What is the point of examination if patents are not presumed valid?

By Gene Quinn
March 29, 2016

pointlessIf you get a patent that won’t make anyone any money, including yourself, the government seems perfectly willing to presume that your worthless patent is valid. However, if you get a commercially valuable patent covering an invention that becomes ubiquitous, the government will not presume your patent to be valid. To call that backward doesn’t begin to scratch the surface, but that is where we find ourselves today.

The Patent Office will tell you that patents have never been presumed valid when they return to the Office for review, so they simply shouldn’t be considered valid when challenged in an administrative trial. What they conveniently leave out, however, is that prior to the creation of the Patent Trial and Appeal Board (PTAB), when a patent returned to the Office for further consideration an examination occurred, not a litigious challenge. The post grant procedures are substitutes for litigation in federal court, yet the Patent Office applies examination standards while nearly universally refusing to allow patent owners the ability to amend their patents.

In short, when creating the administrative trial proceedings the Patent Office created a mongrel mixture of examination and litigation, taking the elements of examination that are least favorable to the applicant and the elements of litigation that are least favorable to patent owner. What you get is an extraordinarily speedy trial with limited procedural rights commonly associated with trials in federal court, but you also get the burdens and standards associated with a patent examination procedure but without any of the rights. Whether the original intent was to railroad patent owners is no longer relevant – that is what has transpired.

Not giving patent owners the right to amend patent claims is particularly instructive. The inability to amend patent claims isn’t fair and doesn’t comply with the statute. For example, 35 U.S.C. 316(d) specifically gives the patent owner the right to “file 1 motion to amend the patent…” Indeed, ignoring the straightforward language of the statute has become a recurring theme at the PTAB. In fairness, in this case the PTAB will tell you they are not ignoring the statute, they do give patent owners the right to file a single motion to amend, which they then nearly universally deny. This intentional misinterpretation of the statute and open disregard for the clear terms of the legislative history has alarmed many within the industry.

Sadly, rather than operate as a check on this unfettered executive power, the United States Court of Appeals for the Federal Circuit has largely been a rubber stamp on the interpretations from the PTAB. The Supreme Court will soon step into this fray in Cuozzo Speed Technologies v. Lee. See Supreme Court Accepts Cuozzo. Regardless of the outcome of that case, which will be decided sometime before the end of June 2016, given the Federal Circuit’s abdication of oversight one can only anticipate that there will be many more opportunities for the Supreme Court to weigh in on PTAB practices and procedures in the coming years.

But why did the Patent Office adopt rules of procedure that were slanted so noticeably toward the challenger and against the property owner who is supposed to own a patent that is presumed valid? Why have PTAB interpretations of the rules and PTAB decisions lead to such obvious procedural unfairness that even a first year law student would notice the obvious lack of due process?

The answers are easy, although hardly satisfying. The Patent Office has only 12 months to complete these reviews so corners have been cut in order for the administrative proceedings to be conducted in lighting-like expedited fashion. Of course, lightening-like proceedings are not always associated with conventional notions of substantial justice and fair play. This is perhaps best exemplified by the PTAB ruling you have a right to file motions but that any and all motions can be denied, even if authorized by rule.

The one rule that doesn’t seem to fit with the speed-at-all-costs modus operandi employed by the Patent Office is the failure to presume issued patents are valid as required by 35 U.S.C. 282. Given the necessity of conducting these proceedings so quickly you might be inclined to think the Patent Office would have erred on the side of supporting the decision previously reached, which would make sense and comply with the statute. You would, however, be wrong.

Those that support the Patent Office rules and PTAB interpretations will tell you that the standards applied are not outcome determinative. Whether patents are presumed valid is also irrelevant, apparently. Likewise, also irrelevant is whether the PTAB applies the district court standard for claim construction or the broadest reasonable interpretation standard applied during examination. It is conceivable that newly discovered prior art could create a problem for a particular patent claim such that the standard applied would not matter, but to say or suggest that it would never matter seems extraordinarily convenient, and not entirely accurate.

Of course, if the standard applied is not outcome determinative, what is the harm in presuming patents are valid like the statute demands? Not only would patents being presumed valid actually comply with the statute, but if the Patent Office actually presumed the patent examiner was correct and placed the burden on the challenger the Patent Office would save itself from the backlash of an anxious industry of patent owners who feel the Office is engaging in a game of bait-and-switch that grants patent applicants a patent after a long, arduous and costly patent prosecution only to have those that are commercially viable challenged in post grant proceedings where none of the work previously done is assumed to be correct.

What exactly was the point of the long, costly and arduous patent examination in the first place if the PTAB simply refuses to apply the presumption of validity? The patent examination process easily takes 4-5 years under the best of circumstances, but in many technology areas the examination process can and routinely does last for more than a decade. What good is an examination process that ends with a patent that isn’t presumed valid by the agency that granted it in the first place? If the Patent Office refuses to presume the work product of patent examiners is solid why should anyone else? What an incredible waste of time and money.

Without substantial reforms to either the patent examination process or to post grant administrative proceedings the Patent Office will create lasting damage to the U.S. patent system. We can only hope that damage won’t be irreparable.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 74 Comments comments.

  1. Stephan Curry March 29, 2016 12:15 pm

    Can anyone please say here, who is the person who advocated for implementing these PTAB administrative trial proceedings into the USPTO?
    Who is this wise guy or wise gal who is the Culprit?

    It seems this person thought that this EPO-style procedure will fit into the US patent system just fine, but we are now seeing terrible Unintended Consequences.

  2. Stephan Curry March 29, 2016 12:25 pm

    At least in the EPO post-grant challenge proceedings, an Applicant can amend the claims. In the USPTO, the claims are just ruled invalid.

    The Supreme Court Justices should read this great article by Gene so that the Justices are well informed when they hear the Cuozzo case.

  3. Jim Ruttler March 29, 2016 12:47 pm

    It makes you wonder whether the USPTO has liability to an inventor/applicant in the situation where fees are accepted for examination/issuance only to have the resultant patent invalidated by the same granting authority. At a minimum, the USPTO should be required to refund the fees accepted, which can be many thousands of dollars.

  4. JNG March 29, 2016 1:31 pm

    Gene – I thought you were going to talk about the recent trend in the D Cts to pronounce that they are NOT going to give a presumption of validity under 101 to any patent. This nonsense was started by a dreadful concurring opinion by Mayer of the CAFC, and has been picked up by several opportunistic courts who want to get rid of patents. In that instance, if the PTO’s administrative examination is to be afforded no weight post issuance, then there should be no reason for them to be reviewing cases for compliance under that statute.

  5. Ken March 29, 2016 2:26 pm

    JNG, isn’t that only for patents that were granted pre-Alice-ish? After all, anything that get’s past the USPTO’s post-Alice 101 filter has got to be the most eligible thing imaginable, these days!

  6. step back March 29, 2016 3:16 pm

    Stephan Curry @2 writes:
    so that the Justices are well informed

    Got any more LOL unfulfillable wishful thoughts for the day? 🙂

    You can re-watch the Alice bark-fest here:

    http://patentu.blogspot.com/2016/03/alice-in-bark-bytes-land-full-story.html

  7. step back March 29, 2016 3:20 pm

    Re link @6

    Note that when Breyer J. issues an oral King Tut rejection from the bench he does not grant the patent owner 3 months to come back with a thoughtful rebuttal. Fairness dictates (at the dictator level of adjudication) that patent owner gets no more than 10 seconds to think up something clever to say back.

  8. Gene Quinn March 29, 2016 4:18 pm

    JNG-

    That would be another good article. I’ll add it to the list. Do you happen to have a couple cases in mind where you’ve seen that? I’ve also seen a couple judges take Mayer to task pointing out that it was a concurring opinion and that his only authority for that proposition was himself from a different concurring opinion. So there are district court judges wise to Mayer and realize that is not what Alice says.

    -Gene

  9. Stephan Curry March 29, 2016 5:47 pm

    step back March 29, 2016 3:16 pm
    Stephan Curry @2 writes:
    “so that the Justices are well informed”
    Got any more LOL unfulfillable wishful thoughts for the day? 🙂
    You can re-watch the Alice bark-fest here:

    Step Back, you know that the Supreme Court Justices got persuaded by a Licensing Attorney that patents are bad. The downward spiral started in year 2007.

  10. David Stein March 29, 2016 7:01 pm

    What an outstanding question.

    Alice, Williamson, and Biosig – and even earlier cases, like KSR – have created an environment where no one, no one, can look at an issued patent and determine whether or not it will be enforceable if litigated.

    In today’s climate, there is only one way to ascertain, with complete certainty, whether any particular patent is or isn’t valid: Litigate it to the exhaustion of the legal process. The last decision standing is the answer.

    When law becomes an indefinite “smell test,” everyone is going to want an answer about their particular case from the decision-making authority whose subjective opinion matters most. This is wonderful news for all of the decision-makers – who enjoy both job security and a star-chamber-like environment, where they can rule from the pulpit based on their sensitivities of the day – but terrible news for the subjects trapped in these circumstances.

  11. Anon March 29, 2016 7:09 pm

    Stephan,

    The Justices have been tending against patents for FAR longer.

  12. Stephan Curry March 29, 2016 7:28 pm

    Anon March 29, 2016 7:09 pm
    Stephan,

    The Justices have been tending against patents for FAR longer.

    Anon, the Justices are not making Speeches.
    Anon, the Justices have generally been leaving patent law alone until recently when Clarence got into the mix.

    In contrast, a licensing attorney is making speeches all over the US saying our patent system needs reform and said in 2007 that the US patent system is in a crisis because this Licensing Attorney could not beat the patent trolls against google and now has Obama’s ear and let (or directed) the PTAB to go amok out of control with all these patent invalidations.

    I don’t know why you guys are shifting the discussion to the Supreme Court Justices when reasonable minds conclude that the root of the problem is at the USPTO for now.

  13. Anon March 29, 2016 8:14 pm

    The Justices HAVE BEEN making speeches – you just need to be able to hear them.

    And this is most definitely NOT a “Clarence” thing, my friend. Stevens et al,… Go back in time to prior to 1952.

    The “shift” is because the USPTO is not the only entity “to blame.”

  14. David Stein March 29, 2016 8:22 pm

    Reasonable minds conclude that the root of the problem is at the USPTO for now.

    The main check on the PTAB “running amok” is the court system.

    When the PTAB exceeds its authority, or refuses to comply with the law (such as instituting “covered business method” review of technologies that clearly aren’t business methods), or exhibits such overreach on Alice as to earn the moniker “death squad” – wronged parties should expect higher-level courts to put matters right. That’s why the PTAB members are called judges, and why they really don’t answer to USPTO administrators.

    Unfortunately, the courts aren’t doing their job, either. The extreme deference to the PTAB, even about issues that are obviously wrong, is a dereliction of its duty.

    When children exhibit bad manners and run amok, do we blame them? No, we blame their parents for failing to regulate their behavior. Same problem here.

  15. Night Writer March 29, 2016 8:23 pm

    @12 Stephan: In part you are right. Lemley and his ilk are a big part of the problem. To my mind, Lemley is unethical and writes vanity pieces for the tabloid law journals that have no standard of ethics whatsoever. Lemley said as fact that software has no structure in one of his vanity pieces. Stanford will never do anything to hem in Lemley. I don’t think the citations in Lemley’s functional paper support what Lemley claims they do. Mark Lemley just fabricates nonsense to justify crippling the patent system.

    And, Lemley is certainly at the root of the problem. What is going on is like what happened in finance with deregulation. You need the pseudo-intellectuals so that the SCOTUS has someone to quote when they legislate at the bench with their findings of fact. I don’t think it would be possible to over state the damage Mark Lemley has done to the patent system–and broader–to the quality of debate in our society.

    (Note too that there is no possibility of debating this with Lemley. He hides behind academic civilities to bow out of any real debate. He gets to spout out some nonsense answer and turn tail and run.)

  16. Curious March 29, 2016 8:29 pm

    What exactly was the point of the long, costly and arduous patent examination in the first place if the PTAB simply refuses to apply the presumption of validity?
    That is what Google, Facebook, and the other serial infringers of the world want inventors to believe — it is a waste of time to get patents. Less patents = happy infringers.

    But why did the Patent Office adopt rules of procedure that were slanted so noticeably toward the challenger and against the property owner who is supposed to own a patent that is presumed valid? Why have PTAB interpretations of the rules and PTAB decisions lead to such obvious procedural unfairness that even a first year law student would notice the obvious lack of due process?
    It isn’t for speed, it is so that patents can be knocked out by an agency whose head used to work for one of the serial infringers and has blatantly stated that she believes there are too many wrongly-issued patents.

    The one rule that doesn’t seem to fit with the speed-at-all-costs modus operandi employed by the Patent Office is the failure to presume issued patents are valid
    It does fit the narrative that the Patent Office is looking to pander to the infringer lobby by doing everything possible to knock out patents.

    It is sad and very disingenuous for the Patent Office to take the hard earned money of inventors while “promoting” inventors but when push comes to shove and real money is at stake, the USPTO rolls over like a trained dog when the infringers come calling asking for patents to be revoked.

    Patents are essentially worthless if they cannot be asserted, yet the USPTO is doing everything in its power to make sure that infringers get their way with the PTAB “death squads.” While District Courts may not be the greatest places for patent owners (since, e.g., Federal judges often find the technical aspects of patents to be beyond their understanding), at least the judiciary isn’t subject to the lobbying of the infringers like the executive branch (i.e., the USPTO).

    Whether the original intent was to railroad patent owners is no longer relevant – that is what has transpired
    That was the original intent — the “America Invents Act” was just a good marketing ploy — it should have been named the “America Infringes Act” since it was a major giveaway to the infringers.

  17. Edward Heller March 29, 2016 9:03 pm

    The PTO should have nothing to do with issued patents. Nothing.

    How one views the PTO and their post-grant proceedings depends on whether you are an accused infringer or whether you are a patent owner. The PTO is extremely biased; and putting patent validity in their hands has always been a project of the infringer.

    We need collectively as patent owners and their attorneys to call a halt. We need to get the likes of the AIPLA behind repeal efforts — not only of IPRs, but of reexaminations, PGRs and CBMs.

    One a patent has issued, it is the property of its owner, not a public right that can be revoked by the issuing authority. I have no beef with accused infringers seeking to have the patent invalidated. It is their right. But it is also the right of the patent owner to have his case heard in a court of law and to have his constitutional right to have issues of fact decided by a jury.

    T

  18. Stephan Curry March 29, 2016 9:10 pm

    well, someone who has the podium just tried to create new patent law on bastard patent rights or Bastard Patents and new ownership law on bastard patent owners.

    Night Writer,
    while Lemley is the root of the problem, Lemley does not have the podium. People who have no interest in patent law or don’t want to learn it all are believing the talkers who have the podium like the Licensing Attorney who now has the podium. Gene, I also heard the fingers on the chalkboard.

    http://www.ipwatchdog.com/2016/03/15/legitimate-patent-rights-legitimate-patent-owners/id=67124/

  19. Stephan Curry March 29, 2016 9:38 pm

    David Stein @14

    This is what the Child said:
    “We will do whatever we need to do to comply with the law, whether statutory or as handed down by the Supreme Court. That’s our job.”
    http://www.ipwatchdog.com/2016/01/28/exclusive-interview-uspto-director-michelle-lee/id=65417/

    The Child needs to clarify and needs to be Educated.

    It is a 2-way Street, David.
    The child needs to be disciplined as well for having bad manners, or disciplined for the patent death squad moniker.
    With judges who don’t want to (or can’t) understand patent law and with the patent death squad moniker (quoting words of Gene) running “amok” (quoting word Gene) in the Office, we are now in a “patent crisis” (quoting word of the future USPTO Director from August 1, 2007 @ Stanford Summit)

  20. Stephan Curry March 29, 2016 11:12 pm

    Anon March 29, 2016 8:14 pm
    The Justices HAVE BEEN making speeches – you just need to be able to hear them.

    Anon@13,
    how long have you been practicing patent law?
    We did not have this problem in 1992 and prior with the USPTO invalidations.

    Anon, are you a first year patent prosecution associate in your second month as an associate? If you are Anon, then you have written more patent applications and written more responses than the current Under Secretary of Commerce for Intellectual Property and USPTO Director in that Licensing Attorney’s private practice career.

    Or Anon, are you just a Fenwicker trying to save face?

  21. Stephan Curry March 30, 2016 12:24 am

    Judge Reyna scolds the Undisciplined Child at the Office. It is time for the Child to attend some MCLE refresher course on basic patent law.

    “The PTO’s claim to unchecked discretionary authority is unprecedented,” Judge Reyna wrote. “The problem here is not that the board’s reasoning is illogical or irrational; the problem is that there is no reasoning at all.”
    “The redundancy doctrine exists, as articulated repeatedly in the board’s other decisions, and we assume that the word ‘redundancy’ here means that doctrine was applied, even if no citation was provided,” Judge Reyna wrote. “For the PTO to deny that a redundancy doctrine exists in light of its caselaw development strains credibility.”

    http://www.law360.com/articles/775294/fed-circ-judge-slams-uspto-efficiency-policy-for-aia-rows

    The reason why Larry Page is so anti-patent (and yet files 5000 patents per year to protect his company’s rights) is because the Child was unable to persuade Larry or articulate to Larry or educate Larry on the beneficial complex aspects of these things we call patents.

  22. Benny March 30, 2016 5:21 am

    Edward at 17,
    How exactly is a jury qualified to decide on questions of patent validity, where the issue in question, in a sense, boils down to the competence of a (hopefully) well-educated patent examiner?

  23. Warren Tuttle March 30, 2016 6:49 am

    My recurring thought, from a non-attorney perspective, and getting back to Gene’s central premise:
    Presuming an issued patent is not valid at a PTAB review seems very similar to presuming the ref’s call on the field in a professional sports match would no longer require clear visual evidence from replay to be overturned. In otherwords, A replay tie, or lack of conclusive evidence, would not have the benefit of the on-field call or baseline. Given the relatively recent advent of instant replay and its impact on our societal perception of fair play (we now have specialists in the TV booth weighing in throughout games on decisions while refs huddle under hooded cameras) this is an analogy we might push more. Let’s face it, not providing the call on the field with the initial presumption of being correct is becoming unAmerican. It leads first to the feeling of why bother having refs, and then quickly onto why even bother playing the game. It would erode our national sense of fairness and love for the game. If you think about it, only a government institution that doesn’t answer to consumers could or would take a contrary approach.

  24. Michael Zall March 30, 2016 8:41 am

    It has been my position that 103 should be removed from the examination process (not litigation). It is a waste of time and money to argue unobviousness in the USPTO. The examiners should look at 112 and 102 (and maybe 101). This will result in expedited patent issuance of the good and bad inventions. If it’s not commercially important, why waste your time examining the patent. If it is, it will all be sorted out in the courts or USPTO in inter partes proceedings. It has the added advantage of giving rapid issuance to entrpeneurs who cannot get their business off the ground because their patent is caught in a useless argument with the USPTO over patentability for 3-5 years.

  25. aldo March 30, 2016 8:47 am

    gentlemen, with all due respect, patent systems do not seem to serve the broader public interest, but rather reflect the reality that government serves those with the deepest pockets.

    from my experience (having a successful product copied) society may be well served by a simple registry system that also has a strong, quick, economic process of deciding the inevitable disputes that arise around success) thus enabling the market to allocate resources = something like a patent swat team in open court where all parties had more equitable standing based on the idea(s) at hand rather than the pocket depth… this could restore predictability & integrity to markets….

    a country with such a system would bring back meritocracy & possibly become a beacon attracting the best technology…

    history seems to be making it more clear, the country with the most advanced technology leads…

    jefferson understood the inherent problems when he changed the us system to registry…

  26. American Cowboy March 30, 2016 9:25 am

    Another real travesty in the PTAB procedures is the combination of imposition of BRI and the refusal to allow the patentee to amend the claims as many times as he wants. BRI was created in the context of ex parte examination where freedom to amend is the rule. To apply BRI without freedom to amend is a double cross of the patentee.

  27. Robert March 30, 2016 10:03 am

    I have a couple of comments to make here. I too am not an attorney and so have a different perspective.

    1. The sky ain’t falling. Using rough numbers 4500 IPR’s have been filed since IPR’s were enabled on 9/16/2012. Of those 1450 went to trial. We’ll assume all went against the patentee. How many applications have been filed since 9/16/12? 400k a year = 120k+ How many patents have issued @ approx 260K a year 750k maybe. PTAB accepts 1/3 of the petitions filed which represents a small number compared to what issues. Perhaps they only chose the ones that are so egregiously “low quality” that no examiner would have issued them if the examiner had been cognizant of the art. I asked the Office of Patent Quality to study this very issue earlier this year when they asked for study topics but I don’t expect that to happen.

    2. The reason patents are been overturned is clear. It’s prior art. The Cuozzo patent provides a beautiful example of the core problem. The primary examiner conducted an eight minute search. She targeted her keyword query to a single specific subclass and found a high quality reference which she used for a 102 rejection. She subsequently found a second reference using different keywords and combined the two references to make a 103 rejection. How can anyone expect the presumption of validity based on an eight minute search? A thorough search on the Cuozzo subject matter would take 6 -7 hours. Examiners are not provided that kind of time. I am not defending the examiner but instead pointing to a systemic problem in the system.

    How prior art gets into a case is substantial problem that really needs to be addressed.

  28. A Rational Person March 30, 2016 10:31 am

    Michael@24

    “It has been my position that 103 should be removed from the examination process (not litigation). It is a waste of time and money to argue unobviousness in the USPTO. The examiners should look at 112 and 102 (and maybe 101).”

    My experience was that prior to KSR it was not a waste of time and money to argue nonobviousness in the USPTO. TSM was a sufficiently objective test that you could almost always tell whether the test was met by an Examiner. Also, an experienced Examiner would often know the references to use to show motivation to combine or would know, based on experience in searching his/her field that such motivation probably did not exist.

    The one change I would have made to the situation prior to KSR, and that I still advocate for, is for splitting up the current Examiner’s job. Ideally you would have a senior Examiner who is either trained as an attorney or has least had some type of training in how to put together a rejection who directs the search and puts together the rejection. This senior Examiner would direct the search of a junior Examiner who actually conducts the search and then puts together the rejection based on the results of the search.

  29. Robert March 30, 2016 11:14 am

    I agree with you A Rational Person except searching should be split off entirely from the examiner. The PTO can assemble an internal search function modeled on industry and thereby give focus to the core problem relating to low quality patents. The examiner would most certainly get more extensive art on which to examine.

  30. Curious March 30, 2016 11:37 am

    which represents a small number compared to what issues
    The problem with this analysis is that it does not account for whose patents are being subjected to IPRs and whose patents are not.

    A large company with a huge portfolio (let’s call it 1,000+ patents although some companies get that many in a year) that can assert 25-50 of those patents against any particular product of a competitor is not going to be thrown in to IPR. There are just too many patents, and so it is just too expensive for an infringer — even if their are good invalidity arguments.

    There are also a great many patents on products for which going through an IPR just isn’t cost effective for either party since the value of the infringement isn’t great enough to offset the cost. There are also a great many patents on obsolete technology or technology that just isn’t being implemented.

    IPRs are being used mostly in two situations: (1) where a product line is covered by a small number of patents (e.g., pharmaceutical patents) and (2) where you have a small entity (again, with few patents to assert) going up against a large entity. I have a client who falls into the second category, and we are trying to assert the patents. EVERY law firm we have spoken to says the same thing — a defendant will ALWAYS try to put the patents into IPR. With this in mind, few litigation firms will do an IPR on contingency and most smaller clients rarely have the funds available to battle through an IPR. The end result is that there are plenty of bigger companies (who are infringing the little guys patents) with little repercussion since the IPR process has chilled most of the little guys’ attempts to license the technology.

    Getting back to my original point, the numbers of IPRs are so low because the number of patents being litigated are so low. However, the number of IPRs being granted are still quite high as compared as a percentage of patents being litigated.

  31. JNG March 30, 2016 11:37 am

    Greetings Gene

    this article by my ex-colleague Vera Elson explains the split pretty well:

    https://www.wsgr.com/PDFSearch/section-101-0915.pdf

    it is only current as of that date however, and since then there have been more D Cts refusing to give a presumption of validity; for examples see:

    applies presumption:
    Freeny v. Murphy Oil Corp., Case No. 2:13-CV-791-RSP (E.D. Tex. May 2015)
    https://ipspotlight.files.wordpress.com/2014/11/freeny-v-murphy-oil.pdf

    says presumption does not apply:

    TNS v Tivo – http://nypatentdecisionsblog.com/wp-content/uploads/2016/03/TNS-Media-Research-v.-Tivo-Research.pdf

    Blue Spike v Google
    https://scholar.google.com/scholar_case?case=15671624908887734160&hl=en&as_sdt=6&as_vis=1&oi=scholarr

    these are typical and there are many more that could be cited; the CAFC made a mess of this by allowing Mayer’s comment to give encouragement to the anti-patent crowd – it should have been disavowed in the main opinion of the Ultramercial remand:

    https://www.eff.org/files/2014/11/14/ultramercial-remand-opinion_10-1544.opinion.pdf

  32. A Rational Person March 30, 2016 11:55 am

    Robert@29

    “I agree with you A Rational Person except searching should be split off entirely from the examiner. The PTO can assemble an internal search function modeled on industry and thereby give focus to the core problem relating to low quality patents. The examiner would most certainly get more extensive art on which to examine.”

    The problem with what you propose is you are making an Examiner’s main job the thing they are least trained for, i.e., putting together rejections and splitting off from the Examiners what they are potentially most competent, i.e., conducting a search in the Examiner’s specialized field.

  33. aldo March 30, 2016 12:15 pm

    with all due respect, current problems are much deeper than examiner performance & in my opinion the examiners have a nearly impossible job…

    if the patent technology does not become successful then no processing issues are raised.

    if the patent technology is successful then inevitably competitors, particularly deep pocketed ones, create issues (even invalid issues) to muscle in on the market…

    any system that does not address this structural behavior is lacking & separating search from examiners will not address the deeper issue….

    we need a new patent system that uses market performance to focus resources in a quick, economic & fair manner so that decisions are made based on advancing society and not rewarding the deep pockets… & penalizing bully tactics might help as well…

  34. Edward Heller March 30, 2016 12:28 pm

    Benny@22, on juries. Two experts testify and are crossed. There are exhibits and demonstratives. These issues are boiled down to very simple issues.

    In a conflict of testimony, the jury typically decides who is right based on observation of the witnesses and credibility, not based on some independent, a priori knowledge and skill that the trier of fact does not know about and which may or may not be wrong, but about which he has no control and no say.

    I have been on juries myself. It is an experience we all need as practicing lawyers. But I can tell you that jurors pay attention and try to get it right.

  35. Edward Heller March 30, 2016 12:35 pm

    American Cowboy@26, another sucker.

    BRI applies to non issued claims.

    In a reexamination, the smooth talkers speak of “opportunity” to amend to justify applying BRI to unamended patent claims that should enjoy a presumption of validity.

    Sucker.

  36. Edward Heller March 30, 2016 12:41 pm

    Robert@27, the reason patents are found invalid at such a high rate is the structure of the IPR. The same panel that institutes, decides. The standard to institute is very low. But, given human nature, the same panel is unlikely in most cases to reverse itself.

    Effectively, the burden of proof is so low that it amounts to an assumption that if two references show all the elements, the patent is invalid. The patentee, during the IPR trial, then has to prove validity or else.

  37. Edward Heller March 30, 2016 12:45 pm

    Curious@30, truth.

    IPRs effectively kill any effort of the small guy to license/enforce his patent for the reasons stated. This is not about validity. It is about money.

  38. Stephan Curry March 30, 2016 2:35 pm

    Robert March 30, 2016 10:03 am
    I have a couple of comments to make here. I too am not an attorney and so have a different perspective.

    1. The sky ain’t falling. Using rough numbers 4500 IPR’s have been filed since IPR’s were enabled on 9/16/2012. Of those 1450 went to trial. We’ll assume all went against the patentee. How many applications have been filed since 9/16/12? 400k a year = 120k+ How many patents have issued @ approx 260K a year 750k maybe. PTAB accepts 1/3 of the petitions filed which represents a small number compared to what issues. Perhaps they only chose the ones that are so egregiously “low quality” that no examiner would have issued them if the examiner had been cognizant of the art. I asked the Office of Patent Quality to study this very issue earlier this year when they asked for study topics but I don’t expect that to happen.

    Robert@27
    Hey Bob, my close buddy is also named Bob who is a pastor at a unitarian church, but that is another topic altogether that trigger theological wars.

    as an antitrust litigator, you know that if a metric or statistic is affecting the public perception of the integrity of the system (even if the statistic or number seems below the threshold as seen by a “reasonable person” or below a “rule of reason” threshold), the sky can potentially fall or the sky can be falling. Your shown statistics are perceived by many if not the general public think wrongfully that patents are made to be invalidated. After all, Bob, inventors like to talk. I am assuming that you are an electrical engineer and so you know many electrical engineers like to talk and if some of them think the sky is falling then that is what they will say. You should lecture that electrical engineering educated Director in Arlington Virginia so that the downspiral does not continue.

  39. Night Writer March 30, 2016 2:53 pm

    @29 Bob, patent quality would sore if searches were done better.

  40. Night Writer March 30, 2016 2:54 pm

    Soar not sore. Patent law is sore now from the AIA.

  41. Edward Heller March 30, 2016 3:00 pm

    Night@30, compact prosecution causes bad searches since the first search uses BRI, and no second search is conducted after the claims are clarified.

  42. Night Writer March 30, 2016 4:30 pm

    Edward @41: I tend to agree. And, I will say it over and over–the core of the problem with patent quality is searches. A good patent attorney will amend claims to make them patentable over the art cited by the examiners. The PTO should use TSM and better searches–quality would soar. The PTO could outsource some of the prosecution where the company gets money for finding a TSM in the prior art.
    —-
    One of the great fallacies put out there by the anti-patent crowd is that patent attorneys are helped by poor quality patents, but that isn’t true of good patent attorneys. It lessens our value when examiners allow claims without good reason. We can add more value with good prosecution and higher quality patents.

  43. Stephan Curry March 30, 2016 9:48 pm

    Anon & Night Writer’s comments here are great.
    http://www.ipwatchdog.com/2015/04/28/the-biggest-problem-for-uspto-has-been-fee-diversion/id=57237/

    If Anon is hypothetically in the second month as a first year patent prosecution associate, then he has already written more patent applications and responses than the Arlington Virginia USA Director has done in her entire life. Does anyone know why the US Senate did not inquire about this?
    That is why you often hear non-sense talk from her on patents. Granted, Judge Rogan is not a patent attorney, but USPTO Director Emeritus Rogan did not talk nonsense.

  44. Stephan Curry March 30, 2016 9:57 pm

    Night Writer@32
    it seems that the Director does not understand continuation practice where claim scopes can be dynamically changed/varied among the children among other techniques used in continuation practice, since the Director thinks the universe comprises High Quality Patents and Low Quality Patents. who knows what those mean.

  45. Anon March 31, 2016 6:26 am

    Mr. Curry @ 20,

    You are apparently new here – so your comment will receive an answer when otherwise such uncalled for snideness is little tolerated.

    You ask:

    Or Anon, are you just a Fenwicker trying to save face?

    I have no clue what this means.

    You also ask:

    how long have you been practicing patent law?

    I have been involved with patents on the legal side for more than a decade, and on the technical and managerial sides of innovation for more than two decades before that. My reverence of history reaches all the way back to my undergrad in engineering, at which time I had a minor in the history of science and technology. You apparently think that the world began when you began to practice law.

    Your statement of “We did not have this problem in 1992 and prior with the USPTO invalidations.” quite misses the point of the conversation and the long history of the courts’ interactions with patent law.

    Thus I can only imagine that your cheeky reproach of “Anon, are you a first year patent prosecution associate in your second month as an associate? If you are Anon, then you have written more patent applications and written more responses than the current Under Secretary of Commerce for Intellectual Property and USPTO Director in that Licensing Attorney’s private practice career.” is an attempt to say that Miss Lee is not fit for her job. I thank you for not trying to parse into such a view a slam of someone that you have no clue about their background, as it lessons your credibility and the meaningfulness of your view on Miss Lee (for which I was not discussing).

  46. Stephan Curry March 31, 2016 6:53 am

    Anon @45

    ask the Director how many patent applications she has written on her own.
    In fact Anon, have the FBI ask into this issue.
    you are in for a revelation, Anon.
    you are very defensive, Anon because truth is not your side.

  47. Benny March 31, 2016 6:54 am

    Curry,
    In response to Anon’s comment, I would add that not just snideness, but also humor, sarcasm, cynicism, and almost any light-hearted chit-chat gets short thrift here. I speak from experience, as Anon can no doubt attest. Anon, I didn’t see in Currys post any attempt to slam your credibility. I understood him to say that even if you (or anyone else) were a junior practitioner you would still have more experience in patent prosecution than Ms. (not Miss) Lee. It’s nt a personal attack.

  48. Stephan Curry March 31, 2016 7:13 am

    Benny@47

    yes, I was not attacking Anon. Thank you, Benny.
    When the Senate performs a hearing on the next USPTO Director Nominee, the Senate must require the nominee to show all prosecution/preparation/patent work (as long as privileged is not invoked). Also the Senate must perform a background check.

    FYI Benny: I was an in-house counsel who successfully used a couple of firms including Fenwick to defend against patent troll attacks (granted, during the Internet Boom, Fenwick really had great superstars in its electrical/computer patent group and that is why Fenwick made me look good as an in-house counsel, and I am sure even the USPTO Director will confess that it is true that Fenwick had a great superstars particularly in the electrical engineering patent field, and it still does). It is curious that hypothetically, if google were using the same firms as me to defend against trolls, google could not win and had to resort to advocating in changing the Patent Statute as a means to defeat the trolls instead of using some good old fashioned lawyering.

    Benny, no one wants to answer my question on who are the persons whom Larry Page blamed for the mis-steps in the failed Google patent action activities and who are the persons whom Larry Page blamed for costing Larry/Google an extra 8 Billion dollars. Who was in charge of performing the freedom to operate investigation for google vis-a-vis the Nortel patents at auction and patent strategizing vis-a-vis Nortel auction patents?
    http://www.ipwatchdog.com/2016/03/28/67509/id=67509/

  49. step back March 31, 2016 7:14 am

    Anon @45 writes:

    I have no clue what this means.

    It appears that Mr. Curry is having fun dropping off hints (clues) about his association with the Mountain View area of Silicon Valley, headquarters of the Google company. An IP law firm named Fenwick & West has a large office in that area. And obviously Mr. Curry is a fan of the Golden State Warriors basketball team in that he uses the name of a star player on that team, Steph Curry. 🙂

    BTW Steph, congratulations on your record keeping win last night.

    http://www.csnbayarea.com/warriors/instant-replay-warriors-escape-ot-franchise-record-68th-win

  50. Stephan Curry March 31, 2016 7:25 am

    step back@ 49
    Thank you sir, we will win another NBA title (fingers crossed).

    Like Gene, I am all for Honesty. and I don’t understand, like Gene, exactly what is an illegitimate patent owner.

    other people should not invent non-sense terms so that the public does not get confused.
    http://www.ipwatchdog.com/2016/03/15/legitimate-patent-rights-legitimate-patent-owners/id=67124/

  51. Benny March 31, 2016 7:41 am

    Stephan,
    Genes’ article referred to “owners of legitimate patents”, not patent owners born within wedlock. An illegitimate patent, in my view, is one that is granted in contradiction to rule 102, due to incompetent or insufficient examination.

  52. Stephan Curry March 31, 2016 7:44 am

    Hey Step Back,
    Gene really got theological here with the angel and satanic spirit in the pictures. so funny!
    is he saying that there is someone in particular who should not be sleeping peacefully well at night for not being Totally Honest? or something else relating to Eph 6:12? Shalom!
    http://www.ipwatchdog.com/2016/03/28/67509/id=67509/

  53. Stephan Curry March 31, 2016 7:53 am

    Benny@51
    okay Benny, the Director is still saying her signature is on illegitimate patents and patents with her signature are currently being invalidated.

  54. Anon March 31, 2016 8:59 am

    Mr. Curry, et al.,

    The fact that you again ascribe some view of Ms. Lee to me when my comments indicate NO such views is again why I feel compelled to remind you to pay attention to what is being said and by whom.

    There is a difference between “levity” and accusing others of views that they do not have just to “pump up” your own position.

    In particular, Mr. Curry’s “levity” is making a huge mistake as to the historical nature of a battle now underway against patents in general by the courts (as well as by the Office, whose 1968 “missive” on the difficulties of “software” examination) underscore a correctable error. That he desires to place himself as “someone in the know” and yet makes such fundamental historical mistakes – while indeed casting doubt on what I have actually said – simply goes too far.

  55. Anon March 31, 2016 9:01 am

    Caught in filter – please release

  56. Night Writer March 31, 2016 9:04 am

    Stephan @48: When the Senate performs a hearing on the next USPTO Director Nominee, the Senate must require the nominee to show all prosecution/preparation/patent work

    This is absolutely a great point. I predicted Obama was going to appoint someone like Lee and the Google appointments to the Fed. Cir. The political game is you appoint outsiders because they are willing to be brutal in their ignorance to the people and the system (the U.S.S.R. used to do this with police. When you faced police they were often from a rural area of a different country.)

  57. Stephan Curry March 31, 2016 9:09 am

    Anon@54
    you went off topic with the original issue.
    now you are just typing non-sense.
    I made a simple dare to you in this thread, but you got all shook up for some reason, as if you are involved in the deception that was recently pulled on the American public.

    My goal is to make sure that our patent system is not made even degraded.
    Anon on the other hand is talking as if he is Mark Lemley. That is all I need to say about Anon. Anon is Not credible.

  58. Night Writer March 31, 2016 9:09 am

    There is little doubt that Lee’s intentions are to cripple the system and she is just trying to figure out ways to do it. I’ll bet that Google counsel help her. Yes, I will bet that Google counsel conspire with Lee to find ways to cripple the patent system. I am sure the title of their meetings is something like ways to cooperate with industry and improve the patent system, but the content is nasty little people trying to subvert our laws to cripple the system. Thanks Obama. Obama has turned into one of the worst people imaginable. He is bubbled like Bush was. We just see these massive smiles from him (i.e., gee I stole my money from the country for my family and everyone kisses my feet everyday. Life is wonderful for ME. Thanks Google for all that money.)

  59. Stephan Curry March 31, 2016 9:13 am

    Night Writer @56

    Did the Senate or FBI do a proper background check by contacting the Director’s mentors or bosses at Keker or Fenwick or Paul Michel?? Anon will be surprised or Anon is really really worrying about it.

  60. Stephan Curry March 31, 2016 9:22 am

    Night Writer@58
    she probably thinks that the patent system failed her because of the failed nortel patent auction which caused google to spend an additional 8 billion dollars that could have been avoided with some good patent due diligence work. so, why not eradicate the US patent system. she is giving Asian Americans a bad image.
    http://www.ipwatchdog.com/2016/03/28/67509/id=67509/

  61. Stephan Curry March 31, 2016 9:36 am

    Night Writer@58
    what’s the deal with Allen Lo? why did he say he is trying to fix a past mess or messes in the google patent portfolio before he joined google in 2012 or so? anyway, please chime in if you have golden nuggets, sir.
    http://www.cnet.com/news/yes-google-needed-motorola-for-the-patents/

  62. Anon March 31, 2016 10:19 am

    Mr. Curry,

    Please – you are the one “off topic” of what I was discussing. That you want to speak of something else is just not my point – that you want to say that I have said something that I have not said IS my point. Read again (for the first time?) what I have actually written (and get off the high horse that you show no right to be on). I have spoken absolutely zero as to qualifications – or lack thereof – of Ms. Lee and spoke directly to a historical MISstatement of yours. Instead of simply acknowledging this, you just shoveled faster, and attempted to say more things on a position that I have not taken.

    I “get” that you want to say what you want to say. Maybe listen a bit more attentively to what others have actually said.

    Like Lemley…? No credibility…?

    Stop accusing for just a second and realize just how off you are.

  63. Anon March 31, 2016 10:23 am

    Another caught in filter – please release.

  64. Stephan Curry March 31, 2016 10:58 am

    anon@62

    I am ignoring you. You probably did not even study engineering in college.
    quickly, list right now your pre-engineering math courses and pre-engineering physics courses. you should be able to do it in 20 seconds after reading this.
    list also for me your junior year engineering courses.

    So Lee (first name), knock it off. And I am just going to call you Lee from Los Angeles because Lee is the only dude in this universe who talks about how Great our country’s Director is. Lee from Los Angeles, if you are actually a patent practitioner, you would know that the patent bar is a small community and everyone pretty much knows almost everyone else, so keep calling me someone who doesn’t know patent attorneys. For all I know, Night Writer might actually be a patent attorney drinking buddy of mine in silicon valley, but I don’t know.

    Night Writer: next time you run into patent attorney RP in mountain view, please ask him, why why why did RP grease it? our patent system would not be in this terrible situation (not RP’s fault), otherwise. why why why did RP grease it, even though it was kinda funny.

  65. Stephan Curry March 31, 2016 11:56 am

    who is this Anon, anyway?? who is this wise guy?

    I can tell immediately that Anon has no patent attorney friends, had never written a patent application in his life, and is not even located in silicon valley san jose menlo park. Anon claims to be a historical expert but Anon does not even know how easy it was to get a notice of allowance during 1990 and prior years and even later when Warner Jenkinson was the biggest hurdle but it was not even a challenge, and even in 1998 when the USPTO Director decided she will try to learn patent prosecution in good old Palo Alto Square.

  66. Night Writer March 31, 2016 1:16 pm

    I think Stephan that you and Anon probably hold about the same views on most things. Anon has been blogging about patents for many years.

  67. Gene Quinn March 31, 2016 1:29 pm

    Anon-

    I don’t see anything in the Spam or Trash from you. It must have been lost in the ether. Sorry.

    -Gene

  68. Gene Quinn March 31, 2016 1:32 pm

    Stephan-

    I don’t always agree with Anon, but your description of him as someone who doesn’t know what he is talking about couldn’t be more incorrect.

    -Gene

  69. step back March 31, 2016 1:57 pm

    Steph –you’re a newbie here and obviously enjoying the attention.
    Try not to over do it as that may lead to being labeled a blog troll.
    Anon is an old hand here and well respected.

    We try to keep the conversation here directed to the subject matter as opposed to degenerating into ad hominim attacks of the kind that erupt at that other patent blog.

    Cheers.

  70. Curious March 31, 2016 2:28 pm

    To echo step back @69, while we have disagreements on this blog, almost all of us are on the same side. I stopped posting on that “other patent blog” a long time ago as it has been overrun by some vile anti-patent trolls.

    Just hit the reset button and focus on the issues at hand — rather than each other.

  71. Denied motions March 31, 2016 2:59 pm

    “In fairness, in this case the PTAB will tell you they are not ignoring the statute, they do give patent owners the right to file a single motion to amend, which they then nearly universally deny.”

    I’ve heard that is the case. And if it is such a straightforward interpretation of the law that the 1 motion should be practically summarily granted (or at least a “balanced” approach should be adopted) then why doesn’t someone challenge this systematic denial of motion in court?

  72. Stephan Curry March 31, 2016 4:31 pm

    step back@69
    thank you.
    I am not enjoying the attention.

    Of course, I will defend myself if Anon makes these comments where he is calling people here as liars;
    Anon@ 45 Thus I can only imagine that your cheeky reproach of “Anon, are you a first year patent prosecution associate in your second month as an associate? If you are Anon, then you have written more patent applications and written more responses than the current Under Secretary of Commerce for Intellectual Property and USPTO Director in that Licensing Attorney’s private practice career.” is an attempt to say that Miss Lee is not fit for her job. I thank you for not trying to parse into such a view a slam of someone that you have no clue about their background, as it lessons your credibility and the meaningfulness of your view on Miss Lee (for which I was not discussing).

    USPTO Director Emeritus Judge Rogan is not a patent attorney. Also, Anon could have just said, Anon is a season prosecutor. Anon got so offended with an honest question.

    Obviously, these heated discussions in this website probably led to what Gene characterizes as a pro-patent speech delivered today at MIT. I don’t think it is a coincidence.

  73. Night Writer April 1, 2016 7:42 am

    Stephan: Anon can be harsh. He does it to me sometimes too. Just shake it off with Anon. He makes up for it with his other posts.

  74. Stephan Curry April 1, 2016 10:11 am

    Night Writer@73
    Thank you NW.
    it’s now water under the bridge.