Patent Law at the Supreme Court December 2021

by Dennis Crouch

The Supreme Court has not yet granted a writ of certiorari in any patent cases this term, and has denied certiorari in several dozen cases.  A handful of important petitions are pending whose outcome could be transformative to the law.

Eligibility: American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891. The Federal Circuit concluded that American Axle’s  vehicle-manufacturing claims are ineligible under the two-part tests of Alice and Mayo.  U.S. Patent No. 7,774,911 (Claim 22). The claims here are directed to a method of manufacturing an automobile drive-shaft with reduced vibration.  The basic idea is to insert a liner into a hollow shaft.  The liner though is special — it is made of a “reactive absorber” and its mass and stiffness have been “tuned” all for the purpose of attenuating both “shell mode vibrations” and “bending mode vibrations” of the shaft.  The petition asks two questions:

  1. What does it mean to be “directed to” an ineligible concept? (Alice Step 1).
  2. Is eligibility a pure questions of law (based upon the claims); or is it a “question of fact for the jury based upon the state of the art at the time of the patent?”

The Federal Circuit released a first opinion in the case followed by a toned-down second opinion.  Both opinions were opposed by Judge Moore who explained that even the second try was an “unprecedented expansion of § 101.”  The en banc petition failed, but in a 6-6 tie.  The petition includes several features making certiorari more likely: Issue of historic interest to the Supreme Court; Divided lower court; Multiple amici in support of hearing the case; Multiple similar petitions in other cases; and Prior statement from US Gov’t (Trump Admin) that the Post-Alice eligibility setup needs recalibration.  The Court has also shown signs of interest, including an order for responsive briefing from Neapco, and a request for the views of the Solicitor General (CVSG).  We are now awaiting those views, and I expect that the SG’s brief will give us the best clue as to the likely outcome.  The Supreme Court requested briefing almost 8 months ago – on May 3, 2021. The five most recent CVSG briefs took an average of 5.5 months from the request to the brief. So, we’re at the extreme end of the scale for this one.

There are two other eligibility cases pending: Yanbin Yu, et al. v. Apple Inc., No. 21-811; and WhitServe LLC v. Dropbox, Inc., No. 21-812.  Neither of these are likely to garner interest.

PTAB Practice: The Supreme Court has shown extensive interest in various aspects of AIA Trials.  The top pending case in this area is Mylan v. Janssen.  Mylan filed an IPR petition that was denied based upon the six-factor NHK-Fintiv Rule established under Dir. Iancu. NHK-Fintiv permits the PTAB to deny IPR institution in situations where a parallel district court litigation is already well under way.  Mylan appealed the IPR institution denial, but the Federal Circuit dismissed for lack of appellate jurisdiction, citing 35 U.S.C. § 314(d) (“The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”) In its petition, Mylan asks two questions:

  1. Does 35 U.S.C. § 314(d) categorically preclude appeal of all decisions not to institute inter partes review?
  2. Is the NHK-Fintiv Rule substantively and procedurally unlawful?

Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., No. 21-202.  The petition has received amicus support as has a parallel petition in Apple Inc. v. Optis Cellular Technology, LLC, No. 21-118.  Apple asks whether the law permits either appeal or mandamus in situations where the PTO exceeds its authority in a way that “is arbitrary or capricious, or was adopted without required notice-and-comment rulemaking.”

More Appellate Standing: A third PTAB related appellate standing case is Apple Inc. v. Qualcomm Incorporated, No. 21-746, this one focusing on standing to appeal a final written decision.  The patent act is clear that any “person” other than the patentee can file an IPR petition and, if granted, participate in the trial as a party.  The statute goes on to indicate that “a party dissatisfied with the final written decision” has a right to appeal that decision to the Federal Circuit. 35 U.S.C. 319.   Despite the statutory right to appeal, the Federal Circuit has still refused to hear appeals in situations where the appellant cannot show concrete injury caused by the PTAB decision and redressability of that injury.  The appellate court’s grounding stems from the Constitutional requirement from Article III of an actual case or controversy.

Here, Apple licensed a large number of Qualcomm patents as part of a portfolio license, but has only challenged a couple of them via IPR.  The PTAB sided with Qualcomm and Apple appealed.  On appeal, the Federal Circuit found that Apple had not provided any immediate concrete injury associated with the patent’s existence and so dismissed the appeal. In particular, (1) the court was not shown how the license would change in any way if those patents fell-out; and (2) although the license was set to expire prior to the patents, the court found that potential infringement liability a few years now was too speculative.  Apple has now petitioned for writ of certiorari with the following question: Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.  As you can see, this question attempts to tie the case directly to MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) where the Supreme Court found standing for a licensee to challenge a patent.

Prior Art for IPRs: An interesting statutory interpretation petition was recently filed in Baxter Corporation Englewood v. Beckton, Dickinson and Company, No. 21-819.  Congress was careful to limit the scope of IPR proceedings.  The IPR petition may request claims “only on the basis of prior art consisting of patents or printed publications.”  35 U.S.C. 314(b).  In the case, expert testimony was used to fill a gap in the prior art, and the question is whether the use of expert testimony in this manner violates the statutory provision.

Full Scope Enablement: LDL (“bad cholesterol”) is removed by LDL receptors in the liver.  That’s a good thing. But, the body also makes PCSK9, a protein that can bind to the LDL receptors and destroy them.  Amgen’s solution is an antibody that competitively binds to PCSK9 in a way that prevents them from binding and harming the LDL receptors.  The result then is lowering of LDL in the body.

A monoclonal antibody is a type of protein made up of amino acids.  Amgen’s claims at issue here do not recite the particular amino acid sequence or how the protein is structured and chemically linked.  Rather, the claims are directed to a whole genus of monoclonal antibodies defined by the ability to bind with PCSK9 in a way that blocks PCSK9 from also binding with the LDL receptor.

The jury sided with the patentee on the issue of enablement, but the district court rejected the verdict on renewed JMOL. On appeal, the Federal Circuit sided with the accused infringer — holding that enablement is a question of law, and that the claims were so broad that full-scope-enablement is virtually impossible. In its petition, Amgen argues that (1) enablement should be seen as a question of fact; and (2) that the law does not require “full scope enablement” to the extent demanded by the Federal Circuit here.

A Novel form of Preclusion, the Kessler Doctrine: Finally, we get to res judicata. Lawyers all learned about claim preclusion and issue preclusion. Those two principles of law are designed to ensure finality of judgment and avoid relitigation.  History shows substantial confusion about both terminology and scope, but things have been substantially clear and steady since the adoption of the Restatement (Second) of Judgments in 1982.  One aspect of the historic confusion stems from the Supreme Court’s 1907 decision of Kessler v. EldredKessler has been on a back-burner for decades, but in 2014 the Federal Circuit revived the case and found that it deserved to co-equal — a preclusion doctrine separate and distinct from issue or claim preclusion.  That 2014 Brain Life decision was followed by a further expansion of Kessler in Speedtrack (Fed. Cir. 2015)  and again in PersonalWeb Techs. (2020). 

PersonalWeb’s certiorari petition the Supreme Court asks two questions:

  1. Whether the Federal Circuit correctly interpreted Kessler to create a freestanding preclusion doctrine that [applies] even when claim and issue preclusion do not.
  2. Whether the Federal Circuit properly extended its Kessler doctrine to cases where the prior judgment was a voluntary dismissal.

The Supreme Court has shown interest in the case, and recently called for the Solicitor General to submit a brief on behalf of the U.S. Gov’t.   I have an article on the case coming out in the Akron Law Review that I’ll post in a week or so (after fixing a few citations).

Two More: Although no petitions have been filed yet, the parties in two other cases have  publicly indicated their intent to file petitions by the end of 2021:

  • Intel Corporation v. VLSI Technology LLC (Follow-on case to Mylan v. Janssen and Apple v. Optis); and
  • Ikorongo Texas LLC v. Samsung Electronics Co., Ltd. (proper venue in a situation where the plaintiff holds territorially limited patent right).

See you in January.

75 thoughts on “Patent Law at the Supreme Court December 2021

  1. 6

    For a New Years prediction [with the usual failure rate], I would bet that if the Supremes will take any patent cases this term it will grant the cert petition by Apple challenging the Federal Circuit’s dismissed appeal for lack of Article III standing of its (IPR) proceedings challenging validity of Qualcomm patents. On December 20 supporting amicus briefs were reportedly filed by Unified Patents, Thales, Senator Patrick Leahy (D-VT) & Representative Darrell Issa (R-CA). Another amicus also supporting Apple’s petition was reportedly previously filed by Engine Advocacy in conjunction with the Public Interest Patent Law Institute and ACT The App Association.

  2. 5

    “people keep using the supposed invalidity of Diehr’s app under 103 EXCEPT for the Arrhenius equation use, as a means to extract from Diehr pro-software patent talking points.”

    You can disagree with this nonsense without defending a bad allowance

    1. 5.1

      “You can disagree with this nonsense without defending a bad allowance”

      That’s true I can, and do, but it wasn’t a “bad allowance” in so far as I’ve seen to this very day. In the office we prosecute on the record. If the examiner missed a ref he missed a ref, but I doubt he did. Either way, the record before him shows it to be a procedurally “good allowance” even if we can possibly 2nd guess him saying he maybe missed a ref. Though, again, I personally just don’t think the potential 2ndary refs fit in with the bizarro designs of the primary refs, which is, again, what makes it a “good allowance” even so.

      1. 5.1.1

        Suit yourself.

        My final pitch: The examiner cited as a distinction from the prior art the fact that the claimed invention’s thermocouples did not stick into the mold cavity, where his reference’s thermocouples did stick into the mold. This would be an incredibly trivial difference to any technician working with these systems in 1970, much less the engineers designing them. The fact that he felt this was significant demonstrates the examiner was extremely removed from this technology, and should at a minimum make all his determinations suspect.

  3. 4

    Note to the toddlers below: one desperate lawyer pretending that the sky isn’t blue doesn’t create a “genuine dispute”.

    1. 4.1

      … the irony of Mr. P00py Diapers addressing others as “toddlers”….

      1. 4.1.1

        “The Poopy Diaper”

  4. 3

    Expect another eligibility petition — in 2022 — from the CAFC’s shameful rubber-stamping of the shocking destruction of five Kodak (yes, Kodak!) camera (yes, camera!) patents:

    link to cafc.uscourts.gov

    Congress: Where the h.e.l.l are you?!

    How much more American innovation is going to be destructed before you restore patent protection to ALL areas of innovation?

    How? Much? More?

    1. 3.1

      Kwouch’s KKKids are really weird …

      1. 3.1.1

        Malcolm,

        Your one-bucketing is noted.

    2. 3.2

      CAFC’s shameful rubber-stamping of the shocking destruction of five Kodak (yes, Kodak!) camera (yes, camera!) patents
      Prost was on the panel. Clevenger (“semi” retired for 15 years now) was also on the panel. Two judges in their mid-80s and “I haven’t seen a patent that isn’t abstract” Prost on the panel. Is anyone surprised that this was Rule 36’d?

      I don’t know about the patents that were killed, but the ones that were asserted were: 6903762, 7177484, 7583294, 7684090, 8665345, 8964064, 9549095.

      I found the oral arguments and I listened to the first question by the judge (one of the men), and it was PAINFULLY OBVIOUS that they were going to railroad this patent(s). It was a 12b6 motion and counsel addressed how the amended complaint made factual allegations that would prevent a motion to dismiss under 101 (e.g., a Berkheimer argument), and the first question was these claims describe “we can read the claims … and they talk about transferring images, storing them, and deleting them … and looks all abstract.” When counsel asked which patent was being referred to, the judge said “all of them.” Frankly, it is an embarrassment that these judges are still on the bench.

      Regardless, with no opinion, the chances of this getting granted cert are somewhere between zero and next to nothing.

      1. 3.2.1

        WT: *sees people can read*

        Also WT: ITS A TRAVESTY AND THEY’RE RAILROADING PATENTS, SHAMEFUL THEY STILL WORK THERE!

        N bro, if they “rubber stamp” it then that means they adopt the opinion below as their own pretty much. There is “an opinion”.

        1. 3.2.1.1

          N bro, if they “rubber stamp” it then that means they adopt the opinion below as their own pretty much. There is “an opinion”.
          No.

          You do realize that that Rule 36(a) is titled “Judgement of Affirmance Without Opinion”? Do you understand what “Without Opinion” means? It means that no opinion was issued.

          “Rule 36 allows us to ‘enter a judgment of affirmance without opinion’ under certain circumstances. Since there is no opinion, a Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed. Cir. 2012).

        2. 3.2.1.2

          6,

          I would not recommend attempting to tr011 Wt — unless you want to visit the woodshed.

    3. 3.3

      Do you have a cite for the ND CA decision below?
      The plaintiff patent owner here is listed as “MONUMENT PEAK VENTURES, LLC” [not Kodak] as suing Toshiba.
      As Kodak died-off, it sold different batches of remaining older and less important Kodak patents cheaply to some PAEs. Was this one such batch?

  5. 2

    On the 101 cert petition:

    Q1: a claim is “directed to” an ineligible concept when it recites e.g., a law of nature or an abstract idea. The Court asks “what ELSE is in this claim”? If there is nothing else, then the claim fails step one. Move to step two.

    Q2: eligibility is a question of law but can be premised on facts (e.g., whether the claims were conventional). This question can be properly decided on Rule 12 or 56 if the facts are not genuinely disputed. Otherwise, it goes to trial. This said, the allegedly “unconventional” aspect has to be something OTHER THAN the ineligible concept (e.g., abstract idea) itself. Thus, many of the most egregiously worded claims can still be snuffed out on a motion to dismiss.

    If the Court takes the case and rules as above, nothing would really change, but it would provide some certainty.

    1. 2.1

      Q1: a claim is “directed to” an ineligible concept when it recites e.g., a law of nature or an abstract idea.
      No. As stated in Alice:
      At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2). Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.
      Even so, someone should explain what “recites” means. In American Axle, Hooke’s Law was supposedly implicated. However, Hooke’s Law wasn’t actually recited in the claims.

      This question can be properly decided on Rule 12 or 56 if the facts are not genuinely disputed. Otherwise, it goes to trial.
      There is almost always a genuine dispute. patent holder argues that the claims involve a technical improvement and alleged infringer argues otherwise.

      whether the claims were conventional
      Whether the claims are conventional is not necessarily dispositive. Nearly all combinations are made of known components.

      the allegedly “unconventional” aspect has to be something OTHER THAN the ineligible concept (e.g., abstract idea) itself
      That is an interesting concept to explore. Those looking to deem an invention as being abstract argue that nearly all of the claim language encompasses the ineligible concept whereas patent holder argues otherwise. For example, what portions of the claim language in American Axle involve the ineligible concept?

      1. 2.1.1

        WT, what I said was right. In step 1 I said that the question is whether the claim recites “SOMETHING MORE” than an ineligible concept. The citation to Alice you provided backs me up.

        And in Step 2 there is not a “genuine dispute” just because a patent holder makes an argument. So you are wrong there again. There are cases of genuine disputes, but not for the reason you suggest. Also, as I stated, the “unconventional” aspects of the claim (Step 2) cannot be the abstract idea itself–a novel abstract idea is still ineligible. They have to be using an abstract idea in some unconventional way to transform the claim from a claim that is effectively covering the abstract idea itself.

        I took (and take) no position at all on whether American Axel was decided correctly, but even if it was incorrect, the 2 steps of Alice will effectively remain even if the Court takes up this case. The Court could effectively overrule the Fed Cir in this one instance without changing the two step rubric.

        1. 2.1.1.1

          gobbledygook.

          try again with actual definitions and not arm-flapping.

          Then realize that the courts themselves (as recognized by prominent leaders of all three branches of the government) see this as one giant messy Gordian Knot.

          If you think this is clear, then you are part of the problem.

        2. 2.1.1.2

          What does it mean to be “directed to” an ineligible concept? (Alice Step 1).

          That is the issue. What in the world does it mean to be “directed to” an ineligible concept? What is an “abstract idea” and how can you be “direct to” an abstract idea?

        3. 2.1.1.3

          And in Step 2 there is not a “genuine dispute” just because a patent holder makes an argument. So you are wrong there again.
          You hold yourself out to be a litigator and you don’t understand how the court is supposed to treat factual allegations (e.g., whether something is an improvement or the additional elements, alone or in combination, are unconventional) in a SJ or 12b6 motion?

          the question is whether the claim recites “SOMETHING MORE” than an ineligible concept
          There is arguably almost always something more. However, the question remains as to how do we draw the line between the something more and the alleged abstract idea.

          the 2 steps of Alice will effectively remain even if the Court takes up this case. The Court could effectively overrule the Fed Cir in this one instance without changing the two step rubric.
          Whatever. The “2 steps of Alice” isn’t the issue raised in American Axle’s petition for cert.

          1. 2.1.1.3.1

            However, the question remains as to how do we draw the line between the something more and the alleged abstract idea.

            Given that BOTH items — ‘abstract’ AND ‘something more’ — are (never) properly defined, you ask an impossible to answer question.

            THIS is the epitome of ‘anti-science’ being an unfalsifiable position.

            1. 2.1.1.3.1.1

              Given that BOTH items — ‘abstract’ AND ‘something more’ — are (never) properly defined, you ask an impossible to answer question.
              But drawing that line would help to define both? Would it not?

              I don’t expect that line to ever be drawn. It is all too convenient for the judiciary to employ a “I know it when I see it” approach to this.

              1. 2.1.1.3.1.1.1

                But drawing that line would help to define both? Would it not?

                No.

                Drawing a line between two ambiguous items means that any such line would itself be reference-less to anything usable.

                As to the “I know it when I see it,” and convenience, yes, but such convenience is NOT what the court is there for. We (the Royal We) have fallen into this odd notion that government entities are there for themselves as opposed to those entities existing for the people. It is a form of bureaucratitis.

                1. All issues of patent law are “know it when I see it,” to some extent. There’s no magic formula for finding a particular claim obvious, for example. A claim is obvious when someone determines that it is obvious. Other people may (and will) disagree, but that claim is obvious if found obvious in court or by the PTO. Same thing with Section 101. Parties present argument and evidence, and the issue is decided. Not everyone will agree in every instance. But that is called life.

                2. >>All issues of patent law are “know it when I see it,” to some extent. Same thing with Section 101

                  What BS.

                3. Drawing a line between two ambiguous items means that any such line would itself be reference-less to anything usable.
                  Not necessarily. I can draw a line between frogs and toads. What is a frog and a toad? one may ask. To draw that line, I have to at least partially answer the question.

                4. A claim is obvious when someone determines that it is obvious.
                  You are channeling your inner CAFC judge. Supposedly, there are findings of fact, described in Graham v. Deere, that should come into play. However, this appears to be a rumor.

                  Parties present argument and evidence, and the issue is decided. Not everyone will agree in every instance. But that is called life.
                  Parties presenting evidence? Not necessarily. A 12b6 motion is decided before evidence is presented. However, there are factual issues that underlie a 101 determination, so how is that possible? How can a court make a determination, supposedly on something that requires evidence, when it occurs prior to evidence being presented? Patents are supposed to be invalidated based upon clear and convincing evidence. How can a patent be invalidated on clear and convincing evidence prior to the evidentiary stage of a trial?

                5. The issue is that with 103 you are supposed to go through a process element by element and provide arguments for each element and for why it would be obvious to combine the elements.

                  For 101 there is no procedure that is followed in step 1 but make up an “abstract idea”, which captures the essence of the claim and assert that the claim is directed to the abstract idea. This can be done with any claim and there are no possible arguments to refute this procedure that can’t be dismissed by an abstract wave of the hand.

                  The fact is that “abstract idea” has no definition and is abused to such a degree that it has swallowed patent law with a judicial exception that has no borders.

                6. which captures the essence of the claim

                  The words appear to be being carefully avoided, but what you are describing is known as “Gist.”

                  It should be self-evident (especially to anyone with a sense of patent history) why that word is being avoided.

                7. I can draw a line between frogs and toads.

                  If you have not defined frogs or toads your line is as meaningful as being drawn between grofs and dotas (without my sharing what is meant by grofs and dotas).

    2. 2.2

      >Otherwise, it goes to trial.

      IDK. I thought the “policy” underlying SCOTUS’s revival of Section 101 was to short-circuit trials.

  6. 1

    Curious if anyone has argued that a cert on the 101 issue in American Axle should be moot in view of the [reportedly effective] 1o3 prior art found in the EPO equivalent application search on the subject broad claims?

    1. 1.1

      should be moot in view of the [reportedly effective] 1o3 prior art found in the EPO equivalent application search on the subject broad claims
      Having difficulties with understanding that what happens in Europe has very little to do with what is happening in the US as it pertains to patent law? It wouldn’t matter if American Axle was up on a 103 rejection based upon the same “reportedly effective” 103 prior art.

      Did the 101 invalidation in the US case make the EPO equivalent moot? Seriously, what possessed you to ask a question that a 2L should know better not to ask?

      1. 1.1.1

        hmm, maybe he mixed up his cheerleading outfits..

        (those pesky Efficient Infringer variations are just soooo similar).

    2. 1.2

      Paul, the way I understand it, the EPO patent family member is undergoing examination on the merits. As yet, there is no decision, no appeal. Where do you get your “reportedly” from? Night Writer, perhaps. Is that definitive?

      Trainee patent attorneys in England are taught (jokingly) that if you choose the language of the claim abstrusely enough, you can make out as new and inventive something as notoriously old as a teapot (In England, it had to be tea, didn’t it). When a court encounters such a claim, it’s a toss up whether it throws it out as ineligible, old, obvious, indefinite, or all of them, all at once.

      Here, the driveshaft is “tuned”. What does “tuned” mean, in this context, for goodness’ sake? Is that the invention? Seriously? Did driveshaft designers never tune out irksome vibrations, until American Axke came up with the idea? Am. Axle tells the EPO that tuning out vibrations, as such, is conventional, old hat, whereby there is no enablement issue. So?

      Every second TV ad here in Germany informs us that the product in view is not only new but “special”. One sighs and wonders in what way it is “special”. So too with the lined driveshaft claimed here, given that lined driveshafts are notoriously old.

      In short, a great case for SCOTUS to bite on.

      link to register.epo.org

      1. 1.2.1

        Of course everything I say is definitive.

        1. 1.2.1.1

          Who would doubt NWPA?

          1. 1.2.1.1.1

            Better question, who would seek to throw Night Writer under the bus from out of the blue on a topic that Night Writer is not known for having a strong view on?

            It’s as if MaxDrie had to hang his hat on some pro-patent person and picked Night at random.

            1. 1.2.1.1.1.1

              Why NWPA? Because NWPA has posted many times on his assessment of the patent family member file wrapper at the EPO, contrasting the objections at the EPO with those at the USPTO and observing that the art cited in the EPO is more pertinent than that relied upon in the USPTO. Paul Morgan noticed too. You not, anon?

              1. 1.2.1.1.1.1.1

                Pardon the potential repeat (some unknown filter)…

                December 15, 2021 at 4:42 pm
                Paul Morgan noticed too.

                Au contraire – your assertion is not supported by the black and white here.

                Hence, YOUR pulling this out of thin air.

      2. 1.2.2

        Actually, my position on American Axel is more complicated than that.

        1. 1.2.2.1

          OK, NW, do tell. What is it that makes it so “complicated”?

          1. 1.2.2.1.1

            Ok MaxDrei, do tell why you picked Night Writer so seemingly at random?

          2. 1.2.2.1.2

            I’ve been through this. There are 112 issues. The CAFC apparently came up with a new reference never cited anywhere else and used arguments from the EPO. In fact, the CAFC from what I can tell read copied the EPO but used a different reference but the reference wasn’t in the record.

            So there is strangeness. And I think the EPO the last I looked had a really great rejection but I believe it was based on 112/103.

            Been a while since I looked at this. I did a deep dive of it long ago. Still I think the Scotus might take it. Not sure.

      3. 1.2.3

        What does “tuned” mean, in this context, for goodness’ sake?
        SMH. Read the claims. They described how the tuning occurs and the parameters by which the shaft is tuned.

        Did driveshaft designers never tune out irksome vibrations, until American Axke came up with the idea?
        Seriously, did you read the claims? The result isn’t new. How they got to the result is new. There is a myriad of ways by which a shaft can be tuned. American Axle didn’t claim all of them. They claimed a particular way by which it is accomplished.

        1. 1.2.3.1

          Wandering, it is taxing to continue to respond over and over again.

          Doesn’t matter what I say, many of these anti-patent people just bring up the same issues over and over de nouveau.

          1. 1.2.3.1.1

            many of these anti-patent people just bring up the same issues over and over…

            W A Y back in one of those ‘let’s be nice’ waves that Prof. Crouch had occasion to visit, THIS was the very explicit thing that I had brought up as the genesis of the problem in the comments section.

            There are simply those that will NOT engage on the merits, no matter what. They will NOT answer to any counter-points raised, and will always simply act as if no such counter-points were ever raised — to the point of being audaciously deceitful.

            Especially for attorneys, in the mode that such behavior is unethical. See ABA Model Rules 4.1

        2. 1.2.3.2

          WT, I’m intrigued by your last two sentences. You aver that the invention lies in the selection of one specific way, out of a “myriad” of different ways, of “tuning” a driveshaft liner such that it is effective to attenuate vibrations in both shell mode and bending mode. I put it to you that i) driveshaft liners for attenuating driveshaft vibrations are notoriously old and that ii) any such prior art tuned liner, by virtue of possessing a finite mass, will attenuate both modes of vibration, by an amount greater than zero (or the >2% attenuation specified by claim 1 of the US patent). I still say that the claim is not directed to a useful invention. What is this “special” way of tuning that you have identified, and to which you say the claim is directed?

          Perhaps you are thinking that AA’s contribution to the art is the flash of genius to use one, and one only, shaft liner, that is effective to reduce by at least 2% both shell and bending mode vibrations of the shaft. Could it be that the art knows of no single earlier proposal to put a liner in a driveshaft to damp its vibrations? I have my doubts, to put it mildly.

          The problem remains, to explain such matters to a court with no engineering background, when there is no textbook or earlier patent that explains to lay readers the common general knowledge of a driveshaft designer.

          1. 1.2.3.2.1

            … you appear to be slipping into a kind of “Jepson claim format required” way of thinking…

          2. 1.2.3.2.2

            I put it to you that i) driveshaft liners for attenuating driveshaft vibrations are notoriously old and that ii) any such prior art tuned liner, by virtue of possessing a finite mass, will attenuate both modes of vibration, by an amount greater than zero (or the >2% attenuation specified by claim 1 of the US patent).
            Then why no prior art? Why wasn’t this rejected as the USPTO? Shafts were tuned going back at least to 1933 (USP No. 2,001,166 was listed on the face of the 7,774,911 patent at issue in American Axle).

            USP 4909361 was also cited and the abstract refers to “[a] vibration damper for the hollow drive shaft of an automotive vehicle has a liner press fitted into the bore of the drive shaft.” The other cited references also include references to linings for shafts.

            The problem remains, to explain such matters to a court with no engineering background, when there is no textbook or earlier patent that explains to lay readers the common general knowledge of a driveshaft designer.
            The claims were issued by an Examiner — presumably having an engineering degree. Why wasn’t he able to understand the issue?

            1. 1.2.3.2.2.1

              Somehow it is the patentee that must prove that their granted patent is indeed valid…

            2. 1.2.3.2.2.2

              Goodness knows, WT, how it is that the USPTO routinely i) misses the closest art and then ii) can’t put together a decently reasoned objection. See NWPA at 12212.

              The statutory task of the EPO is “to grant patents”. So too the USPTO, presumably. Perhaps the USPTO is in more of a hurry to comply with that mission statement. Perhaps Examiners at the USPTO are rushed into granting stuff?

              Or perhaps an Examiner at the USPTO is at a disadvantage, relative to an EPO Examiner, to express doubts when an Applicant asserts that the way s*he tunes their lined driveshaft is inventively different from the way one tunes a lined driveshaft conventionally.

              Even if the Examiner happens to be a graduate engineer, he or she is in no position to lecture the Applicant about what tuning steps are conventional in the lined driveshaft design technology space, what the common general knowledge of the lined driveshaft design engineer is. I mean, what percentage of graduate engineers spend their time at work tuning driveshaft designs? One per cent? Surely way below that, no?

              Sorry, but the mere fact that the USPTO (or the EPO) issues a claim says to me very little about the ultimate validity of that claim.

              1. 1.2.3.2.2.2.1

                Maybe then MaxDrei, you should take the time to see what OUR SOVEREIGN has decided on the matter.

                Hint, see 35 U.S.C. 282

                Or are you intent on being rude again?

    3. 1.3

      The Diehr claims were embarrassingly obvious, so I don’t see why another jurisdiction actually recognizing such obviousness would be expected to matter for a 101 case here.

      1. 1.3.1

        “The Diehr claims were embarrassingly obvious”

        Ben and anon still have no prior art to put forward to show that, much less can they show that it was before the examiner below.

        1. 1.3.1.1

          Why you be lumping me in with Ben?

          Is it because I worked in that field as an engineer long long time ago?

          Do you really think that I would be inclined to try to find such art, when the pure logic of my arguments more than suffices?

          Come now 6, try, try just a little.

        2. 1.3.1.2

          What about the Smith (3980743) reference the Examiner referenced in the allowance?

          Examiner said that Smith falls short because 1) is compares “cure equivalents” rather than cure time, and 2) because Smith’s thermocouple sticks into the mold article.

          Except, Smith says the system can run in either a cure time mode or a cure equivalents mode.

          Leaving the distinction being a thermocouple that is sticking into the mold article, rather than only in the mold near the mold article.

          Do you really need a reference for that being known in 1973? Do you really think a thermocouple location substitution wouldn’t be obvious under TSM?

          Also, why the need to defend this allowance? I’ve never got the impression that you were old enough to be Examiner Ruggiero. Did you know him? Was he haunted by this bad allowance?

          1. 1.3.1.2.1

            Ben,

            Leaving the distinction being …

            You dishonest hack.

            Poor Ned Heller is spinning in his grave, as even he knew that the Point of Novelty was the software controls.

            1. 1.3.1.2.1.1

              “Except, Smith says the system can run in either a cure time mode or a cure equivalents mode.”

              Yeah the examiner recited the variant that was closest to what was claimed. Obviously there is another variant but that is even further from the claims.

              “Leaving the distinction being a thermocouple that is sticking into the mold article, rather than only in the mold near the mold article.”

              Um no, the original “1)” still remains missing. And you’d need to use the actual arrhenius equation if you wanted to hit the relevant limitation dead on (which you will never do).

              Further, you will never meet the thermo limitation either.

              1. 1.3.1.2.1.1.1

                “Um no, the original “1)” still remains missing. And you’d need to use the actual arrhenius equation if you wanted to hit the relevant limitation dead on (which you will never do).”

                Looking at the “cure equivalent” embodiment of Smith, it seems to read on the “time” method claimed. Also, it does use the Arr. Equity.

                How does Smith specifically fall short?

            2. 1.3.1.2.1.2

              “Why you be lumping me in with Ben?”

              Because you’ve made the sameish type of ta rdish args as he is here.

              “Poor Ned Heller is spinning in his grave, as even he knew that the Point of Novelty was the software controls.”

              Lelz. Now you’ve taken to accusing Ned of not being able to analyze the claim?

              1. 1.3.1.2.1.2.1

                Well that is simply wrong:

                Because you’ve made the sameish type of ta rdish args as he is here.

                Your lack of ability to understand does NOT make my position to be “the sameish”

                While a thermocouple is a thermocouple, my position has never been “the sameish.”

              2. 1.3.1.2.1.2.2

                Lelz” [sic]

                In past conversations, I was able to bring Ned to the realization of just what the “Point of Novelty” was in the Diehr case.

                I am not saying that he ever took that necessary last step (he would not escape his posting in a professional advocacy mode and make that admission).

          2. 1.3.1.2.2

            “Do you really need a reference for that being known in 1973?”

            They went to ap peal, and for that matter all the way to the sup remes, so you better bet your bot tom you better have one. And that secondary ref’s teaching better be co mbinable into the primary ref that you choose (spoiler it never will be, as the best primaries available in the pro secution are ga rbage for bringing that limitation into).

            “Do you really think a thermocouple location substitution wouldn’t be obvious under TSM?”

            Gonna need to see your secondary big hizoss.

            “Also, why the need to defend this allowance?”

            Because I see ta rds constantly on here using the supposed obviousness of the Diehr patent to undermine the actual holding in the case in order to try to lend credence to the old school “diehrbot” position. This went on for literal decades newbie.

            “Did you know him?”

            No.

            “Did you know him? Was he haunted by this bad allowance?”

            Obviously not as it was eventually a good allowance. Would that he would have saved us the trouble of the badly worded Diehr decision and sent it to issue in the first place.

            1. 1.3.1.2.2.1

              try to lend credence to the old school “diehrbot” position. This went on for literal decades newbie.

              As to “sameish,” you seem to forget the fact that I was a main ‘quasher’ of that very same Diehrbot nonsense.

            2. 1.3.1.2.2.2

              “Gonna need to see your secondary big hizoss.”

              You know as well as I do that this is what someone does when they’re defending a bad claim.

              “Show me proof that stop signs are red.”

              So why are you defending this junk? Seriously.

              If you want the reference, take US2632207. Some 20 years older than Diehr.

              “temperature responsive devices such as thermocouples are provided in the molds and arranged as near as may be to the respective cavities so that their temperature is as nearly indicative of the temperature in the mold cavities as possible.”

              But you already knew that.

              1. 1.3.1.2.2.2.1

                “US2632207”

                Not combinable with the primary ref, and also not of record before the examiner.

                1. Look at the design of the available primary refs where the couples are. You can’t just move/(possibly extend) those into the main cavity np, willy nilly, all manner of other things would have to be changed as well. Not to mention you likely need to change the actual design of the physical couple parts themselves. That is to say, you’d probably have to then sub in the completely new type of couple, which is not happening in the primary ref as they already have a special couple design for their own purpose. Bottom line, best case, you’re looking at a major redesign of the primary ref’s design, likely destroying some of several of its parts functionality, just to try to address the tiny limitation. Likelihood of that being more likely to be obvious than it is likely to be not obvious is way less than the 50.00001% required (more likely than not is required) and thus wouldn’t meet the office’s procedural/internal standard of when to send a grounds of rejection anyway, even best case.

                2. “Look at the design of the available primary refs where the couples are.”

                  I’m honestly not sure what reference you’re talking about. My reference, Smith, doesn’t have a figure which shows the thermocouple location or even the mold (because it’s so irrelevant).

                  “You can’t just move/(possibly extend) those into the main cavity np, willy nilly”

                  But we’re talking about the opposite! Instead of extending into (Smith), not extending into.

                  “That is to say, you’d probably have to then sub in the completely new type of couple”

                  Have you ever instrumented anything with a thermocouple? If you had a 12 inch thermocouple sticking into the mold cavity, you can use the same 12 inch thermocouple to stick into a well that extends only near the cavity.

                  The mold would just need to be modified so that the thermocouple wells didn’t extend into the cavity. The end. And that is trivial for an appropriate technician in 1970.

                  “as they already have a special couple design for their own purpose.”

                  Not Smith, which uses a “conventional thermocouple.”

            3. 1.3.1.2.2.3

              “Because I see ta rds constantly on here using the supposed obviousness of the Diehr patent to undermine the actual holding in the case in order to try to lend credence to the old school “diehrbot” position. This went on for literal decades newbie.”

              I honestly don’t know what you’re talking about, but it seems like you’re out and out admitting that you defend this patent for ideological reasons rather than the facts of the application.

              I don’t know why you’re working for the PTO, it sounds like you’d be a hell of a patent prosecutor.

              1. 1.3.1.2.2.3.1

                “I honestly don’t know what you’re talking about”

                That’s why I called you a newbie. I get it, you don’t understand why this discussion matters at all, though it does because people keep using the supposed invalidity of Diehr’s app under 103 EXCEPT for the Arrhenius equation use, as a means to extract from Diehr pro-software patent talking points. Obviously, this is not a valid grounds for arguing as, on the record before the examiner, the application was valid 100%. Perhaps the examiner missed your ref and would have liked to have used it, all good and well on that front. Personally I say you can’t bring that into any of the primary references, and it wasn’t before the examiner so it is irrelevant to the prosecution in the office of that application.

                “like you’re out and out admitting that you defend this patent for ideological reasons rather than the facts of the application.”

                Obviously, I do not care whether the patent is actually valid or not. It’s past expiration. The only reason why it matters is because of the people constantly making crazy attacks on Diehr or trying to read it wrong to support software patents.

                “it sounds like you’d be a hell of a patent prosecutor.”

                *bow*

                1. as a means to extract from Diehr pro-software patent talking points

                  LOL – so that is where you think this is coalescing to?

                  Are you somehow denigrating what the Point Of Novelty (as Ned Heller would edge up to, but refuse to overtly admit) was? Why would you do that? Are YOU being the newbie on that point?

                  As to Ben’s (rather ironically blind) assertion of “it seems like you’re out and out admitting that you defend this patent for ideological reasons rather than the facts of the application.” it is Ben that is being (purposefully?) obtuse – for the reasons I have already stated and that have long been on the record [and these same reasons have quashed the Diehrbot nonsense for more than a decade now.

                  The only reason why it matters is because of the people constantly making crazy attacks on Diehr or trying to read it wrong to support software patents.

                  And there you go again. What a Newbie you are to make such an unsustainable assertion.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture