Guest Post: 35 USC 289—Grant of Certiorari in Samsung v Apple = The Opportunity for a Better-Crafted Standard for Awarding Total profits

Guest post by Gary L. Griswold.  Mr. Griswold is a Consultant residing in Hudson, WI and was formerly President of and Chief Intellectual Property Counsel for 3M Innovative Properties Company. The paper reflects the views of the author. He wishes to thank Bob Armitage and Mike Kirk for their excellent contributions to the essay.

In August, 2015, I published an article on Patently-O entitled “35 USC 289-After Apple v Samsung, Time for a Better-Crafted Judicial Standard for Awarding “Total Profits.” [i] The article appeared before the Supreme Court granted certiorari in this appeal.[ii] My use of the word “after” was, thus, a bit premature. The crafting of a new judicial standard may actually be accomplished over the next several months, as the Supreme Court considers the damages issue in Apple v. Samsung case later in its current term.

The statutory basis for awarding damages in this case is no “small-change.” 35 USC 289 provides the design patent holder with the infringer’s “total profits” on the “article of manufacture” to which the patented design “has been applied”[iii]. My August article referenced a Patently-O article by Professor Rantanen that included an analysis of the Federal Circuit’s Apple v Samsung decision and its ramifications, suggesting that the section 289 damages provision could induce “an explosion of design patent assertions and lawsuits.”[iv] Indeed, section 289 holds the potential for design patent procurement and assertion to become the next big “patent assertion entity” business model.

Some commentators have suggested that design patents, being sought and accumulated differently from utility patents, are not likely to stimulate much PAE interest. Whatever merit in that view, it needs to be tempered with the realization that greed is the mother of all of this type of business-model invention. One need only reflect on the fact that more than 1,000 qui tam actions for false marking were filed by opportunistic plaintiffs following the 2009 Federal Circuit decision in Forest Group, Inc. v. Bon Tool Co. before such actions were thankfully banished by the “Leahy-Smith America Invents Act.”[v] The prospects for design infringement revenue generation based on the “total profits”-recovery provision in 35 USC 289 could make successful design patent assertion a staggeringly profitable business. The potential for such an outcome as well as an example of such assertion was referenced in the briefs relating to the Apple v. Samsung certiorari petition[vi].

The possibility of a surge in design-patent PAE activity is almost certainly one of many reasons why the Supreme Court granted certiorari—and why it should not squander the opportunity presented in the Apple v. Samsung appeal to provide a reasoned and principled demarcation between those fact patterns where a “total profits” remedy is clearly warranted and those where it is not.

In deciding this appeal, the Supreme Court may focus on what constitutes an “article of manufacture” under section 289. The statute provides a design patent infringer “shall be liable to the [design patent] owner to the extent of [the infringer’s] total profit” if the infringer “applies the patented design … to any article of manufacture.” [vii](emphasis added) But, the patented design is not necessarily synonymous with the article of manufacture itself.

Indeed, for section 289 purposes, an “article of manufacture” has been held to be the entire substrate to which the patented design is applied. For example, it has been held that a boat becomes the “article of manufacture” when the patented design is for the windshield applied to the boat[viii]. Other examples of “articles of manufactures” whose total profits might be subject to a section 289 recovery include (1) a large agricultural combine, when the patented design is for a tire tread applied to a tire used on the combine; (2) an automobile, when the patented design is for the automobile’s rear taillights; and (3) an HDTV, when the patented design is for a semiconductor used in the television.

In my earlier articles, I described such “total profits” recovery scenarios as a problem in need of a judicial solution. I suggested eliminating access to section 289 “total profits” recoveries in situations where a consensus exists that a remedy of this type would be entirely unwarranted. My approach would interpret section 289 as authorizing a total-profits recovery only “if the patented design is substantially the basis for customer demand for the entire article”.[ix] If it is the basis for consumer demand, the section 289 total-profits recovery would apply to the article; if not, a recovery of total profits would not be available for the article.

This approach bears some similarity to the determination of utility patent damages under the entire market value rule[x]. A utility patent on a boat windshield does not allow the value of the boat to be used as the basis for determining a reasonable royalty absent a demonstration that the windshield was the basis for the customer demand for the boat.

In addition, the “customer demand” limitation is consistent with the apparent rationale for enacting section 289 in the first place. Current section 289 and its predecessors replaced a Supreme Court decision[xi] that provided limited damages to design patent owners even where the infringers had applied the patented design to an article of manufacture in order to create the customer demand for the article of manufacture. In such a situation, forcing the copyist to turn over its total profits obtained on the infringing article represents good policy.

However, even under a “customer demand” limitation, section 289 is no timid remedy. It would not involve any form of “apportionment” of the profits to be awarded to the design patent holder on the ground that some proportion of the profits might be attributable to non- design patented factors. Apportionment is not consistent with the Congressional intent when section 289 and its predecessors were enacted.

Moreover, even if the section 289 remedy is unavailable, the patent owner is not left without the right to recover damages. All the remedies otherwise available for patent infringement remain, whether or not a section 289 “total profits” recovery can be secured as long as there is no double recovery of damages[xii].

The Apple v. Samsung case is of particular importance because imposing the “customer demand” standard on section 289 recoveries does not require another act of Congress. The courts are free to interpret statutes to effectuate the purpose Congress had in enacting them. Under section 289, Congress did nothing to preclude the courts from determining what qualifies—and does not qualify—as an “article of manufacture.”

The Federal Circuit sees this judicial flexibility otherwise. It (incorrectly) saw its hands as having been tied by Congress in Apple v. Samsung, stating: “We are bound by what the statute says, irrespective of policy arguments that may be against it”[xiii]. Fortunately, the Supreme Court has the opportunity to see the situation differently.

The Supreme Court may—and should—see it differently. It can define an “article of manufacture” as being limited to objects for which the patented design is substantially the basis for customer demand. Courts have acted similarly in the past to assure that application of a statute will not result in foreseeable outcomes which are clearly inappropriate and manifestly unintended. The emergence of the “entire market value” rule is a good example of where the alleged “infringing product” cannot be reflexively used as the basis for a damages calculation where the “patented invention” is a mere component or feature of the product and not the product itself.

The Court will have, however, some competing approaches to consider in the course of deciding this appeal. Another possible approach to interpreting section 289 is the so-called “separate product” exception. This exception to a section 289 recovery limits the availability of total profits to the smallest separately sold product to which the patented design is applied. While this exception has the potential to limit the possibility of some of the ludicrous outcomes noted above, it is no panacea. For example, it fails to exclude a section 289 recovery where a design patented graphical user interface (GUI) is used in an electronic device which does not involve a separately sold product. This is a serious deficiency because of the difficulty in finding any policy rationale for awarding total profits on an electronic device simply because a design on a GUI used in it is patented.

Apple has, nonetheless, suggested in its responsive brief to “Defendant-Appellants’ Petition for Rehearing en banc” what amounts to a more generalized rendition of a “separate product” exception: “As the panel correctly recognized, this distinctive design was not severable from the inner workings of Samsung’s smartphones, see Op.27-28, in a way that a cupholder is analytically distinct from the overall look-and-feel of a car.”[xiv] (emphasis added) While “severability” appears to be a more general “exception” criterion than simply being a “separate” product, the “severability” approach does not appear to address the deficiency explained above for the “separate product” exception.

If there is a concern with the “customer demand” limitation, it would be whether the limitation is so broad that it swallows most or all of the “total profits” rule. Indeed, there are many factors which cause a purchaser to acquire a particular article of manufacture—most notably its functional aspects. However, to apply the “customer demand” approach, one begins with the customer looking for something in a product space and then making the specific decision to purchase. Everyday products with new, ornamental designs such as specially shaped paper clips are a good example.[xv] While they have a known function, they are most likely purchased for their appearance. An option would be to only consider the ornamental features of a product to determine whether they were substantially the basis for customer demand, but that may well be too narrow and could lead to a total profit remedy for minor differences from an ornamental perspective.

The Supreme Court would not have granted certiorari without a sense that its guidance was needed to properly titrate a powerful damages provision. It can best do so by allowing section 289 to remain a viable incentive to create and commercialize new designs, but then limiting the articles of manufacture qualifying for a “total profits” recovery to those where the patented design is substantially the basis for customer demand for the article of manufacture. Such a holding would secure section 289 as both a distinguishing and distinguished feature of U.S. design patent law.

[i] Griswold, Gary. “35 USC 289 – After Apple v. Samsung, Time for a Better-Crafted Judicial Standard for Awarding “Total Profits”? Patently-O. August 14, 2015. https://patentlyo.com/patent/2015/08/griswold-patent-damages.html

[ii] See U.S. Supreme Court Orders List from March 21, 2016 at 2. http://www.supremecourt.gov/orders/courtorders/032116zor_h3ci.pdf

[iii] 35 U.S.C. § 289:

“Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.

Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.”

[iv] Rantanen, Jason, “Apple v. Samsung: Design Patents Win.” Patently-O. May 18, 2015. https://patentlyo.com/patent/2015/05/samsung-design-patents.html

[v] Laurie Rose Lubiano, “The America Invents Act applies the brakes to the false marking bandwagon.” LEXOLOGY, January 3 2012. http://www.lexology.com/library/detail.aspx?g=401c9bea-d643-4521-bc7d-c63d5b4a25f5

[vi] Samsung Petition for a Writ of Cert. Case No. 15-777. at 36-38. http://www.scotusblog.com/wp-content/uploads/2016/01/15-777_PetitionForAWritOfCertiorari.pdf

[vii] 35 U.S.C. § 289

[viii] Order on Motion for Partial SJ, In re Pacific Coast Marine Windshields Ltd. v. Malibu Boats LLC, Case No. 6:12-cv-33 (M.D. Fl. August 22, 2014)

[ix] See Griswold, https://patentlyo.com/patent/2015/08/griswold-patent-damages.html; See also Griswold, Gary. “35 USC § 289 – An Important Feature of U.S. Design Patent Law: An Approach to its Application.” IPO Law Journal. April 6, 2015. http://www.ipo.org/wp-content/uploads/2015/04/griswold_an-approach.pdf

[x] See Cornell University v. Hewlett-Packard Co., 609 F.Supp. 2d 279, 288-89 (N.D.N.Y. 2009):

(1) The infringing components must be the basis for customer demand for the entire machine including the parts beyond the claimed invention, (2) the individual infringing and non-infringing components must be sold together so that they constitute a functional unit or are parts of a complete machine or single assembly of parts, and (3) the individual infringing and non-infringing components must be analogous to a single functioning unit. It is not enough that the infringing and non-infringing components are sold together for business advantage. Notably, these requirements are additive, not alternative, ways to demonstrate eligibility for application of the entire market value rule.

See also Virnetz, Inc. v. Cisco Systems, Inc., 113 F.3d 1308, 1326 (Fed. Cir. 2014) (Judge Prost: “we recently affirmed that ‘[a] patentee may assess damages on the entire market value of the accused product only where the patented feature creates the basis for customer demand or substantially creates the value of the component parts.”)

[xi] See Dobson v. Dornan, 118 U.S. 10, (1886); Dobson v. Hartford Carpet Co., 114 U.S. 439 (1885); Dobson v. Bigelow Carpet Co., 114 U.S. 439 (1885); Bigelow Carpet Co. v. Dobson/Hartford Carpet Co. v. Same, 10 F. 385,386; 1882 U.S. App. LEXIS 2295 (E.D. Pa. 1882).

[xii] 35 U.S.C. § 289, paragraph 2: “Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.”

[xiii] Apple v. Samsung, Fed. Cir. Opinion at 27, fn. 1.

[xiv] See Brief in Opp’n to Rhg, Apple v. Samsung, Case No. 2014-1335; 2015-1029 at 27-28 (Fed. Cir. July 20, 2015)

[xv] See, e.g., Design Patent No. USD647,138: https://docs.google.com/viewer?url=patentimages.storage.googleapis.com/pdfs/USD647138.pdf

 

112 thoughts on “Guest Post: 35 USC 289—Grant of Certiorari in Samsung v Apple = The Opportunity for a Better-Crafted Standard for Awarding Total profits

      1. They apparently declines to find a literal “logic model” to be abstract. I haven’t had time to look into the patents in detail, but from what I can tell from the write up it appears they did indeed direct their claims to the “logic model”. Logic models are of course abstract no matter how much better a computer utilizing one might operate.

        1. Define “abstract.”‘

          Or better yet, identify where the Court has defined “abstract.”

          (and please, no spam about “just use a dictionary” because that is EXPRESSLY NOT what the Court did)

          1. ab·stract

            adjective
            abˈstrakt,ˈabˌstrakt/
            1.
            existing in thought or as an idea but not having a physical or concrete existence.

            “abstract concepts such as love or beauty”

            synonyms: theoretical, conceptual, notional, intellectual, metaphysical, ideal, philosophical, academic; rareideational
            “abstract concepts”

            1. Thanks MDT – now one can see how something that can interact and thus have a physical or concrete effect cannot be – by definition – abstract.

              The thought of software is not software.

              (just in case anyone had any doubts)

              1. Anon,

                Love causes tears, a real-world effect. By your rules, love is not abstract. Pretty much the entire speaking populace would disagree with that.

                Want something more technical? How about dividing a number by it’s base (e.g., binary 100 by binary 10)? You just move the radix point one position left, and avoid all that messy, lengthy long-division. This operation on numbers is definitely abstract.

                This principle is applied in processor ALU’s (arithmetic logic units), so, again by your rules, arithmetic itself is not abstract, either?

                Nonsense.

                Data are abstract. Rules for processing data are abstract. “Abstract” is easy for anyone whose financial interests are not tied to it not being easy.

                1. What causes tears is not love – but the chemical reactions themselves.

                  Tears are “real” – just as those chemical reactions.

                  The operation on numbers that you speak of may be an abstract thing – WHEN performed in the mind – but is most definitely NOT an abstract thing when a machine performs an action with the physical real world result.

                  There is a word for what you are trying to do: anthropomorphication.

                  When the item that you call “arithmetic” itself is in the mind is one thing – when that “thing” is OUTSIDE of the mind, it is quite a different thing.

                  This has everything to do with the definition of “abstract.” I notice that you do not provide one.

                  How convenient.

                2. Dobu,

                  Try the three sisters experiment.

                  Since the resistance in one version yields an additive property of resistance, in your “version” of MathS, the mere property of resistance being additive makes the real world change into NOT something real world, but instead make it “abstract.”

                  By that logic, the teachings of Tegmark come into play and NOTHING is patent eligible.

                3. Displays and printouts are real. Any meaning assigned to the symbols on the displays and printouts is abstract.

                  The machine does not “know” what the symbols mean. You give it data, you give it rules, it runs it’s cycle.

                  If anyone is guilty of anthropomorphication, it’s you. Pretending that the computer “knows” whether it’s adjusting a database or how many oranges are in a harvest? Anthropomorphication. Understanding that a computer cycles through data and rules as enabled by it’s construction? Not “anthropomorphication”.

                  You were just given the definiton of abstract, by MDT. Is your memory that short?

                  How convenient.

                  Resistors are not abstract, even laid out in series. You can measure them, in size, resistance, temperature, whatever. The resistors DO NOT “add” anything. That would be anthropomorphication. Humans can measure the individual resistances and add them together to get a net value, or measure across the series to get (hopefully) the same value. That does not make resistors, resistance, or series connections abstract. Defining a certain amount of resistance as having a particular numeric value . . . now you’re talking “abstract”.

                  Can you poke someone in the eye with a 330-Ohm resistor? Yes, it’s not abstract. Can you poke someone in the eye with a 330? No? See, it’s not that difficult.

                4. Quite the opposite Dobu – I am NOT the one trying to “personalize” machines.

                  Maybe you just don’t understand the statutory category concept….

                5. You were just given the definiton of abstract, by MDT. Is your memory that short?

                  Not at all – his provided definition proves my point.

                  Pay better attention, son.

                6. (and you appear to not get EITHER the additive property tha tyou wnat to claim as mandating somethign to be “abstract” and the actual physical notion of addition, nor the difference between resistors in series and in parallel – most definitely the two will not be equal)

                7. A farmer has a basket with 4 eggs. He carefully moves them into another basket with 3 other eggs. We can use addition to establish the 2nd basket has 7 eggs.

                  The addition has a real world effect! Math is no longer abstract! Numbers are not abstract, because we know there are 7 real world eggs, and we didn’t even have to take time to count them!

                  Laughable. Utterly laughable.

                8. Except not – but thanks for playing.

                  (you still do not grasp the differences between math, applied math and MathS as a philosophy)

                9. Three resisters (not sister) – lol, damm autocorrect….

                  Now I’m disappointed – I wanted to hear more about the three sisters experiment. Two sisters is difficult enough – three strikes me as really risky… :)

                10. As much as I dislike Night Writer’s arguments about judges being replaced by machines (as they are simply too sophisticated and nuanced for the typical anti’s here), our old friend Count Dobu walks right into Night’s argument with his rather ham-fisted attempt to tie a human emotion to a physiological action.

                  Humans (and their emotions) simply DO exist in the real physical world, and the physical action of releasing tears can be directly traced to real world (non-abstract changes in the human brain.

                  It is not “magic.”

                  That being said, Count Dobu’s hamfisted “argument” is further complicated by his clear lack of understanding of the term anthropomorphication. It is not a transgression to use terms sounding in personification to discuss non-personal items (items that easily fall into one or more of the patent eligible statutory categories), but rather, it is a transgression to NOT REALIZE that any such use simply does NOT evoke any legal protections that might accompany something happening totally in the mind.

                  Machines and machine components (manufactures), as well as methods can – and do – legitimately use terms that “sound in” personification without violating any legal protections that occur for the mere words in a different context.

                  I would like to think that such a basic understanding is present for anyone wanting to join a meaningful conversation on patent law, but I am routinely reminded that there are those that are blissfully (and sometimes willfully) ig norant of even these basics – no matter how many times they are taken by the hand and have the basics pointed out to them.

                11. So, when you do it, anonileo, it’s “personification”, and when someone you disagree with does it, it’s “anthropomorphication”. Got it.

                  And for you, not even love is abstract? No wonder you’re having so much trouble figuring out what “abstract” means. How sad.

                12. No Dobu – you STILL do not “got” it.

                  Read again – slowly – have someone help you if you must.

                  The critical factor is making the mistake that the use of words apply in a legally different and distinct legal context.

                  IT is NOT – and never ever ever has been the case (far anybody) that the mere use of words that sound in personification was incorrect.

                  The mere use is – and always always always – for everbody – been OK.

                  It is only when you are a schlub and you confuse yourself (or attempt to confuse others) and want to apply the human context to something that is not human, then – and only then – (and EVER then) are you making the mistake of the term that I have coined as anthropomorphication.

                  And pay attention as well to what I said about Love and the difference between Love and your physical real world result of tears. YOU are making the mistake there.

                  And lastly, I have no trouble whatsoever figuring out what “abstract” means – and that has never been an issue. The issue has always been what the Court intends the legal definition of that word to be.

                  As so readily apparent here – and yes, you messed the MDT offering at up as well – that the definition provided by MDT proves MY case. It is as if simple basics are way above your head.

                  The only “sad” here is how you seem unable (or unwilling) to even recognize how off you are in this discussion.

                13. And still you willfully blind yourself to the truth. You are only fooling yourself in claiming MDT’s dictionary definition of “abstract” supports your position.

                  Computers process electrical charges and currents. Any meaning assigned to those physical processes (binary digits, numbers, database indices, etc.) exist only in the mind. (Maybe it will help you to refer back to the definition MDT provided for you.)

                  Believing the computer “knows” the difference between a 1 representing a shadow account balance or a 1 representing an animation morphing weight is just anthropomorphism (a term coined in the 1700’s, I might add).

                  How much does a database index weigh? What color is it? Is it combustible? These questions make no sense, because a database index is abstract. How much simpler does it have to be before you get it?

                14. LOL – you call me blind and fooling myself by claiming that MDT’s dictionary definition of “abstract” supports my position – but it is you that is blind to the necessary logic that something that does not – and cannot – fit that definition must necessarily NOT be covered by that definition.

                  You offer NO basis for this incongruent “feeling.”

                  You want to slip back into some “metaphysics” realm and forget the actual happening: that something REAL and physical happens.

                  You appear to want to (with being explicit) confuse yourself again with the fact that sometimes physical things (data) only have utility in the Fine Arts and sometimes physical things (data) have utility in the Useful Arts and exclaim “but that is just data” without realizing that your artificial constraint is just that: artificial. The divide between Useful Arts and Fine Arts already provides the necessary distinction, so your contrived “hook” simply does not matter.
                  NO ONE (in their right mind) really thinks that a computer “knows,” or “thinks” like a human does – and yet those terms are perfectly understood – in the machine sense – to cover what machines cover. As I (patiently just explained) – and which you far too quickly glossed over – the problem is NOT the use of the terms, but rather the attempted obfuscation of what those terms cover.

                  You now inject other fallacies into the discussion with aspects not pertinent – such as weight and color, or combustabililty.

                  These fallacies have been exposed as fallacies repeatedly and with other arguments (for example, what is the difference in weight between three resistors in series and three resistors in parallel? The fact that no difference in weight exists most definitely is NOT ANY indicator that a very very real difference exists in reality. You employ the “Big Box of Protons, Neutrons and Electrons ‘logic’,” without realizing where that logic necessarily takes you.

                  You claim “abstract” to a weight question without realizing that your claim of “abstract” necessarily voids out all configurations of a set of existing (physical) things.

                  You really really really need to stop and think through your position.

        2. no matter how much better a computer utilizing one might operate

          In a nutshell, that is why this whole “B-b-but abstract” is just so much nonsense.

          You have a real world effect.

          How is ANYTHING that anyone wants to label as “abstract,” have a real world effect?

          Is not the meaning of the word “abstract” nullified when a real world effect is obtained?

          Is a real world effect “theoretical?”
          Is a real world effect “not having physical or concrete existence?”

          Bottom line “Folks” – look to 101 for two things and two things only:
          1) Can the claim fit into one or more of the statutory categories?
          2) Does the utility of the claim fall within the Useful Arts?

          Note that these two are to the claim – and specifically not to elements or parsed pieces of the claim.

          The nose of wax of 101 has been picked and mashed to oblivion. All for some philosophically driven desired ends.

          1. Is not the meaning of the word “abstract” nullified when a real world effect is obtained?

            The term has the same meaning regardless of any observed “real world effect” that might flow from the abstraction.

            philosophically driven desired ends

            There’s huge practical consequences to opening the patent system to logic. It’s not “philosophical”.

            But maybe you were born yesterday and missed the last twenty or thirty years.

            1. The term has the same meaning regardless of any observed “real world effect” that might flow from the abstraction.

              LOL – might flow…? As in, what the claim itself is “directed to.”

              If that is the case, then your REALLY DO need to answer the questison, keeping in mind the plain fact that “abstract” IS nullified with the effect.

              As to your “huge practical consequence” – pure B$. All you are doing there is claiming a mythical parade of horribles as if that end was enough justification for not following the words as written by Congress.

              missed the last twenty or thirty years” – you mean those years of innovation outpacing any other era in the history of man…? Nope – I did not miss that – did you?

              1. the plain fact that “abstract” IS nullified with the effect.

                Great argument! LOL. Keep pulling those “plain facts” out of your pants. The circus is a fun place. Next “anon” and all twenty three of his entitled cohorts will climb out of a tiny volkswagon and dance around in their giant shoes.

                a mythical parade of horribles

                LOL. Yup. Totally mythical! Let’s just declare that everything you can characterize as a “process” or “an article” is eligible. What could possibly go wrong?

                Meanwhile, here on earth, that experiment was already done and, except for a microscopic community of rich entitled l0udmouths who never st0p complaining about their diminishing sandb0x, everybody agrees the experiment was a complete and t0tal failure.

                1. There is no “circus,” Malcolm – I have using what 6 provided.

                  That “failure of an experiment” for you being the record advancement in innovation…?

                  LOL – talk about a “microscopic community” – that would be you and yours thinking that some “experiment” has yielded anything BUT the highest level of innovation this planet has ever seen.

                  And oh yes – that form of innovation is STILL the opposite of your class w@rfare meme. Funny how you still are being duplicitous about that.

                2. the highest level of lead poisoning Flint has ever seen.

                  Meanwhile … twitter! And automatic bingo management.

                  What an awesome planet. Thank you, U.S. patent system!

                3. LOL- as if Flint has ANYTHING to do with anything here.

                  That’s a mighty feeble attempt at deflection, Malcolm – even for you.

                  Awhile back we discussed a “fake” lemonade patent case. I suggest you revisit it and realize that patents involve the (Oh Noes) aspect of money without your (false) sense of “righteousness.”

                  Maybe you want to find some other fields of rye to watch over, eh pumpkin?

                  PS – you are more than welcome to abstain from ANYTHING in the patent world that you do not care for. May I suggest that you start with anything having to do with software?

              2. “keeping in mind the plain fact that “abstract” IS nullified with the effect.”

                First you asked if it is so, and now you assert that it IS FACT. It isn’t so, and it isn’t a fact.

                1. Knowing the answer to a question prior to asking the question is a standard attorney move, 6.

                  However, you were not answering and Malcolm jumped in.

                  Now that you have weighed in, please support your answer that something that this real world effect is NOT theoretical and this real world effect is having physical and concrete existence somehow does NOT negate the meaning of “abstract” (for which, you have not yet even supplied a definition).

                  The ball is in your court 6, do something meaningful with it.

                2. “Knowing the answer to a question prior to asking the question is a standard attorney move, 6.”

                  No, it’s an as hat move that attorneys on dat TV use.

                  “please support your answer that something that this real world effect is NOT theoretical and this real world effect is having physical and concrete existence somehow does NOT negate the meaning of “abstract””

                  That sentence is not grammatically correct. And it also does not reflect “my answer”.

                  My answer is that abstractness of subject matter that is claimed does not magically change because a real world effect can be effected by putting that abstract subject matter to use in some context. And I can support that answer all the live long day.

                3. You support a wrong answer. How come I am not surprised?

                  Something abstract cannot interact with the non-abstract. If the “thing” you have interacts with the nonabstract and operates in the real world, then that thing – by definition** is not abstract.

                  ** and yes, I noticed that you STILL have not supplied an actual definition.

                4. Something abstract cannot interact with the non-abstract.

                  And then there’s the magic hat band.

          2. “anon” Is a real world effect “theoretical?”
            Is a real world effect “not having physical or concrete existence?”

            The system doesn’t permit the claiming of “effects” so these questions aren’t really relevant.

            And we all know already — for many, many years now — that a measurable “effect” of employing an abstraction (e.g., a useful math equation) does not turn an ineligible process (e.g., a method of calculating something) into an eligible process.

            What the patent maximalists have hoped and dreamed for since forever is for the recitation of the term “computer” to change everything. That ridiculous rubicon has also been crossed and we’re never going back.

            1. The relevancy is very much there if you want to rely on the “logic” of saying you cannot have a patent because of “abstract.”

              You cannot have one without the other.

              When you attempt to do so, your “logic” falls apart and the mess that you see (if you were to unclench your eyes) is the necessary result.

              And note that this result is NOT constrained to the “software arts.” SO your little “pet” mantras do not – and cannot – cover the problem with the attempted “logic.”

              1. You cannot have one without the other.

                Here he comes, folks, down from the mountaintop with one of those crispy tablets! Let’s all just bow down and be quiet. He’s got the bold font and italics and all caps are surely just around the corner.

                There’s no point in trying to figure out what in the heck he’s talking about or asking him to state an argument in plain English. We all know what happens then.

                note that this result is NOT constrained to the “software arts.”

                What “results” would that be? Nobody knows. It’s like poetry, except it doesn’t rhyme and there’s zero entertainment value.

                1. LOL – how many memes from your short script are you going to try to wrap in one little post?

                  Are you having trouble recognizing that if you are going to use “abstract” you are going to be stuck with a definition of that word, and that when a claim yields something outside of that definition, that the definition cannot fit?

                  The Vinnie Barbarino meme of “huh? what?” is a little early in the exchange, but clearly the “results” pertain to the use of the “Gist/Abstract” sword in ANY art field – not just constrained to the one single art field that you have a bugaboo about.

                2. You might stop playing pedantic semantics and note that something cannot be abstract and yet not be theoretical or otherwise having physical and concrete existence.

                  As for your instant semantics, method claims can very well in fact yield things. “Ya, bro.”

                3. “You might stop playing pedantic semantics”

                  Those “pedantic semantics” are being “played”, or brought up, because they evidence your ridiculously confused thinking regarding this rather simple subject. When you write these sentences in a formally incorrect way you start to make issues out of things that are not actually issues. You try to make the whole subject overly complex and end up tying yourself in logical/thinking knots, and then assert that everyone else must also be tied up in those same knots, and ask them to show you how to not be tied up in knots.

                  But, the subject isn’t that complex, and there was no reason for you to tie yourself up in the first place. Further, everyone else need not be tied up in your knots, similar to the way the court tied themselves up in a knot here. Start from the beginning, not yet tied into any knots, and just keep it simple brosef: no abstractions and no effectively tying up abstractions. That’s the rule/law. Same goes for natural phenom and laws of nature. Period. It really is that simple. There are no huge curve balls, and no high minded thinking required. If the rule knocks out some patents that some might think should be patent eligible, too bad, so sad. The rule allows several patents that I think should not be eligible, too bad, so sad for me.

                  In this case, we start from the beginning, not tied in any knots yet, and we already know logical models are quintessential examples of something that is abstract. All parties appear to be in agreement that the claims are directed to a logical model. The rule is already broken on its face. No amount of “repair” efforts will save it. So don’t bother with your knots.

                  “method claims can very well in fact yield things. ”

                  See below. Claims are just “words” or more specifically just an “attempt” brosef. Specifically they are an attempt to put something else (the invention) into words.

                4. they evidence your ridiculously confused thinking regarding this rather simple subject.

                  Quite the reverse 6.

                  I am not the one struggling with what it means that something does not fit a definition – that would be you.

                  Something is either abstract (and STILL waiting for you to provide a definition) or it is not – there is no middle ground there – how much simpler can you get?

                5. “I am not the one struggling with what it means that something does not fit a definition – that would be you.”

                  If that’s your only argument you’re going to lose brosefus. The term is rather broad.

                6. Rather broad…?

                  Have not seen that from you yet 6 – still waiting for you to produce a definition that you are willing to bank on.

                  [pun intended 😉 ]

                7. “anon” stop playing pedantic semantics

                  Says the guy who insists that “software isn’t logic”.

                  But what ends up recited in patent claims that protect software? API “expressions”?

                  Nope. Rules and logic, to be applied to information received by computer processors in the form of digital data. Because that’s what computers do.

                8. There is a clear difference Malcolm, for at least the plain fact that software is not logic.

                  You keep on ignoring this simple fact, but repeating yourself ad nauseum only makes you nauseatingly wrong.

                  As to “what ends up recited in patent claims” – that is to be understood by Persons Having Ordinary Skill In The Art – you are not doing that with your attempts to vom1t forth propaganda. And yes, we both know that, don’t we pumpkin?

          3. “Is not the meaning of the word “abstract” nullified when a real world effect is obtained?”

            No, abstractness is not “nullifed” ever. It is an inherent property if you will. And it double isn’t nullified if you’re just trying to claim the abstract simply for literally no other purpose than to expand your claim scope.

            1. 6, is the word “nullify” bothering you? Having trouble with the concept?

              Try then that the definition – which you have yet to supply – cannot stand because it cannot fit the circumstance.

              Feel free to supply the definition used by the Court – oh wait, they did not use one.

              Well, in that case, try a different one. Print it out here and then lets compare and see when a claim has a real world effect (thus is NOT theoretical) and this real world effect is having physical and concrete existence.

              It will be fun.

              1. “6, is the word “nullify” bothering you? Having trouble with the concept?”

                I wouldn’t say it is “bothering” me. I just noted that abstractness is not “nullified” by the thing you noted. I understand the “concept” that the court has illegally imposed, and that you’re referring to. It’s illegal.

                “Try then that the definition – which you have yet to supply – cannot stand because it cannot fit the circumstance.”

                Sure it does, the general definition of abstract fits this circumstance just fine.

                “see when a claim has a real world effect”

                Claims don’t have “real world effects” other than to set forth the boundary of the claimed invention and put the public on notice thereof. Claims are just words brosefus. Literally they are “an attempt to put into writting…”. You’re thinking of the “invention” itself, in this case a model, having a “real world effect” if utilized in making a database, as compared to at least one prior system.

                Bro, just calm down, the federal circuit made an illegal call, and they’ll likely just get smacked down for it. Unless MS cuts and runs because they already have SJ of non-infringement I believe.

                1. I just noted that abstractness is not “nullified” by the thing you noted

                  LOL – Let’s start with a definition from you. Since you have not provided one, I tend to doubt that you know what you are talking about (given the factual predicates here simply are not congruent with a “dictionary” definition of what “abstract” means).

                  The only “illegal” here would be to “use” a definition of “abstract” that is not – in fact – abstract.

                  Claims are just words brosefus.

                  Fully aware of that Brofessor – that’s rather the point. Words have meanings, and when those meanings indicate something with a real world effect, then that something – by definition – cannot be abstract.

                  And note this is a point of law – larger than the immediate application thereof, so our discussion (if you decide to join in on the merits) would not be limited to what MS might or might not do.

                2. “Since you have not provided one”

                  I’ve “provided” you one probably 10 times now stretching back to the time of Bilski. I tire of googling the same thing over and over. You can get on google just the same as I can. Just because you sit and ask for a definition for the hundredth time doesn’t mean I have to go google in again and again. You’re not paying me to do this grunt work you’re asking me for.

                  “My definition” isn’t going to change from the same ones you can google quite easily. They’re all more or less the same, and I take a somewhat, though not hugely, broad interpretation of those definitions.

                  “given the factual predicates here simply are not congruent with a “dictionary” definition of what “abstract” means”

                  Perhaps not the factual predicates, but the legal predicates most certainly do. And those are what count. It may in FACT be that they built a whole database and used this logical model in their processing to tots make that database better in operating. None of that really matters, legally, if they chose, voluntarily, to attempt to legally tie up the logical model (and that doesn’t change even if they try to tie it to a generic database).

                  “and when those meanings indicate something with a real world effect”

                  We’re not looking for “real world effects”. We’re looking for words to be used in the claim that are not themselves covering an abstraction, or would otherwise tie up the abstraction. I’m not sure why this is so hard for you, I mean, sure you’re trying to execute some mental gymnastics, but come on bro. What you continually bring up is legally irrelevant, and if you watch closely it will remain so. This is why SS Bank was set aside in Bilski. Your “real world effects” is just rewording “useful concrete and tangible” as the standard. That has already been rejected.

                3. It’s not “grunt work” and you have spent FAR more time avoiding giving an answer than what it takes TO give an answer.

                  And yes – I note that you STILL have not given a definition.

                  As for:
                  We’re looking for words to be used in the claim that are not themselves covering an abstraction, or would otherwise tie up the abstraction.

                  Those “words in a claim” STILL have meaning – and that meaning STILL is incongruent with the meaning of “abstract” if those words of the claim – and their meaning – are to things that are or have a real world effect (and thus is NOT merely theoretical) and this real world effect is having physical and concrete existence.

                  The law cannot change facts or make facts into none facts. Your dependence on wanting to shift this from a factual basis to some legal basis (because you probably are realizing that the facts do not support you) will not work for you. As I also said – the point of law that accompanies these facts IS NOT in your favor either.

                  . What you continually bring up is legally irrelevant

                  Absolutely not.

                  And that is the critical point that YOU are just not grasping. The definition of “abstract” – the legal meaning cuts both ways – and you simply have to accept that you cannot merely call something “abstract” when it is in fact NOT abstract.

                  Let’s see you FINALLY come up with a definition that you want to place your (legal and factual) trust in.

                  What are you so afraid of?

                4. Your “real world effects” is just rewording “useful concrete and tangible” as the standard. That has already been rejected.

                  No – that is just not correct. If you had actually Googled the word, you would see why I have chosen those words, and they have nothing (directly) to do with any such case as State Street. Ned, too, tried to rope me into that case – tried and missed; because my case is not tied to that case and is instead tied to the words of Congress and to first principles.

                  Maybe you should try that some time – it is simpler and far more compelling.

                  In the meantime, please provide the definition of “abstract” that you wish to rely on.

                5. “my case”

                  We’re not talking about “your case”. We’re talking about the instant case.

                  Anon brosef, I’m sorry, but get ready for this case to get flipped.

                  “The law cannot change facts or make facts into none facts”

                  This isn’t a factual determination brosefus. This is a pure question of lawl, only incidentally ever affected by “facts”. And the facts in the instant case are not even close to helping.

                  ” Your dependence on wanting to shift this from a factual basis to some legal basis ”

                  Um I didn’t “want” to shift it, the courts shifted it before I was even borned. Probably before you were borned.

                  “(because you probably are realizing that the facts do not support you) ”

                  I didn’t all of a sudden just “realize” that facts are generally not all that relevant to questions of law like this one. That’s been that way since before I was born.

                  “If you had actually Googled the word, you would see why I have chosen those words, and they have nothing (directly) to do with any such case as State Street”

                  Well why hide your newest bunch of knots that you’ve tied yourself up in? Regal us with your newest theorylol of how a “logical model” something composed of logic, is tots not abstract, because you think it manages to skirt an extremely limited small definition of abstract.

                6. The ball is STILL in your court 6 – waiting for you to produce the definition of abstract that you think applies here.

                  You keep on wanting to avoid committing to a definition 6 – why is that?

                  What are you so afraid of that has you twisting and squirming so?

                7. “You keep on wanting to avoid committing to a definition 6 – why is that?”

                  Because lawlyertards will try to skirt it, just as you’re thinking you’d get away with right now. That’s not going to happen. The rule is made specifically to not allow it to be so skirted.

    1. The exchange above exhibits in a microcosm the lunacy of one wanting to make a claim of “illegality” but then not wanting to actually back up that claim with a clearly stated definition to explain exactly why “illegality” has occurred in fear that some lawyer will “outsmart” the basis of the very claim of “illegality.”

      The failure of 6 to reasonably engage mirrors the failure of the Court to reasonably stake out with peculiarity enough to avoid a Void for Vagueness issue. We end with both 6 and the Court saying (basically) “because I say so,” and being unwilling to apply any critical reasoning beyond that.

      The Federal Circuit is very much like the simians in the proverbial “reach for bananas and receive a blast from a fire hose” psychology experiment, with the Supremes blasting them for every reach that does not align with the unstated “bright line that the Supremes themselves dare not make.

      “We won’t tell you what ‘abstract’ means, but we will blast you if you reach for a banana and make a decision we don’t like.”

      I have no doubt that 6 views this reason for the “Feds” as being a part of their “dedicated to being illegal,” even if he is afraid to come out and discuss it because some smart lawyer will outwit him and highlight the fallacy that 6 wants to believe in.

      Sadly, this has happened enough to have wrecked one of the critical dimensions for which the Federal Circuit was established. This decision itself, while appearing to be “pro-software” is just not all that great a decision because the simians have already been conditioned to not reach for the banana. Putting a first foot on a step of a ladder under the hanging bananas is not enough. The decision is still couched in the preached mantra of the firehose holder, and the trepidation of being blasted is very much evident in what the caged simians do.

      Remove the firehose and free the simians.

    2. Yes, the forces of counter revolution have rallied. DDR set the tone but it took awhile for case and panel to come together to reinforce. Robinson in Delaware declared war on Alice the other month with a spate of decisions.

      The problem was and remains how to classify information inventions within the statutory scheme of the patent act.

      What is a database design? It’s information. Instructions. Essentially a technical diagram, because you can draw it on paper and “use” it from there with a digital tool designed to parse columns, rows, and tables.

      That use of any information (or any information) is a “process”, and “process” is not limited (Bilski).

      If we accept that some information is new, useful, and can be described to PHOSITA, but we don’t accept that we can patent abstract things (like new, useful technical diagrams) we have a problem. The fact remains that all information is abstract.

      I have defined process as requiring a result, and an abstraction as existentially requiring a human mind as a host. Both of those conditions are entirely reasonable and entirely within the the normative ambit of statutory construction. The principles can be applied at eligibility, patentability, and infringement to fit the various fact patterns inherent in patent litigation and prosecution.

      The Enfish case in that light is not difficult: the only statutory category that could apply would be a process, the result of the process is information, and that information (the database design) is intended to be used by human beings to organize data to enable the running of queries against databases.

      I can philosophically accept the position that no information should be patent eligible, or that some information can be patent eligible. I cannot see how a rational patent system can allow patents on all new, useful information and do so without unacceptably impeding on human freedom.

      The EPO has the same problem. The Supreme Court can only dodge the problem for so long before they come to a conclusion like mine, or Congress acts. We know the chances of useful Congressional action are near null.

      As Quinn notes (even a stopped clock), this puts Microsoft and others in a bind- that which gives their patents value makes them juicy targets. Maybe granting broad rights to exclude based on picayune distinctions between items of information is just a bad idea in general.

      I wonder how much chaos the court will allow to ferment before it takes a case. I wonder if Microsoft will push for en banc on this, or decide to wait for a better time, although this “invention” is so broad that it may have no choice here.

      1. Martin, it is not information processing that makes the claim here patentable. It is that the claim is to a database structure used in computer to increase its utility. Because the computer is improved, the claims are within the four classes.

        Focusing on information processing in the abstract is the constant problem of Night who wants to use computers to speed up business methods, not to improve the utility of computers.

          1. Martin, I don’t know what a CNC is.

            If CNC is code, then you entirely miss the point of Enfish.

            “Way of writing”

            has nothing to do with why the Enfish claims were patentable.

            [We always have to be aware of the premise.]

      2. Both of those conditions are entirely reasonable and entirely within the the normative ambit of statutory construction.

        Except for the fact that you are totally wrong, you just might be right, Mr. Snyder.

  1. You guys should know that there is a new office of the ombudsman for internal employees to use to sort out internal issues/conflicts. I’m very much impressed with this development though I will be more impressed when I start to see results.

  2. “My approach would interpret section 289 as authorizing a total-profits recovery only “if the patented design is substantially the basis for customer demand for the entire article”.[ix] If it is the basis for consumer demand, the section 289 total-profits recovery would apply to the article; if not, a recovery of total profits would not be available for the article.”

    In General Pictures Co. v. Electric Co., 304 US 175 – Supreme Court 1938 link to scholar.google.com

    the Supreme Court authorized a patentee to condition licenses of a tube patent to commercial and private markets. This, I believe, recognizes that the value of a patented product can and often does depend on the use to which it is made. This is why case law that does not recognize differential value depending on use is wrong.

    Take the design patent on a phone that is applied to its casing. Let us say a casing costs 10cents, phone A with the patented design sells for $500 and phone A’ without the patented casing design, $400. Phone B, without the patented design sells for $1000, but it has a lot more features than phone A.

    One can see that primary driver of value of a phone has nothing to do with its casing design. Under the author’s theory, the damages would be limited to the total profits on a 10cent part. But, one case also see that the design is adding $100 to the value of phone A. Limiting the damages to a small fraction of 10cents would clearly be unjust.

    Take the tube case. In motion picture application, the tube might add $1000 dollars value for each installation. In the radio application, only $100. But the tube itself might cost only $10 to produce. Should damages be limited to a percentage on the price of the tube sold to the private market when it justifies a much higher price in the motion pictures market?

    I think we should all be aware of that the rule being proposed here has its problems and potential injustices for the patent owner. It is clear from the author’s many references to PAE that he is pursuing an agenda, or at lease is using a boogie-man to stampede his readers to agree with his position. That alone should give one pause.

    1. Yes, let’s look at all those cheap phones out there with sharp corners, circular screens and star-shaped buttons.

      1. MM, the design may have been illustrated in Star Trek the Next Generation. The show had tablets and they all had rounded corners. At times I think that Steve Jobs got all his really nifty ideas from Star Trek.

    2. The author also seems to be advocating efficient breach. Recall, this idea comes out of the case that authorized specific performance to prevent efficient breach.

      IIRC, a singer had a contract to perform at price X, but did not show because she had accepted a second offer to perform at price Y. This made sense because the damages to the first manager were Z, where Z was less that Y-X.

      Now, if I know that damages for using a patented design could be confined to the casing, but that the increased value to the phone would be 10X those damages, I have every incentive to infringe.

  3. It’s hard to know where to start. Perhaps to state the obvious: there’s a world of difference between utility patents and design patents – Apples and oranges, if you will. Blind application of utility patent based arguments to a design patent situation needs to be carefully considered with that backdrop in mind. But since I’m writing an amicus brief in support of Apple on behalf of large and small corporations (co-signers welcome!), I’ll keep my powder dry on most of Mr. Griswold’s arguments.

    But, this PAE nonsense – consisting in the main of scare tactics – should stop, unless Mr. Griswold, or anyone else, can cite one instance, JUST ONE, of a PAE asserting a design patent against a legitimate, unsuspecting company.

    1. I’ve been watching case filings day to day for several years, and there has without a doubt been an increase in design patent litigation. Someone (not me) should compile the stats. RPX provides the daily digest.

      1. Straight number, Mr. Snyder?

        Or did you normalize the number by considering the number of possible (and growing) possible claims….?

        1. Feel the innovation and obvious validation of the Constitutional purpose. It’s just a wonderful thing in action.

          Oakley, Inc. v. PR Trading Company, Inc.

          05-12-2016

          Civil Action 3:16-cv-01147

          US D607039 Eyeglass and eyeglass component
          US D469458 Eyeglass front
          US D581443 Eyeglasses components
          US D554689 Eyeglass frame

            1. Sure there are more claims each year, and each year claims expire, and in varying years different arts see different activity, and in the end, the difference between the raw and the normalized number is meaningless to refuting or not refuting the author’s point of no increased design patent litigation (and naturally the sub-rosa jockeying that precedes litigation) when I say, by the seat of my pants (a fairly reliable indicator), that there is meaningfully more activity year than I have seen in past years. In other words, your question is pedantic.

              Hey why don’t you add a little value for a change and locate and report the real and normalized numbers for design patent litigation from 2000 to 2013 and then 2014 forward?

              Please prove me wrong rather than limply assert that I am wrong.

              1. The rate of “expiring” (less six years back damages) is less than the rate of new additions, which is why I asked the question.

                The difference is NOT “meaningless” at all if you are looking at a straight number without normalizing that number.

                That would be like looking at the straight number of car deaths from 1904 and from 2004 and concluding that 1904 automobiles were safer.

                Your “logic” is flawed, and for that, I need not do anything but explain why – which I have.

              2. But if you want numbers, Mr. Snyder, here are the numbers as provided by the patent office itself:

                link to uspto.gov

                First, the sum total of “suitable” patents on a rolling twenty-one year (15 + 6) basis, starting in 1995:

                131,508
                138,636
                145,486
                156,323
                167,193
                181,487
                194,409
                205,115
                216,745
                227,877
                235,890
                251,789
                270,333
                289,939
                307,376
                324,083
                337,415
                349,797
                363,996
                377,023
                391,914

                The same list, normalized by the year 1995:

                100%
                105%
                111%
                119%
                127%
                138%
                148%
                156%
                165%
                173%
                179%
                191%
                206%
                220%
                234%
                246%
                257%
                266%
                277%
                287%
                298%

                .

                So…..

                Your “straight count” of lawsuits would have to have climbed 300% since 1995 to show even a positive trending correlation.

                Is that “limp” enough for you?

                1. …and what would be your “take away” if the correlation were to be negative – if the current rate is NOT at least 300% that of 1995?

                  Would you STILL want to apply your “straight line logic” and say that to decrease law suits we would need even more design patents granted, or would you “miraculously” then want to open your eyes (and thinking) a little wider?

              3. Where O where has little Mr. Snyder gone?
                Oh where, oh where can he be?
                With his dare cut short
                And his tail (between his legs) cut long
                Oh where, oh where can he be?

                The hard data is provided (from the patent number side) and he is nowhere to be found.

                Maybe looking for something limp in the seat of his pants, perhaps…(he did mention that such was a fairly reliable indicator, but he forgot to mention exactly what that indicator is fairly reliable at indicating. Judging from the usual results here: perhaps an indicator that he will lose his way because he does not yet care enough to understand the terrain of patent law (the advise to read and understand Sun Tzu is still applicable to Mr. Snyder).

                1. The design patent verdict that started the ball rolling was 2012. The range of 257% to 298% is immaterial to the obviously large number of new design litigations started since.

                  Inevitably your smarmy satisfaction will be dampened when the self-evident fact of a boomlet is revealed by controlled study- but of course you will find fault the the authors, or the methods, or the findings etc. to match your agenda, as you always do, day after day, year after year.

                2. My agenda…? I am the one that presented data while you are the one flying (?) by the seat of your pants.

                  The one with an agenda is obvious – and it is not me.

                  But hey, thanks for playing.

        2. did you normalize the number by considering the number of possible (and growing) possible claims….?

          ROTFLMAO

          Because we all need to be kookoobananas like “anon.”

    2. Aren’t all patents asserted against a legitimate, unsuspecting company unless there is willful infringement?

  4. The statute aside for moment – the concept of total profits for a design that is a small component of a larger product makes no sense, unless the court finds that punitive measures are necessary to deter truly bad actors (e.g., big company stealing from a small inventor). For a design of a computer or phone enclosure, the total profits rule does seem appropriate, particularly if competitors are able to move units (or at least believe so) by pivoting to the patented design. So, beyond the proposed “substantial basis” standard of this article which focuses on the consumer, perhaps an additional factor would be the extent to which the competitor changed its product offerings in response to the patented design – independent of whether consumers actually purchased those infringing products. This factor would look at the infringer rather than the consumer. Both of these factors have obvious issues in terms of getting into the mind of another.

    1. It’s also worth noting that businesses can use creative accounting to reduce or eliminate “profits”. For example, Samsung could argue that they sell their phones at a loss, with the intent that applications sold by the company will be their profit center.

  5. The issue with 289 is the same issue with aggregation in utility patents – What makes Congress think it can use the patent power to protect things other than the invention? I assume there is no constitutional challenge to 289 but the construction given it (that infringing the design justifies a total profit disgorgement regardless of rational basis or tie to the infringement) is obviously unsatisfactory. Why not give the patentee the infringer’s factory, home and children too? They have as much rational tie to the infringement as a “whole article” does.

    I’ll give the FC this though: at least their construction of article of manufacture is a rational construction (which is more than some of their other interpretations) – the infirmity here truly seems to lie with congress, crafting a statute that fails to surpass even the rational basis test when it comes to remedy.

    1. Random,

      Can you give this another try?

      Here, you state “ I assume there is no constitutional challenge” and then spend your time doing just that.

      the infirmity here truly seems to lie with congress” – which does mean exactly what I said below (which garnered the typical Malcolm mewling) – that this is NOT something that the Court should attempt to rewrite in their own image.

      That certain (Big Corp-related) amici merely want the Court to engage in this tactic is not a shock.

      That certain people appear to just not want to understand that patent law is not a thing of common law and to ignore such a basic distinction in attempting to get what they want – and the academics sit idly by because that narrative may align with their own desired ends, well, also not a shock.

      1. “anon” this is NOT something that the Court should attempt to rewrite in their own image.

        Pretty sure they’re being asked to interpret the statute, not re-write it.

        But since you apparently know what the statute “actually” says and how it should be applied to various common fact patterns, you can just tell everybody. You’re a very serious person, after all.

        So go ahead. Tell everybody.

        1. Pretty sure that you are wrong – as usual, Malcolm.

          No matter how much lipstick you slap on that pig, it still oinks.

          1. Tell everyone what the statute “actually means,” “anon”.

            Clearly you know the answer. So share it with everybody.

            What’s the problem? Put on your big boy pants and share.

      2. As I said – I assume there is no consitutional challenge. There should be, because there is a constitutional problem.

        that this is NOT something that the Court should attempt to rewrite in their own image

        I agree, the court should order briefing on the constitutional question, affirm the CAFC construction of “article of manufacture” and then strike 289 as unconstitutional.

        That certain (Big Corp-related) amici merely want the Court to engage in this tactic is not a shock.

        It’s no different than what happened in citizens united – the court recognized that it had a constitutional issue and ordered briefing on that, and decided the case on that question.

        That certain people appear to just not want to understand that patent law is not a thing of common law and to ignore such a basic distinction in attempting to get what they want – and the academics sit idly by because that narrative may align with their own desired ends, well, also not a shock.

        Well judicial expedience is a principle. The court isn’t going to just affirm a construction only to have that construction raise an obvious constitutional issue that they’d need to take again. They’d just as well solve that issue too. They certainly CAN choose to simply decide the construction issue. Similarly, they may decide to construe it differently to avoid what they would see as a constitutional infirmity.

        Nobody is buying a $900 smartphone because there are rounded edges, anon. The conclusion isn’t going to be that rounded edges are worth all of the profits from the phone. Either they’re going to say “That conclusion is so stu/pid there’s no way that is what congress meant” or they’re going to say “Yep, they must have meant that, and it’s not a rational remedy.” It’s highly unlikely they’re going to stop at “Yep, Congress meant that” or they wouldn’t be taking the case to begin with.

        1. …because of….

          Sorry, I am not seeing that in the statute.

          The idea of apportionment for some mythical “value brought” just is not in there, is it?

    2. Random, What makes Congress think it can use the patent power to protect things other than the invention?

      Like 180 days exclusive for generics?

      Like protection of trademarks?

      Like protection of trade secrets?

      But I do see your point.

      1. Those other powers are based on the commerce clause, but there’s no commerce clause finding relating to 289, the asserted power is the patent power.

  6. What a joke. Kill the utility patent practice for the benefit of the little guy and elevate the design for the big guys. Form triumphs over function. Witness the battle over copyrights, really, a battle over API’s (short story titles in a book) between Oracle and Google. Game change.

  7. This is exactly the type of amici that should be denied access to the Court.

    Nothing here but handwaving attempts to justify the Court writing law in a first instance just because what was written by Congress does not fit someone’e view of how things should be.

    1. it has been held that a boat becomes the “article of manufacture” when the patented design is for the windshield applied to the boat

      Construing the statute to reach that result would seem to require a bit of “re-writing”. Or is it your position that courts are to intepret statutes in a vacuum, as if they were born yesterday?

      1. Nice strawman – but when I have I argued or even suggested such a thing?

        Oh wait – I have not.

        Try something different – like understanding the law itself, and perhaps the difference between statutory law and common law, and then seeing how this fundamental point of law is what my comment is geared to.

        You may have to leave behind your short script of ad hominems – which likely means that you just will not – or cannot – engage the topic here in an inte11ectually honest manner (leastwise, that is what the last decade has shown).

        1. when I have I argued or even suggested such a thing?

          Tell everyone how you would construe the statute, “anon.”

          After all, you’re an “expert”. At least in your own mind.

          So tell everybody. You’re a very serious and important person. We really care.

      1. Sorry Paul, but your comment is soooo open ended as to lack any basis for response.

        Can you tighten down what you are saying? Maybe a particular person? or a particular aspect of the AIA?

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