Patent Stories of the Decade – Honorable Mentions

At the end of 2009 I did a two part series setting forth what I believed to be the Top 10 Patent Stories of the Decade, see Top 10 – #1 to #5 and Top 10 – #6 to #10.  At the time I promised to do a third in the series, which would discuss the “Honorable Mentions.”  After taking some time off between Christmas and New Year and then being out of the office teaching the PLI Patent Bar Review course last week, this honorable mention component of the series is long over due.

Obviously, my Top 10 is subjective, although I think the majority would agree with most of what I put on the list.  Nevertheless, there are a few things that didn’t make the list for one reason or another, but deserve mention.  I have a feeling that one or more of these might wind up making the Top 10 for the next decade, depending of course on where the cards fall and what other good, bad and ugly news occurs during the decade between January 1, 2010 and December 31, 2019.

Without further ado, here are 4 stories that I thought long and hard about including, but decided against.

1. Rambus and the JEDEC Saga
2. Bilski v. Kappos
3. The Bush Administration
4. The Office of Enrollment & Discipline

1. Rambus and the JEDEC Saga

On December 9, 2009, when I wrote about the European Union dropping its Antitrust investigation against Rambus I stated: “Either Rambus was engaged in one of the most epic patent frauds of all time, or certain government regulators on both sides of the Atlantic had it out for Rambus.” The patent battle that engulfed Rambus throughout the decade started in June 20002, when the United States Federal Trade Commission (FTC) filed charges against Rambus alleging that the memory chip designer deceived the industry by not disclosing certain information to a standard setting body. In fact, the FTC charged Rambus with violating United States federal antitrust laws by deliberately engaging in a pattern of anti-competitive acts to deceive the Joint Electron Device Engineering Council (JEDEC), an industry-wide standard-setting organization, which purportedly caused substantial harm to competition and consumers. The matter was tried by an Administrative Law Judge and Rambus won, the FTC appealed. On appeal the FTC won, but that would be the last victory. As Rambus appealed outside of the agency every other court that heard the issues sided with Rambus, most notably the United States Court of Appeals for the District of Columbia, and in a related matter the United States Court of Appeals for the Federal Circuit.

Rambus sympathizers started websites and commented on every blog and website that they could, yelling that Rambus was set up and their was a conspiracy. No one really listened, for many reasons, but as the dust has settled it seems those offering conspiracy theories were most likely correct. But why did no one listen? Well, Rambus engaged in the destruction of documents and at least one court decided that Rambus did so even though they anticipated litigation. The reality is when a concerted effort is made to destroy many thousands, perhaps millions, of documents it looks really bad. Whether it is the NFL destroying the video tape that purportedly showed the Patriots cheated to win the Super Bowl, or whether it is global warming researchers who destroyed at least a decade of data to hide cooling trends, or Rambus destroying documents, it looks really bad. After all, there is only one reason to destroy documents and that is to hide something. So the leadership of Rambus created their own perception problem and let those who wanted to manipulate the truth to nearly get away with it. The only Snow White victims in this whole saga were the shareholders who lost enormous amounts of money.

I could have put the Rambus matter in the Top 10, and perhaps I really should have. There were two reasons I did not include it though. First, those stories on the list had widespread impact on the patent community and innovation industries. As big as the Rambus story was, at least so far, it impacted only Rambus and Rambus shareholders. Second, the final chapter has not yet been written. A trial where Rambus is the plaintiff is alleged to set the record straight and once and for all display the truth. If the Rambus defenders are correct this story will be of epic proportions because it will prove an industry wide collaboration against Rambus, and may unearth significant government malfeasance. Stay tuned!

2. Bilski v. Kappos

As much as I write about software patents and Bilski in particular it was extremely difficult for me not to include it in the Top 10 for the past decade, but in truth it doesn’t belong there.  The ramifications of what the Supreme Court ultimately decides could be enormous, but the question remains whether it will be enormously bad or enormously good.  Additionally, your particular perspective on what should happen will undoubtedly color interpretations of whether the ultimately ruling is good or bad.  Regardless, it will likely have significant impact on the patentability of business methods, software and medical diagnostics.  On the other hand, the Supreme Court could punt the issue and put off for another day determination of the thorny issues involved and addressed by the Federal Circuit.

I tend to believe that the Supreme Court will overrule the Federal Circuit decision.  If they follow the law that really has to be what they do, but since there is no one to review the Supreme Court we all know that they don’t always follow the law, choosing rather to make it up as they go along.  In any event, affirming the Federal Circuit seems unlikely.  If they liked what the Federal Circuit did they wouldn’t have granted cert. and agreed to hear the case.  Furthermore, pretty much everyone agrees that the Federal Circuit violated the age old judicial principle requiring judges to only address the issues squarely before them.  Simply put, regardless of whether you are pro-software patents or anti-software patents, Bilski is not the right case to do or say anything that would in any way impact the patentability of software.  Ever further, Bilski is an even less appropriate case to decide anything relating to medical diagnostics and methods.  Simply put, Bilski is a pure business method where the inventors looks, thinks and acts.  There is no software involved, and the subject matter of the thinking and acting is not related to the medical field.  The Federal Circuit went way too far, and the Supreme Court will all but certainly dial back and issue a decision more closely tailored to the issues of the case that need to be decided to resolve the Bilski appeal, which should mean the Bilski invention will remain unpatentable.

The Supreme Court’s decision in Bilski will likely make the top 10 in the next decade, either by putting to rest the issues once and for all, or keeping them alive and kicking to keep coming back throughout the decade a la Jason in the Halloween franchise.

3. The Bush Administration

The dysfunction of the US Patent Office during the second term of President Bush is well documented, so this story has been mentioned in the Top 10, but with an eye toward particular issues and boneheaded mistakes.  Whenever I talk politics with friends who are Democrats (yes, I do have Dem friends) and the discussion turns to patent and innovation policy they always marvel that the Bush Administration was not more friendly to corporate America and allowed the US patent system to decay.  It sure doesn’t make a lot of sense, does it?

Rightly or wrongly, the Republican party has over time become viewed as the party that sides with big business, and at least to some extent small business.  Pro-business approaches to law, regulation and the economy is about as Republican as the elephant.  So why then would a Republican President allow the engine that drives our technology and innovation based economy to run aground?  I don’t know and there are no good answers, at least not if you assume they did it consciously or that they knew what they were doing.  Unfortunately, the patent system is largely taken for granted and is not understood by most.  Add to that Supreme Court decisions that made matters worse, and Federal Circuit rulings that clearly demonstrated that the majority of the CAFC doesn’t understand patent prosecution and how their decisions will impact the Patent Office and how the patent bar will respond, and you have something of a perfect storm.

The reason I didn’t add this to the Top 10 list was because it is a story of neglect, misunderstanding and perhaps incompetence.  It would certainly make an nice expose in the future, but how many Presidents and Administrations have really understood the patent system?  Not many, and for that reason, as confusing as it is to understand, the reality is that politicians not understanding patents and the patent system is hardly news.

4. Office of Enrollment & Discipline

Over the last few years the Office of Enrollment & Discipline has become increasingly out of touch. At the beginning of 2008, Harry Moatz, the Director of the Office of Enrollment & Discipline, announced that OED is going to investigate attorneys who file a large number of references where those references could be used to reject a substantial number of the claims presented. In one particular case that was investigated by OED there were 1600 references were cited, most of which together or alone would be able to be used by examiners to reject a substantial number of the claims filed in the application. I know the Patent Office would rather us follow Rule 56 and further submit only the best prior art, but the trouble is the Federal Circuit ignores Rule 56, treats it like it doesn’t exist and demands the filing of ALL relevant prior art.

In October of 2007, Harry Moatz made the assertion in a power point presentation that under 10.18(b) every practitioner has a duty to read every document they sign prior to submitting the document, which seems straight forward but is really anything but straight forward. Does this duty to read mean that when foreign origin work is submitted in a foreign language 10.18(b) is violated unless I read the document? Rules of practice allow the filing of a previously filed Japanese application, in Japanese for example, and obtain a filing date as long as there is a spec, one claim and one drawing, if required to understand the invention. Do practitioners have to read the application that is in Japanese? What about if they don’t speak or read Japanese? How about the situation where you submit a translation. Do you have to read the original and verify that it is identical to the translation? How about when you file an Information Disclosure Statement. Do you have to read each and every word of the references too? What if the references are in a foreign language that you don’t speak or read?

In September 2008 the Patent Office changed the rules of practice in patent cases, requiring that all patent application related work be done by or under the direct supervision of a patent attorney. The OED explained to my firm at the time that it was also their position that if an attorney or agent provides specific advice/assistance with respect to a patent application the attorney or agent giving the advice must also file the application on behalf of the inventor. This was intended, seemingly, to stop LegalZoom from offering self-help services to inventors and make it difficult or impossible for invention scams to operate. The OED has not enforced the rules against anyone, and has said on several different occasions that it doesn’t have the authority to enforce the rules of practice against those who are not patent attorneys or patent agents. Crazy, I know. Why have rules associated with unauthorized practice of law and enforce them only against those who are authorized to practice law?

On top of this, the Patent Bar Exam increasingly is out of date and is testing Revision 8, Version 4 of the Manual of Patent Examining Procedures, better known as the MPEP. This version of the MPEP was released in October 2005, which means that the Patent Bar Exam is closing in on 4.5 years out of phase. Just stop and think about all the changes to the rules of practice and all the substantive law changes (such as KSR) that occurred after October 2005. The test is so horribly out of date that it is laughable. If new patent attorneys and patent agents are being tested to determine if they understand the rules of practice why not test them on, well, the rules of practice? Testing them on rules of practice as they existed in October 2005 seems ridiculous to me.

What is going on with OED? Who knows. While this could have made the Top 10 it is certain an inside baseball story, and while amusing is probably one that doesn’t affect most patent practitioners.