by Dennis Crouch
Fox Factory, Inc. v. SRAM LLC (Fed. Cir. 2019)
This is an important case for anyone arguing secondary indicia — not a good case for patent holders. The court here again raised the “nexus” hurdle by holding that a presumption of nexus can only be achieved by proving that the product being sold by the patentee is “essentially the claimed invention.” This is a situation where SRAM owned two patents in the same patent family — both of which covered aspects of its X-Sync bicycle chainring (gear). Each patent included elements not claimed in the other — for the court that was enough evidence to disprove coexistence.
In its IPR Final Written Decision, the PTAB sided with the patentee SRAM — finding the claims not-proven-obvious. U.S. Patent No. 9,182,027 (Claims 1-6 and 13-19). The prior art apparently taught all of the claimed elements as well as a motivation to combine the references. However, the Board found that the commercial success of SRAM’s product tilted the balance toward non-obviousnessness.
On appeal, the Federal Circuit has vacated and remanded — holding that the Board improperly “presumed nexus between the evidence of secondary considerations and the independent claims.”
Obviousness: The bulk of the obviousness analysis is focused on more direct evidence of obviousness — looking at importance of differences between the claimed invention and the prior art. However, circumstantial “secondary considerations” are also available to a patentee to help justify patentability. The court has ruled, for instance, that a commercially successful product is likely to embody a non-obvious innovation.
A key stumbling block for many patentees is the required “nexus” between the claimed invention and the secondary factor:
In order to accord substantial weight to secondary considerations in an obviousness analysis, “the evidence of secondary considerations must have a ‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient connection’ between the evidence and the patented invention.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (Fed. Cir. 1988)).
Although the patent challenger has the ultimate burden of proving obviousness, secondary indicia are only considered in the analysis if the patentee presents prima-facia case. See WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999) and In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
Nexus: A rebuttable prima facie case of nexus can be proven by showing that the product being sold both “embodies” the claimed invention and is “coextensive” with the claims. Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018); Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). The focus of this case is the meaning of “coextensive.”
Unclaimed Features: SRAM’s chainring product includes a number of unclaimed features. The Board found the extra-elements no-problem for the nexus presumption — holding that co-extensiveness is met so long as the claims broadly cover the product (and are not just a component of the product). On appeal, the Federal Circuit found that coextensiveness is more particular than that:
Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.
Thus, the words of the newly enhanced requirement is that the product being sold must be “essentially the claimed invention.” The court provided two paragraphs attempting to explain its new definition:
To be sure, we have never held that the existence of one or more unclaimed features, standing alone, means nexus may not be presumed. Indeed, there is rarely a perfect correspondence between the claimed invention and the product. As we explained, the purpose of the coextensiveness requirement is to ensure that nexus is only presumed when the product tied to the evidence of secondary considerations “is the invention disclosed and claimed.” Demaco. Thus, if the unclaimed features amount to nothing more than additional insignificant features, presuming nexus may nevertheless be appropriate.
Put differently, the degree of correspondence between a product and a patent claim falls along a spectrum. At one end of the spectrum lies perfect or near perfect correspondence. At the other end lies no or very little correspondence, such as where “the patented invention is only a component of a commercially successful machine or process.” Id. Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention. See id.
Although the court here repeatedly cites to Demaco — whose relevant part states in full:
A prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent. When the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process—the patentee must show prima facie a legally sufficient relationship between that which is patented and that which is sold.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)
Multiple Patents and Coexistence: The SRAM chainrings are also covered by a separate patent – U.S. Patent 9,291,250. The ‘250 patent is a continuation of the ‘027 patent and particularly claim “>80% gap filling” — something not claimed in the ‘027 patent at issue in this case. Despite being a continuation, the Federal Circuit found that the ‘027 patent covers a different invention — “these patents cover different combinations of chainring features. . . . [And] The same evidence of secondary considerations cannot be presumed to be attributable to two different combinations of features.” The existence of this separate patented invention covering the product proved to the court that the product was not coexistent with the first patent. The court went on to explain that even seeking patent protection on a different combination than that eventually claimed is “probative” of no coexistence.
On remand, SRAM cannot rely upon the presumption of nexus because of the lack of coexistence. However, the patentee may still be able to rely upon secondary considerations, but to do so must prove that “the evidence of secondary considerations is attributable to the claimed combination of wide and narrow teeth with inboard or outboard offset teeth, as opposed to, for example, prior art features in isolation or unclaimed features.”
= = = = =
I’ll note here that SRAM cited to a number of cases where a nexus was found even though the patentee’s product embodied claims from two or more different patents. The Federal Circuit distinguished those — holding that either (1) the case did not expressly consider the presumption of nexus or (2) that the patents in question covered essentially the same invention. In my view, the court’s reading of the cases appears suspect.
I looked at its first case cited – WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1324–25 (Fed. Cir. 2016), which the Fox Factory court characterizes as “presuming nexus between a product and the asserted claims of two related patents where the patents covered essentially the same invention, and the court identified a single claim as representative of both patents.” The WBIP court actually explained things a bit differently:
A limited exception to the presumption of nexus exists where the patented invention is only a component of the product to which the asserted objective considerations are tied. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). Kohler does not argue that this exception applies in this case, nor could it. The asserted claims are drawn to a “marine engine” (‘044 patent claims 1–6, 8, 10–11) or to a “method of controlling emissions from an internal combustion engine configured for marine application” (‘044 patent claim 12 and ‘196 patent claims 26 and 28). The Westerbeke and Kohler low–carbon monoxide gen-sets are the identical type of device, marine engines, as that of the asserted claims and practice the claimed methods in order to control their emissions.
Id. at note 3. The WBIP court noted what it called a “limited exception” that occurs “where the patented invention is only a component of the product.” The Fox Factory decision expands that “limited exception” well beyond that identified limit.
The claims of the two patents are also quite different. With claim 26 of the ‘196 patent claiming several features not found in claim 1 of the ‘044 patent, including “driving an electric generator;” A catalyst “configured to simultaneously reduce oxides of nitrogen, carbon monoxide and hydrocarbons;” and using “electronic fuel injection” to control the air/fuel ratio. Although I will not review the claims of the other cases cited on this point, I’m unfortunately expecting that the court here also misread those cases.
For those ranting about PTAB IPR APJs, note that this is another case of PTAB APJs holding the claims NOT proven invalid and the Fed. Cir. reversing that.
Also Greg makes a good point at 4. Showing commercial success alone almost never wins when prior art in the same field discloses all the claim elements, as here, and there was motivation to combine it.
This holding sweeps in every invention. They are all obvious. There is nothing new under the sun. Everything is obvious to God and the Federal Circuit.
Applying voltage to a tungsten filament in a vacuum, duh.
Edison did not invent tungsten filament lamps.
These cartoon avatars sometimes fit perfectly with the comments.
sort of like a green colored stop sign….
If this had not been reversed, it would be the only precedential CAFC decision of which I am aware in which commercial success alone carried the day for the patentee—that is to say, the only case in which the court agrees that the art discloses all prior art elements, agrees that there was a motivation in the prior art to combine the cited references containing the various elements, and agrees that the skilled artisan at the time of invention would have had a reasonable expectation of success in making such a combination, but concludes nevertheless that the claimed invention as a whole is not obvious, because of the commercial success evidence.
Commercial success is a weak argument for patentability. If you have evidence of commercial success alongside other evidence of nonobviousness, you might as well throw it in with the other evidence.
If commercial success evidence is all you have, however, then you really should just give up. No sense throwing good money after bad by paying a lawyer to make an argument that will never succeed.
Commercial success is an illegal argument for patentability.
Fixed for accuracy.
103 requires that non-obviousness be determined as of the earliest priority date. Facts that didn’t exist at the time of filing (much less facts that didn’t exist until years after filing) are not legally relevant to the question.
There’s no good reason that “commercial success” should have relevance. It’s a judge manufactured loophole, manufactured by wealthy men who sympathize with the idea of one of their fellow wealthy brothers “raking it in”. So unfair to take the patent away, even if it was totally obvious! Where will Little Richy P-i-g-man get his next million?
Commercial Success is a perfectly reasonable TEST for Obviousness.
If it was obvious, why wasn’t what it done earlier?
Because no one thought it would be commercially successful? Why not? Was it thought to be more expensive? Was it predicted not to work as well? If so, then the solution was not obvious.
If it was obvious that it would work better and be less expensive and no one did it, was it really obvious?
Sure, but why was it commercially successful? Because it was technically superior to that which was previously on the market? Because your company hired an ad agency with a genius pitchman? Because in the time between the prior art and the filing date, consumer tastes changed?
Only one of those really speaks to the obviousness of the invention, and yet all three are reasons why a product might be commercially successful.
As a practical matter, it is almost always impossible to tease out how much of the commercial success is attributable to the technical merits of the invention, and how much to a marketing genius. This is why—in practice—this sort of evidence is so rarely enough to really tip the scales between “unpatentable” and “patentable.” The number of published cases where commercial success has made a difference to the outcome are quite few.
“technically superior” is NOT a requirement.
Quite in fact, for many pioneering innovations, the very first items are technically inferior.
The notion that “it was only pitched better” is also NOT a disqualifier.
Those that jump into the weeds so quickly as to “but that was marketing” only show that they lack a deep and proper understanding of ALL of the meanings of “promote” that the Patent Clause is about, and fall to the fallacy of some type of linear (or even nonlinear, but always growing) technical improvement.
That is simply not so.
MANY innovations are actually made by mistake. Such are not meant to be penalized by being excluded from patent protection.
Not only “technical improvement” is included in the notion of “promote.”
Two factors to consider for this view:
1) “Promote” included the advertising notion of “promotion” or “getting the news out and about.” This was because even retrograde changes in one area may provide the “A HA” in seemingly unrelated areas.
2) The BBC show “Connections” (with James Burke) was an excellent series that highlighted the possibilities that came from capturing (and thus promoting) various seemingly very tangent items into marvelous advances.
Innovation is simply NOT as “linear” as those thinking that some “technical advance is necessary” would have it.
“As a practical matter, it is almost always impossible to tease out how much of the commercial success is attributable to the technical merits of the invention, and how much to a marketing genius.”
Ideally, in ex parte prosecution you get affidavits from buyers (preferably bulk buyers) stating why they think the product is superior. A problem, of course, is that commercial success is a “secondary” (meaning later-in-time) consideration that usually can’t be shown until after the patent issues. The buyers would be subject to cross-examination in PTO contested cases and in District Court.
““secondary” (meaning later-in-time)”
I don’t think that’s what secondary means. I think they mean it is secondary to the overall obviousness analysis (facts n lawl and all that).
I think it’s proper to consider “secondary considerations” as meaning later in time so as not to suggest that they are of lesser importance in the obviousness analysis. “That evidence is ‘secondary’ in time does not mean that it is secondary in importance.” Truswall Sys. Corp. v. Hydro-Air Engineering, Inc., 813 F.2d 1207, 1212 (Fed. Cir. 1987) (discussing Graham factors and commercial success).
” so as not to suggest that they are of lesser importance in the obviousness analysis. ”
They literally are of lesser importance in the obviousness analysis generally speaking and iirc. Though in some cases it can be the case that all other things are near balancing out and so the secondary considerations become magnified in importance relative to their usual impact.
Lots of “technically superior” products are not commercially successful, for various reasons. Consumers have all kinds of reasons for buying a particular product. None of them are “it’s non obvious.”
Of course, if a product is cheaper to make and that accounts for the success, than the particular elements responsible for that lower cost need to be claimed specifically and the applicant needs to provide evidence showing that the use of those elements was taught away from in the art.
“Because your company hired an ad agency with a genius pitchman”
I think the commercial success argument is required to have nexus to the patented feature/invention etc. iirc anyway.
Exactly, which is why it is so hard to make any progress with the commercial success argument. It is on the patentee to establish that nexus, and it is infinitely easy for the opponent to pick apart the patentee’s case for nexus.
Greg, in what is now considered the early days of personal computers, commercial success or failure was also greatly affected by the great changes in the cost of digital memory.
If it was obvious that it would work better and be less expensive and no one did it, was it really obvious?
Maybe. The problem with hindsight is that its made of myriad variables. For instance, the sheer marketing power of the patentee.
Big firms with good reputations can make a wider range of products commercially successful. They also validate ideas in an art just because they are doing them: leading others to do the same things, even if they are not better or actually innovative. Fashion is unpredictable.
There is a continuum between variation and innovation.
I often wonder why validated, blinded surveys of people actually skilled in the art could not be conducted under judicial supervision.
Ask 200 people skilled in an art if an invention is obvious or innovative, and present the results to a jury as a secondary factor.
Not dispositive, but potentially insightful to a fact finder.
“Facts that didn’t exist at the time of filing (much less facts that didn’t exist until years after filing) are not legally relevant to the question. ”
Wrong.
Simple as that.
I seem to remember an earlier IPR appeal that was a mirror image to this case but likely a remand, not a reversal. Anyhow, Fox Factory does not really get into whether commercial success would carry the day for the patentee because the dispositive issue concerned the presumption (or not) of nexus — whether the patentee had the additional burden of demonstrating nexus in addition to commercial success. The court suggests patentee would not win on the current record because they remind the parties there’s an additional hoop to get through. When all elements are presumed to be in the prior art, the patentee must show that the commercial success is due to the _combination_ of the prior art features (citing the 2016 Ethicon decision).
That the successful product “is” the subject matter claimed is a necessary condition but not sufficient.
Consider the parallel EPO patent EP-B-2602176. Its independent claim is in two parts, separated by the ubiquitous c-i-t link phrase. The first part recites all those prior art features found in combination in the JP ‘489 doc mentioned at p. 6 of the CAFC Decision. The characterizing portion recites those features additional to JP 489 which establish novelty and an inventive step.
Those features are seen in the illustrated embodiment. I assume that “the product” is not a million miles away from the illustrated embodiment.
I note that the claim before the CAFC does NOT recite the features which the illustrated embodiment depicts in combination as the solution to the inadequacies of the prior art chain wheels. I venture to suggest that this is the reason why the Federal Circuit was not persuaded to accept the commercial success as proof of non-obviousness.
MaxDrei,
In this Sovereign the “ubiquitous” (equivalent) is actually the opposite.
You should note that as a starting point in your noting what the CAFC may or may not choose to do.
That may be so, but patentee’s c-i-t claim at the EPO is an admission which features of its chainwheel are old and what is the combination of features necessary to deliver patentability over JP 489.
Can anyone help me out here? I think that Max is wrong about the U.S. law on this point.
It is certainly the case that the patentee admits—in presenting a Jepson claim in the U.S.—that those features in the preamble of the U.S. claim are old in the art. I believe, however, that there was a recent U.S. case in which it was disputed whether the presentation of a Jepson claim in (e.g.) Mexico (where you are obliged to phrase your claim in Jepson format) amounted to an admission about prior art in the U.S. If I recall correctly, the CAFC held that a U.S. patentee is not considered to have “admitted” prior art based on Jepson claims ex-U.S.
Does anyone else remember such a case? Which case was that? Or am I dreaming this?
If I recall correctly, the CAFC held that a U.S. patentee is not considered to have “admitted” prior art based on Jepson claims ex-U.S.
LOL
“Lying under oath in another country doesn’t count because … reasons!”
Greg,
Never heard of such a case.
Since Greg has me “on” ignore, if there is anyone out there that recognizes the case that Greg thinks is providing what he is talking about and can provide the case, I would be greatly appreciative.
Greg, I don’t know offhand of a case on point, but your general logic is sound: the case law in the US says that the stuff in a preamble in a Jepson claim is admitted to be known. But foreign law is, well, foreign, so it can’t be assumed that under the foreign law, putting that stuff in the preamble of claim in that jurisdiction constitutes a similar admission under that foreign law. And there’s no reason why choosing to put stuff in the preamble of a similarly-structured claim outside the US should be presumed to constitute an admission under US law that those elements are known.
Unless the governing statute or case law in a particular jurisdiction says that putting something in a claim preamble is admission that the thing was known, there’s no reason to hold the wording of the preamble as an admission of knownness.
Note that where patentees tend to get in trouble with statements made in foreign jurisdictions is when they say abroad that publication X means N, but in the US they say that publication X means M, where X could mean N or M but not both.
I’m pleased that my comment at #3 has attracted reaction. Let me add another thought, about the extent of any “admission” in an EPO, c-i-t, 2-part claim.
The extent of the admission is no more than that the features in the pre-characterizing part of the claim are to be found, in combination, within the disclosure of the JP 489 document. Is that problematic, in the USA? I doubt it.
By the way, the EPO file (link below) is a treasure trove. There are copies of docs in US litigation and litigation at the court in Germany, as well as 3rd party observations on patentability and an opposition to the (narrow) claims issued by the EPO, which opposition is still only in its early stages. Question, did by any chance the drafter of the Fed Ct decision first have a peep at selected docs in this EPO file wrapper?
link to register.epo.org
MaxDrei,
I often think that you are out of touch with basic US patent law and statements like:
“ The extent of the admission is no more than that the features in the pre-characterizing part of the claim are to be found, in combination, within the disclosure of the JP 489 document. Is that problematic, in the USA? I doubt it.”
only confirm those views.
The statement you quote was written after I had received the benefit of Atari Man’s opinion, at 3.1.1.1.3. You already know I am based in Europe and not a US attorney. You could have a much more exciting time if you were to engage instead with AM.
Wow, did you miss the point there.
YES, the statement I quoted from you was AFTER you received the benefit of another’s comment.
That only make the quote reflect MORE the inanity of your ‘grasp’ of basic US patent law.
Maybe you should do something about that, given how much you post on US patent law blogs…
BTW, I note that the EPO has laid open to the public, in addition to the lead file, its files of no less than seven first generation divisional applications. Plenty of material there, then, for eager lawyers to scrutinise and digest and a source of docs that will, for many years to come, continue to cough up thought-provoking material, handy for those involved in litigation in the USA.
Wait, secondary considerations of non-obviousness must be commensurate in scope with the claimed invention? Who knew?
A claim comprising….
To this point, the court here appears to begin its errors at page 12:
“Thus, if the unclaimed features amount to nothing more than additional insignificant features, presuming nexus may nevertheless be appropriate.”
They appear to demand that the unclaimed features be “worthless” entirely. That is not the legal requirement (as recognized by the term “comprising”).
What the court here does is basically create a new condition that nexus may EVER ONLY BE to one claim — even as they attempt to lead into the quoted section above with an admission that such is not the case!
Note as well how they sidestep the “scintilla” standard:
“While coextensiveness is an issue of fact that should ordinarily be decided by the fact finder in the first instance, no reasonable fact finder could conclude, under the proper standard, that the X-Sync chainrings are coextensive with the patent claims.”
ALL that this is, is the Appeals court substituting their takeaway on a factual matter because they feel like it.
Any one item may contain any number of aspects – the analysis is NOT whether other claims (another patent) may cover other aspects. The analysis is whether the claims at question cover the aspect at question.
The asserted significance is significance for something other than the “comprising” aspect of the claim at point. The court engages in smoke and mirrors with its discussion of other patents and the testimony to other things than the terms of the claim at point (and whether the notion of “comprising” IS OR IS NOT met.
What the court has actually done here (without announcing it) is to do away with the presence and level of the presumption of validity of multiple patents in a single family.
The harm here is far more nefarious than a first blush may reveal.
It appears that the “legislating from the bench” and imposition of the court’s value into the law is stated at page 16:
“On a broader note, if we were to agree with the positions taken by both SRAM and the Board—i.e., that the co-extensiveness requirement is met so long as the patent claim broadly covers the product that is the subject of the secondary considerations evidence, irrespective of the nature of any unclaimed features—then the coextensiveness requirement would rest entirely on minor variations in claim drafting.”
Gee, because Congress mandated that it be the inventor that sets forth the invention, claim drafting and minor variations must somehow be “bad.”
Better yet, the finger prints of Big Tech can be found with this statement:
“They reach this view even though the automobiles sold contain hundreds if not thousands of different components beyond just the novel aspect of the claimed brake pads”
This translates into ANY invention that goes into something like a cell phone can be infringed at will because cell phones contain “hundreds if not thousands” of different inventions.
The problem of course is that the logic used is a fallacy:
“and even though only minor variations in patent claim language (i.e., whether the word “automobile” is included in the claims) differentiate the “brake pad” claims and the “automobile” claims.”
Guess what. EACH claim has to pass on its own. EACH claim is enforceable on its own. EACH claim (regardless of the court’s feelings on minor variations) carries the protection of that claim.
Claiming that this “turns the inquiry into form over substance” is itself “form” over substance (the “form” being the feelings of the court about what should be allowed to be protected).
The courts assertion that it is following Demaco is plainly false, as there was no “claim with the minor variation” at point there.
By the way, this decision is by Prost, Wallach and Hughes (written by Prost).
What color is the sky in your world?
Use your words. You’re not five years old. (?)
… says the guy whose words ARE like those of a five year old (and whose ‘game’ attempts are even more juvenile).
It’s ok to stamp your foot when you’re cornered. Just don’t hurt yourself.
This stamping your foot is why you’ve had more posts expunged than anybody else.
LOL – way too funny for you to try that line (as Malcolm just today had more of his posts expunged).
You do try so very hard to be a toady, don’t you?
“Malcolm just today had more of his posts expunged.”
Who is this “Malcolm” character? The question is why have you had more posts expunged than anybody else.
Your question is preposterous on its face.
You are doing that self-flagellating thing again.
I really am not sure just why these types of posts of yours do anything but harm your own rep.
…not sure why YOU do not realize…
“Your question is preposterous on its face.”
So there must be an easy answer.
“So there must be an easy answer.”
We’ve been over this game of yours before, Shifty.
Preposterous questions need not even BE answered.
Why have you had more posts expunged than anybody else?
Another preposterous question.
It is quite evident that you are a novice student of pedantry and sophistry.
Here, you attempt to construct a question that to “answer” presumes that the elements of your question are accurate.
This is simply – and beyond clear – not so.
It is entirely dishonest of you to play this game, but we both know that you simply do not care.
At all.
For you, there is no ethical boundary to your attempts to play “gotcha.”
Sadly (for you), you
s
u
c
k
at this.
So, you do have some self-awareness when you make stuff up. What a pity.
You keep on wanting to play the copy-cat version of Accuse Others…
It does not work for Malcolm.
It certainly does not work for you.
ALL that you do is self-flagellate with such transparent game playing.
Who is this “Malcolm” character that you’re obsessed with? So sad that you have some self-awareness.
You speak of expungements, and pretend not to know who this “Malcolm character” is…
I suppose that that self-flagellation was especially satisfying for you.
Please clean up after yourself when you are done.
Ahh, the old reliables. But who is this “Malcolm” character that you’re obsessed with? How many posts can you “generate” by yourself without relying on this “Malcolm” character? And why have you had more posts expunged than anybody else?
C’mon Shifty, I have already ‘outed’ this game of yours of trying to impute “credibility” with bogus questions.
You say “old reliables” but seem c1ue1ess that you are only describing the games you are playing.
Since you are not even on point in those games, this just comes across as remarkably b0rrrrring of you.
I know you don’t like to be distracted from your job of making stuff up. I’ll let you go.
But think . . . you keep repeating the same stuff over and over. Shouldn’t you be better at this by now? How long has it been? Time to move on? Maybe apply to a US law school? I’ll let you go.
Thank you Anon. This is a very clear and important point. There is no point in applying for a patent if it will be picked apart like this at the cost of years and millions of dollars to the innovator.
Wrong lesson, Josh.
The “just quit, you little guy cannot win with us established Powers” message is exactly what the Efficient Infringers want you to be saying.
“See our power? We can use our voi€e$ — a la Citizen’s United — to influence the legislators (see AIA); we can use our sway to influence the courts (see “friends” of the court – not that the Supreme Court needs such “friendly” advice in their own desire to rewrite patent law AND brow beat the CAFC through simians in a cage fire hose training); this leaves the Executive, the branch perhaps most open to established power influence.
How can you little guys even continue to try?”
The answer is: Because the protection of innovation demands that the path of “just quit” must not be followed.
There is no point in applying for a patent if it will be picked apart like this at the cost of years and millions of dollars to the innovator.
So don’t apply. No one is forced to do so.
Those who choose to, do so because they think that there is value in the patent—even in the face of such picking apart. Sometimes that estimation is correct, sometimes not.
Your experiences can surely should inform your future behavior. I am not really clear, however, how they are relevant when I choose to file or not file on this or that given invention.
“No one is forced to do so.”
Absolutely true.
“So don’t apply.”
And absolutely the message of Big Pharma (and the Efficient Infringers).
Connect the dots. Note how the desired takeaway is gilded with unassailable truth.
Please pardon potential (re)peat
And another thing are ‘illustrious’ patent (among a few small other things) court has neglected to remember, patents (especially improvement patents) while being valid and patentably distinct, may well still have operational overlap — one may well have an exclusionary right and STILL not be able to produce an actual product because of another prior parent’s exclusionary effect (typically when the ‘improved upon’ patent is owned by someone else).
Remember that the LARGE majority of patents are improvement patents.
It should be abundantly clear that the nonsense of “one patent only to match a product” simply does not accord with the actual “negative right” nature of what a patent is.
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