Summary Judgment on Anticipation

Semcon Tech v. Micron (Fed. Cir. 2016) (non-precedential opinion)

One narrative of the decision here could focus on the difference between the expert appellate court willing to dig into the language of the patent documents themselves and the generalist trial court ready to rely upon expert testimony explaining the underlying documents.  It is also a reminder that, for the Federal Circuit, the underlying patent and prior art documents represent the most important evidence available in a patent validity dispute.

= = = = =

Summary judgment is a mechanism for short-cutting a lawsuit prior to trial.  The basic jurisprudential approach asks whether there are any genuine disputes of any material fact and whether the moving-party is entitled to judgment as a matter of law.  Fed. R. Civ. Pro. 56.  When considering the evidence produced, all justifiable inferences must be drawn in the nonmovant’s favor.

Here, the district court ruled on summary judgments that Semcon’s asserted wafer finishing method patent claims are invalid as anticipated by a prior U.S. patent.  (Holding that the claim of Semcon’s U.S. Patent No. 7,156,717 is as anticipated by U.S. Patent No. 6,010,538 (“Sun”)).   On appeal, the Federal Circuit has vacated that judgment – finding that the prior art is not as clear as the district court concluded.

Anticipation is an area ripe for summary judgment because the doctrinal question is based primarily upon objective and verifiable facts — has a single prior art reference been identified that teaches the claimed invention – including “each and every element as set forth in the claim.”

The actual dispute focuses on whether the prior art Sun describes the claimed step of relying upon both “in-situ process information” and “tracked information” to modify control parameters during the finish cycle.  For its part, the district court adopted Micron’s expert’s conclusions that Sun disclosed that claimed process. Semcon did not present competing expert testimony that seemed to seal-the-deal for the district court.

On appeal, however, the Federal Circuit dug-into the patent documents and found (as suggested by Semcon) that the portions of Sun cited by Micron’s expert did not actually support the conclusions drawn. “In fact, however, the cited portions of Sun do not appear to support Dr. Dornfeld’s characterization.”  The court then pointed to several portions of Sun that suggested that the “tracked information” was not used as a finish cycle control parameter.

Addressing the lack of competing-expert, the Federal Circuit wrote that “textual arguments” regarding the prior art reference as well as identifying inconsistencies in the opposing expert’s testimony were sufficient to create a dispute of material fact as to what was disclosed by Sun.

90 thoughts on “Summary Judgment on Anticipation

  1. 5

    anon below writes:

    “So MaxDrei, in your view, since patents are NOT property, what exactly do you think that they are?

    Do you think that they are some type of (unspecified) pseudo-property? some type of (unspecified) NON-property? Are you aware that “choices of action” are considered property? You have thrown some shadows – how about throwing some light…”

    That set me thinking. Let’s take a patent with only one claim. The way I understand it, when that claim, and so that patent, is found invalid, it always was invalid. Despite the issue of the patent with that claim, there never were any enforceable rights.

    The patent system is a quid pro quo. In return for publicly enabling subject matter that is new and not obvious, the State grants certain lime-limited enforceable exclusive rights to the discloser. When the claimed subject matter turns out not to be eligible or patentable, there was never any basis for the grant of exclusive rights. That’s why (at least in Europe) when the EPO revokes a patent in post-issue opposition, the EPC, Art 68, provides that the effect is from the filing date of the patent application:

    link to

    When I made my comment at #4 below, on the US Constitution, it seemed to me strange that the notion of “taking” property away from a citizen could extend to the cancellation of powerful, industry-destructive exclusive rights (in a decision appealable through the courts) when they turn out to have been mistakenly (not to mention improvidently or carelessly) bestowed on a citizen by the Patents Act and the administrative act of the USPTO.

    Do I see it right, that the Supreme Court will soon enlighten me, on this topic?

    1. 5.1

      I noticed that you STILL have not answered the question, MaxDrei.

      Yet another “nook and cranny” for you to dodge behind.

      Maybe (just maybe), you can “set your thinking” to actually answering the actual question….

      1. 5.1.1

        You can assign them for good and valuable consideration. Patent applications are just as much “property” as issued patents.

    2. 5.2

      Max, you seem to assume that when a patent is property, it cannot be revoked for invalidity. It can. Just that there needs to be due process and, in the that means an independent, unbiased, judge. In the US, that means a court and a jury.

      As to oppositions, I think they really should be viewed as pre-grant procedures. I don’t think the property right is fully vested until the opposition period has run.

      1. 5.2.1

        As to oppositions, I think they really should be viewed as pre-grant procedures. I don’t think the property right is fully vested until the opposition period has run.

        That might be a FUTURE law – it certainly is NOT what the law is as of today.

        Critical event timing:

        the ACTUAL grant of patent – and the subsequent point in time (pay attention to when that it Ned) that the sticks in the bundle of property rights are removed from that grant.

        How is your studying of basic property concepts and takings law coming along Ned?

      2. 5.2.2


        Let’s be clear and direct:

        Nothing in the AIA changed the longstanding law that patents are property and vest AT grant.

        A KEY Constitutional protection of vested property rights exists in other portions of the Constitution – and even Congress, the correct (and singular) branch of the government authorized to write the statutory law that is patent law may not write law that violates other protections afforded to property by the Constitution.

        Your “attempt” here to “smudge” when the vesting point occurs simply shows that the attempts here to engage in post-grant takings FAIL because other Constitutional protections are violated.

        I do hope that you get your “torpedo shot” at the good ship USS AIA Titanic – and I do hope that you realize at what critical timing point a takings to that granted property occurs.


          I think the problem is the “taking” is by the Government itself. While at the instigation of some complainant, who ponies up some money, the Government proceeds to take back what it has granted. This is simply wrong. Eminent domaine anyone?


            Thanks Richard – note that eminent domain itself CAN comply with the Constitution IF certain safeguards are in place.

            I have tried to get Ned to see that his (possible) opportunity before the Supreme Court needs to ask the right questions.

            For example, the very different and distinct point at which a takings occurs is AT the initiation point of IPR.

            It is at that point, quite separate from any later adjudication on the merits, that the (political) entity of the Executive Branch takes certain “sticks from the bundle of property rights” that make up the property that is a granted patent, AND the safeguards from other sections are just not present in the AIA.

            This taking occurs at the whim of the Executive Branch, occurs with NO chance of judicial review, and occurs with ZERO remuneration for the sticks taken.

            As we have seen, entering back into the Office, which allows the Office to apply BRI AND (as Congress has written), the former granted-patent holder ONLY has a right to petition for amendment (and no actual right to amend), there is a clear “legislative taking.”

            Combine these and you end up with the AIA clearly violating Constitutional protections of property.

            And once THAT is found, then the clear and explicit choice of Congress to NOT incorporate a severability clause must come into play for this law.

            The good ship USS AIA Titanic, with its choice of a bulkhead-less design, springs a leak below the waterline…


              Note, under the circumstances, if there is a taking (or taking back) of presumptive rights granted, then the taking must be compensated.

              I am not complaining about the loss of rights in the trial situation, everyone knows, courts can invalidate patents. We take our lumps. But, the taking by the very hand that gave, without compensation, is a bit unfair.

              Inventors are sensitive, particularly to unfairness. If you build it they will come. But, what if what you build results in the inventors not coming? (except of course for corporate filers)


            Richard, strictly speaking, what they do is place the invention into the public domain in violation of the bargain.



              You STILL are not asking the right questions.

              Come man – how many more dots must I connect for you?

      3. 5.2.3

        Thanks Ned, for those thoughts, but this “fully vested” notion is perhaps not as clear cut as you suppose. In England, for example, one can, as a third party, “oppose” another’s “property” at the Patent Office right through from publication of the patent application till expiry of the 20 year patent term. As to “opposition” as such, pre-1978 UK law recognised two sorts i) pre-issue opposition and ii) a post issue thing called “belated opposition”. Presumably UK law, prior to 1978 did not see quite the same significance as you do, for the date of the PTO “grant decision” or the issuance, 6 weeks later, of the B publication of the granted patent.

        So in Europe is the “property” ever “fully vested” even one day before the end of the 20 year term?


          LOL – it would be swell for MaxDrei to NOT use non-US law in his discussions of what choices the US sovereign has made.

          You know, try to keep in mind King George and all….

          (so yes, MaxDrei, here in the States, the actual HARD date of vesting is the date of the grant)


          Max, the English system always seemed to reserve the right to revoke patents. I understand, and correct me if I am wrong in this, that if there is a conflict of evidence that doubt must be resolved in the favor of the patentee.

          Also, to what extent does petitioner have to show likelihood of prevailing before he might force the patent owner to defend a patent revocation action?


          One more point, and it is very important.

          In Britain, if the patent is narrowed in the 20th year, but infringers still infringe, the patent owner has not lost damages.

          In the United States, if the patent is narrowed in the 20th year, the patentee loses all past damages regardless that the infringer still infringes.

          Thus in the United States, the infringer has every incentive to delay the IPR because it has the effect of killing past damages to the extent of a narrowing amendment. Not so in England.

    3. 5.3

      Max, a problem with the European system is that the invention must be published before exclusive rights are granted. The inventor has no choice to keep his invention secret if he is not happy with the claims.

      Similarly, if patent is revoked for some defect other than the invention being known, the inventor has given the public his invention in exchange for nothing.

      A lot of the conversation here seems to ignore these simple facts and assume that the grant of a patent is a grant of a public right just as it used to be prior to the statute of monopolies where patents were granted on existing trade for one purpose or another.

      Now you might respond that if the invention was publicly known or in public use prior to the filing of the application, that the inventor has given the public nothing in exchange for exclusive rights. True. But when we are revoking patents not because the invention was publicly known, but on the basis of some other criteria such as “obviousness,” then he gets a little bit more dicey. This is where the significance of the invention is balanced against the harm to the public by granting monopoly rights.

      But a lot of the problems regarding harm to the public relates to the breath and the sheer indefiniteness of the claims that allow people to sue others for achieving the same result but with different means or methods from those disclosed in the patent. This is where narrowing amendments should be allowed to save the patent, but not to damage the inventor to the extent that if the infringer still infringes the claim after the narrowing amendment, that his right to collect damages is not forfeited. I understand that this is the law in England, but it is not the law in the United States.

  2. 4

    At 1121221 Ned astonishes me by finding a deficiency of patent litigation in England, namely, that it fails to comply with Magna Carta. Thus:

    “One of the principles laid down in the Magna Carta is that one’s property cannot be taken from him without a trial by jury”

    Why the astonishment? Ned’s ability to construe “property” as including the exclusive right granted by the issue of a patent.

    1. 4.1

      At least here in the States, that “construing” is fully proper.

      Or do you think otherwise, MaxDrei?

    2. 4.2

      I think technically that the Magna Carta is still good law in the US as long as the portion cited has not be precluded by other laws in the US.

    3. 4.3

      Got to say, patents as property was a concept dear to me when I entered the profession 50 years ago. Trial by jury? A panel of your peers? What a novel concept. Works for me.

      Now, might is right? It may be a trump card, but it is the last card in the deck that should be played.

    4. 4.4

      What ho?

      Doth Englishmen believe that patents are revocable privileges when the Statute of Monopolies solemnly declared their validity was to be adjudged according to the common law? What did these wise men of yesteryear have in mind?

      Why of course, patents of invention are the property of their inventors. Federalist 43 found their source in the common law, just as much as copyright. Something about the sweat of one’s brow.

    5. 4.5

      Max, so long as both sides consent, one can waive one’s right to jury trial. It would be interesting to see if someone in England invoked the Magna Carta to claim a right to jury trial on validity.

      1. 4.5.1

        Thanks Ned. I suspect Night has pinned it with his “precluded by other laws” point. As far as I know, trial by jury in civil cases disappeared long ago, in England. I’ve never heard of it being advocated for patent infringement cases.

        Criminal activity gets ever more complex, brutal, organised and international. Not surprisingly then, there is in England huge debate, very current, about universal human rights and the proper role of a jury in trials for criminal offences. The world changes, and the law has to keep up.

        Could it be that Magna Carta was a bit hazy on the difference between civil and criminal offences, and its notion of “taking” had exclusively criminal acts in mind?

        Mind you, in Germany the patent statute still to this day contemplates that patent infringement can be criminal. It’s never asserted, but it’s there if needed.


            Why didn’t 35 USC 261 simply state that patents are property?

            Instead it declares that patents “shall have the attributes of” property.

            This informs me that, actually, patents are not “property” as such.

            Now it might be (I’m no Constitutional lawyer) that it is un-Constitutional to “take” not only property but also anything else that happens to have the “attributes” of property.

            But it does strike me as bizarre, that if the USPTO, unaware of facts of decisive importance, mistakenly issues a patent, then only a duly convened and constituted Jury can deprive the lucky (!) patent owner of its fortuitous gain.

            But, hey, so what? There are so many bizarre things going on in the world today. What’s one more on the pile?


              Your “being informed” is just not correct, as the plain fact from an historical basis was that patents have always been property and that this lead in was reflective of that and served as a segue into the rest of that section of law.

              I noticed that you did not answer either my earlier question nor Ned’s question.

              How “convenient” of you.


              If one assumes that a patent is invalid before asking whether it is unfair to take away his patent without a jury, then the answer to the question seems inevitable. In fact why even have a trial?

              The whole point here is due process; and essential to that is not only fair procedures, but an unbiased judge who determines the law and the remedy, and an unbiased decider of fact.

              At some point, Max, you are going to have to understand the concept of a show trial. Many patent owners who have been to the IPR process know exactly what a show trial is.


                Ah, Ned. Interesting observation in the context of post-issue opposition practice at the EPO (and indeed anywhere where Roman civil law is practised as opposed to English adversarial proceedings).

                Americans naively suppose that the EPO Opposition (and Appeal) process ends in something akin to a “Trial”. It doesn’t. It ends in “oral proceedings”. Not the same thing at all. Americans leave Munich aggrieved, often convinced they are the victims of some sort of “Show Trial”. Not so at all.

                I think I understand what a “Show Trial” is, in totalitarian States that lack a judiciary that is independent of the executive branch. It makes me sad that you are suggesting that one can watch Show Trials inside the USA. I think that with such assertions you should be more circumspect, if only out of respect for those unfortunate individuals who in such a Show Trial have been unjustly deprived of their liberty.

                1. …or of their property…

                  Oh wait, MaxDrei is once again expounding on something that he does not understand or respect (US soveriegnty).

                2. Max, we revolted from King George in part because the Judges he appointed were not independent. From the Declaration of Independence, ground 9:

                  ” 9. He has made Judges dependent on his Will alone for the tenure of their offices, and the amount and payment of their salaries.”

                  When judges are not independent, they obey their masters. The system is rigged. Like the infamous Star Chamber.

                3. Max, our criminal system is robust because we have juries standing between politically motivated prosecutors and a sentence.

                  I am quite certain that only a truly independent judiciary could perform the same function without juries. In fact, the UN demands and independent judiciary as an essential component of human rights. But they do not demand jury trials. link to

                  This statement is the most odd:

                  “Whereas judges are charged with the ultimate decision over life, freedoms, rights, duties and property of citizens, …”

                  It seems to impose a Roman Law view on the world, when in the US it is the jury that makes the ultimate decision regarding life, liberty and property.

                  Regardless, the UN does agree that the people have the ultimate decision over the property of citizens must be independent. Clearly, the American PTAB is not independent. It is the exact opposite of independent.

                  Thus the holding of the Federal Circuit In MCM Portfolio LLC that patents are public rights and not the property of their owners. Otherwise, assigning the adjudication of the revocation of a patent to the PTAB would have seemingly violated this a UN basic principle of human rights.

                4. Ned, you observe that the UN writes:

                  “Whereas judges are charged with the ultimate decision over life, freedoms, rights, duties and property of citizens, …”

                  and imagine the purpose is to impose something on the USA. Seriously? Isn’t the UN here simply stating a fact of life in a number of jurisdictions (not a few) that are widely distributed around the surface of Planet Earth?

                  The way I see it, the UN is thinking about human lives in general, rather than aiming to “impose” something specifically on the citizens of the USA.

                5. MaxDrei asks “Seriously?” and yet it is his very own nigh constant shilling of the “my EPO glasses work for me, why don’t you wear them?” lack of respect for the differences in sovereigns that DRIVES the very perception that Ned offers.

                  MaxDrei, you either lack some basic critical thinking skills, are being purposefully and deceptively obtuse, or both.

                6. Max, I was not thinking that the UN was trying to impose anything on the US. I was thinking they were trying to impose the Roman Law view of the world on everyone else.

                  However, as you said, there is a growing view even in Europe that juries are essential.

                7. It is all rather “convenient” for MaxDrei to divert the discussion into various ‘nooks and crannies” and not ever return to the fundamental point that patents ARE property.

                  So MaxDrei, in your view, since patents are NOT property, what exactly do you think that they are?

                  Do you think that they are some type of (unspecified) pseudo-property? some type of (unspecified) NON-property? Are you aware that “choices of action” are considered property? You have thrown some shadows – how about throwing some light…


          Juries are not necessary to provide a fair hearing if judges are truly independent, not subject to political influence, personal bias, etc. In England, jury trials became optional in the mid-eighteen hundreds and gradually disappeared because litigants had confidence in their judges.

          But England is England, and then there are places like Nazi Germany, Stalin’s Soviet Union, and Chairman Mao’s Red China. How can we trust trials when the judiciary is corrupt, or political? It seems to be understood that in some places, if not most places the world, civil trials are controlled by payoffs. There is no real justice in most of the world because there is no functioning truly independent judiciary.

          Back in the day, the day of the Magna Carta, jury trials were thought to be essential to protect the people against the power of a political judiciary. There is no other explanation for it. The reaction to the abuse of power is that the people themselves must decide guilt.

          Today, I would agree, that most district court judges in the United States are fair and unbiased because they are required by the Constitution to have lifetime appointments and salaries that cannot be reduced. But when the deciding agency is political, there is no guarantee of fairness and in fact there is no fairness in many cases. That is why jury trials remain essential before one’s life, freedom or property are denied or taken by order of a court of so-called justice.

          In England you have patent validity trials by an independent judiciary. In America we do not. We instead have patent trials in a heavily biased and political institution known as the patent office who see it as their mission to rectify the prior mistakes of the patent office, giving short attention to the arguments and pleas of patent owners. The system is rigged, unfair, and everybody knows it. One might say that one is receiving due process because the patent office provides procedures, but when the deciders themselves are not independent, but political, there is no possibility of due process.


            But I must add, that even with American judges, there is a lot of forum shopping with respect to patent cases because of judicial attitudes and prejudices. If judges were to be the sole decider not only of the law but of the facts, it might be impossible even in court to get a fair trial.

            Some argue that complex cases should not be given the juries, but this assumes that a judge is not biased. The argument is specious anyway, because jurors tend to decide cases based upon credibility as opposed to scientific accuracy. In the battle of experts, the expert who is less certain of his grounds will be identified by the jury, and the case will go against that party.

            The same argument is made about juries and damages. But is important that juries be involved in deciding damages because they tend to put into the equation their own ideas of justice, which is, I submit, important.

  3. 3

    OT, but you know that NWPA guy who tr0lls here with the endless “You’re paid for by Google! You’re paid for Google!” silliness?

    Well, we just learned who his employer is.

    link to

    Nobody could have predicted that.


    1. 3.1

      Went to the link. Bupkus wrt to anyone named “NWPA”. You just committed defamation. But you do that on a daily basis. Who are you?

      1. 3.1.1

        ” You just committed defamation.”

        Of whom? An anonymous poster on a patent law blog?

        Here’s some advice: Ignore Mooney.


          Lol, it is much more fun making him look like a total arse with his asinine short scripts and his duplicitous holier-than-thou self-appointed field of rye watching nonsense.


            Bourbon and rye (or do you mean wry) are truly American concepts. (better to smuggle 86 proof whisky than sugar or grape juice)


              I cannot comment about Malcolm’s sobriety (or lack thereof), but instead, the “rye” comment should bring to mind JD Salinger.


          Raises an interesting issue. What is an “anonymous poster on a patent law blog?” Certainly NSA doesn’t consider us “anonymous” and I frequently comment under the handle, sfreptile, you don’t need to be the CIA to figure out who I am.

          With that said, only the famous can apparently be defamed. Witness Gawker. I love American wrestling, it is so much like business.


            It is difficult to defame someone like Malcolm.

            First, truth is an absolute defense.

            Second, even the most egregious comments about Malcolm fall above his station, and thus can be – in a way – deemed to be compliments.


              You guys have got to lighten up. Is there anything you’ll agree on? What is the unified utopian vision on reward for invention? What we have manifested is not good, or even in the American spirit.


                I hate to reply to my own post, but really guys, if you can turn down the flames, MM postulates, practically every patent (or application) having a “general purpose computer,” or the like, is invalid. Ned Heller, the champion of patents of invention, gives the break to inventors. Anon, the sage middle man, tries to bring reason and precedent to the table.

                Frankly, this has been one of the better strings. Is there a manifesto? What is the architecture for an American patent system? A stool, either smells or has three legs to uphold a platform.

                1. Richard,

                  Chances are extremely high that those who engage in drive-by monologueing (Malcolm and Ned) will never see your post.

      1. 3.2.1

        Ned, your continued support of MM implicates you with all his nonsense.

        To think that a low life like you ever was associated with the AIPLA. I hope they booted your out.


          Night, you confuse me at times. I think the problem with the AIPLA is that it is in bed with the likes of Google and is constantly supporting patent reform that is anti-little guy, the startup, the university. I, of course, oppose much of the Google agenda, just as do you. What does that mean, that the AIPLA should boot both of us?

          Now, my position on functional claiming has been consistent since the ’90s. My committee report on means plus function in 1994 was awarded a prize. Yet you think that I should be booted just because I like clear claims?

          As I said, Night, you make little sense at times.


            It is NOT that he makes little sense Ned, but rather, it is your own Windmill Ho escapades that causes you to suffer the “6-is-a-genius-because-he-agrees-with-me” malady (as witness by your past “advice” to “just enjoy Malcolm’s swagger” that finds your “alignment” at odds with your other positions that may support “the little guy.”

    2. 3.3

      I’ve been ignoring the comments on here for a while to get my work done. I guess MM missed me.

      That link has no connection with me. But we all know that you are a paid blogger paid for by Google.

  4. 2

    Summary: the invention covers controlling a wafer polishing process based sensor measurements and tracked data such as starting thickness, e.g., current thickness minus original thickness divided by time. The infringer’s expert testified that a reference anticipated the claims because it disclosed controlling a polishing rate based upon sensor data and upon wafer thickness. However, during deposition, the expert admitted that the polishing rate was controlled based only on sensor data i.e. the amount of material removed over time. The textual analysis of the reference confirmed that the referenced did not disclose what the expert testified it disclosed.

    Because of this, summary judgment was reversed. However the court did not grant the patent owner’s own motion of non-anticipation because the infringer had proposed alternative theory regarding the reference that could meet the limitations of the claims. The Federal Circuit remanded to the district court for further consideration.

    If I were the patent owner I would move to disqualify the infringer’s expert either because he is a proven prevaricator or plainly incompetent. (But of course, we all know who the real prevaricators are.) I think the judge may grant such a motion because he may be embarrassed by being overruled because he relied upon the expert opinion that turned out to be not just incorrect, but admittedly not true.

    1. 2.1

      If you were a patent owner, you’d be facing a whole lot of hell trying to assert the patent in these trying times. This case holds a glimmer of hope, too bad it is not precedential. District courts are clearing their dockets by SJ even before discovery.

      1. 2.1.1

        I don’t think it is precedential merely because it does not add anything to the law. The law, as it is, already covers the situation and what this does serve as is a reminder to the courts below that just because an expert says something, does not mean that what the expert said can be taken as absolute given the other plain facts of the case.

        Interestingly enough, one con contrast this with the recent Pharma “plain facts” which apparently went the opposite way of the plain facts (and the reviewing court declined to unsettle the lower court) Certainly, the level of review being different between review of facts and review of law plays a part in the “ease” of making decisions, but at the bottom line, what we really have in both cases are facts that do not square with reality, and reviewing judges picking and choosing what to do about it.

      2. 2.1.2

        Richard, I think that increase in D.C. S.J.’s is mostly from Alice 101’s, not from 102’s. Or even from 103’s, notwithstanding that the KSR Sup. Ct. decision was sustaining a D.C. S.J. on 103 which the Fed. Cir. had summarily reversed.


          KSR set the low bar. It is not just 101, 102 or even 103. It can be on judicial Markman interpretation of claim and SJ on infringement, a typically factual issue.


            Good point Richard, we were only talking about invalidity S,J. under 101, 102 or 103. But S.J. for non-infringement has been for a long time now far more common than S.J. on any and all invalidity grounds, and far more commonly sustained on appeal.
            For good reason. The patent owner has the burden of proof on that issue. BUT, it requires a D.C. judge willing to hold a Markman early enough in the proceeding that the vast majority of defendants will not have already settled to avoid discovery and trial preparation costs on an undefined claim scope [unlike E.D.TX].


              [unlike E.D. TX]

              So, if this is a cause of the “problem,” why has this not been rectified (and not only in [E.D. TX], but nationwide)….?


                Mandatory early Markman was in the earlier version of the House patent reform bill, opposed by guess who?

                1. First that I am hearing of it, so I do not know who opposed what appears to be a rather sane measure.

                2. Mandatory early Markman was in the earlier version of the House patent reform bill, opposed by guess who




              “Willing to hold a Markman? No, willing to internalize the Markman as a judicial discretion and rule without any hearing. Not every inventor can afford an appeal.

                1. SJ on infringement with no hearing whatsoever, but with Markman rationalization in the order. (In my mind, motion briefing is not a hearing.)

                2. Thanks / do it is less the “mandatory early” part and more the “not let it be a facade without a true hearing” part, then, right?

    2. 2.2

      Demonstrating another reason why a 102 anticipation S.J. finding below is easier to overrule on appeal. All you may have to do is show that one single claim element is not fully taught or inherent in one single reference. [Even if that claim element is one that would not make any difference in the result in a 103 analysis.]

      1. 2.2.1

        Why should “easier to overrule on appeal” be a criterion for district court behavior? For some, this is not just a legal game.

  5. 1

    The statistics are clear enough that obtaining Fed. Cir. sustaining of a challenged S.J. of invalidity in view of prior art references has always been difficult, especially for full 102 anticipation, as here. It is usually not that difficult to convince a panel of the Fed. Cir. that there may be relevant disputed fact issues, which is a kiss of death for S.J.
    So as a general question, how can defense counsel these days who have a very material prior art patent rationalize not counseling promptly applying that prior art patent in an IPR, which has vastly better odds of success, and seeking a stay to further reduce client legal expenses?

    1. 1.1

      Paul, do you think the PTAB would be inclined to listen to patent owners who point out that the petitioner’s expert is lying?

      Judge Richard G Andrews of the District of Delaware is quickly gaining a reputation for himself as bending over backwards, or more, in order to find noninfringement or invalidity. It is this Judge who recently held that continuations filed on the day a patent issues are invalid.

      1. 1.1.2

        Ned, just as in any other trial, in an IPR rebutting of expert witness testimony is performed by the providing of effective cross-examination and rebuttal testimony of one’s own experts. The former is even easier in some respects in an IPR. In an IPR all expert testimony is provided in declaration or affidavit written form, allowing ample time for careful preparation of live cross-examination of that witness with relevant unexpected questions. Inconsistencies or inaccuracies in witness testimony in an IPR can be challenged and highlighted in the final briefs presented before the PTAB final hearing. The decision is by three APJs, not one judge.

        P.S. I think a better question is this: is declaration testimony as reliable as live direct testimony?
        Another factor is than many patent attorneys are not that experienced in writing air-tight affidavits that will stand up to thorough inter-partes challenges. One does not normally get that experience in fully inter partes practice.


          Paul, you write that within an IPR there is ample time to prepare carefully for live cross-examination of party experts on their respective written reports. This reminds me of patent litigation in England, where the “live” x-exam happens at trial in front of the judge’s nose. Any dissembling is smelly, and is immediately sniffed out. Boy, does it keep the experts honest.

          And further, it increases the difficulty of reversing obviousness findings on appeal.

          In the context of an IPR though, what do you mean by “live”?


            A minor point to be sure, but MaxDrei’s “Any dissembling is smelly, and is immediately sniffed out” in the immediate case did NOT happen – and it is the reviewing appeals court here that is digging back into the facts and doing the “sniffing out.”

            So much for “immediacy”…


            Live means just that. Opposing counsel live questioning of the witness under oath and recorded as if in court. Video taping can even be used. If the witness refuses to answer relevant questions the APJ can be called, and if necessary required to testify in the presence of an APJ and/or sanctioned, which sanction can include refusal to consider the declaration of that witness.
            But judges in any litigation rarely go on truffle hunts to dig out factual errors from the record that were not pointed out by opposing counsel.


              So it strikes me odd that here we evidently have such a “truffle hunt.”

              Why, do you suppose, do we have that in this case, while in the preceding blog discussion of a Big Pharma case, easy to find Truffles were not bothered to be looked for?

                1. You raise a valid counter point – I do not know for sure and I am relying on the characterizations that have been put on this thread (the fact of the matter being that the expert testimony was said to be unrebutted).

                  If you have different information, by all means, please update us.


              Interesting. thank you Paul.

              In England 95% of patent cases settle before trial. The remaining 5% go to trial (of both infringement and validity, within 12-15 months of start of the litigation) because both sides think they can win. Single judge finds the facts and the law. Typically, the trial lasts 5 days. First day, opening arguments, 5th day closing arguments, the three days in the middle are decisive. They are taken up with x-exam of the respective tech experts, on the content of their respective reports, which were exchanged between the parties long before trial. This exchange of written reports is of course often what settles the case.

              Appeal? Only about 1 in 3 cases. For the rest, no point.

              Mind you, the judges in England are all patent specialists, and there is no jury.


                Max, the small percentage of filed patent suits actually going all the way through trial here is about the same. While I am not aware offhand of actual statistics on the number of patent suits with completed trials that go on appeal to the Fed. Cir., I suspect it is more than the roughly 1 in 3 you indicate for England?

                1. Last I saw numbers Paul, the US rate was south of 2% (with the actual rate of possible cases per patent claim being well under .05%.

                  It’s rather staggering to see see the litigation “0h N0es” of the flea’s tail on the tail of the dog wag the dog.

                2. Paul, one point I tried to make is that in England, where litigation is deemed a “last resort” 95% of cases started settle within 15 months and, of the remaining 5%, only a third of them go on beyond a trial, to appeal.

                  I should add that the appeal procedure is normally finished within 12 to 15 months.

                  Given that fact-finding in England involves the full rigour of discovery and cross-examination of witnesses at trial, in front of the eyes of the judge, that’s a very demanding time schedule. Industry gets its precious business certainty. The litigators are very busy, with good fees, but only in short hot bursts of activity. I’m sure that they would much prefer that the action last much longer, but in England they lack the lobbying power of the litigant community.

                3. Max, you said England involves the full rigour of discovery and cross-examination of witnesses at trial, in front of the eyes of the judge.

                  This illustrates why IPRs can never satisfy due process. Compelled testimony is a never before the trier of fact for the simple reason that the PTAB is not a court and cannot issue process to compel a witness to appear before it.

                  One of the principles laid down in the Magna Carta is that one’s property cannot be taken from him without a trial by jury. There is a good reason for this, which we all forget in the urge to invalidate bad patents and to protect stakeholders against trolls.


              Paul, just one thing about live testimony, just how does this work when process is by district court and ALJs are in DC?


                The IPR process does not involve District Courts, and APJs are not the same as ALJs.

Comments are closed.