventive it may well be will be hard to design around and you will have a valuable patent.

          Plus you preempt nothing, your algorithm is clearly only one of many possible ways to control traffic.

          1. 4.1.1.1.1

            Slashdot: you have no idea what you are talking about. Just the same nonsense of saying a claim is witch, of you smartie pants telling us what the quantum of invention is, and you smartie pants reverse engineering a rejection.

          2. 4.1.1.1.2

            Slash>”You would have a useful invention tied to a physical result”

            And you know the invention isn’t useful how?

            And, if it is so broad why wasn’t 102/103 used to anticipate or render it obvious?

            And, there is a word that describes your behavior. It is one that is out of use with the recent Google judges. It is hindsight reasoning.

            This is rich:
            >hard to design around
            >Plus you preempt nothing
            LOL! Right. It is black and yet very bright and actually white depending on my current argument.

              1. 4.1.1.1.2.1.1

                I am sure that Night Writer is aware of this (although the Blight will of course try to obfuscate), but there MUST be a certain recognition and understanding of the Ladders of Abstraction whenever anyone is discussing patent claims.

                See (among many others) Slusky.

                1. Maybe because you’re a complete asshole when you reply and rarely answer besides “I’ve already answered it before somewhere else.”

                2. That you “don’t like me” is not only completely immaterial to the content here, but smacks of whingy-gee-you-need-your-hand-held-and-cannot-handle-a-little-sharply-worded-BUT-ACCURATE posts.

                  Here’s some advice: grow some and “f1ght back” with some knowledge on the subject matter.

                3. And in the real world too, “little guy.”

                  Don’t like it? Then come back with some facts and law and “put me in my place.”

                  Oh wait, you would rather whinge.

                  Gotcha.

                4. ^^^ and your point is what, Malcolm? Ig nore the teachings of innovation experts?

                  Please, put yourself on the record, instead of the mindlessness you so typically engage in. You know, for the health of the “ecosystem” and all….

                5. Facts?

                  The recent Supreme Court decisions seem to be enough to contradict your claims that “there MUST be a certain recognition and understanding of the Ladders of Abstraction”.

                  Sure, if these cases get overturned, I’ll concede this point. But you just keep presenting your opinions/the opinions of others as fact, when the recent SC decisions show the law clearly isn’t on your side.

                  You’re too much of a namby-pamby to even answer a simple yes-or-no question (see above), yet you complain about “1nte11ctua1 h0nesty”.

                  And you bring up pseudoscience that isn’t really accepted (Kondratieff waves) to try to back up your points. You might as well be using astrology to try to justify your positions.

                6. “And you bring up pseudoscience”

                  Anon’s entire world view is based on pseudoscience. It’s because of his science poor background.

                7. You do realize (I hope) that just because the Supreme Court says something, that does NOT make it a fact, patentcat examiner friend of mine. The scoreboard is broken and you want to point up and the broken scoreboard…

                  As for “namby-pamby,” nothing of the sort. I just dont play that “repeat the entire detailed argument over and over and over again” game. Don’t like it? Pay attention better (and also entreat your pals not to play their drive-by monologue game of repeating things ad nauseum and ad infinitum without recognizing, addressing, and integrating the counter points presented.

                  I notice that you are all for one side, but d3athly silent on the other. How “namby pamby” of you.

                  As for “pseudoscience,” please, you have no c1ue as to the thinking of innovation leaders. Who would you recommend? Anyone?

                8. “anon” The scoreboard is broken

                  Right. It must be broken because “anon” is definitely winning in his own mind and that’s all that matters. Charlie Sheen told him so.

                9. Malcolm is the one choosing to ig nore the teachings of leading innovation experts, and then posts this deliberate mindless and baseless C R P.

                  Great ec(h)osystem Prof. Maybe you want to apply whatever Star Chamber** “rules” you have in a more objectively even manner….?

                  **once upon a time, the posting rules for this site were prominently and easily linked to. Not only has that changed, one has the objectively reasonable perception that there is NO uniform set of rules.

                  Hey, I “get” this is your blog and you can do whatever you want, but that power to do what you want does NOT come with the power to not accept the direct consequences of what you do and do not allow through the application (read that as even and consistent enforcement) of “what you want.”

                  You just don’t get to have it both ways. Apply the rules – whatever they are – evenly and consistently, or accept the consequences for not doing so.

              2. 4.1.1.1.2.1.2

                The claim is fine. Try scope of enablement or pick up any information processing book that will tell you abstract terms are used to represent the solutions presented.

                I have made specific references to information processing books that say that expressly. Patent law is supposed to give you the scope of enablement in view of what is known and the specification.

                Again, just nonsense from the anti-patent lot.

                Here is how you can identify their nonsense: It always takes some portion of the claims and says they are an X.

                Moreover, if they are so “abstract” as you claim then why can’t you find a 102 or 103?

                1. Lemley is to blame for this nonsense about abstract claims. A claim does not have to be at a level to be directly applied.

                  See even Deener where the SCOTUS in the 1800’s realized that a method of processing grain could apply to multiple different types of grain —-and—-now try to read this fairly boys and girls—–that the way a step was implemented did not matter. What mattered was that the functional part of the step was carried out. They said it didn’t matter, for example, how the grain was blown by a fan, only that the grain was blown.

                  Of course, we have gone backwards and now deal with psychotic statements from the anti-patent crowd.

                  Just make life easy for yourself. Read the claims. Match claim elements with prior art. If you can’t get them all in one reference see if combining references makes sense. That is all. Over and out.

                2. Deener: A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.

                  For our purposes, I suppose, we are transforming traffic data into traffic signals by rules.

                  Using Deener here is circular reasoning. ‘by rules’ means the same thing as ‘act or series of acts’ . (Or at least I don’t see a difference)

                  So the claim literally becomes ‘Transforming traffic data into traffic signals by an act or series of acts.

                  This claim is not a process because it does not say what the acts are.

                  You could add ‘on a computer’ but Deener says that the transformation ( for example breaking a material into a powder) is what is important, not the specific means so the computer could be replaced by any other machine once you filled in the ‘act or series of acts ‘

            1. 4.1.1.1.2.2

              I assume ‘hindsight smarty pantsers’ is a term of art in patent law. Maybe it is only used in oral arguments at CAFC. But I like the question.

              Its not so much hindsight as logic. Could there ever be a claim of the form below which was not an abstract idea? (assuming that this is the complete claim 1)

              Form of the claim:

              obtaining a first set of rules that defines how to transform A into B

              obtain A

              generate B by applying said first set of rules to A

              For example, making penicillin from bread mold:

              obtain a set of rules which describe how to process moldy bread to produce penicillin

              obtain moldy bread

              produce penicillin by applying the first set of rules to the moldy bread

              I say that all claims in the future in this form are too many rungs up on the ladder of abstraction. This is not hindsight. It is also not hindsight to apply the same logic to claims in the past.

          3. 4.1.1.1.3

            slashdot : However if you disclosed the algorithm, for example:

            For each block controlled by a signal
            Compute the block load (number of cars * average car length / block length )
            Compute the block to block flow (more formula)
            Compute max flow ( more formula)
            Determine traffic signals by (some big formula using load, flow etc)

            You would have a useful invention tied to a physical result and controlled by physical data, in fact it looks like Diehr! Not abstract at all!

            Same junk, different words. And Diehr had something that this claim didn’t: an allegedly non-obvious combination of a thermocouple and a rubber curing vat. Traffic lights using processors and algorithms are old, and using math to optimize the flow of material is really really really old.

            The commenter “BobM” talks about “saving 5 minutes of time.” Let’s assume the junk was eligible. Is “saving five minutes” going to make that algorithm non-obvious? What about “saving five microseconds”? Who examines the math in view of all the prior art math dealing with optimzing the flow of material through a system? The PTO? Haahahahahhahahahahahahhahahaa! Serious question that needs a serious answer.

            Or we can continue to pretend that “algorithms” are just like “typewriters” because it makes some Internet shriekers happy.

            1. 4.1.1.1.3.2

              You certainly raise a variety of issues!

              Using math to optimize the flow of materials is certainly old, but the hypothetical claim here hypothetically includes a complete algorithm which is new. If the abstract idea is ‘control traffic using a set of rules’ then adding the complete algorithm makes it less abstract.

              The claim transforms traffic signals from red to yellow to green which is a useful clue to its validity

              Now that we are past 101, we can move on to your other objections :-)
              ‘Saving 5 minutes’ is not part of the claim so I don’t think it matters for obviousness.
              Examining math prior art would be the job of the PTO. If the PTO could not understand the invention initially, I suppose they would just try harder, seek outside help etc.

              1. 4.1.1.1.3.2.1

                Slashdot: the hypothetical claim here hypothetically includes a complete algorithm which is new. If the abstract idea is ‘control traffic using a set of rules’ then adding the complete algorithm makes it less abstract.

                No, it doesn’t, at least not if your “algorithm” is merely describing additional “logic” using more specific terminology. It’s the same problem that arises when you try to claim “use a correlation to determine something.” That doesn’t become “less abstract” when you put ten decimal points on the correlation. At least not as far as the patent system is concerned.

                ‘Saving 5 minutes’ is not part of the claim so I don’t think it matters for obviousness.

                In fact, the result of an obvious method matters for obviousness. You haven’t recited any actual algorithm, as you presumably are aware, and you also haven’t stipulated that the algorithm is non-obvious.

                Examining math prior art would be the job of the PTO.

                Haahhahaahahahahahahahahahahahahaahha! When is that going to happen? And exactly how? Serious questions. Do you have an answer? Because you’re a serious person, right?

                they would just try harder

                Deep stuff, Slashdot. Maybe you should try harder. You can find comfort in that you’ll be in a long line of people who think the massive systemic problems presented by patenting algorithms go away because you wish they would go away. Something else is very, very likely to go away long before you solve the problem. Want to guess what that it is?

          4. 4.1.1.1.4

            And you guys are so intellectually dishonest. If you are a technical person then you know exactly what set of solutions are enabled by those claims in view of the specification.

            The whole idea is that if you claim it too broadly, then you can lose the claim if someone comes up with something nonobvious that your claim reads on, and you risk a too broad claim with 102 / 103.

            But, I am sure the anti-patent crowd won’t bother to waste a single brain cycle trying to understand this.

      2. 4.1.2

        NW: we continue to see the disparagement of technology that is generating massive numbers of jobs (and replacing massive number of jobs) and is changing the way we all live

        No, you’re seeing disparagement of junky patents and a system that is being corroded away from inside of the patents because entitled narcissists like you can’t see further than your wallet.

        1. 4.1.2.2

          What we are seeing MM is the continued dismantling of our patent system by the international corporations that want to maintain their monopolies.

          Somehow our system is supposed to be broken except for all the facts. Like the greatest innovation engine, no rise in the litigation when normalized, etc.

          1. 4.1.2.2.1

            There is an active and intentional attempt to NOT recognize the Kondratieff waves of innovation.

            Any inte11ectually honest person though will no doubt recognize the historical trend of repetition of wave of litigation that perfectly syncs with the Kondratieff innovation waves.

            1. 4.1.2.2.1.1

              Kondratieff innovation waves.
              Every wave of innovations lasts approximately until the profits from the new innovation or sector fall to the level of other, older, more traditional sectors. It is a situation when the new technology, which originally increased a capacity to utilize new sources from nature, reached its limits and it is not possible to overcome this limit without an application of another new technology.

          2. 4.1.2.2.2

            the continued dismantling of our patent system

            The patent system isn’t going anywhere. Patents are still being pumped out. Patents are still being licensed, every day.

            All that’s happened is that the value of a patent portfolio is being diminished in direct proportion to the amount of junk in the portfolio. And some moneyed interests who were banking on a different scenario have to eat a bit less quail. Boo hoo.

          3. 4.1.2.2.3

            no rise in the litigation when normalized, etc.

            Which reminds of the “litigation” Tr011 boogeyman and the propaganda from the Executive Office.

            Criminy, it is now nearing mid December and there is nary a hint of a scent of a whisper of the l o n g overdue response to Ron Katznelson.

            I guess no one cares about an ecosystem around that narrative…

            /off sardonic bemusement

            1. 4.1.2.2.3.1

              there is nary a hint of a scent of a whisper of the l o n g overdue response to Ron Katznelson.

              Maybe you try sniffing around the White House dumpster.

              1. 4.1.2.2.3.1.1

                Too clever by half, Malcolm.

                The dumpster comment can easily speak to two different scenarios.

                A) What the White House wrote in reply to the Ron Katznelson request for de-propagandizing the “Tr011” narrative is what is in the dumpster becasue the White House reply is nothing but C R P, or

                B) The White House is digging through that dumpster trying to piece together a defense of that “Tr011” propaganda.

                A better place to start would be the OMB, who earlier that same summer posted an analysis that had the opposite conclusion of the “Tr011” narrative.

                I do hope that ANY response from the White House (if ever one is forthcoming) remembers certain executive orders already in place and remembers what the government already said about the so-called “Tr011s.”

    2. 4.2

      for which there was far less “prior art.”

      Sounds exactly like the laments of the anti-software patent folks…

      1. 4.2.1

        “anon” Sounds exactly like the laments of the anti-software patent folks…

        If that’s what you believe then you really need a remedial reading class.

        1. 4.2.1.1

          Nothing of the sort Malcolm.

          Maybe you want to read that 1968 paper submitted to the US Supreme Court….

          1. 4.2.1.1.1

            The prior art to tank nearly every patent on information processing logic is out there. It’s just not in the PTO’s hands and the PTO is both (1) clueless about how to apply the art and (2) hamstrung by a series of ridiculous CAFC decisions that purport to eliminate previous disclosures of logic in contexts that are deemed “not relevant” because logic, in the CAFC’s fantasy world, is context specific.

            That’s why the PTO finds itself treating “editing a baseball game” to save time as a totally different step than “summarizing a movie” to save time when, in fact, there’s no distinction. Information is information. Editing information to save time isn’t “innovation” because information has been edited as long as there have been brains around to edit it. That’s a long time. It takes some deep deep sand to protect one’s head from that kind of knowledge but that’s what the courts and the PTO managed and they’re still embedded up to their waists.

            Top that terrible habit off with the CAFC’s unworkable “strict TSM” and State Street Bank and you’ve got a guaranteed disaster that has no historic precedent. That’s the disaster we’re dealing with now.

            1. 4.2.1.1.1.1

              You really need to move the goalposts back and R E AD what I stated.

              You trying to backtrack here and change the focus does NOT help you.

          2. 4.2.1.1.2

            “anon” Maybe you want to read that 1968 paper submitted to the US Supreme Court….

            Read it yourself.

            1. 4.2.1.1.2.1

              I have. That is why I made the comment.

              I invite you to read it to understand and not be so reactive to a post by me that (shockers) is opposed to your feelings.

    3. 4.3

      “Relative to the total estimated number of U.S. patents in force, the numbers of suits brought and individual patents litigated were highest in 1850.”

      O’Reilly v. Morse, 1853.

      What did Morse spike but the functional claim?

      1. 4.3.1

        Your agenda against claims using terms sounding in function MUST be reconciled with a proper view of what happened in the Act of 1952, Ned.

        To date, you have been unwilling (or unable) to understand what Congress (and no, not Rich), did in that Act regarding the Vast Middle Ground of combination claims with parts of those claims with terms sounding in function.

        This does mean that your improper “I wish Congress did something else,” the obfuscation of 112(f) – totally functional claiming as but an option – versus SOME functional claiming FULLY allowed outside of that optional section (f) portion, and your improper “Point of Novelty” dissection views must be set aside, since they simply do not comport with the reality of what Congress did in allowing “VMG outside of the option of totally functional claiming that 112(f) permits.

        In other words, the typical stuff that I correct you with.

        1. 4.3.1.1

          anon, Congress did not overrule O’Reilly v. Morse, nor was it asked to do so. It provided a limited remedy for MPF claim elements in combination claims that may, but not necessarily were, invalid under Halliburton.

          Outside of the specific remedy, Congress did not pretend to authorize the claiming of results as opposed to the means or method for achieving results.

          1. 4.3.1.1.1

            Ned,

            Your version is notoriously lacking.

            Need I remind you yet again that prior to 1952, what is now 101/102/(103)/112 was but a single paragraph?

            You continue to ig nore basic lessons of history in your attempt to hold onto something that very much was changed in 1952.

        2. 4.3.1.2

          I went back and looked at Crouch’s 20 October 2014 post on the “vast middle ground.” I couldn’t find any explanation of the basis for semi-functional claims other than the bare statement that the “vast middle ground” exists. Would you care to expound on how the 1952 act specifically authorized semi-functional claiming?

          1. 4.3.1.2.1

            In great depth Ned and I have discussed Federico’s notations on the whole of 112 (not just 112(f)).

            May I suggest that you read Federico – and read Judge Rich as well – the two architects behind the Act of 1952.

            1. 4.3.1.2.1.1

              Is that you’re way of saying that the vast middle ground can’t be found in the text of the act itself?

                1. anon has previously noted that Federico’s commentary explicitly disclaims portions as opinions. It’d be much more helpful if either of you could point to the relevant portion of the statute.

                2. You harp on about the “vast middle ground”, and when politely asked for an explanation and the basis for this term, you refer to the entirety of a 30,000 word document. Your efforts on this board clearly have no purpose than auto-gratification. Wash your hands and get a life.

                3. …you are going to have to put in the effort to bring yourself up to speed, son. Come to the blog with some modicum of knowledge. Don’t expect everyone else to do your legwork for you.

                4. I harp on the Vast Middle Ground because it was a term coined by no one less than Professor Crouch.

                  Maybe you want to rail against him too….?

                  And you don’t need to read the entire treatise (although you evidently should). You do know how to read pertinent sections, right?

    4. 4.4

      And just to be clear about Paul Morgan’s comment. Information processing is without a doubt the greatest technological revolution that humans have ever experienced. Machines will soon be driving our cars and performing many of the information processing tasks that people are currently paid for.

      The context under our current system should be that we are in the middle of the greatest revolution that has ever occurred with the displacement of jobs that will out number the industrial revolution.

      The revolution is remarkable in that our machines are now starting to perform tasks that we saw as what differentiated us from the animals.

      These disparaging nonsense statements are clearly anti-patent rhetoric that evince such an ignorance of science and technology as to question the motives of the people making them.

  4. 3

    “The vulcanite company’s extraction of tribute from the dental profession ended only after the leader of its aggressive strategy, company treasurer Josiah Bacon, was murdered in San Francisco by a desperate dentist accused of patent infringement.”

    People never expect legalized extortion to led to utterly predictable consequences.

    1. 3.1

      “In addition, judicial construction of patent scope contained its own degree of explicit flexibility. It was common at midcentury for judges to invoke “canons of liberal construction” towards patentees in the interpretation of patents.172 Various doctrines embraced liberality, including the understanding that, when interpreting the patent from its specification and claims, the scope of the grant should extend to equivalents of the specific embodiment described.173”

      A very interesting explanation for the genesis of the DOE. Apparently it popped forth from an even more absurd regime.

      1. 3.1.1

        “Mason’s successor, Joseph Holt, was still more patentee-friendly. In one of his early decisions as Commissioner, Holt announced that the Office should find itself “taking [inventors] by the hand, as the benefactors of their race, and strewing, if possible, their pathway with sunshine and with flowers.”190”

        Hahaha I bet this is MM’s fav guy evar.

          1. 3.1.1.1.1

            Yeah I wasn’t sure if he meant that the office personnel were to be benefactors of the race of inventors or he was speaking broadly so as to say inventors were the benefactors of humanity.

    2. 3.2

      “Equity was initially the secondary forum, however. Courts took the position
      that any case that tested the validity of a patent (as opposed to turning on questions of infringement alone) should first be tried at law to a jury before any equitable remedy could be granted. Under the English rule, associated with Lord Chancellor Eldon and widely cited by judges and treatise-writers, injunctions were allowed only where validity was uncontested or had been presumptively established by prior litigation or long acquiescence.274 According to a leading treatise on patent law published in 1837, this approach rendered a bill for an injunction “ancillary, merely, to the action at law for damages.”27”

      Very interesting for the people that constantly cry about Ebay. And for the people that always argued that injunctions should practically be the norm.

      1. 3.2.1

        6, it also shows that validity litigation, which at the time resulted in having the patent declared void, was a legal action that had a jury trial right.

        The move to equity eventually allowed the judge in equity to decide validity on the theory of waiver.

        “”[L]egal claims are not magically converted into equitable issues by their presentation to a court of equity,” Ross v. Bernhard, 396 U. S. 531, 538 (1970), nor can Congress conjure away the Seventh Amendment by mandating that traditional legal claims be brought there or taken to an administrative tribunal.”

        Granfinanciera at 52.

        “On the constitutional question (the one relevant here) the Court began by holding that Schor had “waived any right he may have possessed to the full trial of [the broker’s] counterclaim before an Article III court.” Id., at 849, 106 S.Ct. 3245. 1943*1943 The Court then explained why this waiver legitimated the CFTC’s exercise of authority: “[A]s a personal right, Article III’s guarantee of an impartial and independent federal adjudication is subject to waiver, just as are other personal constitutional rights”—such as the right to a jury—”that dictate the procedures by which civil and criminal matters must be tried.” Id., at 848-849, 106 S.Ct. 3245.”

        Wellness Intern. Network, Ltd. v. Sharif, 135 S. Ct. 1932 – Supreme Court 2015 link to scholar.google.com

    3. 3.3

      6,

      Are you vying for the most reprehensible anti-patentist on these boards?

      To equate murder with the legal right to enforce the very work product you are involved in…?

      That does not rise to “humor” in anyone’s book. For shame.

      1. 3.3.1

        “To equate murder with the legal right to enforce the very work product you are involved in…?”

        Um I didn’t “equate” them m o ro n. I said the one leads predictably to the other. Specifically when it is taken to the levels of legalized extortion.

        I’m actually surprised rather regularly that these sorts of situations aren’t routine.

        Kissing for example leads to touching and leads to se xin. That doesn’t mean kissing is “equated” with se xin.

        1. 3.3.1.1

          Your example proves MY point there 6.

          You just don’t seem to grasp why want you said was so off, do you? You live in such an anti-patent bubble that you just can’t see it.

          1. 3.3.1.1.1

            Ahh, it’s “so off” now. First what I said “equated” two things that I did not equate. And now it’s just “so off”.

            Learn to write.

            1. 3.3.1.1.1.1

              No problem with my writing, 6.

              BOTH descriptions fit. Your post is heinous, and you sit there seemingly unaware why.

              Learn to understand that having a patent – and enforcing that patent are not things that should rise to a response of violence, MUCH LESS your apparent condoning of such.

              1. 3.3.1.1.1.1.1

                “BOTH descriptions fit. ”

                Ahhh, now they “fit”.

                “Your post is heinous”

                So heinous!

                “Learn to understand that having a patent – and enforcing that patent are not things that should rise to a response of violence”

                And where did someone say that should happen? I said that nobody expects legalized extortion to lead to the predictable outcome of someone getting murdered. Just like other extortion schemes and effective taxes on things have for ages. And thinking that way, as you are here, is somewhat of a cancer on the system itself. Had that good dentist been able to, without huge trouble, have his day in court then perhaps the other man would not have been murdered. That’s one of the reasons for even having courts in the first place.

                “MUCH LESS your apparent condoning of such.”

                Where did I condone it re re? Good ol anon, off in la la land as usual. I said that it was predictable and I’ve further said that I was surprised it didn’t happen more often.

                1. 6: “People never expect legalized extortion to led to utterly predictable consequences.

                  Your characterization of “utterly predictable” is where you condone it.

                  You mischaracterize the Congress appointed path of litigation as “legalized extortion,” and then you find the heinous violence as “utterly predictable.”

                  Grow up son.

                2. “anon” Your characterization of “utterly predictable” is where you condone it.

                  Merely bserving that a response is “utterly predictable” in no way amounts to condoning that response or the actions which led to that response.

                  It’ rather sad that this would need to be explained to an adult human being on a patent blog but such is the world we live in.

                3. “You mischaracterize the Congress appointed path of litigation as “legalized extortion,” and then you find the heinous violence as “utterly predictable.””

                  Well I characterize them as such, it’s just your humble opinion that it is a mischaracterization.

                  My position is supported by facts. Your position, which you have yet to announce, but which we can presume is the opposite of my own, is sadly not supported by evidence.

                4. “It’ rather sad that this would need to be explained to an adult human being on a patent blog but such is the world we live in.”

                  We have to remember that this individual has a couple of mental conditions. I suppose I should just stop talking to him again for a bit. He always slips his mental issues in so subtly at first. You’re wrong, you’re wrong, you’re wrong, I’m morally outraged, I’m morally outraged, I’m morally outraged! It just kind of creeps in.

  5. 2

    Fascinating.

    Particular relevant was the discussion about when equity courts began to decide validity. Apparently, the theory is waiver — if the patentee sued in equity, he waived his right to a trial by jury on validity.

    1. 2.1

      It does seem incredible that without a change to the Constitution we have arrived at a place where patent validity is determined by people that can be hired and fired by the President and are reviewed by a presidential appointee each year.

      1. 2.1.1

        Patent examination should be performed by Federal judges in the first instance. Surely they can find the time. After all, it’s the most important thing ever.

        1. 2.1.1.1

          Neither Malxolm’s nor Night Writer’s posts are crafted well enough to carry th conversation forward in a meaningful manner.

          Night Writer fails to distinguish initial examination from the issues involved in (selective) post grant review, while Malcolm’s post misses the point of the conversation and “moves the goalposts” to an entirely different branch of the government (Article III from Article I).

          Night Writer, perhaps if you added a thought as to the lack (or apparent seeming lack) of “transparency” and NOT on the written record – items our good friend Joachim mentioned recently – the point that you seem to want to make might be reached.

          Malcolm, I don’t know what point you were trying to make.

          1. 2.1.1.1.1

            “anon” I don’t know what point you were trying to make.

            Of course you don’t because you’re drunk on your own kool-aid.

            I’m pointing out the absurdity of NW’s beotching about the nature of the folks who “determine patent validity” as if it’s some blatant Constitutional violation, but at the same time he “forgets” (LOL) that patents are handed out by people who are utterly clueless about the “technology” (e.g., “shoving ads in your face” “summarizing a baseball game) being claimed.

          2. 2.1.1.1.2

            “Night Writer, perhaps if you added a thought as to the lack (or apparent seeming lack) of “transparency” and NOT on the written record – items our good friend Joachim mentioned recently – the point that you seem to want to make might be reached.”

            But only if you add a thought NWPA. Only if you add a thought. Can’t do it otherwise.

          3. 2.1.1.1.3

            I think everyone knew what I was talking about. It took a paid blogger to splice the meaning to his/her ends.

            1. 2.1.1.1.3.1

              While I could surmise what you wanted to say, Night Writer, you left the door open for the blight to come in.

              1. 2.1.1.1.3.1.1

                LOL! Fair enough anon. I do have to remember when I make any comment that the blight with try to twist it to its purpose.

                1. the blight with try to twist it to its purpose.

                  A hallmark feature of Malcolm’s posts – nine years and running.

        2. 2.1.1.2

          MM, would you agree that the PTAB in these post-grant procedures at least ought to have a panel of expert examiners in the field of the invention deciding technical issues?

          1. 2.1.1.2.1

            Ned: MM, would you agree that the PTAB in these post-grant procedures at least ought to have a panel of expert examiners in the field of the invention deciding technical issues?

            I don’t see any evidence that “lack of expertise” is causing systematic problems at PTAB. Most of the cases in IPR don’t require any “expertise” beyond a high school education and perhaps some expertise in understanding the depths to which patent attorneys will sink when trying to kick dust in the PTO’s face.

            The far larger problem is widely acknowledged: computer-implemented junk and the bott0m-feeders who relentlessly peddle that junk and the USPTO’s willingness to coddle those folks because “sooper techno”.

            Listen to the oral arguments in Blue Calypso, LLC. v. Groupon, Inc. 2015-1391.mp3. The junky claims being asserted include two terms, “token” and “tag”, added during prosecution. The terms appear nowhere in the originally filed specification.

            Judge Chen: “Why did you do this?”
            Attorney for Blue Calypso: “I couldn’t say.”
            Judge Chen: “It’s your application.”
            Attorney for Blue Calpsyo: “The prosecuting attorney changed and they had different styles.”

            Try to believe it, folks. What a joke of a patent system. More reform coming, computer-implementers! Prepare yourself because you’re not going to like it. And, yes, you asked for it.

            1. 2.1.1.2.1.1

              Good lord.

              Another incredible CAFC failure. They can’t figure out how a written description and a 102 rejection could stand side by side.

              The answer is simple: the scope of the term is indefinite but it’s not disputed that one embodiment taught in the prior art is included with the scope of the term.

              For example, a term recites “an amount of salt greater than one molecule but less than a flufferbugger.” If flufferbugger isn’t defined, the term is indefinite. But there’s no dispute that the prior art teaches an amount of sale falling within that range.

              Geez if Federal judges can’t figure this stuff out then just shut the patent system down. What a cessp00l.

              1. 2.1.1.2.1.1.1

                The Federal Judges are correct.

                Let’s assume flufferbugger is a recondite measure of the number salt molecules.

                It might be equal to 0, 1, or something more than 1. (Let’s ignore the case of antimatter.)

                In the case of 0, the term is 0 molecules.

                In the case of 1, the term is 1 molecule.

                In the case of more than 1, the term is between 1 and something > 1.

                Maybe prior art only teaches with respect to the third case.

                According to the MPEPs, the Examiner is supposed to work with the Applicant to remove indefiniteness. Only after removing 112 indefiniteness can the Examiner correctly look at 101, 102, and 103 issues in the claims.

                Allowing an Examiner to combine 112 indefiniteness rejection with eligibility, anticipation, or obviousness rejection enables tremendous abuse.

                Suppose an Examiner combines a 112 indefiniteness rejection and guesses that the claim is 101 ineligible as directed to a transitory computer readable medium,

                The Applicant clarifies his claim, and the Examiner finds that it is really directed to a mathematical formula or to a data structure. The Examiner now enters a final rejection with the assertion that the Applicant’s modified claim occasioned a new basis for rejection when really the Examiner simply misunderstood the original claim and made a bogus 101 rejection.

                The compact prosecution rules are simply broken.

                They should work as follows.

                1) Evaluate the written description for enablement. If the written description fails, amend if possible according to MPEP 2163. If the Examiner continues to reject on this basis, the Applicant Appeals. If the written description passes on Appeal, the Examiner may not at a later date enter an enablement rejection. (Of course, the Examiner may later deal with unsupported claims.)

                2) Work with the Applicant to remove indefiniteness in claims — do not finalize.

                3) Once there are no longer 112 indefiniteness problems, the Examiner reviews for 112 support with only one shot to fix support issues.

                4) Only at this point when there are no long 112 paragraph 1 or (a) issues, can a claim be evaluated for 101-eligibility.

                3) Only after there are no longer 112 or 101 problems, should the the Examiner look at 102 or 103 issues.

                1. Why not just do it all at once like current practice takes care of? I’ve never had someone “tremendously” abused by such.

                  “Examiner simply misunderstood the original claim and made a bogus 101 rejection.”

                  If that happened then you should have stood your ground there, not amended and all what have you.

                  Just because you drafted your original claim so badly that it is indefinite should not entitle you to another round of prosecution brosef. And as to your million rounds of prosecution example taking each statute one at a time, it seems like it would take longer than what is currently being done.

                2. 6, I hope you are not an examiner.

                  MPEP 2173 is fairly clear on the issue.

                  D.Open Lines of Communication with the Applicant – When Indefiniteness Is the Only Issue, Attempt Resolution through an Interview before Resorting to a Rejection

                  Adding bogus 101, 102, or 103 objections before the claim is sufficiently definite can provide a means to get around the above rule and to do less work.

                  It appears that there have been sufficient problems erroneous indefiniteness objections that the PTO has felt the need to add a specific flow chart to the MPEPs on indefiniteness and BRI.

                  Click here for flowchart.

                  BRI and indefiniteness issues can be difficult. I understand that MM gave a “tongue in cheek” example, but in the software world only Unix and the X Window System use “magic cookies”. There is an http cookie, but many people don’t know the derivation.

                  In addition, far too many examiner’s don’t have sufficient command of English to parse many compound complex sentences correctly.

                  Until there are dated authoritative PTO databases for terminology of the art and the PTO supplies an automatic claim parser to help examiners, applicants, and patent agents parse claims properly, requiring examiners to deal with indefiniteness issues before moving forward to 101, 102, and 103 issues makes a lot of sense.

            2. 2.1.1.2.1.2

              MM, well if the one of the reason for bringing the PTO in to help out on validity is their expertise in technology, I would think that consulting senior examiners in the field of the invention for their opinion on technology would be required. District court’s are now routinely hiring their own technical experts to get a candid and independent view on the technical issues. I would think that the most viable contribution the patent office could bring to the table an ongoing basis would be to allow senior examiners in the technical field to be consulted in any validity determination whether it be in the PTAB or whether be in court.

              1. 2.1.1.2.1.2.1

                The issue is : why are “technical experts” needed at all in most of the computer-implemented cases that come before the board? The specifications are usually crystal about the state of the art, i.e., “computers can be programmed by programmers!” (as if there was ever any doubt).

                Most of the time “experts” are brought in only to explain what the made up baloney jargon (so often relied on by the computer-implementers) actually “means” (or more accurately, what each party hopes that the terms “mean”). What the system really needs– if you insist on bringing more “experts” into the game — are “experts” in logic, sociology, philosophy, education, accounting and marketing, and preferably experts with a deep understanding of the history of those fields. The problem with including that kind of expertise, of course, is that it will pull the curtain away under the systemic incompetence that’s been eating away at the PTO for well over a decade now.

                1. No, doubt MM. But when something come up in bio or chem, I listen to what you have to say.

                  You know why.

          2. 2.1.1.2.2

            Also argued today at the CAFC (this will likely end up a Rule 36 affirmance but there is no way the patentee will reverse the loss at the district court level): Baseball Quick, LLC v. MLB Advanced Media, L.P

            Here’s the claim:

            1. A method of providing a subscription for viewing a recorded baseball game in which players from each team appear at bat, and attempt to place a pitched baseball into play and to reach base safely;
            with players failing to reach base safely being out and players on base attempting unsuccessfully to advance to another base being out; [<— yes, that's baseball!] the method comprising:

            (1) recording each appearance-at-bat for every player and game action resulting from an appearance-at-bat to produce a game recording; [old]

            (2) editing the game recording of each appearance-at-bat to produce an edited recording by deleting substantially all game action other than (i) game action from a final pitch thrown to each player, (ii) successful attempts of runners on base to advance to another base not associated with the game action resulting from the final pitch and (iii) unsuccessful attempts of the runners on base to advance to another base resulting in and out not associated with the game action resulting from the final pitch; [edit out stuff that some people might not be interested in! WOWEE ZOWEE WHO'D HAVE THUNK????]

            (3) obtaining subscribers for viewing the edited recording and [old]
            (4) playing or broadcasting the edited recording as a condensed recorded game for viewing by the subscribers.
            [old]

            How does this gar b a ge get out of the PTO? When was the Examiner born? When was the applicant born? People have been editing non-strikeouts and non-hits out of recordings of baseball games for decades and providing those edited recordings to public.

            1. 2.1.1.2.2.1

              That claim, by the way, is a quintessential example of a patent claim that protects information content.

              It’s ineligible. And it takes five seconds to demonstrate that.

            1. 2.1.1.2.3.1

              6, I would like to have it formalized that the PTAB have access to at least one examiner experienced in the field. There is no requirement that they have anyone on the panel that knows anything about the technology of the patent before them. Thus they are not even in as good a position as a judge with an expert, court-appointed.

              1. 2.1.1.2.3.1.1

                Yeah I could be behind that. Frankly I am kind of surprised that it hasn’t historically been that way for all board appeals. I mean, at least they get to consult with someone even if there are no judges with expertise there.

          3. 2.1.1.2.4

            Ned, besides my usual pleading to stop beating a dead horse, why is it that APJs who are patent attorneys with university technical degrees are all bad, but judges and juries that may well not even have had high school physics and chemistry are all great and just fine with you?
            Also, contrary to insinuations in some blog comments, all the APJs, even more so than new ordinary patent examiners in the Examining Corps, have a civil service protection that makes them almost totally immune to getting fired, much less having their decisions directed. If a PTO Director does want to influence a Board decision they have the statutory authority to impanel an enlarged Board on which they can also sit. But that almost never happens, and gets well publicized on the very rare occasions when it occurs.

            1. 2.1.1.2.4.1

              “why is it that APJs who are patent attorneys with university technical degrees are all bad, but judges and juries that may well not even have had high school physics and chemistry are all great and just fine with you?”

              That’s kind of a good question there Paul but I don’t think Ned thinks they’re “all bad”.

            2. 2.1.1.2.4.2

              Are you seriously telling me that APJs were not influenced in their judgments on an appeal when they saw that a patent application was in SAWS?

              Why was this status made known to the APJs but not to the Appellants?

              1. 2.1.1.2.4.2.1

                Since you are interested, in connection with once trying to suggest a PTO Director reexamination [yes, there is a statute for that] of a patent issued on what was clearly a perpetual motion machine, I was informed in effect by a PTO staff assistant that the rare kind of patent that gets that kind of special attention is one that would become a media embarrassment to the PTO. I have no idea if a patent application in the former SAWS ever got that kind of kid glove handling as a “hot potato” from the Board.

                1. Paul, Did you read the SAWS FOIA documents? They were quite brazen in requesting info helpful to insider trading be passed up the chain of command. (See below.)

                  I have often consulted in the financial industry. Rational observers of that industry assume that if people can get away with making money via criminal action, they will.

                  Kyle Bass has shown how IP property ties directory into Wall Street bets. It is naive to assume that corruption isn’t happening especially after the RIM NTP debacle of ex parte communications between PTO officials and at least one attorney for a large infringing corporation.

                  After the passage of the STOCK Act, it is incumbent upon the FBI and the SEC to monitor the USPTO as carefully as they do Wall Street.

                  Home SPE Review and SAWS Report Preparation. The home SPE should discuss the sensitive nature of the application with the Examiner. The SPE should use their judgment and be liberal in SAWS application identification, but should screen out cases that are clearly of a
                  routine nature. in cases where the SPE is not certain if the application encompasses SAWS subject matter, the SPE should consult the SAWS POC and/or SAWS QAS.

                  Upon agreement that the application should be reported as SAWS, the home SPE must complete the SAWS report in the detail required by the attached template. The Impact Statement can be prepared by performing an lntemet search to find external information indicating the sensitivity of the subject matter. One way to do this is via a Google search of the invention. the inventors, and owner or assignee. Such information may include, but is not limited to, financially important subject matter (Is the stock of the invention’s owner publicly traded? Have there been press releases about the invention?), politically charged subject matter, and subject matter which may raise legal or ethical objections.

                2. BTW, one has to wonder why the PTO refuses to identify which patent applications were in SAWS or are or have been in any other secret quality assurance programs.

                  In truth, to allow the PTO to have such secret quality assurance programs certainly violates the intent of the STOCK Act.

                  Examiners either know what they are doing or they don’t. If they don’t, the remedy is not a secret quality assurance program which violates the APA, civil code on examination, PTO regulation, the remedy is to make sure that examiners do their jobs correctly.

                3. Paul,

                  You quite miss the fact that the Office broadly operates in such a Star Chamber mode.

                  Before the Office pulled the SAWS program, they “oops” and made the very public admission that SAWS was but one of MANY such unknowable and NOT on the written record programs.

                  It is more than just a little telling how you are treating this topic – very much in alignment with your other anti-patent views.

                4. You have GOT to be kidding Prof.

                  In modern usage, legal or administrative bodies with strict, arbitrary rulings and secretive proceedings are sometimes called, metaphorically or poetically, star chambers. This is a pejorative term and intended to cast doubt on the legitimacy of the proceedings

                  from link to en.wikipedia.org

        3. 2.1.1.3

          I know you’re being sarcastic, but I think they should hire more people with industry experience and research experience to examine in their areas.

          I get sick and tired of seeing bad patents issued when there is a 102 ref on the IDS, but the examiner doesn’t bother to look at the IDS-cited art (although this is very rare).

          Or making bad rejections and going through multiple RCEs as a result.

          Or not knowing what is inherent in claims and allowing bad patents.

          And that’s my rant of the day. Oh well, back to the grind.

          1. 2.1.1.3.1

            patentcat,

            While you claim this is “rare,” the good professor ran a column awhile back that actually verified the opposite.

            1. 2.1.1.3.1.1

              I believe it said examiners don’t use refs cited in the IDS, unless there was another article.

              But, as most refs in the IDS are garbage, makes sense.

              Not using =/= not reading. Zzz

              1. 2.1.1.3.1.1.1

                Also, still get apps where they don’t put refs from the spec in the IDS or bother to file IDS from the ISR.

          2. 2.1.1.3.2

            …and yes, putting the emphasis on good examination – which would address the several items you list – has LONG been a strident call of mine (no matter how much Malcolm might attempt to “spin” that otherwise).

      2. 2.1.2

        That’s what I have been saying! What’s incredible is the CAFC – condoning it, and the like 99-1 crony Congress passing that law. We are finally seeing some push back on in-kind Agency action like the SEC administrative ‘courts’ adverse to the 7th.

Comments are closed.