Are Patents Free for the Taking; or Does the Law Require Just Compensation?

by Dennis Crouch

Christy, Inc. v. US (Supreme Court 2021)

This is a super interesting patent-as-property case. In 2018, Christy filed a class-action lawsuit asserting that the cancellation of its patent via Inter Partes Review was taking subject to the due process requirements of the Constitution as well as the Fifth Amendment requirement of “Just Compensation.”

… nor shall private property be taken for public use, without just compensation.

Christy also argued that the payment of USPTO maintenance fees, without refund, constitutes an “illegal exaction.”   The Court of Federal Claims rejected Christy’s argument as did the Court of Appeals for the Federal Circuit.

  • Christy, Inc. v. United States, 141 Fed. Cl. 641 (Ct. Fed. Clm. 2019);
  • Christy, Inc. v. United States, 971 F.3d 1332 (Fed. Cir. 2020).

Now, Christy has the case up to the Supreme Court with the following two questions:

Petitioner Christy, Inc. obtained a patent after following all the steps and rules and paying all of the fees demanded of it. Upon trying to assert its property rights embodied in the patent against an accused infringer, the Government invalidated the patent during Inter Partes Review (“IPR”) initiated by the accused infringer because it had allegedly been mistakenly issued. Christy, Inc. received no compensation for its property nor return of the fees it paid. In that context, the Questions Presented are:

1) When a duly-issued patent is invalidated through a post-grant review process (such as an IPR), must compensation be paid under the Takings Clause?

2) When a duly-issued patent is invalidated through a post-grant review process (such as an IPR), should the issuance and maintenance fees that were demanded by the government by mistake be returned?

[Christy-v-USPTO_Petition4Cert].

The Federal Circuit offered a very low quality opinion on the issues here.  In particular, the Federal Circuit simply stated that it was bound by a prior decision holding that “cancellation of patent claims in [an] inter partes review cannot be a taking under the Fifth Amendment.”  The prior decision is Golden v. U.S., 955 F.3d 981 (Fed. Cir. 2020) where Larry Golden represented himself pro se. In that decision, the court also did not explain its decision but rather simply cited to another prior case, Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019).  In Celgene, the court likewise did not examine the issue of takings, but rather cited to its older decision of Joy Technologies, Inc. v. Manbeck, 959 F.2d 226 (Fed. Cir. 1992) and Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985).  However, neither of these cases addressed the takings clause they focused instead on alleged violation of due process.  So, as is often the case, the trail Federal Circuit self-citation leads nowhere.

I don’t expect the patentee to prevail in this case, but that will only be based upon the Supreme Court’s rejection of its own prior statements.

A patent for an invention is as much property as a patent for land. The right rests on the same foundation and is surrounded and protected by the same sanctions. Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92, 96 (1877).

Briefing in the case will continue through the spring.

= = =

U.S. Patent No. 7,082,640

141 thoughts on “Are Patents Free for the Taking; or Does the Law Require Just Compensation?

  1. 9

    Please pardon potential (re)post due to filters…

    OT (but there is a link to the patent sphere):

    Robinhood CEO EMBARRAS SES Himself With Pathe t1c Excuses:

    https://youtu.be/bOs-iTTGuNg

    The link? I have long remarked how the Corporatocracy (augmented by the treatment of the juristic person under such cases as Citizens United creates a dangerous anti-patent upswell – including the propaganda machine of ‘Oh N0es, Patent Tr011s”) is a very bad thing for innovation.

    I certainly hope that the reach and fallout and FULL implications of this little tiny bit of sunshine helps do something to slow/stop/reverse the untowards power of the juristic persons known as Corporations.

  2. 8

    The prolific commentator called Random Guy, in-house at the USPTO, writes in this thread:

    “I have expressed some ideas here before, but those decisions are above my pay grade, and I don’t pretend to be privy to all the concerns the top of the office may have. But I assure you that the concerns of the “stakeholders” (I dislike that the office really only considers applicants the stakeholders) are indeed on their mind.”

    I have a question. Who decides who are the USPTO’s “stakeholders”? Is it the executive or the legislative branch?

    If the old adage applies, that “he who pays the piper calls the tune” then I guess that the stakeholders are exactly those who pay the USPTO’s fees, no more, no less. But if the officers on the top floor of the USPTO are public servants, can that be right? What about the public interest in minimising the restraints of trade caused by the issue of bad patents and their attempted enforcement by lawyers using to the full the opportunities for pressure that were handed to them on a plate by their paid servants within the USPTO?

    1. 8.1

      Lol – nice “soft spin” of “in-house at the USPTO.”

      You do realize that until THIS thread, this person had always been known as an Examiner, right?

      Note how he has refused to be upfront about this.

      Gee, I wonder why…

      How is it MaxDrei, that you STILL do not realize that your “politeness” actually highlights the spin that you impart?

      1. 8.1.1

        By “in house” I mean “inside the house called the USPTO”. As far as I know, the appellation “in house” is not a title reserved exclusively for attorneys at law. Large corporations often have their patent administration function in house, smaller firms not. Not every in house patent department includes an attorney at law. Or are you of another opinion?

        1. 8.1.1.1

          Criminy, as a supposed attorney I would expect you to recognize a term of art.

    2. 8.2

      to make it east for you MaxDrei:

      link to patentlyo.com

      (note: I fully expect you to disappear from this ‘inconvenient’ item)

  3. 7

    Do the government pay fair compensation to drug dealers for confiscated meth? Do states refund the registration fees on cars seized as the fruit of illicit activity? Do whorehouses get a refund on property taxes when shut down? More importantly, must a patent owner refund all licenses and settlements if his patent is invalidated? If the answer to any of the above is “no,” then no, you don’t get compensation, and no, you don’t get your maintenance fees back.

    1. 7.1

      Talk about false equivalencies…

      1. 7.1.1

        +1

    2. 7.2

      Jump the shark much? Inventors -> trolls -> criminals.

      1. 7.2.1

        If your patent doesn’t claim anything novel and non-obvious, does the law recognize you as an inventor? No one is entitled to an invalid patent, just as no one is entitled to own contraband.

        1. 7.2.1.1

          Your attempt at justification is downright pitiful.

          The owner of contraband has broken the law.

          The owner of an invalidated patent has broken NO law.

        2. 7.2.1.2

          I am an inventor and my patent is not invalid according to the judge, jury, and appeals court.

          But the USPTO claims they made a mistake and were set to take it back (until I settled with the infringer to terminate the IPR).

          Many other inventors have patents that are lawful in a real court, but the USPTO “reconsidered their decision to grant the patent.”

          Your line of reasoning would allow the developer of your neighborhoid to unilaterally allege a mistake in the plat, bulldoze your house, and turn it into a park, backed by a letter signed by his friends on city council.

  4. 6

    On Jan 25 I posted a petition to SCOTUS for writ of certiorari to the Supreme Judicial Court of the Commonwealth of Massachusetts.

    I invented a key technology of modern cloud computing. Under certain circumstances the patent application reverted to the Inventor, which was a team consisting of Tony Bono and me. These circumstances occurred in 1993 when the assignee corporation (Clearpoint) ran into severe financial difficulties and eventual bankruptcy because of a later reversed preposterous order granting to Wang of an injunction against Clearpoint on the grounds that Wang was likely to prevail in a complaint for infringement of an unrelated Wang technology.

    We were unable to obtain the writing assigning the pre-GATT patent application until over a decade later. We revived the patent application, but it was placed in SAWS. After the PTAB upheld the examiner’s final rejection, the patent prosecution entity (RealVirt) filed a complaint against the USPTO Director in the DCEDVA under 35 U.S. Code § 145 (Civil action to obtain patent). The USPTO motioned for dismissal because RealVirt lacked standing because the Inventor never held title to transfer to RealVirt, and the Court granted the dismissal.

    The Inventor attempted to quiet or try title to the patent application in Massachusetts courts but was rebuffed in all proceedings but one. After the Supreme Judicial Court of Massachusetts denied petition for writ of certiorari, the Inventor is now attempting to petition SCOTUS for writ of certiorari.

    I posed the following questions related to applying state (commonwealth) property law to a patent application.

    Does a party asserting ownership to a patent application have a right to a state (commonwealth) action like either a Massachusetts quiet action or a Massachusetts try title action in order to a resolve question of title to said patent application,

    • if in a 35 U.S. Code § 145 civil action to obtain a patent, the Federal District Court denies standing to the applicant for lack of clear title,
    • if the Court of Appeals for the Federal Circuit upholds the denial of standing in a Rule 36 Affirmance, and
    • if there are multiple possible even perhaps contradictory reasons for the Affirmance?

    According to 35 U.S. Code § 261 a patent has “the attributes of personal property.” In a state (commonwealth) court, does the doctrine of adverse possession apply to a patent application as this doctrine might apply to other private or personal property like land, a car, a painting, etc.?

    In a state (commonwealth) quiet or try title action, how dispositive is a finding of fact by the USPTO with respect to ownership?

    Is there a prayer that this petition to SCOTUS for writ of certiorari to the Supreme Judicial Court of the Commonwealth of Massachusetts will be granted?

    [I couldn’t afford a lawyer to submit the petition and tried to do it myself.]

    You can find my attempt at the writ at the following URL.

    link to drive.google.com

    I discussed with some LinkedIn acquaintances my “originalist” theory of the nature of a patent or patent application qua intellectual property.

    I theorize the following.

    If a patent to an invention is by original intent of the framers private immovable property like a patent to land and only differs from a patent to land because a patent to an invention has the attributes of personal movable property (in order to identify which court has jurisdiction), then procedures like ex parte/inter partes reexamination, IPR, & PGR are all unconstitutional.

    Not only did the General Land Office, which issued a patent to land, have no similar procedures for canceling a claim of a patent to land, but the attempt to institute such procedures would have been considered to be an abomination.

    Only examination of a reissue application is consistent with the original intent of the framers. Hence ~150 years had to pass and everyone had to forget the views of the framers before anyone ever conceived of atrocities like ex parte/inter partes reexamination or IPR/PGR proceedings.

    A patent is not precisely title.

    Patent is short for letters patent, litterae patentes, or lettres patentes. (There are other variants — a message or order consists of of multiple letters — hence the long form is plural.)

    Letters patent with respect to land or to an invention represent a legislative act of the sovereign (in the Anglo-American system: either the king or the president). Letters patent to land or to an invention grants a monopoly right to a defined territory of land (of the sovereign’s realm) or to a defined territory within the realm of knowledge.

    Letters patent do not so much constitute a title as they create and define (by claims) private immovable property in a realm. One can hold or have title to letters patent.

    An application for such letters patent is rather like an option or potential grant that can vest or issue. The application has in potential the property attributes that the vested or issued letters patent will have.

    Thus the law of (a) letters patent or of (b) application for letters patent as it (the law) applies either to (i) a territory of land or to (ii) a territory of knowledge should in all cases be the same in the original intent of the framers.

    The actual grant (letters patent) can be surrendered for a reissue, and it should only be cancelled by a specific scire facias proceeding or within a proceeding of a court of common law (either equity law or statutory law). The administrative proceedings (ex parte reexamination, inter partes reexamination, PGR, IPR) are all abominations from the standpoint of the framers because the framers would have considered them to be an open invitation to corruption or abuse which the sovereign might perpetrate.

    A patent application is the purer case. No substantive patent law is associated with title to a patent application. It is much harder to split hairs with respect to the nature of the property that an application to letters patent represents.

    1. 6.1

      Thanks Joachim. Do you have all of the relevant documents together in one place?

      1. 6.1.1

        I have all the documents from the original patent application of October 8, 1991 through the petition to SCOTUS for writ of certiorari to the Supreme Judicial Court of the Commonwealth of Massachusetts.

        The documentation is probably well over 100,000 pages.

        Dennis can see the pleadings, motions, and orders most relevant to the petition to SCOTUS in the petition itself. Said petition is accessible from the comment to which Dennis was replying.

        Because I was appealing a decree from a Court in Equity and because the case was purely documentary, I included all the evidence for ownership in the Appeals Brief. If Dennis wishes to understand my argument for the ownership of the ‘161 application for letters patent, the documents filed to the Appeals Court of the Commonwealth of Massachusetts lay out the entire case.

        Dennis should be able to view the PDFs of the documents in the following googledrive directory.

        link to drive.google.com

        Dennis should probably view in following order:

        1. MotionToAmendAppellateBrief.pdf,

        2. MotionForAppellateReconsideration.pdf,

        3. AmendedPrimaryBrief.pdf

        You can consult the Appendices I-IX as you need while you read the Amended Primary Brief.

        Reading Patentlyo give me the idea for the adverse possession argument.

        1. 6.1.1.1

          I refer to a response to the Single Justice Appeals Court in the above documents.

          The memorandum explains the jurisdiction of Massachusetts Courts over controversies related either to title to letters patent or to title to an application for letters patent.

          The response can be read at the link below. Justice Englander seems to have been the only Massachusetts judge that paid serious attention to my arguments.

          link to drive.google.com

    2. 6.2

      Joachim,

      You missed one distinction: a patent to land is a “timeless” item that by and large has no “expiration date.”

      A patent to innovation and an innovator’s inchoate right is expressly limited in time.

      Thus, the “mechanism for correction’ should be more austerely constrained, as “errors” (as they may be) are necessarily limited in time effect.

    3. 6.3

      Joachim,

      You missed one distinction: a patent to land is a “timeless” item that by and large has no “expiration date.”

      A patent to innovation and an innovator’s inchoate right is expressly limited in time.

      Thus, the “mechanism for correction’ should be more austerely constrained, as “errors” (as they may be) are necessarily limited in time effect.

      1. 6.3.1

        In contemporary USA letters patent to land have no time limit while letters patent to an invention do, but nothing intrinsic requires this distinction between the two types of letters patent.

        Americans could change the Constitution with regard to term of right to invention.

        Generally a fee simple absolute title is associated with letters patent to land, but nothing intrinsic requires this association.

        In the UK letters patent to office have often been time limited while letters patent to a title of aristocracy are not time time limited.

        1. 6.3.1.1

          If fee simple defeasible title were associated with real estate property, amendments V & VII would still apply to such apply to such property.

          If the General Land Office issued two letters patent to land, and the two letters patent had overlapping claims, it would be an issue for adjudication in a court of common law if the two year vestment period had completed for both letters patent.

          It would have been considered an irresistible temptation to abuse and to corruption to enable the General Land Office to adjust or to cancel vested letters patent.

        2. 6.3.1.2

          but nothing intrinsic requires this distinction between the two types of letters patent.

          I am going to disagree with you on this point.

          To play with words a little, land is binary. You have it or you do not. It is only a singular ‘entity.’

          Invention is not so. Multiple different people may properly invent something that is exactly the same invention but invented completely separate and independent from each other.

          It is this intrinsic nature to which the concept of limited times arises.

          Patents for innovation ARE time-sensitive because of the intrinsic non-binary nature.

          1. 6.3.1.2.1

            Ned Heller produced a wonderful amicus brief in OIL STATES SERVICES, LLC, Petitioner, v. GREENE’S ENERGY GROUP, LLC, ET AL., Respondents. He detailed the history of patent law in England. Unfortunately, while SCOTUS concedes that US patent law is anchored in English patent law, SCOTUS does not consider US patent law bound by the history of English patent law.

            On the other hand, originalists do care about the original intent of the framers in the Patent and Copyright Clause.

            “[The Congress shall have power] To promote the progress of science and useful arts, by securing for limited times to … inventors the exclusive right to their … discoveries.”

            The original intent included the legislation of a patent system to grant inventors letters patent (executive legislative act of monopoly — letters patent) to their “discoveries” — regions in the territory of knowledge.

            Such a region in the territory of knowledge was perceived by the framers to be binary even though several inventors might nearly simultaneously invent almost the same invention. Only one inventor gets to claim a specific region of knowledge just as at a later time only one homesteader could claim a specified region of land or only one miner could claim a specific mineral vein.

            Perhaps if SCOTUS grants my petition, an amicus curiae will create a brief to describe the original intent of the framers. Scholars like Harvard Professor Peter Galison have investigated the subject.

            1. 6.3.1.2.1.1

              Ned’s views were ‘OK’ as far as they went, but as has been chronicled here on this site, Ned did not follow posting rules in so far as his posts were a part of his paid advocacy, and he refused to engage in FULL discussions on the merits, and would not take dialogue to its natural conclusions.

              Further, Ned LOST his his battles BECAUSE he would not take my suggestions and my points to heart.

              As to whether US patent law is bound by ANY non-US law, I would hope that you would immediately see why that is not — and cannot be — the case.

              As to your comment here on ‘binary,’ You seem to be conflating a necessary binary result (that there can be ‘only one’ holder of a patent race), with the point that I presented of WHY there is an intrinsic nature of time-limitation due to the NON-binary aspect that inventions being the same from separate independent efforts.

              You cloud the analogy by trying to equate a result under law with the different binary nature of land and the NON-binary nature of invention.

              Your sidestepping seems to point out that you are not grasping the answer that I have provided you addressing why there is an intrinsic time element in one, but not the other.

              As I pointed out, this intrinsic time element actually speaks to making it MORE difficult (or perhaps to be more precise, speaks to why is SHOULD BE made to be more difficult) to REMOVE Letters Patent once granted.

              1. 6.3.1.2.1.1.1

                Anon, You are over-interpreting my goals. So far every challenge to PGR/IPR has failed before SCOTUS. Antonin Scalia’s theory of Constitutional interpretation has had strong influence on SCOTUS and American law in general. I am trying to craft an argument according to Scalia’s ideas.

                I am not finished yet with developing this line of argument.

                1. I think it less that I may over-interpreting your goals, and more that I am pointing out a distinction that your published comments here miss.

                  What you do with this is, of course, entirely up to you.

                  I post merely in the hopes that you recognize a difference and avoid an error based on your expressed views.

                2. If my petition is granted, I will not be dealing with ex parte/inter partes reexamination or with PGR/IPR.

                  SCOTUS has strayed from the original intent of the framers, and if SCOTUS gets back on track, it helps my case and will probably help those struggling against PGR/IPR.

                  At some point, if I am arguing against PGR/IPR, I will definitely point out that a procedure makes no sense if it occasionally corrects the erroneous issue of a few patents but otherwise trashes the whole patent system.

                3. If your petition is granted… (sorry, but I have a FAR better chance of being struck by lightening, twice, as I hit an amazing hole-in-one on the 18th hole at Augusta)

                  … and you use the notion of patents as property as you have done here (without properly accounting for the intrinsic time-dependent nature), you will be making an avoidable mistake.

                  Your refence of Ned Heller actually strengthened my point here.

                4. I am only arguing that I must be able to litigate ownership of the ‘161 Application as the US and Massachusetts Constitutions require. Title to a patent application is a matter of state (commonwealth) law. The Massachusetts courts are ignoring clear holdings of both SCOTUS and also the CAFC.

            2. 6.3.1.2.1.2

              Actually, the opinion did consider English law and what they did was take Lemley’s paper as factual and they held that the Privy Counsel could invalidate a patent before the adoption of the U.S. Constitution.

              Think about that. They referenced a paper by a law professor that makes 100’s of millions of dollars burning down the patent system and that was designed specifically to be cited so that English common law could be discounted. The article was not peer reviewed. There are no consequences for unethical conduct in writing a law journal article.

              Not only that but the dissent said they questioned the veracity of the article by Lemley that was held as fact.

              1. 6.3.1.2.1.2.1

                The Ethics of uncontrolled “Friends of the Court” who are not only active in attempting to shape law, but who also may well be active in shaping the minds of successive generations of attorneys would be worth exploring on the Ethics side of this blog.

                This blog still has an Ethics side, right?

                (rhetorical – I just checked – it’s still there, although the last post is more than three months old)

                As I have posited, the fact that Attorneys operate under codes of ethics due to our proximity and interaction with the law should lead to at least a doubly restrictive code of ethics for the likes of Lemley.

                1. Oh, I easily admit that Ned Heller had many decent points.

                  As I have noted elsewhere, he is probably the only one that would actually engage on the merits.

                  My major problem with Ned was that he did NOT follow the “only personal” rule of posting on this blog.

                  His posts were OFTEN directly aligned with his paid advocacy (and he never denied such).

                  This though created the problem that he would NOT follow logical or legal arguments to their necessary conclusions.

                  Your point here: Lemley, happened to be an area that did not impact Ned’s legal views.

                  I would have expected no less than agreement with you on that subject.

                2. While I tended to disagree with Ned, I usually found his comments informative. It’s possible I would not have appreciated them so much if I were a lawyer, but de mortuis nil nisi bonum, and I wish he were still participating in this forum.

  5. 5

    Now I’m just a simple country lawyah, but seems to me that word “invalid” y’all keep throwing ’round is just a fancy way of sayin’ “illegally granted.” The office could not have illegally vested a property right any more than a non-heir could vest ownership in an estate based on an invalid will.

    That might seem like a tortured reading of the patent grant, but anyone who will tell you differently forgets the first rule of law – the public only pays when the system has no other choice. There is no outcome that will result in the office putting the public on the hook for millions of dollars of liability, so the analysis will have to twist to meet justify the ends.

    The maintenance fees, on the other hand, are probably returnable, because they’re not really an issue. What percentage of patents get invalided by IPR? Less than 1%? Raise maintenance fees by 1%, return the maintenance fees on improperly granted patents.

    1. 5.1

      Random, I agree with you, but you set me thinking, on what the patent right is and how much it’s worth.

      Suppose you consider your patent attorney was negligent and go to law to claim compensation. but there was no negligence. so you get no compensation. Your right to sue was worth nothing.

      Now suppose the USPTO issued you with a patent. You enjoy a right to sue infringers. But in fact, the patent was never valid. Your right to sue was always worth nothing. The IPR that established the fact of invalidity took nothing away from you. Your “property”, right from the day of its issue, never was worth anything at all.

      How about that?

      1. 5.1.1

        How about that?”

        How about you do know that Random is NOT any type of “lawyah” at all, and is merely an examiner with a very twisted set of views on law.

        How about you put aside your own tautology of “never valid” and realize that such is NOT the case for a host of reasons, including the power AT grant, and the notion of expected values. You confuse the assumed conclusion to be a proper starting point, and that is just not so.

        How about that?

        As for Random, his “forgets the first rule of law – the public only pays when the system has no other choice.” is a very odd view at the Quid Pro Quo deal, the nature of an inchoate right and what happens to that inchoate right at the moment of grant, and some odd view of how “the public” is involved.

        His “ just a fancy way of sayin’ “illegally granted.” ” is simply, factually, and legally, false.

        The action of a grant is NOT ‘illegal” as he attempts to use the word.

        C’mon man – supposedly you are a patent professional with decades of (admittedly Foreign) patent law experience.

        You do no one any favors with your encouragement of Random’s baseless views. Such does not even rise to the level of throwing feces against the wall to see what sticks.

        1. 5.1.1.1

          Question: when a court finds a duly issued patent to be invalid, was it, between the date of issue and the date of the court’s decision, invalid or not invalid? In other words, was it valid until the date of the decision? Or was it “never” valid?

          Whether or not I set aside my “never valid” depends on the persuasiveness of your answer.

          1. 5.1.1.1.1

            Do not mistake an action by a Court (which does take into account the presence and level of presumption of validity — leastwise it should — with a non-court determination that may result in a government taking.

            Whether or not you are ‘persuaded’ is immaterial to the legal point.

        2. 5.1.1.2

          How about you do know that Random is NOT any type of “lawyah” at all, and is merely an examiner with a very twisted set of views on law.

          You’re wrong on this, but I’d prefer to let you think that you constantly are beaten on the scoreboard by a non-lawyer, so I’ll allow it. How bad must you be if a non-lawyer can predict what the courts will do better than you?

          As for Random, his “forgets the first rule of law – the public only pays when the system has no other choice.” is a very odd view at the Quid Pro Quo deal, the nature of an inchoate right and what happens to that inchoate right at the moment of grant, and some odd view of how “the public” is involved.

          Speaking of which, here’s just such an example. If a patent is invalid that is because the quid was never anything of value. An inchoate right argument simply does not exist when the patent was knowingly applied for when the IPR system existed.

          But simpler than that, one can win the argument at the Supreme Court with a single sentence – “If you side with them, then a person who makes $60 an hour will have (at most) 30 hours to make a decision that could subject the government to hundreds of millions of dollars in liability that cannot be discharged short of constitutional amendment.” You might think you have some good precedential arguments in the face of that fact, but you do not. You could have Thomas Jefferson himself come back from the grave to tell you this was the intent and you will still lose.

          I’m unquestionably right on this issue – it’s right in front of your face. You can see how the federal circuit is twisting itself in knots to not apply controlling precedent. Can you imagine what the Supreme Court will do when they could overturn the precedent?

          Scoreboard.

          1. 5.1.1.2.1

            Your reference to “scoreboard” only shows your lack of knowledge in that the score board is broken.

            You do not beat me on theses boards.

            Ever.

            That you may be an attorney makes your wild arse theories even more scary.

            You need to get into a different line of work.

          2. 5.1.1.2.2

            I beat her like a drum in re: predicting case outcomes & every other topic because anon is a random word generator. Terrain!

            1. 5.1.1.2.2.1

              LOL – you are a legend in your own mind.

              Predicting case outcomes? Not at all, as I too predict how a broken scoreboard will read, and YOU should not confuse how I discuss how law should be applied (maybe pay attention to the difference between should and the broken scoreboard effect).

              Every other topic?

              Ah, your illusions of your mind have zero touch with reality.

              random word generator….

              Interesting. You would even consider that in view of your self-proclaimed ‘victories.’… (which would diminish your own post here….)

              Terrain!

              Have you even bothered reading (and trying to understand) Sun Zsu yet?

              Your glibness works against you Marty.

              But thanks for speaking up and confirming that (yet again).

    2. 5.2

      Nope. It is different. The USPTO is allowed to unilaterally change the terms and conditions, and revoke the patent, because it is privilege. When reviewed by a real court, these patents are usually upheld. The taking occurs when an otherwise valid patent is revoked by the USPTO.

      1. 5.2.1

        Actually Josh, any taking may occur at more than one particular instance, and the actions at the different particular instances should not be glossed over.

        To wit, the taking at the post grant institution decision point is an administrative taking that removes valuable sticks from the bundle of property rights at a time at which the tautological argument of “never valid” does not apply.

        Do not fall into the trap of arguing that a taking AFTER a decision has been made (back in the administrative agency) cloud your understanding of Takings law.

      2. 5.2.2

        How would you prove that a patent is otherwise valid? Presumably, if you could prove that the patent was valid, it wouldn’t be revoked.

        1. 5.2.2.1

          What proof? The PTAB (under recent CAFC rulings – saving the venue – vis-a-vis the appointments issue) is like the Executive herself – revoking the patent. Without even the fig leaf of an ‘appointment’ the APJ’s are mere fire-at-will employees ergo the unitary Executive herself. Any so called proof is just the lip service the King is paying while taking your property. A long way away from the Independent judiciary that was promised. BTW did you hear Biden* saying during the nomination of his new CIA director – this would restore the ‘independence’ of the Agency. About fell out of my chair on that one.

          1. 5.2.2.1.1

            I thought that you were talking about the appointment over at the DOJ (and the intersection there with the Hunter Biden probe), but these appear separate.

            Isn’t it refreshing to return to NA KED politics, unabashed and unapologetic in its power?

            Oh wait, this is merely the “D” to the “R” (ugh, they are all politicians).

        2. 5.2.2.2

          A jury trial under Federal Rules of Civil Procedure and clear and convincing burden of proof.

          1. 5.2.2.2.1

            If I understand you correctly, you are relying on an entitlement to a jury trial and clear and convincing evidence to prove invalidity. If so, that seems like a completely separate issue from a constitutional takings analysis.

            1. 5.2.2.2.1.1

              Lol, oh please, NS II, do share what it is that you think would be involved in a Constitutional Takings analysis.

              I am expecting critical thinking from you.

            2. 5.2.2.2.1.2

              I am merely answering the question of how to prove a patent is otherwise valid, notwithstanding a unilateral USPTO revocation.

              1. 5.2.2.2.1.2.1

                It is a trick question.

                One cannot prove that a patent is valid.

                One can show that a patent is not invalid.

                No, that is not double speak, as the use of the double negative here has real legal effect.

                1. I think that we all understand the difference between nonsense and reality, the difference between i) proving a patent to be valid and ii) the failure of a petitioner for revocation to prove that the patent is invalid. We all understand the necessity for , and correctness of, the double negative “not invalid”.

                  What interests me though is your assertion that it is possible to “show” that a patent is “not invalid”. What do you mean? Are you suggesting that it is indeed possible to prove the negative, that the patent is “not” invalid. Or perhaps you are alluding to the acquisition by the patent owner of a Certificate of Contested Validity ie a higher level of the presumption of validity of the litigated patent?

                  Trouble is, such a Certificate is not a showing that the patent is “not invalid”. But perhaps you have something else in mind?

                2. You just get done saying ‘everyone understands’ then attempt to insert a most odd question insinuating that point ‘must be‘ to something else…

                  Why the inte11ectual dishonesty here?

                  Why in the world would you try to make the effectuating of the double negative to be something else? something odd and not obtainable?

                  Since you profess to understand what the legal use of the double negative is, why do you not answer your own question?

                3. I understand and can address the point you raise. In order to prove a revoked patent is “not invalid” one would put the identical evidence heard by the PTAB, plus all the evidence disallowed by the PTAB, before a jury with the question of whether the cumulative evidence demonstrates by clear and convincing evidence that the claims are invalid. If the answer is no, then a taking has occurred.

                4. Josh,

                  Have to disagree, as even the Article III entity has distinguished results from the different entities (of Article II and Article III) and has accepted those differences (as a function of the different controlling rule sets).

                  You want a(n admittedly logical) result that just is not there.

      3. 5.2.3

        Not a privilege but a public right.

        1. 5.2.3.1

          Do you mean Public Franchise?

    3. 5.3

      All of the USPTO fees that were paid by the patentee, in the absence of inequitable conduct by the applicant, should be refunded. An invalidated patent is either a finding of mistake on behalf of the USPTO, or of fraud by the Applicant. Mistakes happen, but without skin in the game there is no incentive to fix the problem. Right now there is only the public relations problem of “80%” of challenged claims being invalidated in IPRs potentially leading to a decrease in filings. Even accounting for selection bias in which patents are challenged, that is a high number. At some point you would expect people to stop paying into a system with that level of detected failure. However, I’m not sure that is enough to incentivize improvements to the Examination system alone. Particularly since the USPTO is also being paid to conduct the IPRs in the first place.

      1. 5.3.1

        All of the USPTO fees that were paid by the patentee, in the absence of inequitable conduct by the applicant, should be refunded.

        Certainly not all of the fees. The applicant paid for a search and got a search. When the office issues a final rejection based on 103 the applicant doesn’t get their search money back.

        The only fees that wouldn’t have been accrued if the “correct” analysis had been done in the initial instance are the issue fee and the maintenance fee, which I agree returning.

        Right now there is only the public relations problem of “80%” of challenged claims being invalidated in IPRs potentially leading to a decrease in filings.

        I don’t know that that’s a public relations problem. Unquestionably if you have a large organization pay tens of thousands to have multiple people spend weeks simply finding art, they’ll do a better job than an organization that was only paid thousands to have only one person spend 25hrs fixing all the problems that previously existed, as well as performing a search. Similarly, paying lawyers to argue a legal issue is obviously going to go better than paying non-lawyers to argue the issue.

        There is no world where you could insulate a patent from a lawyer’s attack without, you know, hiring a lawyer, so the notion that a patent should withstand a lawyer’s attacks when the applicant didn’t pay to have a lawyer attack the application during prosecution seems like a ridiculous request rather than a public relations issue.

        1. 5.3.1.1

          Thanks for your thoughtful response. I’m thinking of a different damages regime based on compensating the applicant for relying on the Examination system being correct. When a search and examination are done improperly and an invalid patent was issued, a patentees will make decisions and investments based on the validity of their patent. Invalidating a patent years later in an IPR is not the same thing as rejecting it in prosecution. The Examination was proven incorrect and the applicant should get their money back.

          The (possibly incorrect) factoid that 80% of challenged claims are invalidated in IPRs is a public relations problem. If you don’t see that, that is a problem. People are burning their patents in front of the USPTO in protest. There are major lobbying initiatives to protest how unfair the system is. Also, who said anything about a patent withstanding an attack without a lawyer? IPRs are adversarial proceedings where both parties are represented by attorneys costing the patentee a massive amount of money compared to the original prosecution. Despite that investment the claims are still being invalidated.

          I agree with the idea of a two stage system and understand that it would be absolutely impossible for the Examination system to only issue patents that could survive the level of scrutiny major tech companies can afford to apply, but if the Examination system was functioning properly, shouldn’t the error rate be lower than 80%? If the patentee has had to pay 100s of k to find out their patent isn’t worth it, doesn’t refunding a few thousand dollars in USPTO fees seem fair?

          1. 5.3.1.1.1

            Potential (re)peat due to count filter…

            Reliance — that’s the word I should have used instead of ‘expectation.’

          2. 5.3.1.1.2

            When a search and examination are done improperly and an invalid patent was issued, a patentees will make decisions and investments based on the validity of their patent.

            Improperly is doing a lot of heavy lifting there to the point of almost being conclusory. Is the only standard for a “proper” examination one which finds all the possible art and then applies the legal standard that any other jurist would agree to it? How can you ever ask anyone to find all possible art? How can you ever ask anyone to predict what some other jurist will conclude? You could give me a billion dollars and I could never guarantee that someone else wouldn’t find something different or come to a different conclusion. “Improper” is not synonymous with disagreement.

            Invalidating a patent years later in an IPR is not the same thing as rejecting it in prosecution. The Examination was proven incorrect and the applicant should get their money back.

            Why stop there? If you’re going to go on a detrimental reliance theory, why not demand compensation for the investment and tooling based upon a business plan where one was the sole supplier in the marketplace?

            Also, who said anything about a patent withstanding an attack without a lawyer? IPRs are adversarial proceedings where both parties are represented by attorneys costing the patentee a massive amount of money compared to the original prosecution. Despite that investment the claims are still being invalidated.

            The applicant paid a couple of thousand dollars for examination. That couple of thousand bought them about three days worth of work from one engineer. Not one lawyer. Not a team of engineers. Not multiple weeks. It is unreasonable to expect someone to make accurate legal conclusions when you don’t pay for someone who is legally trained, so it is unsurprising that later invalidations based on highly legal issues occur. It is unreasonable to expect one person working for three days to uncover the same amount of facts as a team working for a longer time. This is like assigning one patrolman to break a drug cartel during their free time, and then being surprised that a tasked team of narcotics officers can get better results. To the contrary, that is what SHOULD be expected.

            In other words, it is only a public relations problem to people who have unrealistic expectations of what they are paying for. Perhaps the office should form an initiative where an applicant can provide more resources for a more accurate conclusion. But I doubt that would “solve” the PR “problem,” it would simply transmute an unreasonable absolute-threshold PR problem into an unreasonable relative-quality-of-examination PR problem.

            The (possibly incorrect) factoid that 80% of challenged claims are invalidated in IPRs is a public relations problem. …but if the Examination system was functioning properly, shouldn’t the error rate be lower than 80%?

            You realize this doesn’t mean anything, right? That’s exactly the wrong conclusion you can glean from those figures. That does not say that 80% of patents are improperly granted. It means that of the patents which a sued defendant thinks it would be worth it to try and get invalidated, 80% of the time they are right. This would be true whether 1% of patents are issued correctly or 99% are issued correctly.

            It is just as accurate to say that 80% invalidations mean the error rate is 80% as it would be to point to the fact that hundreds of thousands of patents are issued every year and the number of patents invalidated is less than a thousand, so the error rate is like a third of a percent (1000/300000 = .33%). The only way to know the true error rate would be to take a random sampling and subject them ALL to intense judicial scrutiny, not to compare apples to oranges by allowing double self-selection based on which patents are sued upon and which are chosen to be defended through IPR. And I expect that number would be “high” (relatively speaking), because again it is obviously easier to invalidate something when more resources are put into meeting the bar of invalidation.

            Here let me ask this in another fashion: If one wanted to perform a real judicial exception analysis, I suppose one could quadruple the examination fees in order to send the examining corp to law school (i.e. you’re paying for both legal and engineering training now), and then it could double them again to allow the additional time to research and write a legal analysis of each claim (i.e. the moving party has to be given sufficient time to meet its burden). The end result would be that the examining corp is now as versed as a district court judge, so the error rate would be the same 30% that district judges get overturned on appeal at the CAFC. Is it worth it to price X number of applicants out of the market by making an application 8x as expensive in order to still have a very statistically significant number of invalidations? If your patent got invalidated would you feel better that only 29 out of 100 people would be similarly situated rather than 79? Would that solve your PR issue?

            The same argument applies for 102/103: I suppose you could double or triple the number of examiners or double or triple the amount of time to attack the claims and only allow the application if all three agreed it was allowable, but that would require increasing the cost by a factor of somewhere between four and nine, and that would STILL be dwarfed by the amount of resources poured into prosecuting an IPR. Would it make patentees feel better that it took a whole team of people multiple weeks to find the right art? Or would they still be upset simply because their patent was invalidated?

            1. 5.3.1.1.2.1

              Why were you expecting critical thinking instead of outcome-driven analysis?

              1. 5.3.1.1.2.1.1

                NS II,

                Once again you jump on in the wrong side of an issue.

                Random is most definitely not asking for — and not providing for himself — any type of critical thinking.

                He conflates time (applicants do NOT pay for time – they pay for an examination under the law) because that is HIS internal metric with what IS paid for.

                His analysis starts in error and thus is not driven by critical thinking but instead by his own outcome-driven pre-disposed conclusions.

                1. He conflates time (applicants do NOT pay for time – they pay for an examination under the law) because that is HIS internal metric with what IS paid for.

                  The only way to tell you how the CAFC would rule on a given claim would be the hire the CAFC and lawyers to make the argument to them. That isn’t achievable for even a tiny fraction of cases, let alone the hundreds of thousands of cases that must be disposed of yearly. The best you can do is to try and approximate the analysis, and further you are subject to a time constraint that anon ignores (as if the office isn’t also under a statutory requirement to timely provide a result). The fidelity of approximation is unquestionably tied to the amount of time and skill that is put toward it, which are largely approximated by money. The office hires engineers because it lacks the funds to hire engineer-lawyers. The office allots X amount of time for examination because it cannot afford a larger corp to allot X+ while maintaining its timeliness requirements. I question how useful engineer-lawyers would be if your goal is to “get the right result” (as opposed to “raise the right questions” which is significantly more systemically useful), as this board makes it pretty clear that many of the lawyers don’t know the law too well either, but it seems kind of silly to only fund engineers, only hire engineers, and then complain they don’t give lawyer-quality level of analysis. It seems equally silly to provide for some hours of analysis, and then complain when significantly more hours of analysis generate a different result.

                  As someone who is both, I would certainly welcome the notion that they move to an engineer-lawyer corp and adjust pay accordingly, but I’m not holding my breath.

                2. You have professed previously to not being an attorney. Today, in short order, you have stated something different.

                  When did you become an attorney, Random?

                3. Please Pardon Potential (re)Peat due to count filter:

                  No answer Random?

                  Are you or are you not an attorney?

                  If so, when did that change occur?

                  If not, then your du pl1 c1ty above speaks more about you than the multitude of rambling paragraphs (and does not speak well).

                4. Same note to you and the blog master here (who may, or should, be concerned with cyber stalking):

                  link to patentlyo.com

                  Your mindlessness now extends to pretty much EVERY SINGLE POST of yours this year (with the possible exception of two under the Thomas Pain historical shift), with a full 100% to or about me, and an empty 0% being on point to any concept of law, let alone patent law, let alone the topics of the threads.

                5. Thanks !! $$$

                  More , Please. !! And more of the broken links!!! We cannot get enough, because the Monkey Dance $$$. Thanks $$$

                6. Thanks Hall Monitor!! Our great great children will not worry about tuition $$$. Please More $$$

                7. Thanks and dollar signs…

                  You do know what your trying to take my memes TELLS about you, eh?

                  That must have made some impression on you.

                8. Wow, your projections are escalating and having projections of their own.

                  so train-wrecky.

                9. And STILL he doesn’t know he’s doing the monkey dance.

                  [what a maroon]

                  But, whatever, we thank you $$$$. Thanks $$$

                10. Well clearly it is not the “monkey dance” part of the current run of memes that you stole.

                  But getting that wrong is just you being the train-wrecky you that you be.

                11. You have yet to reveal the patent number where you invented the dollar sign.

                  AND THANKS. $$$$

                12. The false assertion game is more than a little stale, as I have already distinguished the difference between use as a meme and “invent.”

                  But, go ahead and (yet again) make your choice that earns me bucks — you know, the thing that generated my meme of thanking you with those dollar signs!

                13. … it is not an admission to deny you your false assertion.

                  What was your job at the patent office before you retired?

            2. 5.3.1.1.2.2

              Improperly is doing a lot of heavy lifting there to the point of almost being conclusory

              Backpeddles the ‘country lawyah’….

            3. 5.3.1.1.2.3

              It’s not my PR issue. It is a problem for all stake holders in the system. The selection bias point is a great one, and I thought it went without saying. However, part of the selection bias is — when a patent is actually used it is challenged. It is a tough sell to tell applicants: your patent is presumed valid under 35 USC 282, until you use it, and then we think it has an 80% chance of being invalid. I get how incredibly hard Examination is. I don’t want to say it is not possible though because then shouldn’t we shift to a registration system + post grant review and just skip examination? I think some skin in the game for the patent office could help in some small way to lead to structural improvements in the system. Changes in the law to make Examination easier for the Examiners, putting the burden on the applicants to contribute more of the mental work needed to examine the application, raising fees, anything.

              1. 5.3.1.1.2.3.1

                “shouldn’t we shift to a registration system + post grant review and just skip examination?”

                Yes.

                Absent the political will to fix examination, we should get rid of examination, make a registration system, and expressly deny registered patents the C+C standard.

                Perhaps with that on the horizon, the patent bar might have some interest in participating in reforming examination.

              2. 5.3.1.1.2.3.2

                It is a tough sell to tell applicants: your patent is presumed valid under 35 USC 282, until you use it, and then we think it has an 80% chance of being invalid.

                The most likely claims to be infringed are the broadest ones, so the broadest ones are the most likely to be the subject of scrutiny. The broadest claims are also the most likely to violate the judicial exceptions. So now lets take some facts on the judicial exceptions:

                1. Ever since Alice came down, the office has never provided additional time to even think about, let alone write up, judicial exception rejections.

                2. The vast majority of the examining corp are not attorneys, so you couldn’t train them in individual case law anyway, you can only distill it for them.

                3. The office outright states it does not follow individual precedent in the interests of “promoting consistency.” In other words, the intention is not even to follow the case law on this.

                4. The judicial exception work of the federal circuit has been fluid at best, so even if someone knew what they were doing, there’s no guarantee that what would have been a good holding when it was made will be a good holding when it is reviewed.

                I don’t say this to complain or to hear sympathy about the difficulty of my job. I’m simply pointing out that given that all of these facts are public, doesn’t the burden to properly instruct the client about the strength of their validity presumption appropriately fall on their attorneys and not the office? Is it that difficult to say “Look the office made no 101 rejection, but there isn’t a lot of presumption of validity with respect to judicial exceptions because the examiners aren’t particularly trained for it, the law is fluid, and the standard applied isn’t the same standard the courts will follow.” Presumably, you (correctly) instruct them that the office applies a different construction standard than the courts apply when assessing the scope of a claim, it’s a similar discussion to that. Just like you could presumably tell them that the office is much better at prior art rejections, but that it’s still just one person doing the search and that the validity is subject to forms of attack (such as expert testimony) post-issuance that the office isn’t really capable of utilizing.

                I don’t want to say it is not possible though because then shouldn’t we shift to a registration system + post grant review and just skip examination?

                I think if your clients don’t like how many claims are invalidated after having been examined, your clients really won’t like making business decisions based on claims that haven’t been tested at all. I don’t think I have EVER allowed an entire claimset as it was initially presented except in the particular circumstance where its a continuation of subject matter I had already examined and allowed, and the scope was essentially the same except for perhaps a change in statutory class, and that’s only because those claims are piggybacking on the examination that came before.

                I think some skin in the game for the patent office could help in some small way to lead to structural improvements in the system. Changes in the law to make Examination easier for the Examiners, putting the burden on the applicants to contribute more of the mental work needed to examine the application, raising fees, anything.

                I have expressed some ideas here before, but those decisions are above my pay grade, and I don’t pretend to be privy to all the concerns the top of the office may have. But I assure you that the concerns of the “stakeholders” (I dislike that the office really only considers applicants the stakeholders) are indeed on their mind.

                I don’t find my job “hard” but I don’t pretend to speak for all examiners. I do think that you could obviously get better examination if you gave more time for examination, but I’m not the one who has to answer for overall office output. I’ve long been a proponent of some sort of special tasking where I could knock out a whole prosecution (at higher quality) in a week start-to-finish, but that would literally require the applicant and counsel to give me daily turnaround, and its always been my impression that that is simply not achievable on your end. And this says nothing of the fact that despite what most attorneys say, the actual fact is that they don’t really want a real examination – they want an allowance. For example, I can’t imagine that 90% of applicants would want me to do the high-quality step of creating an actual written record of my 112a analysis, because most claims are written with such broad functional language that any expert could take my analysis and prove the claims are overbroad. It’s much more, let’s go with “pleasant,” if I take the lower-quality tact of simply remaining silent and not making a rejection. But sure, you give me enough time I’ll opine in as much granularity as you want.

                1. the intention is not even to follow the case law on this.

                  It is very disingenuous NOT to add that even Dir. Iancu noted (when he was directing you to act) that there was a Gordian Knot of contradictions in that VERY case law.

                  It is FAR LESS ‘not even follow’ and FAR MORE ‘makes no sense to TRY to follow.’

                  But why let that FACT get in the way of your own screed, eh?

                2. But I assure you that the concerns of the “stakeholders” (I dislike that the office really only considers applicants the stakeholders)

                  Says far more about you than you realize.

                3. “1. Ever since Alice came down, the office has never provided additional time to even think about, let alone write up, judicial exception rejections.”

                  Nitpick: The BM AUs got a limited amount of “training” time to handle 101s on a per quarter per examiner basis.

                  Looking back I just noticed that the extra time policy ended around the time Iancu was confirmed.

                4. I don’t find my job “hard” but I don’t pretend to speak for all examiners.

                  LOL – Hey MaxDrei, there is your “inside counsel” position.

                  D
                  U
                  P
                  L
                  I
                  C
                  I
                  T
                  Y

                  !

                  (but, pssst, let’s be “polite” about it, eh?)

            4. 5.3.1.1.2.4

              Good analysis R.G. One noted error that strengthens your analysis: “The applicant paid a couple of thousand dollars for examination.” The PTO examination fee for the percent of total examiner time per application spent on a prior art search has been more like $500. Anyone interested in reality should go find how lousy a prior art search one would get outside of the PTO for such a small amount. Pre-IPR and pre-litigation prior art searches of $20,000. or more are common.
              Also, as usual here, IPR statistics are being misrepresented by only counting IPRs in which all claims are invalidated, and ignoring the large percentage of IPR petitions that are not even granted to begin with – no claims at all invalidated.

              1. 5.3.1.1.2.4.1

                Talk about statistical misrepresentations (from the head IPR cheerleader)…..

                You do know that the fee for search is NOT a direct correlation to the activity, right?

                If you think that, then please go ahead and explain the “activity” in relation to the amount of the fee for maintenance fees.

        2. 5.3.1.2

          Reasonable expectation costs may also be due — as may any items that may fall under a FranchisOR’s duty.

        3. 5.3.1.3

          Random,

          Try again with what an applicant pays for.

          Hint: it is NOT a set amount of time to perform a function. It is the proper performance under the law.

          You are (again) confusing and conflating your own internal metrics.

      2. 5.3.2

        “Right now there is only the public relations problem of ‘80%’ of challenged claims being invalidated in IPRs potentially leading to a decrease in filings. Even accounting for selection bias in which patents are challenged, that is a high number.”

        How do you account for selection bias? I don’t believe that this is something that you can handwave. Is there some reason to anticipate a different percent? 40%? 70%? 90%?

        1. 5.3.2.1

          Should you ‘account’ for selection bias?

          Is there any reason why post hoc selection bias should be a factor in what is paid for and part of the Quid Pro Quo between an innovator and the Patent Office?

          Why?

          1. 5.3.2.1.1

            Should you ‘account’ for selection bias? Is there any reason why post hoc selection bias should be a factor in what is paid for and part of the Quid Pro Quo between an innovator and the Patent Office?

            haha, if you let me select the 100 patents we’re talking about I assure you I can find an error rate of 0%.

            1. 5.3.2.1.1.1

              You threw your Strawman up while only reading a part of my post.

              Read the rest. Use some of that critical thinking, and leave the strawmen to the side.

            2. 5.3.2.1.1.2

              You responded to a perfect example of a lack of critical thinking. I identified a specific statement in a prior comment and addressed it. However, for some reason another commenter decided to view my response in isolation and pretend that I was making a broader statement. Apparently, attacking an argument one piece at a time is inconceivable.

              1. 5.3.2.1.1.2.1

                Lol – again you jump to the wrong side of a post — are you really trying to defend what Random did?

              2. 5.3.2.1.1.2.2

                Pardon Potential (re)Peat due to count filter…

                Lol – again you jump to the wrong side of a post — are you really trying to defend what Random did?

  6. 4

    How much dizzier can the CAFC get with their circular (il)logic . . . before they all fall down?

  7. 3

    Greg DeLassus first noted the Celgene case.

    At that point in time, I had pointed out how p00r that case was.

    Maybe (just maybe) those espousing the “property of Public Franchise (as that term is desired to be used) is still personal property” would be willing to ALSO acknowledge that if indeed you are invoking “Franchise,” that you necessarily also invoke duties of the FranchisOR to the FranchisEE.

  8. 2

    “A patent for an invention is as much property as a patent for land.”

    Not to be hypertechnical, but is there a distinction between a “patent for land” and “land”?

    1. 2.1

      Absolutely,

      But the legal effect may be even less pertinent, eh?

    2. 2.2

      I patent to land is almost a deed to land. Methinks that there is a huge difference between a deed to land and the land itself.

      To be precise, letters patent to land (or to an invention) constitute a legislative act of the executive. This act defines by claim previously not private property to be private immovable property in the realm of the state (or in the realm of knowledge).

      Letters patent may be transferred or sold from one person to another.

      1. 2.2.1

        Therefore, even if a patent to land is equivalent to a patent to an invention, it does not mean that land and inventions are equivalent.

        1. 2.2.1.1

          I am arguing that framers intended the use of the same legal framework both for letters patent to land and also for letters patent to invention.

          With originalist and originalist-inclined justices, the original intent of the framers should be important even if it is not persuasive.

          1. 2.2.1.1.1

            Thank you for explaining your position.

  9. 1

    Well one problem with a taking, such as land, is that the land still exists and has value after the taking, for someone. The dead patent has no future life.

    Yes property taken and then immediately destroyed would also fit that frame, but even if that destruction were purely for entertainment purposes, that would represent some future value.

    And how might one value the “taken” property in a way fair to the taxpayers?

    I can see a reasonable case for the maintenance fees: if the patent was issued in error, why should the patentee have paid to maintain a defective product? However, the patent did have some notional value before the IPR in that it could have been used to obtain settlements from would-be defendants and could have been seen as an asset of the patentee’s for various valuation purposes.

    No so for application fees: you takez your chances.

    1. 1.1

      Yep. Moreover, the petition presumes that cancellation of a patent is equivalent to taking possession of a patent. One could argue that cancelling a patent means taking the invention and dedicating it to the public. However, if the patent is cancelled because the invention was already in the public’s possession, nothing was taken.

      1. 1.1.1

        One could argue that…

        Well, one COULD always argue strawmen….

        But that is not very effective in an actual discussion of the merits, now is it, NS II?

        Further, the “it never existed” line does NOT solve the problem here on the government fees. As noted, a PROPER discussion of duties of a FranchisOR are necessarily imputed and the ‘it never existed’ does not wipe away the arguments at hand.

      2. 1.1.2

        “if the patent is cancelled because the invention was already in the public’s possession, nothing was taken.”

        I could maybe see this in the event of 102 cancellations (on a per-claim basis, of course); but under 103?

        Not so much.

        1. 1.1.2.1

          I could maybe see this in the event of 102 cancellations (on a per-claim basis, of course); but under 103?

          Not so much.

          This is an interesting statement. Why is it that writing a thought in a single document means the public is more in possession of it than when it is described over two documents, and one of skill would find the invention obvious over the two documents? Am I appreciably less in possession of the concept of toast when I don’t hold the toast, but do hold bread, a toaster, and the knowledge of what happens when one is used with the other?

          1. 1.1.2.1.1

            Because the mere possibility is not the same as actual possession.

            (just my guess as to what Pro Say might be considering)

          2. 1.1.2.1.2

            Because that is speculation.

            If a jury weighs facts and testimony on both sides and decides it was obvious, that is a legal determination and therefore the subject matter was indeed in the public domain.

            When the patent office does it, they are just changing their mind. The subject matter in many cases was the property of the inventor, they just just decided to un-grant it.

            1. 1.1.2.1.2.1

              Because that is speculation.

              I think you miscomprehend the difference between law and fact.

              If a jury weighs facts and testimony on both sides and decides it was obvious, that is a legal determination and therefore the subject matter was indeed in the public domain.

              When the patent office does it, they are just changing their mind.

              The office IS the jury in the first instance, because the examiners perform fact finding. They’re also the judge for that matter. When a patent issues it is because an examiner has found the closest prior art (a fact finding) and concluded that the distinctions are non-obvious (a legal holding). The jury isn’t “special” over the examiner, they’re performing the same function just under Article III instead of Article II.

              The subject matter in many cases was the property of the inventor, they just just decided to un-grant it.

              This assumes the question. If it was obvious to the public it wasn’t the property of the inventor, it was the property of the public and its the inventor that trying to perform a taking.

              You seem to be confusing sufficiency of proof with effect of proof. I agree that coming to a legal conclusion of obviousness is, in many cases, more complicated or difficult than coming to a conclusion of anticipation. But if that burden is met it doesn’t become more or less possessed by the art, just like a patent doesn’t become more or less invalid when the rejection is 103 rather than 102. The only question is if its a good rejection or not.

              Again, I suppose possessing an embodiment of toast is some (imperfect) evidence that I conceive of the invention of making toast. Not so much for possessing Coca-Cola though. My anticipation of that embodiment doesn’t mean I can make and use the invention of Coca-Cola. Similarly, the fact that I don’t literally possess toast doesn’t mean I can’t demonstrate mastery of the toast invention by pointing to disclosures related to a toaster and disclosures related to bread. Nor does the fact that intellectual possession is demonstrated in two separate documents rather than bound in one book mean anything once I conclude the art knew of both documents anyway. I agree that explaining how the bread and toaster interact is certainly more complicated than holding out my hand and saying “look, toast” but depending on what the relevant documents say, one can actually be MORE assured that I possess the invention when one reads all of the toaster and bread documents than if one simply reads the toast document.

              1. 1.1.2.1.2.1.1

                Your treatment of 103 as mere “bunches of separate 102’s” is not legally proper.

                Even as an examiner (much less a “country lawyah”) I would expect you to grasp this.

    2. 1.2

      NO – not necessarily, as there are EASY instances in which a taking (of a legislative variety) renders the land valueless.

      Such takings may not even bother with ‘taking’ as in the colloquial sense that possession has changed.

      Terrain here, (and the knowledge thereof) is — again — important.

      1. 1.2.1

        But here, you are not rendering anything valueless though an IPR. You are just pointing out the valuelessness of the land. If I buy land appears to be valuable but is, in fact, worthless, it is not a taking to recognized that the land was always worthless.

        I do support returning issue and post-issuance fees. Keeping those is a bit too shady.

        1. 1.2.1.1

          There is a taking though —- earlier and at the institution decision point.

          And as I have pointed out — this is entirely separate from the attempted “there was nothing there to begin with.”

          (Also, as noted herein, when a court acts, it does so in light of the presence and level of the presumption of validity)

        2. 1.2.1.2

          Let’s have some fun and use the Franchise language (instead of outright buy).

          Consider the statutory presence and level of presumption of validity to be a FranchisOR’s contractual warrant — incurred fully as the Quid Pro Quo of turning an inchoate item into a full legal item (in exchange for the publication of the material — let’s use an example of an application in a non-publication request state for the cleanest mirror to the Quid Pro Quo). Reliance costs based on that obligation are incurred in the act of franchising, eh?

          Another ‘spin’ — but for the warrant, the value of keeping the item as a Trade Secret has been lost.

    3. 1.3

      The invalidated patent has no future life like a voided deed has no future life. The invention will still be used and the land can still be used.

    4. 1.4

      A region within the territory of the physical realm of the sovereign continues to have existence even if letters patent are voided.

      A region within the territory of knowledge continues to have existence even if letters patent are voided.

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