Does a “Blocking Patent” also Block Objective Indicia of Nonobviousness

by Dennis Crouch

Acorda Therapeutics, Inc., v.  Roxane Laboratories, Inc. (Supreme Court 2019)

Obviousness is the core doctrine of patentability and primary focus of both patent examination and post issuances PTAB challenges.  In this case, Acorda has asked the U.S. Supreme Court to spend some time on this important doctrine — and particularly consider the role of objective indicia of nonobviousness such as “commercial success, long felt but unsolved needs, [and] failure of others.” Quoting Deere.

The question presented is whether objective indicia of nonobviousness may be partially or entirely discounted where the development of the invention was allegedly “blocked” by the existence of a prior patent, and, if so, whether an “implicit finding” that an invention was “blocked,” without a finding of actual blocking, is sufficient to conclude that an infringer has met its burden of proof.

The infringement lawsuit was triggered when Roxane (and others) filed Abbreviated New Drug Applications (ANDAs) with the FDA to start making generic versions of Acorda’s drug treatment for multiple sclerosis (Ampyra). Roxane successfully defended the lawsuit by arguing that the asserted claims were obvious.

For the obviousness analysis, the patentee Acorda provided evidence of commercial success and long felt but unmet need that was tied to the invention at issue. However, the Federal Circuit found that those secondary factors did not apply because of a broader blocking-patent already exclusively licensed to Acorda.

The setup here begins with the fact that Acorda is the exclusive licensee of a broad patent for treating 4-AP to treat MS (Elan patent). The Elan patent has now expired, but it was firmly in place as Acorda conducted its research and obtained FDA approval. This petition here focuses primarily on four follow-on patents obtained by Acorda covering tweaks to the treatment plan. Despite the tweaks, it appears that Elan’s broad patent still covers the drug treatment at issue here.  I.e., Elan’s patent is a “blocking patent.”

When it came to the secondary indicia of nonobviousness, the Federal Circuit majority determined that a key reason why Acorda was able to do research on its four follow-on patents is that it was protected by the blocking patent — no other company was ready to risk infringement liability to do the research.  In other words, the commercial success, failure of others, and recognized but unmet need were all due to the Elan patent’s chilling effect on competition. From the majority:

The risk of infringement liability for marketing in the US would have provided and independent incentive [for third parties] not to develop the invention of the Acorda patents, even if those inventions were obvious.”

The decision in Acorda falls in line with the court’s 2005 decision in Merck & Co. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) (en banc denied; cert denied). In that case, the Federal Circuit also held that a prior patent that precluded market entry was the cause of Merck’s commercial success — not the invention’s ingenuity.

Full Panel Denies Rehearing in Fosamax Patent Case

In its brief, Acorda provides its legal case:

The Federal Circuit’s invocation and expansion of its judicially manufactured blocking-patent doctrine to negate Acorda’s “significant,” “convincing,” and unrefuted evidence of nonobviousness is plainly irreconcilable with this Court’s decision in Graham v. John Deere Co., 383 U.S. 1 (1966), which established that an inquiry into commercial success, failure of others, and long-felt but unmet need is an important protection against hindsight bias in the obviousness analysis. As Judge Newman recognized in her dissent—and as Federal Circuit judges have emphasized in prior dissents highlighting the blocking-patent doctrine’s deficiencies—the elimination of that essential safeguard makes it far more likely that courts will submit to the “temptation” of invalidating patents that are obvious only when viewed through the lens of the patents’ own teachings.

The Federal Circuit’s application of its blocking-patent doctrine in this case was particularly problematic because the court of appeals identified no evidence that anyone was actually deterred by the Elan patent from researching low-dose uses of 4-AP—and instead shifted the burden of proof to Acorda to “supply evidence” to negate the district court’s “implicit finding” of blocking.  In so doing, the Federal Circuit upended the clear-and-convincing-evidence burden of proof for invalidity challenges that this Court recognized in Microsoft Corp. v. i4i Limited Partnership, 564 U.S. 91, 101–02 (2011), and obliterated the presumption of validity that Congress codified in the Patent Act, 35 U.S.C. § 282(a).

Read the petition here: Link.

96 thoughts on “Does a “Blocking Patent” also Block Objective Indicia of Nonobviousness

  1. 12

    There have been a few wayward wanderings into the weeds here, but let’s see if one particular point possibly provides some providence:

    The setup here begins with the fact that Acorda is the exclusive licensee of a broad patent for treating 4-AP to treat MS (Elan patent).

    combined with

    The Elan patent has now expired,

    Let’s stop for a moment there and realize just what this means.

    Anything that would have been protected by the expired patent (and only protected by the expired patent) is now in the public domain.

    Period.

    This provides any follow on provider a clear avenue to provide something to the market that once had been “blocked.” The original patent has served its legitimate “blocking” action – after all, that is what patents DO.

    Here is a “tripping point” in the article as written:

    Despite the tweaks, it appears that Elan’s broad patent still covers the drug treatment at issue here.

    IF the broad – AND NOW PUBLIC DOMAIN – patent covers the drug treatments at issue, then those drug treatments at issue cannot be the basis of the suit at hand.

    To the extent that the article as written indicates a “fully and only coverage”, not only is the article wrong – but the article is written p00rly and engenders confusion.

    It is only IF the broad patent does NOT cover the drug treatment at issue (fully and completely) is there any real issue at law here.

    The question then cannot presume (as the article appears to do so) that the broad patent covers the more narrow items that are the subject of the objectively “follow-on” items.

    It should be made clear that the four follow-on items are NOT covered by the broad patent.

    If THAT premise is put forth (as need be), THEN the “question” of any additional research that had to be conducted in order to get to the differentiated items can be judged separately from the initial patent (and any research for that initial patent, which would have been done LONG ago).

    The tweaks either are “different enough” or they are not “different enough.”

    Given that both sides seem to agree that additional research WAS needed, the answer of “different enough” – on its face – seems to have an easy answer.

    Below, Random attempts to quip that this is a circular argument – but it is not. One may not even need to get to any sense of the “circular” portion (the inclusion of secondary indicia) in order to at first blush determine whether or not the four follow-on items fall within the scope of the NOW-public domain patent. The patents (and the questions related to those patents) of the four follow-on items can be put to one side and the original patent — alone — may be analyzed to see if coverage indeed extends to the items being brought under the other patents. IF the items so challenged can be clearly stated to be fully made under an item in the public domain, then the case need not even get to the four follow-on patents.

    Or, to paraphrase from an example below, IF Bicycle B is fully contained within the patent for Bicycle A, and the patent for Bicycle A has expired and is now in the public domain, then there is no case for infringement for Bicycle B. If, however, Bicycle B is an improvement patent, with some item (and specifically note here – this some item NEED NOT be claimed all on its own, as that is NOT how patent law works), then there may be “overlap” between patents for Bicycle A and Bicycle B and the lapse into the public domain of Bicycle A would not necessitate that there be no case concerning Bicycle B.

    1. 11.1

      You have w a y too much time on your hands.

      Why don’t you spend some of that time actually learning patent law?

      1. 11.1.1

        I think we can all be 100% sure it’s Damien Porcari who has (or had) too much time on his hands.

        Wow. Definitely some stuff there to ask him about. I’m sure he’s a very serious person.

        LOL

        1. 11.1.1.1

          Why are your feelings so bent out of shape with this?

          Why do you (appareantly) go out of your way to find something like this TO then get your feelings so bent out of shape?

          You provide NO cogent legal argument as to any backing of your feelings being bent out of shape and post as if your mere proclamation of feelings sets you somehow apart as being “righteous.”

          Beyond banal.

  2. 10

    In pharmecutical products isn’t FDA approval far more of a “block” than prior patents?

    1. 10.1

      FDA approval of a drug that is not patented does not “block” other parties (e.g., generics) from getting a piece of the action. The opposite is true.

      1. 10.1.1

        Nice non sequitor – Paul’s comment is not to a condition after FDA approval has been obtained (and others can then join the party), but is instead to the “block” OF obtaining that FDA approval.

    2. 10.2

      In pharmecutical products isn’t FDA approval far more of a “block” than prior patents?

      Sure, and that’s also a time when the secondary indicia shouldn’t apply. The only time secondary indicia apply is when one can prove that the indicia is caused by the inventiveness of the claim, as that’s all it’s being used for.

      The logic of commercial success is that people are motivated to make money, and therefore would take enabled, obvious steps to generate that money. Commercial success suggests that others in the art were either not enabled or lacked the motivation without additional teaching to take the step or they would have done so. When one can point to other reasons why the motivation evaporates, such as a blocking patent or the cost/time of FDA approval, then the logic supporting the application of the indicia attenuates.

      1. 10.2.1

        Commercial success suggests that others in the art were either not enabled or lacked the motivation without additional teaching to take the step or they would have done so.

        Wrong. “Commercial success” doesn’t “suggest” anything of the sort.

        The idea that “others in the art were either not enabled or lacked the motivation without additional teaching to take the step or they would have done so” is the assumption upon which the (LOL) “logic” of the commercial success secondary consideration is predicated. But as we all know, there’s a zillion different reasons that some products are “commercially successful” and others are not and those reasons have absolutely nothing to do with the relationship of a claimed invention to the prior art. On a relatively routine basis, people make a living selling things that are older than the hills or are otherwise unpatentable.

        The Supreme Court could just as well have created out of thin air a secondary factor called the “nerdy hairdo” because, hey, a lot of famous innovators don’t spend tons of time bodybuilding (the “bodybuilding arts” excepted, of course). Sure, the “nexus” wouldn’t exist most of the time (just as in “commercial success”) but if the Supremes said you have to consider it, well, then, that settles it.

        Post-filing evidence of “commercial success” is completely contrary to the statute and it’s silly on top of that. Time to chuck it and move on.

        1. 10.2.1.1

          Your cognitive dissonance is noted.

  3. 9

    According to the statute, obviousness is determined as of the filing date and post-filing “commercial success” is utterly irrelevant to the analysis.

    Likewise, “long felt need” is a red herring because if it was invented earlier it would be anticipated.

    Solving a problem that the field tried and failed to solve, or that the prior art recognized as a problem without a clear solution or path thereto …. that’s evidence of nonobviousness. Likewise a demonstration of unexpected results.

    Everything else is basically just pleading for a patent because, “hey, it’s nice to not have to compete and look! They got one!”

    So it’d be nice for the Supremes to take this case and pull the plug on the illegal post-filing secondary factors. I’m sure the usual “rule of law” screechers will agree with me because they’re totally not hypocrites when it comes to “judicial activism” (worst thing ever!) that favors patentees.

    1. 9.1

      Weeeee !

      Malcolm playing the “Look at me Look at me” post on top game.

    2. 9.2

      MM, I’d love to see some case citation for that. I deal with secondary consideration issues everyday, and patent owners all the time use post-filing (and post-issuance) evidence to support a secondary considerations case. In almost every case I’ve ever handled, the patent owner points to the success of the defendant’s accused products, which usually entered the market after issuance.

      1. 9.2.1

        MM, I’d love to see some case citation for that. I deal with secondary consideration issues everyday, and patent owners all the time use post-filing (and post-issuance) evidence to support a secondary considerations case. In almost every case I’ve ever handled, the patent owner points to the success of the defendant’s accused products, which usually entered the market after issuance.

        But you also notably don’t get evidence about postdating art, which seems odd, doesn’t it?

        If later commercial success suggests that the invention was non-obvious at the time of filing, wouldn’t, e.g., 30 people filing over the same subject matter prior to the patent application being published be evidence that the invention was obvious at the time of filing? What’s the logic for allowing postdating secondary consideration evidence as probative but not postdating primary evidence as probative?

        Similarly, post-dating evidence of non-enablement is not probatively allowed, and doesn’t that seem odd?

        MM is wrong that postdated evidence is not indicative of the state at the time of filing, but he’s correct in the implicit argument that there should be consistency in both directions. Further, there should be consistency for all statutory requirements.

        1. 9.2.1.1

          The terms that you are using do not mean what you appear to want them to mean.

          How the F are you an Examiner?

      2. 9.2.2

        LR,

        MM, I’d love to see some case citation for that.

        You won’t see that because no such case citation exists.

        ALL that Malcolm is doing here is spouting his feelings. Quite in fact, his post 9 is merely a repeat of his post 1 below, for which counter points were raised – and for which, Malcolm has not bothered to even try to engage.

        see: link to patentlyo.com

  4. 8

    What I say below is really the argument that the SCOTUS should use. There can no longer be such a thing as a blocking patent. It is a oxymoron. A patent indicates a right to maybe get licensing fees, but an injunction is almost impossible.

    What the joke here is that Lemley has made is so there is no such thing as a blocking patent.
    We all know that companies just make whatever they want and then burn down any patent with IPRs.
    The SCOTUS should hold as a matter of law that post Alice, Mayo, and the AIA that no patent can be a blocking patent.

    1. 8.1

      Instead of indulging in the effects of the denigrations and deconstruction, how about we instead fight to restore the power of the patent?

      1. 8.1.1

        We should have 101 reform. However, any 101 reform would have to go hand in hand with reforming 112 to increase the written description and enablement requirements: i.e. you only get a claim on what you actually invent, not what 10 years later you can cobble together with hints and whispers and twisting words in your disclosure.

        1. 8.1.1.1

          OSitA,

          You raise a valid point, but keep in mind that the patent document is not — and never was intended to be — an engineering document.

          A very real roadblock to what I presume is your desired “beefing up” of patent applications is what is generally known in legal circles (and especially patent legal circles) as “Patent Profanity.”

          A very real offshoot of actions of the anti-patent courts has been the reduced requirements for actually including the “beef.” As I have noted in the past, the “stronger” that the courts act to make PHOSITA (inexplicably as a weapon against patent holders), the LESS is actually required to BE in the legal documents known as patents.

          The courts (and principally, the Court) is in a perpetual rearguard action against “scriviners,” and every time that the Court acts to impose its “policy drivers,” those same “scriviners” WILL ACT and gain the upper hand.

          It’s just the nature of the fact that the Court does not – and cannot – act in a full time capacity, while the patent bar is totally dedicated full time to this niche of the law.

          This is ALSO a reason why the legislating from the Bench is such a bad idea (in addition to the Separation of Powers issues attached to the special area of law known as patent law).

          Back to your point though: it is highly unlikely that your view of 112 accords with the legal view of 112, as opposed to a non-legal “more engineering desired” view of 112.

          1. 8.1.1.1.1

            If PHOSITA is an engineer, the disclosure is Q.E.D. an engineering document.

            No matter how you play with the words, the disclosure has to be an instruction to make the invention.

            1. 8.1.1.1.1.1

              PHOSITA is a Legal fiction.

              Patents simply are NOT engineering documents Marty. The “make” you see must be understood in the legal sense — NOT the engineering sense.

              You really do need to unclench your eyes when wanting to do battle on this terrain.

              See Sun Tzu.

              1. 8.1.1.1.1.1.1

                See Sun Tzu.

                Get the f ck over yourself, you narcissistic pile of blabbering human w a s t e.

                1. Your feelings are noted, Malcolm.

                  Maybe though you should control those feelings and recognize that my post is directly on point.

                  (Yeah, I “get” that your feelings get in the way of you actually doing that, but hey, “your feelings” are just not an excuse for your mindless ad hominem)

          2. 8.1.1.1.2

            As is often so typical, counter points are presented to a person easily described as “anti-patent” and the only response is from other anti-patentists kicking up dust or posting non-legal nonsense.

            A cogent discussion on the legal points does not ensue – those who understand law can easily see why there is no continuing of the conversation. Those most in need of understanding law (including OSitA, Marty and Malcolm), simply retreat to post the same views on another thread on another day.

  5. 7

    “The fact that nobody else has been distributing oranges pursuant to my government sponsored monopoly of fruit distribution means you have to give me a government sponsored monopoly on orange distribution now that my fruit distribution monopoly is ending.”

    The petitioners here make the same mistake a lot of people make with respect to 101. Considering something and then dismissing it as irrelevant is not the same thing as not considering something. The court considered the commercial success argument and decided that in the context of a blocking patent, where the threat of infringement actions induce non-commercialization by others, there is no shown nexus between the success of the invention and the non-obviousness of the invention. Indicia of nonobviousness aren’t assumed, the patentee has the burden of producing them, and therefore had the burden of eliminating the monopoly as an independent reason for the success. The fact that they can’t do that in this context doesn’t change the fact that the commercial success issue was considered and found wanting.

    There is no basis for selectively applying any of the Graham factors — or evaluating those factors differently — based on ownership of the prior art, which is what this “blocking” schema boils down to.

    That’s true. Commercial success in the context of a government monopoly that prevents or commands a commercial success shouldn’t apply anywhere. For example, if this application was filed by another and there was no evidence of any sales, nobody should say “Wow look at the lack of sales it must be obvious” when there’s a pretty clear not-related-to-obviousness reason for that fact pattern. That’s true of any reason one can come up with. Internet Explorer wasn’t non-obvious simply because it was illegally bundled with Windows and therefore had a high usage rate as just one example.

    Further still, the tactic taken here is a rather ham-fisted one that does not take on directly the problem of evergreening. Evergreening is better tackled by simply not allowing obvious variants of the front runner drug (regardless of ownership of the front runner).

    Circular logic. How can you reject a variant as obvious without considering the commercial success factor as part of Graham?

    Do you mean a patent that does not disclose the details disclosed and claimed in a subsequent patent application but nevertheless preempts the subsequent invention?

    Sounds to me like the so called “blocking patent” is claiming an abstract idea, no?

    I’m sure you’re being tongue in cheek, but you’re more correct than you know. A command to improve upon a method by performing some subset of the method in a more particular way is an admission that the previous invention contained a vague or functional step that was not fully possessed or enabled under 112a.

    Let’s take two examples. In Example 1, Person A invents a Widget that does Function X, i.e. a spoon for eating baby food. Person A or B then puts said widget to a new use, Function Y, i.e. the spoon’s metal is sufficient for being heated for drug use. The Widget device/method patent “blocks” the method patent on drug use, because it requires the device Widget claim to function. This case is entirely proper, but to the extent that commercial success is considered for obviousness, there is a skewing issue because the commercial success of the drug method is influenced by the fear of infringement of the widget device claim. It’s also skewed by the illegality of the drugs. One can’t really apply commercial success analysis to influence that claim, as the noise clearly dwarfs any signal.

    In Example 2, Person A or B performs function X in a new and undisclosed manner. For example, Person B claims a method of feeding a baby using loop the loops and airplane noises to encourage eating. Person A claims that Person B infringes on their method, which claims the function of feeding a baby by any means, so long as it uses the spoon. Person B’s invention proves the overbreadth of Person A’s claim – Person A didn’t invent all manner of feeding a baby with a spoon, which is the scope his claim claims. If they did, Person B’s invention would have been anticipated by Person A’s disclosure (or, if that’s too hard for you, at least obvious over it). The finding that Person B contributed a non-obvious improvement over the prior disclosures is a finding that Person A did not invent the full scope of the claim.

    I use this example a lot, so I’ll bring it back to the original example: If one person invents a bow, a claim to the structure of the bow (e.g. the curvature of the wood and the use of string tension) is valid. A claim to the *function* of the bow (e.g. using a machine to fire a projectile) is only valid for as long as one can conclude that a bow is the only manner of performing a function (as that is the only time that the disclosure of the bow’s structure “fills the entire scope” of the functional claim). The creation of the gun, rather than being infringing of the functional-bow claim, proves the invalidity of the functional claim. It isn’t very intelligent to claim by function, because the function is never valid far beyond the scope of the disclosed structures anyway. All a not-limited-by-structure claim does is run the risk that you’ll forget to put in a valid dependent claim: The truly terrible situation would be where a person invents the bow, but cannot win an infringement action against someone manufacturing bows because the claim is invalid because a third person invented the gun.

    So in the instant case, if the prior invention was using some compound to treat MS, supported (but not limited in claim) by a particular dosage and schedule, and the instant invention is also treating MS, supported and claimed by a different dosage and schedule not disclosed in the previous patent, either 1) the current invention was an obvious variant or 2) the parent claim was overbroad.

    1. 7.1

      You improperly parsed the beginning of my comment and have taken it out of context.

      Further, your (typical) mashing of 101/112/103 is STILL asinine, as your “dichotomy” renders ALL improvement patents (and not just those employing the perfectly legal optional use of terms sounding in function) a nullifier of the item being improved upon.

      It really is scary that you are an actual Examiner with such a horrific grasp of patent law.

      1. 7.1.1

        Further, your (typical) mashing of 101/112/103 is STILL asinine, as your “dichotomy” renders ALL improvement patents (and not just those employing the perfectly legal optional use of terms sounding in function) a nullifier of the item being improved upon.

        If the item being improved upon was the subject of an original claim to all ways of doing something, and the improvement is a way of doing that thing, then yes, one of them is wrong. Either the “improvement” was, at a minimum, suggested by the original filing, in which case the improvement claim is anticipated or obvious, or the improvement was not suggested by the parent, and the full scope of the original claim was not described and enabled by the parent disclosure. Call it a “nullifier” if you wish – but the legal term is evidence of overbreadth.

        There simply is no manner in which two people can invent the same thing.

        Simple logic would tell anyone that if someone presents a bow and claims “a machine that fires projectiles” and on a later date another person comes along and presents a gun, that doesn’t mean that both people invented the gun. Either the gun was suggested by the bow disclosure (extremely unlikely) and the gun is an obvious representation of the bow, or the gun is a distinct invention by its presenter and the bow claim is overbroad. There is no dispute amongst any court that the full scope of a claim must be enabled/described or that a preexisting document evidencing possession of an invention renders that invention anticipated or obvious. There are only scattered people who are terrible at law who think that 112a need not be met over its full scope (people like Night Writer) or people who mistake the freedom to describe their invention in any manner as a suggestion that using more vague words (and therefore generating a broader scope) is just as patentable as more limited verbiage (people like anon).

        To take an extreme example – The next inventor could reach maximum abstraction and state “The preceding disclosure is but one embodiment of my invention, which is novel, non-obvious and had utility as of the filing date of this document. I therefore claim 1. A machine comprising: novel, non-obvious subject matter that has utility.”

        Claim 1 is directed to all machines that could ever be invented. To listen to Night Writer, the fact that a first useful, novel and non-obvious machine was enabled is sufficient to enable the entire claim. To listen to anon, Claim 1 is just as valid as any other claim that also describes the machine, no matter how particular in language another claim gets. Of course, it should be clear that Claim 1 could never issue. And yet anon would suggest that such a claim could not only issue, but issue in harmony with future claims, which would be “improvements” upon this invention, so that every future licensee must pay (at a minimum) two masters and nobody could ever safely practice anything.

        And again, the vice of functional claiming is made apparent – if Claim 1 issued, the only way to cite evidence to prove Claim 1 is overbroad is by pointing to something novel and non-obvious as of the filing date that is not adequately described by the instant specification (i.e. to counter-invent within the scope). Of course, the office lacks the resources to counter invent against functional language, and according to anon, later invention does not invalidate the claim anyway, as that would just be a “nullifier”. According to anon, I guess both people are just independent inventors of the invention as of different filing dates, which clearly makes total sense within the patent framework /s.

        It is always possible to describe something that occurs by the structure that changes in performing the act. When description avers to a functional result, rather than the steps taken to achieve that result, the claim opens itself up to claiming things that the inventor did not posit, and therefore cannot be claimed. The fact that other people achieve the same or similar results with different structures does render that functional claim a nullity.

        It really is scary that you are an actual Examiner with such a horrific grasp of patent law.

        Scoreboard.

        1. 7.1.1.1

          Random, thanks for those illuminating thoughts. However, the debate about “commercial success” as an “indication” that might inform the obviousness debate strikes me as over-blown. The key is (and always was) nexus, and who has the burden to prove it. What is so difficult?

          More interesting for me as a European is exploration of the notion of claiming that is “over-broad” (with emphasis on the over). Unless restrained, every Applicant will strain for the widest scope permitted. Here is a standing nuisance for which an effective restraint is imperative.

          I know of no Section of the Statute (whether in the USA or in Europe) that includes over-breadth as a ground of invalidity, so some rhetorical creativity is needed, to knock out such a claim. I know how to argue it in Europe. How does one go about it though, in the USA? Not enabled, I suppose. Not definite, I guess. Perhaps a third way?

          And does one always argue all three of these, just one, or as many lines of attack as one can muster? Anything else?

          1. 7.1.1.1.1

            Unless restrained, every Applicant will strain for the widest scope permitted. Here is a standing nuisance for which an effective restraint is imperative.

            Lol – and thank you for revealing your anti-patentist mindset.

            Standing nuisance? Really?

            The Ends do not justify the Means.

            Combine this “imperative” of yours with your refusal to take a principled stand from a recent thread, and it is easy to see that your “top priority” is NOT making sure a client’s innovation has the protection it deserves.

            You’ve likely been “around the block” too many times for the Infringers.

          2. 7.1.1.1.2

            Max –

            Claims that are “over-broad” can be rejected or found invalid as anticipated or obvious under 35 USC 102 or 103. Alternatively, if they are judged “over-broad” because they extend beyond the original application, then they can be rejected or found invalid under 35 USC 112.

            1. 7.1.1.1.2.1

              Les,

              MaxDrei is no doubt already aware of that.

              Did you not see his “I want to agree with Random” sign that he was holding up? Do you not “get” that MaxDrei is not a fan of strong patents?

              These are not new things.

        2. 7.1.1.2

          The fact that you think “scoreboard” works in your favor is part of what makes it scary that you are an Examiner — that and your severe confirmation bias tendencies that feed that messed up thinking of yours.

          1. 7.1.1.2.1

            … and your asinine position contines to flow from your (plainly incorrect) desire to use Ladders of Abstraction (you really need to understand that concept) as if those ladders merely have two rungs — your ‘permissible’ bottom rung of “objective physical structure” and the impermissible next rung of “vice of functional claiming.”

            Your problem is that your view is neither in accord with the actual law as written, nor with the reality of innovation.

            I invite you (again) to recognize that Congress liberated the use of terms sounding in function in the Act of 1952 (and that such are permissible outside of the option of Full Functional claim format of 112(f)), and to embrace the Vast Middle Ground that is a legal and factual reality.

            Maybe instead of trying so hard to feed your preconceived views, you might be able to recognize larger and more important issues such as when the scoreboard is broken.

          2. 7.1.1.2.2

            … further realize Random, that aside from your penchant for two-rung Ladders, (and hidden because once again you spin towards the extremes), your view does create the impossible dichotomy that improvements inventions nullify the items being improved — not just for items being improved that may have been described with a fully legal option of claim terms sounding in function, but also for those items that may have been described in optional terms of “objective physical structure.”

            You really have no technical grasp of what an improvement patent means, how pervasive innovation is in the realm of improvements, and likely no real world experience in product development. You exhibit a very shallow understanding of innovation and making up that shallowness with your confirmation bias does NOT provide you with a firm foundation for your views.

            The result is rather quite the opposite.

            1. 7.1.1.2.2.1

              This is nonsense:

              “Simple logic would tell anyone that if someone presents a bow and claims “a machine that fires projectiles” and on a later date another person comes along and presents a gun, that doesn’t mean that both people invented the gun. Either the gun was suggested by the bow disclosure (extremely unlikely) and the gun is an obvious representation of the bow, or the gun is a distinct invention by its presenter and the bow claim is overbroad. There is no dispute amongst any court that the full scope of a claim must be enabled/described or that a preexisting document evidencing possession of an invention ”

              At some point in time a bicycle was invented.

              Claim 1 might have read:

              A two wheeled conveyance comprising:

              a frame supporting a seat at a top portion of the frame, a gear and pedal assembly below the seat, a rear wheel behind and below the seat and a handle bar and fork assembly in front of the seat;
              a rear wheel mounted to the frame, the rear wheel supporting a gear;
              a front wheel mounted in the fork;
              a chain linking the pedal gear and rear wheel gear; and
              at least one caliper brake positioned to grip the rim of at least one of the front and rear wheel.

              Assume that is what is disclosed.

              Now, a year later, after buying and riding one of these devices, a clever gal says its really too hard to pedal up hill and I have to get off an walk on the way to church… I can improve this. I will add a contraption to the frame adjacent the rear wheel and add additional gears to the rear wheel, see here, when I pull this lever while pedaling, an arm of the contraption urges the chain off one gear and onto another with the aid of this spring based tensioner to take up and yield slack in the chain, thereby providing mechanical advantage for going uphill and allowing for additional speed while pedaling at a comfortable pace on the flat.

              The improvement is not obvious in view of the first patent. However, since the original legitimately open ended claim reads on her improved bicycle, she must get a license from the first inventor in order to make and sell her invention.

              That is exactly how the system is supposed to work. The first patent was not overly broad and even though one could say the first patent preempts all bicycles, that does not make the claimed bicycle an abstract idea!

              1. 7.1.1.2.2.1.1

                That is exactly how the system is supposed to work.

                Bingo.

                And yet, the view proposed by Random (even though he advances such a view based merely on extreme examples) runs exactly counter to the point you present, Les.

                1. Random says:

                  “Your example was not an example of an improvement.”

                  How is adding a derailleur and providing extra gears to a bicycle not an improvement to a bicycle?

                2. Les,

                  Random’s “answer” to you is that you did not actually invent an improved bicycle, you ONLY invented an improved component to the existing bicycle.

                  He then goes on to “lecture” you how YOUR deficiency prevents you from writing claims that maximize the protection of the inventor (and that his ultra-crabbed view is what maximizes claim protection.

                  It’s as if he really believes his own shlock. It is as if he thinks that the law is that a Jepson claim format is somehow strictly mandatory.

                  This only goes to show that Random has no business being involved with innovation, let alone having a job as a patent examiner.

              2. 7.1.1.2.2.1.2

                Random’s not saying that EVERY claim is problematic. He’s saying SOME claims are problematic.

                By swapping the bow/machine-that-fires-projectiles/gun example for a trivially appropriate case, you’re not addressing the point.

                1. Wrong Ben – Random is advancing a universal (and universally wrong) way at looking at patent law.

                  You here NOT wanting to use his extreme examples does NOT change the universal view that he is pushing.

                2. Ben –

                  You are not focusing on the assertion “There is no dispute amongst any court that the full scope of a claim must be enabled/described or that a preexisting document evidencing possession of an invention”

                  In my bicycle example, was the full scope of the claim not enabled/described? Sure it was. But claims are by their nature and a patented invention can be a sub component of a new invention.

                  Moreover, if the bow inventor foresaw that other forms of potential energy could be converted to kinetic energy to propel a projectile, and disclosed such by drafting his claims accordingly, then his patent covers guns, even if the preferred embodiment disclosed in the specification provided stealth rather than propulsion by explosion.

                3. Random’s not saying that EVERY claim is problematic. He’s saying SOME claims are problematic.

                  You are not focusing on the assertion “There is no dispute amongst any court that the full scope of a claim must be enabled/described or that a preexisting document evidencing possession of an invention”

                  Both of these statements are true. You’re not suggesting that the law of 112a isn’t what it is, are you, Les?

                  In my bicycle example, was the full scope of the claim not enabled/described? Sure it was. But claims are by their nature and a patented invention can be a sub component of a new invention

                  Your example was not an example of an improvement.

                  Regardless, using preexisting subject matter for its known use is not “an improvement” it’s the exact opposite of an improvement. If I invent a new arrow but it gets fired in the same manner as an old arrow, a claim to the method of use of a bow/new arrow is not an improvement. If my new arrow requires it to be fired in a new manner, and you previously claimed a scope that encompassed all manners of using a bow to fire an arrow, then your scope was overbroad.

                  Moreover, if the bow inventor foresaw that other forms of potential energy could be converted to kinetic energy to propel a projectile, and disclosed such by drafting his claims accordingly, then his patent covers guns, even if the preferred embodiment disclosed in the specification provided stealth rather than propulsion by explosion.

                  No – that’s almost exactly the Morse case. If the bow inventor also invented the gun by proving he possessed the ability to use chemical reaction to unleash energy, and showed how the explosion could be controlled to direct a projectile, then his simply the inventor of two things – the gun and the bow. But if the inventor of the bow says “I possess one manner of generating kinetic energy, and I posit that other manners exist even if I don’t currently possess them” and “drafted his claims accordingly” he would not have a patent on anything. Morse did the exact same thing with printing at a distance.

                  You don’t get to invent one thing, suggest a possible avenue of research, and then claim that avenue as if you already researched the entire thing.

                4. You’re not suggesting that the law of 112a isn’t what it is, are you, Les?

                  It is certainly NOT what you think it is Random.

                  Your example was not an example of an improvement.

                  Total B$ – try again Random.

                  Regardless, using preexisting subject matter for its known use is not “an improvement” it’s the exact opposite of an improvement.

                  Nice strawman – no one advanced that position (except you), so you wanting to knock it down is rather mundane and not on point here.

                  You keep on getting the entire concept of “improvement patent” wrong, Random. There is little wonder why, as your desired overall view of the law eliminates ALL such items.

                  And that is simply not how the law, how innovation, how reality works.

                  No – that’s almost exactly the Morse case.

                  More B$ – you have maimed his example (which included: and disclosed such)

                  You don’t get to invent one thing, suggest a possible avenue of research, and then claim that avenue as if you already researched the entire thing.

                  Another strawman – and something no one but you is putting up to knock down.

              3. 7.1.1.2.2.1.3

                The improvement is not obvious in view of the first patent.

                It’s not an improvement over the first claim either. The first claim was to the structure of a bicycle, not to the use of the bicycle, so it is unsurprising that a wholly different structure whose utility is to affect the method of use of the bicycle does not conflict with it. The second claim (which you didn’t give) is to a gear shift. The fact that the gear shift is intended to be used with a bicycle does not make it a bicycle, any more than a car battery is not a car or an arrow is not a bow. Nor is the gear shift an improvement on the bicycle because the bicycle claim has no method of use limitation. I suppose there is some sort of tangential association in that possession of a gearshift might make someone more motivated to infringe the bicycle claim, but that’s about it.

                Don’t confuse a use that is unclaimed and dedicated to the public that is commonly associated with an embodiment of the invention to be the invention itself. In your world the inventor either did not invent or dedicated to the public the ability of the bike to travel uphill, because the invention is defined by the claims and the claims do not mention uphill characteristics. Consequently a gear shift that makes uphill travel easier is not an “improvement” upon the invention, it is an improvement upon hypothetical unclaimed public usage of the invention. If we amend your structural claim to include a limitation such as “wherein the conveyance propels a rider uphill”, now we can say that the gear shift improves upon the invention, because it is taking a limitation of the “parent” claim and performing it in a superior manner. But similarly, now the invention is overbroad, because the bicycle claim includes an element that covers all ways of doing something (“propels a rider uphill”) and the bicycle specification only discloses one manner of doing so – the harder, non-gearshift assisted manner. The invention of the gearshift proves the overbreadth of this amended claim, which it improves upon.

                As is often the case with you Les, you forget that the name of the game is the claim. Your error in this situation goes beyond the mere failure to compare apples to apples (a method of use claim to the improved use), your argument betrays the deeper misunderstanding that you seem to think that if each element is posited that means the scope as a whole is posited. You even use the phrase “legitimately open ended claim” which is just the height of being conclusory. Are you under the impression that using comprising as opposed to consisting or consisting essentially of is a scope feature that is per se always “legitimately” used?

                That simply is not the law. Lizardtech was a case where Claim 1 was valid under 112a, but Claim 21, which was Claim 1 *but simply missing two limitations,* was not. That holding simply can never square with your logic, because you look at each element individually and ask if each one is posited, but fail to ask if the full scope of the claim is posited. For you, if Claim 1 was valid and Claim 21 simply contained some of the same limitations, Claim 21 would be valid. But Lizardtech makes clear it is the objective scope of the claim as a whole that is also tested.

                Do you really think people can’t see what you’re doing here – using “comprising” one one end to extend infringement and then swearing off or ignoring “comprising” on the 112a requirement in order to keep validity?

                In short – you didn’t create a correct claim for a hypothetical test, but assuming you did your error is in failing to understand that a failure to include a limitation modifies the scope that must be possessed just as much as explicitly stated limitations modify a scope that must be possessed. If you created a method of use claim that is supported only by a disclosure akin to “pedal really hard to get up the hill” that method of use claim cannot validly reach a gearshift-assisted method of use. The case has already been decided, and it is Lizardtech. When two things are clearly different but a claim does not respect their difference, the result is not that reality has to bend to the fiction that is the claim, but rather that the claim breaks in the face of reality.

                If you discover an apple but don’t discover an orange, no amount of legal craftsmanship will give you power over oranges, and it really is that simple. You’re under the impression that if you are just really sneaky with really good language you can exploit some sort of loophole to make an apple into an orange or vice versa, but that is not the case. You can claim a bike without talking about it’s ability to go uphill, but then don’t argue a gearshift is an improvement upon that. Conversely, you can claim a bike and include it’s ability to go uphill, and the gearshift would be an improvement, and it would either be non-infringing of your claim or would render your claim overbroad.

                It frankly confuses me of how you guys can talk yourself out of something you must inherently know to be true. You know that overbreadth is policed by 101, 112a and 112b, so you know one of them has to be violated in a method of use that encompasses an unposited improvement case, right? I know you can’t have a valid claim that encompasses gearshift-assisted uphill bicycling, because you told me you didn’t invent the gearshift and you must possess the full scope of your claim, and yet you seem intent on arguing that you can validly maintain a patent on something you didn’t invent. Now just drop your legal training for a second (as it doesn’t seem to be helping you) and ask yourself – Does this seem like an outcome that could possibly be true? Even a fry cook could understand that you can’t get a patent on something you didn’t invent, which makes me seriously worry about some of our legal brethren here. Cite me a single case that says that you can validly claim what you didn’t invent.

                So yes, your “legitimate” claim about the bicycle that does not mention uphill peddling is not defeated by another invention that is centered around uphill peddling just as it wouldn’t be defeated by a disclosure about a great way to weave baskets, as you’re not claiming a bicycle doing that either. That’s because using a gearshift to make uphill riding easier would only improve upon a claim directed to method of use, which you seem to have dedicated to the public. But a method of use of the bicycle that embraces the unposited gearshift is still proven overbroad by it.

                1. It’s not an improvement over the first claim either.

                  More maiming of examples from you, Random. The lengths you go to in order to contort the dialogue and apply your own special confirmation bias is rather astounding.

                  I suppose there is some sort of tangential association in that possession of a gearshift might make someone more motivated to infringe the bicycle claim, but that’s about it.

                  Way to try to minimize the very point that you need to account for…

                  As is often the case with you Les, you forget that the name of the game is the claim. Your error in this situation goes beyond…

                  Now you are fully in the Malcolm-land of Accuse Others….

                  In short – you didn’t create a correct claim for a hypothetical test, but assuming you did your error is in failing to understand

                  …ditto.

                  If you discover an apple but don’t discover an orange, no amount of legal craftsmanship will give you power over oranges, and it really is that simple.

                  And more straw….

                  It frankly confuses me of how you guys can talk yourself out of something you must inherently know to be true.

                  Look in the mirror, Random.

                  That’s because using a gearshift to make uphill riding easier would only improve upon a claim directed to method of use,

                  Beyond bizarre that you want to ignore the claim to an improved bike, and spin this as only to some “method of use”

                2. “The second claim (which you didn’t give) is to a gear shift. ”

                  Yes and no. Clearly, what I implied the second claim to be is a bicycle with a gear shift. Don’t be obtuse. That’s someone else’s side of the street.

                3. “That simply is not the law. Lizardtech was a case where Claim 1 was valid under 112a, but Claim 21, which was Claim 1 *but simply missing two limitations,* was not. That holding simply can never square with your logic, because you look at each element individually and ask if each one is posited, but fail to ask if the full scope of the claim is posited. For you, if Claim 1 was valid and Claim 21 simply contained some of the same limitations, Claim 21 would be valid. But Lizardtech makes clear it is the objective scope of the claim as a whole that is also tested.”

                  What?

                  I did no such thing.

                  It should have been apparent that the my inventors claim included all of the elements of the first claimed bicycle plus the described derailleur components. I don’t understand why you didn’t get that.

                  Your whole tirade is moot because of that.

                  Please try again with, what I hope is a clearer understanding of what I was talking about.

                4. “Cite me a single case that says that you can validly claim what you didn’t invent”

                  That is not the situation of my example. In my example, the first inventor claimed a bicycle with a gear. The second inventor invented a bicycle that has a gear AND additional gears as well as a mechanism for selecting a particular gear.

                  However, since the second invention has a gear, the first patent has to be licensed because the second bicycle includes all the elements of the first.

                  Why is that so hard for you to follow?

                5. Yes and no. Clearly, what I implied the second claim to be is a bicycle with a gear shift. Don’t be obtuse. That’s someone else’s side of the street.

                  I’m beginning to think that the issue is just that you and anon don’t know how to claim to achieve maximum rights for your clients.

                  Why make that claim? Do you just want to unnecessarily limit your client’s rights? You admit the bicycle preexisted, so why are you claiming a bicycle? Your gear shift would still shift gears if you attach it to something that, e.g. has no seat or handlebars, so are you just limiting yourself for fun? The bicycle adds nothing to patentability, and all you’re doing is dedicating gear shift conversion kits to the public. Your invention was not a bicycle + gear shift, your invention was a gear shift.

                  What?

                  I did no such thing.

                  While not applicable to your “my invention is a bicycle + a gear shift” claim (so this is now an aside), your argument evidences that you misunderstand 112a because you are only asking if the individual limitations are possessed rather than the full scope.

                  Let me try one more time with a concrete example: Suppose if instead of the claim you wrote you wrote Claim 2, which is identical to claim 1 except it lacks the chain linking limitation. You’ll notice that that claim also reads upon a motorcycle. Let’s assume that within the lifetime of your bicycle patent, I invent the motorcycle and start selling it.

                  You appear to be under the impression that because my motorcycle meets all of the limitations of your claim, that my motorcycle infringes your valid claim (with valid being a conclusory statement, you’re assuming the very question at issue). What I am telling you is that a motorcycle and a bicycle are distinct inventions, and in actuality the existence of my motorcycle proves that limitations are missing from your bicycle claim which actually limit the claim to what you have proven to posses. Consequently, I either infringe an invalid claim, or (if those limitations are added in in a dependent claim) I do not infringe. Notably, the entire power system for conveying, which is the function and the utility of the invention, is entirely different between our two devices and your claim does not respect that difference. Because your claim is drawn to a seat, frame and two wheels *regardless of how it is powered,* and your disclosure only provides for powering via foot pedalling, your claim is overbroad of your supported description. There is nothing remotely debatable about this logic, as it forms the basis of Lizardtech and virtually every other non-new-matter 112a written description case.

                  As you can see, the motorcycle/bicycle situation is the same thing as the gun/bow situation, with the only distinction that gun/bow has an overbroad positive limitation (a limitation as to function that is very vaguely defined) and the motorcycle/bicycle is overbroad because it LACKS a necessary limitation (it is a “comprising” claim without describing the manner of powering, which is a relevant and necessary distinction). Your argument suggests you may understand the bow/gun situation, but not the motorcycle/bicycle situation.

                  In my example, the first inventor claimed a bicycle with a gear. The second inventor invented a bicycle that has a gear AND additional gears as well as a mechanism for selecting a particular gear.

                  However, since the second invention has a gear, the first patent has to be licensed because the second bicycle includes all the elements of the first.

                  Going back to your example now: Except by definition the second inventor did not invent a bicycle that has a gear, that’s just a statement of background, as you admit that is what the first inventor invented. The second inventor invented gear shifting, and if you want to throw it in there, multiple gears. You could unnecessarily limit your gear shifting claim by attaching it to the first inventor’s preexisting bicycle, but you could do that with anything – The second inventor could claim a gear shift tethered to a third inventor’s bike rack or a gear shift sitting in a fourth inventor’s garage, as the second inventor invented bike tethering or bike storage just as much as he invented the bike itself. It is just as logical to say that the gear shift improves the bike as it is to say that the gear shift improves the garage containing the bike, so I don’t know why you would call your invention an improvement on a bike other than you lack the imagination to call it an improvement on a garage. In actuality it is neither.

                  In other words, the description of the second invention properly begins at the word “AND” in your paragraph up there. When you properly state what the second invention is, it’s clear that the second inventor doesn’t have to take a license from the first inventor, because *it’s entirely possible to sell a gear shift without selling a full bike*. It is always possible to separate what you call “improving” structure, for at least the reason that the base device was structurally describable without the improvement – look you just did it in Claim 1! – and the improved structure is also describable or the second inventor couldn’t form a claim. Then it’s just a simple matter of subtraction.

                  In short:

                  Bad Claim 1. – 1. I claim a system or device comprising: [bike limitations] [gear shift limitations] (confuses the invention and the prior art, adopts any problems the parent invention has, and gives insufficient protection)

                  Still bad Claim 2 in jepson – 2. In the context of [bike limitations] I claim an improvement comprising: [gear shift limitations] (still gives insufficient protection, but at least avoids any problem with the parent invention and demonstrates you understand what the prior art and what the current invention is now)

                  Good Claim 3. – 3. I claim a device comprising: [gear shift limitations]. (good protection)

                  The only time when you MUST take a license is when the first inventor uses vague or functional language to claim a CLASS or GENUS of structures in addition to the species of structure described in detail in his specification, and then a second inventor comes along later and finds a non-obvious species residing within that genus that is not the species described in detail in the first inventor’s spec. i.e. Spec describes A but not C, but claim uses vague language that covers A or B or C, and then someone comes along later and invents C. That’s the only time the second inventor has a valid, non-obvious claim to C that is covered by the first inventor’s claim. And what I am saying is that in those cases its most likely (not always, not necessarily, but possibly, and in the context of common claiming today, likely) that the first inventor has an overbroad claim. It is more likely that the correct conclusion is that A does not support “A or B or C” than it is that the correct conclusion is that A supports A or B or C, and yet C is still non-obvious over that disclosure. If C is different enough from A that the office called it non-obvious, then in all likelihood a problem lies in the A or B or C claim language.

                6. I’m beginning to think that the issue is just that you and anon don’t know how to claim to achieve maximum rights for your clients.

                  That’s sad.

                  Random, you clearly have NO c1ue what you are talking about and now you want to say that I don’t know how to maximise benefits for clients because I don’t know how to write claims?

                  Unglaubich.

                  Beyond stultifying.

                  Not only should you NOT be an Examiner, you should be kept as far away as possible from any thing even remotely related to innovation.

                7. Random, you clearly have NO c1ue what you are talking about and now you want to say that I don’t know how to maximise benefits for clients because I don’t know how to write claims?

                  That’s cool, you write your client that claim, and he can take a license and sell his gear shift bicycles, and I’ll read your spec and just sell gearshifts with no overhead and no R&D costs because you obviously know the right way to claim and I don’t, and everyone will be happy.

                  I know I will be laughing all the way to the bank.

                  Scoreboard? Bankboard.

                8. Random,

                  You would not last a week outside of the Patent Office.

                  And you can take that to the bank.

                9. Random –

                  1. Most Motorcycles have chains. So…

                  2. Motorcycles do not have pedals. So, motorcycles would not infringe my claim.

                  3. Mopeds do have pedals and I believe my claim does read on mopeds and a license would be required. My inventor invented a bicycle and a moped is a bicycle with an engine. If the moped guy wants to stand on my inventors shoulders, my inventor gets to charge rent.

                10. 3. Mopeds do have pedals and I believe my claim does read on mopeds and a license would be required. My inventor invented a bicycle and a moped is a bicycle with an engine. If the moped guy wants to stand on my inventors shoulders, my inventor gets to charge rent.

                  I mean, that’s a cute feeling, but that’s all it is.

                  Does the claim cover an engine-powered bicycle (here a moped)? Yes. Does the specification posit powering the bicycle by any means beyond feet? No. So does the specification teach the scope of the claim or not?

                  You don’t seem to be able to get past this question. Obviously you feel the claim covers it (“if the moped guy wants to stand on my inventor’s shoulders”) so what is your problem? Can you cite a case that says someone doesn’t have to possess the full scope of their claim? If not, what is your logic that you possess the scope of the claim given that the claim covers a power source that you didn’t posit?

                  Let me suggest a different question that will possibly help you more – Enablement requires you being able to make and use the invention. Can you use a bicycle without foot power?

                11. Random says:

                  “Does the claim cover an engine-powered bicycle (here a moped)? Yes. Does the specification posit powering the bicycle by any means beyond feet? No. So does the specification teach the scope of the claim or not?”

                  “Does the claim cover an engine-powered bicycle”

                  No. The claim is to a bicycle, which is a device including a particular set of recited parts arranged in a particular way.

                  The guy that wants to make mopeds wants to use those same parts arranged in the same way and add an engine and gas tank to them. Because he is using the recited parts arranged as recited, he would be infringing my claim and needs to get a license or face the consequences.

                  You are arguing that anyone can take a patented invention and add something to it, a bell, a horn, a coating, to avoid infringement.

                  That is an absurd position. If it were correct, patents would be worthless and you would be out of a job.

            2. 7.1.1.2.2.2

              You really have no technical grasp of what an improvement patent means, how pervasive innovation is in the realm of improvements, and likely no real world experience in product development. You exhibit a very shallow understanding of innovation and making up that shallowness with your confirmation bias does NOT provide you with a firm foundation for your views.

              And you’re a gaping @ h0le who projects like a m0ther f cker.

              [shrugs]

              1. 7.1.1.2.2.2.1

                Your Accuse Others meme is noted.

  6. 6

    “Blocking Patent?!?”

    Do you mean a patent that does not disclose the details disclosed and claimed in a subsequent patent application but nevertheless preempts the subsequent invention?

    Sounds to me like the so called “blocking patent” is claiming an abstract idea, no?

    Or did it only become an abstract idea after the improvement was developed?

    Does the new invention invalidate the earlier patent under 101?

  7. 5

    What the joke here is that Lemley has made is so there is no such thing as a blocking patent.

    We all know that companies just make whatever they want and then burn down any patent with IPRs.

    The SCOTUS should hold as a matter of law that post Alice, Mayo, and the AIA that no patent can be a blocking patent.

  8. 4

    While a sufficiently obscure & novel legal argument to be of interest to some patent attorneys, this attempt to get the Supremes to ride to the rescue of a drug patent these days strikes me as additional over-coverage of cert petitions that have even less than the usual 300 to one odds against them?

  9. 3

    I’ll have to read through these cases, but it sounds like the CAFC kind of missed the boat here.

    The fact that there was no competition because one owned or licensed a seminal patent for a particular drug does not mean that one’s follow-on patents are necessarily obvious. It does, however, seem likely that the existence of the earlier patent would weaken the argument that the commercial success was due the drug product itself, and not to the lack of competing drugs due to the seminal patent. To use more commonly-invoked terminology from discussion of commercial success, the existence of the earlier patent weakens the assertion that there was a nexus between the invention and commercial success of the product.

    But that’s a far cry from saying that per se, there’s something called a “blocking patent” and a party’s benefiting from such a “blocking patent” necessarily precludes the ability to show commercial success as an indication of non-obviousness.

    1. 3.1

      AM,

      I think that it is an overstatement that the nexus is weakened.

      For example, a common misconception in the Pharma evergreening story is that the new evergreened items have NO viable competitive products, but that is not true, given that often the originator product would no longer be under patent protection and thus would be open to others to make.

      I find this all to be a disservice to actual dialogue on evergreening.

      That being said, I think that you and I are closer to agreement than what may appear at first blush.

    2. 3.2

      There is no “blocking patent doctrine” that stands for the proposition being ascribed to it by you or the petitioner here.

      Of course the “nexus” between long felt need and between commercial success is likely going to be weakened if there is a blocking patent. That’s not a “doctrine”. It’s common sense.

      The larger issue is that the legal concept of obviousness has no real “nexus” to post-filing profits as a statutory matter. That’s because the statute expressly states that obviousness is determined as of the priority date, not some date five or ten years later. In other words, determining a “nexus” between much later downstream events and patentability has nothing to do with “obviousness” under 103. Something else is going on there and the irony of “anon” supporting that thing is richer than elk butter soup.

      1. 3.2.1

        Your sense of common sense is off.

        People come up with improvement patents all the time while the underlying tech is under patent to others.

        There is no such “keep out” just because the underlying item is under patent to anyone.

        1. 3.2.1.1

          Your comment here is addressing a strawman that is not at issue here. If you can’t focus on the issue then take a breath and think about it more.

          1. 3.2.1.1.1

            Your Accuse Others is noted.

      2. 3.2.2

        As to “my support,” I have already held your hand and explained the difference and that obviousness at the time of filing is still very much the focal point even with data from later events.

        This is not a difficult concept to grasp, even as it gets in the way of your feelings.

        1. 3.2.2.1

          As a general matter, “data” obtained later might have some bearing on the issue of obviousness, particularly where a result alleged in a spec is challenged by an Examiner for some reason.

          But data about “commercial success” years after filing? There is no nexus to non-obviousness and the statute is clear that such post-filing considerations are out of bounds.

          The secondary indicia are prime examples of what you rail against here like a mad dog: the Supreme Court ignoring the language in a statute and writing its own law. It’s bizarre watching your backflips here.

          1. 3.2.2.1.1

            Except not – for reasons previously supplied.

            Thanks for playing. Come again soon.

    3. 3.3

      Can someone help me out? Why wouldn’t Accorda argue that the judicially created experimental use exemption created under , Roche Products, Inc. v. Bolar Pharmaceutical Co. (733 F.2d 858, 862–864) (Fed. Cir. 1984) insulate any other company from risk of infringement?

      Dennis states ” — no other company was ready to risk infringement liability to do the research.” I am incorrect that it is not an act of infringement to do research so long as your infringing actions are justifiably related to FDA/ANDA/BLA filing requirements? Would this not be a counter to the argument that blocking patents deter research?

      1. 3.3.1

        X – The incentive argument has to go second-level. While 271(e) would allow for some experimentation here, what is the point of that experimenting if there is a blocking patent that would prevent commercialization.

        Note here that Roche v. Bolar has been seen as legislatively overruled by 271(e).

        1. 3.3.1.1

          what is the point of that experimenting if there is a blocking patent that would prevent commercialization.

          There are plenty of reasons even if the underlying tech is patented by another.

          Do you not cover this in your classes?

        2. 3.3.1.2

          Yes – 271(e) or in the vernacular, “the Bolar exemption”

          Wouldn’t your comment apply to counter any secondary indicia of nonobviousness even in the instance where there is only one patent at issue?

          Judge – none of patentee’s secondary inidicia are valid to show nonobviousness of the patent because no third party could practice the invention for fear of infringement.

          1. 3.3.1.2.1

            Yes – That’s right. I expect that a “blocking-patent” situation applies in most new-consumer product situations — certainly in electronics and communications. So having a hard rule here would have the impact of substantially undermining secondary considerations (even further than they have already been undermined)

            The appellate court’s determination here does not create a hard line — but instead says that a blocking patent might be the cause of commercial success rather than the non-obviousness of the invention. The real fight is about the starting point for analysis (do we presume that a blocking patent is (or is not) the cause of commercial success) and shifting of burdens of between the parties.

            1. 3.3.1.2.1.1

              And by blocking patent you mean (lets say in the pharma space) a patent that covers the compound in the drug product? Which is in some cases, the only patent that covers the product.

              So to take the argument to the illogical conclusion – because there is a patent on the compound that covers the drug product, and no other person can research that drug product, secondary indicia of non-obviousness cannot apply to support the validity of the patent……because the patent?

              But secondary indicia has multiple parts – copying of others, skepticism of others, long felt need; its not just commercial success.

          2. 3.3.1.2.2

            NOT practicing the invention does not stop follow-on innovation.

            1. 3.3.1.2.2.1

              NOT practicing the invention does not stop follow-on innovation.

              ?

              It’s difficult to figure out what this comment is supposed to mean exactly (because nobody has suggested otherwise), or how it is responsive to any of the issues being discussed.

              But it does (coincidentally, I’m sure) get you an inch closer to the policy consideration that underlies the Supreme Court’s extraordinary judicial activism in this area. Specifically, that is the concept that when a patentee finds commercial success with its “new-fangled” product that “nobody had ever thought of before” (as in “GOLLY GEE WHAT WILL THEY THINK UP NEXT?”) that somehow this post-filing “evidence” should weigh against taking the patent away, even if the purchasing public was not aware of prior art that renders the claim prima facie obvious (and even if the statute says “obviousness is determined as of the priority date”). That is what is actually going on here. Nothing more, nothing less. It’s about fee-fees for a patentee who is riding a wave.

              1. 3.3.1.2.2.1.1

                Your cognitive dissonance is noted.

          3. 3.3.1.2.3

            There appears to be an underlying MISperception that patents are a “positive” right as opposed to them being a “negative” right.

            The focus on commercialization appears to be being overwrought.

  10. 2

    Despite the tweaks, it appears that Elan’s broad patent still covers the drug treatment at issue here.

    Calling this description a “blocking patent” muddies the waters and obscures rather than clarifies.

    ALL patents “block.”

    That is what they do.

    IF the follow-on tweaks do not differentiate, then they are directly anticipated or obvious in view of the prior art (and it is a different point to be attempted to base not having this direct finding based on who owns that prior art).

    There is no basis for selectively applying any of the Graham factors — or evaluating those factors differently — based on ownership of the prior art, which is what this “blocking” schema boils down to.

    Further, NO patent blocks pure research (see the experimental exception). Now, it is an entirely different story if you are researching for profit, and that profit will impact the use of the item that you are also using in any such profit-research. This is simply understanding the parameters of the experimental exception.

    Further still, the tactic taken here is a rather ham-fisted one that does not take on directly the problem of evergreening. Evergreening is better tackled by simply not allowing obvious variants of the front runner drug (regardless of ownership of the front runner).

    1. 2.1

      Give us a break already. If you own patents which block meaningful follow on innovation in the area of those patents (e.g. because you can’t find investors to fund the research) then it’s a bit cheeky (to say the least) to argue that, after you finally get around to doing something yourself, that there was a “long felt need” in the art that somehow entitled you to more patent protection.

      This isn’t a difficult issue, really. The CAFC got it right but this kind of nonsense arises repeatedly because the “secondary indicia” are so poorly thought out.

      It is funny to watch you pivot over to the “Supreme Court must be obeyed!” viewpoint. Feeling any whiplash?

      1. 2.1.1

        I am doing no such “pivoting.”

        Maybe you should try to put your feelings under some type of control in order to grasp the actual legal issues at play here.

        1. 2.1.1.1

          Where is “look at post filing commercial success of a claimed invention to show non-obviousness” in the patent statute?

          1. 2.1.1.1.1

            Who is making that argument?

            1. 2.1.1.1.1.1

              Who is making that argument?

              Oh brother the tr0 lling is getting turned up to 11.

              The petitioner in this case is making that “argument”.

              See, e.g., “an inquiry into commercial success… is an important protection against hindsight bias in the obviousness analysis.”

              But go ahead and explain to everyone how this passage (and other passages in the brief) isn’t justification for looking “at post filing commercial success of a claimed invention to show non-obviousness”. Go ahead. You’re a very serious person.

              1. 2.1.1.1.1.1.1

                The Petitioner is NOT making a statutory argument.

                Try again.

                1. The Petitioner is NOT making a statutory argument.

                  Ding ding ding! That’s correct, Bildo: they are relying on the Supreme’s non-statutory judicial activist nonsense, which is something that you otherwise find abhorrent and rail against on these comment boards 24-7. Hence my comment on your “pivoting.”

                  Thank you very much for highlighting your own hypocrisy (not that the stench wasn’t already evident to everyone here). Now go run along and play in the freeway like the five year old ment@l defect that you are.

                2. Again – no pivoting from me.

                  Maybe you should not make your comments so personal – you seem unable to separate your feelings from any cogent legal discussion.

  11. 1

    Obviousness is determined as of the filing date and post-filing “commercial success” is utterly irrelevant to the analysis.

    Likewise, “long felt need” is a red herring because if it was invented earlier it would be anticipated.

    Solving a problem that the field tried and failed to solve, or that the prior art recognized as a problem without a clear solution or path thereto …. that’s evidence of nonobviousness. Likewise a demonstration of unexpected results.

    Everything else is basically just pleading for a patent because, “hey, it’s nice to not have to compete and look! They got one!”

    So it’d be nice for the Supremes to take this case and pull the plug on the illegal post-filing secondary factors. I’m sure the usual “rule of law” screechers will agree with me because they’re totally not hypocrites when it comes to “judicial activism” (worst thing ever!) that favors patentees.

    1. 1.1

      Obviousness is determined as of the filing date

      I’ve explained previously just what is going on with the commercial success factor. I suggest that you revisit that explanation before merely regurging your feelings otherwise.

      just pleading for a patent because, “hey, it’s nice to not have to compete and look! They got one!”

      I have never seen anyone actually use these “arguments.” Not sure where you dug up these strawmen.

      sure the usual “rule of law” screechers will agree with me because

      You are combining that “Legend in your own mind” thing with your “one-bucketing” by presuming that “agreeing with you” is the only correct course of action here.

      Clearly, it is not.

      As for “hypocrites when it comes to “judicial activism” (worst thing ever!) that favors patentees.” — this reminds me of how you utterly failed to grasp the Simple Set Theory explication of the exceptions to the judicial doctrine of printed matter, coupled with your cognitive dissonance of anything being pro-patent. YOUR feelings that anything pro-patent must somehow be “hypocritical” only shows your own disdain for the protection of innovation – nothing else.

      Your feelings are simply not the benchmark of the proper application of law.

    2. 1.2

      The secondary indicia of nonobviousness should go, and while they are at it, the USSC should take a case to create a doctrine where “do it on a computer” is presumed obvious when combinations of computing components perform as they would be expected to by PHOSITA in the computing arts, or that which is being modeled, simulated, or automated would have been expected by PHOSITA in the pertinent field, be it stock trading, or repairing vehicles, or drawing animated characters. The maximalists moan every day about conflation of 101 and 103; their germ of truth should be disinfected.

      1. 1.2.1

        Your version of “disinfected” is so very Big Box of Protons, Neutrons and Electrons.

        See the XKCD panel on Tasks.

        Again.

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