Wednesday, October 31, 2007

ED Va enjoins implementation of USPTO rules

The PLI website (which presented "live" coverage) stated:

John White, known to many patent attorneys across the nation as the guy who helped them pass the patent bar examination, played the role of ace reporter live from the Eastern District of Virginia. According to John, "there was an audible sigh in the courtroom when Judge Cacheris said the rules were enjoined." No doubt, those in attendance were quite happy that Judge Cacheris kept the status quo.

In an earlier blog post John had said that the courtroom was full, and reporters were everywhere. As it turns out, the courtroom was full of patent attorneys and there was only one reporter who apparently left early. How John could mistake concerned patent attorneys for reporters is something we will have to ask him later, maybe he should stick to his day job!

In any event, what John just told me via telephone is that Judge Cacheris did not make any statements about the likely merits of the case when making his ruling from the bench. He will, however, be issuing a formal written opinion which will be entered sometime this afternoon. As soon as we receive that ruling we will post it together with our analysis.

Coverage of the hearing on SKB's request to enjoin implementation of USPTO rules

John White, Director of the PLI Patent Bar Review Course, will be in attendance on October 31, 2007 at ED Va for the GlaxoSmithKline preliminary injunction hearing. Mr. White will call Gene Quinn with updates throughout the day regarding how the hearing is going, providing his insights and impressions. Quinn will then immediately post the reports, thereby providing near real time reports published on the Patent Practice Center blog. The hearing starts at 10:00 am on Wednesday, October 31, 2007.

Patently-O has the text:

There is a good possibility that late on Halloween night, the CAFC will receive an emergency motion for a preliminary injunction or temporary restraining order. How does this work:

Further, within the Patently-O post, Dennis Crouch says:

Although the PTO used Judge Moore and Mark Lemley's article as academic firepower. This rule change is certainly not a "result" of their article.

This is one point in time where the plaintiff would wish for a former district court judge sitting on the bench.

As Bill Clinton might say, it depends on what you mean by "result." Some of these issues were covered in LBE's first comment to the USPTO. Note therein that the USPTO did not even correctly refer to the relevant page in the Lemley/Moore article, which article is "Ending Abuse...", 84 BULR 64 (2004). The comment ended: "The USPTO's reliance on a law review with known, uncorrected, factual errors might be questioned."

Although "Ending Abuse..." might not have been the only reason for the rule change, it was definitely a significant factor. Sadly, "Ending Abuse..." not only contained factual errors but also arguments which were no longer relevant in the year 2004.

Additionally, the comment to which Crouch responded:

how interesting that Judge Moore may have to hear arguments about the new rules that were a result of her article bashing RCEs!

fails to understand that the 2004 Lemley/Moore article barely touched RCEs, for which no data was presented in the 2004 article. When data on RCEs later became available, it became apparent that Lemley and Moore had misunderstood the primary reason people file "continuing" applications.

In passing, LBE tried to post comments on Patently-O but got into a cycle of verification code being repeated. The post finally took:

Of the posts by Crouch, Noonan, etc. concerning the law review article by Professor Lemley and (now) Judge Moore which appeared in volume 84 the Boston University Law Review [BULR; "Ending Abuse of Patent Continuations"], please note

#1. The 2004 law review article in BULR barely touched on RCEs. There is no significant data on RCEs presented in the article.

#2. When data on RCEs later came out, it became apparent that many of the Lemley/Moore conjectures about continuing applications were simply wrong.

#3. There were significant factual errors in the BULR article.

#4. Professor Lemley is not a registered patent attorney. In a later article in the Stanford Law Review on nanotechnology, Professor Lemley credited Gary Boone as being the inventor of the integrated circuit, and did not mention Noyce or Kilby.

#5. In the text in the Federal Register, the USPTO did not even cite the relevant page of the BULR article.

Refer to the April 2006 comment on the proposed rules at

Tuesday, October 30, 2007

Patents Shrugged

Of the monumental struggles in Congress over patent reform, Raymond Van Dyke writes in "Patents Shrugged":

One troubling aspect of this reform is that some of the more important proposals -- such as adding a far simpler procedure for competitors to challenge and invalidate all patents at any time -- are quite harmful to innovation in the long term. Although clearing out a few "bad" patents is a laudable goal, undermining the certainty and validity of all patents is detrimental to society.

In Getting the Patent Reform Wars Back on Track, LBE had written:

One thing we don't need is so-called patent reform that makes matters worse. The creation of a post-grant opposition system is such a proposal. By allowing a second window of opposition to occur at any time in the patent's lifetime, this proposal enhances uncertainty, which is simply bad for business. Separately, an opposition system unfairly burdens patentees with the expense of continually having to defend patents. This is not a desirable reform.

Van Dyke got into the new rules on continuing applications:

For example, severe restrictions on the number of follow-up continuation patent applications will adversely affect innovative efforts in the life sciences sector. Further, the retroactive nature of these measures undercuts the entire pipeline of nearly 1 million pending patent applications, making all patentees, small or large, subject to new procedures with prohibitively expensive consequences.

For all patentees, the far-reaching nature of those changes has been likened to the killing of the American goose laying the golden eggs of ideas. Indeed, the traditional American dream of reward for building a better mousetrap is compromised. Various documents have been filed in support of Glaxo's opposition to the rules changes, and a hearing is scheduled for Oct. 31, 2007, the day before what many are calling "Black Thursday," the date of rules imposition.

Back on April 20, 2006, LBE had sent comments to the USPTO on the new rules. The very first paragraph mentioned the possibility of a legal challenge to the rules. LBE sent in a second comment on the rules.

There should be a bumper sticker: don't blame me, I submitted comments in 2006.

Or, remember the lyrics from the P.F. Sloan song:

Where were you when I needed you?

[For those who might not remember, P.F. Sloan was sixteen and a genuine street poet, when he wrote the lyrics for "Eve of Destruction."]

PatentHawk had the following comment related to an NLJ article by Carlson criticizing the proposal of patent oppositions:

Have to agree with Carlson. There are special reasons why the EPO opposition system is so stable and successful. For nearly 30 years now, roughly 5% of patents issuing from the EPO are opposed, and 70% of all such oppositions are filed by Germans, for whom opposition has always been a standard business tool that one needs to use, in defence against the mischiefs of the German "twin track" patent litigation system (which Japan used to have but has now wisely got rid of). What's interesting is the extent to which litigation-savvy Americans can use the EPO opposition track (which is running faster these days)at nominal cost to diminish the threat of a particular US patent. EPO-style civil law opposition will anyway never work in common law USA.

LBE cited the work of Dale L. Carlson and Robert A. Migliorini, 88 J. Pat. & Trademark Off. Soc'y [JPTOS] 101, February 2006 within Intellectual Property Today.

Separately, in some sense, Americans can "free ride" on the European opposition system. If the European counterpart gets trashed in opposition, things don't look good for the US version.

Choate article on Coalition for Patent Fairness [CPF]

On taking advantage of people's ignorance and fears

Californiastemcellreport discusses a recent controversy concerning a proposal by StemLifeLine about freezing stem cells for possible later use – "insurance for the future" – in the event that medical breakthroughs could make use of them.

There's a lot to be said here, but one line captured the attention of IPBiz:

David Magnus-"These companies are essentially taking advantage of people's ignorance and fears to make a buck."

One could just as well say that those pushing Proposition 71 to patients were partisan advocates essentially taking advantage of people's ignorance and fears to take bucks from the pockets of California taxpayers. So many things promised to the taxpayers are so unlikely to occur in the next ten years that one is hard put NOT to apply the Magnus text TO Proposition 71 supporters.

On freezing, recall:

Seinfeld's vegetable plagiarism

IPBiz has previously discussed the difference between plagiarism and copyright infringement, and one finds another discussion on Slate concerning the recent charges against Jessica Seinfeld.

Steven A. Shaw writes in Slate:

Many people equate plagiarism with copyright infringement, yet these are different issues. Copyright is a technical, legal issue. It's about ownership of work—whether written, musical, sculptural, or otherwise. If you copy this article, or a substantial portion of it, without permission, and you sell those copies (stop laughing), you've violated copyright laws.


While Melville's work may not be protected by copyright laws, it is entirely possible to plagiarize it. Just try to pass off Moby-Dick as your own and see what happens. Plagiarism isn't about copyrights, it's about dishonesty. It's about pretending someone else's ideas and work are your own, even if those ideas are paraphrased. (If you paraphrase, you're no longer committing a copyright violation because copyright protection is about the form of expression, not the idea itself.) Plagiarism can't exist, however, if you acknowledge your sources: As long as you say where you got your ideas from, it's just called research. Moreover, it's impossible to plagiarize common knowledge: You can't steal the idea that the sky is blue, because everybody already knows that.

IPBiz note to Shaw: please read the Dastar decision, and observe what happened when a plagiarist passed off non-copyrighted work as his own: nothing. As to copying inexactly, Shaw should note, among other things, "look and feel" cases in copyright.

Shaw also wrote on a "rich get richer" theme:

Much has been made of the fact that Lapine originally showed her book proposal to HarperCollins and that HarperCollins rejected it, only to sign up Seinfeld soon after. To those unfamiliar with the world of book publishing, this may seem meaningful, but it's very unlikely that anybody at HarperCollins would have leaked the Lapine proposal to the Seinfeld team, particularly since the premise of the Lapine book is not original, either. The idea of sneaking vegetables into kids' food is a time-honored parenting trick, and Lapine's book was not the first: The largely unsung book Sneaky Veggies by Chris Fisk, for example, came out in August of 2006.

Lapine, who has surely benefited from the publicity given to the Seinfeld book, seems particularly upset that Seinfeld got a spot on Oprah while she didn't. Oprah portraying an unoriginal idea as original does not constitute plagiarism by Seinfeld. But more to the point, there are reasons Seinfeld got on Oprah and Lapine didn't. They're surely the same reasons the publisher bought Seinfeld's book but not Lapine's: Jessica Seinfeld is gorgeous, charismatic, and married to an über-celebrity. Of course Oprah is going to put her on. Of course any publisher is going to buy whatever book she wants to produce. Of course Seinfeld's book is going to sell better than a book written by a normal person.

At the end, Shaw notes:

Plagiarism is a serious accusation. It can get students expelled; it can ruin writers' careers. And if it's occurred, it should.

IPBiz notes with interest that Shaw did not write "it can get a university president fired." Thus, Shaw doesn't get into the rather interesting contrast between SIU's Poshard and the poor students at Ohio University. Of Shaw's line: It's about pretending someone else's ideas and work are your own, even if those ideas are paraphrased, Shaw does not address whether one can "inadvertently" pretend. People who plagiarize typically do not step forward and admit to taking someone else's words. More likely, they will acknowledge sloppy footnoting.

Further, without commenting on Shaw's analysis of facts in the Seinfeld plagiarism matter (e.g., There was simply not enough time to incorporate Lapine's work into Seinfeld's. In fact, Seinfeld's agent told CBS that her book was already being bound when Lapine's came out.), IPBiz notes that, these days, one can move very fast in the on-demand book publication area.

The Slate piece was nice writing by Shaw, but will not be remembered as an accurate exposition on either plagiarism or copyright infringement.

Monday, October 29, 2007

Schlafly: The Patent Act is a Cheat on Americans

Phyllis Schlafly, demonized by Jaffe and Lerner in Innovation and Its Discontents, has a piece in Human Events which includes the text:

A combination of foreigners who make a business of stealing our intellectual property, and the multinationals who want to avoid paying royalties to small inventors, have ganged up to get Congress to do their bidding. The battle is going on behind closed doors between the corporations with highly paid lobbyists vs. the small inventors and businesses who produce 40 percent of U.S. innovation.

Of post-grant review (opposition):

The act would create post-grant review, a process that would enable patent infringers to challenge the validity of a patent after it is issued without going to court, thereby making the inventor's ownership vulnerable and reducing his ability to attract venture capital to produce it. The big winners would be the multinationals with lots of lawyers.

IPBiz notes that if we go to "first to file," we must do something with the administrative law judges....

Sunday, October 28, 2007

PAR v. Roxane on enablement under 35 USC 112

Further to the IPBiz discussion of enablement in the context of the re-exam of WARF stem cell patents (for example, here, one has a CAFC case on enablement, Pharmaceutical Resources and PAR v. Roxane, originating in D NJ. The judgment of D NJ was affirmed.

Judge Moore cited Ormco v. Aligned for the proposition that a patent claim is presumed enabled unless proven otherwise by clear and convincing evidence. Moore cited Liebel-Flarsheim, 481 F.3d 1371 for "beware of what one asks for." Moore also cited Liebel for the proposition that the full scope of the claims must be enabled.

The decision got into the concept of inoperative embodiments, citing Atlas Powder, 750 F.2d 1569 (tho Graver Tank - I could have been cited).

Judge Moore cited to In re Wands, 858 F.2d 731, 737 for the "Wands factors" on enablement. If one has broad claims in an unpredictable art, there is a high burden that the patent disclosure must meet. Judge Moore also talked about the impact of a large number of inoperative combinations, citing to Atlas Powder, 750 F.2d 1569.

On the facts, PAR's specification had three working examples. Judge Moore concluded that these three working examples did NOT provide an enabling disclosure commensurate with the entire scope of the claims.

Remember the new URL for the CAFC:

France to allocate $1.4 billion to develop energy sources

In an article titled "U.N. Warns of Rapid Decay of Environment", the New York Times discussed a UN report which issued on Thursday, Oct. 25:

[Achim Steiner] also warned of a global collapse of all species being fished by 2050, if fishing around the world continued at its current pace. The report said that two and a half times more fish were being caught than the oceans could produce in a sustainable manner, and that the level of fish stocks classed as collapsed had roughly doubled over the past 20 years, to 30 percent.


[Sarkozy] said he would make 1 billion euros, or $1.4 billion, available over four years to develop energy sources and maintain biodiversity. He said each euro spent on nuclear research would be matched by one spent on research into clean technologies and environmental protection.

Genetic Ancestry Testing is big business (and growing)

The 19 October 2007 issue of Science had a policy forum piece entitled "The Science and Business of Genetic Ancestry Testing" by Deborah A. Bolnick et al. [318 Science 399]. The article noted that more than 460,000 people have purchased these tests in the last 6 years. The basic tests address mitochondrial DNA (which relate to maternally inherited material) and the paternally inherited Y chromosome (via single tandem repeats or SNPs)

The article "Genetically Capitalist" by Samuel Bowles (reviewing a book) got into Joseph Townsend's analysis of predator/prey interactions. See 318 Science 394.

The discussion by Science of the 2007 Nobel Prize in chemistry gets into some of the politics of prize giving. Nobel winner Gerhard Ertl is quoted: "I was a little disappointed that he [Gabor Somorjai of UC/Berkeley] didn't share [the Nobel Prize] with me." The Science article did get into Ertl's contributions to the understanding of the Haber-Bosch process for making ammonia from nitrogen and hydrogen. See 318 Science 373.

Further discussion of investigation of Monash stem cell work

AustralasianBioethics noted the matter in the following way:

The newly-appointed head of the world's biggest stem cell program, the California Institute for Regenerative Medicine, IVF scientist Alan Trounson, has been embarrassed by irregularities in a research program which he had been supervising at Monash University, in Melbourne, Australia.

An adult stem cell project which he was supervising has been scrapped after an audit in November last year found that a scientist's progress reports did not match his lab records. Although Professor Trounson is not under investigation -- it must be stressed -- he was the principal investigator and apparently did sign the doubtful report.

The researcher in question has left the university. He was a senior member of a team working on a lung regeneration project which was attempting to use adult mesenchymal stem cells to regenerate lung tissue to treat cystic fibrosis. It had received A$1.2 million funding over 18 months from the Australian Stem Cell Centre.

Further discussion of Poshard matter on 25 Oct. 07

The Poshard review panel defended its actions on October 25 and press coverage included the text:

most of the passages that were cited incorrectly occurred in one chapter of the dissertation and most were footnoted, but not accurately quoted.

IPBiz notes that no one (other than the SIUDE) is giving attention to the massively copied text on page 54 of the Poshard Ph.D. thesis, which is copied in detail from an earlier book (but NOT footnoted) AND appears in a section of Poshard's thesis purporting to summarize the prior work in the area.

Papers like the
News Democrat seem to think that the presence of MANY examples of smaller error excuse ONE example of BIG ERROR, which big error they never mention.

IBM's "apparent schizophrenia" on patent policy revisited

Several patent blogs have noted IBM's curious new position on patent reform as embodied in the new rules on patent continuations. IBM's Kappos had once discussed IBM's apparent schizophrenia on patent policy, and IBM's declararation in support of the AIPLA brief is another manifestation of IBM's staking out both sides of a single issue.

PatentBaristas mentioned that AIPLA has now filed an amicus brief in support of the pending motions to enjoin implementation of the USPTO rules on continuing applications and further noted:

Included with the AIPLA filing are declarations from IBM and from patent practitioners who detail the effects of the rules on pending applications for which they are responsible. David Kappos, Chief of IP at IBM, filed a declaration in support of the AIPLA brief. Most noteworthy is that Kappos indicated that in order for IBM to comply with the retroactive requirements of Rule 78(f) and to review 30,000 related pairs of cases, IBM would incur over $10 million in legal fees and internal expenses — not including any loss of intellectual property rights.

PatentHawk stated:

So how did IBM step up to the plate? David J. Kappos, the Vice President and Assistant General Counsel for Intellectual Property Law at IBM filed a declaration in support of the AIPLA amicus brief and "on behalf of IBM." As already seen in part, the Kappos declaration focuses on the enormous burden IBM will be under if the new rules are enacted because of the need to identify related cases. Specifically, Kappos says:

Due to the retroactivity requirements imposed by the new USPTO continuation and claims rules published August 21, 2007, IBM will be required to review its entire portfolio of over 25, 000 pending U.S. patent applications filed before November 1, 2007 (the effective date of the new USPTO rules) to identify each of its pending patnet applications which, even by chance, has a common inventor and the same filing date (or claims the same benefit or priority date) as another pending IBM U.S. patent application or issued patent, since IBM must identify all such "related cases to the USPTO under new USPTO Rule 78(f)(1).

IBM's earlier position on the changes to rules governing continuing application practice had been an endorsement. See
IBM stated in comments to the USPTO: IBM strongly supports the proposed rules. [IPBiz notes that IBM also stated: IBM thanks the USPTO for it's [sic] commitment to patent quality...]

Will the "real IBM position" on patent reform stand up and be known?

Other inconsistencies in IBM's patent policy position have been noted as to its activities in the business method area. For example, AP noted:

IBM Corp. says it has dreamed up a new method for profiting from its vast storehouse of patents. And by the way, the company wants to patent the idea.

Beyond the circularity of the concept, IBM's application is notable because the company — the world's top patent holder — has been campaigning to improve the quality of patent filings and reduce so-called "business method" patents.


The new patent application was initially filed in April 2006, updated last April and published by the U.S. Patent and Trademark Office last Thursday. It covers what IBM calls "a system and methods for extracting value from a portfolio of assets, for example a patent portfolio."

Specifically, IBM — which collects more than $1 billion in patent royalties every year — describes a new process for licensing patents. Instead of smaller companies licensing technologies from patent holders like IBM in a plodding, one-by-one manner, IBM envisions a more dynamic system with "floating privileges," in which patents could be licensed quickly, as needed.


This time, however, IBM wants to see the patent-portfolio application through. IBM spokesman Steven Malkiewicz said that while the application does describe a business method, "this is all only possible with technology."

Again, IBM is staking out both sides of a patent reform position, this time in the "business method" patent debate.

Of the comment below, IPBiz reminds readers of IBM's changed position on its outsourcing patent application. Was that silly application any less profound than the patent-portfolio application? And don't forget the IBM patent on lining up for a toilet on an airplane. As in its shifting position on the rules on continuing applications, IBM is not walking like it is talking, and manifests "real schizophrenia" in addition to the apparent kind.

LBE had previously noted the seeming inconsistency of Intel's position complaining about continuing application abuse but simultaneously filing many continuing applications.

IBM's comments to the USPTO in May 2006

***With respect to one commenter to this post (on 30 Dec 09), please note that it was David Kappos who initiated the schizophrenia description:

"We've referred to our patent policy as apparent schizophrenia," David Kappos says. from IBM patent policy: apparent schizophrenia?

On IBM's inconsistency on business method patents, see
IBM to withdraw second patent application on outsourcing ["Malkiewicz said the filing [of IBM] would be withdrawn because it "is contrary to our patent policy on business methods." " ]

For a remarkable patent prosecution:

IBM's US 7,571,105: issues of patent quality and exam quality

For 'sensitivity' in outsourcing, review the story of Rick Clark, including
Who is Rick Clark?

Tuesday, October 23, 2007

Two challenges to USPTO proposed rule on IDS

Attorney David Boundy notes: There are now two challenges to the IDS rule at Office fo Management and Budget.

Of the one by Richard Belzer, Boundy writes:

Dr. Belzer gets down to some decidedly non-bureaucratic truth-telling:

“Executive Order 12,866. Based on my expertise in regulatory analysis, and more than 20 years’ experience reviewing such analyses (including 10 while employed as an economist at OMB), I am virtually certain that the proposed IDS Rule is economically significant ...

“Furthermore, based on my governmental experience it is inconceivable that USPTO could be unaware of the approximate magnitude of these costs, or that it employed any reasonable economic method or logic to determine that the proposed rule was 'not significant'. ... One can infer with reasonable certainty that USPTO deliberately evaded the requirements of Executive Order 12,866.

Sunday, October 21, 2007

More on "does patent confer a monopoly"?

Further to an earlier post from a commenter who believes that a patent does confer a monopoly, one might consider the Supreme Court decision in Illinois Tool.

Saturday, October 20, 2007

AT&T uses 1996 patent to go after Vonage

AP reports: Vonage said AT&T filed the lawsuit Wednesday [Oct. 17] in U.S. District Court in Madison, Wis. It said it has been in discussions with AT&T to resolve the dispute but can't guarantee the case won't go to trial.

The single patent in question, filed in 1996, appears to broadly describe the idea of routing telephone calls over data networks like the Internet. The listed inventor is Alexander Fraser, AT&T's former chief scientist.

See also

Are editors responsible for the plagiarism of academics?

Of the Ayres plagiarism matter, the Chronicle of Higher Education has a new scapegoat: editors.

But now comes a compelling new culprit: trade-press editors. According to an anonymous academic who contacted Dorf after his initial post, the most common criticism a trade-press editor makes to academic authors is that they use too many quotations. But according to the editor, the way this works in the line-editing of a manuscript is that "the editor removes quotation marks from a quotation, and changes a little bit of the wording--perhaps only one word!--leaving the sentence structure intact and the citation in place."

IPBiz still goes with Velvel's implication of student-assistant ghostwriters, especially in the Tribe matter.

Of course, neither the ghostwriter nor editor excuse will save Poshard.

Friday, October 19, 2007

Does a patent confer a monopoly?

There was a further comment on the Supreme Court statement: A patent confers a monopoly. LBE had written in endnote 2 of his article Supreme Court Festo; Equivalents Still Limited (Intellectual Property Today, July 2002):

FESTO CORPORATION v. SHOKETSU KINZOKU KOGYO KABUSHIKI, 62 USPQ2d 1705 (2002), 2002 WL 1050479. The court refers to a patent as a monopoly and certain text is relevant to arguments made by Lawrence Lessig [Supreme Court: "The monopoly is a property right; and like any property right, its boundaries should be clear."] Patents are rights to exclude.

IPBiz suggests that anyone who thinks patents confer monopoly rights should review the history of the radio patent wars on blocking patents, or contemplate "what monopoly rights" Chester Carlson enjoyed during the lifetime of his basic patents on xerography.

Note also the following portion of endnote 1 of the July 2002 IPT article:

See also L. B. Ebert, Pioneering, Innovation, and Festo Last Looks," Int. Prop. Today, 12-14 (June 2002) which predicted the outcome of the two Festo questions. Of relevance to endnote 11 in L. B. Ebert, "Abstracting Festo: Which Line to Draw," IPT, 44-46 (Oct. 2001) [about the Schon work on superconducting oxidized buckyballs], note M. Stroh, "Darling of the physics world now suspected of fraudulent research," Milwaukee Journal Sentinel (June 16, 2002), K. Chang, "A sudden host of questions on Bell Labs breakthroughs," NY Times, Fl (May 28, 2002); R. F. Service, "Pioneering physics papers under suspicion for data manipulation," Science, 2002 May 24, 296, 1376-1377. Separately, see June 5, 2002 issue of JAMA on not believing everything you read.

USPTO: punishing the many for the bad acts of the few?

A comment by Jordan at patenthawk encapsulated many of the problems, not only with the new USPTO rules but also with patent reform in general: there are proper ways to fix problems, and then there is the PTO way, which consistently punishes the masses based on the actions of a few.

In the context of reform, there are some underlying fundamental disagreements over basic terms. Some of this came up in a comment on an IPBiz post, wherein the commenter submitted quotes from the Supreme Court that a patent confers a monopoly:

"A patent confers a monopoly. So this court has decided in the Paper Bag Case, supra, and in many other cases." Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 37 (1923); see Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 63(1998)("the patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time").

If one looks at the patent statute, one notes that a patent confers the right to exclude others from making, selling, etc. It does not say anything about conferring a right to make, sell, etc. IPBiz cited the radio patent wars, a classic case of blocking patents, wherein different entities had valid patents that kept everyone from making the best radio product because each possible product infringed someone else's patent. As Hylton (and others) writing on antitrust law have said: "The economic definition of monopoly is simple: sole producer." To have a monopoly, one has to be able to produce. None of the radio guys, all with patents, could produce. Any patentee, armed with a patent, has the right to exclude, but not the right (or even the ability) to produce. Ask Chester Carlson in his pre-Haloid days if he had a monopoly on xerography. By the time Xerox did have an (economic) monopoly, the initial patents were long expired, and the world was free to use them royalty-free.

Imprecise language by the US Supreme Court does not alter the reality of what a patent is. The concept of monopoly is directed to producing, not excluding others: Exclusive control by one group of the means of producing or selling a commodity or service.

Of relying on the texts of courts, Krattenmaker et al have written in the antitrust area:

Examination of key antitrust law opinions, however, shows that courts define 'market power' and 'monopoly power' in ways that are both vague and inconsistent. We conclude that the present level of confusion is unnecessary ...

The commenter's comment on "promote innovation" was less on point:

"Federal patent law reflects the objectives of Congress, which include 'seek[ing] to foster and reward invention,' 'promot[ing] disclosure of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires,' promoting 'the stringent requirements for patent protection ... to assure that ideas in the public domain remain there for the free use of the public'", Ultra-Precision Mfg., Ltd. v. Ford Motor Co., 411 F.3d 1369, 1378 (Fed. Cir. 2005), quoting Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979).

See IPBiz post:

Thursday, October 18, 2007

RCE loophole in new rules?

Further to an earlier post on a NIPRA analysis, a post on GA states:

Does the PTO know how to craft rules to effect its intent? Read on....

I have confirmed this with the PTO Legal Hotline (571)272-7704.

In a nutshell, in a family where an initial application has not used an RCE, then any continuations (in parallel) can EACH use an RCE without petition. This holds only as long as an RCE is NOT used in the initial application.

Of course, there is always the 5/25 rule that you are up against in parallel cases. But this may be a useful strategy for certain cases. It would also be useful in those families already pending where you have many continuations pending and no RCE has been filed in the initial application.

Comments are appreciated.

Obscure patent language?

IPBiz notes the following text from slashdot:

They [patents] aren't written in normal legaleze. I worked at a company that submitted a patent for a device I helped design and build. We submitted technical documentation, and the company lawyers turned that into a patent document. When I reviewed the patent, I would have had no idea that the patent was describing what I worked on, had they not told me so ahead of time. I'm not joking. What was about 20 pages of documentation of a concept, including illustrations, became hundreds of pages of completely confusing information. Where a single technical term was the precise meaning of something, it would be replaced with entire paragraphs explaining that concept in a way that no engineer would understand it.

Patents are technical documents. They are supposed to describe a solution to a problem in a way that a technician with adequate knowledge can understand the concept and verify that it is not already in use, and that a future product does not infringe upon it. If the designer of the system does not even recognize the patent, then it is not able to do that.

You are correct when you say that legalize has very precise meaning. But patents are intended to be as broad as possible, so the lawyers do what they can do take a single concept and make it as vague as possible. So words that have precise meanings in the original technical document are replaced with vague meanings (hence how single terms become entire paragraphs). I actually saw sentences that spanned whole pages, and paragraph separators were used to indicate that this "word" had been explained inline.

Faculty Senate at SIUE calls for Poshard resignation

The Belleville News Democrat stated on Oct. 18:

The Faculty Senate at Southern Illinois University Edwardsville passed a resolution this afternoon calling for the resignation of SIU President Glenn Poshard.

See also Chicago Tribune

Cha goes after Flamm over plagiarism business

IPBiz has been covering issues with K.Y. Cha's controversial publications in J.Rep.Med. and Fert. & Sterility for some time. Although the two publications present DIFFERENT issues, a recent lawsuit by Cha against Flamm UNITES the two areas.

An article by Bob Grant titled Scientist sues over opinion piece describes a lawsuit filed by K.Y. Cha against Bruce Flamm, a long-time critic of Cha's paper in JRM, because of remarks Flamm made relating to Cha's paper in F&S.

The problematic text in the March 15, 2007 issue of Ob. Gyn. News. is the following (concerning the authors of the JRM article):

"This may be the first time in history that all three authors of a randomized, controlled study have been found guilty of fraud, deception, and/or plagiarism."

IPBiz notes that the "trick" here is that the plagiarism concerns the paper in F&S, not the paper in JRM.

Anthony Glassman, Cha's attorney, notes: "'Found guilty' states and, in our judgment, implies a declaration of guilt by a court of law or some administrative agency."

Brian Birnie, Flamm's attorney, responds: "To be found guilty of plagiarism, you don't have to be convicted by a jury."

Another issue here is that Flamm relied on a statement by the editor of F&S about the plagiarism: Alan DeCherney, editor-in-chief of Fertility and Sterility, told the LA Times in February of this year, "I'm sure that it's plagiarism." Flamm referenced the quote in his March opinion piece. But after Cha threatened to sue both DeCherney and the LA Times, DeCherney retracted the statements he made to the LA Times and to The Scientist.

IPBiz notes that the recent plagiarism flap with Poshard illustrates that one can be found guilty of plagiarism without a finding of a court of law or some administrative agency. [Poshard was NOT found guilty of "intentional" plagiarism by a university committee, but he could have been.] The convoluted reasoning of the SIU committee illustrates how illusive a definition of plagiarism can seem to be.

Of relevance to the Cha flap at F&S is how F&S defined duplicate publication and plagiarism.

The Cha / Flamm business has larger dimensions. The article notes:

David Faigman, a professor of constitutional law at the University of California, Hastings College of the Law who is not involved in the case, agreed that the lawsuit may dissuade other scientists from speaking out about what they suggest to be faulty science. "It's the nature of this kind of lawsuit that it potentially chills other people from making strong statements," he told The Scientist. "The existence of the lawsuit alone is likely to chill scientific discussion."

See also

Princeton fog

Looking at this fog over the Princeton Battlefield on October 18, one is reminded of the fogginess on the New Jersey stem cell bond issue, and on the fogginess of arguments over patent reform. At least in Princeton, the fog lifts.

Wednesday, October 17, 2007

Elman on patent reform

Gerry Elman, Elman Technology Law has a post on patent reform which includes the text:

The good news is that an informal nose count of the Senate seems right now to fall a bit short of the number needed to pass the Bill. But the coalition of powerful information technology companies spearheaded by Microsoft, Intel, Oracle and Time Warner are lobbying hard. Unless strong opposition arises to hold the line and resist further change in the patent statute that coalition could succeed in the Senate as they did in the House. Your voice and the voice of your colleagues need to be heard right now.

Science discusses 2007 Medicine Nobel Prize

In an article titled "A Knockout Award in Medicine," the journal Science describes details in the prize for developing the techniques to make knockout mice, animals which lack a specific gene or genes. [318 Science 178].

There are a couple of interesting sidelights:

#1 "...most people assumed it wouldn't work in mammals. Indeed, in the early 1980's, Capecchi's grant application was rejected by the National Institutes of Health in Bethesda, Maryland, with advice that he should forget about the idea."

The article gets into the concept of homologous recombination, which had been used to alter genes in yeast.

#2 Of stem cells: "Even Evans was confused when he saw the [stem] cells in culture. He came to us and said Someone contaminated my media! because there were strange looking cells growing in it. Lab members had to convince him [Evans] that the cells were ES cells."

The article gets into the concept of a chimera: Evans showed that they could produce live mice by injecting cultured ES cells into a developing embryo. The result is a chimera, an animal whose tissues are a mix of the ES cells and those from the host embryo. In many of those chimeras, the added ES cells by chance produce the animal's sperm and eggs, and when chimeras mate, some of their offspring carry the stem cells' genes in all their tissues.

The same Oct. 12 issue of Science talks about the Physics Nobel on page 179. Giant magnetoresistance (GMR) allowed a dramatic increase in the capacity of computer hard drives.

Science noted that the concept was understood in the 1970s but relevant fabrication techniques only became availabe in the 1980s. Science got into a discovery/innovation distinction: the Nobel committee apparently distinguished between the discovery and its cultivation. The guy who made the discovery useful (Stuart Parkin) did NOT share in the Nobel Prize.

Science also gets into issues with a barcode for plants on page 190. It mentions the Barcode of Life Data Systems (BOLD) and the Consortium for the Barcode of Life.

Investigation of research fraud at Monash University in stem cell area

Californiastemcellreport had some recent posts on the investigation into research fraud in the embryonic stem cell area at Monash University.

One Australian newspaper began the story this way:

Monash University is investigating a $1-million stem cell research project formerly led by world-renowned Melbourne scientist Professor Alan Trounson.

The university is examining anomalies in interim findings from the lung regeneration research conducted in its labs with public money, News Limited newspapers say.

Prof Trounson, who was recently appointed to run the world's best-funded stem cell program in the US, was the main investigator of the Monash project. A team of about 13 scientists studied how stem cells might help slow lung disease in cystic fibrosis sufferers.

AND made a clear statement at the end:

Monash University spokesman Tim Mitchell said the investigation into "possible inconsistencies" was continuing.

"There is no suggestion of research misconduct by Prof Trounson," he said.

CIRM seemed to be on top of this issue. CIRM was NOT on top of the Cha duplicate publication issue, failing miserably on due diligence in that area. The grant givers of CIRM may not have been on top of the reality of the Cha proposal, which amounted to human SCNT.

There has not been much coverage of Trounson's role with ESI, somewhat relevant to Trounson's CIRM job in light of the fact that ESI gave up on embryonic stem cell research.

See also

Blog supported re-exam of Amazon '411 achieves initial success

Klingman's US 5,729,594 was one of the patents causing trouble for Amazon in the re-exam of the one-click patent, 5,960,411.

The Register noted that 21 of 26 claims in Amazon's controversial '411 patent for shopping with a single mouse click have been rejected by the US Patent Office in a first Office Action in re-exam, which was initiated by Peter Calveley of Auckland, New Zealand, who filed evidence of prior art with funding from readers of his blog.

Monday, October 15, 2007

Huntsville Times on patent issues

BRIAN LAWSON of the Huntsville Times states that the USPTO has a backlog of 760,000 unexamined patent applications.

Of employment issues:

[John] Doll said the patent office is working harder to retain workers in the first four years, when they are learning the ropes. Doll said the office has found if they can keep the worker for the first four years, they tend to stay on the job.

Patent Examiners receive a 10 percent higher rate of pay than other government employees in the same civil service grade, Doll said, and in the first four years workers are given recruitment and retention bonuses.

Of patent reform:

The Senate has not yet voted on the current patent reform legislation. U.S. Rep. Bud Cramer, D-Huntsville, opposed it in the U.S. House, arguing that it was not in the interests of the Huntsville biotechnology community.

Critics of the measure argue it favors larger entities who are able to get to the patent office faster if the first to file standard is adopted and makes it tougher for smaller inventors to defend their patents against infringement.

Supporters of the measure "first to file" would simplify the patent system and harmonize the U.S. system with other countries. Other changes would limit the scope of litigation and require publishing information, often before patents are secured, and a much larger patent search process would be required before the filing.

SparkIP: vindicating the CAFC decision in Madey v. Duke University?

Rick Merritt notes the launch (on Oct. 16) of the new IP website, sparkip:

A tiny startup will launch tomorrow (Oct. 16) a Web site it wants to build into a central repository for intellectual property and an online meeting place for researchers in any scientific field. The company, formed by senior academics at Duke and Johns Hopkins, officially came out of stealth mode at the Licensing Executive Society meeting here.

Ironically, the founding of sparkip by Rob Clark, dean of the Pratt School of Engineering at Duke [and Kristina Johnson, provost and senior president of academic affairs at John's Hopkins], tends to re-enforce the viewpoint of the majority in the case Madey v. Duke University.

Separately, Dana Blankenhorn at ZDNET got aspects of patent reform quite wrong.

For example: The House passed H.R 1908 last month, 220-175, and the Senate Judiciary Committee approved an identical bill, S. 1145, in July. IPBiz notes that while 1908 and 1145 started out the same, the version of 1908 passed by the House (220-175) is not the same as what was in the Senate in July (or now). For example, there is no longer a "second window" of post-grant review in the House version.


Sen. Dianne Feinstein of California (above) may prove pivotal. In committee she expressed concerns about provisions in the bill to expand the ability to challenge patents after they’re granted, and to limit damages based on a patented invention’s contribution to a final product. These are important provisions for the tech industry.

It will be up to reform supporters like the Coalition for Patent Fairness to turn Feinstein around, but they need to act soon, before Presidential politics makes the legislative process grind to a halt.

Sunday, October 14, 2007

Page 54 of the Poshard Ph.D. thesis: a real problem as to plagiarism

The August 30, 2007 edition of the SIUDE contained side-by-side comparisons of the Poshard Ph.D. thesis to earlier published texts.

One troubling example appears on page 54 of the Ph.D. thesis, which appears in Poshard's "summary" of the prior art, which "summary" one would expect to be in Poshard's own words. Most of the words of the summary on page 54 come from a 1975 book by James Gallagher, which does appear in the bibliography (see page 108 of the thesis), but the words do not appear in quotation marks AND there is no footnote to Gallagher on page 54. Sadly, Poshard copied from a "summary" section of Gallagher's book.

The thesis cites Gallagher's 1975 book at footnote 4 on page 15 of the Poshard Ph.D. thesis. Footnote 36 at page 41 of the Poshard thesis also is directed to Gallagher's book, and appears to be the closest (preceding) footnote to the copied text appearing at page 54. With a gap of 13 pages, no reasonable reader would understand that the text at page 54 derives from Gallagher's 1975 book.

Given that Poshard does acknowledge the 1975 book and copies from it without attribution, this example would likely be one both of plagiarism and of copyright infringement. There would likely not be a credible "independent creation" defense.

The SIU committee report does not get into the details of Poshard's copying Gallagher on page 54 of the thesis. At pages 7-8 of the committee report, the committee ruled out intentional plagiarism based on Poshard's own account presented in a meeting with the committee. The committee does not delve into details. How a "summary" from Gallagher's 1975 book materialized in a "summary" in Poshard's 1984 thesis is not explained. Apart from the copying issue, there is a substantive issue. The thesis is about how things changed between 1977 and 1983 (Poshard Ph.D. thesis, page 4). If the "summary" of the 1984 thesis is copied from a 1975 book, how is the summary capable of addressing changes that happened between 1977 and 1983?


The SIUDE on Oct. 15 (in an article Poshard wants plagiarism procedures) has the following quote:

Gerald Nelms, an English professor, also reviewed the dissertation at Poshard's request and he said none of the 40 "infractions" he found constituted plagiarism.

"I concluded that really there was no evidence of any academic dishonesty whatsoever," he said.

IPBiz invites Professor Nelms to explain why the copying of Gallagher's material on page 54 of the Poshard thesis is not plagiarism. Page 54 of the Poshard thesis contains text copied from an earlier book by Gallagher (which book appears in Poshard's bibliography) which text does not appear in quotation marks (or in indentation)and which page bears no footnote to Gallagher. Further, because page 54 appears in a section summary, which purports to be a summary by the thesis author, the reader would believe the summary to be in the words of the author Poshard. In the absence of an explanation from Nelms, Nelms assertion is not deemed credible.

One can read the Nelms analysis [IPBiz has saved a pdf copy to avoid any possible Sikahema effects]. Nelms never mentions page 54, as far as IPBiz can see. Again, Nelms is invited to comment on the uncited, unblocked, unquoted material on page 54.

See also Our Word: The 'P' word

***Some previous IPBiz posts

Saturday, October 13, 2007

ACGA favors patent reform to protect farmers

A press release by the American Corn Growers Association (ACGA)includes the text:

“Currently farmers are vulnerable to attack from biotech interests
that sue family farmers for allegedly infringing on their patent rights
due to actions that are often beyond their control,” explained Bolin.
“ACGA urges quick passage of legislation that would help level the
playing field for family farmers defending themselves against dubious
claims of patent infringement.”

“Family farmers have been struggling for years against lawsuits that
claim they have willfully infringed on the patents of genetically
modified organisms (GMOs),” added Bolin. “These allegations of
infringement are often unwarranted since farmers in many cases are sued after
their fields are contaminated by pollen that naturally drifts over from
a neighboring field. It has been proven that pollen (including GMOs)
can drift more than five miles, which is impossible for an individual
farmer to block or control in any way. Accordingly, these farmers should
not be accused of ‘willfully’ infringing on the patent of seeds
that naturally cross-pollinated into their fields.”

Bolin continued by stating, “Farmers should not be forced to travel
hundreds of miles to another state to defend themselves against such
allegations. To do so, often to defend themselves against unwarranted
accusations, adds undue and often insurmountable financial stress on their
modest family budgets. Currently the corporate plaintiffs in these
cases often select courts in distant locations that favor them, which
requires family farmers to travel to courts that are not only far away but
also biased against them. The situation that farmers must endure
today is clearly not the intent of the patent system and it should be

IPBiz notes that the ACGA is concerned about issues of willful damages and venue. Post-grant review (opposition) would likely be of no more help to small famers than it would have been to Albie's in the Smucker peanut-butter-and-jelly sandwich case.


Page 183 of the Oct. 12 Science has a news capsule: "Few Clues in Rice Mystery" which notes that genetically modified rice of Bayer CropScience someone got into commercial samples.

Friday, October 12, 2007

GSK goes after Dudas, new rules on continuing applications

PatentHawk has a copy of the GSK complaint against USPTO Director Dudas over the new rules which was filed on October 10, 2007 in ED Va. Kirkland & Ellis are of counsel in the matter.

Part A of the prayer for relief states: maintain the status quo and grant a preliminary and permanent injunction.


Note the Oct. 15 post by Kirsty Barnes titled GSK's disdain is blatant over new rules for patent

IPBiz notes that under the new rules, an applicant may file TWO continuations AND ONE RCE without filing a petition.

Patent reform a farce?

Mike at TechDirt is at it again in a post titled: Patent Reform Battle Descending Into Farce.

Mike quickly gets into sophistry by instantly transmogrifying the text to promote the progress of science and the useful arts into to promote innovation.
Note the IPBiz post Invention vs. Innovation . Mike compounds his error in thinking with the text: very limited monopoly rights solely for the purpose of promoting innovation -- and were only to be handed out in the rarest of circumstances, when it was necessary to promote innovation. Patents are not monopoly rights, and they are about disclosure of inventions, not about promoting innovation.

Mike gets into the canard about the Wright Brothers: It's absolutely laughable that the ad includes the airplane industry, when the Wright Brothers' patents almost destroyed the US airplane industry by holding back innovation and keeping other more innovative firms out of the market. It took the pressure of World War I and the US gov't to finally get around the stranglehold on airplane innovation. The patent pool created by Benton Crisp (the lawyer of Glenn Curtiss) had a huge buy-in fee that killed off small inventors/innovators. The beneficiariaries of the patent pool were (surprise) Glenn Curtiss and the the holders of the interest in the Wright Brothers patent (Wilbur was dead and Orville had sold out by the time of the patent pool). Mike's lack of knowledge of the patent pool is laughable. As for innovation, Curtiss took his money and went into the Florida real estate business.

Mike was likely doing a self-analysis in writing: Various folks throw out complete nonsense without being able to back it up

IP Innovation sues Red Hat, Novell in ED Texas

On October 9, IP Innovation, LLC. and Technology Licensing Corporation filed a patent infringement suit against Red Hat and Novell in the Marshall Office of the Eastern District of Texas federal court (ED Texas, 2:2007cv00447, Leonard Davis presiding judge)

See also

Microsoft, Red Hat, and Linux

Sun-Times: Poshard off the hook

DAVE NEWBART of the Chicago Sun-Times writes of the announcement of the Poshard committee decision:

A committee of seven faculty leaders was appointed by the Carbondale chancellor -- who also works under Poshard -- and they met eight times over the past three weeks. They found nearly 40 instances of citation errors or other problems in the paper.

The committee found no specific style was required by the SIU Department of Higher Education, where he studied at the time. Instead, Poshard used an "informal style'' used by other graduate students then.

But there also were "many instances in the dissertation where the words of others are present in a continuous flow with student Poshard's own words, so that readers cannot distinguish between those sources," the report states. The instances of unquoted and uncited texts are "pervasive" and "significant," it said.

In an interview with the committee, Poshard said he couldn't recall "hearing instruction on the meaning of plagiarism'' but simply thought it was intentionally stealing others' work. The committee found there was no definition of plagiarism in the graduate student handbook at the time.

Newbart's text brings up the concept of "inadvertent (unintentional?)plagiarism":

A committee of faculty leaders at SIU announced Thursday [Oct. 11] that the university's top official committed "inadvertent plagiarism" in his doctoral dissertation, which he wrote as a student at SIU in 1984. The paper therefore needs to be corrected, but he will remain the university's top official and face no further repercussions.

IPBiz has previously noted a well-publicized student plagiarism incident at Princeton University in 1981, three years before Poshard's thesis. The resultant court case established that appropropriate student conduct on citation and a definition of plagiarism were fully articulated in the student handbook.

IPBiz notes that, in the patent business, ignorance of what's in the prior art is no defense to copying the prior art, intentionally or unintentionally.

The report of the committee is available on the internet. One irony is that the committee, in recommending an update of Poshard's thesis, states that the corrections should be consistent with the Turabian style, style that was disclosed in 1973 (Kate L. Turabian, Univ. Chicago Press, 1973). The committee noted that Turabian did not define plagiarism but did provide information on how to cite properly. There is discussion of a letter from Bruce Swinburne.

IPBiz finds it a bit scary that Poshard considered the literature review chapter the most important chapter.

The report states that the entire thesis is available electronically.

Thursday, October 11, 2007

USPTO on fate of TSM test in obviousness: identify the reason

Of the impact of KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727, 167 L. Ed. 2d 705, 82 USPQ2d 1385 (2007) on the TSM test, the USPTO says:

The Guidelines also note that patent examiners must continue to explain the reasoning that leads to a legal conclusion of obviousness when rejecting claims on that ground. The reasoning may still include the established Court of Appeals for the Federal Circuit standard that a claimed invention may be obvious if the examiner identifies a prior art teaching, suggestion, or motivation (TSM) to make it. However, in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious.

IPBiz notes that the "identify the reason" requirement is consistent with an early pronouncement of the USPTO on KSR:

[I]n formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, it remains necessary to identify the reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.

In the post
Was the TSM test rejected as a prerequisite for finding obviousness?
, Chief Judge Paul Michel of the CAFC was quoted as saying that under his reading of the opinion, the teaching, suggestion, or motivation test remains part of the calculation of obviousness. HOWEVER, the USPTO text: in keeping with the KSR decision, the Guidelines explain that there is no requirement that patent examiners use the TSM approach in order to make a proper obviousness rejection. Furthermore, the Guidelines point out that even if the TSM approach cannot be applied to a claimed invention, that invention may still be found obvious suggests TSM need not be part of the calculation of obviousness.

A comment by Rick at fireofgenius in May 2007 stated:

Barclay says the SCOTUS “abolished the TSM test” and Bromberg describes the KSR decision as “sweeping away” the TSM test. But Zura says “the SCOTUS has whittled back” the TSM test. And Albainy-Jenei states that “while the Supreme Court knocked” the TSM test “down a notch, it didn’t reject it outright.” At the other end of the spectrum, Mandel writes that the court’s “decision itself appears to leave the TSM requirement roughly intact .”

As if it were not plain enough from the murkiness of the opinion itself, the diversity of views of these experts makes clear that the KSR decision, while providing specific analysis of the controversy before it, is vague and full of dicta regarding the details of the obviousness analysis more generally. As Mandel notes, I think correctly, “the contours of how to apply KSR will have to be worked out by the Patent Office, district courts, and the Federal Circuit.”

In the post-KSR CAFC decision in Takeda, one has:

That test for prima facie obviousness for chemical compounds is consistent with the legal principles enunciated in KSR. While the KSR Court rejected a rigid application of the teaching, suggestion, or motivation (“TSM”) test in an obviousness inquiry, the Court acknowledged the importance of identifying “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does” in an obviousness determination. KSR, 127 S. Ct. at 1731. Moreover, the Court indicated that there is “no necessary inconsistency between the idea underlying the TSM test and the Graham analysis.” Id. As long as the test is not applied as a “rigid and mandatory” formula, that test can provide “helpful insight” to an obviousness inquiry. Id. Thus, in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.

See also other posts on IPBiz:

Do the published applications of 2001 tell us about patent grant rate? and
John Doll on state of the patent system

New development in plagiarism matter related to Cha and CIRM

Further to the duplicate publication matter involving a paper in Fertility & Sterility of which K.Y. Cha was an author, JeongHwan Kim (the author of the original thesis and of the first paper, in Korean, in KJOG) informs IPBiz that SH Lee, who submitted the duplicate publication to the American journal Fertility & Sterility, has been sentenced to a six month prison term (with a stay of one year) in South Korea. [This report is subject to confirmation.]

Of interest to American readers, the Korean court requested Fertility & Sterility
to present the first manuscript (of great relevance to whether or not Kim was a named author) but Fertility & Sterility declined, saying they did not have the manuscript. This would be very unusual practice for a journal not to keep a manuscript (or copy thereof), as the manuscript was initially submitted; it would be like the Patent Office not keeping a copy of a patent application as it was filed.

The journal Fertility & Sterility withdrew earlier charges of plagiarism and of perjury.

Separately, see bioedge 269

included is Hillary Clinton describing Bush's limits on funding for embryonic stem cell research a "ban on hope".

Within the link is a discussion of something that well may be a use for embryonic stem cells:

Three leading European pharmaceutical companies have teamed up with the British government to investigate the usefulness of embryonic stem cells for drug testing. GlaxoSmithKline, AstraZeneca and Roche have each contributed £100,000 and the government £750,000 to form a consortium. This body will develop effective ways of using human embryonic stem cells to screen for potentially lethal side effects of new drugs before they are used in clinical trials. Other companies are expected to join the initiative soon. It is called Stem Cells for Safer Medicines Ltd.

Also within is the text:

Science has a serious marketing problem, Google co-founder Larry Page told scientists earlier this year. He even suggested that the solution was tying tenure and grants to the media impact of research. Without going this far, communications expert Matthew C. Nisbet, of American University, has created a stir amongst US scientists by urging them to "frame" their messages so that the public will buy them.

"If scientists don't evolve in their strategies, they will essentially be waving a white flag, surrendering their important role as communicators," he writes in the magazine The Scientist. In recent times, sailing has not always been smooth in areas like evolution, plant biotechnology, nanotechnology, and climate change.

Invention vs. Innovation

IPFrontline currently has a piece by Ogan Gurel titled Innovation and Invention - Similar Words, Different Concepts, which notes

One of the greatest examples of innovation and a case study for how to foster innovation and accelerate development was the IBM PC. As an innovation that changed the nature of the computer industry and society, most will not doubt the innovation and significance of the IBM PC. The history of this is nicely summarized by Tom Hormby.

However, it may not surprise you that the IBM PC at that time did not contain any new inventions. What may surprise you is that the IBM team – under pressure to complete the project in less than 18 months – was under explicit instructions not to invent anything new.

In an earlier piece on IPFrontline, LBE had written:

The patent system is designed to provide incentives to inventors to disclose publicly inventions which are useful, novel, and non-obvious, thereby enhancing the public storehouse of knowledge and hopefully accelerating the rate of improvements to our lives. The deal between the public and the inventor is the exchange of information in return for a right to exclude for a finite time.

One has to focus on the fact that the patent system is about disclosure of inventions. Although such disclosure may impact innovation, invention and innovation are not the same thing. One looks at various comments distinguishing the two.

Edward B. Roberts: The first generalization is: innovation = invention + exploitation. The invention process covers all efforts aimed at creating new ideas and getting them to work. The exploitation process includes all stages of commercial development, application, and transfer.

Peter F. Drucker: Its [innovation's] criterion is not science or technology, but a change in the economic or social environment, a change in the behavior of people as consumers or producers. Innovation creates new wealth or new potential for action rather than mere knowledge.

Gifford Pinchot III: When an invention is done, the second half of innovation begins: turning the idea into a business success.

One will note that Jaffe and Lerner speak of the "innovation wars" and the "rate of innovation," rather than of invention. One has to keep one's eye on the ball. We want a patent system that gives patents to those who have disclosed inventions which are useful, novel, and nonobvious. If the requirements are met, the inventor gets a right to exclude, and enters the free market. The patent system has done its job.

Separately, in 88 JPTOS 1068:

In the book "The Innovator's Dilemma: When New Technologies Cause Great Firms to Fail," Harvard professor Clayton M. Christensen does not once use the word patent. "Technology" as defined by Christensen means the processes by which an organization transforms labor, capital, materials, and information into products and services of greater value. Innovation is a change in technology.

Vonage seeks en banc CAFC review of Verizon decision

After settling with Sprint-Nextel, Vonage is now seeking en banc review of an unfavorable CAFC decision in the Verizon matter. Lots of luck ...

Poshard: unintentional plagiarism?

A report by the SIUDE on Oct. 11 begins: The committee reviewing plagiarism charges against SIU President Glenn Poshard submitted a 10-page report detailing its findings to the chancellor's office Wednesday [Oct. 10].

Significant text in the report:

Worrells would not comment on what the committee found but said the group spent a significant amount of time looking through SIUC's 1984 graduate catalog as well as writing style manuals from the time period.

The group also spent time discussing unintentional plagiarism, he said.

"That particular phrase got a lot of attention," he said.

The concept of unintentional plagiarism is relevant to the manner in which the Laurence Tribe matter at the Harvard Law School was handled. Different people have different viewpoints on unintentional plagiarism.

The SIUDE indicates that the results of the committee report will be released at a press conference today [Oct. 11]. IPBiz predicts an outcome similar to that in the Tribe matter. Poshard will remain as president.

In a separate editorial, the SIUDE writes: The best-case scenario the seven-person, internal committee charged with reviewing its boss's dissertation could present is that an entity outside of SIU's (Poshard's) jurisdiction takes the reigns of this investigation. IPBiz predicts that that will not happen.

IPBiz notes that on Oct. 11, the University of Maryland student newspaper ran an opinion piece titled Increased encouragement of academic honesty cannot come at the expense of false accusations of plagiarism. IPBiz notes that the "facts" of what was copied (and not attributed) in cases involving accusations of plagiarism are usually pretty clear. The uncertainty resides in the intent. In the area of copyright (which is NOT the same as plagiarism), the accuser has to prove access to the copied work, unless the copied material is SO similar to the original work that access can be inferred.

Separately, in the matter of Glenn Austin, the Press-Register reported: [O]n Jan. 30 WKRG News Director Dan Cates issued a statement about the termination on the air and at "WKRG and its parent company, Media General, has zero tolerance for plagiarism..."

In passing, note Plagiarism facts not easily separated from opinions, another unusual opinion piece in the Southern Illinoisan. IPBiz suggests plagiarism "facts" are easily separated from opinions. Intent, on the other hand, ...

Wednesday, October 10, 2007

The broken patent system of Alex Chachkes: fact or fiction?

Alex Chachkes, a registered patent attorney, wrote an opinion piece, Fixing a broken patent system, which begins: A patent is a powerful thing: it's a legal monopoly on an invention for up to 20 years. Of course, patents are rights-to-exclude, not monopolies, as demonstrated for example in the radio patent wars.

Chachkes writes: By rewarding innovation, they created an incentive for inventors to invent more. Patents don't reward innovation; they promote public disclosure of invention: the inventor gets a right to exclude for a period of time and the public gets useful information. Most issued patents do not lead to innovation, much less reward innovation.

Chachkes writes of the NTP patents: I write unremarkable because they disclosed a technology nobody would buy on the open market. IPBiz notes that for years and years, no one would deal with Chester Carlson's xerography. IBM turned down Carlson three times.

Chachkes writes of silly patents: Or perhaps it is because an overworked Patent Office has issued plenty of patents that never should have been. How about Patent No. 5,443,036--a method of exercising a cat with a laser pointer? Or Patent No. 6,960,975--an antigravity perpetual-motion device that defies the laws of physics? Chachkes missed the standard "peanut butter and jelly" and swing patents, but he also missed IBM's "queue for airplane toilet" patent and "outsourcing" application.

Chachkes writes of continuation abuse: Then, in the interim, if anyone creates a new product in the same technology space, you try to draft a new continuation claim to cover it. Never mind that you never envisioned that product. IPBiz notes that it is irrelevant whether the patentee envisioned a given product. What is relevant is whether the patentee has written description support for a patent claim covering the product. If so, the patentee would have a rightful claim.

Chachkes writes of the Eastern District of Texas: Companies often settle for princely sums rather than have a jury predisposed against big corporations, and with no technical knowledge, decide their financial future. Chachkes might note some big companies who have been PLAINTIFFS in ED Tex.

Chachkes concludes: Of course, now there are loud voices complaining that the pendulum is swinging too far against patent holders. If that's the case, we can look forward to another round of equal but opposite reactions, and I can look forward to another column in CNET's Perspectives section.

**Of Dave's comments below.

#1. It is true that the Supreme Court has sometimes referred to patents as conferring monopolies. Just because the Supreme Court makes such remarks in dicta does not mean that patents do confer monopolies. A right to exclude others is not a right to make. The Supreme Court was well aware of this during the radio patent wars.

#2. What the patent statute does is self-evident. In return for a certain type of disclosure, which is made available to the public, a patent holder gets a right to exclude for a certain finite period of time. There is not now, nor has there ever been, a requirement that a patent be shown to be an innovation. The US patent statute now, just like the Venetian statute in 1474, is to encourage folks with ideas to come forward and make them public known, without concern that someone will just steal them. Arguably, innovation might proceed faster (for a while) if the bigger guy could steal ideas. But after a while no little guys would come forward, and the big guys would merely be trying to sell their old stuff, again and again.

General principles of the new rules on continuing applications

From a USPTO PowerPoint to USPTO employees on the new rules:

The USPTO presents four general principles of the new rules-->

#1. Each application, or any group co-pending of “indistinct applications” to one invention, is subject to 5/25 claims requirement.
#2. Expect more serial (not parallel) prosecution on same invention.
#3. Requirements of two CON/CIP applications and 1 RCE reduces opportunities for extended prosecution on the same invention. But, petition available for additional CON/CIP and RCE.
#4. Applicants have a new requirement regarding identifying applications with potentially patentably indistinct claims.

Information on the Final Rule is available on the USPTO website at:

Should you or any USPTO employee receive any questions on the Final Rule from applicants, please refer them to or have them call 571-272-7704.

--> Limitations on continuing applications appear in Rules 1.78 & 1.114

--> Of limitations on claims (Rule 1.75):

The claims in each application may not exceed 5 independent claims or 25 total claims absent the applicant assisting the examination process through the filing of an Examination Support Document (ESD).

--> Of co-pending applications:

The applicant must identify other commonly owned pending applications or patents that: (1) have a claimed filing or priority date within two months of the claimed filing or priority date of the application; and (2) name at least one inventor in common with the application. In addition, for those applications that have the same claimed filing or priority date and substantial overlapping disclosures, the applicant must also file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims.

--> Rule 1.78(d)

If applicant presents a benefit claim that is not permitted by § 1.78(d)(1):
The Office will refuse to enter the improper benefit claim and refuse the benefit of the filing date of the prior-filed application.
The application will be treated as entitled only to the actual filing date and will be subject to prior art based on the actual filing date of the application.
For example, if the prior-filed application is published more than 1 year prior to the actual filing date of the application, the publication can be used as prior art under 35 USC 102(b).

--> As to a petition for more than 2 cons/ 1 RCE

Applicant may file a third or subsequent CON or CIP application or a second or subsequent RCE if applicant files:
A petition in compliance with § 1.78(d)(1)(vi) or 1.114(g);
The petition fee set forth in § 1.17(f);
An amendment, argument, or evidence; and
A showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application, or prior to the close of prosecution in the application.

--> Suggested requirement for restriction (SRR)

If an application contains claims to more than one inventions, applicants may file a suggested requirement for restriction (SRR) under § 1.142(c).
An SRR must be:
Accompanied by an election without traverse of an invention to which there are no more than 5/25 claims, identifying the elected claims; and
Filed before the earlier of a FAOM (first action on merits) or restriction requirement.
If the SRR is accepted, applicant will be notified in an Office action that contains a restriction requirement.

--> If no FAOM before Nov. 1, 2007 and MORE THAN 5/25:

For applications in which a FAOM was not mailed before November 1, 2007 and that contain more than 5/25 claims without an ESD:
The notice will set a two-month time period that is extendable under § 1.136(a), up to maximum of six months.
To avoid abandonment, applicant must:
File a SRR;
File an ESD in compliance with § 1.265; or
Amend the application to contain no more than 5/25 claims.

-->Patentably indistinct claim in multiple applications (37 CFR 1.75(b)(4) )

For commonly owned applications containing at least one patentably indistinct claim (that is not a withdrawn claim),

The Office will treat each application as having the total number of claims present in all of the applications (and not just the claim that is patentably indistinct), for the purposes of determining whether each application exceeds the 5/25 claim threshold.

For example, applications “A” and “B” are commonly owned and each contains 3/20 claims.
If application “A” contains a claim that is patentably indistinct from the claims in application “B”,
The Office will treat each application as having 6/40 claims.
In response to a notice under § 1.75(b), applicant must:
Cancel the patentably indistinct claim(s) from all but one application;
File an ESD before FAOM in applications “A” and “B”; or
Amend the application(s) such that both applications taken together contain no more than 5/25 claims.

--> Examination support document [ESD, 37 CFR 1.265 ]

An ESD must include:
A preexamination search statement;
Listing of references deemed most closely related to the subject matter of each claim;
Identification of claim limitations disclosed by each reference;
Detailed explanation of patentability; and
Showing of support under 35 USC 112, ¶ 1.

--> Identification of commonly owned applications (37 CFR 1.78(f)(1)(i) )

For example, if application “A” and application “B” are commonly owned, have at least one common inventor, and claim the benefit of the same prior-filed nonprovisional application,

Applicant for application “A” must identify application “B”; and
Applicant for application “B” must identify application “A”.

--> Rebuttable presumption (37 CFR 1.78(f)(2)(i) )

A rebuttable presumption will exist that the application and the other commonly owned application(s) or patent(s) contain at least one patentably indistinct claim,
If the other application or patent has:
An inventor in common with the application;
A claimed filing or priority date that is the same as the claimed filing or priority date of the application; and
Substantial overlapping disclosure with the application.
Substantial overlapping disclosure exists if the other application or patent has support for at least one claim in the application.

If the rebuttable presumption under § 1.78(f)(2) exists, applicant must either:

Rebut the presumption by explaining how the application contains only patentably distinct claims; or
Submit a terminal disclaimer.

If the other application is pending, applicant must also explain why there are two or more pending applications which contain patentably indistinct claims.

--> Final rejection on first office action (72 Fed. Reg. 46722)

The Office proposed to eliminate first action final practice when it proposed allowing an applicant to file one CON/CIP or one RCE.
Since the Office is not implementing that threshold, the Office is retaining the first action final rejection practice in a continuing application or after an RCE.
Applicants may guard against a first action final rejection by seeking entry of the amendment, argument, or new evidence after final rejection under § 1.116.

--> Rules on making final rejections in second or later action

A second or subsequent Office action may be made final, except when the action contains a new ground of rejection that is not:
Necessitated by an amendment of the claims, including an amendment to eliminate unpatentable alternatives;
Based on an IDS filed after a FAOM with the fee;
Based upon a double patenting rejection;
Necessitated by an identification of claims in a CIP application that is supported by a prior-filed application; or
Necessitated by a showing that a claim element is a means- (or step-) plus-function claim element.

--> Filing before November 1, 2007

The rule changes to continuing application practice under § 1.78(a) and § 1.78(d) are applicable to:
Applications* filed on or after November 1, 2007; and
Applications entering the national stage on or after November 1, 2007.
Applicant may file “one more” continuing application, without a petition and showing, for:
Applications* filed before August 21, 2007; and
Applications entering the national stage before August 21, 2007.

Applicant may not file an extra (i.e., third) continuation or CIP application on or after November 1, 2007, without a petition and showing if applicant filed fewer than two continuation or CIP applications before August 21, 2007.

The rule changes to examination of claims practice under § 1.75 are applicable to:
Applications* filed on or after November 1, 2007;
Applications entering the national stage on or after November 1, 2007; and
Applications* in which a FAOM was not mailed before November 1, 2007.
For example, applicant is required to file an ESD in an application that contains more than 5/25 claims if a FAOM was not mailed before November 1, 2007.

The rule changes to § 1.78(f) are applicable to:
Applications pending on or after November 1, 2007.

For applications filed before November 1, 2007,
Applicant must comply with the requirements under §§1.78(f)(1) and 1.78(f)(2):
Within the time periods set forth in §§ 1.78(f)(1) and 1.78(f)(2); or
By February 1, 2008, whichever is later.

Patent docs has some updates on the rules.

Tuesday, October 09, 2007

More on the GAO report on the USPTO

KC Jones of InformationWeek covers the GAO report on hiring practices at the USPTO:

POPA president Robert Budens agrees.

"The USPTO can hire people, it just can't keep them," he said in a prepared statement. "The agency says that it can't hire its way out of the backlog to justify many of its ill-conceived reforms. But it would in fact be able to cut the backlog if it could keep the employees it hires, and the GAO's study shows that the patent office can do that by giving examiners the time and tools they need."

The GAO study noted that from 2002 through 2006, one patent examiner left the Patent and Trademark Office for nearly every two hired.

Next, POPA will push for Congress to pass a law requiring examiners' deadlines to be based a formula that weighs average application fees and examiners' hourly pay.

The blog just n examiner noted:

The Washington Post also commented on the report today.

The most important part of this report to examiners is the answer to question (2). The report makes the following points:

Attrition is a Problem

"Although USPTO hired 3,672 patent examiners from the beginning of fiscal year 2002 through fiscal year 2006, the patent examination workforce increased by only 1,644 because 2,028 patent examiners either left the agency or moved to other positions."

The Loss of Newer Examiners is a Particular Problem

"The attrition of patent examiners who were at the agency for less than 5 years is a significant loss for USPTO for a variety of reasons. First, because these less experienced patent examiners are primarily responsible for making the initial decision on patent applications, which is the triggering event that removes applications from the backlog, attrition of these staff affects USPTO’s ability to reduce the patent application backlog. Second, because patent examiners require 4 to 6 years of on-the-job experience before they become fully proficient in conducting patent application reviews, when these staff leave USPTO the agency loses as much as 5 years of training investment in them. Third, the continuous churning of so many new patent examiners makes the overall workforce less experienced."

Management Thinks Examiners Leave for Personal Reasons

"According to USPTO management, personal reasons are the primary reasons that cause patent examiners to leave the agency. Some of these reasons include the following:
• The nature of the work at USPTO does not fit with the preferred working styles of some patent examiners such as those with engineering degrees who are looking for more “hands-on” experiences.
• Many patent examiners enter the workforce directly out of college and are looking to add USPTO to their résumés and move on to another job elsewhere rather than build a career at the agency, otherwise known as the “millennial problem.”
• Patent examiners may choose to leave the area, as opposed to choosing to leave the agency, because their spouse transfers to a position outside of the Washington, D.C., area; the cost of living is too high; or the competition is too high for entry into the Washington, D.C., area graduate and postgraduate programs for those patent examiners who would like to pursue higher education."


Current Examiners Would Leave the Office Due to the Stress of Production Requirements


Management agreed that reevaluating production standards would be a good idea. Nowhere in either the report or in the press release, do they agree that production standards should be reevaluated in order to help prevent examiner attrition (which would entail allowing examiners more time).

This means that a not-entirely-unlikely scenario would be for the Office to conclude that the efficiency gains from the new initiatives are so great that production standards should be increased.

This is scary stuff. I just hope that POPA has got our backs.

Microsoft, Red Hat, and Linux

ZDNet reports on the latest Microsoft salvo in the Linux wars (here directed at Red Hat):

Ballmer’s latest tirade was aimed specifically at Red Hat, which is the leader in enterprise Linux and just reported another strong result. If you can stand some registration headaches, a video of his talk is here.

This does not mean Microsoft is about to call in the lawyers. The relevant quote is “People who use Red Hat, at least with respect to our intellectual property, in a sense have an obligation to compensate us.” (The italics are mine.) As in, it would be nice if they did.

There are a few ways this could go. Microsoft could send letters to Red Hat Enterprise Linux customers asking that they pay it not to sue. Or it could simply wait for another patent holder, say Eolas, to file the suit. After all, Eolas beat Microsoft out of $521 million in August.

In Oct. 2007, ZDNet cites to a June 2007 post on VNUNet (Microsoft to fight Eolas patent again), even though Microsoft settled with Eolas in August 2007. IT people have a real problem with the Eolas matter, and one notes the terms of the August 07 settlement are confidential.


Of the comment below, the commenter failed to understand that the link to the zdnet article was right in the title to this post. Separately, the June 2007 article is a link to vnunet.

Gradfinder: alternative to

For those interested, gradfinder is a useful alternative to gradfinder even allows posting of high school yearbooks.

Note also which notes:

There are various reasons why you might need to search for people, you may need to find a lost relative, an old flame, a classmate or a business contact - but if you are using a search engine such as Google or Yahoo to search for people, you have probably realized by now that it might work in some cases but in most cases it won't.

How come the best search engines fail so miserably when it comes to people search? The answer lies in a little known but very important part of the web called "the deep web".

Also known as "invisible web", the term "deep web" refers to a vast repository of underlying content, such as documents in online databases that general-purpose web crawlers cannot reach. The deep web content is estimated at 500 times that of the surface web, yet has remained mostly untapped due to the limitations of traditional search engines.

Since most personal profiles, public records and other people-related documents are stored in databases and not on static web pages, most of the higher-quality information about people is simply "invisible" to a regular search engine.

**Of yearbooks: