Shore v. Lee (Supreme Court 2017)
In a new petition for writ of certiorari, patent attorney and inventor Michael Shore has challenged the propriety of the Federal Circuit’s continued approach of affirming patent office decisions without opinion. In a forthcoming article titled “Wrongly Affirmed Without Opinion” (Wake Forest Law Review), I raise the previously unnoticed requirement of 35 U.S.C. § 144 that the Federal Circuit issue an opinion in appeals from the Patent Office (PTO). Although the Supreme Court generally permits its lower appellate courts to issue summary affirmances, I argue that the Patent and Trademark statutes take precedence in this particular situation. The issue has come to a head with the large number of no-opinion judgments being issued by the court since the creation of the system of administrative patent trials (IPR/PGR/CBM).
Running with that argument, Shore raises the following three questions:
- Does the Federal Circuit’s affirmance without opinion of the PTO’s rejection of Petitioner’s patent application violate 35 U.S.C. § 144?
- Does the statute’s requirement that the Federal Circuit issue a “mandate and opinion” govern over Federal Rule of Appellate Procedure 36’s general permission for appellate courts to render judgment without opinion?
- Assuming that the Federal Circuit can issue an affirmance without opinion despite the language of § 144, does the Federal Circuit act within its discretion by issuing an affirmance without opinion that does not meet any of the criteria listed in Fed. Cir. R. 36(a)-(e)?
[Read the petition: 2017_WL_1406097]
Certainly, if the PTAB had issued its judgment without opinion, the Federal Circuit would have immediately vacated that decision. However, the appellate court suggests that the rules of opinion writing should not be self applied.
In the underlying case, Shore’s patent application (with co-inventor Charles Attal – founder of Austin City Limits Festival) covers a method for creating a custom video track of a live musical performance. The claims were rejected as obvious – affirmed by the PTAB. On appeal, Shore raised several challenges regarding both interpretation of the prior art and claim construction. Rather than working through those arguments, the Federal Circuit simply affirmed without opinion.
“patent attorney and inventor Michael Shore ”
Dennis, I’m curious why you refer to Mr. Shore as a patent attorney?
There are 7 practitioners named Shore on the register, but none appear to be him.
Mr. Shore,
I’ve now had the opportunity to skim your petition/brief in more detail. I think your petition is going to be refused, but I hope I’m wrong (because like many others, I don’t like these “no info” affirmances).
If you had it to do over again, I think you should have focused it more carefully on the 35 U.S.C. § 144 questions and spent less time (and characters) on re-litigating the PTAB questions and whinging about that result.
The SC doesn’t care about what happened at PTAB, it should only care about whether the CAFC did its job, which is your question.
Your petition/brief realistically could have had 1/2 or less the page count it was.
Just my opinion.
The reason you show their were multiple potential errors is to show that it is impossible to know without an opinion to “guide” the prosecution on remand what of multiple potential amendments might get a patent. If you don’t show that guidance is needed, you are not showing the purpose of the statute was thwarted. The errors are relevant because they exist and there is more than one, therefore the patentee & examiner need the guidance an opinion might offer.
Buried half way down – but worth posting on top as this deals with Paul’s repeatedpost (as well as the dust kicking from Malcolm and the Echoes):
For all the mewling over the (suspected) worth or lack thereof of any claims in the case, the legal issue exemplified by the post at 10.3.1 bears a direct answer.
As is sadly typical, there is a lot of dust being kicked up in the fallacy that looking to resolve the quite evident legal mistake is somehow (purposefully) confused and conflated with “defending claims.”
Maybe people should be paying more attention to the law, and less attention to their anti-software patent Windmill Chases….
Agreed.
Either Mr. Shore is right on this point, or he isn’t; but either way it *is* the point of the post.
If Judge Rich’s Ghost below at 14 would offer a link to the article he mentions, perhaps we would have an opportunity to see what Mr. Dowd thinks, and why.
link to ssrn.com
Mr Shore asks of us, how does he know (how to prosecute his case further).
Is not the answer that when a court of appeal says (in effect) we agree with the court below, no more than that, it is implicit that it is adopting the reasoning of the lower court as its own.
If that is so, Mr Shore has the answer to his question.
No. That is not what Rule 36 affirmances mean. The meaning attached to a Rule 36 affirmance is that the “result” was correct, but it adopts none of the grounds from the decision below. So the affirming court might have agreed with 1, 2 or none of the grounds upon which the PTAB rejected the claims. So for me to go back and amend (as I was instructed at the oral argument), I would need to know if my amendment is to overcome Watson, Rui or some other reason the appellate court found the outcome correct (101, 112, etc.) that is not in any of the briefing, argument and certainly not in the word “Affirmed”. This is important for three reasons: First, an amendment to overcome one reference is likely to have more impact on the scope of the claims than another. An amendment that was not necessary but limits claim scope is literally shooting yourself in the foot for no reason. Second, an amendment that you believe is what is required, but the examiner disagrees leads to another costly appeal where somebody is wrong, but unless you get an opinion, there is no way to know. Third, perhaps the problems is something that literally cannot be fixed without rendering the claims worthless to enforce, so ANY amendment is futile, something you again might have to go through an appellate process to find out.
What the statute REQUIRES is an opinion to GUIDE the continued prosecution so the time and money of the patentee and examines is not wasted and the later prosecution, if any, can be focused on the specific issues the CAFC found to be problematic.
Would you go to a surgeon for a second opinion and accept him telling you that the prior surgeon’s diagnosis was “wrong” but have him refuse to tell you why or what treatment he would recommend to cure the issue? Or that your disease was incurable? It is a simple thing to ask the CAFC to simply say, “We agree with the PTAB decision insofar as the Watkins reference is analogous art and can be used in the 103 combination for the purpose of identifying a predetermined location for the capture of an image, and although the image in Watkins is not a video, the person captured in the image is not a user who can edit the image, is not for commercial purposes and is not stored, etc, we still find that it is analogous and one would have been motivated to combine it.” That simple statement would comply with the statute and give me some guidance on what to do on remand. What they are being asked to do is not hard unless to do it they have to violate their own precedents, the MPEP and common sense and have that on record in a precedential opinion. The violation of the statute allows the CAFC to simply duck the hard issues.
If the Federal Circuit had written a three line opinion affirming the decision below and stating that that opinion had been studied, the contrary arguments in the appeal were found unconvincing and that the appeal would be rejected for the reasons stated by PTAB that would probably have met a legal minimum (if such exists). But would it really have made any difference?
If the Federal Circuit had disagreed with any part of the decision below to any significant degree they would almost certainly have written a longer (probably non-precedential) opinion. So the Rule 36 decision simply is a shorthand for the slightly longer opinion indicated above.
And frankly I have spent over 40 years of my professional life arguing cases through the USPTO, the EPO and national patent offices all over the world. Like most other competent attorneys, I do not need the guidance of a three-member judicial panel two of whom have degrees in English and geography and about two years part-time exposure to patent law to tell me how to structure my claims and arguments. I know perfectly well what should go through and how to present it, and so do most of my US colleagues. Indeed a draft response recently prepared by one of them on the basis of fairly fragmentary information from me was an absolute revelation and further enhanced my respect for the professionalism of US attorneys.
Unfortunately I think that this is a case which is unlikely to go through. No second opinion from 2-3 inexperienced arts graduates in the Federal Circuit is needed.
“I do not need the guidance of a three-member judicial panel … to tell me how to structure my claims and arguments. I know perfectly well what should go through and how to present it, and so do most of my US colleagues. ”
Thanks Paul (Cole, if needed to avoid confusion). This is very well said. While as a member of the patent bar (US), I would very much prefer and find useful for the CAFC to state outright what caused it to agree with a PTO or lower court opinion in any given case, I also know in my own cases that what I can get patented is not going to be reliant on such statements.
The violation of the statute allows the CAFC to simply duck the hard issues.
What’s the “hard issue” here, Michael?
Maybe people should be paying more attention to the law
LOL
Remember when “anon” puffed himself up as the expert on “statutory interpretation” in the context of 271(f)? I sure do. Fun times.
Get over yourself already.
My views remain correct – you will note that 1 US 1 was expressly NOT overturned.
Your admonition of “get over yourself” is yet another Accuse Others Malcolm meme…
There are two Pauls posting. I have not commented on the patentability of any of these claims. Nor do I disagree with the premise that in a Fed. Cir. appeal from a PTAB rejection of a pending application on several grounds that if the Fed. Cir. does not agree with all of those grounds they should so indicate for guidance for claim amendments in a continuation which might render those claims allowable, as presumably the subject statute intends.
But, self-evidently, insisting within proceedings governed by BRI claim scope [blessed by Cuozzo] that specification limitations [other than clear and unequivocal claim term “definitions”] must be “read into” rejected claims is highly risky.
The emphasis on “repeated post” was the differentiator for the different Pauls, Paul.
See Post 15 and post 13.
Did you do such a repeated post here….?
@ Michael Shore
I am writing this as a separate comment.
I have on several occasions made the following point in relation to inventive step:
Groucho Marx said that he had discovered the secret of success in life. The secret of success is sincerity you’ve got it made. I am not as talented as he was. But I believe that I have discovered the secret of success in the patent system, with particular reference to section 103. The secret of success is surprising new function or result. If you can fake that you have got it made.
Regretfully, the claims that I have seen on their face do not credibly point to any surprising new function or result within the domain of the useful arts. They therefore do not even rise to the level of a credible fake.
Paul, your view of the patentability of the claims may be correct (or Mr. Shore’s may be, I neither know nor care).
*But that’s not the issue*, despite what MM says.
I think Mr. Shore has a valid point, and it’s a point that has been expressed by our host in his own post a while back – that Rule 36 affirmances of PTAB judgments are inappropriate and deny patent applicants something to which they are entitled: a written statement of reasons *why* the PTAB correctly decided the case (desirably, sufficient so that the applicant can decide whether to continue prosecution – and if so, what amendment might reasonably be useful – or abandon the application), and not merely a “We affirm”.
Mr Freyberg, please see my 16.2. What do you say in reply? I’m interested.
MaxDrei,
Why are you insisting on being 0btuse?
“Is it deliberate?”
I would add in cautionary note to the non-US jurisprudence driven commentators: inventive step is not the same as our non-obviousness requirement.
Sure, they are similar and yes it is easy to think of the two serving “the same purpose,” but there is a relatively simple, but nonetheless historical context that provides a context of a stark difference:
The reaction of our Congress against the (a decidedly anti-patent) 1930s-1940s Supreme Court whose then-permitted use of common law and multiple-termed “gist of the invention” jurisprudence was aimed at a Flash of Genius” requirement – a requirement expressly rebuked by Congress.
So check yourselves people and if you find that your “step” sounds TOO close to some “Flash” in order to “deserve” a patent, you are likely not understanding the relative difference – and the admittedly meant-to-be-easier requirement that our Congress actually wrote into our patent law.
In EPC, Art 56 (our 35 USC 103) Europe defines the inventive step thus:
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
We have always been influenced by the jurisprudence of other countries (after all, the European Patent Organisation has 38 Member States). We know the “Flash of Genius” concept from US law but not from our own.
Art 56 EPC defines “inventive step” as that which is “not obvious”. One is the antonym of the other. It has always been trite law over here that the way in which the invention was conceived is irrelevant to its patentability. Only in First to Invent USA is the act of conception of claimed subject matter of any interest. What counts in FtF is constructive reduction to practice.
interesting additions at several edges of my post, MaxDrei – thanks.
(it remains though that US jurisprudence on the topic should not be casually assumed to be the same ‘thrust’ as ROW – the EPO may choose for itself “to be influenced,” but here in the States our controlling law remains ours – for a variety of reasons, including importantly the sanctity that we hold for our Constitution, which ROW lacks)
One has only to study how three EPC jurisdictions (UK, Germany, EPO) decide what is or is not obvious under the EPC to realise how much scope there is for “sovereigns” to write their own jurisprudence, even when the words of the statute are identical. Nobody in Europe could for one second suppose that one sovereign “controls” another.
Nevertheless, in today’s ever more connected world, a good idea in one country is likely to be seized upon in another. Not just in philosophy, physics, or how to raise tax revenue, but also in patent law. Conversely, the “Not Invented Here” closed mindset is as prevalent today as it ever was yesterday.
In general, the world is crying out for new and clever ideas, wherever in the world they are conceived. Is that not also the case in patent law?
Even though cries may indeed echo throughout the world, one must ever be aware of – and respectful of – what each sovereign may and may not choose to make their own.
Good ideas are simply not mindlessly applied no matter the sovereign. The real world is simply more messy than that.
It’s too bad Shore didn’t read Matthew Dowd’s article that squarely refutes the mistaken argument that Rule 36 requires an opinion.
Do you have a link?
and this one: link to law360.com
Of course Rule 36 doesn’t require an opinion. Shore’s point is that 35 U.S.C. § 144 does require an opinion, so that a Rule 36 affirmance does not meet the requirements of § 144.
Also, Judge Rich wouldn’t make such an egregious error, so stop trying to put on airs that you obviously do not deserve.
I have found Matthew Dowd’s article on SSRN.
I found it less than compelling.
At the critical junctures, there is simply too much assuming the conclusion to be proven.
(it does carry with it a substantial “background” section, albeit one is left wondering if that background has been objectively completed)
Interesting conclusory comments by an anonymous poster. Most experienced practitioners who have reviewed it agree with the conclusion. The problem with Shore’s and Crouch’s analysis is that it completely ignores the history and purpose of Section 144, as amended, as well as the Supreme Court precedent directly on point. But hey, have fun with the cert petition that will be denied.
The 50 page tome is heavily geared to a minutia of “background” with its own conclusory comments.
As a fellow anonymous poster, the rest of your jibe falls apart.
As to the history and purpose of Section 144, the conclusory comments by the non-anonymous writer Dowd do not magically become any less conclusory just because he is non-anonymous.
Quite in fact, I would invite you to count the number of times that Dowd reflects on the fact that for cases in which actions continue (and contrasting directly with his overplayed notion of ALL instances), 144 simply does NOT make optional the very heart of why the courts would even need to “report back” to the patent office.
That’s a rather serious breach of purpose for those very words.
As to any cert petition going forward being denied or not – that expressly does not change the legal picture here. You should be aware that the Court having at its own discretion what to take and what not to take is not preclusive in and of itself (a denial of cert just is not the same thing as the Court taking on a case and deciding against the person attempting cert).
Please take a different moniker if you are going to be so shoddy on the law. You are not even close to being a ghost of the man.
Interesting. You still avoid any consideration of the statutory analysis in Dowd’s article. Oh well, you can lead a horse to water but . . . .
It is not a matter that I am “avoiding any consideration of the statutory analysis in Dowd’s article,” as you put it.
First, the statement itself is false, as I have put (back) to you the very purpose in the statute that Dowd overlooks: the requirement to take a judicial opinion and put that opinion back into the executive agency that will be continuing the executive agency’s work (based at least in part on the court decision).
I point out that Dowd’s own statutory analysis on this critical point is simply lacking and that he overplays a notion of “all decisions.”
Second, you ploy a response (horse to water) that just does not fit, given the first item here. Your shoddiness continues, and now more than merely law, but in our conversation.
May I suggest that instead of hurrying to respond with something that you may think to be witty, that you actually take the time to understand what is being said, focus on the content, and leave the quips out of your replies. I know that may be difficult for you – given your choice of moniker and all, but it really would be better for you and for any point that you may be trying to make.
The problem with your “analysis” is that you presume the purpose of the statute without any consideration of the statute’s legislative history. There is simply nothing in the history of the current statute that indicates its purpose as being one to require the Fed Cir to write an opinion with reasons. And if Congress hadn’t wanted to impose that requirement, it would have used language that States have used when requiring state courts to write an opinion with reasons.
There is no problem with my analysis.
I presume nothing, having studied the statute and its history.
All that you are doing here is making a bald (and wrong) statement. You are the one presuming that somehow different language would be needed to do what the current language does. There is NO such “required language” when it comes to patent law (just looking at the boatload of new language in the AIA should inform you of that).
You have merely glommed onto a speaking piece and YOU have done exactly what you accuse me of doing.
Not a working proposition for you, my friend.
I tend to be conciliatory, and when I saw Malcolm’s comments I wondered whether he had gone over the top on this.
So I went into Public Pair and looked at the originally published claims. Then I looked at the file wrapper and the recently amended claims. Sadly I can see nothing inventive whatsoever, and that appears very plain from a quick skim of the file. So I can quite see why the Federal Circuit issued a Rule 36 judgment, and believe that this is all the resources that are merited to this undeserving case.
The 10 issued patents and 137 allowed claims beg to differ. The priority date is 11 years ago. Nothing remotely like it existed. If there was “nothing inventive” that still does not relieve the Fed Cir of its obligation to follow the law. Without an opinion, there is no “guidance” on how to amend to gain patntability. The thing you should read is the 5 reference, hindsight driven rejection and the transcript of the oral argument where the solicitor literally admitted Watkins was not analogous. We are all entitled to our opinions. I respect that. But we are also entitled to a fair appellate review under the law. I did not get that.
Why was the Solicitor arguing the case? And why did he side with PTAB rather than the examiner? Did the examiner make an error?
Nevermind. Thought this was an IPR. Sorry for the confusion.
And you probably know obscenity when you see it too. You’ve just demonstrated the value of requiring opinions. They guard against an obviousness conclusion being based on “a quick skim” rather than a legally correct and thorough analysis. Simply going through the lengthy and expensive appeal process at the USPTO and then the Federal Circuit is enough to deserve a written explanation at the end of it.
You’ve just demonstrated the value of requiring opinions.
Of course opinions are valuable. Some take quite a bit of time to write.
But not this one.
Have you read the claim yet?
link to e-foia.uspto.gov
Simply going through the lengthy and expensive appeal process at the USPTO and then the Federal Circuit is enough to deserve a written explanation at the end of it.
A written opinion with sanctions attached would be reasonable. I agree with that much.
“Of course opinions are valuable. Some take quite a bit of time to write… But not this one.”
That makes the actual suggested legal error all the more egregious – not less.
You in particular Malcolm suffer from a myopia of “defend the claim” that blinds you to the actual legal issue at point,
Talk about dust-kicking…
Paul,
If you know that Malcolm is the first of M of MM, what is his last name? Would you agree that when someone refers to another on a website as “confidence man”, the creator of a cesspool, a dreg of the patent bar, money-grubber, bottom-feeder, and purveyor of BS they should have the courage to do so with their actual name so they can be held accountable for their actions? It seems to me that a man like Malcolm M as concerned about justice, fairness and decency should want to proudly state his opinions as a fully identified person.
MWS
Michael,
While I will fully disagree with the “outing” attempt (and the fallacy of the “use your real name” gambit), the last “M” stands for Mooney.
However, this is not his real name.
Quite in fact, Malcolm (even as he once bitterly whined about the use of pseduonyms) is the largest user of a variety of fake names in the last five years.
As is his typical custom, he will use rapid accusations of the very things that he does.
Quite so in fact, that an acronym describing this in short hand version used as a marker of his deeds became banned by the editors of this blog.
The acronym (take the bold letters of the following) being banned was just another eyebrow raising, perception creating misstep along a long line of “let’s make the ecosystem better but do nothing about the single biggest blight here for the past eleven years” efforts to set a particular narrative.
Malcolm’s number one tactic:
Accuse Others Of That Which Malcolm Does.
If you think that’s bad you should see Shore’s other application which got rule 36-ed late last year.
US20100010686:
Claim 1: A system for distributing alternatively generated power to a real estate development, the real estate development having at least two individual properties, the system comprising:
at least one alternative energy power generator;
a distribution station coupled to the at least one alternative energy power generator;
the at least two real estate properties each coupled to the distribution station; and
a written instrument associating ownership rights in a portion of the power received from the alternative energy power generator with ownership of at least one of the real estate properties.
But the real problem is that these claims are too hard to obtain and enforce! Plus “vague standards”. Just ask Judge Michel.
Just to stir a discussion, as a practical matter, how often will Festo or DOE risk a difference in the value of an patent claim these days, when considering the choice between (1) adding or amending a claim to expressly include an asserted and thus admitted claim limitation from the spec, vis a vis (2) what seems to be a high risk of losing an argument in a BRI contest that the spec limitation must reasonably be read into the claim interpretation, and thus not getting any such claim?
The lack of response to this question, especially the absence of citations of Fed. Cir. decisions in which DOE was successfully since Festo, seem to answer the question?
The impact of Festo is very technology dependent. Some technologies result in products with minor differences where a Festo loss of equivalents would make a design around to avoid infringement easy. Other technologies less so. If a patent is an improvement or advance on an already crowded field, the loss of a DOE claim can be the end of the monetization process. In some instances, the claims may be so foundational to a new technology or major advancement that there is no easy or practical design around so the loss of DOE is not material to the overall project value. If a patentee is forced to amend, the best way to handle the loss of DOE is to cram in as many versions of the invention in dependent claims as possible. But its a question that is not “generally” ansswerable out of the context of a particular case or read on a specific product.
The impact of Festo is very technology dependent.
Baloney.
Shore’s representative during oral arguments: “this court never relies on boilerplate language, especially if it was to help our side.”
Kinda funny given yesterday’s post.
Looking in from Europe, what strikes me is the difference between i) uttering one’s “opinion” and ii) explaining the reasons for holding that opinion.
Two situations in particular come to mind.
First, at the UK Supreme Court, 5 judges give their individual opinions. At least one is reasoned. From 1 to 4 other “opinions” are in the form “I agree with Lord X, for the reasons he has given” (period). I never for one moment doubted that each one of those “I agree’s” constituted a full-blown 100% “opinion”.
Second, at the EPO, one gets the decision at the end of the Oral Hearing. The written reasoning follows, weeks later. I never doubted for one minute that what I was being given orally, at the end of the Hearing, was a fully formed “opinion”.
Likewise, when the Federal Circuit announces (in effect) “We agree with the DC, for the reasons given by the DC”. How can that possibly not be an “opinion”?
What am I missing here?
MD: What am I missing here?
Nothing.
Well, except you didn’t stop to marvel at this statement in the brief:
The inventor recognized that a quality recording of a live performance such as a concert is only available long after the event, if ever
Somehow the guy who started Lollapalooza — an event recognized by most music fans as a huge rip-off and a brown acid trip to be avoided at all costs — seems unaware that people make have been shooting performance video, including video of “predetermined” “audience locations”, and distributing it immediately afterwards since pretty much forever.
Oh but wait! This is “quality” video. And it’s for sale. And the money benefits greedy promoters and patent attorneys! Isn’t that wonderful?
Malcolm, I regret the failure of the courts of the USA (unlike the EPO) to limit the obviousness issue to obviousness within the useful arts. If it were so to limit the enquiry there would be fewer futile trips to the courts of appeal, embarked upon by disgruntled persons, aggrieved that their brilliant idea for making pots of money is deemed under 35 USC 103 to be devoid of patentably inventive activity.
“Likewise, when the Federal Circuit announces (in effect) “We agree with the DC, for the reasons given by the DC”. How can that possibly not be an “opinion”?
What am I missing here?”
A Rule 36 Judgment does NOT indicate agreement with the reasons given by the USPTO (District Court rulings are not subject to the opinion requirement of 35 USC 144), but only with the result. The Federal Circuit said that previously, I think it was in TecSec if my memory is correct.
Thanks for that reply, B. But, OK, even if the panel members have different reasons for coming to the same conclusion as the PTAB, they’ve still reached an “opinion” on the matter in dispute, haven’t they? In order to utter the thought “I agree” they must first have formed an “opinion”. Or?
The term “opinion” is not used as a plain word but has a specific meaning according to multiple authorities, including the Federal Circuit itself.
But that does not guide the patent prosecution on remand. Remember, the case is not over. The prescribed opinion is supposed to “guide” further prosecution. If a patentee does not know the grounds for affirmance, how does he know what to do in order to finish prosecution?
For someone with so much professed experience related to the industry, the ability to turn a blind eye to a legal term is stagger1ng.
0btuse. Is it deliberate? (said in the best Andy Dufresne tones)
What, of the issues on appeal, did they agree with the lower court. All they needed was one.
Actually, a Rule 36 affirmance only means the outcome was “correct”, and it specifically does NOT adopt any of the reasons given by the court or administrative agency below. The Federal Circuit may have agreed with one or both bases, but it also can affirm under Rule 36 simply because it agrees with the outcome. Rule 36 is perfectly ok if the proceedings below are OVER, but in the case of a patent still subject to prosecution, a Rule 36 affirmance does nothing to “guide the proceedings below” after remand. The Federal Circuit did not find that the invention was not patentable, only that it was not patentable as currently claimed. 35 USC 144 specifically requires the Federal Circuit to issue an “opinion” to be made part of the prosecution history so the patentee and examiners know on remand what is required for a patent to be allowed. That is the key here. The Rule 36 affirmance leaves the patentee and the examiner guessing what needs to be done in later prosecution to achieve a patentable claim.
Whether or not you like my invention, like me or agree with the result, it does not change the fact that Congress expressly required an opinion to guide the prosecution on remand. All patentees who go through the arduous (and expensive) process of applying for a patent, appealing to PTAB, then appealing to the CAFC deserve the statutorily required treatment on appeal so they can decide if further prosecution is likely to result in a patent that is enforceable and valuable or that the case should be abandoned. The discussion on the merits of my invention is a side show to the appellate issues: Did the CAFC follow the law that expressly and unequivocally states that they SHALL provide an opinion to be made part of the record to guide the later PTO proceedings.
For all the mewling over the (suspected) worth or lack thereof of any claims in the case, the legal issue exemplified by the post at 10.3.1 bears a direct answer.
As is sadly typical, there is a lot of dust being kicked up in the fallacy that looking to resolve the quite evident legal mistake is somehow (purposefully) confused and conflated with “defending claims.”
Maybe people should be paying more attention to the law, and less attention to their anti-software patent Windmill Chases….
“Second, at the EPO, one gets the decision at the end of the Oral Hearing. The written reasoning follows, weeks later. I never doubted for one minute that what I was being given orally, at the end of the Hearing, was a fully formed “opinion”. ”
I’ve also never doubted that the writ would differ from the oral opinion. But speaking to oppositions, rarely have I gotten the writ in a time period one would describe as “weeks”, whether at first instance or at appeal.
More often 6-10 months, and in some cases after multiple inquiries of the rapporteur, a year or more. The worst was some 23 months after the hearing, and many inquiries and failed promises to get the final writ out.
As a more recent example, I’m still awaiting the official writ of an opposition appeal we won (patent upheld as granted in first instance and in appeal) in late November.
You and I have discussed this before, but you seem to live in some idealised version of EPO practice. More power to you. But your idealised experience is not the same experience of some of us.
All the above said, I have no argument as to your oft-expressed preference for the EPO’s P-S approach to inventive step, which is much more workable (from a certainty standpoint) in every day terms to the US’s KSR approach to KSR.
Oops, apologies to all.
Last word above should be “obviousness”, not “KSR”.
Michael Shore: We are literally getting to the point that the US patent is going to be worth less than half or maybe a tenth of what a Chinese patent is worth
It’s time to invest in Chinese patents! Hurry, folks! Step right up! You’ve never seen a more realistic animated mouth than what’s here in this Chinese patent. You won’t believe your eyes as you see this cartoon character move about in a predetermined audience location! It’s a miracle, I’m tellin’ ya!
Sigh. See link to kluwerpatentblog.com
Sigh again. See link to bbc.com
MM your ignorance is only outpaced by your vitriol.