When is the PTO’s claim construction “reasonable”?

dagostinoimageD’Agostino v. Mastercard (Fed. Cir. 2016)

John D’Agostino’s patents cover processes for creating limited-use transaction codes to improve credit card security. U.S. Patent Nos. 7,840,486 and 8,036,988.  The approach basically keeps the card number out of the hands of the merchant (where most scamming occurs).  After being sued for infringement, MasterCard filed for inter partes review and successfully challenged many of the claims as obvious and anticipated by Cohen (U.S. Patent No. 6,422,462). On appeal, however, the Federal Circuit has vacated – holding that the PTAB’s claim interpretation was unreasonable.

Claim construction continues its reign as a messy hairball.  Rather than looking to the “proper” claim construction as defined by Phillips v. AWH, the PTAB defines claims according to their Broadest Reasonable Construction (BRI). That approach largely follows Phillips, but allows the PTO to select the “broadest” construction for any given limitation from the potential set of reasonable constructions.  The express intent here is to broaden the claims in order to make it easier to invalidate them during the IPR process. The idea then is that claims which survive the IPR-scope-puffery-gauntlet will be strong – giving confidence to judges and juries and fear into the hearts of infringers.

Reasonable is a Question of Law: In most areas of law ‘reasonableness‘ is considered a factual conclusion and conclusions regarding reasonableness are given deference on appeal.  The Federal Circuit however has ruled that the reasonableness of claim construction in the BRI context is reviewed de novo on appeal. Unfortunately, the court has not provided much helpful guidance in terms of knowing when a given construction is reasonable.  Their koan states that – although the BRI construction need not be the correct interpretation, the chosen BRI construction may not be “a legally incorrect interpretation.” (Quoting Skvorecz 2009).

Here, the question was whether the claims required a temporal separation between two communications.  The PTAB said no – since it was not expressly required and broadened the claims.   On appeal, the court looked at the claims and found that the express language did in fact require two separate communications: A first request that occurs “prior to” the merchant being identified  and then a second communication that includes the merchant ID.  According to the court, the PTAB’s interpretation (allowing for a single communication) was simply not reasonable.

On remand, the PTAB will decide whether the prior art the claim elements as they are more narrowly defined.

= = = = =

PTO Bound by its own Prior Construction?: Interesting issue ducked by the Federal Circuit involved the prior reexam of the patent where the PTO expressly narrowly construed the same claim scope. Court did not remark on the patentee’s suggestion here that PTO should be bound by its prior express constructions.  Seems reasonable to me.

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

272 thoughts on “When is the PTO’s claim construction “reasonable”?

  1. Every so often [but not often enough] there is an off-topic observation in blog comments of actual use. This one was MM noting the Fed. Cir. award of sanctions against a party for a frivolous appeal in Walker v. Health International in its decision of 1/6/17.
    It has amazed me that the Fed. Cir., since the early days of C.J. [and former general] Markey, does not seem to ever sanction even obviously frivolous appeals, instead making the other party pay all their own legal costs to defend against them.* Finally, a sanction, awarding more than $40K in attorney fees, is awarded in this case.* Perhaps more appeal respondents with file motions for sanctions as a result? {Also note that the the D.C. judge had wisely required an appeal bond to be posted in this case.}
    *This Walker decision also cites one other Fed. Cir. sanction award case [from 26 years ago] that I had missed: “Where a party blindly disregards long established authority and raises arguments with no factual foundation, . . . the judicial process has not been used, but abused, and sanctions under Rule 38 are warranted.” Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 943 (Fed. Cir. 1990).”

    1. From the Walker case:

      Such misconduct can include manufacturing arguments “by distorting the record, by disregarding or mischaracterizing the clear authority against its position, and by attempting to draw illogical deductions from the facts and the law.” State Indus., Inc. v. Mor-Flo Indus., Inc., 948 F.2d 1573, 1579 (Fed. Cir. 1991).

      Hmm, let’s check this against Malcolm’s typical short script:

      – manufacturing arguments “by distorting the record,

      CHECK

      – by disregarding or mischaracterizing the clear authority against its position,

      CHECK (after of course, making an admission against interests vis a vis the exceptions to the judicial doctrine of printed matter)

      and by attempting to draw illogical deductions from the facts and the law.”

      CHECK and CHECK

      1. If I didn’t have anything better to do this weekend, I’d go back through my many summations of oral arguments here and post the numerous examples of misrepresentations of the law, mainly made by “do it on a computer” b0ttom-feeders who’s claims were righteously tanked by district courts. Specifically, I’m talking about appellants who insist — in complete defiance of settled law and common sense — that their claims can’t be ineligible because (try to believe it) they describe processes or machines.

        The well from which most of these misrepresentations are drawn, of course, are the patent maximalist blogs like the blog run by “anon”‘s mentor and hero. But he’s a very serious person! He’s totally not a self-interested shill spreading misinformation for his own benefit, without any regard to the law or reason. So we all have to pay attention to him.

        We now return you to “anon’s” mewling and weeping.

        1. MM, I first got into with anon years ago when he insisted that Bilski had held that business methods were eligible subject matter. Even today, Gene continues to insist that they are.

          1. Quite the reverse, Ned – you were the one insisting that the holding of Bilski was that business methods were not eligible and I was the one explaining to you that the holding in Bilski was geared to “abstract” and NOT “business methods.”

            Let’s have just a little inte11ectual honesty from you on this point.

  2. Any and every independent comment of mine that is deleted will be re-posted.

    Guess who said that.

    😉

    1. Try a little bit of honesty, “anon”, and remember the context. Specifically, the context is a thread where I have posted about some patent-relevant news (e.g., a new CAFC case, or some developments at the Supreme Court, or some “techn0” side info) and then your bff NW and you jump in and tr0ll with your usual endless stream of l i e s about me (and whatever other l i e s you happen to be peddling that week). What is the point of your behavior? Well, one obvious point would be to maximize the chances the entire thread gets deleted from beginning to end. And what I’m telling you is that if those threads are deleted because of your silliness I’m just going to repost my independent comment again. So maybe you two can come up with a different game plan. One great idea would be to simply hang out at one of the many echo chambers where your silliness is warmly embraced by your fellow patent maximalist sycophants. But we all know that’s not going to happen and we all know why.

      [shrugs]

      1. Well, one obvious point would be to maximize the chances the entire thread gets deleted from beginning to end.

        Except of course, this has never happened, now has it? LOL – you are way too funny to ask of me “Try a little bit of honesty, “anon”.” Try it yourself – if you can.

        After almost 11 years now, I won’t be holding my breath.

  3. Malcolm’s liberal left rants have far less to do with the sphere of patent law than do the repercussions of that very same liberal left hallmark of PC:

    “Research and other professional activities are professionally rewarded only if they are channeled in certain directions approved by a politicized academic establishment — funding, ease of getting your papers published, getting hired in prestigious positions, appointments to prestigious committees and boards, professional recognition, etc.” (emphasis added)

    See: link to pjmedia.com

      1. That’s pretty bad. But as long as Goldman Sachs and Google give money to Obama it is fine. They are taken care of and that is all that matters.

        I think Obama is one of the most bubbled presidents in history. He just smiles and acts wise—and gets nothing done. The Fed. jacked the economy for the big banks.

      2. But anon, they had to outsource those jerbs to save money to pay administrators (totally not to implement the lefty agenda up in the school!).

        Insert link to article showing the growth of university “administration” positions compared to actual teachers here which I cannot find off hand.

          1. MM doesn’t “believe”, in his feel feels, that the universities are whence flows the literaly lefty illiberal agenda flows into society at present. MM disregards the literal ginormous mountains of evidence contrary to his feel feels available all over his interbuts from youtubes to facebooks to etc. etc..

            1. Because all the best wisdom comes from the Internets chatrooms where 6 and his “bros” discuss how “liberals” made it soooooooo hard for them to get the lady action they just know they are entitled to.

              1. Because all the best wisdom comes from the Internets chatrooms

                Um, you don’t see the irony in that – and in the fact that the only place YOU spew your short scripts is that very same vehicle…?

  4. U.S. Says Putin Ordered Broad Campaign of Influence to Help Trump Win Election

    Nobody could have predicted that! And the maniac-elect was in on it, and so were members of his campaign staff.

    None of this, of course, will affect the legitimacy of his Presidency, or the legitimacy of his incompetent Supreme Court appointees, or the hack he puts in charge of the PTO. Nope! It would be so mean-spirited to even talk about such … “perceptions.”

    LOL

    Oh, I can hardly wait to see how this is going to turn out.

    1. “American intelligence officials have concluded that the president of Russia, Vladimir V. Putin, personally “ordered an influence campaign in 2016 aimed at the U.S. presidential election,” and turned from seeking to “denigrate” Hillary Clinton to developing “a clear preference for President-elect Trump.” “The conclusions were part of a declassified intelligence report, ordered by President Obama, that was released on Friday””

      Said “intelligence” officials out of the Obama White House bringing with them 0 evidenciaries.

      Two can play at “intelligence” games you know MM, what makes you think the Dems are “above” such tomfoolery when you know dam well the shinanigans they pulled on Bernie?

          1. His “point” is that he refuses to understand that CRP is CRP and that Donkey CRP is CRP just as Elephant CRP is CRP.

            That simply is a manifestation of his accuse others of that which he does. Truly, his number one meme.

    2. Lol Putins “evil” plan was to troll Clinton’s campaign to death!

      “The report described a broad campaign that included covert operations, including cyberactivities and “trolling” on the internet of people who were viewed as opponents of Russia’s effort. ”

      Tune in next time when Russia’s master evil genioose plan is to reveal to the American people what the Democrats are really doing behind the scenes!

      1. Kinda s@d to see a USPTO examiner struggle with the term “including.”

        Then again, this is the same examiner who blames “liberalism” for his reliance on bl0w up d0lls.

        1. “bl0w up d0lls.”

          Is that what you call your “muh POC” grils nowadays you RAAAAAAAAAYCYST?

          “Kinda s@d to see a USPTO examiner struggle with the term “including.””

          Oh, do tell what other supar eviiiiil “cyberactivities” he was supposedly up to? I can’t wait to hear all about your lefty conspiracy theory about how Russia “took over /pol/” and totally “posted things online” to tots change the us race! Let’s hear it brosefupoluous! I literally can’t wait.

          1. “bl0w up d0lls.” Is that what you call your “muh POC” grils nowadays you RAAAAAAAAAYCYST?

            I don’t know (or care) what “POC” means but, from what I’ve read anyway, most blow up dolls are pretty easy to get along with. I mean, they exist to serve the needs of their owners and they aren’t filled up with all those “liberal” ideas about being a human, first and foremost, and what that entails. In other words, 6: they’re just perfect for you! No hassles. No worries about commitment and silly stuff like that. None of that once-a-month craziness. Just ideal, really, and they won’t get in the way of your s00per important intellectual discussions with your fellow bros.

            1. “I don’t know (or care) what “POC” means”

              You don’t know what POC means? And you call yourself a lefty? What have you been calling all of your PEOPLE OF COLOR you big RAYCYST? Let me guess you’re still calling them “Asian” and “Black” etc and other RAYCYST terms like that amirite? It’s POC or nothing now bruh! Definitely not “Colored People” or “The Coloreds” which I guess you’re probably still using.

              How out of touch are you bro? Seriously? You better watch your sht or like NWPA had happen the young lefties are going to eat you one day you old RAYCYST.

    3. MM, something about this news makes one want to stand up and cheer.

      Go! Vladimir go!

      The American media is supposed to speak truth to power. But they long ago abandoned that in connection with any Democrat. If Putin really did intervene in the American election by exposing the chicanery’s and hypocrisy of the Democrat party in its campaign against America, I say bravo.

      1. Also, imagine we were to hack Putin and expose his corruption. The people of Russia would rejoice. This would not be an act against Russia, but an act against the tyrant.

        1. Eh, idk if Putin himself is all that corrupt bro. Certainly there are members of the Russian gov that are. But idk about Putin himself. Maybe back in the day. But nowadays he has too much attention on him to get too corrupt. You can bet your bottom dollar that the US would find out, and they would be happy to “interfere” with Russia’s elections.

      2. Ned, I kind of agree with you. The press in this country is completely off the rails. The Democratic part of which I am a member has been up to no good. What Deborah Wasserman-Shultz did was a threat to our democracy. The fact that the press/Dep. of Justice/Democratic Party have done nothing to her is more of threat to our democracy.

        The fact is the corruption in this country offered the Russians the opportunity to meddle. The fact is that HRC is unstable and the Russians were likely afraid of her (and a very corrupt person.)

        The fact that people in my local party call me a number of ‘ist because I did not support HRC is an indication of the problems we have.

        Anyway, this is related to patents because the zeitgeist is no morals, no ethics, do anything to get your money so you and yours are set for the coming end. Great way to plan.

        And, of course, no post about ethics would be complete without mentioning Lemley the unethical and his psychotic history of the functional claim.

        1. The fact that people in my local party call me a number of ‘ist because I did not support HRC is an indication of the problems we have.

          That’s a natural extension of PC-ism.

        2. “The fact that people in my local party call me a number of ‘ist because I did not support HRC is an indication of the problems we have.”

          Je sus chr ist brosefus. I’m sorry to hear about that.

          Just remember the Ben method. Ask them for evidence of the ism and scream they’re an as shole if they don’t produce it (or just speak loudly and forcefully). Because that’s what they are. And it works nearly every time. Because it’s true.

          1. Je sus chr ist brosefus.

            How horrible! That’s worse than being lynched! Let me know if I can donate some money to help your family through this tragic crisis.

            1. “How horrible! That’s worse than being lynched! Let me know if I can donate some money to help your family through this tragic crisis.”

              Says an ars ehole destined to get more white people h ate crimed on. Gl and godspeed on your mission MM.

              1. get more white people h ate crimed on

                False hate criming! Truly one of the most serious problems facing white people today.

                Of course, 6 probably believes most white people are neanderthals like him because those are the only kinds he’s allowed to play with.

                1. 6,

                  That is merely an invariable result of using racism to combat racism.

                  ALL racism is bad. Yet those who push the “white privilege” mantra simply do not care.

      3. Ned Heller: The American media is supposed to speak truth to power. But they long ago abandoned that in connection with any Democrat.

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

        O M G

        On what planet? It can’t be this planet where rejected “maverick” John McCain (R) and Sarah Palin (R) and an endless pack of r@cist, Repuk kke water carriers are given all the airtime they want to peddle their “talking points”.

        The media “bias” towards rich conservative white Repuk kke d@ddies (like you) is very well-documented, Ned. But wait! Your script says that you can never admit that! So you drivel on and on, with your eyes and ears glued to the “experts” on Faux News.

        Never mind that everyone with half a br@in just saw the “liberal” US media propel a ridiculous soci 0path l y i ng Republican cl 0wn to the Presidency.

        1. OK, point taken MM. Fox News and talk radio are pro-Republican.

          But big media likes to say to itself and to others that it is unbiased. But in this election, they all (save Fox News) went out of their way to champion one candidate; and because of that, totally ignored the corruption of the Clintons and the Obama administration.

          Also, MM, you seem to think that Republican are all rich. They are more like middle class; and after this election, they will include the working class as well. The Democratic Party is the party of the elites and that includes the very largest companies and the wealthiest of the wealthy. Soros, Gates, etc. are not paupers.

          1. “The Democratic Party is the party of the elites and that includes the very largest companies and the wealthiest of the wealthy. Soros, Gates, etc. are not paupers.”

            Don’t forget their muh pocs! Can’t be RAYCYST and leave them out Ned!

            1. There are rich Democrats? Wow. That’s really shocking.

              Who suggested otherwise? Not me.

              Let me know when the rich corrupt l y in g maniac you voted for releases his tax returns.

              Also this: “The announced hearing schedule for several nominees who have not completed the ethics review process is of great concern to me,” OGE Director Walter M. Shaub wrote in a letter to New York Sen. Chuck Schumer and Massachusetts Sen. Elizabeth Warren. “This schedule has created undue pressure on OGE’s staff and agency ethics officials to rush through these important reviews.”

              Shaub — who said OGE hasn’t received initial drafts from some nominees — continued: “I am not aware of any occasion in the four decades since OGE was established when the Senate held a confirmation hearing before the nominee had completed the ethics review process.”

              Gee, I wonder why the Republicans wanted to gut ethics oversight? And I wonder why the maniac who Ned Heller voted for suggested only that they wait before doing that?

              Mysteries. Nobody can predict how this is going to play out.

          2. Fox News and talk radio are pro-Republican.

            LOL

            All of it is slanted to give the fly0ver Repuk kkes — the least educated white people in the country — the false impression that there are “two sides” to every issue. It doesn’t matter if one side is completely made-up bal0ney. We all have to listen to it. Why/ Because “Obama is black”, which by itself is a huge offense. Why is it a huge offense? Because blacks are inferior. And lazy. And ultraviolent! And crooked. How do we know that? Somebody said so on the Internets. See? I told you there were two sides!

            Also women get totally crazy when they’re on their periods! That’s why they can’t get anywhere. See? Two sides.

            And Democrats engage in massive voter suppression and gerrymandering in order to cling to the ever-shrinking popular support for their policies. How do we know that? Because both sides do it! Everybody knows that. See? I told you there were both sides.

        2. Your script says that you can never admit that! So you drivel on and on,

          Wow – Malcolm’s number one meme in hyperdrive…

    4. Big deal MM. What people should care about is all the corruption in our system. HRC taking $100 million from Goldman Sachs and company to give them preferential treatment. Etc.

      Just think: all the talk about immigration and no talk about population control. No intelligent person could look at the flow of Mexicans into the US over the last 70 years along with the growth in the population of Mexico and not know that this is not a sustainable model. (I love that the news then says, but, but, but, the flow has reversed as if that is something that will be permanent or that somehow that negates that ridiculous population growth problem.)

        1. “Open borders would probably work if there wasn’t rampant population growth.”

          You’re forgetting the nanny/welfare state (and a whole host of cultural etc. issues). If you make it so that just anyone can FREELY move into the country and go immediately on welfare (which they can in many states btw) then what’s stopping all those people in the world from moving to a 2$ a day existence to 4$ a day on welfare in the US/EU?

          1. anyone can FREELY move into the country and go immediately on welfare (which they can in many states btw)

            Really? Name five such states.

            4$ a day

            LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

      1. “(I love that the news then says, but, but, but, the flow has reversed as if that is something that will be permanent or that somehow that negates that ridiculous population growth problem.)”

        It’s literally akin to “fake news”. It’s “misleading news to further our agenda”. Yes, they don’t outright know what they’re saying is 100% false. They just present it in a misleading way.

      2. NW What people should care about is all the corruption in our system. HRC taking $100 million from Goldman Sachs

        And she murdered Vince F0ster! And the ped0phile ring in the pizza parl0r!

        Deep, deep stuff.

        Thank goodness the maniac you voted for is totally not a fraud and habitual l i a r. And totally not in bed with Goldman Sachs and the w0rst banksters on the planet. Nope. He’s squeaky clean! And you would know because you “worry” about this kind of stuff. And you’re a very serious person! We all know that.

        1. link to money.cnn.com

          Conservative author and television personality Monica Crowley, whom Donald Trump has tapped for a top national security communications role, plagiarized large sections of her 2012 book

          But just because Trmplthinskin surrounds himself with corrupt ethically bankrupt people doesn’t mean that he’s corrupt or incompetent.

          It’s just a coincidence. Facts are biased against conservatives, you know. So we all have to try harder to see things like they do. Because “fairness.”

          Right.

          1. <CNN

            "Monica Crowley"

            Literally who? And why should anyone care about her "lack of ethics" in properly (raise pinky) attributing snippets of factual information?

            1. why should anyone care about her “lack of ethics” in properly (raise pinky) attributing snippets of factual information?

              Try to believe it, folks.

              Because we’ve all committed fraud and made millions doing so! Everybody does it. Leave Ms. Crowley aloooooooooooone! Wah! Wah!

              1. “committed fraud”

                Lol committing “plagarism” isn’t “fraud” outside of the uni you flunk out. You (or CNNlol) is going to need more than that, unless you hold the copyright on one of the works she “stolelol”.

  5. Hopefully the decision in Walker today signals the beginning of a new trend where the CAFC begins sanctioning frivlous appealers. Gob knows there are a lot of them, especially in the s0 ftie w0ftie arts (e.g., folks who’s entire appeal is based on misrepresenting Mayo/Alice and asserting that it’s impermissible to evaluate the relationship of the claim elements to the prior art in a subject matter eligiblity analysis):

    Walker’s numerous mischaracterizations of clear authority in arguing the appeal also makes this case frivolous as argued. See Mor-Flo Indus., 948 F.2d at 1579. Particularly troubling are Walker’s … continued misrepresentation of clear, binding Supreme Court precedent even after the distortion was pointed out by opposing counsel. The continued misrepresentation standing alone is a very serious matter that could warrant sanctions. We do not treat such misconduct lightly for good reason.

    Let’s all cross our fingers and hope. It’s really the only way to get the vermin and b0ttom-feeders out of the system and stop wasting the CAFC’s time.

    1. especially in the s0 ftie w0ftie arts

      From the guy who is on record stating that ALL software is per se ineligible….

      From the Walker case:
      Such misconduct can include manufacturing arguments “by distorting the record, by disregarding or mischaracterizing the clear authority against its position, and by attempting to draw illogical deductions from the facts and the law.” State Indus., Inc. v. Mor-Flo Indus., Inc., 948 F.2d 1573, 1579 (Fed. Cir. 1991).

      Malcolm’s attempt itself to illogically present the Walker case as some type of support for his feelings in the ongoing discussions of patent eligibility is the very stuff of which he accuses others of.

      No real surprise there – but quite damming in and of itself (the 11 year anniversary is but one month away).

      1. ALL software is per se ineligible….

        Once you understand the prior art, the ineligibility of any software patent is easy to make based on Supreme Court precedent and basic logic.

        This is where the law is headed, as everyone knows.

        But keep your head in the sand, “anon”, and pretend otherwise. You’re a very serious person! And so is your mentor. He’s totally not a laughst0ck with the tempermant of a three year old in a wet diaper.

        1. Once you understand the prior art, the ineligibility of any software patent is easy to make based on Supreme Court precedent and basic logic.

          Prior art…? Is that like your [Old Box] already has every improvement “already in there” mantra? Or is that like the opposite of the actual words written by Congress (with the help of Judge Rich ),and passed by Congress in 35 USC 100 and 35 USC 101?

          Supreme Court precedent – you mean like the topic of a broken score board?

          basic logic – you mean like the “logic” that you typically dissemble upon (and how is your copyright on logic coming along?)…?

          First, you don’t understand the art field, let alone your “sniffing” at prior art.

          Second, the main problem with the art fields is that the Supreme Court also does not understand, and they are too busy legislating from the bench, beyond their authority to use common law to set the meaning of the word “invention” which was removed by Congress with the Act of 1952.

          Third, your ad infinitum and ad nauseum repeating of dissembling as to “basic logic” shows exactly which of us keeps their head in the sand and pretending otherwise.

          “very serious person” – poker tell for you reaching the end of your short and stale script.

          “so is your mentor” – Again, you obliquely refer to Mr. Quinn, who is not and never has been my mentor. Obviously, your 0bsess10n continues unabated.

          As to “laughst0ck with the tempermant of a three year old in a wet diaper” – you rely far too much on your number one meme of Accuse Others Of That Which Malcolm Is/Does.

          Maybe you should give up on the ad hominem (like completely) and spend some time working on some (any?) substantive points to use (and you don’t even have to go for the simple declarative sentences to do that).

          But Malcolm being Malcolm, I think you are more likely working on plans to celebrate your upcoming 11 year anniversary.

          Yay ecosystem!

  6. Oral Arguments for Macropoint v FourKites. Please Trump rollback the Fed. Cir. to before the Google appointments like Taranto. (And, do not appoint people that do not have a science degree.)

    Taranto said the following for 101:

    You strip out all the elements that are old and used conventionally and then what is left you have your abstract idea.

    The number of times a word is used in a claim is indicative of how important the word is to the claim.

    It was obvious to use the information because it was available, but if you had thought of this three years before the information was, then it would not have been.

    Etc.

    Please, Trump, remove this man. He also said in another case that it was per se obvious to simulate any human thought process (and at the same time the European Union scientist said it was ridiculous to spend money trying to simulate human thought processes as it was too hard and we didn’t know enough).

    Please remove Taranto. Please.

    1. Also,

      You only transmit and receive information. That is what it boils down to. Now, if you had included more on how you transmit or receive.

      All you have done is X–over and over again he said this.

      He also recited from his personal knowledge (apparently) what was old and known.

      So, this is what 101 does. A judge can read the claim and using hindsight reasoning decide based on their private understanding of the world whether it is eligible for patentability. This is, of course, the antithesis of what patent law is supposed to be. Find the elements in the prior art and make obviousness arguments where the arguments are based on evidence that can be refuted and the obviousness arguments can be disputed.

      Please. Remove. Taranto. Arrogant. Ignorant. Anti-patent. Anti-applying laws. Judicial activist. Unfit.

    2. Night, you have a point — strip out the old and conventional and what you have is what is new. That does not make it abstract.

      1. Ned: strip out the old and conventional and what you have is what is new. That does not make it abstract.

        Say what? Nobody is arguing that “new” equals “abstract”, Ned. We all know that you voted for Drumpf because you believed that he was going to “drain the swamp” (LOLOLOLOLOLOL) so you’re easily confused. But please try harder. Thanks.

        The issue is that you can’t create a patent eligible claim by taking old data gathering and communication technology and appending to that old technology ineligible specifics about information content. It doesn’t matter if those ineligible specifics are “new” or “non-obvious.” They’re ineligible. Field of use restrictions (“use in the context of this old technology or business practice!”) get you nowhere.

        Now you can get back to your diaper-filling, kiddies.

        1. MM, it all depends on the claim.

          If the novel subject matter in a claim to improved mousetrap is the arrangement of completely conventional elements, then that arrangement is the invention and it is not abstract.

          If the novel subject matter in a claim is a new composition of matter, that new composition of matter is not abstract.

          In contrast, if the novel subject matter in the claim is a new algorithm, or information, or law of nature, etc., then the novel subject matter is abstract because it is nonstatutory. Only then do we have to go to Alice step two. However, if I understand Night’s summary of what Toronto was saying during oral argument, all claims are abstract, and one summarizes that abstract subject matter by subtracting what is conventional. I am not so certain that Toronto was limiting his remarks to the particular claim in that case.

          1. Yes, it depends on the claim, exactly as I reminded you when you “forgot” to mention it in the first instance. It always depends on the claim which is why these endless zombie “arguments” and complaints from the maximalists (“it’s a machine, m0mmy! Waah!”) are so tiresome and p a t h e t ic.

  7. link to scotusblog.com

    The issue of the conflicts created by the justices’ stock ownership came to the forefront again today, with the announcement that Chief Justice John Roberts would no longer participate in a patent case argued on December 6. In a letter to the attorneys in Life Technologies Corp. v. Promega Corp., court clerk Scott Harris wrote that Roberts had learned that the petitioner in the case, Life Technologies, was owned by Thermo Fisher Scientific – a company in which Roberts holds 1212 shares.

    Not that there was any chance of a tie in this case but interesting regardless. Note that there was no reason this conflict shouldn’t have been caught earlier (e.g., prior to oral argument). The ownership of LifeTech was made clear in the briefing, many months ago.

    It seems like a pretty straightforward proposition that if you want to be a Supreme Court Justice, you need to dump your stuck or put it in a blind trust.

    1. Listening to Fed. Cir. arguments with Taranto and Moore. Their ridiculous arguments of 101 are 103 arguments. Ridiculous. So, now the judges say what is in the prior art according to how they feel. It really violates the Constitution.

      I am strongly in favor of removing the Fed. Cir.

      1. Just sickening listening to it. Moore making all these leaps of what is obvious or not. What existed in the prior art and what didn’t. All off the top of her head. No laws. Just a judge listens to you and decides the outcome. Please. Let’s fix this. Need to start by getting rid of the Google judges and their influence on the Fed. Cir.

        We are half a step away from impeachments because of the outrageous behavior of the judges.

        1. Taranto saying things that all this is transmitting and receiving data and you need to say how the data is transmitted (as in include a transceiver and circuitry). Just outrageous nonsense.

        2. NW: Moore making all these leaps of what is obvious or not. What existed in the prior art and what didn’t. All off the top of her head.

          Maybe you can muster up all of your br@inpower — I know it’s not much but try really, really, really hard! — and give us a single specific example of what you’re talking about. Maybe you can start with telling us what argument you’re listening to. Assuming that’s within the capabilities of your intelligence, of course. Suprise everyone!

          And just a friendly reminder: I’ve been pointing out Moore’s silliness during oral arguments on a monthly basis for several years now. And I do it for free, in my spare time. Because it’s that easy. Then again, I’m an educated adult and not a diaper-filling baby like you.

          1. Taranto is completely unfit. He now is saying that you remove everything from the claim that he says is old and then what is left is used to make an abstract idea.

            This is a witch trial. Please dissolve the Fed. Cir. or at least unwind all the Obama appointments with impeachment.

              1. Taranto was selected by Google. Was heavily anti-patent before his appointment. Was science illiterate and remains so.

                I think we should call for Trump to remove the Google appointed judges.

                1. science illiterate

                  One hardly needs to be “science literate” to reach the correct conclusion in this case (which the district court and the CAFC did).

                  One does, however, need to be born yesterday in order to avoid filling up one’s peayuke bucket while reading the claims. LOL What a j0ke.

                  Track stuff! With a computer and GPS! Wowee zowee.

                  But, hey, NW is s00per impressed and he’s a very, very serious person.

                2. Night, Taranto clerked for both O’Connor and Bork, and was a Supreme Court solicitor in the Reagan administration. (It is a wonder that the O-man appointed such a right-wing fanatic. Did he temporarily go mad?)

                  I doubt that Taranto is anti-patent. However, being a science illiterate, as you say he is, is not all that important at the appeals court level where issues of law predominate.

                  Here is his bio:

                  RICHARD G. TARANTO was appointed to the United States Court of Appeals for the Federal Circuit by President Barack H. Obama, in 2013, confirmed by the Senate on March 11, 2013 and assumed the duties of his office on March 15, 2013.

                  Judge Taranto practiced law with the firm of Farr & Taranto from 1989 to 2013, where he specialized in appellate litigation. From 1986 to 1989, he served as an Assistant to the Solicitor General, representing the United States in the Supreme Court. He was in private practice from 1984 to 1986 with the law firm of Onek, Klein & Farr.

                  Judge Taranto served as a law clerk at all three levels of the federal court system. He clerked for Justice Sandra Day O’Connor of the Supreme Court of the United States from 1983 to 1984; for Judge Robert Bork of the United States Court of Appeals for the District of Columbia Circuit from 1982 to 1983; and for Judge Abraham Sofaer of the United States District Court for the Southern District of New York from 1981 to 1982.

                  Judge Taranto received a J.D. from Yale Law School in 1981 and a B.A. from Pomona College in 1977.

                3. Taranto clerked for both O’Connor and Bork, and was a Supreme Court solicitor in the Reagan administration. (It is a wonder that the O-man appointed such a right-wing fanatic.

                  O’Connor wasn’t all that “right wing”. Not even close compared to Scalia, Roberts, Thomas or Alito.

                  Bork, of course, belonged in an asylum. Probably Taranto figured that out pretty quickly. He wasn’t there long.

                  But more to the point, Ned: NW is just tr0 lling you. That’s what he does. That’s all he does.

                4. just tr0 lling you. That’s what he does. That’s all he does.

                  Malcolm’s number one meme in high gear…

                  Again.

                5. Ned, I am aware of Taranto’s background. And yes it was anti-patent and he was selected by Google.

                  Nice you think that judges on the Fed. Cir. don’t need a science background. You are wrong. And, I am sure you know that Moore has a MS in electrical engineering from MIT.

                  Never ends with you Ned. Do you ever feel the duty to be ethical?

                6. NW: Moore has a MS in electrical engineering from MIT

                  Upthread you were foaming at the mouth saying that she should be impeached. What’s your point?

              2. Oral Arguments for Macropoint v FourKites. Please Trump rollback the Fed. Cir. to before the Google appointments like Taranto. (And, do not appoint people that do not have a science degree.)

                1. Because Donald Trump really cares about science.

                  LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

                  B-b-b-ut long form birth certificate! Kenyans! Emails! So much more important than silly stuff like “science.”

                  Yup.

                2. Night, given that your preferred science is software for implementing business methods, just what degree is preferred?

            1. unwind all the Obama appointments with impeachment

              Very serious stuff!

              Meet NW, among the best and brightest in the patent maximalist camp. One of the Red (R) Q’s favorite pompom wavers.

          2. So, Taranto saying that there is nothing more in step 2 because the information had become available and all they did was use it. So, clear hindsight reasoning on Taranto’s part. Please rollback the Fed. Cir. Trump.

            1. he information had become available and all they did was use it. So, clear hindsight reasoning

              That’s not “hindsight reasoning.” That’s the application of basic logic and a ten year year old could understand that.

              1. You do realize that hindsight reasoning IS basic logic, right Malcolm?

                It just happens to be a type of basic logic that is improper to use in the patent context.

                1. hindsight reasoning IS basic logic

                  LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

                  You just gotta love admissions like this. Thanks, “anon.” This is a gift that will give for many years to come.

                  [puts in permanent archive]

                2. Just get all of it

                  Oh, I will. Including the bit about “using available information.”

                  Can you imagine? Information about the location of stuff is available, thanks to GPS. Someone uses that information … to locate stuff!

                  Yes, it takes some real “hindsight” to see the obviousness of that. Sure it does! Totally not basic logic. Nope.

                  Except when it is.

                  LOLOLOLOLOLOLOLOL

                3. Oh, I will. Including the bit about “using available information.”

                  You are doing that “one bucket” thing again.

                  When I say “all of it,” I clearly mean all of what I stated (since your comment was directed to me).

                  The thing that you wanted to attribute to me was not me, nor was part of my statement that you were to get “all of.”

                  Maybe you want to pay attention and NOT do your (typical) “one bucket” thing.

                  That might be more “nuanced” than you can handle, but of course we won’t know until you give it a try.

                  (but I won’t be holding my breath for that, because, you know, almost 11 years have shown otherwise)

                4. You are doing that “one bucket” thing

                  You are doing that “I need to lick NWPAs filthy feet” thing again. But we know that you can’t help yourself. You two do look very very cute sitting in that bucket together! Bubbles!

                5. Clearly, I am not in that bucket – maybe you should pay better attention before you reach for your short script.

          3. MM, one of “my” cases (I worked on the reexamination) was heard last month by Moore. A lot of my colleagues listening thought that she did not understand the invention. I was surprised, however, that she got as close as she did given that she does not have experience in the field of electronics.

        3. We are half a step away from impeachments because of the outrageous behavior of the judges.

          As noted previously, this is not even close to reality.

          I “get” that that is what you desire, but please, don’t be like Malcolm and Ned and confuse your desire with reality.

          1. anon, my predictions have been very accurate. Another one is that our country is becoming unhinged by behavior like that of Taranto and the Scotus. Ask yourself who would stand for the justices if Trump said let’s just impeach the lot? My guess not many people. Not much of a hue and cry when you know the judges are acting unethically and against the Constitution. You see that is how the country falls apart. Piece by piece. Unethical act by unethical act.

            A lot of repair would be done by Stanford conducting hearings on Lemley’s behavior.

            1. who would stand for the justices if Trump said let’s just impeach the lot? My guess not many people.

              Serious question: how many suns in your solar system?

            2. “Another one is that our country is becoming unhinged by behavior like that of Taranto and the Scotus.”

              Um, the patent part of the country becoming unhinged is too tiny to even notice in the grand scheme of things brosefulopolous.

          2. And, anon, you statements should more like wishes. I think I started using the term post-fact world before anyone else including the popular media. That was years ago I said that is the way the anti-patent judicial activists were getting their way.

            Anyway, I don’t think we are at that level yet, but we are moving in that direction. Ironic that MM is like Trump and says he does not like Trump. I try to focus on behavior rather than outcomes.

            1. No doubt about it – while you tend to sound as if the sky is falling, the patent sky HAS fallen quite a bit.

              And yes, Malcolm IS the Trump of this website (and I was the first to point that out 😉 )

              1. “anon” : the patent sky HAS fallen quite a bit.

                Do tell, Chicken Little! How high was it when you first peeked in your undies and noticed those pinfeathers?

                1. Malcolm, your nigh constant behavior for almost 11 years now is FAR more alike with Trump than the mere matching of a particular phrase.

                  But clench tight your eyes to that and keep up with the mindless ad hominem – that’s all that you know how to do.

                  Yay ecosystem !

      2. By the way, NW, I save all these threads. Any and every independent comment of mine that is deleted will be re-posted. You really don’t have to waste any more of your time … unless of course you’re being paid to try to derail threads you don’t like …

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOL

            1. What does that mean Malcolm? That you agree with Night Writer that your comment was inane…?

              But hey, go ahead and keep REposting all of your CRP; as you are fond of saying, “what can go wrong with that?”

              Maybe Prof Crouch might have a word for you reposting exactly the things that he removes…

              1. Maybe Prof Crouch might have a word for you reposting exactly the things that he removes…

                Maybe. I’m happy to talk to Dennis about you and NW and your relentless tr 0lling of this blog anytime that Dennis wishes. Unfortunately for you, I’ve got all the facts on my side, and Dennis knows that already.

                You haven’t figured this out yet?

                LOL

                1. And yet again (Malcolm’s number one meme): Malcolm projects onto others (accuses) those things that Malcolm himself does.

                  Y
                  A
                  W
                  N

        1. Any and every independent comment of mine that is deleted will be re-posted.”

          Yay ec(h)osystem – quickly approaching the 11 year mark of Malcolm being Malcolm.

      1. 101 oral arguments shame our nation.

        Yes, that’s what happens when you open the gates up to patents on logic.

        Oh but wait! This is logic on s00per d00per shiny programmable comp00ters and those were invented just yesterday. That changes everything.

        LOL

        1. What shames our nation is listening to judges go through Alice step 1 and 2. And, the judges telling us things like the number of times a word is used in the claim tells us how significant the word is. Taranto is telling us what was before the patent and what it means with no evidence just how he feels about it after knowing the invention. Please impeach.

          Etc.

          1. the number of times a word is used in the claim tells us how significant the word is.

            In some cases, that’s bound to be true.

            Taranto is telling us what was before the patent and what it means with no evidence

            And you’re screeching like a baby and filling your diaper about some fever dream oral argument that you allegedly heard. You and your fever dream Taranto sound like soulmates.

            1. Wow, Taranto has absolutely no clue about technology or patent law.

              Please remove. Please. Just unbelievable. Let’s just use 101 ’cause we can’t put together a 103 argument.

        2. Yes, that’s what happens when you open the gates up to patents on logic.

          More of the same dissembling from Malcolm.

          How is your copyrights on logic coming along, Malcolm?

  8. The patent maximalists will have fun with this, no doubt:

    House Republicans this week reinstated an arcane procedural rule that enables lawmakers to reach deep into the budget and slash the pay of an individual federal worker — down to a $1 — a move that threatens to upend the 130-year-old civil service.

    The Holman Rule, named after an Indiana congressman who devised it in 1876, empowers any member of Congress to offer an amendment to an appropriations bill that targets a specific government employee or program.

    Good times ahead! Thankfully the patent system doesn’t require any Federal employees so nobody needs to worry about a target on their back.

    “What is your name and Art Unit? I think we all deserve to know whether you really are an examiner and if you are an examiner to file the proper paperwork to have you immediately removed from cases you are on as being both incompetent, hopelessly uninformed and biased.” <– Guess who? LOLOLOLOLOL

      1. Welcome back, NW! And thanks for admitting that you are paid to tr 0ll here. Of course, we all knew that already. Only a paid t0 0l like you could consistently post so much mindless and inc 0 herent g@rbage. Keep up the great work!

          1. this is you saying I am doing what you do.

            No, this is me saying you’re a hacktackular example of a human being with the IQ of a ret@rded parrot.

                1. “habitually l i e s about other commenters in exchange for money.” ???

                  What? Where did this one come from? A new allegation.

                2. Where did this one come from?

                  Because NW really, really, really cares about having solid evidence before he makes an allegation.

                  Sure he does. He’s a very serious person! Just another s00per serious patent maximalist and Drumpf luvver. But we shouldn’t talk about that correlation. Nope.

        1. And thanks for admitting that you are paid to tr 0ll here. Of course, we all knew that already. Only a paid t0 0l like you could consistently post so much mindless and inc 0 herent g@rbage. Keep up the great work!

          Classic Malcolm meme of Accuse Others Of That Which Malcolm Does.

          He deserves his very own (segregated) section of the blog where his v0m1tfest can be contained.

          1. Classic Malcolm meme of Accuse Others Of That Which Malcolm Does.

            LOL Except that NW has accused me of being a “paid blogger” on a weekly basis for the past 5 years, at least. All I’m doing is having a laugh and shoving his ridiculous b.s. right back in his cheetoh-stained face. Yes, it’s time for you to lick it off, “anon”! Nature compels. Good puppy! You two make a wonderfully cute couple.

  9. The patent blogosphere’s number one site for misinformation strikes f00l’s gold again!

    I won’t link but you really need to read the Red (R) Q’s screed on Ex parte Hiroyuki Itagaki (junk claims to an “improved” MRI machine deemed ineligible) to believe it. And the comments are comedy gold, too.

    GQ: Machines cannot be patent ineligible.

    That’s some rank incompetence right there. If you tell that to a client and they rely on you, you better have some good insurance. And get ready to be reported to the bar.

    1. The patent blogosphere’s number one site for misinformation strikes f00l’s gold again!

      Malcolm is projecting his Accuse Others Of That Which Malcolm Does mantra…

      …again.

      No wonder you are 0bsessed with Mr. Quinn.

      1. you are 0bsessed

        LOL. It’s you who are obsessed with defending your mentor and your bel0ved echo chamber. Thank you for p0pping up yet again to wave your pompoms around. So impressive.

        I presume you stand behind your mentor’s deep pronouncement about eligibility that I qu0ted. Feel free to express your views if you disagree. We all know that it’s difficult for you to challenge him directly, and we all know why. But go ahead and challenge him here, “anon.” Teach him a little lesson. You’re a very serious person!

        1. Too funny – what exactly do you consider “defending” and exactly why would I need to be defending…

          Oh, that’s right – because YOU have an 0bsessi0n and cannot help yourself about talking about an entirely different blog.

          How goes your actual “engaged discussion” over there? Or did you get busted yet again for a false email address?

          What
          A
          Schumk

          1. why would I need to be defending

            Because you identify strongly with Big Q’s narcissism and incompetence. And you luv a big tough-talking man.

            There. That was easy. Any other questions?

            what exactly do you consider “defending”

            Leaping to criticize anyone who dares point out that your hero has the intellect and emotional maturity of a five year old. But he’s a typical Republikkkan patent maximalist so that shouldn’t surprise anybody. Most people understand this. You don’t. That’s also easily explained.

            1. You do realize that both of your “answers” are not real answers, but are only thinly veiled ad hominem, right?

              You have sat in the stink of mindless ad hominem for so long that you cannot even recognize it.

              How Fn sad.

  10. Today’s CAFC opinion in Sonics Technology is a real howler. The undefined term “Visually negligible” deemed definite and not purely subjective because …. human eye! Deep stuff. The CAFC really wants 112 to remain a toothless j0ke.

      1. that might be how posita thinks of the term

        What exactly is “that”? Can you be just a tade more definite? Golly, I hope so.

      2. how posita thinks

        Why should this be the standard when it’s not “posita” that is looking at the image?

        This is functional claiming without a definition of the function.

        1. “Why should this be the standard when it’s not “posita” that is looking at the image?”

          Because that’s the lawl of claim construing. And you have to construe the claim first. As in before you get around to judging just how “completely subjective” something is you have to consult with what posita thinks the term even means in the first place to determine if the term should be construed as objective or subjective in the first place. A duhr?

          Look man, maybe they messed up. It happens. On the other hand, maybe they didn’t mess up. The important thing is that the standard didn’t change. I can say this much, you would be unlikely to draw a 112 2nd with that phrase in my art unless you used it in a blatantly and unquestionably subjective way (as in you said as much in your spec).

          1. “Why should this be the standard when it’s not “posita” that is looking at the image?”

            Because that’s the lawl of claim construing.

            And round and round you go.

            Try to address the issue here: a claim recites a functional limitation wherein the the function describes the inherently subjective impression of a consumer of the claimed product.

            There is no “law” that says that we substitute the POSITA’s subjectivity for the consumer’s subjectivity in that instance. Moreover, the term at issue isn’t a term in the art at all.

            Look man, maybe they messed up. It happens.

            Thanks for your deep insights.

            1. You keep blathering about “functional”. I haven’t read the whole case nor am I going to. But I do not see anything “functional” about “visually negligible”. If there is something about that then fine, I’ll let you sit and stew about how outrageous this functional limitation was allowed to be. I really don’t care about isolated one off cases so long as the standard remains correct. Mistakes will happen, but the standard matters.

              “There is no “law” that says that we substitute the POSITA’s subjectivity for the consumer’s subjectivity in that instance. ”

              I did not say you substitute POSITA’s subjectivity for anything. I say rather that we must determine what the term would mean to POSITA, for the purposes of administering the patent system by way of drafting and issuing a patent claim, and that it seems likely to mean something objective (rather than subjective) in this instance.

              “Moreover, the term at issue isn’t a term in the art at all.”

              Which you know from your extensive experience in this art? Because I would say it is an obscure term in my art. And in many other arts. Just off the top of my head: metal working, vehicle painting.

                1. “That’s because you haven’t read the case and you don’t realize that the adjective is part of a longer clause that describes a desired ”

                  Then why didn’t you post that you literal ta rd? Jesus, you just come in, take a nonsensical dump and expect everyone else to clean up after you.

              1. I haven’t read the whole case nor am I going to.

                LOL

                “the term at issue isn’t a term in the art at all.” Which you know from your extensive experience in this art?

                LOL Maybe read the case next time you pop off. Have you learned to relate to women yet, by the way? Or are you still struggling with that? Hint: it helps to know what you’re talking about before you open your mouth.

                do not see anything “functional” about “visually negligible”.

                That’s because you haven’t read the case and you don’t realize that the adjective is part of a longer clause that describes a desired (and subjective … and undefined) result/function.

                we must determine what the term would mean to POSITA

                No, “we” don’t have to do that when the term refers to the subjective effect on a consumer. That would make no sense at all.

                1. “That’s because you haven’t read the case and you don’t realize that the adjective is part of a longer clause that describes a desired ”

                  Then you should have posted that longer clause literal ta rdbreath.

  11. McConnell: “The American people simply will not tolerate” Democrats blocking Drumpf’s SCOTUS nominee

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

    Shameless hypocricy at its absolute finest.

      1. Not true at all. Tumplthinskin was outvoted by 3 million people and, in addition to them, there’s a zillion people that didn’t vote who would have zero problem with the Dems blocking every one of the maniac-elect’s incredible cr@ppy nominees for four years or longer.

        The Donkeys don’t have the power to mess with SC nominees like the Elephants had.

        That assume that the Elephants will change the rules.

        same as past Donkey CRP

        LOLOLOLOLOLOLOLOL Except not at all. But go ahead and regurgitate your false equivalence and fake news. You’re a very serious person! You voted for Bernie Sanders as a “protest.” S00per serious stuff. Smell the courage.

        1. Your spewing from your script makes even less sense than typical.

          Try to compose yourself and stop frothing before you fire away at your keyboard.

        2. That assume that the Elephants will change the rules.

          Not at all.

          Please tell me you understand why the Elephants were able to play the games on Obama and why the Donkeys simply cannot play those same past games as the Elephants did.

          Hint: it has to do with the number of people elected to two different bodies that make up Congress.

          It has zero to do with any notion of the Elephants now changing any rules.

            1. Why should I do the math for what you continue to fail to understand?

              Especially when you don’t believe the math I have done in other areas? (Hint: think simple set theory, or any of the multitude of “math” done for you and for which you never seem able to acknowledge, let alone engage, on the counterpoints presented?

              You should do the math and see for yourself.

              1. Why should I do the math

                To prove that you understand the process under the current rules. You seem to have a poor grasp and it’d be instructive for you to see the specific point at which you are failing.

                So show everyone the math.

                1. The onus is on you as you are the one injecting the whining about the Elephants (and you are the one showing that you don’t understand the power base they used to – stu pitly – not act on any Supreme Court nominees.

                  You are doing that “let someone else make the substantive arguments” thing again.

                  You want to whine? Then back it up. Else, kindly stfu.

                2. The onus is on you

                  No, it’s not. I’m not the one asserting that Democrats can’t “mess with” the nomination just as the R’s did (absent the R’s changing the rules). That would be you.

                  So show us the math. Show us why the Dems can’t “mess with” nomination, “anon.”

                  Go ahead. You’re a very serious person! Show everyone.

                3. You point out my response to YOUR whine…

                  But thanks for proving my point (even if you cannot recognize what you did)

        3. “Not true at all”

          Tell it to the legion of right wing congress critters we send to congress in 2 years. Just to take a big sht right on you and yours MM.

      2. I know it’s hard for you to believe, 6, but your maniac-elect is historically unpopular and he’s only going to become less popular. With any luck, he’ll take the entire psych 0tic ultra-big0ted mis0gynist Repukkke party down with him (but wait! gerrymandering and voter suppression may save them yet again — how wonderful!).

        Own it.

        1. “but wait! gerrymandering and voter suppression may save them yet again — how wonderful!”

          I can’t wait for your tears! Maybe they’ll get that last statehouse, get their acts together, and commence decimating on your “living” constitution?

          “historically unpopular ”

          You mean like Hilldawg?

      3. I hate to agree with MM, but it is not true. There are 1,500 court openings due to the do-nothing, obstructionist GOP. That shouldn’t happen, ever, regardless of which party has the majority. It’s truly sic kening, and this will come back to bite the party in charge. (As will repealing the health care law and replacing it sometime in the future, maybe, and that it looks like we’ll be on the hook for a border fence no one wants.)

        On a more serious note, why are we discussing politics on a board that’s for IP law? Why are these posts allowed? (Including mine, which should be removed.)

        1. why are we discussing politics on a board that’s for IP law

          Law and policy are inherently intertwined. IP law is no exception.

          The manic-elect probably doesn’t have a coherent IP policy. His policy will either be the last policy someone whispered into his ear, or it’ll be the policy that provides him with the most gratification, most quickly.

          Maybe one of the professional tr0lls out there will sue the maniac-elect with a junky s0ftware patent. That might lead to some interesting “policy” ….

          1. Law and policy are inherently intertwined. IP law is no exception.

            As explained previously (in short declarative sentences that you are always on about), patent law is a subset of law and your political rants have nothing to do with patent law.

            Sure, they have soemthing to do with the larger entity called “law,” but that simply does not make your rants probative of the topic of this (and nearly most all other) threads on a patent law blog.

            As also pointed out previously, the byline to this web site would need to change if your “logic” was adhered to.

            Or maybe you could find a more appropriate sandbox to CRP in….

        2. “There are 1,500 court openings”

          LoL. Assuming you mean federal judicial vacancies, the actual number is less than 8% of that 1500…

          And somehow Mr. Obama has managed to seat as many judges as Mr. GW Bush, despite the “do-nothing, obstructionist GOP”.

          But hey, don’t let facts get in the way of good storytelling.

    1. Just Elephant CRP / same as past Donkey CRP.

      Besides, this is mere posturing, as the Donkeys don’t have the power to mess with SC nominees like the Elephants had.

      1. this is mere posturing

        Tell it to Mitch McTurtleface. He felt compelled to hold a press conference to discuss this “posturing.” And he repeated his false equivalence b.s. about the “Biden rule” and spewed more b.s. about Schumer’s 2007 speech. Like I said above: shameless.

        Try to remember as the country swirls down the t0 ilet drain: Garland was no leftwinging jurist, not by a long shot. Republikkkans loved him, right up until the moment he was nominated by that black guy from Kenya.

    2. Whew! Since you mentioned the other day that you take the train to work, I’m glad to see you were apparently not among the 102 (according to the last report I saw) injured by the highly subsidized LIRR derailment at Atlantic Abinya in Brooklyn yestadee.

      Change hea fo da D da R da two, da tree da foa da five da Q…pretty much da whole friggin alfabet. Next stop Dekalb, stan clea a da closin daws plez” Bing Bong

  12. link to bostonglobe.com

    Ramsey cautioned that fully autonomous cars are nowhere near ready to conquer the roads.

    Even if Ford fulfills its pledge at last year’s Consumer Electronics Show to start selling such a car by 2021, Ramsey said that the vehicle would probably sell for around $100,000, largely because of the expensive computers, sensors, and software needed to make it work.

    Clearly we need more “how to drive a car” patents so the ultra-rich can have their fancy cars! And tons of public subsidies, including their very own special shiny lanes on every highway! These are very important people. They need to read the Wall Street Journal and they can’t sit in traffic or sit on a train with the riff-raff.

    in Boston, nuTonomy Inc. delayed the first day of testing its self-driving car because of bad weather.

    Thankfully it hardly ever rains or snows in the United States. LOL

    1. Oh hush, a “driver-assistance” package suite of sensors and tech was said to be available at like 15000k and would be a huge safety feature. Should be available to the everyman, or at least every middle class person. And should save countless lives. It might be the case that it takes till 2030 or so for everyone to have their own autonomous robo-driven vehicle but that’s fine. The more innovations (and patents thereon) which happen the faster we’ll be getting to that.

      1. The more …patents … which happen the faster we’ll be getting to th[e point where everyone has their own autonomous robo-driven vehicle].

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

        Have you been living under a r0ck for the past twenty years? I’m still waiting for a GUI for my TV that doesn’t s*ck flaming b@lls of p i g shirt. Is that because “not enough patents”? Give us a break already.

        1. I’m not sure what your TV GUI problems are specifically (maybe you’re still using cable TV and their default “gui” like a dinosaur?) but what I said about the cars be true old timer. There is no “cable” company dictating from on high just how good your auto will become as there is with your default cable TV “GUI”.

          But what don’t you like about your TV GUI? There’s like a million and one solutions to that issue if you’re not a dino, and plenty even if you are. And a gazillion more if you’re not above going a bit, ahem, outside the lawl.

          I did see one “solution” for dinos that takes your most watched channels and makes them the first ten or whatever so you can “flip” old school style right through your top 10 super ez. I think it worked for cable. Can’t get much ezier than that for a dino.

          1. what don’t you like about your TV GUI?

            Everything? The emphasis on shoving “recommended” cr@p in my face versus a flexible means for displaying as much available content choices in a coherent manner on a screen as possible?

            I know, I know: it’s like rocket science! S00per d00per techn0 stuff. Maybe in 2050 or 2060 we’ll get around to that.

            But robot cars will be the norm and robot judges will be deciding in cases in 20 years! Greg and Company told us so.

            1. That doesn’t sound like “TV”. That sounds like amazon and netflix. None of my “TV” has a “recommended” tab at all.

              As to netflix and amazon, yes they’re doing that, and they’re doing it for a reason. It isn’t because they can’t give you a GUI like you want, it’s that they choose not to because it is in their best interests (in their view) to not do so. If you don’t like them, cancel your sub and tell them why.

              Though FYI, amazon and netflix both have ways to put content up somewhat like you’re saying in each sub-category. Or at least they did, I haven’t checked in awhile.

              1. That doesn’t sound like “TV”. That sounds like amazon and netflix.

                Do you know the difference between a television and a content source? Apparently not.

                It isn’t because they can’t give you a GUI like you want, it’s that they choose not to because it is in their best interests (in their view) to not do so

                LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

                Now ahead and tell me the story about “more s 0ftie w 0ftie patents makes the world better!” again.

                LOLOLOLOLOLOLOLOLOLOLOLOL

                1. “Now ahead and tell me the story about “more s 0ftie w 0ftie patents makes the world better!” again.”

                  I never said softiewaftie patents make the world better. As you know, I’m rather on the fore of opposing such. This was about cars as a whole industry brosefulous, even if they have some software in them.

                2. This was about cars as a whole industry brosefulous, even if they have some software in them.

                  No, that’s not what it was about. Try some reading comprehension next time. Maybe start by taking off that silly pillowcase with the eyeholes cut in it.

                1. Hey I agree that people put up with too many ads these days. There isn’t much I or you as just two people can do about that though. You’d have to get the whole of Merica to find those services not worth their while to put pressure on them.

                2. none of that has much to do with safety features for cars.

                  Safety features? The discussion is about the $100,000 “fully autonomous” cars that Ford is going to market to the ultra wealthy.

                  But maybe they can lower the price somewhat by making the experience shirtier for the merely rich. Maybe Ford can decide not to license the best “use logic to parallel park your car” patent. Instead they can use shirtier logic. You can have a “fully autonomous” robot car that drives like an 80 year old half-blind dude for, like, $10k less. Nobody can predict any problems with that.

                3. “The discussion is about the $100,000 “fully autonomous” cars that Ford is going to market to the ultra wealthy.”

                  And then I brought up the 15k safety driver assistance package. To which you replied: but but but muh GUI!

                  Look brosef, you can sit and h8 on automobile tech all you want. There’s going to be plenty of patents, there’s going to be plenty of safety, and yes, there’s going to be plenty of cars for rich people and maybe some robo chauffeurs that maybe only rich people get to have (maybe only for a time, or maybe GASP forever! Kind of like real life chauffeurs). I honestly don’t understand why your classism (and probably your RAYCYSM) propels you to give one fck about the whole topic.

                4. “But maybe they can lower the price somewhat by making the experience shirtier for the merely rich. Maybe Ford can decide not to license the best “use logic to parallel park your car” patent. Instead they can use shirtier logic. You can have a “fully autonomous” robot car that drives like an 80 year old half-blind dude for, like, $10k less. Nobody can predict any problems with that.”

                  Legislation will ensure much better safety than we have now thx MM. I’ll take marginal improvements over nothing at all thx Mr. let people keep killing each other on the roads “accidentally”.

                5. 6: you can sit and h8 on automobile tech all you want. There’s going to be plenty of patents,

                  There already are. And every one of them that covers vaporware is ineligible j@nk.

                6. 6: yes, there’s going to be plenty of cars for rich people and maybe some robo chauffeurs that maybe only rich people get to have (maybe only for a time, or maybe GASP forever! Kind of like real life chauffeurs).

                  Serious question: how many “limo only lanes” are out there right now on our nation’s expressways, paid for by taxpayers so rich people can read their paper on the way to work?

                  Just trying to keep you focused on the issues, 6. I know the temptation to kick up dust is hard for you to resist.

              2. It isn’t because they can’t give you a GUI like you want

                Really? You’ve done the legal analysis on all the GUI utility and design patents already?

                Very impressive, 6!

        2. First, do this:

          link to pcworld.com

          Then, plug your PC into your Big screen TV via a USB etc. cord to have the Big Screen just as part of your normal computer monitor setup. Then, play the TV channel (or recording thereof) on your big screen TV that is just another monitor in your computer system. Change your volume output to the TV as well if you want (or if you have a sound system pipe it through there through the computer). Easy peasy once you get it setup.

          I’m not sure what better “GUI” there could be for TV signal. Other than maybe a program that would let you see the entire breakdown of shows playing at the time on your screen (or computer screen). I’m sure they have that somewhere, would just have to look around.

          1. I’m sure they have that somewher

            Right. A GUI for selecting available content that isn’t t0tal cr@p is “somewhere.”

            But it’s not where it’s supposed to be.

            You can disinfect your lethal burger meat, too, using chemicals that you obtain “somewhere.” Magically, society has somehow figured out a way to make that easier for everyone. And — wowee zowee! — it didn’t take 500,000 patents.

  13. OT but just in case folks are wondering what maniacal powerhungry n-tsanity looks like:

    Rep. Steve King (R) Iowa: I have introduced this legislation … to look ahead and bar the Supreme Court from citing Obamacare in forthcoming decisions as binding precedent.

    Because the Supreme Court doesn’t respect the separation of powers. Or something. LOL

  14. OT but rehearing en banc granted in WI-FI ONE, LLC v. BROADCOM CORPORATION

    (3) The Appellant and Appellee are requested to file supplemental briefs. The briefs should address the following question:

    Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803
    F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent
    owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?

    1. Fyi, the Achates decision is the subject of a pending petition for cert at the Supreme Court … pending for about a year now?

      1. Slaffles,

        I think Malcolm wanted something other than enforcement of the statute.

        (Something about separation of powers… 😉 )

    2. Achates represented the high watermark in Federal Circuit support of the PTO/Justice department’s extremist views on the ability of the PTO to deal rough justice to patent owners without court review.

      1. Exactly where in that decision Ned did the Congress passed NO to the appeal of the institution decision run afoul of what Congress so plainly stated?

        Or are you arguing something else and confusing yourself again?

      2. I like the way you are using the past tense. From your lips to God’s own ears.

        wanted to sing “Ding Dong the Witch is Dead” when I saw that they are reconsidering Achates en banc, but then I decided that it is premature to break into song. Here’s hoping, however, that Achates is effaced from the books.

        1. Greg (and Ned),

          Your aim continues to be off – the courts are merely applying what Congress has written.

          The quicker you realize this, the quicker you can come to grips with the (Constitutional) misstep by Congress in setting up a mechanism that takes sticks from the bundle of property rights that is a granted patent AT the institution decision, with that very same institution decision materially affecting the worth of the property (to which the sticks belong) AND that institution decision not being appealable (placing it at the whim of the political Executive branch mechanism).

          Getting upset at the courts will only keep you from understanding the much larger dynamic in play.

  15. Of course there are some claims so unclear that they defy any interpretation at all. That would render moot any debate about whether any particular construction of the claim is “reasonable” or “unreasonable”.

    When the EPO gets one of those (and at least in the business methods and “do it on the internet” art fields coming out of the USA) it is not so seldom that this happens) it informs Applicant that it is not possible to search the subject matter of the aforesaid claim.

    I wonder, is it ever the case that in the USA a claim is deemed to be so unclear as to defy construction and be impossible to search?

    Incidentally it was anon at 3.3.1.1.1 (2nd para) that set me thinking. You see, I haven’t the foggiest idea what he is burbling on about. And one prtesumes he is trying his hardest to get his precise meaning across (unlike those claim drafters who are deliberate and calculating in their obfuscations).

    1. (and at least in the business methods and “do it on the internet” art fields coming out of the USA)

      LOL – no bias presented there, eh MaxDrei…?

    2. I haven’t the foggiest idea what he is burbling on about

      You have – as ever – the mind unwilling to understand.

      1. That’s your “bias” anon. My point is the banal one, that writers find it harder than their readers, to spot the ambiguities in what they write. You yourself are nbo exception to that General rule.

        It will not have escaped your attention that, down at 3. in this thread, Ned Heller complained of USPTO incomprehension of his claims just as I was pointing out that it is the writers of claims who are most likely to be unhappy about the “reasonable” constructions that USPTO Examiners are busy putting on them.

        1. That’s your “bias” anon.

          My turn: not bias, just reporting the facts.

          My point is the banal one,

          Isn’t it always? But hey, keep throwing that CRP against the wall to see what sticks.

          that writers find it harder than their readers, to spot the ambiguities in what they write.

          Never claimed otherwise.

          You yourself are nbo exception to that General rule.

          Never claimed otherwise.

          However, I did point out that examples presented on this board ARE routinely found unreasonable by those practitioners who did not write the samples.

          And yet, your (in)ability to comprehend that straight forward statement is joyfully embraced by you as you attempt to disrespect the particular innovation fields of business methods and software.

          As usual.

  16. “When is the PTO claim construction reasonable?” When the PTO provides comity to a co-equal branch – full faith and credit – , acts in harmony with the Federal Courts, and applies administrative estoppel when issues have already been fully litigated. So, about 0% percent of the time.

  17. There is an interesting issue re the small % of IPR Board decisions that do get remanded like this. Namely, if the case is not appropriate for the Board to simply reverse itself for a reversed legal interpretation without any further discovery, evidence or argument, then how much of that should they allow? I gather that there are no specific rules for that? Could the reversed party appeal from a Board refusal to adequately re-open the IPR for needed additional facts or fact dispute resolutions?

    1. Paul, if I were on the board, I would ask the parties whether they wanted to further discovery or expert opinion or briefing or whatever before proceeding further.

  18. What a ridiculous pile of cr@p. D’Agostino is a quintessential tr0ll. At the end of the day, any competent attorney can take these claims and flush them down the t0i let in two seconds.

    1. A method of performing secure credit card purchases, said method comprising:

    a) contacting a custodial authorizing entity having custodial responsibility of account parameters of a customer’s account that is used to make credit card purchases;

    b) supplying said custodial authorizing entity with at least account identification data of said customer’s account;

    c) defining a payment category including at least limiting purchases to a single merchant for at least one transaction, said single merchant limitation being included in said payment category prior to any particular merchant being identified as said single merchant;

    d) designating said payment category thereby designating at least that a transaction code generated in accordance with said payment category can be used by only one merchant;

    e) generating a transaction code by a processing computer of said custodial authorizing entity, said transaction code reflecting at least the limits of said designated payment category to make a purchase within said designated payment category;

    f) communicating said transaction code to a merchant to consummate a purchase with defined purchase parameters;

    g) verifying that said defined purchase parameters are within said designated payment category; and

    h) providing authorization for said purchase so as to confirm at least that said defined purchase parameters are within said designated payment category and to authorize payment required to complete the purchase.

    There is nothing happening here except abtract data processing. “Designating” stuff? “Defining” stuff ? “Verifying” stuff? “Generating a code”? “Authorizing” stuff? Classic ineligible cr@p.

    What an incredible waste of time and money. Expunge these b0ttom feeders from the system.

    1. The system and method of the present invention incorporates the advantage of consummating the purchase by the customer through the selection of any one of a plurality of predetermined payment categories.

      Setting aside the mind-numbingly l@meness of the phrase “incorporates the advantage”, the recited “advantage” here is about as old as civilization itself.

      The US patent system is a j0ke, and it’s a j0ke mainly because of b0ttom-feeders tr0lling with b@sement level “do it on a computer” g@rbage like this.

    2. “There is nothing happening here except abtract data processing. “Designating” stuff? “Defining” stuff ? “Verifying” stuff? “Generating a code”? “Authorizing” stuff? Classic ineligible cr@p.”

      And in every drug manufacturing claim there is nothing going on but abstract stirring, heating, mixing, filtering and precipitating.

          1. Les and the entire s 0ftie w0ftie b0ttom feeding cr0wd: Defend every junky “do it on a computer” claim by screeching “Everything is abstract!”

            For more laughs, check out the claims at issue in the incredibly junky patent that barely survives to live another day in In re Marcel van Os. The CAFC was apparently too embarassed by the claims to type them out but the summary says all you need to know:

            The ’470 application is directed to a touchscreen interface in a portable electronic device that allows a user to rearrange icons. Claims 38 and 40, the only independent claims at issue, both recite the initiation of an “interface reconfiguration mode” to permit icon rearrangement. Claim 38 distinguishes among a “first user touch” to open an application, a longer “second user touch” to initiate the interface reconfiguration mode, and a “subsequent user movement” to move an icon. Claim 40 does not recite a touch to open an application, but recites that its “first user touch of at least an established duration” initiatesthe interface reconfiguration mode and allows movement of an icon “in the absence of a further user input.”

            “Interface reconfiguration mode.” Whoohoo! S00per d00per techn0!

            1. And MM says every method claim is directed to an abstract idea because it include words that he has seen before, or is indefinite when it includes words he has not seen before.

  19. If I remember correctly, the MPEP itself expressly says that one examiner’s opinion is not binding on another examiner.*
    Also by long-standing written policies, PTAB decisions that are not by Expanded Boards, or otherwise designated as precedents, are not – just like all the non-precedent decisions of the Fed. Cir.

    *For that matter, where would non-attorney LEGAL conclusions be binding in any proceedings other than in some binding arbitrations?

    1. If I remember correctly, the MPEP also says that nothing in the MPEP is law or binding in anyway. A similar custom seems to apply to agreements made in Examiner interviews and is explicitly asserted with the promulgation of the various Examination Guidelines.

      1. The only reason for EVER citing the MPEP is if one wants to old the hand of an examiner and cite something that they might need to follow.

        All else, use the law.

    2. Then PTAB needs to stop rubber-stamping the Examiners’ work and CAFC needs to stop giving it Substantial Deference.

      And the Examiners need to take and pass the Agents Exam instead of the Examiner’s Test.

      How many of the questions on the Examiner’s Test are about performance counts, vacation policy, and where are the bathrooms?

    3. I am not sure what you meant by PTAB not being [binding]. PTAB decisions are “law of the case” for an application and its children, see 706.03(w) Res Judicata.

      1. Yes, but note that MPEP 706.03(w) does not contradict “one examiner’s opinion is not binding on another examiner.”
        PTAB decisions not indicated to be precedents are not binding precedents even as to other PTAB panels, and that is not the same as “law of the case.”

  20. All the brainiacs with their heads in the clouds in the legal field need to start accepting the now rather clear writing on the wall. The whimsical “BRI” from yesteryear needs to be explicitly recognized as an administrative tool of the office to make applicants say what they’re trying to claim more clearly as a matter of administration. Nothing more, nothing less. And if it is used other than in this manner, it will be held unreasonable, if it is used in this manner it shall be held reasonable. And, in addition, the interpretation needs to obviously be at least a little bit objectively arguably “correct” or else it also is held unreasonable.

    That’s how to solve the BRI conundrum and end the confusion on this whole topic that rears its head every other day. Nothing else is ultimately administratively acceptable and at the same time ends the confusion.

    Bank on it happening within the next few decades.

    1. nd, in addition, the interpretation needs to obviously be at least a little bit objectively arguably “correct” or else it also is held unreasonable

      What does “little bit correct” look like?

      The same as “a little bit pregnant”…?

      😉

    2. I do a lot of prosecution now. And, rarely is BRI a problem. But, every once in a while it is a problem and it very hard to get rid of when it is a problem.

      I think functional differences is the key.

    3. Interesting comment from 6. It reminds me of the olden days, when Examiners at the EPO were required (in their capacity as ISA and IPEA) within 28 months of the priority date to issue IPER’s on PCT cases filed at the USPTO (acting as the RO).

      Surprisingly often, they found themselves obliged (under the PCT) to object that the claim was not “clear”.

      This upset the drafting US patent attorney, resulting relatively often in acrimonious correspondence prior to issue of the IPER.

      The EPO asked itself, how can I take the heat out of the correspondence? The answer: never suggest to the drafting attorney that his claim lacks clarity but, instead, construe the claim broadly and, on the basis of that broad construction, discover a lack of novelty.

      Then, if Applicant wanted a positive IPER, the solution was simply to amend the independent claim, to clarify its meaning.

      An elegant “squeeze” on the Applicant, exactly as 6 now reports from inside the bowels of the USPTO.

      So, as Night informs us, good drafters ought seldom to have a problem with BRI.

      1. MaxDrei – under ideal circumstances, sure.

        But those ideal circumstances would mean that there was no such thing as Broadest Unreasonable Interpretation.

        However (if you have been paying attention), there is often unreasonable interpretations.

        1. Often? No more than that? Oh come on! It’s much more common than that, isn’t it? That is, if you go on what claim drafters and their clients report here about what happens in the PTO to their own precious and lovingly drafted claims.

          I mean, like, every time a PTO Examiner construes such a claim wider than its drafter has in mind.

          Not a good idea, to base one’s assessment of what is “reasonable” on what claim drafters think of the interpretations PTO Examiners put on claims they themselves have drafted.

          1. Your point that there might be bias is a sound one, MaxDrei.

            Of course, that bias cuts both ways – and then we look at examples on the discussion boards here and there are still a high level of unreasonable views – as noted by practitioners on items that are not theirs and thus would not have the bias you indicated.

    4. Well, 6, I have several appeals in the works because your colleagues do not seem to understand the purpose of BRI as you state, but feel entitled to construe the claim to read on the prior art they just found regardless of reasonableness. This has been a pet peeve of mind ever since In re Morris.

      In Morris, the position the PTO took to the Federal Circuit was that BRI allowed them to ignore the specification. We actually won on that point, but still lost the case in a decision those on our side still find baffling.

      1. “Well, 6, I have several appeals in the works because your colleagues do not seem to understand the purpose of BRI as you state”

        It doesn’t matter if they understand it. If you understand it then you can undercut their entire rejection (and get the rejection removed prior to board appeal) by amending the language to more closely track what you’re trying to claim. And, get them on the phone and ask them if you think you could do any better, using the English language, to be clear about what your trying to claim as opposed to the prior art. Once they say “no”, then get the spe to reverse. The end.

        And yes Ned, they don’t understand it this way, because the courts and the higher-ups haven’t made this clear that it has to be this way yet. They need to act as one whole body to do so.

  21. It’s refreshing to see the PTAB get smacked down for reading words right out of the claim. (I’m sure they’ve been taking their cues from SCOTUS, which dispenses with the claims altogether.)

    As to PTO estoppel: there ought to be. It already exists in the context of restriction requirements and section 121. If the PTO, in the form of the examiner, says a claim term means something, the PTAB shouldn’t be allowed to renege on that. Accused infringers will still have the opportunity to challenge the PTO’s interpretation in court proceedings, so it’s not as if they’d be denied due process by the imposition of such an estoppel against the PTO.

    1. Why should there be PTO estoppel? The IPR is an adversarial proceeding and prosecution is not; if the PTAB is convinced by a litigant on some matter, why should it be bound to what was found when only the applicant was involved?

      1. It is (painfully) obvious Mr. Snyder that you have never been involved with obtaining a patent.

        You might not want to comment on things that you are clueless about.

          1. I am merely going by the evidence you provide – if I am wrong that then merely reflects how awful your understanding of the patent world is.

            In other words, that you say the things you do AND have some experience obtaining patents is even worse of a reflection on you.

            The very opposite of “impressive.”

            1. Your comments are like Alice claims; ideas about ideas, lacking any useful content.

              “You are wrong” is sterile without pointing out what is correct, but then again, that’s not really the point, is it?

                1. Ah, yes, thee olde “everybody does it” excuse! Except that “anon” does it while sitting astride his awesome white horse which so totally awesome and impressive. He’s a very serious person and totally not a hypocrite!

      2. Why have res judicata, issue and claim preclusion at all? Because all litigation, even patent litigation, must eventually come to an end.

        1. The CAFC essentially treats every new filing as virgin territory anyway. The district courts are like NFL pre-season games….

      3. If you check CAFC opinion on collateral estoppel, an adversarial proceeding is not required as is stated in Slesinger v. Disney, 2011-1593.

        Collateral estoppel requires four elements: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party.

        One could argue that only the applicant was fully represented in the previous ex parte PTAB proceeding, but because BRI was used, implicitly the other party was represented because otherwise BRI was not applied in the previous proceeding or the other party now is trying to persuade the PTAB to apply an unreasonable interpretation.

        1. PG,

          If I understand you, your statement boils down to the use of BRI invokes collateral estoppel for the Office because it is a maximum “reasonable position” against the patentee.

          Further, anyone else is also serves as proxy to the collateral estoppel because any other “view” – by definition – must be unreasonable.

          Is that what you are saying?

          1. IANAL, I wrote what I find in the CAFC discussion of collateral estoppel. Tell me what it means. Click here for the full case. The critical section is found on pp 6-7. The CAFC is not the only federal appellate court that fails to include a requirement for prior adversarial proceeding in the invocation of issue preclusion.

          1. It certainly seems that Congress equated the two with the “options” introduced with the AIA.

            Of course, as Ned will point out, the vehicles introduced in the AIA seem to remove “standing” as a component.

          2. Litigating is contesting or engaging in legal proceedings. An ex parte PTAB hearing is just as much litigation as an inter partes PTAB hearing.

  22. Dennis, it is an interesting question whether the construction of an examiner is binding upon the PTAB. But we all know what the answer is to that question given that there is no real due process accorded patent owners in IPRs. We might be able to get that out of the Federal Circuit, but the PTO is on mission as any who have been involved in the process know. The whole procedure is set up in a manner that is unfair to patent owners, and the PTO has done nothing to truly address the unfairness of what is going on.

    Interestingly, the Supreme Court was very much concerned about the independence of the “PTAB” in Brenner V Manson if one listens to the oral argument in that case. They were concerned with whether the decision of the Board could be petitioned to the Supreme Court. They were of the view that because the PTAB was part of the patent office that it was under the control of the Commissioner, basically representing the jurisdiction of the commissioner as opposed to some independent jurisdiction.

    It is an interesting question given that the decision of the PTAB is final, and the result as collateral estoppel effect and can result in cancellation of claims. Why must a person dissatisfied with the judgment of the PTAB wait for a decision by the Federal Circuit before taking is adverse judgment directly to the Supreme Court? (They were considering here the Constitution and not the statutory scheme itself.)

Comments are closed.