Patentlyo Bits and Bytes by Anthony McCain

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About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering.

44 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 5

    A propos Gutierrez and Night Writer, I see that the USA is ranked only fifth nation for patent litigation while Night tells me that in the USA the Plaintiff/Defendant scales are loaded, in that P needs to bet only USD30k while D has to put up USD 1 Million just to stay in the game. Coincidence?

    One would think that the USA’s being an examination country, whereby the only patents to issue are presumed valid, would level the playing field. P carries the burden, to prove infringement of a claim that everybody ought to accept as valid.

    Night, Europe now recognises how much mischief arises from separating infringement from validity. Amongst other things, you have to remember Prof Franzosi’s Angora Cat. With bifurcation, the claim in suit is an Angora Cat. When it wants to, like when it seeks to intimidate an infringer, it can appear huge (by making all its long hair stand on end) but when its owner wants to demonstrate to the PTO how tiny the body of the beast actually is, (and therefore how none of the prior art comes anywhere near touching it, he can simply throw a bucket of water over his long-haired cat). No, bifurcation is not the answer. Squeeze arguments (as used in England) work better.

    Reform? Why not just do patent litigation in the USA as it is done in London England?

    Switch to Registration Only, and leave validity testing till the patent is asserted? That’s the way the President of the EPO wants to go, reverting to the way they do patents in France. Is he right? I think not. It’s the first step on the way to doing away with patents altogether isn’t it?

    1. 5.1

      Night, Europe now recognises how much mischief arises from separating infringement from validity

      Has that been decided?

      I thought that issue still up in the air for the new UPC (or whatever it is).

      The Angora cat metaphor is overused. Such attempts happen no matter the system.

      “Squeeze arguments” are also overused. They portray a bias against patents, and often involve clenching tight one’s eyes.

      Your last paragraph is not clear. I still do not think that you grasp the power plays in the game and that patents are under attack from both the Left and the Right.

      As to “registration only,” there is another interesting historical piece at Quinn’s place concerning Jefferson. I would imagine that our Ned Heller will take some exceptions to it, specifically the portions that emphasize how the US system was attempting to have a different system than the English.

    2. 5.2

      Fifth for “enforcing.” I wonder how that measure was determined – is it determined by whether patent owner won?

      On the issue of a registration system, Gene Quinn and his co-author today argue that if every patent is going to have to be extensively re-examined through a PTAB procedure, at the cost of at least $1,000,000, before a court will even consider an infringement case, then we are effectively in a registration system now.

      1. 5.2.1

        then we are effectively in a registration system now.

        And an excessively inefficient one at that.

        The USPTO budget of Billions of dollars is paid for by innovators “buying in” to obtain patent rights.

        The large bulk of that money is meant to be engaged in a system that produces a viable property right that can be enforced on its face.

        If instead all that we have is the opportunity to revisit the USPTO and undergo a process that should have been done in the first place, then we should SCRAP that first system entirely.

        We can set up a true “registration system” on an ongoing annual cost of 1/1,000 of the cost currently (and that’s being VERY generous).

      2. 5.2.2

        I enjoyed reading the replies from anon and Ned.

        The system the UK had, till it joined the EPC in 1978, divided validity issues between pre- and post-grant, between ex parte and inter partes proceedings. The Office would painstakingly examine Applicant’s clarity and novelty, but leave obviousness for inter-partes proceedings. It was thought that you don’t need adversarial proceedings to check out clarity and novelty but it’s the only fair way to do obviousness. That’s right, isn’t it?

        In those old days, patents were seldom asserted and hardly ever litigated. In these days of litigation as a first rather than last resort, the old UK validity split will no longer do, will it?

        Thanks to its own invention, the Problem and Solution Approach, the EPO does obviousness with a minimum of arm-waving and unnecessary expense, using the same robust methodology in both ex-parte and inter-partes proceedings. It’s a crying shame that judges don’t take the time to grasp EPO-PSA, thinking that a Patent Office has nothing to teach a real court of law. With EPO-PSA ex parte examination of obviousness is compatible with bulk filing and bulk litigation. Good patents win quickly and bad patents are revoked equally quickly.

        As to bifurcation (of infringement and validity) in Germany the written Constitution renders it mandatory. Not so the UPC. It is thought that when the UPC courts are up and running in Germany they will seldom bifurcate. Mind you, if they want to do it in any particular case, they can.

        As to squeeze arguments, everybody, given the chance, wants to have their cake and eat it too. Hence deliberate ambiguity in patent drafting. This is a mischief which squeeze arguments stops. Any deliberate ambiguity and you are likely to end up with claims that the court finds not infringed and anyway not valid. Hence squeeze arguments deter deliberately ambiguous drafting. Should society encourage or discourage deliberately ambiguous patent drafting? What say you?


          Max, you make it excellent argument that with the way the European patent office does obviousness that there is no need at all for adversarial process postgrant to test either obviousness or validity in general. The Germans need to do it because of the peculiarities of their system where the courts of law cannot consider validity. But that system is unique and should not drive the rest of the world when it makes no sense.


            Oh don’t get me wrong Ned please. I do not like bifurcation. I like validity to be tested inter Partes, like in England. Obviousness is too important to leave to ex parte proceedings.

            I want litigation to be a last resort, not a first resort as in Germany. Only when there is a high degree of legal certainty, whether any given and duly-issued claim is or is not valid (not obvious) can we keep the bulk of patent litigation down to manageable levels and nurture respect amongst the public, and in business circles, for a system of patents that rewards owners of good patents with fast and accurate injunctive relief from infringement.


              Sorry MaxDrei,

              But your comment of “ nurture respect amongst the public, and in business circles,” is just FAR too pollyanna and instead ig nores the rampant propaganda machines at work in the was against the patent system.

              There can be NO aim for such “respect” when the public airwaves are so full of C R P spin and desired ends rhetoric.

              Far better then to aim for legally cogent thinking and leave the battle of snippets and propaganda out of the picture.

      3. 5.2.3

        link to

        Ned this is a Link to the IPKat item today about speed to judgement in the patents court of England.

        And remember, in England, the Decision within a year is seldom appealed. Whatever is the point when the judge at first instrance hardly ever gets the law “wrong”. It’s effectively all over within a year.

        It’s getting English fact-finding done and dusted within a year that is so impressive. Full-blown adversarial expert witness reports and deposition at trial. Observed experiments when necessary. Full-blown discovery. Expensive? Well, yes, but litigation is a last resort and only 55 of aserted cases get as far as trial.

        How come, so much bustle in England? Why, competition of course. The litigation community would hate to see all the pan-European UPC litigation decamping for Germany and The Hague. So they are very busy making London competitive, as a UPC venue.


          Max, the system in English patent court is the same system we have in the ITC. That proceeding gets over within a year as well.


            Good point Ned. That had not occurred to me.

            And yet, can the ITC declare a patent invalid? Or write a Decision that amounts to a finding of invalidity, a finding that is persuasive on other courts (or binding)?


              Max, by law, the ITC rulings are not binding on other courts.

              But the point is that a model did exist that could have been copied and that did work and could have been with a real judge and an a real jury.

  2. 4

    At the outset, the Senate should discount the philosophy of the nominee. […] Political and philosophical considerations were often a factor in the nineteenth century […] but this in not proper and tends to degrade the Court and dilute the constitutionally proper authority of the Executive in this area. The President is presumably elected by the people to carry out a program and altering the ideological directions of the Supreme Court would seem to be a perfectly legitimate part of a Presidential platform. […] The proper role of the Senate is to advise and consent to the particular nomination.

    — Mitch McConnell, 1970

    1. 4.1

      Yeah, but:

      “We should reverse the presumption of confirmation.” “The Supreme Court is dangerously out of balance. We cannot afford to see Justice Stevens replaced by another Roberts, or Justice Ginsburg by another Alito.”

      Chuck Schumer tothe American Constitution Society convention in Washington July, 2007

      Read more: link to

      1. 4.1.2

        Les, Stevens was a Republican.

        Moreover, Stevens was entirely correct on Bilski and Kennedy was not.

        Given that all the Republicans sided with Kennedy, I would almost have to say that we really need Justices more like Stevens and Breyer and Ginsberg and Sotomayor on the court.


          Stevens was entirely correct on Bilski

          Absolutely incorrect.

          Stevens LOST his majority writing position because he would have openly violated the separation of powers and personally nullified the actual words of Congress.

          It’s really ironic Ned that you perpetually get the separation of powers doctrine wrong and yet have a case that hinges on that doctrine.


            Anon, I do not share your opinion of Stevens’ position. I think that by first declaring that all new and useful processes are statutory, and then cancelling some out through the “abstract” exception is the opinion that clearly violates the right of Congress to legislate.



              It is beyond clear that what Stevens wanted to do would have violated the separation of powers by nullifying an entire section of the then in place law.


          “Les, Stevens was a Republican.”

          Ned, what in my post lead you to believe I didn’t know that?

          Those are quotes of Chuck Schumer, a very Democratic Senator.

          MM, quoted Mitch McConnell saying the Senate should not do the very thing he is now threatening to do – refuse to confirm/consent sight unseen.

          I quoted Chuck, whom I’m sure will express outrage at McConnell’s current position, to show that Chuck once thought it was a perfectly fine thing to do.

          What goes around comes around.

    2. 4.2

      MM, good quote there. Hypocrisy is rampant because judicial philosophy, not just gender or race, or legal competence, is the issue and everyone knows this.

      1. 4.2.1

        What is also ironic (and lost on you Ned) is just how much a hypocrite Malcolm is with his own political views here.

        He is every bit the charactercher of the worst of the Right Wing in his Left Wing mantras.

        Such is lost on you because of your propensity to put on blinders and think that anyone that agrees with your Windmill Agendas “must be an Einstein.”


          anon, MM makes no bones of the fact that he is a democrat. Supporting a democrat president is to be expected.

  3. 2

    The biggest problem with patent litigation is the unequal costs upfront. A P can slap together a complaint quickly. Maybe as low as 60 billable hours including a claim chart. The D, though, is left with most local rules in a position of filing all the invalidity and unenforceable contentions upfront. So, P puts in $30K (at most) and the D has to put in $1 million or more.

    That is the problem. And, the other problem is all these “reforms” just make the whole process more complicated and expensive. It favors the more sophisticated litigants (NPEs) over the small company. Anyone that has ever done litigation and defended a small company knows all this. I would really like to see a small committee of people that have actual litigation experience and are patent attorneys get together to try and “reform” patent law. My guess is there are real solutions. One may be to give the D as a matter of right a choice of bifurcating the trial and picking either invalidity or infringement first.

  4. 1

    The deep thinkers at everyone’s favorite echo chamber:

    dangerous indifference to history <— Ooooh! So scary! Sanders wants to lower health care costs for Americans by lowering ridiculously high prices, maybe at the expense of the ultrawealthy managers and shareholders! It's so … Russian.

    Given that he has elected to seek the Democrat party nomination for President calling him an Independent no longer seems an appropriate designation <— LOL. Ya think?

    everything is natural phenomenon and abstract ideas followed by incantation of ‘apply it’. So nothing is patentable to begin with. <— golly, that sounds familiar

      1. 1.1.1

        Because information wants to be fre-e-e-e-e.

        No wait, that is only for other things outside of Malcolm’s own (different) set of “rules”…


        Plus, he might have to abide by that site’s actual rules (enforced) of no lying and no misrepresentations of law or fact. I really think that Malcolm is simply incapable of posting in such a manner.

        I can think of several that post with some regularity here that have been banned there for violating the rules – and rules mind you that are uniformly and objectively applied (no matter how much Malcolm screeches about “echo chamber”).

      2. 1.1.2

        Why don’t you just post on that board instead of this one?

        I prefer not to give that cessp 00l any traffic other than what’s necessary to confirm that it remains a cessp 00l.

        After all, if I started commented there regularly, people other than the five kool-aid drinkers who habitually post there might feel compelled to visit the site, too. I’d rather just watch it fade away.


          What an Fn doushebag you are Malcolm.

          other than what’s necessary… feel compelled to visit the site, too. I’d rather just watch it fade away.

          LOL – Logic F A I L – your 0bsession with Quinn know no bounds, and I can pretty much guarantee that he sees more traffic BECAUSE of your 0bsession and constant references than any other driver. Fade away? Not likely with all of your posts.

    1. 1.2

      Why doesn’t exhaustion apply to the case of a patient in the U.S. purchasing medicine from a Canadian pharmacy (that presumably legaly purchased the medicine for resale from the patentee or her licensee) ?

      1. 1.2.1

        Because the Federal Circuit just said so:

        “We conclude that Jazz
        Photo’s no-exhaustion principle remains sound after the
        Supreme Court’s decision in Kirtsaeng v. John Wiley &
        Sons, Inc., 133 S. Ct. 1351 (2013), in which the Court did
        not address patent law or whether a foreign sale should
        be viewed as conferring authority to engage in otherwiseinfringing
        domestic acts. Kirtsaeng is a copyright case
        holding that 17 U.S.C. § 109(a) entitles owners of copyrighted
        articles to take certain acts “without the authority”
        of the copyright holder. There is no counterpart to
        that provision in the Patent Act, under which a foreign
        sale is properly treated as neither conclusively nor even
        presumptively exhausting the U.S. patentee’s rights in
        the United States.”

        link to



          I invite you to join the conversation of the “4” series of comments at:

          link to

          It’s a bit different than the immediate conversation on the outside of the US sovereign question, but you might enjoy wading into the complete picture of exhaustion and protection from exhaustion (or lack thereof) based on contractual stipulations (or lack thereof).

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