What Patent reforms are on the minds of IP Owners?

The Intellectual Property Owners Association (IPO) is hoping to help push through some patent law reforms and recently published a letter to Congressional leaders on IP reform reiterates suggestions already given to the White House.

What are the proposals:

  1. Legislation on subject matter eligibility to re-expand the scope of eligibility and clarify the law.
  2. Protecting Trade Secrets abroad — the US should make a global push to raise the level of trade secret protection and enforcement.
  3. Legislation to expand venue to sue in Hatch-Waxman / BPCIA cases and also for declaratory judgment cases.
  4. Ongoing oversight from Congress to ensure that PTAB proceedings are fair to the patent holder.
  5. Ongoing efforts to ensure high quality patent examination resulting in clear patents of the proper scope.
  6. Reject movements for compulsory licensing of patent or trade secret rights, both in the US and globally.

Read more here: IPO-to-IP-Subcmte-Leaders_Key-IP-Issues

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46 thoughts on “What Patent reforms are on the minds of IP Owners?

  1. 7

    Not sure if this fits in the IPO’s bailiwick, but I would say, severely cut back on the term of copyright. 25 years is more than enough.

    (I realize the chance of this happening is less than the chance of Joe Biden being permitted to say something unscripted. But one can dream.)

    1. 7.1

      +1

      Plus, let’s at least be consistent with the presence of criminal penalties.

      Either neither P and C, or both.

    1. 5.1

      when your allowance rate drops by two-thirds (from an already shocking 3%) when you DO conduct an interview, there is something seriously wrong.

      Interesting site, Night Writer – would love to see them expand their coverage into the Appeals realm.

    2. 5.2

      Thanks Night.

      Irrational obstinance, plain and simple.

      Patent Office leadership: Why do you allow this to go on?

      Why?

  2. 4

    The five most important — indeed critically important — reforms are these:

    1. The restoration of patent eligibility to all areas of innovation.

    2. The restoration of patent eligibility to all areas of innovation.

    3. The restoration of patent eligibility to all areas of innovation.

    4. The restoration of patent eligibility to all areas of innovation.

    5. The restoration of patent eligibility to all areas of innovation.

  3. 3

    >>Protecting Trade Secrets abroad — the US should make a global push to raise the level of trade secret protection and enforcement.

    SV wants this bad so they can trap employees. Trade Secrets are horrendously bad for mobility and innovation.

  4. 2

    “We applaud recent initiatives undertaken by various offices including the USPTO to allow sufficient examination time”

    Friendly reminder: Iancu’s efforts to rework examination time resulted in less time allocated to software implemented inventions. Expect improved fish-hook examination, and worse computer-implemented-methods examination in the near future.

    1. 2.1

      Ben,

      Do you have readily available without too much searching by yourself any links to this information?

      Thanks!

      1. 2.1.1

        Re examination time, I was told the same thing as Ben by another examiner I know socially who is working in an affected high-tech art unit.

      2. 2.1.2

        Just to be brief the key issue is this: in Williamson the assertion that was used in the opinion was that a person of ordinary skill could sit down and write a computer program to perform the function. In the instant case, the appellee said that there were known computer programs available as shareware that performed the functions.

        So you see Moore pushed the line for 112(f) to include where there are known solutions. So would that mean if a claim “an electronic element to limit the flow of electrons in one direction” that this would go to 112(f)? I would say, but this function is well known and I can buy off-the-shelf diodes that perform this function. But under Moore’s reasoning this would go to 112(f) as there was no structure in the claim but only functional specification that refers a person of ordinary skill back to a set of solutions.

        This opinion should be overturned and not made precedential.

        1. 2.1.2.1

          Are you suggesting (i) that the claim should not be interpreted under 112, par. 6, or (ii) that once interpreted under 112, par. 6, there should be found sufficient “corresponding structure, material, or acts described in the specification”? 35 USC 112.

          On the first issue, Williamson appears to make clear that “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc section of opinion) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000)). You may disagree with this, and I suspect that you do, but I do not think that this case broke any ground here.

          Given this precedent, it seems like there is a strong argument that “a module configured to receive a packet from a server” “recites ‘function without reciting sufficient structure for performing that function’,” Id., and thus would be construed under § 112, para. 6.

          On the second issue, you may feel that 112’s indication that “such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof” should encompass, and be sufficiently supported by, structure, material, and acts known to an ordinary artisan, even if not actually described in the specification.

          In this regard, “the patent specification is written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before,” and it is thus “unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention.” Lizardtech, Inc. v. Earth Resource Mapping, 424 F.3d 1336, 1344-1345 (Fed. Cir. 2005) (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)); see also In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991); (“The specification need not disclose what is well known in the art.”); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, (Fed. Cir. 1986) (“a patent need not teach, and preferably omits, what is well known in the art.”)

          However, this generally concerns written description and enablement, not indefiniteness.

          Further, in Merrill v. Yeomans, 94 U.S. 568 (1876), the Court indicated that “in cases where the invention is a new combination of old devices, [the patent applicant] is bound to describe with particularity all these old devices and then the new mode of combining them for which he desires a patent[, and] [i]t thus occurs that in every application for a patent, the descriptive part is necessarily largely occupied with what is not new in order to [provide] an understanding of what is new.” Merrill, 94 U.S. at 570.

          The big question seems to be, if 112, par. 6 is triggered, how do you interpret Congress’ indication that “such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof,” and is a claim indefinite if the specification does not contain any explicit disclosure of “corresponding structure, material, or acts”?

          1. 2.1.2.1.1

            Below is the test in Williamson. The game is lost if a claim term gets interpreted under 112(f). This is almost never good.

            You know, J. Doerre, I used to do a lot of legal research where basically I was on a litigation team and sometimes I would write the motions/briefs/etc. and sometimes I would do all the legal research and try to pull out the right quotes. You find pretty quickly that you can pull out a quote for just about anything.

            Your edit of the full quote from Williamson changes the meaning and also eviscerates the argument I am making. I think my point is very clear and made trenchantly with the example of the diode.

            I also think that senor people get exactly what I am talking about and that the top intellectuals in the field will see Moore’s opinion as extending Williamson beyond reason. Moore’s opinion illustrates that this 112(f) test is being used to invalidate claims the judges don’t like. I think Moore’s opinion might rise to the level of a grant of cert. Probably this will go even further before the CAFC gets smacked down again. But this line of cases of holding claim terms as functional and interpreting them under 112(f) is judicial activism.

            J. Doerre edited Williamson quote>>On the first issue, Williamson appears to make clear that “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.’”

            Full Williamson quote>>In making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.

            1. 2.1.2.1.1.1

              And if you decide to respond, please try to address the issues I raised and don’t yap on.

              The diode example is a perfect illustration of how Moore has extended Williamson.

            2. 2.1.2.1.1.2

              Regarding your suggestion that my “edit of the full quote from Williamson changes the meaning and also eviscerates the argument I am making,” I think the confusion comes from a typo in the page number. Mea culpa, but that’s what I get for typing fast in a comment.

              The section you are looking at comes from an earlier page discussing the Fed. Cir.’s prior approaches. The quote I provided came from the en banc Court’s ultimate paragraph, which concluded that: “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.'” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc section of opinion) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed.Cir.2000)).

              I edited this to: “§ 112, para. 6 will apply if … the claim term … recites ‘function without reciting sufficient structure for performing that function.’” Id.

              I do not think this changes the meaning at all.

              As to whether it “eviscerates the argument [you] [are] making,” that’s for you to decide! I am not really urging any particular position, I am just outlining existing precedent.

              You suggest that “Moore pushed the line for 112(f) to include where there are known solutions”, but again, I am trying to understand whether you mean (i) at the step of invoking 112, par. 6 / 112(f), or (ii) at the step of determining whether there exists “corresponding structure, material, or acts described in the specification” 35 USC 112.

              With respect to a claim reciting “an electronic element to limit the flow of electrons in one direction”, I am not particularly invested in whether this claim invokes 112, par. 6 / 112(f).

              Would an ordinary artisan understand “an electronic element to limit the flow of electrons in one direction” to “recit[e] sufficient structure for performing that function’”? Williamson, 792 F.3d at 1349 (en banc section of opinion) (quoting Watts, 232 F.3d at 880).

              If so, then it would likely not invoke 112, par. 6 / 112(f) under the Fed. Cir.’s test as articulated in Williamson. If not, then it seems like there is an argument that it would.

              Would this result mean that the test in Williamson should be modified? That’s up to the Fed. Cir., S. Ct., and/or Congress to decide! If you have an opinion on this, great! You can help them figure it out. I do not. I am merely outlining existing precedent.

              1. 2.1.2.1.1.2.1

                >> I am merely outlining existing precedent.

                You are not doing that. You are taking an opinion about whether Moore extends Williamson or not. And, of course, as I said above the key point is whether 112(f) is invoked or not.

                The diode example illustrates how Moore extended Williamson as it is a case where the functional element does not in itself contain structure but a person of ordinary skill would say it recites structure. And this is the same situation here where Moore acknowledged that there already was a module that performed the function available in shareware as opposed to Williamson where the expert merely said that a person of ordinary skill could program the function.

                Stop saying you are just quoting precedent. You are not. You are interpreting it. Moore did extend Williamson and I’d bet a lot that the case books say as much.

                1. You indicate that “[t]he diode example illustrates how Moore extended Williamson as it is a case where … a person of ordinary skill would say it recites structure.”

                  The Rain opinion indicates that “[t]o determine whether § 112 ¶ 6 applies to a claim limitation, we must inquire ‘whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.'” Rain Computing, Inc. v. Samsung Electronics Co., Ltd., no. 20-1646, slip op. at 4 (Fed. Cir. Mar. 2, 2021) (quoting Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)).

                  Good news – the opinion actually is in agreement with your view that 112, par. 6 / 112(f) does not apply if ‘”the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.'” Id.

                2. J. Doerre

                  I think my point was crystal clear. Moore extended Williamson by holding that if a claim element doesn’t recite in of itself structure for performing the function that even if known solutions are readily available that the claim elements still invokes 112(f).

                  And my diode example is spot on. It illustrates that under Moore’s reasoning that a functional description of a diode would invoke 112(f). Moore’s reasoning has nothing to do with modern innovation practice and invalidates probably 10’s of thousands of the claims of patents granted before Moore’s opinion.

                  Moore is an absolute disgrace. This was judicial activism to invalidate a patent that Moore didn’t feel deserved a patent under 103. Now we are all stuck with this extension of Williamson. J. Rich probably would have figuratively have spit in the face of Moore.

      3. 2.1.3

        The external links I’m aware of do not go into sufficient detail to show how examination time is being reduced for some areas. E.g., link to uspto.gov

        The core problem (as I see it) with the new formula is that the time associated with technologies of varying complexity is averaged.

        Say that can opener inventions get 20 hours of examination time, and that object recognition software inventions get 35 hours of examination time (these are not the actual numbers, but they are reasonably close). Under the new system, an automated can opener system that uses object recognition would get an average of the different examination times, 27.5 hours. So when that case ends up in front of an object recognition examiner, they are getting 7 hours less examination time. In general, software examinations have been getting the highest amount of time possible. So the averaging of software with other technologies will necessarily reduce the time that software applications get.

        If the can-opener+object-recognition case was actually easier than a pure object-recognition case, that would be fine. But in general, adding varying types of technologies makes a case more complicated, not less. The PTO’s new system fundamentally denies this truth, and as such I sincerely doubt it was designed by anyone familiar with examination.

        Further, cases without mixed technologies were also affected because there are further levels of averaging built into the system. If the cases in a CPC subgroup were frequently associated with lower-time technology cases, the whole subgroup was given a lower baseline examination time. So even if your application is “pure” to its subgroup, it can be getting less time than under the old system.

        That said, actual reductions in time have not yet been implemented. The PTO has a 2 year grace period during which any case receiving less time than under the old system actually gets the old system’s time. That ends in about 1.5 years, so that’s when you can expect to see a reduction in software examination quality.

            1. 2.1.3.1.1.1

              Sorry 6, but in both cases, one should expect push back from such a sheeple attempt at deflection.

              What do you mean, “We can’t say no?”

              Why?

              In the immediate case, is it NOT your union?
              Are You (the royal collective ‘you’) agreeing that the conditions are proper by having the Union agree to the terms?

              If the terms are not acceptable, why in the world would the union agree to them?

              You – the Royal You – lose all rights to whine about things that you – the Royal You – have agreed to.

              Let me know (all of you whining examiners) if YOU have pushed as hard as you can internally before you take to these boards and whine about what YOU — as a unionized group — have agreed to.

              1. 2.1.3.1.1.1.1

                Anon asks if our union went along with x y or z.

                I inform him that they go along with everything because they literally cannot say no (this being by law and by regulations as previously explained to anon).

                Anon, like clockwork, gives a lot of lip and canned responses to things not even discussed in order to dance around this fundamental fact rhetorically. Bruh you’re a ta rd. No amount of rhetorical dancing or thinking in your mind brain changes the answer. The answer is still the answer. And will still be the answer later. And yes, we’ve done all we can to push internally.

                1. they literally cannot say no (this being by law and by regulations as previously explained to anon).

                  Sorry 6, but that is entirely B$.

                  You have never provided this so called inability of your union to say no.

                  It kind of defeats — entirely — the concept of HAVING a union if what you assert is actually true.

                  If you really want to hang your hat on this inane assertion, I will demand that you provide the backing for this – and not merely claim that you have provided it previously.

                  If you have provided it previously, I certainly would have remembered it.

                  As to the rest of your characterizations, I am not the one doing any rhetorical dancing.

                  It comes down to the facts as I have presented them. You don’t get to play your own dancing and then accuse me of dancing.

                2. LOL – wait, was your “I told you previously” that thing about the union bosses being merely another form of ‘management?’

                  Was that your great ‘explanation?’

                3. “Anon asks…”

                  I inform him that…

                  “Anon, like clockwork…”

                  Do you not see the rectifiable mistake here?

        1. 2.1.3.2

          Many thanks for this info. I think that more transparency in this stuff would be a *great* start.

          The Patent Office has an impossible job, and patent examiners have an incredibly difficult job. It is incredibly challenging to line up incentives to discourage bad faith behavior, both by practitioners and examiners. In the Office, because of the count system, any bad faith action by anyone inside or outside the system generally has the effect of hurting examiners trying to perform quality examination in good faith.

          1. 2.1.3.2.1

            I think it critical *for transparency* to make sure that everyone is aware that ANY internal measures that the Office develops for its own internal management DO NOT (and cannot, especially to the detriment of) affect what applicants have paid the Office for in regards to the Quid Pro Quo of turning an inchoate right into a full set of patent rights.

            ANY view that examiners will do any less of a full examination under the law — as is universally required — just because their internal metric of time may or may not change is simply not acceptable.

            There is zero reasonableness in allowing the problems of examiners (vis a vis their Union-represented and negotiated internal performance metrics) to drive any type of “acceptance” that quality examination will suffer and thus as a result, applicant’s legal rights will be impacted.

            Anyone wanting anything else is either a liar or a cheat or both.

            1. 2.1.3.2.1.1

              “and negotiated internal performance metrics”

              It isn’t really “negotiated” if one side can’t say no. Which they currently cannot.

              They were, to whatever extent they were ever “negotiated” in the 60’s, “negotiated” prior to the inability to say no which came about in the 80’s. To say that they are “negotiated” today is not really accurate.

              1. 2.1.3.2.1.1.1

                It isn’t really “negotiated” if one side can’t say no. Which they currently cannot.“:

                Total BS.

                Why – exactly – do you think that the Union can’t say, “No.”….?

                You do realize that your “we didn’t say no before we had the power to say no, and thus can’t say no even after we have the power to say no” is a logical fallacy, right?

                1. “Why – exactly – do you think that the Union can’t say, “No.”….?”

                  Um, first because the popa pres will literally tell you this to your face or your emailed question or will also put it on email/meeting announcement etc blast for everyone to know. They especially blasted this when a popa pres candidate challenger tried to oust the then president in recent elections by running on a platform of “saying no”. The popa pres correctly informed the membership that they cannot say no by regulation/law. Which I already knew and explained to you a thousand times but you’re still too dmb to understand. You like think I’m making it up n sheet lol. You can read the union federal laws yourself bro, its no exaggeration and I’m not making it up and the popa pres is right. If you want to know the exact regulatory/legal structure preventing saying no ask the popa pres yourself, she will no doubt tell you exactly what it is, holding your hand, she’s done it enough by now. If she weren’t right and wasn’t saying no to this nonsense then she’d get voted out in a heartbeat.

                  “You do realize that your “we didn’t say no before we had the power to say no, and thus can’t say no even after we have the power to say no””

                  I literally never said that re re.

                2. The popa pres correctly informed the membership that they cannot say no by regulation/law.

                  This is the first that you are asserting this.

                  And I would LOVE to see this
                  C
                  R
                  A
                  P
                  that you say was being put out by the ‘popa pres’ in order to maintain his hold on that ‘nother layer of management’ power.

                  What is this “regulation/law?”

                  f you want to know the exact regulatory/legal structure preventing saying no ask the popa pres yourself,

                  No. YOU are the one making the assertion, so I am asking you.

                  Chances are outstanding that you are simply misconstruing a fact that YOUR union agreed to something, and you are stuck with that agreement (until the next negotiation time frame) — but such would still be YOUR union agreeing to something.

                  The attempt to spin this as some type of union law that you cannot say NO — ever — is total balderdash.

                  I literally never said that re re.

                  To quote you at post 2.1.3.2.1.1:

                  They were, to whatever extent they were ever “negotiated” in the 60’s, “negotiated” prior to the inability to say no which came about in the 80’s. To say that they are “negotiated” today is not really accurate.

                  Let’s not pretend the ipsis verbis controls what you stated.

                  Clearly, you are attempting to say that there was a time “prior to the inability to say no” which CHANGED “came about in the 80’s.”

                  The fact that you identify a time of change, but then want to pretend that there was no change (and that you do not have ANY ability to say, “No” is a contradiction of your own making.

                  I fully “get” that your union may have let you down previously – but that clearly is a part of YOUR problem. And just as clearly, YOU indicate a power to say no, so AT YOUR NEXT negotiation, why don’t you push your union to do so?

                  Oh, wait, YOU just had that chance and YOU (this time, the Royal You of you personally and all the other examiner brothers and sisters) CHOSE NOT TO SAY, “no.”

                  That’s on you (both the Royal you and the personal you).

                3. Bruh you can be ignorant all you like. First of all, the popa pres is a woman. Not a man.

                  I tried to post some of the laws and regs above but they’re in the filter we’ll see if they get out. It’s the 29 USC NLRB and related sections and the arbitration section of 5 USC mainly that are involved as statutes but it’s a whole scheme of regulations from the NLRB on arbitrations and other sections that govern lawsuits that comes into play and ultimately nullifies any “no”. It’s not on me to cite you this sht, jesus bro, you think I’m a labor attorney or the popa pres bound by this stuff. I’m just an ordinary worker in this scheme I don’t keep it all on hand, tho I read through it all years ago and shared it, all I know is the union can’t say no. Even if I had it you need to be specific as to what you’re looking for a citation for because it’s a huge tangled mess that would take a full day likely for you to fully comprehend and read through. But you can ask the popa pres herself and she’ll tell you the specifics. You’re acting like I’m telling you some fantastical story. Whereas the only fantastical story or world is the one you’re living.

                  “Chances are outstanding that you are simply misconstruing a fact that YOUR union agreed to something”

                  All of my lelz, this comment is the fundamental problem behind all this. You don’t know sht about the situation, and you think your world view controls what is going on irl. Literally everyone you talk to tells you the opposite. You decline to go to the horse’s mouth (the popa pres or the undersec himself both of which would answer you as an attorney interested in the topic). These chances we’re discussing are tiny re re, not large, you need to readjust your sense of reality when literally everyone you discuss the issue with that knows what they’re talking about tells you contrary to your worldview.

                  “Clearly, you are attempting to say that there was a time “prior to the inability to say no” which CHANGED “came about in the 80’s.””

                  Yes, way back in the day we had the ability to “say no” by striking. That was made illegal eventually. Then Reagan famously started enforcing that law and stopped all federal strikes since. We also, even at that point in the 80’s had the ability to “negotiate” where we can formally say “no” in the first round and then finally say no in the second round AND AND AND AND had the ability to have that second round “no” in the negotiation be enforced as being required to be fair to the workers through various arbitrations and lawsuits. Now the last part of that (the ability to have lawsuits and arbitrations be decided in worker’s favor to make it a fair negotiation) is now effectively removed by regs and decisions etc. that make mgmt win near 100% of the time, making them a waste of time. Now if we say “no” as a final answer in the second round there’s no point to having said “no” in the second round other than wasting $$$ in futile arbitration that mgmt will win or futile legal action that mgmt will win. So they cannot give a final no and have it backed up by anything, no strikes, no courts, no arbitrators (all of the previous mechanisms to say no finally).

                  ” And just as clearly, YOU indicate a power to say no, so AT YOUR NEXT negotiation, why don’t you push your union to do so?”

                  Um the old school no is a strike. That is no longer available. You get fired and/or go to jail. As to a formal “no” in second round of negotiations, that has no teeth as there is no means to have it stick, mgmt just goes and and does what it wants, and the courts and arbitrations have to back mgmt near 100% of the time (unless it’s like child labor tier stuff mgmt wants to do). Furthermore, I’m not sure when you think there is some “negotiation” that I get to go to is. I get 0 chance to negotiate as I’m not popa pres and she does everyone’s “negotiating” with a small team of helpers. Even if I was popa pres I wouldn’t have the power to say no finally, as the power to say “no” finally is just the power to waste $$$ in futile arbitration or lawsuits. And just pushing her to say no at a meeting will result in nothing but her saying “we can’t say no” (because she knows the law and regs and she is correct) and if you ask her she’ll tell you the longwinded version of why.

                4. Take time out of your day to educate anon a tiny bit and he declares you to be whining. You’re an ignorant ret ard wedded to your pre-existing world view or beliefs. The very definition of that you go on and on about not liking.

                5. And slavery doesn’t have squat to do with federal organized labor unions not having any power to say no to mgmt.

                6. Your manner and content of “education” misses the mark – by miles.

                  The analogy of your whining about powerless (and victimhood) IS on point. If you can’t say “no,” then you are a slave.

                  This is NOT to say that saying “no,” may have its attendant costs.

                  I am not the one between you and I needing education, you whiner.

                7. “Take time out of your day to educate anon a tiny bit and he declares you to be whining.”

                  Interact with a bridge-dweller once, shame on him. Interact with a bridge-dweller twice, shame on you.

  5. 1

    “Legislation to expand venue to sue in Hatch-Waxman / BPCIA cases and also for declaratory judgment cases” would seem the most attractive for Congress, because it can be presented as making it easier for generics to lower drug prices, a subject of far more interest to far more members of congress than any issue of patent law per se.

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