http://www.patentlyo.com/patent/2009/04/challenging-the-strong-presumpition-of-patent-validity.html

-Gene

I leaped then looked. With the additional comments by yourself and Gene, my assumption comes to light. I assumed that any patent in question is a proper patent, one vetted appropriately in the Law. If you are using patents not in this class, I would say we are discussing two different problems.

My answer then would be to fix the primary problem – do not allow patents that should not be allowed. I care not what the cause of the problem is – fix it (well, actually I care very much). My mantra long has been that the Office should focus on providing patents with the law as they have it, not spending so much time, energy and money on their power-grabbing change-the-law agendas. If the procedure in place only allows 12 hours to vette a patent and that’s not enough – change the procedure.

Don’t burn down the house to get a piece of toast. Patents have power precisely because they have a presumption of validity. Remove the presumption and you might as well use a registration system and not bother spending any time at all examing patents. The presumption carries power through more than just the immediate legal system – think of the financing aspects for one. I still think you are throwing away the baby and keeping the bath water.

Further, there are other methods available to root out bad patents. I simply cannot see reasoning that states IC charges are a legitimate tool for attacking bad patents and stating the problem as the patent. The IC issue needs to be dealt with straight on. To use IC for any other agenda, no matter how appealing the end result, is simply not acceptable.

Returning for one last comment on the assumption of validity, one only need to look at and compare actual IC findings and findings of “bad” patents to clearly see the two concepts are distinct and should not be conflated.

Having defended against troll suits I’ve seen first hand how crazy broad claim interpretations are made with threats of ruinous litigation costs if they aren’t paid off immediately.

And, yes, I am pushing for a change in 35 USC to eliminate the presumption of validity. Please tell me why we should presume an examiner, having less than 20 hours to examine a case should be assumed to have done a better job than the searcher given unlimited time and resources.

Please note that I did NOT endorse the practice of almost always pleading IC. I only noted that it happens and why.

I don’t always agree with Alan, but I don’t think he has an ulterior motive.

I am intrigued by Alan’s comment myself. I have written in the past that we should do away with the presumption of validity and move to a preponderance standard. When the PTO spends 12 hours per application how can we live with the fiction that the patent should be presumed valid? I would rather move away from every patent being treated like it is thoroughly vetted, because they are not. I also wonder whether moving away from the presumption would matter. Does anyone believe that juries and judges apply the presumption anyway? I know the cases give lip service to “clear and convincing” standard, but isn’t the decision really de novo in practice?

I do think inequitable conduct is a problem, but because the Federal Circuit won’t follow the PTO. Kingsdown was right. Intent actually means… well.. intent. Nothing else. Materiality means that it had to affect the outcome or at least be the basis for a good rejection, not that a reasonable examiner would have wanted to see it. The PTO changed 37 CRF 1.56 away from the reasonable examiner standard in 1992, and that was valid rulemaking. Based on the GSK/Tafas decision it would seem that the PTO gets to decide procedure, unless the Federal Circuit is affected by the PTO rulemaking in which case they simply ignore the PTo and do what they want.

-Gene

That’s like keeping the dirty bath water and throwing out the clean baby.

It is incredulous that you find no fault in the inappropriate use of IC and in fact seem to sanction such scandalous use because you (without seeming merit) believe that patents should not have a presumption of validity. On what basis can you logically and legally void the presumption? This smacks of an ulterior motive or other baseless attack on the Patent System. Your quick reference to ‘trolls’ makes me think that you represent the Coalition of Patent Fairness.

The reason IC is pled and attempted to be shown in so many cases is as a back door way to strenghen the 102/103 invalidity case to the jury. If the jury thinks that there was something bad going on at the PTO, they are more likely to accept invalidating prior art.

The fault does not lie in the IC standard. The fault lies in the presumption of validity and the need to prove invalidity by clear and convincing evidence.

I’d gladly trade a complete elimination of IC for elimination of the presumption and a preponderence of the evidence standard for validity. Bet the trolls won’t agree.

–Chris

Giant Red Flag went up when I read this – enough to prompt me to post, as I usually don’t since we tend to agree on most of your posts. Do you really want the PTO dictating to the Federal Circuit, especially given how many times over the years the Federal Circuit has to smack down the overly ambitious PTO? Don’t you think that the PTO is already too power-hungry?

Thanks very much for your responses. Some further comments:

1. I believe you may actually be referring to the 1977 version of Rule 56 (the “reasonable examiner” test) as being based on SEC law. See 42 Fed. Reg. 5588, 5589 (Jan. 28, 1977). I don’t believe the 1992 revisions to Rule 56 were similarly derived.

2. The Federal Circuit did not address the applicability of Rule 9(b) until 2003, when it indicated its applicability to inequitable conduct in dicta in Ferguson Beauregard/Logic Controls, Division of Dover Resources, Inc. v. Mega Systems, LLC, 350 F.3d 1327, 1344 (Fed. Cir. 2003). In 2007, the Federal Circuit squarely ruled that Rule 9(b)’s heightened pleading standard governs inequitable conduct. Central Admixture Pharm. Servs., Inc. v. Adv. Cardiac Solutions, P.C., 482 F.3d 1347, 1356-1357 (Fed. Cir. 2007) (affirming dismissal of inequitable conduct pleading due to insufficient particularity).

6. I share your perception that there’s a paucity of such cases, and would be interested to see data. But assuming the perception is correct, how much is due to fixable doctrinal roadblocks, and how much is due to the unwillingness of a patentee (who has generally by then either won or lost on the merits of infringement and validity issues) to pursue a remedy for a frivolous IC defense?