Patently-O Bits and Bytes by Juvan Bonni

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13 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

    1. 6.1

      Thanks, NW, that was an interesting read. I quibble, however, with its opening line “[w]ith 10% of Biden’s term gone, how are we still waiting for an official nominee for the Director of the United States Patent and Trademark Office (USPTO)?”. It was not until Aug 2017 that Pres. Trump nominated Iancu. It was not until Sept 2004 that Pres. Bush nominated Dudas. The office of PTO Director might seem critical to us, but to most administrations this is not so high a priority. It just is not all that unusual for a PTO director not to have been nominated yet by this point in a new administration.

      1. 6.1.1

        Maybe Greg. But then again maybe the article is right. Time will tell.

        Also I think the bigger issued raised is the former director’s conflict of interests in regards to the IPRs.


          Conflict of interest is not limited to the Director, and the fact of the matter that a lack of meaningful Ethics Rules (with bite) directly leads to political nature of the Executive Branch having a default state of suspicion.

    2. 6.2

      Night Writer,

      A closer read of your article presents a little TOO much spin in the article:

      For instance, Iancu’s former law firm Irell and Manella was defending technology company VLSI in a patent infringement case against multinational technology firm, Intel. The PTAB rejected all three of Intel’s inter partes review proceedings using discretionary denial and VLSI won $2.175 billion in damages. Iancu then returned to Irell and Manella after serving as USPTO Director — he may now be receiving a cut of the legal fees paid by VLSI for Irell & Manella’s services, effectively profiting from decisions he made as a government official. The dangerous precedent set by Iancu further heightens the importance of a responsible pick for USPTO Director.

      The problem here with portraying this as the “control” of Iancu was that these decisions were made at a time period PRIOR to the court case that the article is talking about — and that article’s DIRECT point that too much power has NOW been given to the Director due to the Supreme Court decision.

      In other words, the “scandal” that is implied is not the “scandal” that the Court has unleashed in its decision that the article is lamenting.

      The “implied” manipulation by Iancu simply was prior to the power to do so that the article is discussing.


    3. 6.3

      THIS line might be the key:

      so it might as well nominate someone who is actually ethical, and will support the TRIPS waiver, which is the administration’s own stated policy.

      Note here (as in past discussions) that patent waiver is note even really the ‘key jewels’ that are being sought.

  1. 5

    Some critiques of Prof Reilly’s analysis.

    Fresenius is a flawed 2-1 decision. It bases its conclusion on a mistaken application of Moffit which held that when an inventor who VOLUNTARILY surrenders a patent in exchange for a reissued one, the first patent is void ab initio. The fundamental principle of is that an inventor may not enforce a patent with varying scope – he must chose the original or the reissue, not both. This rationale does not apply when the agency unilaterally revokes the patent.

    Blonger-Tongue has a long list of conditions that are required to apply collateral estoppel, most of which are not met in an IPR cancellation: 1) whether the patentee was plaintiff in the prior suit and chose to litigate at that time and place; 2) whether the plaintiff had a fair opportunity procedurally, substantively and evidentially to pursue his claim the first time; 3) whether in an obviousness determination the PTAB employed the proper standards such as Graham v. Deere; 4) whether…the prior case was one of those relatively rare instances where the courts wholly failed to grasp the technical subject matter and issues in suit; 5) whether without fault of his own the patentee was deprived of crucial evidence or witnesses in the first litigation; 6) as so often is the case, no one set of facts, no one collection of words or phrases, will provide an automatic formula for proper rulings on estoppel pleas. In the end, decision will necessarily rest on the trial courts sense of justice and equity; 7) res judicata and collateral estoppel are affirmative defenses that must be pleaded.

    – PTAB is answering different questions with different standards and burdens of proof. Cuozzo allowed for different determinations in different venues. There is no basis for one venue trumping another when they are deciding different issues, which they are. In fact, they don’t even refer to them the same issue, one venue decides whether a claim is invalid while the other decides whether it is unpatentable. Even if they called them the same thing, they aren’t. One venue permits hindsight, the other does not. One permits expert testimony, allows liberal discovery for the defendant, prohibits conclusory testimony, follows the rules of civil procedure, has an impartial judge, and a jury to decide issues of material fact…the other does not. The PTAB is just waving their hands and saying they (subjectively) believe the claims would have been obvious and they wouldn’t have issued it. Entirely different question than in a real court.

    – Cancellation of claims means cancellation – the PTO changed their mind. It does not resolve the question of validity under §282. It early terminates the patent (consistent with the Constitutional requirement for “limited times”). It might serve as evidence of prior invalidity, but it is not determinative.

  2. 4

    Congrats to Applied Information on the issuance of an unenforceable patent. Not that I think it’s unenforceable because I read it or it’s claims but I read the title and that’s enough for any judge in the US to throw it away.

  3. 3

    Re: “Prof. Greg Reilly: The Justiciability of Cancelled Patents (Source: SSRN)”
    Both the title and the Abstract introduction are somewhat misleading. Patent claims cancelled by a final adverse IPR decision, which includes a normal Fed. Cir. appeal, are cancelled in rem by statute and not further justiciable at all. Almost no patent claims held “valid” in any FINAL Article III proceeding have ever, later than than finality, been held invalid in IPRs by the same defendants,* and in any case are actually “not proven invalid by that defendant” decisions challengeable by other defendants in either another Article III or IPR proceeding.
    *even before the current PTAB practice of discretionary denials of even the institutions of IPRs well before even proposed trial dates.

    1. 1.1

      Prof Karshstedt’s point is that evidence of obviousness pivots around the filing date at the PTO of the claim under inspection. I have been making the point now for some years, that this is a sine qua non of any First to File jurisdiction.

      So, anon, when you think that we have already heard quite enough from the good professor on his “hobby horse”, I have news for you. You ain’t seen nothing yet. It’s only just beginning.

      1. 1.1.1

        Actually, MaxDrei, you misunderstand the nature of the criticism AND the nature of what Prof. Karshtedt is trying to promulgate with his article.

        You must have a thing for letting all types of horses waste away.

        It is absolutely dullard of you to want to pivot this on the “date of the filing.”

        That is the current Rule of Law, and is simply not all that interesting – and even merely tangent to what Karshtedt wants to do. More importantly, such has nothing to do with the criticisms already put on the table – and make this effort a “hobby horse.”

        I suggest that you revisit the prior TWO posts in which his article was discussed, and look at the faults pointed out.

        Nothing — absolutely nothing — has been updated with the link in this Bits and Bytes, and ALL prior criticisms remain on point.

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