IPR: Proving Patentability before Amendment

By Dennis Crouch

In Prolitec, Inc. v. ScentAir Technologies,[1] the Federal Circuit has affirmed a USPTO inter partes review (IPR) decision cancelling Prolitec’s air-freshener diffuser claims.  The patent at issue[2] is the subject of a co-pending lawsuit between the parties that was stayed in 2013 — awaiting the IPR outcome.[3]

Here, the patent included a claim limitation requiring a diffusion head “mounted to” a reservoir.  The patentee wanted that term to be limited to require permanent joining of the head to the reservoir.

Too Clever Specification Drafting?: To achieve that permanent-joining result, the patentee first argued for a narrow claim construction of the “mounted term.”  That approach failed at the PTAB and has been affirmed on appeal.  The failure is to the ordinary patent drafting strategy, employed by the patentee, of using non-definite and non-limiting terms such as “may” to describe the role of various embodiments in the specification so as to not unduly limit claim scope. Here, in particular, the specification had indicated the possibility of a permanent joining in a disposable fashion, but, by clever specification drafting, had not foreclosed the potential for non-permanent mounting.  Thus, that narrowing argument was foreclosed by the patentee’s own prior actions.

No Amendment without Major Proof: As an alternative approach, the patentee also requested permission to amend its claims to replace “mounted” term with “permanently joined.”  As per its usual modus operandi, the Patent Trial and Appeal Board (PTAB) denied the motion to amend.  In particular, the PTAB found that Prolitec had failed to prove that its proposal was patentable over the prior art of record.  On appeal, the Federal Circuit affirmed – first reiterating its prior statement in Microsoft Corp. v. Proxyconn, Inc.[4] that the Board can require a patentee to establish patentability before allowing an amendment.  Here, the Federal Circuit extended that doctrine to affirm the PTAB rule that, prior to amendment, patentability must be established over all prior art of record (in both the IPR and prosecution history). That rule, according to the Federal Circuit, is not contrary to any statute and is also “reasonable.”  Further, the court held that the requirement of “establishing patentability” includes both novelty and nonobviousness.  On the merits, the court affirmed that the patentee had failed to show that its amended claims were non-obvious over the combination of references cited in the IPR petition and found in the prosecution history file.

The majority opinion was written by Chief Judge Prost and joined by Judge Taranto.

Writing in dissent, Judge Newman argued that the refusal to allow an amendment was “contrary to both the purpose and the text of the America Invents Act. . . . [E]ntry of a compliant amendment is [a] statutory right, and patentability of the amended claim is properly determined by the PTAB during the IPR trial, not for the first time at the Federal Circuit.”

= = = =

[1] Prolitec, Inc. v. ScentAir Technologies, App. No. 15-1020, (Fed. Cir. Dec. 4, 2015) (slip opinion available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1020.Opinion.12-1-2015.1.PDF)

[2] U.S. Patent No. 7,712,683.

[3] Prolitec, Inc. v. ScentAir Technologies, Civil Action #: 2:12-cv-00483-RTR, Docket No. 62 (E.D. Wisc., May 17, 2013).  The IPR petition was filed in May 2013 but not instituted until August 2013. See IPR2013-00179. The claims of a second patent in the lawsuit were also largely been cancelled and was the subject of a separate appeal. That PTAB decision was affirmed without opinion in June 2015. See Prolitec, Inc. v. ScentAir Technologies, App. No. 15-1017 (Fed. Cir. June 9, 2015) (R. 36 affirmance without opinion).

[4] 789 F.3d 1292 (Fed. Cir. 2015).

214 thoughts on “IPR: Proving Patentability before Amendment

  1. Judge Moore’s comment on “abstract” set me thinking how poor “abstract” is as a criterion whether a claim is fit to issue. While she contends that every claim under the sun can be presented as abstract, contributers here vehemently maintain that no claim can ever be seen as “abstract”.

    If you take other criteria like new, obvious, useful, moral, technical, nobody is saying that “Nothing is obvious” and nobody is contending that “Everything is obvious”. In the same vein, nobody asserts that “Everything is immoral” or that “Nothing is immoral”. There is a watershed every time. Even with “technical”. The Y/N watershed might not be a razor-sharp arrete. It might be merely an ever so slightly domed plateau. That depends on how cute the Federal Circuit and Supreme Court judges are, at explaining how to know when you are standing on the watershed. So, you might not know quite where it is, but watershed there is. Nobody disputes that.

    But when it comes to “abstract”, people including judges deny that there is a watershed anywhere. I struggle to imagine a worse criterion for deciding whether a claim shall issue.

    1. Max, Recall, that the Federal Circuit held that the claims before in Bilski were unpatentable because the

      Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.

      I think most of us would agree that the claims in Bilski were abstract in the sense indicated by the Federal Circuit in its majority opinion. I do not think the Supreme Court intended abstract to mean anything else at that time.

      However, because they did not actually define it to be such, they left it open to wild interpretations such as provided by Judge Moore who uses the term abstract to mean anything she wants it to mean at the time she says it.

      I think that a better formulation would simply be say that something is abstract if it does no more than manipulate the meaning of something I as opposed to something physical.

      1. I think that a better formulation would simply be

        MoT was also set aside as anything but a clue.

        Your “better” is just not.

        1. MoT was also set aside as anything but a clue.

          It’s a really really important clue, especially when the machine or transformation is new and the machine is structurally defined.

          But you can pretend otherwise. You’re a very serious person, after all.

      2. The only thing about this “because they are not physical objects or substances, and they are not representative of physical objects or substances” is that it is how our brains work. The information processing we hold most dear fits into this category and yet “the legal brain trust for science” says it is not an invention to recreate human intelligence.

        Epic ignorance that rises to the level of medieval witch burnings and Popes saying that the Sun revolves around the Earth.

        1. Actually Night Writer, let me correct you (and stop those would would merely twist what you post).

          Our brains do not in fact work like computers – the bio “circuitry” is far more complex, and as of yet, not even fully understood.

          Instead, we have machines that are, well, ONLY machines. We, as humans with an imperfect ability to use another t001 called language, employ a linguistic mechanism called “anthropomorpohication to make (simply) more understandable what the machine is and does. That is, we (merely) use terms that sound in human actions.

          Only a child, or someone deliberately setting out to mislead, would make the mistake of thinking that the machine items are meant to include actual human thinking.

          Of course, claims – as they must be understood by Persons Having Ordinary Skill In The Art ALREADY know this (and hence, my counter point to those that would deceive).

          1. Only a child, or someone deliberately setting out to mislead, would make the mistake of thinking that the machine items are meant to include actual human thinking.

            Because “determining whether the credit card numbers match” is, like, totally inhuman.

            How does the brain add 2+2 and get 4? It’s a complete mystery! Because “anon” said so.

            the bio “circuitry” is far more complex, and as of yet, not even fully understood.

            Not even fully understood! Just like a black box.

            1. MM total non sequitur. The point is that they are machines. They are doing what our brains do just as our iron age machines did what our bodies did.

              1. They are doing what our brains do just as our iron age machines did what our bodies did.

                Were you allowed to claim those “iron age” machines in terms of their new functionality without describing the structural features that distinguished those machines from the prior art machines?

                No. But you knew this already.

                1. Functional claims are a different issue. But, then since you have no rational argument you must try something else.

                  (Also, see Deener of the 1800’s where functional language was deemed appropriate.)

                2. ..and yet again Malcolm pretends the claim format – the optional claim format is something other than what it is:

                  an option.

                  Talk about that “born yesterday” syndrome…

          2. That is right anon. And interestingly this has a historic basis in that before modern computers all that type of information processing would be carried out in a person’s head. So, the idea was to say well equations and that sort of thing are the type of thing people do in their head so let’s exclude them. But, now with modern computers the underlying assumptions have changed.

            It is intellectually dishonest by the educated and epic ignorance by the rest.

            To anyone trained in science, the reality is plan: computer are information processors that perform the information processing with a physical process that takes time, space, and energy. The anti-patent crowd has created so much nonsense that it is impossible to argue with them in front of the mob.

            1. before modern computers all that type of information processing would be carried out in a person’s head.

              ROTFLMAO

              It must be fun to have been born yesterday. You get to make up your own history!

              1. Except I actually wrote a paper where part of the paper looked at the history of why “math” was seen as not eligible.

                And, your post appears to be just a response to respond. It must be on your job description to respond to every post that doesn’t agree with your employers policy goals.

                Really strange that the better the information processing gets the more vehement the attacks are on computers (and how the anti-patent judicial activist use this to their advantage.)

                But, I note that you made not one substantive response to my posts. Nothing has changed in 10 years of blogging with you MM. Remember that I am the one that gave you your nick name.

                1. Night Writer,

                  Whether or not you gave him a nickname is immaterial.

                  But what you state is more to the point: Malcolm has NOT changed one iota in what is approaching a decade of posting here.

                  Look back at the Prof’s own “let’s make a better ecosystem here” thread. Examples were provided of Malcolm’s behavior from the get go.

                  And yet, NOTHING is done about the ad infinitum ad nauseum propaganda machine of Malcolm’s desire NOT to engage in any sense of dialogue, but to merely dissemble and repeat his short script items.

                  Sure, there is a small ec(h)osystem that absolutely cheers Malcolm on, but that selfsAme number of posters ALSO do not engage the counter points long provided – ALSO do not even attempt to engage a dialogue and ALSO seek only to blanket the board with the same things in an attempt to gain some semblance of “credibility” by the “say it often enough” maxim.

                  Since one cannot make a horse drink at the well, how then do you keep the clutter of horse carcasses away from the well so that those horses that do want to drink can make it past the mounds of rotting horse “stuff”….?

    2. MD: If you take other criteria like new, obvious, useful, moral, technical, nobody is saying that “Nothing is obvious” and nobody is contending that “Everything is obvious”.

      In fact there were lots of people running around claiming that sky was falling after KSR. They were wrong.

      I struggle to imagine a worse criterion for deciding whether a claim shall issue.

      I can think of a zillion worse reasons. How about “it’s new and it’s a process”? That would be far worse than “the claim protects an ineligible abstraction.”

      While she contends that every claim under the sun can be presented as abstract, contributers here vehemently maintain that no claim can ever be seen as “abstract”.

      Golly, maybe both those camps are wrong. Maybe the answer is somewhere in between.

  2. I see that our ever-present quality controller has been hard at work this week-end, and has posted a bunch of comments overnight. Even if you baulk at them, do take a look at the short sweet new comment from Paul Morgan, which you can find at 13.4.

    Quite how a judge (Moore) can suppose that what she can personally remember of the relevant prior art more than a decade in the past is of any relevance whatsoever to the case at bar, and the invalidity or otherwise of the claim in view, is entirely beyond my comprehension. She should read more Mark Twain, perhaps, on the inadvisability of communicating her thoughts out loud.

  3. Even (still) in his most recent rant at 13, Malcolm indulges in a duplicitous dichotomy that I would love for him to square away (but have an exceptionally low expectation that he would ever do so).

    To wit: Malcolm chastises those who seek to point out that a claim squarely satisfying not only one of the statutory categories, but one of the “hard goods” statutory categories should be considered to “pass” the “magical” new** 101 test of Alice, and yet he himself turns right around and offers as a path to passing that “magical” test the mere idea of using but one claim option: his “self-elevated”-and-nothing-more-than-the-canard-of-Point-of-Novelty of “objective physical structure.”

    Think of this situation as a Venn diagram; the “logic” he criticizes is a larger circle that totally encapsulates his own smaller (and need I remind you optional) circle.

    If that selfsame logic is something he criticizes, and his own “answer” is contained within that logic, he then is fully admitting to a self F A I L.

    That this mantra is both a F A I L, and simultaneously (eagerly, even glibly) not critically evaluated by those who share a common desired ends is shown by the echo-mate Ned, who pounces on every opportunity to align with the Ends that Malcolm desires, but who refuses to even acknowledge exactly what position Malcolm takes with his smaller circle fully encapsulated within the larger circle. Ned jumps all in to the “PON” fallacy, yet F A I Ls to see that such a fallacy has NO connection with how he wants to use that notion in the 101 sense.

    As can be seen on the recent thread in which a simple question of basic definitions go unanswered by the sAme small circle, this logical fallacy of those sAme ones simply will have a blind eye turned to it, and I can guarantee that the nigh relentless propaganda will continue despite this glaring logical gap.
    There is NO desire for a true dialogue here when that dialogue exposes such gaps. Watch now as instead of filling the gap, any response from the typical “players” will seek to shift the focus to me personally instead of the actual subject matter. That’s how they roll. That’s how they have always rolled. And that, my friends, is the source of the blight that infects this forum and makes ANY true dialogue simply impossible.
    In another analogy, the ec(h)osystem problem here is that you can lead a horse to water, but you cannot make him drink. You really cannot force a dialogue, so no true dialogue occurs when one side of that dialogue is shown a gaping hole in its “logic.” Instead, you will have the endless propaganda machine, the endless dust-kicking, and the endless obfuscation of attack those who present the holes in the logic.

    You all want an end to the acrimony? Simple: end the drive by monologues; end the propaganda postings that refuse to integrate the counter points raised. And this modest request would really not be that difficult. Prof. Crouch has shown the willingness to police the threads by individual, so just apply that effort in a truly objective manner.

    Sort of like what I suggested to him personally some four years ago now.

    1. anon, It is ONLY when such reliance is total and complete and falls to the optional path of 112(f). But as even Prof Crouch has provided notice (and I have explicitly reminded Malcolm of this point on numerous occasions), the ability to rely on functional language OUTSIDE of 112(f) is fully sanctioned by Congress in the Act of 1952 in any claim that is not the equivalence of a single means claim.

      Anon, Congress passed only 112(f). It did nothing else.

      You should know that functionally defined elements were construed prior to ’52 to cover the corresponding structure and equivalents. All 112(f) did was to prevent invalidity if novelty was in the one MPF element.

      Congress did not authorize functionally claimed elements. They were authorized by the Supreme Court in Westinghouse — with the construction to cover, etc.

      1. Ned,

        You are not even close to viewing the law as it is.

        Unclench your eyes, pull those fingers out of your ears, stop the “nananana” chanting and OBSERVE, LISTEN, AND INTEGRATE what Congress actually did, what Federico acknowledged, and even what the courts have noted.

        Claims TOTALLY functional have the option of 112(f).

        There is a Vast Middle Ground of PERFECTLY allowable claims that contain both structure AND functional terms – no matter which part of the claim element – outside of 112(f) that Congress instituted with the Act of 1952.

        ANY view contrary to this is simply not inte11ectually honest.

      2. they were authorized by the Supreme Court in Westinghouse — with the construction to cover, etc.

        Statutory law is outside the purview of the judiciary to “authorize.”

        Pre-1952, Congress has shared some of its authority, but that was limited to setting the meaning of the word “invention.”

        Even that was revoked with the Act of 1952. Importantly, what is allowed in claim elements is NOT an item of setting the word “invention,” so there is NO “carryover” from pre-1952 in this aspect.

        ANY attempt by you to have the WRONG branch write patent law then in this area is at “best” ultra vires.

        1. Anon, I don’t know where you get what you say here and elsewhere about US law. But has nothing to do with US law.

          The Supreme Court case law stands unless overruled by Congress. That is the way it is. You cannot simply by saying otherwise change reality .

          1. Ned,

            The plain and simple fact of the matter was that the act of 1952 simply was NOT a strict codification.

            You do not seem willing (or able) to understand that very simple fact.

  4. Following up on my comment yesterday regarding this morning’s oral arguments in Cloud Satchel v. Barnes & Noble (here: link to patentlyo.com), we now have the recording.

    The claims are directed to software on a portable “document reference transport device” (LOL!) which is (surprise!) a portable computer that is capable of accessing a database of stored information, thereby increasing the amount of data “available” to the user of the portable computing device. Whoopee!

    A reminder for appellants who are still pretending that Alice never happened or that Alice is limited to its specific facts: stop pretending. The first thing the panel did in this case was take the patentee to task for wasting a bunch of time with arguments that because the claim is directed to an “apparatus”, that Alice doesn’t apply and the subject matter eligibility question is moot. That’s not the law. The judges know that it’s not the law. If you want to overturn the law, you need to make a very, very compelling argument that the law must be overturned because it’s wrong. You can’t just pretend that the law doesn’t exist.

    Another bizarre moment that illustrates a systemic problem with both the CAFC and the PTO: Judge Moore states that she doesn’t remember “laptops” in 1994. For cripessake, please educate yourself, Judge Moore, and recognize that what “Judge Moore” remembers about the history of computing is probably the last thing on earth that matters to anyone. First of all, the claim doesn’t recite “laptops”, it recites “portable.” Portable computers were around at least as early as the early 70s and the “Dynabrook” prototype dates to about that time. “Flip form” laptops were marketed in 1983. So much for Judge Moore’s awesome memory.

    Judge Moore also states that “certainly cell phones” that you could use for obtaining remotely “did not exist” as of 1994. This is based on her “darn good memory” (because, she tells us, that’s when she graduated from law school — as if that matters).

    Of course Judge Moore is absolutely wrong:

    link to en.wikipedia.org

    Devices that combined telephony and computing were first conceptualized by Tesla 1909 and Theodore Paraskevakos in 1971 and patented in 1974, and were offered for sale beginning in 1993. …. The first mobile phone to incorporate PDA features was an IBM prototype developed in 1992 and demonstrated that year at the COMDEX computer industry trade show. The prototype demonstrated PDA features as well as other visionary apps like maps, stocks and news incorporated with a cellular phone.

    Note that — as far as anyone knows — the alleged “inventors” of this junk patent had nothing to do whatsoever with the development of COMDEX, or with Simon, BellSouth’s cell phone which was marketed in 1994 and which was able to “send and receive faxes and emails and included several other apps like address book, calendar, appointment scheduler, calculator, world time clock, and note pad through its touch screen display.”

    That’s what people were walking around with in 1994. It doesn’t matter what Judge Moore “remembers” or what Judge Moore or her friends were walking around with. These weren’t “experimental” devices. These devices were sold to consumers and used.

    Was the lowest moment in the argument the moment where the patentee tried to compare its junk claims to the invention of the “two-wheeled” transport machine we refer to as “bicycles”? Probably.

    Judge Moore: “Tell me a claim that I couldn’t reduce to an abstract idea.”

    The answer is a claim that recites a specific novel structure, described in objective structural terms, that distinguish the claimed structure from structures in the prior art. Of course Judge Moore can pretend that such a claim may be reduced to an “abstraction” but pretending doesn’t make it so.

    Maybe the lowest point in the discussion was when Judge Moore said “Your body includes arms and legs. Have I described your entire body?” That was an attempt to elevate the

    And then the CAFC’s real problem raises its head:

    Judge Moore: “How do you distinguish DDR”?

    The problem is that DDR doesn’t exist to be “distinguished”. DDR exists to be thrown in the trashbin of history because DDR is a pile of self-serving cr p that was made up out of whole cloth by the CAFC for no other purpose except to lift a junk computer-implemented logic patent out of the sewer where it belongs. There is no way to reconcile DDR with the Supreme Court’s holdings or even the CAFC’s other holdings that deal with computer-implemented junk.

    In any event, the defendant’s attorney did an excellent job here of not getting flustered by Judge Moore’s regularly scheduled meltdown about subject matter eligibility. The “problem” addressed by the alleged “invention” is not a problem unique to the Internet or to computers. It’s about addressing information storage deficiencies. The “solution” described by the claims is “link to a data warehouse with greater storage capabilities.”

    The defendant’s attorney also did an excellent job of highlighting the patentee’s efforts to read limitations into the claim that aren’t there. The claims don’t require fast speeds or any remoteness of storage (much less storage on “the other side of the world”).

    The hyperventilating by certain judges on the CAFC about hypothetical claims to logic that save the world “but how do we save the claims???” really has to stop. It’s elephants all the way down. They know that. Painting DDR on the back of one of those elephants doesn’t change anything.

    1. Because things like hardware are “abstract”…

      Uhum.

      (I am not disagreeing with your take of Alice – and would point out that Ned has not yet accepted your take)

    2. MM, I worked on the Minuteman III. It had a flight computer. Would it be considered portable because the missile was intercontinental?

      Now if such a flight computer could access a database located in a real cloud during flight to store or retrieve data? There might be something to that.

    3. More on Judge Moore on not recalling any “laptops” in 1994. See Apple design patent Des. 316,252 issued Apr. 16, 1991 filed Jan. 23, 1989 on a “portable computer” that folds up, with the screen in the cover, like most laptops.

      1. I bought a Dell Laptop online in 1994 (i.e., on the Dell website over the Internet using the Mosaic browser. We had a 64K connection to the Internet. :) )

  5. One commenter writes:

    ” I could build this system based on the claim, the spec, and what is known in the art. So, please tell me how something that passes 112 can be abstract”

    Is there not a distinction in the USA between the inventive concept as claimed, and one embodiment of it, as described in detail in the specification? If so, do we not, as patent attorneys, need always to be precise, when we talk about “the invention”, as to whether we are talking about the claimed concept or the described embodiment?

    And just as an embodiment can be non-obvious even when the claim it covers is bad for obviousness, so can a claim directed to an abstract concept be coupled with a description of some specific embodiment that is most definitely non-abstract and most definitely enabled by the specification.

    That’s how it is in Europe. Is it different, in the USA?

    1. I think the gentleman points out why Bilski was wrong in describing nonstatutory subject matter as “abstract.” It confuses thoroughly.

      1. Indeed Ned. I can see the wisdom of “judicial restraint” at the level of SCOTUS. But with hindsight I think even they might now appreciate that it might have been better if in Bilski they had made a valiant attempt to tell us what “useful arts” means, rather than foisting on the law a new test called “abstract”.

    2. In the US we used to talk about enabling the full scope of the claims. The way it used to work in the US was if you claimed something very broad and there were inventive concepts that other came up with afterwards that were covered by your claims, then you claims could be invalidated for being too broad.

      So, the complaint in this case would be that the full scope of the claims wasn’t enabled. The flip side to that is a court used to construe claims in accordance with the scope of enablement. (This was back when we had patent law in the U.S. Now we have a witch trial boards at the Fed. Cir., PTO, and SCOTUS.)

      There were lots of policing mechanisms in place for too broad claims. 112/102/103. Now with Alice, there is merely the innovation of a chant and the claims are invalidated.

      Also, functional language is used in textbooks in almost all areas of technology with the understanding the functional language represents the known solutions. I have actually reference real textbooks that are used in colleges that state exactly this.

      1. OC: Now with Alice, there is merely the innovation of a chant and the claims are invalidated.

        If that’s you’re understanding of Alice, it’s no surprise you’re having difficulties.

        functional language represents the known solutions

        Indeed. That’s why you’ll find claims relying on functional language being limited to the objective physical structures that are disclosed in the specification. There’s a bit of an additional problem, of course, when the novelty of the claim resides in the functionality (e.g., automation) and the recited “structure” is a generically recited tool whose purpose (to automate determinations, using logic) was well-understood. Can you think of any specific art fields where this occurs regularly? I can.

        1. whose purpose (to automate determinations, using logic) was well-understood.

          Almost (but not quite) sounds like you want to use the inherency patent doctrine.

          Of course, you run away from that point because you would then need to ascribe to the completely absurd notion that ALL future improvements to the machine are somehow (magically, but necessarily) already in there.

          Why don’t you do everyone a favor, use those short declarative sentences you are always on about and place your real feelings – using proper patent doctrines – on the record?

          Yeah, we both know why you would rather dissemble and prevaricate than do that.

          1. If the “improvements” to the old machine (or process) are themselves ineligible — and they surely are in the case of improvments in logic — then you’ve got a real problem.

            I’m not running away from that fact. On the contrary, I’ve been steadily holding that fact up to your face for years. Before Bilski. Before Prometheus. Before Alice. Or have you forgotten?

            sounds like you want to use the inherency patent doctrine

            Nope. Keep beating on that strawman, though. It makes you look really serious and smart. Sure it does.

            1. Clearly, the inherency doctrine is not a strawman.

              Also, software is a machine component.
              Software is not logic.

              Let me know when you grow up and want to talk with the adults about these things.

        2. That’s why you’ll find claims relying on functional language being limited to the objective physical structures that are disclosed in the specification.

          A blatant misrepresentation and (repeat) moving of the goalposts.

          Such reliance that Malcolm speaks of here is NOT for those relying on functional language as he would indicate.

          It is ONLY when such reliance is total and complete and falls to the optional path of 112(f). But as even Prof Crouch has provided notice (and I have explicitly reminded Malcolm of this point on numerous occasions), the ability to rely on functional language OUTSIDE of 112(f) is fully sanctioned by Congress in the Act of 1952 in any claim that is not the equivalence of a single means claim.

          Further, the ends-justify-the-means other partner to Malcolm, whom is Ned, simply must accept the FACT that this wide open area of mixed vintage simply is not limited – as Ned would merely wish it were to have been limited – to claims using functional language at some precise “point of novelty.” Due in part to the plain fact that anyone can draft a claim whose “point of novelty” is simply the entire claim itself (the principle annunciated in Diehr that was expressly affirmed even in the nose-of-wax-mashing later cases).

          Once you realize that Congress did not write the law as these two (among others wanting a desired Ends and not faring about the Means to get there) WANTED Congress to write the law, and we realize that the judiciary would actually need to take that explicit step and re-write the law to put ANY serious teeth into what they too want the law to say, it becomes evident that the Vast Middle Ground will NOT go away, and the increasingly hostile attempts by the judicial branch as placed by their “verdicts” will only take us closer to a constitutional crises (arguably said crises is already upon us).

          But returning to the point here: is there ANY justification for continued posts that so blatantly misrepresent the state of the law in pushing for a desired Ends? Surely, Malcolm must understand that what he posts is mired in deception. There can be no HONEST reason why he continues to ig nore these counterpoints so plainly (and repeatedly) provided. The ecosystem will NEVER “get better” when people are unwilling to NOT treat points of law honestly.

    3. Someone: I could build this system based on the claim, the spec, and what is known in the art. So, please tell me how something that passes 112 can be abstract”

      Sure. As MD has already explained, the test for whether a claim fails to raise itself out of the muck of abstraction isn’t whether “you could build an embodiment based on what’s in the spec.” The test is whether your contribution to the art as described in the claim rises above an ineligible abstract concept. The allegedly “new” concept here (try not to laugh) is “determine whether a driver is inebriated automatically and keep them from driving.” How is this automation achieved, according to the claim? Evidently through the use of “an expert system.”

      What’s the novel structure of this “expert system”? Nobody knows. That’s because there is no objective structure. This “system” is defined by its function, which is (allegedly) the sooper dooper techno thing that deserves patent protection. “New functionalities” aren’t eligible for patent protection, however. Among other problems, “new functionalities” are abstractions because they lack objective structure where it counts. Note again that one’s ability to create an embodiment falling within the scope of an claimed abstraction does not cure the problem presented by the claim.

      Some people don’t like this analysis because it hurts their pocketbooks. But it’s not going away. Some form of it is has always been with us and some form of it is going to be with us forever. If you want to create a special exception to keep your wallet padded, then justify the exception with data. Convince everyone that the size of your wallet is important to the rest of us. Good luck.

      1. Once again the dross of an optional claim format (objective physical structure in the claim) is made an issue by Malcolm.

        Why must we all be subjected to this type of intentional and fallacious posts?

        Ad infinitum.
        Ad nauseum.

        1. claim format

          Your reliance on the “format” of the claim is a demonstrated loser. But don’t tell your clients! Just take their money and laugh. After all, it’s all about you.

          1. What an arse you are.

            It is not my reliance – but your own. You are the one constantly attempting to make “objective physical structure” a necessary predicate when it is merely an option.

            Secondly, the only one wanting to make this about me – is you. You are the one that keeps on attempting to switch the conversation to be about me, instead of about the actual subject of patent law.

            Funny how it is that you so reflexively you your number one tired and trite meme of accuse0thers0fthatwhichMalcolmdoes.

            Go figure folks.

    4. Your point here MaxDrei is a good one: a claim is not just limited to any one embodiment in the specification.

      But that’s a scope question, isn’t it?

      Notwithstanding that, that me make sure that I understand you.

      You are saying that a claim (with its full scope) can be found obvious, even if a lower level embodiment would not be found obvious.

      So in a Venn diagram type of explanation, even if the scope contains points that are not obvious, even one obvious point within the scope wrecks the party.

      Is that what you are saying?

      If that is a correct understanding, then you are saying that so with obviousness, then too “abstractness” passing some type of 112 test….?

      Which 112 “abstractness” thing are you referencing? I have to ask, seeing as even the Supreme Court has not bothered (yet) to define that term, so in a very real sense, “abstractness” itself fails a 112 view.

      It’s kind of difficult to use a view that fails 112 as a 112 test – don’t you think?

      1. It is with your if-then sentence that you go wrong. Either you do it deliberately, or you just don’t see the issue. Either way, engaging with you is a mug’s game. Bye.

        1. So like you to immediately be snarky when I am being polite and making sure that I understand you.

          So you are not saying that you are attempting to say that you are using 112 like the example of 103?

          If not, then what are you saying?

          1. You ask:

            “So you are not saying that you are attempting to say that you are using 112 like the example of 103?”

            So like you. Almost a parody of your style. Very funny.

            I have a suggestion. Stop trying to understand what I write. It’s not meant for you and it is a waste of your precious time.

            1. LOL – so you just do not want to clarify what you wrote….?

              Soooo “mind willing to learn” of you (not).
              Soooo helpful for the ec(h)osystem.

              Soooo typical.

              Maybe you think this is a “mug’s game” because you just don’t get how your six month’s of experience (albeit repeated no matter how many times) just does not prepare you to understand the law.

  6. link to law360.com

    Game Show Network general counsel Mark Feldman said in a statement that the company was pleased the board found the patent was invalid, as the company has contended for several years.

    “Whenever GSN is faced with unsupported legal claims, whether patent-based or otherwise, we choose to vigorously defend, rather than settle,” he said. “The USPTO’s new inter partes review proceeding, which allowed us to fully participate in the board’s review of the…patent, proved to be an efficient new procedure for canceling an invalid patent.”

    [US Patent 6,174,237] covers an online gaming system with a qualifying round between a player and a computer and a playoff round among players who reach a specific score and compete against the computer. The patent specifically mentions that it covers games such as checkers, bridge and crossword puzzles.

    Oral arguments were at the CAFC this morning. As you can imagine, the asserted claims use much more extraneous verbiage than appears in the summary above but the scope is that absurd. Yes, folks, organizers of game tournaments used tryouts to evaluate potential contestants in the prior art before 1999! Yes, folks, games can be played against a computer even in those dark distant ages whencomputers were powered by the same waterwheel used to mill one’s corn.

    1. Interestingly, in oral argument the patentee admitted that the PTO offered them the opportunity to file an amendment which the patentee declined (oops). The patentee chose instead to file a reissue.

      To distinguish the cited prior art, the patentee argues that the claims are limited to tournaments where the computer is a rival contestant (never mind that “solitaire” is listed among the games of skill and the specification’s teaching that “[t]he qualifying round is played between a single player through a computer terminal and a host computer…. Also the host computer has the ability to act as another player if the game requires more than a single player). Query how such a distinction would overcome the inevitable obvious rejection.

    2. “an efficient new procedure.”

      It is interesting, is not, that we had the same procedure for canceling invalid patents in place from 1793 until 1836 when it was removed from the statute. It might be useful to inquire as to why it was removed. Could it be that meretricious interlopers were filing cancellation actions as they are today? Could it be that the wealthy could utterly d*stroy a small fry inventor with such a procedure?

      But it is very interesting that everybody assumes that IPRs are truly new when they are not.

      1. Ned: Could it be that the wealthy could utterly d*stroy a small fry inventor with such a procedure?

        This “argument” against IPRs remains both the most frequently raised and the weakest.

        In a capitalist country with great disparities of wealth (e.g., the United States) the wealthy always have the ability — in theory — to play the less wealthy like puppets. They have more resources. If you don’t like that fact, the worst way to change the situation is to increase the amount of assertable junk in our patent system. After all, the wealthy will always have more junk patents than everyone else! Just like they do now.

        The way to change it is (1) increase the participation of poor people in the voting process and (2) start taxing the rich and use the insane amount of money generated to give everyone a better chance to succeed. Rest assured that the wealthy will fight you every step of the way and they will sink to the absolute lowest levels in that fight.

        In the meantime, please alert me when a “small fry inventor” has been unfairly targeted and “utterly destroyed” by a wealthy “copyist” (or whatever label you choose) thanks to the IPR system. Then we can start gathering statistics about the number of those incidents and compare them to the number of times a small company has avoided injustice and expense using the IPR and the number of times that a large company with a junk patent has been dissuaded from asserting that junk because it knows there is zero zilcho nada chance of that junk surviving an IPR.

        Take Facebook, for example. Their portfolio is stacked with reams of junk patents. The best thing for “small fry” who want to get into the game but who feel “blocked” by those junk patents is simply to start practicing them, en masse. Then when Facebook comes after you, you publicize what they’re doing. You mock their ridiculous junk, you mock their silly patent attorneys who can’t understand subject matter eligibility no matter how hard they try, and you mock their hypocritical tough guy posturing. And you join up with the other “small fry” and you expose the farce for what it is.

        Don’t have the gut to do that? Then find something else to do. IPRs aren’t going anywhere.

        1. MM, no doubt the rich can attempt to use their power. But courts have standing requirements. IPRs do not. That can and has led to abuse. Just for example, there are rich folk filing IPRs just to drive a companies stock price down so they can make a buck selling short. There are other companies that have filed reexaminations against the whole portfolio of small companies.

          What can be abused, will be abused.

          1. What can be abused, will be abused

            This precious little blog “ec(h)osystem” serves as an abject example of that Ned.

            When perfectly, objectively, non-offensive comments are expunged and the rampant C R P anti-patentist rants run unchecked, and posts such as “a complete asshole” glide by, it is abundantly clear that this forum is NOT a neutral viewpoint forum.

            It is a forum that festers in being abused, and with such one-way street editing, is itself complicit in being abusive.

            The good professor may not think this to be so, may even may be unaware that the perception that this is so (although that would really be hard to believe as he has been told nine years and running that it is so), but neither changes what is.

            Ecosystem, good sir – is what you have allowed it to become – through both your actions and your inactions.

            Don’t like it, Prof? You only have yourself to blame.

              1. LOL – and let you have your little propaganda “repeat-a-lie-often-enough-it-garners-a-semblance-of-“truth” party all by yourself…? (seeing as that even though Prof. Crouch has stated “no lies” here, he does nothing about your rampant lies and all)

                I care too much about the law.

                Besides, it’s rather fun to put your nose into your own C R P. (you really are not that good at the propaganda game – even if you envision yourself to be some “protector at the edge of the fields of rye against those damm G-g-g-grifters).

      2. Ned, how can you continue to call IPR petitioners “interlopers” when you know perfectly well, and have been repeatedly reminded, that the PTO has said that 80% of IPR petitions are filed by defendants being sued for patent infringement by the patent owner! And no doubt most of the others had been at least threatened with a suit.
        If there were really corporations with a big budget to go around starting IPRs to pick on poor inventor’s patents for the heck of it, by spending the typical $100,000. to $200,000. or more total cost each, there would be law firms scrambling for that new business opportunity.

    3. link to technologyreview.com

      So, the machines are beginning to rival us in many areas and yet somehow this is all easy. The quantum of innovation is not what the Disney movies says it is.

      I see MM keeps up the never ending propaganda war against patents for the international corporations. Putting those kids through college MM?

  7. Fyi, as predicted, the CAFC upheld today the summary judgment tanking (under 103) of those absurd “baseball game editing” claims (Rule 36 affirmance). That was fast (oral arguments were Tuesday). Congrats to the victor MLB for taking a stand.

    1. Next up for a schedule beatdown: Vehicle Intelligence. Their “use an expert system!” claims were tanked on summary judgment under 101 after they hauled Mercedes Benz into court. Oral arguments were Tuesday.

      Try to believe this claim (7,394,392):

      1. A method to screen an equipment operator for intoxication, comprising:

      screening an equipment operator by one or more expert systems to measure at least one type of chemical in the air in proximity to the equipment operator to detect potential intoxication;

      selectively testing said equipment operator when said screening indicates potential intoxication of said equipment operator; and

      controlling operation of said equipment if said selective testing of said equipment operator indicates said intoxication of said equipment operator.

      Heckuva job, PTO. Heckuva job.

      More reforms coming!

        1. The oral argument on Friday in Cloud Satchel v. Barnes & Noble (and Amazon) should be interesting. That cases was (properly) tossed under section 101 by the Delaware district court judge last December.

          This whining from the patentee was interesting:

          “[Our] concern is evident in the fact that this court has issued two nearly identical 101 orders in just the past week,” the company said. “We are hopeful the Federal Circuit will correct this overreaction, which if allowed to stand has the potential to significantly diminish the value of many existing patents – including Amazon’s own ‘One-Click’ technology

          Amazon, of course, got a billion times more “value” out of its one-click junk than it ever deserved. That case, after all, was one of the first major signifiers that the system had gone off the rails. It would have wonderfully ironic had Amazon been “enjoined” from practicing Cloud Satchel’s junky patent claims last December but everyone will be better off with those claims in the dustbin.

          And “diminishing the value” of many existing junk patents (not to mention pending applications) is precisely the point of what’s going on. There is no “overreaction”. If anything, there’s been a profound underreaction by the PTO which is still bending over backwards to help patentees shephard ineliglble claims through the system.

      1. What is so wrong is that 103 isn’t being used if this claim is supposedly so broad.

        Certainly, I as a person skilled in the art (I have actually taught an A.I. class at the college level where we spent a lot of time on expert systems) believe this claim passes 112. I could build this system based on the claim, the spec, and what is known in the art. So, please tell me how something that passes 112 can be abstract.

  8. TJ These types of Fed Cir decisions have prodded me into moving away from patents altogether.

    Bye bye, TJ! The world weeps for the loss of your awesome contributions to the promotion of progress.

    Oh wait — you somehow forgot to share those contributions with us! Go figure.

      1. anti-patentists

        Nope, that’s not what it’s about. But keep crying.

        We’ll fix the patent system with or (preferably) without you and your cohorts, “anon.” Good riddance.

  9. If the patent owner does not have the unfettered right to amend, why are we still applying the broadest reasonable interpretation?

      1. An answer is provided at 2.1.1.1 below to why unfettered amendment is not possible in an IPR without defeating its purpose, and cannot be like endless application prosecution.

        Yes, support legislation changing BRI in IPRs to In re Phillips claim interpretation standards if you want ot. But thinking that is going to make a significant difference in claim scope which will 103 distinguish cited art is unproven in any appealed IPR so far, and too often based on not correctly reading the Fed. Cir. case law on what BRI actually requires.

        1. The attacks on IPR procedure are driven solely by the fact that IPRs are one of the few parts of the patent system that actually work.

          Changing the claim construction standard isn’t going to protect the junk that is being tanked in IPRs. And you point out correctly, Paul, that allowing applicants to endlessly move the goalposts as they do in prosecution (“pay to play!”) would turn the proceedings into a farce.

                1. Tafas was a PTO G.C. Dudas attempt to limited endless serial continuations without a statutory basis. IPRs have a statute.

          1. MM, some of those who of actually been involved in IPRs do not believe they get a fair hearing or that the procedures are fair. Perhaps of tweaks can fix these problems, but they can never fix the fact that the people deciding the issue are not truly independent the way judges are.

            I assume that you would have no objection to having IPRs moved out of the patent office and into an independent Article III court, with a statutory mandate that the procedure be conducted within one year of institutional?

            1. the fact that the people deciding the issue are not truly independent the way judges are

              You need to present some compelling evidence of systematic unfairness and unreasonableness before people are going to buy this argument.

              Also, don’t forget that there are plenty of judges out there whose “independence” is (or was, before they resigned in disgrace) highly questionable. For example, are all of those judges in East Texas “truly independent”? I think there’s been some disagreement about that.

            2. I assume that you would have no objection to having IPRs moved out of the patent office and into an independent Article III court, with a statutory mandate that the procedure be conducted within one year of institutional?

              My initial off-the-fly reaction to this proposal is that I would not object to this if, other than the judges, the set-up was more or less the same. It seems a bit like moving the deck chairs on the Titanic around in that case. Obviously if it was a choice between your proposal or nothing, of course I’d go with your proposal, happily.

              1. I think, MM, that procedures would be quite improved in a court. First off, such courts will probably have a full blown claim construction hearing even if the parties do not demand a jury trial. Moving it to a court will also eliminate amendments and BRI, two bad ideas if the whole idea of IPRs was to provide a low cost substitute.

  10. At 1.1 MM asserts:

    “The determination was made based on the patentee’s inability to make a persuasive argument explaining why the amendment would make any difference.”

    and this seems to me no more than common sense. Or are people here saying that there should be an unfettered right to amend, as many times as you like, without ever bearing any attendant requirement to explain why the difference the amendment makes is enough to change the outcome?

      1. “Unfettered”: released from restraint or inhibition.

        You know. The post you commented on exactly a minute before playing dumb.

        1. “Bob,”

          I see – I took the amendments to be in context of the existing system of normal amendment practice.

          …you know, kind of like the Reasonable in “Broadest Reasonable Interpretation”

          Now if you want to employ some BUI standard instead, I can reaffirm my meaning to you.

  11. The replies to my comment #3 are welcome, but fail to bring clarity. So I will comment again, in an attempt to reduce the level of cross-talk. I suggested that this bit:

    “…the court affirmed that the patentee had failed to show that its amended claims were non-obvious….”

    was interesting, in that (if I understand it right) it imposes on petitioners a requirement to do more than demonstrate why objections to patentability are not well-founded. Something more is called for, namely, an explanation to the court, why the subject matter of the (amended) claim positively merits a recognition of patentability. Or have I misunderstood the court here?

    In my experience, instructing associates in the USA are perplexed by the EPO’s expectation, in every examination on the merits, that Applicant will explain in positive terms, why the claimed novel subject matter has to be seen as inventive. The associates find it 0ff 3nsive, that an Applicant has to say to the Office why a patent grant is possible. They consider it completely sufficient simply to show that the obviousness objections are not well-founded. The associates (me too) think there is an important difference between that and explaining why the claimed subject matter deserves to be recognised as a patentable invention.

    But the answers I got to my #3 talk past my point. Is it simply that I am misunderstanding the court here? Can anybody clarify for me?

    1. LOL – blame the responses for failing to bring clarity and talking past “your point”….

      Sorry MaxDrei, but the “point” you have is “to blame.”

      1. … and yes, MaxDrei, you are STILL misunderstanding things here – it is not an affirmative duty to show patentability, but merely, the desired amendment did not overcome the previously made reason for not being patentable.

        There is a clear difference between overcoming a rejection and some otherwise unconnected patentee proving patentability position that you “want clarity” on.

        Your eighty cycles of six months experience is getting in your way again.

    2. …was interesting, in that (if I understand it right) it imposes on petitioners a requirement to do more than demonstrate why objections to patentability are not well-founded. Something more is called for, namely, an explanation to the court, why the subject matter of the (amended) claim positively merits a recognition of patentability. Or have I misunderstood the court here?

      No, Max, you haven’t misunderstood the court, and our friendly site-moderator anon is mistaken in his comment at 5.1.1. The court here is indeed saying that the patentee has an affirmative burden to demonstrate patentability over the art of record. HOWEVER, this is only in the IPR context, as this burden comes about through PTO regulations that were developed specifically for IPR procedings, under authority of the AIA.

      The court referred to its earlier Microsoft v. Proxyconn decision, found here: link to cafc.uscourts.gov .

      In part IV of that decision, the court approved the PTAB’s ruling that, in motions to amend in an IPR:

      A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.

      The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims.

      The US associates you mention that are offended by EPO practice are clearly uninformed. (I’ve told you before that you need to find new US associates to work with, as the ones you mention all the time seem to be sub-par.) Given their ignorance of EPO practice, it’s not surprising that they’re taken aback at the procedural burden/practice you describe, as it is indeed different than normal amendment in front of the PTO.

      1. DanH – you are point blank wrong in saying that I am wrong – the key phrase or yours: “art of record”

        Read again my post. I clearly differentiate EXACTLY the same as you.

      2. Thanks Dan, for providing a concise, relevant and factual explanation of current IPR amendment requirements, for the few parties that actually attempt to amend claims in IPRs.

  12. My clients can spend thousands of dollars banging their heads against the wall because some examiner is too dense to recognize a claim for novel and non-obvious invention, and then when the patent IS granted, it’s going to get shot down by PTAB anyway. Enough with the farce of prosecution, let’s just move to a registration system so that all cases can go directly to PTAB.

    1. They can spend tens of thousands, hundreds of thousands and even millions on patents and research and development, only to see such judicial quackery. These Fed cCir deisions are a joke. No one is going to win in the long run if this nonsense continues much longer.

      1. TJ: No one is going to win in the long run if this nonsense continues much longer.

        Except that patentees are winning right now, all around you.

        The fact that you and your clients are losing is, well, your special problem. Maybe ask someone with a bit more skill to help you out.

          1. Yes, “anon”, you and your cohorts have been pretending for eons that everyone who disagrees with you about your extremist positions is “anti-patent”.

            But reasonable people understand that it’s entirely possible (indeed — sensible!) to support patent reforms while respecting patents.

            I think a functioning patent system is a great way to promote progress. I applaud innovators and competent practitioners who take the time to carefully draft applications to protect their patent-eligible inventions. I wish them all the success in the world. And there’s many deserving folks out there who are succeeding.

            There’s still an incredible amount of work and cleaning up to do, however, before the system is recovered. It’s going to take years. You have the option of helping to fix the system, of course, or you can continue to do what you’ve been doing. How’s it working out for you?

            1. LOL – I know of no one outside your little Echo circle that even remotely thinks of you and your rants as “pro-patent.”

              Such a view (you being pro-patent) is beyond even Unreasonable.

              1. I know of no one outside your little Echo circle that even remotely thinks of you and your rants as “pro-patent.”

                which proves nothing.

                Regardless, you have my beliefs “on the record.”

                Now go ahead and tell some more l i e s.

    2. Dan Fegelson: My clients can spend thousands of dollars banging their heads against the wall because some examiner is too dense to recognize a claim for novel and non-obvious invention

      Can we please see the claim you’re referring to, Dan? Otherwise it’s impossible to assess the merits of your grievance here. Are your clients, by chance, operating in the lofty “baseball game editing” technology sector? Or they involved in helping people make “virtual friends”? Perhaps they are working on methods of automatically feeding salt water fish with a mobile device?

      let’s just move to a registration system so that all cases can go directly to PTAB

      Presumably the government agency will still require certain criteria be met before the patent will be considered “registered.” Wouldn’t an Article III court be Constitutionally required to evaluate whether those registration requirements were satisfied?

      it’s going to get shot down by PTAB anyway

      You better come up with some better “innovations”.

      In case you haven’t noticed, lots of people are still filing patent applications by the busload, at historic levels. So there must be something especially poor about your clients if you’re feeling so frightened about a little old IPR proceeding.

      1. You better come up with some better “innovations”.

        How is that software pe se ON THE RECORD piece of yours going to mesh with better “innovations”

        Maybe you have that word in quotes, because you want to ig nore the single most prolific and easiest to access form of innovation today?

        How Humpty of you.

  13. What caught my eye was this:

    “…the court affirmed that the patentee had failed to show that its amended claims were non-obvious….”

    because it reminded me of EPO practice during examination on the merits, of every patent application it looks at. As you all know, at the EPO the Examiner can have a disposal point for allowing an application, he or she has to get the signatures of the other two members of the “Examining Division” on the Notice of Allowance. To get those signatures, the Examiner prepares a so-called “Votum” in which, in a sentence or two, it is set out concisely what renders the claim novel and why its subject matter is not obvious.

    Applicants at the EPO are accordingly well-advised to provide in their response to the Office Action a text that will serve as that of the Votum ie a text that convinces the reader that the subject matter is indeed inventive.

    Up to now, that is entirely alien to US attorneys, I suppose. But perhaps it will seem not quite so bizarre, from now on?

    1. ..further, here in the States, the examiner prepares a statement (albeit optional) under the Notice of Allowance….

      This is just NOT “entirely alien.”

      One MUST consider as well the patent profanity effect of putting anything extra on the record.

      Pretending that patent profanity does not exist is not wise.

    2. Applicants at the EPO are accordingly well-advised to provide in their response to the Office Action a text that will serve as that of the Votum ie a text that convinces the reader that the subject matter is indeed inventive
      I suspect that a “sentence or two” Votum would be entirely insufficient as a “showing” that the claims were not-anticipated or non-obvious.

      Up to now, that is entirely alien to US attorneys, I suppose.
      You suppose incorrectly.

    3. hahaha. No US attorney will ever let himself be put on record as to what constitutes the novel and non-obvious aspect of a claim. It’s one of the chief problems with the US system.

      1. Thank you RG. I would to that add that it is also a problem for US patent attorneys and their clients, as they try to make progress with the cases, in other jurisdictions round the world.

        Just as Applicants from outside the USA fail in the USA because they don’t understand how the US legal system works, so American Applicants routinely founder in patent jurisdictions outside the Homeland. Is there a way to achieve full scope of effective protection for the same engineering invention, both within North America and elsewhere in the world? I doubt it.

        But perhaps, in engineering, it doesn’t really matter. If, for your business, patents as mere bricks in your Great Wall that is protecting your business, does it matter to your top management that each brick is sub-optimal? Is a bigger wall of sub-standard bricks more intimidating than a smaller wall of top quality bricks? What would IBM say?

        Back in 1812, mind you, at least for the fights the USS Constitution was in, the higher quality of the planks in the wall did make a surprising, unexpected and decisive difference. However, cannon balls are the same, everywhere in the world.

        1. way to achieve full scope of effective protection for the same engineering invention

          Silly rabbit, don’t you know (according to the “logic” of certain pundits), that all engineering is just math?

          😉

          1. “anon” all engineering is just math?

            Oh lookie! “anon” has a new script that’s even more absurd than the old one.

            But he’s a very serious person so we all must P A Y A T T E N T I O N to him.

      2. No US attorney will ever let himself be put on record as to what constitutes the novel and non-obvious aspect of a claim.

        What are you talking about? Here we’re discussing responses to Office Action, where there’s alleged prior art on the record. It’s routine to state on the record how the claims are novel and non-obvious over the art of record. There’s a strain of patent prosecution CLE that teaches prosecuting attorneys to do nothing other than to contradict the examiner, but that’s certainly not universal practice.

          1. I don’t think I want to head down that road. Those readers who don’t know what I’m referring to can simply ignore the comment. I suspect that the examiners here have seen the style.

            1. There is a difference between “style” and someone offering a CLE for that “style.”

              I am not sure what “down that road” means, but you are, of course, to be as unhelpful as you want to be. Sadly, it just places your comment into the “feelings” zone when you have a chance to add some real value.

                1. You did not let me down (my expectations, while not directly expressed, were already set low).

                  Hence, no “sad” from me. You are perfectly able to bl0w your chance at posting in a meaningful and helpful way – without ever having to be concerned with me.

                  But thanks for caring and sharing.

              1. “anon” it just places your comment into the “feelings” zone

                Maybe you should put your comment in the zone of pure bugged out lunacy where “anon” operates, DanH. It’ll be fun!

                1. n the zone of pure bugged out lunacy

                  aka – the Malcolm zone!

                  The only time you see me “operating there” is when I deliver the smack down unto you.

                  😉

        1. The idea of that genuinely warms my heart.

          Sadly, in at least some technologies, the “reasoning” why the claims are novel and non-obviousness EXCLUSIVELY amounts to a recitation of every claim element.

          I’m not sure it’s actually good strategy for practitioners. This only works if you want to resolve the patentability of a specific invention quickly. If you’re trying to beguile an examiner into signing off on undeserved scope, it’ll get you no where fast.

          1. Sadly, in at least some technologies, the “reasoning” why the claims are novel and non-obviousness EXCLUSIVELY amounts to a recitation of every claim element.

            Yeah, that’s the school of prosecution practice I was referring to above.

            1. That’s how a lot of practitioners respond to obviousness rejections.

              Remarkably, they do that even in oral arguments in front of the CAFC.

              Another word for the practice is “incompetence” or “fraud”.

        2. What are you talking about? Here we’re discussing responses to Office Action, where there’s alleged prior art on the record. It’s routine to state on the record how the claims are novel and non-obvious over the art of record.

          It’s routine to state the belief that the record fails to teach something.

          It is completely not routine to state that X is novel or non-obvious aspect or reason. In fact, when the Examiner writes a reason for allowance it’s virtually impossible to get a response from the applicant other than “We accept this is a reason for patentability, but there are other reasons for patentability.”

          There is a difference between exploiting the burden being on the office (which is totally valid for you to do) which we are not talking about, and defining the novel feature. I know because I’ve written reasons for allowance which I know (and any other decent attorney would know), as a fact, are legally insufficient reasons for allowance and never have I heard an applicant tell me to reopen so he can argue against my logic.

            1. Random, huh? NOA and rejections as well?

              I have had actions that both allowed and effectively rejected the same claims. I simply responded to the rejections — while of course thanking the examiner for the allowances.

              What I think he did was to effectively state that the claims contained subject matter allowable over the art if it was supported in the spec….

              1. What I think he did was to effectively state that the claims contained subject matter allowable over the art if it was supported in the spec….

                Stating something is allowable over the art is not the same thing as saying something is novel. I once inherited a case where the previous examiner didn’t cite to a processor for a software system claim. In 2007.

                Can he make an argument that the references fail to teach it? Sure. Can he, mindful that he is bound by the knowledge of his inventor, argue that the processor is a novel feature of the claim?

                One of the big problems is that the office accepts the former without requiring the latter. It allows a claim to issue on something the inventor knows is not patentable.

                1. It allows a claim to issue on something the inventor knows is not patentable.

                  You ascribe to the inventor, the action (passing through to allowance) that you yourself (as examiner) performs.

                  Please, please, please tell me that you realize the problem with your own statement.

                2. You ascribe to the inventor, the action (passing through to allowance) that you yourself (as examiner) performs.

                  The fault does indeed lie with the office, I’m not suggesting otherwise. But the fault being with the office is not the same thing as the fault being with the examiner.

            2. Someone please tell me that in all seriousness how Random’s actions even remotely approach ethical behavior?

              If you feel the item is to be allowed, AND you purposefully attempt to sink the allowed item by sneaking a rejection under cloak of approval, you sir, have ZERO business to have your job as an examiner and should be fired immediately.

              1. If you feel the item is to be allowed, AND you purposefully attempt to sink the allowed item by sneaking a rejection under cloak of approval, you sir, have ZERO business to have your job as an examiner and should be fired immediately.

                Just because *I* feel that something shouldn’t be allowed doesn’t mean it doesn’t get allowed. As Superintendant Chalmers said “I’m a public servant and not allowed to use my own judgment in any way.”

                The MPEP (which binds examiners) is not always current or accurate with respect to law. The PTAB generates superior opinions to that of an examiner. For that matter, whether a group of examiners decide to allow when a case is up for appeal can be done over the objections of the primary examiner. Most commonly, a junior examiner may disagree with their signatory about whether something is allowable. There’s nothing uncommon or unethical about dissenting opinions, they happen every day. That’s kind of how you law, anon.

                Your response is a great symptom of what I’ve told you about before – be careful what you ask for. If you go asking a detailed record, you’re going to get a detailed record. Everyone *says* they want a detailed reason for allowance, but what they really want is someone to blow sunshine up their butts rather than hear the actual opinion about the issue.

                1. Your response is a great symptom of what I’ve told you about before – be careful what you ask for.

                  Somehow you think that I do not want what I am asking for.

                  I have NO CLUE why you would think that I do not want a full and rigorous examination – especially since I have ALWAYS stated that is exactly what I want.

                  It is beyond-silly to attempt to paint my view in express opposition to what I have always held my view to be.

                  Instead of attempting to “back-door” the applicant, maybe – just maybe – you should square away any of your “within Office” dissents before you write up the notice of allowance.

                  It appears (again, as this is not the first time your posts have indicated the proclivity of doing so), that you want to make a “you” problem – this time your inability to maintain what you think to be a valid rejection – into an applicant’s problem by sneaking in a known defective notice of allowance.

                2. Instead of attempting to “back-door” the applicant, maybe – just maybe – you should square away any of your “within Office” dissents before you write up the notice of allowance.

                  No, that’s not how creating a record works, which even non-lawyers know. You don’t secretly come to a consensus and then order the dissenter to sit quiet while the majority takes action.

                  If I am of the opinion that facts XYZ cause a rejection, but people (and, due to procedure, people who hold a commanding disposition) disagree with me it is perfectly valid for me to state why I think XYZ cause a rejection.

                  Basic example: if I have a disagreement with the applicant that goes to appeal, the record will have a view of my position, and future tribunals could decide whether my position or an overturning PTAB decision is ultimately correct or not. On the other hand, if I have a disagreement with the applicant that causes an allowance in a pre-appeal conference, the record would have no indication of what my argument is. You’re suggesting I not supplement the record with my argument because of the manner in which my argument was overruled. I disagree.

                  It appears (again, as this is not the first time your posts have indicated the proclivity of doing so), that you want to make a “you” problem – this time your inability to maintain what you think to be a valid rejection – into an applicant’s problem by sneaking in a known defective notice of allowance.

                  1) No examiner’s ability to maintain a rejection is ever their problem, as allowances are always less work than rejections
                  2) A rejected argument is still an argument and should still be documented
                  3) The facts leading up to the allowance are what they are. If the office in fact committed error, that is all the more reason it should be documented. You appear to be suggesting that because I sit in the inferior position that I should be silent about the error, but that is just the opposite of what is necessary for a functioning judicial system.

                  I can’t help but notice the extreme one sidedness of this. For example, if a signatory were to say “well this is non-obvious but it doesn’t meet the flash of brilliance test” I assume you’d want the junior examiner to document the signatory’s mistake of law for further review. But if the signatory makes a mistake of law in favor of the applicant you seem to think that it should be withheld from the record because that would be a “back door” rejection. It’s a rejection, and it’s actually a proper rejection, and the office erred and, in fact, the patent SHOULD NOT ISSUE. I lack the jurisdiction to fix the error, so all I can do is document it.

                3. No, that’s not how creating a record works, which even non-lawyers know. You don’t secretly come to a consensus and then order the dissenter to sit quiet while the majority takes action.

                  Great – that’s not what I said.

                  What I did say was that you – the royal you of the Office – must come to the proper SINGLE final decision as to yes/no grant.

                  It is unethical for you to attempt to “backdoor” as you have posted here. You have an issue wherein you do not agree with your superiors? Hash that out internally and DO NOT make it a problem for my client.

                  You are either correct- and NEED to prevail over your superior, or you are not correct.

                  If you are correct, then get POPA involved and refused to budge.

                  Your name on the final allowance is the ETHICAL acknowledgement that you DO agree. If you do not, you have an ethical obligation NOT to let the application go forward.

                  If – like timing – you “choose” the easier solution in order to “just hold onto your job” – you are not DOING your job.

                  It is that basic.

                  And that principled.

                4. What I did say was that you – the royal you of the Office – must come to the proper SINGLE final decision as to yes/no grant.

                  It is unethical for you to attempt to “backdoor” as you have posted here. You have an issue wherein you do not agree with your superiors? Hash that out internally and DO NOT make it a problem for my client.

                  That is simply not what a record is about, and I’m sorry you don’t understand that. The purpose of a record is to present the reasoning why things are done. If something is being done for a possibly incorrect reason the record should reflect that.

                  You are either correct- and NEED to prevail over your superior, or you are not correct.

                  hahaha, what am I suppose to physically hold him down? As the Supreme Court continually affirms, I’m often correct over your arguments – that never stops you from asserting you are right nor deluding yourself into thinking your position controls. Now imagine if you were my boss.

                  Your name on the final allowance is the ETHICAL acknowledgement that you DO agree. If you do not, you have an ethical obligation NOT to let the application go forward.

                  It’s really not. Are you even a lawyer? What do you think a district court judge does when his opinion gets reversed? He signs an order that does as the appellate court commands. You think he has an ethical duty not to execute that order because he personally thinks its wrong? You’re crazy.

                  All a signing does is bind the office to the allowance. It’s not a statement that I think the PTAB was correct or that the MPEP commanded a proper outcome.

                5. The signing being a binding – has what legal (and ethical) effect…?

                  Don’t think it is allowable?

                  Then don’t sign.

          1. There is a difference between exploiting the burden being on the office (which is totally valid for you to do) which we are not talking about, and defining the novel feature. I know because I’ve written reasons for allowance which I know (and any other decent attorney would know), as a fact, are legally insufficient reasons for allowance and never have I heard an applicant tell me to reopen so he can argue against my logic.

            I still don’t get what you’re looking for. Every time I file an application I make a declaration of what I think the novel and non-obvious features are – it’s right there as claim 1. It’s impossible for me or anyone else to prove that this combination of features is novel and non-obvious over all prior knowledge, but my claim of novelty and non-obviousness can be falsified with only one or a few references – hence the burden of proof is on the office.

            If you reject my claim as anticipated, and I point out the difference(s) between claim 1 and the reference, then I’ve “defined the novel feature(s).” If you reject my claim as obvious, and I point out the differences between the claim and the references and explain why the skilled person would not have found it obvious to bridge those differences, then I’ve “defined” the novel and non-obvious feature(s). What exactly do you think is missing from this process?

            The “reason for allowance” is a pointless exercise, and unless there’s something egregiously wrong in there, I generally ignore it. It’s impossible for the PTO to state that the claimed invention is novel and non-obvious over all prior knowledge. All it can do is say that it couldn’t find any references that anticipated the invention or rendered it obvious. Again, what do you think is missing?

            1. It’s impossible for me or anyone else to prove that this combination of features is novel and non-obvious over all prior knowledge,

              If only you had access to some sort of person who is skilled in the art who you could check with to see if an element you’re considering adding is known in the art and being used in its conventional manner prior to asserting it is novel/non-obvious.

              Here’s more or less what I assume most lawyers do, and you can tell me if I’m wrong:

              1) Read rejection
              2) Read references
              3) Note any points of distinction between claim and reference/rejection
              4) Check spec
              5) Check references for things that appear in spec
              6) Note any things in spec not in references
              7) Decide whether you want to move forward on 3 or 6
              8) Write response

              What exactly do you think is missing from this process?

              6b) Ask inventor whether thing in spec is possibly novel or well-known in art.
              6c) Take five minutes to see if you can find any example of thing in spec

              I’ll admit 6c is stretching it, as that’s my job, so I wouldn’t put that on you; but one would think five minutes of your time is worth less than the cost of half a round of prosecution from your client’s value perspective. I suppose I shouldn’t be surprised in the cases when I find something within 5 minutes (in fact, that’s great for me!) but I sometimes find it difficult to believe that any inventor wouldn’t immediately be like “oh everyone does that” in some situations.

      3. You do realize the limits of what you say (the kernel of truth) is entirely reasonable given the anti-patent forces in the real world, right Random?

        1. Anon just ate a slice of ends-justify-the-means pie! Next thing he’ll be talking about how Alice was necessary to clean out a glut of bad patents!

          1. The aphorism that “the ends don’t justify the means” only applies to other people, not “anon.”

            It’s important to remember that or else you might think “anon” is some kind of hypocrite.

            1. Nice attempted spin, Malcolm.

              But try for a moment to stop your dissembling and read what I posted.

              It is a short declarative sentence, but rich in meaning, so take your time, and get someone to help you if need be.

          2. “Bob” maybe you can explain this slice….?

            Or do you think that my noting a reasonable action is somehow an “ends” justifying thing….? (which would be really really weird)

        2. You do realize the limits of what you say (the kernel of truth) is entirely reasonable given the anti-patent forces in the real world, right Random?

          The only people who are afraid of pinpointing their novelty and nonobviousness are people who are afraid they didn’t invent anything.

          1. No one here is “afraid.”

            Maybe you want to stop projecting and take the time to read again (as well) what I wrote.

            There is a kernel of truth in your initial comment. But you then ig nore the real world and over reach from that kernel to make a statement that is simply false. This has NOTHING to do with any sense of “ends justify the means.” This has to do with recognizing which part of what you say has truth, and where you leap from there.

      4. RG: No US attorney will ever let himself be put on record as to what constitutes the novel and non-obvious aspect of a claim.

        It happens all the time, in fact.

        Not everyone is prosecuting junk.

        1. Not everyone is prosecuting junk.

          Absolutely true.

          Even if you (personally) feel that certain areas of innovation should not be protected – per se, the notion should be accepted that those areas TOO have plenty of applications being processed that are NOT “junk.”

          Where we disagree at heart is your “feelings” on what – on a per se basis – constitutes “junk.”Sadly, you refuse to engage in an HONEST dialogue about that topic and discuss the law at a ten thousand foot level. Instead, we “folkj” are all perpetually treated to your less-than-honest short script ad nauseum postings.

          One can dream of a better day, but until then, you will pardon me for NOT holding my breath.

  14. “[T]he patentee first argued for a narrow claim construction of the “mounted term.” That approach failed at the PTAB and has been affirmed on appeal. The failure is to the ordinary patent drafting strategy, employed by the patentee, of using non-definite and non-limiting terms such as “may” to describe the role of various embodiments in the specification so as to not unduly limit claim scope. Here, in particular, the specification had indicated the possibility of a permanent joining in a disposable fashion, but, by clever specification drafting, had not foreclosed the potential for non-permanent mounting. Thus, that narrowing argument was foreclosed by the patentee’s own prior actions.”

    Caught.

    1. Question, is in there a written description problem with claiming that something must be done if the specification says that it is not required to be done?

      1. I don’t think there’s a written description problem with these facts. Stating, e.g., that “in one embodiment, feature X may be permanently joined” implies that the opposite is also true.

        The problem, as noted, is that in 2015 it should be extremely difficult — bordering on the impossible — to establish that changing the status of a device feature from “detachable” to “permanent” is going to make an otherwise obvious or anticipated claim patentable over the prior art.

        1. The practical problem is the statutory one year deadline to finish the IPR. Otherwise the parallel litigation may well not get stayed even if it later turns out to be a complete waste of time and money. Thus, there has to be some way of preventing proposed* amendments that are not relevant to the existing 102 or 103 issues from restarting and delaying the IPR trial.

          *IPR Amendments also create intervening rights defenses undesirable by most patent owners. Thus claim amendments are usually NOT proposed in IPRs, as demonstrated by the paucity of prior Fed. Cir. appeals from IPRs on that issue before now among the numerous other IPR appeals.
          Patent owners do not even usually have an incentive to propose amendments even to cure their claim ambiguities, since claim ambiguity can get the IPR proceeding terminated without any adverse 102 or 103 decision, to the advantage of the patent owner.

          1. I think the fair solution is to automatically be put back into prosecution if your claims are invalidated with different art than was used during prosecution.

            1. How do you deal with term having started its run? What would prompt the Office to actually pick up examination instead of deep-sixing the item to the nethers of some backlog to silently expire there without any further work from a government employee?

              1. There are problems anon, but it is the only reasonable alternative. I guess the other thing people can do is keep a continuation alive at all times and then employ it after the IPR. Maybe that is the answer. Have a free continuation that is active and only re-activates if your claims are invalidated by an IPR.

                1. Even that’s not a real answer Night, as you still have the clock running, and even your continuation faces all the (new patent profanity) uncertainties that the parent faced.

                  No. There is but one real solution (but those wanting to weaken the patent system won’t be happy with that)

          2. RE PM text — Thus claim amendments are usually NOT proposed in IPRs, as demonstrated by the paucity of prior Fed. Cir. appeals from IPRs on that issue before now among the numerous other IPR appeals.
            Patent owners do not even usually have an incentive to propose amendments even to cure their claim ambiguities, since claim ambiguity can get the IPR proceeding terminated without any adverse 102 or 103 decision, to the advantage of the patent owner. —

            Judge Newman in Cuozzo: There is no right of amendment in these new post-grant proceedings, and motions to amend are rarely granted.1
            Note 1: See Andrew Williams, PTAB Update – The Board Grants Its Second Motion to Amend (At Least in Part), PATENT DOCS (Jan. 8, 2015), link to patentdocs.org 2015/01/ptab-update-the-board-grants-its-second-motionto-amend-at-least-in-part.html; see also Jennifer E. Hoekel, PTAB Grants First Opposed Motion to Amend Claims-Patent Trial and Appeal Board, THE NATIONAL LAW REVIEW (January 14, 2015), link to natlawreview.com.

            Is Judge Newman right, or wrong? Are patentees moving to amend? How frequently? What percentage of such motions are granted?

            1. LE: Is Judge Newman right, or wrong? Are patentees moving to amend? How frequently?

              As Paul points out, based on the cases being appealed, it happens rarely and that’s to be expected once you appreciate that (1) many claims brought to IPR are obvious junk and there are no supportable amendments that will change the outcome; (2) patentees don’t want the amended claims because it destroys their infringement position.

              What percentage of such motions are granted?

              That’s less clear but see point (1) above. In any event, there’s no evidence (that I’ve seen) of any systematic denial of amendments for arbitrary or capricious reasons.

              1. As a first point, it is not clear that an absence of appeals of denials of motions to amend proves that there were not many motions to amend. It could mean that the probability of winning such appeals was not high, which could be for a number of reasons.

                As a second point, note text from a 16 June 2015 post at Global IP Matters:

                The PTAB thus granted Neste’s motion to amend and allowed the substitute claims, finding that Neste’s new limitation of “a total feed comprising 5,000-8,000 w-ppm sulphur calculated as element sulphur” added to claim 25 (substitute for invalid original claim 1) increased the sulfur levels above those considered beneficial in the art: “The record before us does not establish persuasively that there was any art-recognized benefit to using a concentration of sulfur over 4431 w-ppm … [a]bsent any indication of a benefit to be obtained from adding even greater amounts of sulfur, the skilled artisan would have no reason to make the modifications … necessary to result in the [proposed] claimed invention.”

                Prior to the decision in REG v. Neste, t he PTAB had only granted three motions to amend in IPR proceedings. This had caused much public debate and calls for reforms by both the PTAB and Congress. In response, the PTAB recently introduced a package of “quick fixes” that included expanding the page limit from 15 to 25 pages for motions to amend to ease the burden on patent holders. The PTAB is also considering several other changes in a forthcoming second rules package to further reduce the patent holder’s burden with respect to motions to amend. Congress has also introduced provisions in the proposed STRONG PATENTS Act that would make it easier to amend patents, among other patent reforms. Moreover, the seeming relaxed standard applied by the panel in REG v. Neste may also mark a turning point in motions to amend and signal the beginning of new opportunities for patent owners to survive an IPR proceeding by proposing new and patentable claims.

                1. And contemplate text from Law360:

                  Moreover, in Avaya Inc. v. Network-1 Security Solutions Inc., IPR2013-00071, Paper 38 (USPTO PTAB July 22, 2013), the PTAB stated that the patent owner must explain why each new claim is patentable over any other noncited art. The PTAB’s decision here clarifies that the patent owner must explain the significance of the proposed new features to be added, from the point of view of a person of ordinary skill in the art.

                  In another decision, the PTAB stressed that motions to amend must be limited to 15 pages, including the proposed claims. Innolux Corp. v. Semiconductor Energy Laboratory Co. Ltd., IPR2013-00066, Paper 23 (USPTO PTAB July 18, 2013). The PTAB did not deviate from the rule, even when the patent owner pleaded that the text of the new claims would take up most of the motion’s pages. The PTAB recommended that the patent owner submit fewer amended claims and pursue the rest by way of ex parte re-examination or reissue.

                  Thus, amendments in an IPR proceeding should be narrowly tailored to overcome the prior art. Patentees desiring additional claim amendment options should consider instead pursuing re-examination or reissue.

      2. Question, is in there a written description problem with claiming that something must be done if the specification says that it is not required to be done?

        There’s no WD issue if it says it could be either way, but it’s an obvious distinction absent further teaching. So assuming this case is a simple phrase that says “In some embodiments, X *may* be permanently joined to Y. In others, X *may* be mounted to Y.” Then prior art that renders X mounted to Y as obvious renders X being permanently joined to Y as obvious.

        The simple statement suggests prior enablement exists and Applicant himself is drawing no particular distinction between the two embodiments. It may not be obvious when a particular enabling teaching is required for the claimed form, i.e. the art knows how to mount X to Y but didn’t know how to permanently join X to Y (clearly not likely in this context, but as a general rule I’m saying).

        1. Now, if a feature that allegedly is the invention is declared to be optional in the spec, how can this even be claimed as being an invention unless it is claimed to be such on filing.

          If the spec is required, and I think it is required, to actually identify the invention and suggest that it is an invention, as a part of the WDR (as so held by the Fed Cir en banc), then I would think that such a proposed amendment would be met with a 112(a) WDR rejection and a new matter objection.

          I think this is how it works in Euroland as well.

          Care to comment, Max?

          1. Ned,

            In your view, there is no such thing as inventions not claimed (within two years) that are properly dedicated to the public….?

            The notion that an invention is properly present, but not initially claimed is well understood.

            That is one reason why we allow broadening reissues within two years.

            Or did you mean something else?

            1. anon, reissues allow for one to claim subject matter that one had a right to claim.

              The point of discussion here is subject matter disclosed that when reading the spec the inventor did not indicated to be inventive on filing.

              The WDR requires one to do more than just describe parts. It has to indicate which are new and in what way. To do so after the filing is new matter.

              So I say X may be this or that on filing. I want to say after filing, “only this.” If I amend the spec to that effect, that clearly is new matter.

                1. Anon, actually I do see merit in the approach of the European patent office to force the amendment into a preamble of that part of a combination claim which is clearly old. One does not start off that way, of course, because one is not usually understand what part of a claim is new and what part of the claim is old. But after prosecution, and in order to clarify what the novel subject matter is, it seems highly beneficial to put the novel subject matter after the colon.

                2. Maybe you want to see how few see that selfsame merit in the dwindling population of those electing the optional Jepson claim format.

                  Not sure if you yet appreciate either that dwindling number OR the legal point of optionality.

          2. Now, if a feature that allegedly is the invention is declared to be optional in the spec, how can this even be claimed as being an invention unless it is claimed to be such on filing.

            Maybe one day if I leave the office I can give you a concrete example of a similar but opposite situation where I did make a 112a.

            Suppose a spec includes a feature without “may” language. Applicant has the feature in the claims but then attempts to remove it. Is there written description support for the claim scope that lacks the feature? Is there some sort of integration test to apply? Does Lizardtech simply control the outcome?

            1. RG: Suppose a spec includes a feature without “may” language. Applicant has the feature in the claims but then attempts to remove it. Is there written description support for the claim scope that lacks the feature? Is there some sort of integration test to apply?

              That’s a very fact-dependent question. In particular, the admitted or implicit relationship of that feature and its status to the alleged innovation over the prior art is likely to be key.

          3. A specification that provides enormous detail without a hint of what the inventor thinks is inventive is call a “flat spec” by some. It will drive you nuts if you have to write claims based on an inherited flat spec, but I see that it is common, almost an art form, and permissible in the USPTO. If the Federal Circuit has objected to the practice, it will take a while before we see it trickle down. I have seen EPO examiners angrily reject claims solely on the basis that a flat spec hides the ball.

        2. suggests…?

          I think you need more than an over-reached “suggestion” to make that obviousness call.

          The mere possibility of alternatives does NOT make both alternatives “obvious” as you seem to think.

          1. The mere possibility of alternatives does NOT make both alternatives “obvious” as you seem to think.

            hahaha “mere possibility.” We assume the mounted embodiment is obvious (since its an in-the-alternative amendment). For the permanently joined embodiment to be more than simple substitution there has to be a new principle of operation. A new principle of operation requires a new enabling teaching. No such teaching exists in the spec.

            There are certainly times where two alternate elements A and B can lead to non-obviousness of B over A (or vice versa). Those times require a teaching for the use of B instead of A. When the teaching isn’t there, we know the claim is either obvious or invalid under 112.

            1. You over reach on your conclusion.

              Here, the facts may dictate that a teaching was lacking, but that just is not – logically – the same as your de facto obvious finding.

              It just is not.

              1. Here, the facts may dictate that a teaching was lacking, but that just is not – logically – the same as your de facto obvious finding.

                I have not said anywhere that this is a de facto obvious claim. I’ve simply said it’s de facto unpatentable because there is either an enablement or an obviousness rejection to be made to the claim.

                That being said, it’s fine for the Office to conclude it would be obvious, because for the patentee to overcome the rejection he would have to admit facts that render it unenabled.

                1. I am clearly not talking about the duality item that you now insert.

                  I am clearly talking about your statement of pure obviousness as a function of alternative embodiments, and how you leap from this particular case to make a global statement that is just not true.

    2. Ned,

      “Too clever by half” as the English would say. What caught my eye is that there were 50 sheets of drawings but only two independent claims with no dependent claims. In this case, it seems they could have been used to good effect.

    3. Ned: After reading the opinion, I don’t think the specification was too clever, or that the DRAFTER was caught. The spec did what it should do, which is explicitly cover many embodiments. I don’t think the drafter would see a possibility that the device would be patentable because he welded something that the prior art had glued or nailed together. So, I don’t agree with Crouch’s suggestion that there was a failure in drafting.

      I think that the guys handling the IPR were desperately trying to surmount insurmountable prior art, and, because the specification properly disclosed permanent and non-permanent mounting, the PTAB refused to interpret the broad mounting term narrowly to cover only one of two disclosed embodiments. Absent some really subtle justification, you have to be pretty desperate to assert that welding things together, which have previously been screwed or nailed together, is a patentable modification.

      What perhaps was too clever was the obviously false argument that the specification disclosed only one embodiment.

      1. Actually, I agree with Random that if one teaches the equivalency of two things, and one is in the prior art, the other is obvious.

        1. That’s a good way to put it.
          If I say “You can weld it on or glue it on, it doesn’t matter,” then I have taught the equivalency;
          If I say “You can weld in on or glue it on, but if you weld it on you get a great new result,” then I have not;
          If I say, “You can weld it on or glue it on,” then what have I done? Random at 2.1.3 sees this as equivalent to the first statement that it doesn’t matter and that both are equivalent. He’s likely correct.

      2. I think that the guys handling the IPR were desperately trying to surmount insurmountable prior art, and, because the specification properly disclosed permanent and non-permanent mounting, the PTAB refused to interpret the broad mounting term narrowly to cover only one of two disclosed embodiments.

        Yup.

    1. Newman: patentability of the amended claim is properly determined by the PTAB during the IPR trial

      Seems like the invalidity of the amended claim was determined by the PTAB. The determination was made based on the patentee’s inability to make a persuasive argument explaining why the amendment would make any difference.

      1. “Seems like the invalidity of the amended claim was determined by the PTAB. The determination was made based on the patentee’s inability to make a persuasive argument explaining why the amendment would make any difference.”

        Yeah, I’m not really sure that inability to argue is how that particular determination is traditionally made. Inability to argue usually just leaves you non-responsive.

        1. 6: traditionally

          What does “tradition” have to do with a proposed amendment that achieves precisely nothing?

          Patentee might as well propose adding an amendment “wherein the device is on a planet that rotates around the sun.” The PTO is supposed to waste its time finding art? Round and round we go, indeed.

          Some “traditions” fall by the wayside for good reasons.

          1. I do love MM’s response – as randomguy explains below, there is a substantive difference when a court addresses a matter properly before (the initial burden was not met, therefore PTAB affirmed without addressing merits) versus writing law on merits that does not require resolution.

            It’s called judicial restraint.

            Newman is saying – amendment is as of right, PTAB addresses validity on that, we review validity on that issue. NOT PTAB deny amendment and decide on original claims, on appeal CAFC decide on BOTH [see how the CAFC is first one to address the merits of amended claims in light of how burdens work?]

            And, yeah MM in this case it arrived at the same conclusion. But that’s not how the legal system works.

            Cue MM’s wah statement calling patent grifters cry-babies. THATS NOT THE POINT. These sorts of procedural issues apply in all areas – its NOT just a patent or IP thing.

            1. “drop by” Newman is saying – amendment is as of right

              Does that “right” flow from the statutes that create the IPR proceeding? Where in the statute does it say that this “right” can not be limited by due process?

              that’s not how the legal system works

              In fact, Newman was outvoted and your position was rejected. That’s how the legal system works, “drop by”. But you knew that already.

              1. You do realize Malcolm, that not every judicial decision is correct, right?

                The facts of this case may not reach the larger picture of law, after all (even if you continue to attempt to dissemble and say that I support individual claims that I do not speak for, seeing as I typically discuss the larger picture on this blog).

                But hey, why let that fact get in the way of your short script rants?

                Nine years and running – why change if no one is willing to hold you to the “rules(?)”…?

        2. Inability to argue usually just leaves you non-responsive.

          If the party with the burden meets the burden and no response is made, the burden is carried. A prima facie case that is not responded is per se sufficient to be upheld on review.

          1. These types of Fed Cir decisions have prodded me into moving away from patents altogether. The Fed Cir has made patent enforceability almost impossible plus if one is awarded anything, the cry baby infringers run back to the Fed Cir who seems intent on reducing patent damages to virtually nothing. It appears corporations after passage of AIA and impossible IPR rules have got their wish so they can rip off any patented inventions without restraint.

            1. One side made a prima facie assertion. The opposition didn’t (at least in this particular argument) dispute that assertion. That assertion is going to get upheld. There’s nothing unique to patent law about that outcome.

              If I say “Here’s facts a, b and c. Therefore I win” and you respond by saying “Here’s fact d”, I’m still going to win unless you explain why fact d means I don’t win.

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