by Dennis Crouch
Douglas Dynamics v. Meyer Prods (W.D. Wisc 2017) [2017-04-18 (68) Order re post IPR invalidity defenses].
After Douglas sued Meyer for infringing its U.S. Patent No. 6,928,757 (Snowplow mounting assembly), Meyer petition for inter partes review — alleging that several of the claims were invalid. Although the “director” iniated the review, the PTAB eventually sided with the patentee – reaffirming the validity of the claims.
Back at the district court, Douglass asked the court to apply the estoppel provisions that of Section 315(e)(e):
The petitioner in an inter partes review … that results in a final written decision under section 318(a) . . . may not assert . . . in a civil action arising [under the patent laws] . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
35 U.S.C. § 315(e)(2). The question for the district court here, was the scope of estoppel – what constitutes grounds that were “raised or reasonably could have [been] raised” during the IPR. Here, the court took a position for fairly strong estoppel:
If the defendant pursues the IPR option, it cannot expect to hold a second-string invalidity case in reserve in case the IPR does not go defendant’s way. In many patent cases, particularly those involving well-developed arts, there is an abundance of prior art with which to make out an arguable invalidity case, so it would be easy to have a secondary set of invalidity contentions ready to go. The court will interpret the estoppel provision in § 315(e)(2) to preclude this defense strategy. Accordingly, the court will construe the statutory language “any ground that the petitioner . . . reasonably could have raised during that inter partes review” to include non-petitioned grounds that the defendant chose not to present in its petition to PTAB.
In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir.), the Federal Circuit wrote in dicta that no estoppel should apply to grounds that were petitioned, but not instituted. The Wisconsin court here suggested some potential problems with that outcome, but decided to follow the CAFC’s lead, writing:
So until Shaw is limited or reconsidered, this court will not apply § 315(e)(2) estoppel to [petitioned but] non-instituted grounds, but it will apply § 315(e)(2) estoppel to grounds not asserted in the IPR petition, so long as they are based on prior art that could have been found by a skilled searcher’s diligent search.
What this means for the defendant here is that the only 102/103 arguments that it gets to raise are ones already deemed total failures by the PTAB – and thus are unlikely winners before a district court.
= = = = =
Of some importance, the PTAB’s final written decision was released in November 2016. For estoppel purposes, that final decision is all that is required for estoppel to kick-in. However, the case currently on appeal to the Federal Circuit — already giving the defendant its second bite at the apple.
= = = =
A contention that that claims lack eligibility would not be estopped under 315(e). However, thus far the defendant has not alleged that the snow plow assembly is an abstract idea – despite the fact that plowing snow may be done with a pencil pushing a slip of paper, and the elements of the claim are each individually well known in the art.
Claim 1. A snowplow assembly comprising:
a lift frame;
a trunnion pivotally connected to said lift frame for pivoting movement about a transverse, horizontal axis;
an A-frame having a plow blade on a forward end and being pivotally connected on a rearward end to said trunnion for pivoting movement about a longitudinal, horizontal axis; and
a motion generating device for effecting relative movement between said A-frame and lift frame for pivoting movement about the transverse, horizontal axis;
said lift frame, trunnion, A-frame and motion generating device all being attachable to and detachable from a vehicle as one assembly.
Gene Q’s latest Webinar title is realistic:
“WEBINAR: THE HUNT FOR PRIOR ART FROM FILING TO CHALLENGE, MODERN PATENT PRACTICE IS ALL ABOUT THE SEARCH”
[In other words, filing a patent application after a prior art search and its consideration is a lot more effective and efficient than trying to enforce a patent in which the only considered art was from a few available hours of USPTO examiner searching. Also, the spec was not liklely written to distinguish the prior art.
If potential licensees can find much better patent or publication prior art for a few thousand dollars of searching, they no longer face having to pay for a trial and appeal to get that better prior art seriously considered. Personal rants about IPRs for 5 years now does not avoid them.
Paul,
You rather miss the point about “personal rants about IPRs.”
Best practices have ALWAYS (AIA or no AIA) indicated that as thorough as possible of a prior art search during the initial writing of the patent application makes for the best patent applications.
NOT required, mind you, but definitely a best practices.
That being said,…
Stop being such an apologist, and start looking at the issues that those “personal” rants are talking about.
You play the dissembling game of seeking to merely dismiss ANY criticism of the IPR set-up as some merely “personal rant.”
And you have done so non-stop, even as others such as myself point out the fallacy of your actions.
Thanks, but it hard to see why you and a few other ranters constantly confuse the difference between simply being a realist with being an apologist.
The former does not include constantly asserting that one’s personal views of a constitutional law issue are more legally important than the unanimous opposing votes of all the judges of the Fed. Cir. that have formally considered it, or the multiple refusals of the Sup. Ct. to even consider it. [I wish they would, as it would make these blog comments a lot shorter, more substantive, and useful.]
You ascribe error where there is none.
A realist would recognize the infirmities in the IPR system.
You have steadfastly refused to unclench your eyes to such.
As to any sense of “all the judges of the Fed. Cir. that have formally considered it” – this is a L I E, as the legal arguments that I have put forth have NOT been before those judges.
What you plainly want is to simply ignore the infirmites. That is most definitely NOT a desire of a “realist.”
Come Paul – stop your L I E I N G.
Best practices have ALWAYS indicated… as thorough as possible of a prior art search during the initial writing… NOT required, mind you, but definitely a best practice…
Right. That is as much as to say that “you can guess if you guess right.” However, the likelihood of guessing right is so small, that ignoring this best practice is distantly unlikely to result in an enforceable patent right.
Invalid patent claims are a nuisance to the public, so IPRs provide a public benefit. By making it possible to clear invalid claims “off the books,” so to speak, one makes the whole patent system function more fairly and efficiently. There would likely be little call for something like the IPR system if everyone uniformly observed “best practices,” but such is not the world in which we find ourselves.
“Invalid patent claims are a nuisance to the public, so IPRs provide a public benefit”
and once again you are using that same circular logic, Greg.
“There would likely be little call for something like the IPR system if everyone uniformly observed “best practices,” but such is not the world in which we find ourselves.”
You are now compounding your error with the supposition that the afore-mentioned best practice is somehow a substitute for any actual examination…
Much like the Tafas case, you do need to remember exactly whose duty it is to examine, and – once again – you do need to remember that after that responsible party has examined and the application transforms from mere application to granted patent, that the level (you AGAIN conveniently omit) comes into play in the LEGAL sense.
You keep on making the same legal error Greg….
And then you keep on assuming the conclusion from that legal error as your foundation for the statement “nuisance to the public.”
Estoppel should be even broader. It has nothing to do with the skill of the searcher. There are only two grounds for patentability in IPR – anticipation and obviousness. A party of interest gets one shot at each. The PTAB statutes have been so twisted and abused. It is unbelievable that such a trivial limitation is characterized as strong estoppel, when in fact it allows for unlimited challenges on the same grounds (in this case obviousness).
OT, but some distant relationship with Comment 10 below. I trust I may be forgiven.
This may be of interest to Ned Heller.
I went on Google this evening looking for material on 18th century English patent law, and found stuff.
Probably most interesting is the following book that comes to you courtesy of the Bavarian State Library (Bayerische Staatsbibliothek, Bibliotheca Regia Monacensis) and Google:
link to books.google.ie
John Davies, A Collection of the most important cases respecting Patents of Invention and the Rights of Patentees (1816)
In 1785, I would draw particular attention to two cases: Arkwright v. Nightingale and The King v. Arkwright.
Of course 1785 is six years before 1791, which I understand to be the critical date for Seventh Amendment purposes.
Richard Arkwright in 1775 had taken out a patent on a new carding engine for spinning cotton, which he had invented. Or had he? He sued for patent infringement a few years before 1785 and lost. He then sued again in 1785 (Arkwright v. Nightingale) and won. A writ of scire facias was then obtained in the Petty Bag office of Chancery, and proceedings were brought in the Court of King’s Bench before Mr. Justice Buller. Opening paragraph of the report:
“This case was instituted by the Attorney General by writ of scire facias to repeal a patent granted 16th December, 1775 to Mr. Richard Arkwright, for an invention of certain instruments or machines for preparing silk, cotton, flax, or wool, for spinning. The proceedings originated in the petty bag in the Court of Chancery, and were transmitted by the Lord Chancellor to the Court of King’s Bench, to be there tried”.
Note that Office of Petty Bag manages the common law jurisdiction of the Lord Chancellor.
The report gives, verbatim, the opening statement of lawyers for the plaintiff and defendant, and the rebuttal. Then follows Mr. Justice Buller’s summing up for the jury. Issues in modern US terms: (i) specification (or “written description”?) (112); Arkwright allegedly not the true inventor; anticipation (102). Of interest is the following, from near the start of Justice Buller’s summing up:
“The proceeding by scire facias, to repeal a patent, is somewhat new in our days; none such has occurred within my memory, though in former times they certainly were very frequent.”
The jury verdict went against Arkwright. He sought leave to appeal, to bring more evidence, but leave was denied by the Lord Chief Justice, Lord Mansfield. The Court of King’s Bench of course sat in common law only.
“14th November, 1785.
“The Court of King’s Bench gave judgment to cancel the letters patent.”
[I will stop here to get the post out, and maybe follow up in replies.]
In continuation, it should be noted that the boilerplate text of the patent provided for its revocation by the Privy Council:
“Provided always, and these our letters patent are and shall be upon this condition, that if at any time during the said term hereby granted, it shall be made appear to us, our heirs or successors, or any six or more of our or their privy council, that this our grant is contrary to law, or prejudicial, or inconvenient to our subjects in general, or that the said invention is not a new invention as to the public use and exercise thereof in that said part of our united kingdom of Great Britain and Ireland, called England, our dominion of Wales, and town of Berwick-upon-Tweed aforesaid, or not invented and found out by the said A. B. as aforesaid, then upon signification or declaration thereof to be made by us, our heirs and successors, under our or their signet or privy seal, or by the lords and others of our or their privy council, or any six or more of them under their hands, these our letters patent shall forthwith cease, determine and be utterly void to all intents and purposes, any thing herein before contained to the contrary thereof, in any wise notwithstanding.”
In an academic paper by Dr. Sean Bottomley (“Patent Cases in the Court of Chancery, 1714-58”, The Journal of Legal History 35, 2014) it is stated that the Privy Council is “generally thought” to have relinquished jurisdiction in 1753.
Patent cases in the Court of Chancery? Well, if you sued for infringement, you would bring suit in common law in the Court of Common Pleas or the Court of King’s Bench. But if you wanted an injunction, you would bring suit in equity in the Court of Chancery.
Relevant of course to eBay v. MercExchange.
(I trust I have got the above correct. IANAL, but consistent with what I remember to have read this evening.)
There are a lot of lawyers on the side of the USPTO (and Lemley) that continue to say, incorrectly, that the action scire facias was an “equitable” action without a right to a trial by jury simply because it was filed in Chancery.
However, upon further inspection, the writ scire facias was filed in the Petty Bag, a common law court, for convenience as that was the location where the patent files were kept and registered.
As discussed in Mowry v. Whitney, link to scholar.google.com, the action for invalidity had to go through the Attorney General to avoid harrassment of the patent owner. But protagonist was a petitioner, probably an accused infringer. The action probably proceeded exactly like it does in the ITC, save for the proceeding being in court and with a jury deciding the facts.
Apropos Prof. Lemley, I noted a few hours ago what he had to say, pages 11 and 12 of the PDF (no page numbers on the eprint) in his article “Why do juries decide if patents are valid”, Virginia Law Review, 99 (2013), available, without page numbers, seemingly a draft, with comments presumably not intended for the final version, at the following URL:
link to law.berkeley.edu
I see, though, that Prof. Lemley did include the following:
“This practice is consistent with the idea that the jurisdiction of the chancery courts over scire facias actions was legal, not equitable. The Chancellor remained responsible for rendering judgment, though how much power the court had to ignore the jury verdict remained unclear until well into the nineteenth century.”
Of course, I have already quoted from John Davies’s Collection the judgment of the Court of King’s Bench cancelling the patent. It seems to me that Bynner v. The Queen simply states what the law was, at the time it was decided. (I haven’t looked back at the report I found of that case recently.)
Thanks Distant Perspective.
As to Lemley–he is a liar. He does not respond to being called out for lying and misrepresenting his cites. He believes he is entitled to determine by himself whether anything he does is ethical.
Lemley will never engage in a substantive response to what you wrote.
In connection with this, from Ned Heller,
“However, upon further inspection, the writ scire facias was filed in the Petty Bag, a common law court, for convenience as that was the location where the patent files were kept and registered.”
Note that John Davies, the compiler of the Collection that I have linked to, “having been upwards of thirty years in the office of the Rolls Chapel, has frequently had his attention drawn to patents and specifications of inventions, that being one of the offices in which such specifications are enrolled; and having for many years been concerned for inventors, in soliciting patents for their inventions,…”
and now, I have only just this minute noticed, at the very end of his Introduction (p.ix):
“besides which, the Court of Chancery never decides upon the validity of a patent, the practice there being nothing more than to grant an injunction, at the prayer of the patentee, against any person infringing his patent, and to order an account of profits: but if any question arises upon the validity of the patent, the novelty of the invention, or the sufficiency of the specification, it is uniformly referred to a court of law.”
There! Straight from the horse’s mouth!
And, lest anyone is in any doubt as to the role of the Rolls Chapel, where John Davies worked for three decades, see Wikipedia here (subsubsection 1.1.1):
link to en.wikipedia.org
“In 1377, Edward III broke up the Jewish almshouse, consequently annexing the House as well as the Chapel to the newly instituted office of Custos Rotulorum, or Keeper of the Rolls.[9] The office is used to store the rolls and records of the Court of Chancery.”
See also the diary entry here:
link to pepysdiary.com
Pretty great quote. I thought all ethical people had agreed long ago that there was a right to jury for invalidity of a patent.
The argument appears to be from the CAFC that these “patents” are not the patents discuss in the Constitution, but new “patents” that are authorized as part of the Commerce clause.
That is how low we have sunk. The purchased CAFC does Google’s bidding.
That is a very worthy and relevant quote, to be sure, but I wonder if it quite pertains to the issue at question. The VII amendment speaks of the right of jury trials being “preserved,” and the Court has interpreted this to mean that one only has to apply juries to issues and situations where juries were historically involved. The mere fact that a given issue was tried in a common law court does not mean that it was, ipso facto, tried to a jury. What is the evidence that we have that the validity issue was historically put to a jury.
Thanks, Distant.
This case should be considered and discussed thoroughly by the upcoming PTO brief in Oil States.
Back to Sir Edward Coke (“If a man sell a horse…”), if I may.
Things moved on, between the Statute of Monopolies and the 1780s. Perhaps more on that later, but, for now, back to Coke.
Now Coke was certainly not a disinterested observer of the legal and constitutional norms of his day. And, from what I can gather, he was a prime mover in getting the Statute of Monopolies through Parliament in the reign of James I (of England and VI of Scotland). What did Coke have to say about “monopolies”? See Chapter 85 in the Third Part of the Institutes of the Laws of England. Basically, monopolies are evil. More accurately:
“the law of the realm in this point is grounded on the law of God, which saith, […] Thou shalt not take the nether or upper millstone to pledge, for he taketh a mans life to pledge: whereby it appeareth that a mans trade is accounted his life; because it maintaineth his life; and therefore the monopolist that taketh away a mans trade, taketh away his life, and therefore is so much the more odious, because he is vir sanguinis. Against these inventers and propounders of evill things, the Holy Ghost hath spoken, inventores malorum etc. digni sunt morte.”
(Coke has here quoted Deuteronomy 24:6)
Source is here:
link to books.google.ie
Coke continues:
“That monopolies are against the ancient and fundamentall laws of the realm (as it is declared by this act) and that the monopolist was in times past, and is much more now punishable, for obtaining and procuring of them, we will demonstrate it by reason, and prove it by authority.”
Great stuff!
There are however exceptions: monopolist granted by letters patent to printers, to manufacturers of gunpowder, etc., plus sundry monopolies to vested interests to secure passage of the Statute of Monopolies though Parliament. And there is an exception for legal monopolies granted, for fourteen years, to inventors, under strict conditions.
Unless a monopoly falls strictly within the exceptions, it is null and void under the common law, and, unless authorized by Parliament, can therefore be rendered null and void through an action at common law, notwithstanding that it was granted by the Crown. Or at least, so says Coke.
A neat scheme for invalidating patents on inventions improvidently granted!
FAIRCHILD (TAIWAN) CORP. v. POWER INTEGRATIONS, INC.
link to cafc.uscourts.gov
Infringer (Power) loses validity in court, but wins in the PTO (Inter partes reexam). The infringer appeals the court loss. The patent (Fairchild) owner appeals the PTO loss. The Feds affirm the court judgment, and on motion, then order the reexamination dismissed.
Obviously, this was a race to who could get the Federal Circuit to rule first, as that would decide the outcome.
But why in the world should we even contemplate such completely wasteful use of public resources to allow the infringer to game the system?
I wonder if the Director will order the reexamination converted into an IPR, again affirm that the claims are unpatentable and have that go up to the Feds once again, because the Feds recently ruled that the “USPTO” is not bound by the results in court in an IPR?
Arrgh!
Again, IPRs at best should only be low cost alternatives to litigation. If the infringer raises invalidity in court, the IPR should be promptly be dismissed, but certainly the IPR should not override an earlier court judgment affirmed by the Federal Circuit.
Ned, merely to avoid further misleading any reader, as you know, this is not typical. As you know, a reexamination cannot be “converted” to an IPR, and no IPR can be initiated more than a year after the complaint in the parallel D.C. case. As you know, unlike reexaminations, IPRs have time deadlines and thus almost always get decided before the D.C. litigation. Also as you know, only D.C. IN-validity decisions stop other actions on the patent, not D.C. decisions that do not find invalidity.
Why not stick to more effective valid reasons to dislike IPRs?
Paul, it depends on when the IPReexam was filed, not so, not the date of conversion.
PTO is out to invalidate patents, not to provide justice or to Kowtow to a mere court.
I agree that it is pointless and wasteful to have parallel invalidity litigation and IPR proceedings. I would have liked the law to have required that invalidity proceedings in d. ct. be stayed once an IPR is instituted.
That said, I think that you are overstating the awfulness of the situation. Imagine that a patent is asserted against two different defendants. Defendant A is sued in 2011 in Montana and Defendant B is sued in 2012 in Florida. Both defendants assert invalidity, but on different grounds. A’s invalidity bid fails in a May 2013 verdict and A has to pay damages, while B’s invalidity argument succeeds in a June 2013 verdict and the trial ends. In other words, inconsistent outcomes between the two trials, but the final judgment rule means that A still has to pay damages on a patent that turns out to be invalid. Not ideal, but the world keeps turning.
That is basically what we are talking about in the Novartis v. Noven case, except that instead of two defendants, we had the same defendant in both trials. Noven’s ANDA cannot be approved, even though though they won in the PTAB, because they lost in the d. ct. It seems strange that Noven’s market entry is precluded by an invalid patent, but that is just how the final judgment rule works. Meanwhile, I agree that it was wasteful to have essentially the same arguments advanced in front of two different tribunals, but that is what you get when you leave the district court judge the discretion—as the AIA does—to continue proceedings even after the IPR has been instituted.
IPRs are supposed to be a low cost alternative to litigation of validity. The only person who raises invalidity in court is the infringer.
He should have a choice. Court or PTO, not both.
I agree 100%. Congress intended IPRs to be a quick and affordable alternative to litigation. Instead, unfortunately, the CAFC (with the honorable exception of Judge Newman) have read the statute at every occasion as if IPRs are a supplement to litigation, thus yielding the perverse outcome of making litigation even more expensive and even more time consuming.
Ideally, when the next round of corrections are proposed to the AIA, the statute will be revised to make clear that a patent challenger gets only one bite at the apple, and s/he must choose which.
Are you inserting a standing requirement where Congress did not, Ned?
…standing…?
Exactly Ned. The other thing about IPRs is that it violates a fundamental principle of our laws that someone should not be subject to suit over and over again for the same thing. The D should not get two or twenty bites from the apple.
Insanity. Since Translogic in 2007 and Fresinius in 2013, the Federal Circuit has taken up the Quixotic attempt to harmonize conflicting findings of validity. It cannot be done because the issues are not identical – evidence, parties, standards, (due) process. Validity is not a threshold issue in most cases. Rather it is a question of whether the patent is good enough or not. It is good enough to issue and good enough under §282. But not good enough for the PTAB. Fine. The answer is to let the both rulings stand. The PTAB decision can be raised by the infinger and the district court can weigh it. Problem solved, sanity restored.
Well Invention Rights, what if I were to tell you that we had to try validity twice in every case at great expense to the patent owner where only one of the trials counted. You would tell me that the system was designed to punish the patent owner for no good reason.
No I do not think that we should have IPRs have no teeth. Secondly I think that there is no question at all that there is a constitutional right to a trial by jury for validity. Virtually everybody accepts us as true, except for certain panels of the Federal Circuit, and of course, the infringer bar and its allies, the IPO and AIPLA.
[W]hat if I were to tell you that we had to try validity twice in every case at great expense to the patent owner where only one of the trials counted. You would tell me that the system was designed to punish the patent owner for no good reason.
Agreed. I happen to favor the addition of IPRs to title 35, but I certainly agree that it should be one or the other (i.e., court trial on invalidity or IPR), but not both. It defeats the whole point of IPRs to turn them into something additional that happens in litigation, instead of an alternative to an invalidity trial in court.
…and you still miss the fact that a subsequent addition to law – affecting as it does an item that has garnered other Constitutional protections – is just not on the same footing as the prior law.
We all “get” that you feel a certain way about the addition of IPRs.
But you have provided no evidence yourself of your position, and you keep on making legal errors – even as the errors have been pointed out to you.
Finally, as I have noted to Ned and to Night Writer, the AIA leaves off a rather important aspect to IPRs: one simply is not required to have the element of “standing” as one who involved in Article III litigation.
I think that there is no question at all that there is a constitutional right to a trial by jury for validity.
Er, this is much less clearly true. I am willing to be convincing that there is a constitutional right to a jury trial on validity, but when I look at the historical scholarship, what I see is a mess. Everyone has a case to cite to support his/her position, which is the same as to say that there is no obvious answer to the question.
The PTAB often finds grounds “cumulative” and chooses to institute on one ground because they are two busy to consider two grounds — i.e., one is sufficient. The PTAB has instituted second IPRs on “cumulative” grounds after the petitioner loses the first. “Total failure” might not consider these cases in which the PTAB did not decide the likelihood of success of these grounds, only that they are “cumulative.”
Good point Kevin.
“so long as they are based on prior art that could have been found by a skilled searcher’s diligent search.”
What the heck does this mean? I’m a pretty darn “skilled searcher”, but that is by my own authority. Other than in our own heads (or the sales team pitching our services), there is zero determination of what a skilled searcher is or what a diligent search is.
To see these terms is ridiculous. Honestly, what are the qualifications needed to be a skilled searcher according to the author? An email address and $10 worth of business cards printed at Staples? And which is the diligent search when a 3 minute search may find a specific, particularly relevant references while a 50 hour effort may miss it.
To be fair, these are issues that my industry (patent searching) has been struggling with for decades. Currently, we have no ethical standards or professional standards and no one is pushing us to have these things. It’s always been a bit of a wild, wild, west environment and until a powerful external group (USPTO, EPO, IPO, AIPLA) demands better of patent searchers or even acknowledges that we are a profession, it will remain a chaotic world.
Thanks PS Dip.
As usual, your posts provide an insightful view. I would also throw in that mix the comment by one of the Office regulars here that examiners are “professional searchers” and that their work product (good, bad or indifferent) is “considered” to be a “diligent search” – and yet, it is that very role of the examiner that continues to be pummeled as the co-target (along with the “Tr011” FUD) by the efficient infringer groups.
How about this for the “next round” of patent improvements (for the Office):
Focus on doing the job right the first time through.
Do you imagine that imperfect examination during prosecution results form lack of focus? That they could do better if they tried harder, but they just are not trying?
I suppose that is possible, but I am hard pressed to scrape any evidence together for the assertion. What is your basis for thinking this?
You mean besides personal experience?
Or do you mean the legion (and history) of the Office and its “Reject Reject Reject” era?
Or do you (like Malcolm), seem to want to clench tight your eyes to that as well?
You do seem to have some rather odd penchants at times Greg.
I imagine that you are trying really hard to be personally antagonistic (with an odd penchant for evidence).
Do you really need evidence for p0or examination?
Really?
Perhaps I was not clear. I am not doubting poor examination. The evidence for that is clear enough (i.e., the rates of subsequent invalidation). My question is why you suppose that the poor quality of examination stems from lack of focus. It seems much more likely to me that we get poor searches because we underfund the agency and give each examiner only a few hours and a ~$1000 to do a job that requires several days and ~$10000 to do well.
If you only pay Kia prices, it is strange to expect a Lexus. It is doubly strange to imply that the Kia dealer’s lack of focus is the reason why you are not getting a Lexus.
It looks like you and Paul share the same conflated fallacies concerning internal Office decisions and what applicants actually pay for.
(there is no such thing as a “Lexus-Kia” price differential, when it comes to what applicants have paid for).
[T]here is no such thing as a “Lexus-Kia” price differential, when it comes to what applicants have paid for.
Correct. Everyone pays for a Kia. Nearly everyone expects that they are receiving a Kia, your rather singular insistence that you have paid for a Lexus notwithstanding.
Anyone who wants really ironclad claims needs to hire a professional searcher to do a really thorough search before drafting. If the first search that gets done on a set of claims is done by the examiner, then the applicant has gambled, and like all gamblers, maybe one wins, but more likely one loses.
The payment is NOT a “Kia” payment.
The payment is what the Office has set for a full and legally binding job.
Please do not dissemble with the “Kia/Lexus” comparison – as this is exactly what I have already pointed out to Paul as his fallacy.
Please pay attention.
“is done by the examiner, then the applicant has gambled”
Gambled that the examiner has done their job…?
Sorry Greg – that’s a non-winner for you.
an odd penchant for evidence…
This made me laugh. Er, yes, guilty as charged.
You neglect the oddity aspect…
(That would be a misapplied penchant for evidence coupled with an eagerness on your part to inconsistently not provide evidence to your own points that mirror the points of others that you – rather pedanticly – want the evidence for.)
an eagerness on your part to inconsistently not provide evidence to your own points…
Do you care to point to a specific example?
(There I go again, demanding evidence…)
The examples….?
Asked and answered – many times on this very thread.
One can’t begin to examine the world’s literature and nobody would try. Likewise with the world’s software. It’s virtually impossible to examine it, unless the bulk were patented or published, which it by far is not and never will be.
Anyone with a lick of common sense can see this.
Perhaps you want to open your eyes as to the “promote” aspect (as in the advertising sense of the word) and exactly one of the reasons why we have a patent system, Mr. Snyder.
To want to merely throw up your hands and say “why bother” is a rather ig norant thing to do (sorry for being blunt, but bluntness here is simply being accurate).
Nobody in software uses patents for references or teaching, ever.
But what is day to day reality in the face of your wishdreams about the grand bargain?
Also of course a total non-sequitur to the general impracticality of examining software inventions.
And yet again, you overlook the fact that patents allow the other more traditional avenues to be engaged.
It’s not like you haven’t been informed of this before Mr. Snyder.
And that is notwithstanding what could be made to happen with the patent system (as opposed to the Big Corp instructing its peeps to avoid looking at patents).
I would suggest making the fact that an item is published in a patent a de facto triple fine condition, and then allow colorable arguments to work backwards from there.
Return the stick (as well as the carrot) to the patent system in order to a have a strong patent system.
That’s never, ever, ever going to happen, because it would be unjust beyond belief. Nobody can be reasonably expected to read all pertinent patents to exactitude.
Of course, you are totally unmoored from the concept of proportionality, a universal criterion of fairness in both statute and common law, used for discerning balance between restriction imposed by a measure and the severity of the prohibited act.
You overvalue the act of infringement and undervalue what would be an enormous, useless drain on the world and a source of endless individualized economic injustice.
Your blinkered view is hardly sui generis, but it is the core reason the abuses that led to the reforms you hate in the patent system. It’s a false idol and that’s why we are where we are.
Mr. Snyder,
The way that you clench tight your eyes, glom onto only those things that reinforce your existing feelings, and yet, you want to label me as blinkered….
Too funny.
[T]he world’s software… [i]s virtually impossible to examine…, unless the bulk were patented or published, which it by far is not and never will be.
I take your point, and I suppose that this might be a real problem if software claims were routinely written in structural form. However, because they are mostly written in functional terms, all you really need to know to examine them is whether there is something out there that performs the same function, and my (admittedly, uninformed) impression is that there is enough disclosure out there of the various functions of various software that it is not really that hard to do a competent search.
I will defer to others, however, if they think I am wrong in that assertion. I will be the first to concede that I know nothing about examining software claims.
Greg,
Mr. Snyder is the last person you should turn to for any sense of legal understanding.
? There is no such requirement, even for someone trying to avoid IPR estoppel, were only a “reasonable” search for prior art patents or publications, not public use or sale. [PGR prior art and estoppel is a different issue, but it has been rarely used.] Also, how is UNpublished literature prior art to AIA patents?
Good point.
I have heard the phrase “diligent searcher” in case law before but I don’t recall where exactly.
Does anybody here have any familiarity with other cases that rely on this concept?
For avoiding an assertion of estoppel for not having presented in one’s prior IPR a patent or publication that one “reasonably could have raised” in that IPR, the thing to do would seem to be to present evidence of who was hired to do the search, how much was spent on the search, what patent and technical libraries and classes were searched, etc. [A $400 USPTO examiner search does not seem likely to be held sufficient.]
Currently, the USPTO sets its user fee cost of examiner prior art searches as only $600.00, $300.00, or $150.00, respectively.
[Yet some commentators here seem to expect that this level of prior art searching should find the better prior art that is not cited until IPRs are filed?]
Paul,
You should be well aware that those charged fees are purposefully low (with augmentation from far more disproportionately higher maintenance fees).
That’s a business decision by the Office, and one that should be reflected if one is going to (blindly) equate quality and price of service.
“a motion generating device for effecting relative movement ”
Seems like abundantly clear 112(f) language, and “motion generating device” is not used outside of the claims … Seems like it would be a not that hard DJ…
“motion generating device” is not used outside of the claims
Wow. Tripping on the fundamentals.
Grounds presented but not instituted = not estopped.
Grounds never presented = estopped.
It’s clear enough what people will now do: List their 50, 100, 400 grounds in their IPR petition, get them all denied as redundant, and bingo. All are now nicely insulated from estoppel. What fun.
… damm scriveners…
😉
Pretty much.
Absurd?
Yes, but no more so that the logic of Achates and/or Shaw, which landed us in this circumstance.
Dennis, I like your a bit about 101 at the end. A claim to an improved snowplow should not be declared abstract regardless of how broadly stated the claim is. In other words, claims, even broad claims, directed to new or improved machines should be eligible and therefore should pass Alice step one.