By Dennis Crouch
I’m looking forward to a few of upcoming IP Law events. Next week, I’ll be joining several hundred IP attorneys at the AIPLA annual meeting in Washington DC. I am the final speaker of the event — you guessed it Professional Responsibility & Ethics. The talk will take a comparative-law approach — looking at how duties and responsibilities shift according to the forum (litigation, prosecution, AIA Trials). My ethics talk follows a year-in-review panel with four all-star speakers:
- Trademarks – Prof. Christine Haight Farley (American)
- Patents – Prof. Mark Lemley (Stanford)
- Trade Secrets – Prof. Elizabeth Rowe (Florida)
- Copyrights – Meaghan Kent (Venable)
- Ethics Prof. Dennis Crouch (Missouri)
Because I already follow patent issues so closely, I typically learn the most from non-patent panels. I am particularly looking forward to hearing from Daniel Lee who is a deputy U.S. Trade Representative in charge of Innovation and Intellectual Property.
After that, I’ll be headed back to Chicago for the JMLS Annual IP Conference on Nov 2 where Judge Newman will give a keynote on how “The Future Is in Our Hands.” Thanks to Prof. Daryl Lim for organizing this event.
Meanwhile, my co-blogger Prof. David Hricik (Patent Law Ethics) has several interesting upcoming events:
- October 19, 2018 – Hricik is speaking at the 33rd Annual Privacy & Technology Law Institute in Atlanta on “Legal Ethics in the Modern World”
- October 23, 2018 – Hricik is speaking at the 12th Annual Corporate IP Institute in Atlanta on “How Technology Creates Professionalism Issues”
- November 1, 2018 – Hricik is speaking at the 23rd Annual Advanced Patent Law Institute in Austin on “Practicing IP Law Ethically in the Cloud”
- December 4, 2018 – Hricik is presenting a webinar for Stafford called “Conflicts in Patent Prosecution”
Jumping ahead to January — I’m headed to the final Colorado Bar Ass’n SkiCLE (it will likely continue in future years in some other form) January 2-6 2019 in Aspen/Snowmass. Use code “FACULTYINSIDER” for $100 off. See you on the slopes.
link to ipwatchdog.com
The arrogance of the academics is just incredible. I think people like Lemley should have to respond to this —and most importantly if he acts unethically there should be consequences.
But the academics who were paid to push the Troll myth need to respond to this.
It would be very interesting to have a debate with Mark Lemley that was moderated regarding the patent system. There would have to be consequences if Mark Lemley acted unethically during the debate. I think there are plenty of people that are advocating for the patent system that a moderated debate would be possible.
What I think, though, is that the reputation of academics is so bad that no sane person would want to get on a stage with one.
Paul Morgan does bring up a very interesting post. How do you construe a claim when it fails 112 for an IPR?
Of course, maybe that won’t happen very often. I’ve done litigation and written briefs, etc. I have to say 112 arguments are very rare. Also, it would be very rare to have a 112 issue in an independent claim.
Also, since you can’t make 112 arguments as the petitioner, you will be able to make them at the DC.
Thanks for In re Aoyoma Thomas Pain. IMHO, the way forward with the PTAB is to make it more like a DC procedure. It is pretty clear that the SCOTUS doesn’t want all these patent cases. We should just live with it. They have the POWER. We should focus on how to fix the PTAB and turn it into a DC proceeding. Making the patent judges ALJs would be a great first step.
I think the answer probably is that the claim is not invalid based on the 102/103 arguments that are made.
Turning the PTAB into a district court would defeat the will of Congress (be that will captured or not) in regards to the fact that the first portion of the IPR dance was desired to NOT have the Article III standing requirement.
“How do you construe a claim when it fails 112 for an IPR?”
What did Congress say about that?
It appears that Congress does not allow that type of thing to fall within the domain of an IPR (and remember, they were very liberal with what falls within the domain by explicitly allowing — at least in the first portion of any challenge — a NON-Article III ‘standing’).
If Congress did not allow it, then it is not allowed, and neither the challenger nor the “neutral arbitrator” may use that avenue to deny a granted (albeit sticks taken from the bundle of property rights) property right its existence. Such should be the case for a Private personal property right, and even more so for a Public franchise property right (given that the Franchisor — the government — set “the rules of the game”).
As for your attempt to say “Also, since you can’t make 112 arguments as the petitioner, you will be able to make them at the DC.” – I am not so sure, given that a view OF the district court is that such a court BEING only a “part II” of a proceeding is then necessarily only a court of appeal – and such are properly only reviewing matters vetted below (and thus properly constrained to only reviewing those items properly vetted below), raising new issues on appeal should be foreclosed. Keep in mind that your District Court (at appeal level) is playing the role of the neutral arbitrator, and is not playing the role of “Super Examiner.”
I am not talking an appeal anon, although it would not surprise me if the CAFC decided to just decide the issue sua sponte with their own little private fabricated facts.
But the point is that Congress did intend that only certain issues would be decided at the PTAB and other would have to be decided if you asserted the claims in a DC.
Ah, you are not talking about changing the AIA directed IPR procedure’s Step Two (which IS an appeal step), and instead wanting the first step to be outside of the executive branch.
That though still has (at least) two drawbacks:
1) the first instance still does not allow 112 attacks
2) you now cannot follow the explicit decision of Congress to open challenges beyond an Article III standing requirement.
I cannot see a path to what you want (given these two things).
Dennis, here is a serious new patent law conundrum for discussion. The PTAB does not have IPR jurisdiction for 112 or indefinite claim issues. Before now, if claim scope could not be resolved as to one or more claims because of claim element ambiguity, the PTAB simply refused to decide those claims, and only decided the others. But SAS now says all contested claims have to be decided. Does that leaves the PTAB with only the option of holding that invalidity has not been proven as to those ambiguous claims, as it just did in one case? But if so, what about estoppel?
If the indefiniteness problem is a means-function claim with no spec enablement, why cannot the PTAB decide that the IPR should proceed on 102 or 103, treating the means-function claim as unlimited in scope by 112 re any prior art literally encompassed by the literal [unlimited] means-function language?
That is an interesting issue Paul. I think one of the big problems will be that the patent judges won’t have arguments for why it fails to meet 112 from the petitioners.
I suppose you could work it into claim construction by defaulting to a very broad claim from the indefiniteness and then invalidate it with 103.
TP, not sure that In re Aoyama (Fed. Cir. Aug. 29, 2011) clearly applies, since it was an appeal of an ex parte application PTAB decision in which 112(f) and claim ambiguity could be properly considered by the PTAB [unlike in an IPR] and apparently even by the Fed. Cir. itself.
But what I was theoretically suggesting is clearly a stretch that a Fed. Cir. panel might well not approve.
Aoyama addressed some procedural issues, but the decision is clear that the substantive law of claim interpretation prohibits any (e.g., BPAI) and all (e.g., Fed. Cir.) from interpreting a claim as you suggest. Even under BRI.
I think that Paul’s comment here belongs below 5.3.
Be that as it may, refreshing my recollection of In re Aoyma, I am struck by this passage at page 7:
“Moreover, when the disclosed structure is a computer programmed to carry out an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming, 184 F.3d at 1349 (citing In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc)).”
Let’s not forget that the very first case post Bilski related to the issue affirmed In re Alappat as remaining good law, and that NO case has explicitly stated otherwise.
“the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”
What’s the structure of that special purpose programmed computer? Anybody know? In what fixed permanent and definite manner does it differ from the differently programmed computers in the prior art?
Let everyone know, oh super serious people who cite the absolute lamest piles of nonsense that the CAFC ever boofed out of its collective behinds.
Are you confusing optional claim formats as somehow not being optional again?
Are you confusing optional claim formats
No, you sick little dissembling psych-0 @h0le, I’m asking you and your fellow patent maximalists a direct question based on a passage that you favorably cited and presumably understand.
We can all see that you don’t want to answer the question. And we all know why you don’t want to answer it.
This is one of the reasons that you keep getting hammered whenever intelligent lawyers are pitted against the maximalists shirty lawyers. And it’s why you will continue to get hammered.
Yes, I’m laughing at you. The j0 ke was on you before Mayo. Before Bilski. And before Alice. And it’s always going to be on you because you s u c k.
Your “direct question” is exactly the point that I am stressing in my reply to you that you do not acknowledge.
Your “direct question” presupposes (assumes) that the claim must be written in a manner to be explicitly differentiating with “objective physical structure” and I point out to you (again) that THAT claim format is an optional claim format.
I am not the one that is “dissembling psych-0 @h0le” here by continuously reverting to wanting an optional claim format to be NOT an option.
The answer is simply not the answer that you want it to be, because your question is built on a faulty view.
For all of your crowing about “hammering,” it is you that gets hammered (and remarkably easily so) every time you try to make this (faulty) point by wanting an optional claim format to be NOT optional.
Note how the ONLY thing that you can do – the ONLY thing that you ever do – on this point is to attack with ad hominem.
You never address the plain fact that what I say is absolutely correct. You never accept the plain fact that what I say is directly on point. Your question is geared to somehow having an optional claim format to be not an option.
Since that claim format is optional, the option can be chosen not to be taken.
Not taking that option simply does not change the reality that a programmed computer is — and must be — different in an objective physical manner in order to have a different functionality.
All – and I do mean all – of your whining and protests and ad hominem cannot change that fact. Six ways to Sunday, this has been pointed out to you; from the Grand Hall, to Night Writer’s chiding you on magic and witchcraft, to even the Simple Set Theory explication and to my asking (politely even) for you to address the substantive counter points presented to you, you never do that.
Ever.
Reality is not going to change Malcolm. You can run all that you want, but at the end of the day, it is and always will be ever so simple to show that you are the one dissembling here.
No structure MM. It is magic. It performs new functions with no new structure. Magic. We suspect that spirits in the spirit world are lending humanity a hand by performing the information processing. But that is just a theory.
Note how he constantly dissembles and seeks to “cast doubt” with his wanting to have a particular (and optional) claim format — his “objective physical structure,” while NOT recognizing the direct result of the Grand Hall experiment, nor embracing the correct patent doctrine of inherency.
Note as well that he remains silent when faced with the fact that even his “witch” desire can be met for software innovation (as I recently remarked again about software claims could be written in that “objective physical structure” albeit in tens or hundreds of page, and not being “easily” recognized – or examined – by a human. He has NO answer to these counter points, and uses the “Internet shout down” method of drive-by monologuing as if these points have never been provided to him before.
He clambers incessantly like a noisy, empty wagon, running on and on about the “inequity” of those seeking protection for innovation of a particular form, and yet employs an inequitable form IN his constant whining.
the Grand Hall experiment,
aka the Monte Hall Espermit. Keep pounding your cr 0tch, Billy! Super serious stuff.
the correct patent doctrine of inherency.
We’re not talking about anticipation, you p@thetic weasely do ucheb@g.
Just answer the questions you were asked, Billy. Are you having a rough day or something?
software claims could be written in that “objective physical structure” albeit in tens or hundreds of page
Oh noes! Tens or hundreds of pages!
[clutches pearls]
S0 huge. Maybe someday someone will invent some kind of shorthand where you can reference that structure in a patent claim using an identifier that is associated with a file of some sort.
Probably too difficult for the s0 ftie w0fties. Kindergartners do struggle with that sort of thing.
More empty and off point ad hominem from you, Malcolm.
The point presented has nothing to do with “anticipation,” so why are you trying to dissemble by inserting that?
Maybe instead of trying to dodge and make fun of the label, maybe you take that Grand Hall experiment and show your “logic.” Well, we both know why you have never attempted to do so.
These are questions long put to you, Malcolm. Maybe you should answer these questions first.
(And yes, by the way, your question has been answered – with the fact that any software innovation CAN BE written in your “desired” optional claim format.
Your “clutches pearls” comment merely seeks to kick up dust on the fact that even as such could be done, doing so would only cause you to whine even more.
You appear to want a “shorthand” that you are familiar with from the “bio” angle, so maybe you should work on that. As it is, the “shorthand” chosen is a different shorthand.
Your “liking” of the different shorthand is simply not required.
Maybe you might consider stopping your temper tantrums and whining long enough to realize that…
Paul,
You alight upon a real consideration (the fact that the Congress through the AIA explicitly limited IPR in a certain manner).
ANY suggestion from you though as to the Executive Agency rewriting the law in order to meet any desired Ends that you may think up (no matter how “good” those desired Ends may be), must — or at least should, and should for reasons that should be self-evident to any decently thinking-capable attorney — are answered in the reflection that the executive branch is simply not the branch authorized to write (or re-write) patent law as you seem to want.
“why cannot the PTAB decide that the IPR should proceed on 102 or 103, treating the means-function claim as unlimited in scope by 112 re any prior art literally encompassed by the literal [unlimited] means-function language?”
Because In re Aoyoma.
If the indefiniteness problem is a means-function claim with no spec enablement, why cannot the PTAB decide that the IPR should proceed on 102 or 103, treating the means-function claim as unlimited in scope by 112 re any prior art literally encompassed by the literal [unlimited] means-function language?
There is no reason that PTAB can’t do this and it’s a reasonable approach to the issue. On appeal, the CAFC can do a de novo claim construction.
The arguments that Allapat (?!?) would preclude this resolution of the conundrum are very silly. Ayoama says nothing about how the PTAB would need to deal with this issue procedurally. There is no case law — none — that mandates that an indefinite means plus fxn claim be somehow limited to a non-existent structure, whether that structure is fake (as it always in the case of “do it on a computer” claims) or real. If the challenging party in an IPR wants to argue that the means encompasses all conceivable means capable of performing the task (news flash: programmable computers can perform any data processing task they are instructed to perform! shocking!) and the PTAB thinks that’s the best construction then guess what? Another junk patent gets righteously tanked.
Learn how to write a specification, maximalists. Lazy piles of sh*t.
“There is no reason that PTAB can’t do this and it’s a reasonable approach to the issue.”
You really should try to pretend that law matters.
After that, I’ll be headed back to Chicago for the JMLS Annual IP Conference on Nov 2 where Judge Newman will give a keynote on how “The Future Is in Our Hands.”
Just apply the law, Pauline, and stop pretending that methods of using logic to process data have “structure.”
MM>>>Just apply the law, Pauline, and stop pretending that methods of using logic to process data have “structure.”
Just give in to the magic. Function without structure.
Dennis, I hope your ethics talk will consider the sanctions power and scope of the PTAB under the IPR statute, 35 USC 316(a)(6), and its implementing rules, since it has so rarely been exercised so far. Contrasting that to other PTAB ethics sanctions under other proceedings that do not have that same statute.
Also the ethics of sitting judges giving speeches cheerleading the ins @ne use of the patent system to protect logic and information.
Malcolm calling for the application of ethics to anyone about anything — given his unrelenting dissembling — is stultifying.
Even (especially) in the immediate post, as he (once again) obfuscates with this “protect” characterization of one of the options of innovation in the computing arts.
Re the design patent shown, why would they want to make their “JUST1” trademark an express limitation on the claim scope of their design? Why would a design infringer put that TM on their otherwise infringing goggles and thus be subject to TM infringement as well as design patent infringement?
So is this a group of people that are being paid by large corporations to advocate for weaker patents?
Try to focus on the real ethical challenges that have destroyed the credibility of academia.
1) Disclosures so we can see whether we are dealing with an academic or a paid advocate.
2) Consequences for unethical conduct. This means that there should be a way to file a complaint against professors for papers they have published in law journal articles and that there should be consequences for unethical conduct. Additionally, law journal articles should be peer reviewed.
(Probably Dennis will delete this post.)
As it is we should assume that we are dealing with a group of unethical people that are being paid by large corporations to push an agenda.
While sharing your disdain of advocacy cloaked under the robes of academia (and lamenting the capture and subsequent loss of critical thinking in the larger sense of all academia — not just legal academia), your post here comes across painting with too large a brush.
The structure that nourished excellence is gone. The fact is that every academic is suspect now. There are no legal scholars in patent law anymore.
You guys are hilarious. “the capture and subsequent loss of critical thinking in the larger sense of all academia …” “The structure that nourished excellence is gone.” What structure are you talking about, Night?
DanH, imitating the biggest j off on the blog is not becoming.
They don’t know what they’re talking about. It’s a script they recite to comfort themselves in a world where there shirty ideas are disdained by intelligent people.
More Accuse Others meme from Malcolm…
Can’t most patent lawyers be described as being paid by large corporations to push an agenda? Isn’t that 90% of the AIPLA and IPO? I mean, the members of the IPO political action fund seem to be from Bristol-Myers Squibb, 3M, and Siemens. Not exactly your advocates for the apocryphal individual inventor that is just one strong patent away from fame and fortune. I don’t think anyone can withstand your proposed scrutiny. Every lawyer on here should be required to disclose all of their clients before they can substantively comment.
See the word academic and rethink.
Whether a person is an academic is irrelevant to the issue at hand.
Of course it is relevant and the most relevant issue. The whole point of academia was to have some people that could be trusted off on the sidelines.
Now we have unethical paid off academics pretending to produce academic papers.
“The whole point of academia was to have some people that could be trusted off on the sidelines.”
I think you’re confusing academia with football referees. I’m pretty certain that is not (and never was) the entire point of academia.
I am sure the whole point is to have people whose motives are academically driven (not being paid off by large corporations) and people that are ethical (verifiably so with consequences for unethical behavior.
You are obviously just trying to obfuscate.
I think that perhaps DanH views “academically driven” as somehow naturally skewing to the Liberal Left predominance IN academia (not seeing – or even thinking – that this predominance is NOT a good thing).
This lack of basic understanding obviously diminishes his opinion on the matter.
Every lawyer on here should be required to disclose all of their clients before they can substantively comment.
I can only agree with you ~50% here. I think that a poster has more credibility the more transparent that s/he is. That is why I post under my real name. Anyone who wants to can find out my “client” list (that is, my employer’s name) by a simple Google search. You can, therefore, easily know which of my assertions are more or less self-interested, and discount accordingly.
Even where a poster is anonymous, however, we mostly know that this poster has some clients. We know, then, that every anonymous viewpoint is informed by some degree of self interest, and we discount accordingly (there are members around here who self interest so palpably controls what they say that I have simply stopped reading or considering their contributions). In other words, disclosure is not essential for one to be taken seriously. It is simply necessary in order to be taken more seriously.
This seems a very different matter, however, from academics. Most (all?) academics who post around here do so under their real names, so their affiliations should be evident. Unlike lawyers, however, academics are not assumed to have clients. Quite the opposite. I assume that an academic is unbiased. If the academic really does have undisclosed conflicts of interest, that really is “dirty pool.”
Back before I became a patent lawyer, I was a microbiologist. When a microbiologist submits a manuscript for publication to any of the reputable journals (J. Vir., J. Bac., Infection & Immunity, PNAS, Cell, etc), they are obliged to submit a financial & employment disclosure (e.g., “Dr. K does consulting work for Pfizer,” or “Dr. M receives clinical trial funding from Novo-Nordisk,” etc). Failure to make such a disclosure honestly is grounds for demotion (even for tenured faculty), and will cut you off from being published in any reputable journal after the dishonest disclosure is later uncovered. I see no reason why the same sort of system ought not to prevail in other reaches of academia.
I assume that an academic is unbiased.
Hm, on reflection, that is poorly phrased. I do not assume that an academic approaches any given question without bias or priors. I do assume, however, that whatever bias or prior assumption that the academic brings is based on something other than lucre. To the extent that a legal academic is acting like a “hired-gun” (i.e., like any other lawyer), that should be made clear up front. Failure to disclose as much is unethical (although I have no reason to suppose that any contributors around here are engaged in such dirty pool).
Also Greg, re client disclosures of commentators, on most of the patent law subjects discussed on this blog, the clients have no position [with the possible exception of “special interest” legislation proposed by pharma or biotech companies]. Especially since most large clients are on both sides of many issues – as patent obtainers and owners, patent licensors, patent licensees, patent suit plaintiffs and patent suit defendants.
Comments on this blog seem to be heavily weighted by those who’s practice is primarily in obtaining patents from the PTO.
As for academic patent papers, I think you would find that the attitudes of most authors towards patents before they even became academics, especially from economists, has far more to do with their viewpoints than whatever little if any part of their income is from privately sponsored research or private legal clients. Very few patent law or TM academics ever become famous enough to be sought after by law firms for significant paid patent litigation advice or brief drafting assistance, and that would not always be anti-patent either.
>>Very few patent law or TM academics ever become famous enough to be sought after by law firms for significant paid patent litigation advice or brief drafting assistance, and that would not always be anti-patent either.
Except I posted on here a report on Google’s influence of academics where they pay academics to write articles to abstracts written by Google. Just as one example. Lemley also admitted that he has a vested interest in burning down the patent system.
Lemley also admitted that he has a vested interest in burning down the patent system.
LOL
Cite please.
Zero memory game again.
[A]ttitudes of most authors towards patents before they even became academics, especially from economists, has far more to do with their viewpoints than whatever little if any part of their income is from privately sponsored research or private legal clients.
I am sure that this is true. I proceed on the assumption that the academic contributors around here have no more financial stake in the outcome of any given debate on which the contributor engages than has any other citizen. I think that this is a generally sound assumption because, as you say, most academics are of too low a profile to make it worthwhile for an interested party to try to sway the academic’s writing and speeches. If, however, that assumption is incorrect in any given instance, that point really should be disclosed.
… and that would not always be anti-patent either.
I do not see why this point is supposed to be relevant. Financial interest on any side of an issue should be disclosed. Transparency is not important only for one side.
Attempting to categorize people or opinions as “pro-patent” or “anti-patent” is a fool’s errand. One can be a firm believer in the benefits of a strong patent system and also believe that too many patents are granted. Just as is happening in the political environment, making everything into a dichotomy makes it impossible to discuss more complicated issues, such as whether there are valid public policy reasons to favor certain types of patents over others, or whether there are systemic problems in examination of certain types of patents, etc.
Attempting to categorize people or opinions as “pro-patent” or “anti-patent” is a fool’s errand.
Agreed. The epithet “anti-patent” means a million different things to a million different people. To see person X describe person Y as “anti-patent” tells one more about X than about Y.
Pure B$.
There are those that are clearly anti-patent.
Pretending otherwise is beyond f00lish.
lol. Speaking of the fool’s errand.
Yes, I’m sure there are “those that are clearly anti-patent.” But I’m equally sure that there are far fewer of them than you imagine.
Not far fewer than with whom I interact with here.
“Comments on this blog seem to be heavily weighted by those who’s practice is primarily in obtaining patents from the PTO.”
Clearly not so.
Perhaps you meant that those expressing desire for strong patent protection know and understand why protecting innovators with work that obtains such patents are present.
But “heavily weighed” ignores the large numbers (which include you) that have no such motivation.
You can, therefore, easily know which of my assertions are more or less self-interested, and discount accordingly.
It does explain a lot, although it doesn’t explain why you choose to make self-interested (i.e., client-puffing) comments on a blog in the first place when we can all see that is what they are.
Care to explain? You think that’s part of your job to do that? Do they ask you to do that?
We know, then, that every anonymous viewpoint is informed by some degree of self interest
Right. I post from the viewpoint of a human being and a citizen and an innovator and who wants to be able to interpret data (including data about my own body) using available facts without fear of patent infringement. The fact that I’m also a patent attorney changes nothing except that it makes far more informed than the average person about how the system works in practice.
Comments are closed.