KSR Fears Realized: CAFC Off the Obviousness Deep End

By Gene Quinn
February 1, 2011

Yesterday the United States Court of Appeals for the Federal Circuit, in a split decision with Judge Lourie writing and Judge Bryson joining, took a step forward in the evolution of the law of obviousness that confirms my worst fears about obviousness in this post-KSR era.

I have written about KSR v. Teleflex numerous times and we have engaged in thought-provoking and sometimes heated debate in the comments to those articles. We have argued about the extent to which the obviousness laws have changed, and many have sought to calm my fears by pointing out that even under the ridiculously naive approach to obviousness set forth by the Supreme Court in KSR it was still necessary under previous Supreme Court rulings that the prior art teach each and every element of the invention. In short, it has been argued by many that even after KSR it is not an appropriate rejection, or reason to invalidate an issued claim, that it would be “common sense” to modify elements within the prior art in a wholly new way and then combine the “common sense” modifications. I did agree that was true, at least until yesterday.

In Tokai Corp. v. Easton Enterprises, Inc., the Federal Circuit, over the correct, well written and forceful dissent of Judge Pauline Newman, took a step too far in applying the new KSR obviousness test. In truth, it is hardly correct to call the KSR approach a test since none was announced, the Supreme Court rather providing guidance and confirming its loathing for bright line rules that can actually be understood and uniformly applied. In Tokai the Federal Circuit explained, citing KSR, that the “nature of the mechanical arts is such that identified, predictable solutions to known problems may be within the technical grasp of a skilled artisan.” Then the bombshell: “It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters, as disclosed in Floriot and/or Morris, to fit a utility lighter as disclosed by Shike, even if it required some variation in the selection or arrangement of particular components.”

Although murky in this announcement by Judge Lourie, if you read the facts and the Newman dissent it is clear that the elements combined were not within the prior art and that modification and variation of at least one of the components was necessary in order to have the required pieces and parts that could in any way create the invention in question. So now it is the law of the Federal Circuit that things that are not within the prior art but are close to being within the prior art can support an obviousness rejection under the Supreme Court’s “common sense” standard in KSR. This is true even when there are secondary considerations showing the superiority of the invention in question, market demand and copying of the invention by the industry.

Before I go any further allow me to notice what everyone in the industry to a person knows is true. There are Federal Circuit decisions that are simply never followed by the United States Patent and Trademark Office, they are ignored by the district courts and ignored by other panels of the Federal Circuit. That is why we can always say that there is a Federal Circuit case to support every proposition, even diametrically opposed positions. It is possible that Tokai will be one of those ignored cases, but there is also the distinct possibility that this case will not be ignored and could become a pivotal ruling that allows those who prefer not to issue patents within the Patent Office, as well as those district court judges who are hostile to patents, to make whatever obviousness rejections they want even when all of the pieces and parts are not found in the prior art. Now under Tokai they can simply find most of the pieces and parts in the prior art and then conclude without reason that it would be within the common sense understanding of one of skill in the art to modify the collection and then combine.

In any event, the invention patented by Tokai Corporation is a utility rod lighter of the sort used to light barbeques or fireplaces and the uniqueness of the innovation was owed to a novel safety mechanism that achieves a previously unattained level of child-safety over the prior art. The Tokai lighter displaced previously available child-safety rod utility lighters within the marketplace and received the ultimate compliment of industry competitors; it was copied. As Judge Newman described the core uniqueness of the invention: “The Tokai lighter has an ingenious safety design, whereby the device is simple to operate by adults but not by children, unlike prior art utility lighters, and locks automatically after use, unlike prior art utility lighters.” Judge Newman then went on to succinctly and in declarative terms explain: “The Tokai safety structure does not result from direct combination of the prior art. Nonetheless the district court, and now this court, hold on summary judgment that the asserted claims of the Tokai patents are invalid for obviousness. I must, respectfully, dissent.”

Yes friends, the district court and the Federal Circuit panel majority applied an overly expansive reading of the new obviousness laws to find that the claims in question were invalid on summary judgment. For those non-lawyers in the audience what that means is that the district court determined that there were no genuine issues of material fact and that the infringer was entitled to prevail as a matter of law. In lay terms, allow me to observe that it is usually virtually impossible to prevail on summary judgment because there is nearly always at least a single issue of material fact that is in dispute between the parties. A single issue of material fact alone prevents a party from winning on summary judgment. Excuse me for noticing the numerous issues of fact that are in dispute and making summary judgment wholly inappropriate.

If you need any support for the existence of material facts in dispute simply read the panel decision authored by Judge Lourie and then read the dissent authored by Judge Newman. It is almost as if they reviewing a different case. For example, with respect to whether secondary considerations weighed in favor of non-obviousness Judge Lourie wrote in part: “Tokai proffered no evidence from which one could reasonably infer a nexus between its sales data and its utility lighters’ automatic-locking features.” The word “proffered” is just a lawyers way to say “offered.” So what Judge Lourie wrote is that there was not a single shred of evidence that connected the success of the Tokai invention in the marketplace was tied to the uniqueness of the innovation. This is important because if there were evidence it would have created a genuine issue of material fact, thereby making summary judgment inappropriate. It would also have leaned heavily, along with other secondary considerations, toward a finding of on-obviousness.

But here is what Judge Newman wrote about the evidence of commercial success: “The defendants did not dispute Tokai’s evidence that its commercial success was due to its improved child-safety mechanism.” Judge Newman went on to write: “Tokai’s evidence of commercial success and copying of the patented device, taken with the structural differences and the differences in operation between the prior cigarette lighter safety mechanisms and the Saito utility lighter safety mechanism, as well as the differences between the auto-locking Saito mechanism and manual locking prior utility lighters, created at least genuine issues of material fact bearing on obviousness.”

Call me crazy, but that sure seems like quite a number of facts are in dispute. After all, if 1 in 3 Federal Circuit Judges reviewing the case can create a laundry list of facts where the parties disagree then summary judgment is wholly inappropriate. Summary judgment is supposed to be reserved for clear-cut cases where everyone agrees on the facts and there is only the need to apply the law. That was clearly not this case.

The invention in question, an improvement to the safety features of a BBQ grill lighter, used mechanical features to make it possible for the trigger to be pulled simultaneously with depression of the lock-releasing button. The closest prior art, which was the base reference upon which obviousness was premised, did not have any safety feature or mechanisms whatsoever. Thus, the Shike utility lighter needed to be combined with other prior art references having a safety mechanism. Thus, the district court and CAFC panel majority found the claims to be obvious over Shike in view of the safety features of a cigarette lighter patented to Morris and/or a cigarette lighter patented to Floriot. The totality of the combination even if made still could not produce the claimed device in question.

In both Morris and Floriot the safety mechanism for the lighter blocked the flow of gas. To initiate firing of the lighter the safety block needed to be disengaged and then the firing mechanism could be utilized to provide ignition of the flame. The mechanisms utilized required sequential actions, not simultaneous actions as in the claimed invention found obvious. Furthermore, Morris and Floriot do not require two-finger coordination to accomplish ignition of the flame. Furthermore, the Morris patent was cited during examination by the patent examiner noted the differences in mechanism and operation from the claimed invention; the Floriot patent is cumulative and both the Morris and Floriot patents were cited in the application disclosure. So the Patent Office considered these references and noted the different mechanisms of operation.

The Supreme Court has indicated that the Patent Office is like any other agency and entitled to deference in its determinations. So where is the deference? It seems suspiciously clear that the district court and the panel majority simply disagreed, but that is not supposed to provide the basis for overruling an agency determination. There will be some who will no doubt point out that the defendant here was not allowed to participate in the underlying patent application process where the agency determined that the claimed device was not obvious. That is quaint, but only part of the story and misleading to the point of being inaccurate. The defendant does have the ability to seek reexamination of the patent and get the Patent Office to reconsider the claimed invention either in an ex parte proceeding or inter partes proceeding. It seems to me that if we are going to treat the Patent Office the way that the Supreme Court says they are to be treated, like every other agency, then the agency determination should be overturned if and only if the determination was arbitrary and capricious. It certainly shouldn’t be overturned under any lesser standard when the defendant doesn’t even seek to allow the agency to correct the perceived wrong.

Judge Newman summarized her decision relative to obviousness by observing:

The district court held that it would have been obvious to a person of ordinary skill, defined for summary judgment purposes as a person with aptitude for high school shop class, to combine the various elements of the prior art to create the Saito device. However, the Saito device is not a simple insertion of the Floriot or Morris cigarette lighter safety mechanism into a utility lighter, as in the combination of known structures exemplified in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Where, as here, the features of one reference cannot be substituted into the structure of a second reference, this weighs against obviousness.

Indeed, where elements the secondary references cannot be neatly inserted into the primary reference to result in the claimed invention then the claimed invention is not supposed to be obvious. Any other determination necessarily means that common sense was here allowed to modify the parts of one reference prior to insertion into the primary reference. Thus, all the nice distinctions so many have been making about what KSR allows and what it does not allow seem to be swept under the rug and a nebulous, undefined “common sense” test that exalts hindsight is the rule. For crying out loud hindsight has always been impermissible and even the Supreme Court said that! Yet, the application of hindsight to determine what modifications a “high school shop class” would have made was allowed.

Question to Judges Lourie and Bryson: If a high school shop class would have been able to make the modification and then combination why didn’t they? Why was there only copying or the presence of infringing devices AFTER the introduction of the patented invention?

As Judge Newman points out, “incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive.” Without welcoming and protecting incremental improvements we might as well not have a patent system. Even the greatest inventor of all time, Thomas Edison, wouldn’t have been much of an inventor if not for improvements. If this “common sense to modify elements and then combine” test were around when Edison was inventing I wonder how many of his 1000+ patents he would have obtained. My guess is not very many.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 98 Comments comments.

  1. blue February 1, 2011 5:30 pm

    “Question to Judges Lourie and Bryson: If a high school shop class would have been able to make the modification and then combination why didn’t they? Why was there only copying or the presence of infringing devices AFTER the introduction of the patented invention?”

    Thats contradiction isn’t it? Its hard to believe that the judges could be blind to this kind of logical error.

  2. Gene Quinn February 1, 2011 6:15 pm

    Blue-

    It seems as if those questions never crossed their mind.

    Of course, the fact that it has never been done is not necessarily evidence that an invention is non-obvious, but in light of the fact that there there appears to have been widespread copying after the device came to market and it is perceived as an important safety feature the fact that it had never before been brought to bear is extremely persuasive evidence of non-obviousness. This type of evidence is a secondary consideration and would relate to a long-felt and unresolved need. The long felt need here seems to be a safety mechanism that is easy for adults and difficult for children.

    It seems to me that the district court and Judges Lourie and Bryson were fooled by the simplicity of the innovation. A simplistic invention can be obvious, but here we are not dealing with a simplistic invention. We are dealing with en elegant solution that the industry perceived as far better. That, by black letter law definition, should render this invention non-obvious.

    Finally, don’t forget that Judges are people too and they make mistakes. This is a grave error on the part of Judges Lourie and Bryson if you ask me, and I hope there is reconsideration en banc by the entire Federal Circuit.

    -Gene

  3. blue February 1, 2011 6:39 pm

    “It seems to me that the district court and Judges Lourie and Bryson were fooled by the simplicity of the innovation. A simplistic invention can be obvious, but here we are not dealing with a simplistic invention.”

    The judges had failed to recognize the difference between simplicity and obviousness, thereby a solution that looks simple must also be obvious. Its like saying a person that looks like a criminal must be liable for the wrongdoing.

  4. step back February 1, 2011 7:00 pm

    Gene,

    I absolutely love your William Tell (Jacka$$ version) graphic.
    I know. I know. You don’t draw ’em yourself. You just pick ’em.
    Good pick!

    Caption should be: The slings and arrows of outrageous KSR logic lay low yet another hapless inventor.

  5. Just visiting February 1, 2011 8:30 pm

    “would have been obvious”

    I think the certain members of the Federal Circuit, based upon the incredibly weak and non-illuminating guidance from SCOTUS have forgotten the most important word in 35 USC 103 is the word “obvious.”

    A definition of the term “obvious” is easily seen, discovered, recognized, or understood.

    The Federal Circuit’s statement is “Accordingly, the undisputed facts in this case—including the state of the prior art, the simplicity and availability of the components making up the claimed invention, and an explicit need in the prior art for safer utility lighters—compel a conclusion of obviousness as to the subject matter of each of the asserted claims.” Phrased slightly different, work with known, straight-forward elements in predictable art (e.g., mechanical devices) and the resultant invention addresses a known need = no patent. Phrased even shorter, if a person with aptitude for high school shop class could put it together, it is obvious.

    The Federal Circuit states “It would have been obvious to one of ordinary skill and creativity to adapt the safety mechanisms of the prior art cigarette lighters … even if it required some variation in the selection or arrangement of particular components.” For some reason, that “required … variation in the selection or arrangement of particular components” eluded the art, i.e., those variations were not easy seen discovered, recognized, or understood. However, being obvious is not the test for obviousness. Instead, the test for obviousness includes the notion that simple inventions compel a conclusion of obviousness.

    Also, the phrase “at the time the invention was made” appears to have been read out of 35 USC 103. As Judge Newman pointed out, the ONLY way to get to the claimed invention from the applied prior art was through hindsight reconstruction of the claimed invention since the applied prior art did not teach the limitations at issue.

    BTW – the Federal Circuit call this a “strong” prima facie case despite a need for “some variation in the selection or arrangement of particular components.” This begs the question, what would it take for there to be a “weak” prima facie case?

    Make no mistake, this case will be cited by the USPTO and the BPAI. I don’t doubt that the BPAI will be citing this case in days. Oops, the Examiner forgot to address a limitation … well, there is always the standby language of “[i]t would have been obvious to one of ordinary skill and creativity to … even if it required some variation in the selection or arrangement of particular components” – Examiner affirmed.

    Forget arguing the Graham factual inquiries. The prior art doesn’t need to show all the elements or even critical elements. Your best bet is to appeal to the BPAI’s sense of what is “inventive” and what is not and cross your fingers because anything is obvious if the BPAI or Federal Circuit wants it to be.

  6. step back February 2, 2011 5:46 am

    There is an old saying:

    “Fools rush in where the wise dare not tread.”

    –or something like that

    Now mind you, I’m not saying anything about the majority in the Tokai v. Easton case.

    But maybe it’s time to dust off some old web posts of mine about the “road shortest to be taken” (link) and about the “via” that is “ob” for those actually “skilled” in an art (link)

  7. EG February 2, 2011 9:01 am

    “Indeed, where elements[of] the secondary references cannot be neatly inserted into the primary reference to result in the claimed invention then the claimed invention is not supposed to be obvious.”

    Gene,

    This case sounds like one where Lourie ignored the holding in In re Ratti (270 F.2d 810, 123 USPQ 349 (CCPA 1959); MPEP § 2143.01(VI) that: “If the proposed modification or combination of prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” If elements of the secondary reference cannot be easily inserted without modifying the device of the primary reference (or altering the elements of the secondary reference), that should have scotched this determination of obviousness on summary judgment. This case also is another unfortunate example of the effect of KSR in making it much more difficult for mechanical inventions to be deemed patentable.

  8. Karen G. Hazzah February 2, 2011 10:28 am

    EG,

    You seem to equate “secondary reference cannot be easily inserted without modifying the device of the primary reference” with “changes the principle of operation of the primary reference”. I don’t believe these two are the same. The bodily incorporation doctrine says something like “obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. (In re Keller, 642 F.2d 413, 425 (CCPA 1981)).” In other words, the fact that some changes are needed to make the references fit together as claimed does not compel a conclusion of non-obviousness.

    I believe “changes the principle of operation” is interpreted as something more like “requires quite a *fundamental* change to the primary reference”.

    I don’t have an opinion yet on Tokai — I haven’t read the case in detail.

  9. Gene Quinn February 2, 2011 10:54 am

    Karen, EG –

    I would tend to agree with EG, but I see your point Karen.

    One thing that I think we need to keep in mind is this: the old obviousness cases might no longer apply. It seems to me the way Judge Lourie interpreted KSR was as nearly a reset of the law of obviousness, which would make older precedent no longer applicable.

    I think Tokai is wrong, but it is hard to fault Judge Lourie. An argument could be made that he scrupulously followed the teachings of KSR to their logical extreme. Of course, I prefer the Newman dissent and would rather the CAFC moderate the widespread language of KSR. The Supreme Court clearly didn’t appreciate what they were doing. As written, and as interpreted by Judge Lourie, it seems that the last sentence of 103(a) no longer has any meaning.

    -Gene

  10. john white February 2, 2011 10:56 am

    Well, here we go; back to the “flash of genius test”. 103 was written to expressly exclude such criteria. But, seems to me, that if mechanical stuff is all within the realm of common sense, then mechanical patents will only be awarded for things beyond such a threshold. What is beyond? Well clearly something more than ordinary skill, things the Judges cannot understand (simply mechanical), something really beyond the ken of a shop class person. Genius anyone? (I am so despondent, I do not even reach the notion that 2ndary considerations, alone, overcome obviousness. Or, at least they used to.)

    I knew this day would come. I was labeled a fear monger. I was right, sadly. For electrical and chemical, keep dazzling them with big words and jargon, at least you’ll get to keep your patents; maybe even enforce them too.

  11. TINLA IANYL February 2, 2011 12:58 pm

    Wow. The prior art safety mechanism would not even be a functional equivalent under DOE of the invention’s safety mechanism. Fairness ought to require that, just as “that which infringes, if earlier, anticipates,” there should be a rule along the same lines that “that which infringes, if permissibly combined and earlier, obviates.” In other words, there ought to be some sort of tit for tat, such that elements that do not even function in the same way to achieve the same result cannot be substituted in obvious determinations for the claimed elements. But here they’ve come along with a modification of prior art elements to obviate that would never be permitted under DOE to find infringement. Amd we can’t even get DOE any more. What a farce.

  12. Mark Nowotarski February 2, 2011 1:18 pm

    I wonder if there is an unconscious prejudice here against “high school shop students”. As in “If a high school shop student can do it, it must be obvious”.

  13. IANAE February 2, 2011 2:05 pm

    Presumably a person skilled in the art (any art) is at least as knowledgeable as a high school student.

    The problem with that test is the “can do it” part. It should be more along the lines of “would do it”, but then again it’s not that counter-intuitive to take a safety from one lighter and put it on a different lighter. You don’t even need KSR to make that combination.

  14. step back February 2, 2011 2:17 pm

    I’m disappointed here that no one is talking about the “summary judgment” aspect of this precedential opinion.

    To my way of thinking, the question (#1) of how the ordinarily skilled artisan thought back in the day (at the relevant time) should be a question of material fact.

    The question (#2) of what level of skill and comprehension the ordinarily skilled artisan had back in the day should be a question of material fact.

    The question (#3) of what the totality of differences is between the claimed subject matter and the hindsight synthesized prior art should be a question of material fact and material law (is the combining and modifying supported by a clear line of rational reasoning?).

    The question (#4) of nexus between advantages of the novel configuration and wholesale adoption/ copying by the industry of the new design should be a question of material fact. Didn’t Graham v. Deere say that secondary considerations are always material?

    Yet this patent was summarily dismissed without presenting any of these questions to a trier of fact; even after the US Patent Office had earlier determined that this “simple” invention was not obvious (at a time closer to the date of invention).

    There are too many inventions that today someone would say, well Duh, it should have been obvious that things would turn out this way, like for example: the Internet, the telephone, barbed wire, the Marconi spark gap transmitter, etc. etc.

    However, back in the day, if we are truthful rather than hindsight liars even to ourselves, hardly anybody saw it coming.

  15. john white February 2, 2011 2:18 pm

    ianae: I see you’re here to bait the others into one your circular commentaries. Good luck. The end point of your thesis is, as per always, the end of patents or the utility of the patent system. Natural rights for everyone in everything for all time. Societies have tried it. Doesn’t work. It is imperative to give people a reason to do something. If the reason is removed, the activity is removed with it. This case removes the reason to come forward with a mechanical safety interlock. Why bother, it will be freely copied. So, you have the state-of-art (at whatever time the incentive is removed) for ever. Kind of like time fixed consumerism in centrally planned economies. You have what you had. Are you in Berkeley?

  16. Stan E. Delo February 2, 2011 2:18 pm

    Gene,
    This sounds a lot like legislating from the bench to me, as opposed to interpreting and clarifying the current existing patent law. I certainly hope their *decision* is overturned in an en banc hearing. It’s already hard enough and expensive enough to acquire a valid patent, without the bar being needlessly raised even higher. If their *decision* stands it will probably cause who knows how many thousands of patent applications from ever being filed in the first place, for inventions that might have great social significance, but we will probably never hear of many of them because of clueless decisions like this and KSR. (Large sigh……)

    Stan~

  17. Gene Quinn February 2, 2011 2:23 pm

    IANAE-

    I agree with you when you say: “it’s not that counter-intuitive to take a safety from one lighter and put it on a different lighter.”

    Too bad those weren’t the facts of the case. Clearly this is not what obviousness is supposed to be, nor is it what 103(a) demands. Sadly, it is what KSR dictates.

    As far as your comment relating to one of skill in the art, again I agree that one of skill in the art must be at least as knowledgeable as a high school student. To bad those facts and reality don’t match the case though.

    Did you actually read the case? I mean if you are just going to make true assertions that do not bear on the law or facts we can just ignore your comments.

    I hate to say I told you so.

    -Gene

  18. IANAE February 2, 2011 2:30 pm

    “The end point of your thesis is, as per always, the end of patents or the utility of the patent system. Natural rights for everyone in everything for all time.”

    Yeah, that’s me. A shameless filthy hippie bent on destroying the concept of personal property and especially patents, who just happens to coincidentally make his living prosecuting patent applications.

    I’m a riddle, wrapped in an enigma, wrapped in a vest.

    Now that I think of it, I probably don’t need the vest in this warm Berkeley climate.

  19. john white February 2, 2011 2:43 pm

    ha, I knew it. John

  20. IANAE February 2, 2011 2:52 pm

    Combining sarcasm and the internet – apparently not obvious even post-KSR?

  21. blue February 2, 2011 4:17 pm

    KSR needs to be properly regulated. Judges can now invalidate patents with the use of hindsight. No patent is safe against the use of hindsight.

  22. Stan E. Delo February 2, 2011 4:39 pm

    blue,

    Very well said methinks, which amounts to a retroactive taking of property rights in my opinion, as they are effectively reducing the value of millions of existing patents and applications, and therefore breaking the deal that the inventors had agreed to when filing their applications. If Leahy and et al are able to get their *Patent Reform* bill passed, it will allow post grant challenges to hobble the patent for years at a time, which will effectively make the invention obsolete after years of dealing with challenges, even if they are frivolous.

    Stan~

  23. blue February 2, 2011 5:21 pm

    Stan,

    “…they are effectively reducing the value of millions of existing patents and applications, and therefore breaking the deal that the inventors had agreed to when filing their applications.”

    Doesn’t this sound like somebody is promoting a scam? In this scam everyone wins except hard-working inventors that pay to keep their patents alive?

  24. Karen G. Hazzah February 2, 2011 5:24 pm

    >I’m disappointed here that no one is talking about the “summary judgment” aspect of this precedential opinion.
    >To my way of thinking, the [four Graham factors] should be a question of material fact.
    >Yet this patent was summarily dismissed without presenting any of these questions to a trier of fact;

    I don’t litigate, so maybe I’m missing something … but summary judgment deals with those questions of material fact that are *disputed*. I read the District Court opinion, and from what I can tell, most of these facts were not in dispute, e.g., “The parties do not materially dispute the content of [reference] Liang.”

    So what’s your beef? Procedurally, that is. I can see you think the outcome should have been different, but the court can only rule on what is before it.

  25. Gene Quinn February 2, 2011 5:38 pm

    Step-

    I did make a big deal in the article about this being done on Summary Judgment. I pointed out that you almost never win on summary judgment and why, and that it appears as if Judge Lourie and Judge Newman were writing about different fact patterns, which in and of itself suggest summary judgment is inappopriate.

    I would agree with Karen if you read the majority opinion it looks like everyone agreed on everything and the patent owner practically was asking to lose on summary judgment. If you read Judge Newman’s dissent she points out all kinds of disagreements on issues of fact. It seems clear that there was disagreement as to fact regarding your #4 at the very least.

    While I don’t begrudge Judge Lourie doing what the Supreme Court set in motion in KSR, I thoroughly disagree that this was appropriate on summary judgment.

  26. Gene Quinn February 2, 2011 5:40 pm

    Stan-

    The Supreme Court clearly legislated from the bench in KSR. I’m afraid, however, this decision is just the logical addendum to that decision. John White and I have been pointing out for years the ramifications if KSR is actually enforced as it was written by the Supremes. We have largely been disregarded as a pair of Chicken Little criers. Vindication is not sweet though. I wish it had turned out that we were wrong.

    -Gene

  27. Gene Quinn February 2, 2011 5:41 pm

    blue-

    You say: “Judges can now invalidate patents with the use of hindsight. No patent is safe against the use of hindsight.”

    I couldn’t agree more!

    -Gene

  28. blue February 2, 2011 6:34 pm

    Gene,

    Somebody has said in another post that ‘KSR is powerless against really good inventions’. The problem – what exactly is a ‘really good invention’? How exactly is a really good invention NOT defenseless against the use of hindsight??

  29. Stan E. Delo February 2, 2011 7:33 pm

    blue writes in toto:

    “Doesn’t this sound like somebody is promoting a scam? In this scam everyone wins except hard-working inventors that pay to keep their patents alive?”

    I am afraid that it does, much to my regret since I filed a very accurate PPA about 6 months ago, and now Occam’s razor seems to have been started. I am tempted to go with the one year missing parts approach extension of the PPA, since it will give me some time to decide if even trying to acquire a patent will be worth the expense and the hassle if it would not have any teeth left in it. If *Patent Reform* is passed in it’s present form as well, I think I might just walk away from the formal application as being too risky and expensive to consider to be a useful business tool, which is all it really is despite some protesting to the contrary. If I am not able to prevent cheap knockoffs from being imported from abroad by the ITC, how much would my *US patent* really be worth? Probably very little in a practical sense. I care very little for a framed document on the wall with a pretty red ribbon on it that I can proudly show off to my friends and family.

    Cheers,
    Stan~

  30. Gene Quinn February 2, 2011 7:55 pm

    blue-

    That is the problem with KSR. If it seems unique to you in hindsight then it is an invention. That type of subjective determination was supposed to be excised by the last sentence of 103(a).

    Perhaps the best thing you can hope for is that this type of hindsight laden obviousness rejection is limited to mechanical inventions. There is some language in KSR to suggest it could be so limited, but I’m not holding my breath.

    -Gene

  31. Stan E. Delo February 2, 2011 10:15 pm

    The other thing that has not even been mentioned much in this regard is what the Congress might think of the decisions made lately by Justices and Judges, and how the devaluation of US patent rights might impact our pretty immediate economic growth…. Like in about 3 years from now. If they can’t see that far ahead, then perhaps the American innovation engine that the Department of Energy director Chu mentioned several times will quietly expire, and nearly no-one will even notice it much for several years. If Congress starts to understand how US patent law is being designed around, perhaps they will wake up and smell the coffee. If they don’t figure that out, we are all doomed anyways, so who cares what Bobby happens to think? Seems a bit like sawing the branch off that you are sitting upon though Bobby, or perhaps I should say evolution in action? No insults intended, but just my personal observations from what I can gather from your posts. Gene came up with an excellent analogy when he mentioned computer programs that had a programming error that made them chase their own tails in an endless loop, causing nothing useful to happen and basically disabling the computer until the programming error was fixed. Sorta like the definition of insanity, where you keep doing the same things over and over and over again, and seeming to expect different results for some reason. Hopefully Mr. Michel will be trying to talk some sense into their ears, but it might be a bit of a hard sell I would imagine. Thanks Paul if you are tuning in! It could have been much worse if you hadn’t been so diligent in the past.

    Best regards,
    Stan~

  32. Stan E. Delo February 2, 2011 10:59 pm

    Perhaps Pernicious Persimmon? Maybe some Phosporous salts thrown in just to make it kick in sooner and give it some colour, but the liabilty aspects seem to be a bit problematic in my humble opinion. I agree that you should handle the sales end, and I will just develop new formulations for your consideration.

    Stan~

  33. Blind Dogma February 3, 2011 8:46 am

    John and Gene,

    What are your thoughts on the idea that there is an obvious reason why certain people strive to classify the patent right as a non-property issue?

    Can it be the post-facto lessening of a non-property right meets a lower Constitutional barrier than a similar post-facto lessening of a property value? Can it be the Takings Clause is avoided in one, but not the other? Can it be the principles of equity simply are applied differently in the two arenas? (For the non-lawyer folks, I am not implying that the aspect of “property” makes the right “untouchable” – I am merely pointing out a critical difference in the level of scrutiny) Certain people seem blind to the concept of “making whole”, seem blind to the notion that while typically considered very severe, injunctions are not severe when the subject is the patent right simply based on what the patent right is. It is amazing what you can see when you open your eyes.

    And lets all keep in mind that the real value is not in “doing” – the real value is in the ability to “restrict others from doing”. It seems to be a rampant problem that all types of people seek to assess the value by computing the value of “doing.”

  34. Anon February 3, 2011 11:47 am

    The inclusion of “market forces” and “design drivers” in the KSR decision is a clear overreach of that Court given the explicit renunciation in the law as passed by Congress. The Court should have been mindful of the historical context of the provision. Yet, the Court stripped out the meaning of “Patentability shall not be negatived by the manner in which the invention was made. by proclaiming that the manner in which the invention was made informs the obvious decision. As backing in the KSR case, the Court cites itself – when it should have looked to the law and its record. By citing to its own decisions, it merely jumped the shark in several steps rather than one ginat leap – but jumped the shark it did nonetheless.

    It does or it does not. It is or it is not. Congress said “NO” and the courts said “Disregard that portion of the law”. Who watches when the Supreme Court oversteps its authority?

  35. IANAE February 3, 2011 11:54 am

    by proclaiming that the manner in which the invention was made informs the obvious decision.

    Considering how the invention was actually made by the inventor is surely an error of law, but considering how the invention would be made by a person skilled in the art at the relevant date is just as surely the correct test for obviousness.

    If it turns out the inventor did exactly what the person skilled in the art would have done, the claim is obvious – not because of how the invention was made, but because a person skilled in the art would have arrived at the same invention.

  36. Anon February 3, 2011 12:51 pm

    IANAE,

    Your pedantic difference is without merit and fails. You cannot have an error of law that at the same time is a correct test for obviousness. The test for obviousness cannot use those considerations of “informing” that the law says not to use.

    It does or it does not. It is or it is not. Congress said “NO” and the courts said “Disregard that portion of the law”. Who watches when the Supreme Court oversteps its authority?

  37. TINLA IANYL February 3, 2011 2:48 pm

    Gene,

    I respectfully disagree that KSR mandated this result.

    I’ve read KSR repeatedly looking for the part of the decision that says a previously unknown element in a combination is obvious if it would be in the skill of a PHOSITA to modify a known element to arrive at that previously unknown element. It’s just not in the KSR decision.

    KSR allows common sense to be used to combine known elements from different references, or to substitue one known element for another, or to change a position of an element to another position in a limited range of known positions. But this business about modifying known elements to arrive at previously unknown elements is a result of whispering the KSR reasoning from one ear to the next until it comes out garbled at the end, and then everybody laughs. Only, it’s not funny this time.

  38. To the Banc! February 3, 2011 3:53 pm

    So perhaps then everything which could be invented really already has been . . . in the mechanical arts?

    This case cries out for en banc.

  39. blue February 3, 2011 7:11 pm

    Judge Newman spoke with facts while the others simply used assumptions to construct a new set of facts which is precisely what KSR has allowed them to do.

  40. john white February 3, 2011 8:46 pm

    ianae: I think the point of the last sentence of 103(a) is not to imply a standard of what ordinary skill might be in a given circumstance, but rather it is to not diminish the notion of what is an unobvious invention by virtue of how it was actually created. Happenstance is to be rewarded equally with painstaking research. It would seem unlikely, therefor, that the Judges can make an error of law (i.e., taking into account all that a “high school” shop class person would had to have done/did) and not arrive at an error in decision as to that issue.

    BD: interesting point. I think the reason for the casual treatment of the lessening/taking is that “patents” are considered ill-gotten by the S.Ct. In many an opinion, they begin with the “deep seated antipathy” language we as a society have to monopolies. They forget, because they choose to, that a patent is merely a confirmation of a property right. It wouldn’t exist in tangible form but for the inventor; yet they dismiss this and proceed instead with the notion that it was “free” until the patent granted. In truth, it wouldn’t exist but for the patent grant.

    I believe it is a taking, and requires due process accordingly. (In Festo, they sort of hinted that was a part of the reason for keeping DE alive; property right expectations of past applicants.)

  41. step back February 3, 2011 8:54 pm

    “Judge Newman spoke with facts”

    There are few if any facts in this case because witnesses have not testified in front of a fact finder (jury).
    The patent owner never even got a chance to present his evidence to a fact finder.
    The defendant also did not, but does not care because they won on a even-before-the-facts-are-developed, summary judgment basis.

    There are many of what I call thruthie-lies out there.

    One of them is that the ordinary artisan (PHOSITA) in every area of art just keeps getting smarter and smarter.

    That’s simply not true. In some areas of art they are getting dumber and dumbest. The PHOSITA of last year may not be as smart as the PHOSITA of 20 years ago in a number of fields: i.e. the making of leather (patent leather) shoes.

    Here in Tokia, the appeals court merely assumes that PHOSITA keeps getting smarter and smarter in the art of fire starters made for barbecue grills. But we don’t know for a “fact” that such is true. No testimony has been received to that effect. No jury has decided the issue.

  42. Blind Dogma February 3, 2011 9:31 pm

    Step, As much as admire your thought process, I think you let one get by you.

    One of them is that the ordinary artisan (PHOSITA) in every area of art just keeps getting smarter and smarter.

    Are you forgetting that augmented with KSR, the PHOSITA must get smarter every single year, because all material that becomes “prior art” over the course of that year is automatically attributed to the PHOSITA knowledge base? (And prior art never disappears). Are you forgetting the additional augmentation of KSR , in that it is no longer merely only the singular field of art that matters, but also, any field of art that may be conceived of that bears on the particular solution?

    It does not take a jury to understand this fact.

    Is that a big gulp? Ooooh Yeeaaah (watch for flying bricks).

  43. step back February 3, 2011 10:17 pm

    BD,

    Have another sip of the Kool-Aid.

    Per KSR, PHOSITA is no longer an automaton.

    Even an automaton could not read all prior art because not all of it is in machine readable form.

    But since the KSR reformulated version of PHOSITA is not an automaton and merely has “ordinary” creativity, he is not creative enough to read and grasp all prior art written or shown in all of many foreign and strange languages.

    The ordinary creativity of KSR’s PHOSITA will cause him to skip the step of trying to grasp all prior art. After all, why bother? It’s above his pay grade. He is only getting ordinary wages. And he has ordinary level common sense. 😉

  44. step back February 3, 2011 10:20 pm

    As Matt Damon said in Good Will Hunting: How do you like them ordinary apples?

    Crush ’em and put ’em in the Kool-Aid mash. 🙂

  45. Gene Quinn February 3, 2011 11:11 pm

    To the Banc!

    Very clever. I suppose those PTO Directors who predicted that everything worth inventing had already been invented were just seeing into the future!

    -Gene

  46. Gene Quinn February 3, 2011 11:55 pm

    BD-

    I’m not sure that PHOSITA is getting any smarter. For example, it seems like a high school shop student who never could have figured out the invention before hand but can easily understand it in hindsight is PHOSITA. I think with the new hindsight standard for obviousness PHOSITA is nothing more than a high school shop student, at least for mechanical inventions.

    Step-

    Is that hard cider Kool-Aid you are pouring? I might need a taste!

    -Gene

  47. Stan E. Delo February 4, 2011 12:49 am

    BD and Gene,

    They are probably at least as smart as they have been in the past, but the sheer quantity and scope of the prior claims that they have to consider must be a hard row to hoe, if the PTO can’t afford to reward excellence with pay raises to try to retain some of their most promising employees. Why would I want to work for less if I could go into the private sector and earn perhaps 50% more and be able to set my own schedule? US patent examiners are probably the most important employees possible, because they are so critical to the economic success of an entire nation. Give them enough time to do their job properly, and reward them for intelligence, and then Step Back! It might very well be moot point though, if US patents are devalued so much that they aren’t worth pursuing anymore. Think I am kidding around? Just go have a look at the latest stab at *Patent Reform*, and give me your honest opinion as to if you would try to acquire a patent these days. Not fun and apparently being malicious in some cases or bordering on anti-trust issues by eliminating competition before it even has the slightest chance of surviving. So how is THAT for your greater public good Bobby? Nothing ventured, and Zero public gain.

    Stan~

  48. step back February 4, 2011 5:42 am

    (Pushing my glass of good will apple cider flavored Kool-Aid to the side and looking at you, serious man to Serious Man –so to speak, if you will, if Timshell)

    When I was a young man, and that was more years ago than I care to admit, people built stuff in their garage. Kids had erector sets and Heathkit(TM) sets. They acquired the knowledge, skill and wisdom to do things for themselves. A hands-on kind of intelligence, if you will. They didn’t spend all their time with their heads stuck inside a TV monitor.

    But look around you today.

    How many kids are spending all their hours of youth mindlessly playing crash, burn, maim and kill on their TV game boxes (PlayStation, Nintendo, X-box, whatever)?

    How many in contrast go to the library and actually read? Read anything at all, let alone develop hands on skills to do things with chemistry sets, erector sets and/or alike hands-on hobbies?

    I’ll venture to guess that the “ordinary” child/man of today is far less intelligent (in an all around kind of way, including not doing his/her math home work on the TI scientific calculator, not doing his/her book report by using an online Cliff’s Notes) than was the ordinary person of say 50 years ago.

    And it is the ordinary child who grows up to become the ordinary artisan in his chosen field of endeavor.

    So the ordinary artisan (PHOSITA) of today is not your father’s PHOSITA.

    We, as a society, have gone over the top of a bell shaped IQ curve and we are no longer getting smarter and smarter. We are actually heading in the direction of becoming an “Idiocracy” (movie).

    In many areas of art (and I’ll include the software arts here), the “ordinary” practitioner has passed over the hump in terms of level of skill, insight, wisdom, what have you. So has the ordinary judge. You don’t see the likes of a Giles Rich on the CAFC anymore. Pauline Newman, J. is probably the last of her kind. Learn to accept more Idiocracy decisions like Tokai, Bilski, Nuitjen, KSR because that is where we are heading. The trajectory has already been written in the sands of time. It’s History. And the ever-getting-smarter PHOSITA is also history. Some of you are going to wake up one day, look around, and proclaim: WTF! when did all this happen? It happened. Inhale deeply and smell the cider.

    As a further look at this issue, see: Have we hit Peak Intelligence?

    Peace.

  49. Blind Dogma February 4, 2011 7:13 am

    Now that the choir has been assembled…

    he is not creative enough to read and grasp all prior art written or shown in all of many foreign and strange languages

    Step, why let reality get in the way of a perfectly powerful legal construct?

  50. step back February 4, 2011 4:46 pm

    BD,

    Good point.

    A Kool-Aid augmented reality is better than a real reality, especially when it helps to reduce judicial overhead costs by eliminating those pesky trials by jury. Who wants to sit through a boring voir dire when you can dispense of the whole case with a quicky Sum-J?

    Even though, in finding obviousness in a Sum-J setting, a district court judge may perhaps be overly-tempted by the forbidden forces of hindsight, surely he/she would not also be swayed by the idea of avoiding a costly jury trial. Right?

  51. The Mad Hatter February 7, 2011 9:15 am

    The invention in question, an improvement to the safety features of a BBQ grill lighter, used mechanical features to make it possible for the trigger to be pulled simultaneously with depression of the lock-releasing button. The closest prior art, which was the base reference upon which obviousness was premised, did not have any safety feature or mechanisms whatsoever. Thus, the Shike utility lighter needed to be combined with other prior art references having a safety mechanism. Thus, the district court and CAFC panel majority found the claims to be obvious over Shike in view of the safety features of a cigarette lighter patented to Morris and/or a cigarette lighter patented to Floriot. The totality of the combination even if made still could not produce the claimed device in question.

    I’m just going by your description (our barbeque has an electric lighter, so I don’t have a Tokai lighter here), but the mechanism in question sounds remarkably like the locking mechanism on a Glock semi-automatic pistol. So, the question becomes, if we take the locking mechanism used on a pistol, and combine it with a barbeque lighter, is it patentable? To me the answer is no, it’s obvious.

    Let’s go back to KSR – when I read the patent, what I understood it to be, was the relocation of a microswitch on a control arm, to optimize the system (i.e. make damned good and sure the switch activated when the pedal was depressed). Having worked in manufacturing, this sort of optimization work is done all of the time. In smaller companies it’s common to have the design of a device morph over time as modifications are tried to make it more efficient.

    So we run into the question of what exactly is patentable subject matter? Gene takes a very wide view of what should be patentable (Gene, please correct me if I’m misstating your position). Gene thinks that the combination of a bunch of existing concepts can be patentable, if the resulting device works differently than existing devices, whether it’s more efficient, takes up less space, is more powerful, etc,

    I take a very narrow view. I would consider any amalgamation of concepts not to be an invention. Let’s consider the Apple IPad (one of which is sitting beside me). There is not a single new concept on the IPad. A lot of the concepts that the IPad uses are 15 or 20 years old. The novelty is that Apple has produced a device that through software and hardware integration works better than any other tablet device ever designed, going back to the original Newton Message Pad. The device itself is just a variation on a theme, and one that many other companies (including Palm, Grid, Microsoft, etc.) had been involved in previously. The difference is that Apple ‘got it right’ and the tablet PC market exploded. But Apple didn’t ‘invent’ anything from my point of view.

    Which all brings us back to the question of what is patentable. Quite frankly I shuddered when I heard Obama’s speech about issuing more patents. Consider how many patents are invalidated in court. Courts don’t invalidate patents without a good reason, and the obvious answer is that the U.S. Patent and Trademark Office isn’t doing it’s job. It’s issuing patents for inventions that, well, aren’t inventions. It often issues patents for devices that are already in existence and in use in commerce (see the Java Model Railroad Interface lawsuit or IP Innovation v. Redhat and Novell).

    The problems with such patents is that they are a tax on the system, diverting money that could be used for developing new products to the legal system.

    In my opinion, if the USPTO can’t get it right, it should be shut down, because the costs to the citizens and businesses in the United States means that the office is not acting within it’s Constitutional guidelines.

    Wayne

  52. step back February 7, 2011 5:40 pm

    The difference is that Apple ‘got it right’ and [only thereafter] the tablet PC market exploded. But Apple didn’t ‘invent’ anything from my [enlightened] point of view.

    Dear Mad Hatter,

    Before we settle into a discussion over your under-the-hat ideations, here is a cup of the double macho leaded Kool-Aid you ordered. I know you don’t like the unleaded kind. You need the extra lead to keep that Hat of yours spinning madder and madder each time. So enjoy.

    But here’s the thing.

    There is a difference between mere “concept” and enabling teachings that are first to be disclosed to the skilled public in a way that enables them to make and use a new thing.

    Yeah, sure anybody can say I have climbed to the mountain top and I have seen the next “concept”.

    But actually enabling it and “getting it right” are a whole other thing.

    The fact that the tablet market “explodes” (your words, not mine) only AFTER that special someone comes down from the mountain top with a set of enabling tablets speaks volumes to the unobviousness of the whole thing.

    Everyone wants to make tons of money by being the first to cash in on that “exploding” market place of yours.

    So if it’s all so obvious, why didn’t they. WHY DIDN’T THEY?

    Copying by others is not only the sincerest form of flattery, it is also a blatant admission by others that the thing is wonderful and was not at all obvious before the fact. It was a breakthrough invention, a revelation to them all.

    Let he who first brings the tablets down from the mountain top reap a just reward lest no others dare to make that arduous climb.

  53. Stan E. Delo February 7, 2011 7:06 pm

    Step back,

    Actually the term Mad Hatter refers to the practice of using Mercury to assist in the production of Beaver or other types of felt used to manufacture hats, which made the felt fibers bind together “better” and helped to make the hats more waterproof in soggy old England back in the day. It might be worthy of notice that mad hatters are only to be found beyond the looking glass these days, and I really don’t care to go there personally, but to each their own I suppose. Perhaps he is still casting about for a burning bush or some other sign that he has been blessed with a divine vision or something like that.

    Great inspiration for a new flavor though, in the “M” class, as in Manic Mulberry, with a heavy dose of Mercury to keep them a bit confused whilst you are doing your end around sorta thing. All my flavors are just copyrighted so far, but perhaps I should talk to Beth and BD a little bit to see what it might be possible to Trademark, without stepping on too many toes in the process. To make a Trademark really valid though, either BD or I will have to purvey our wares at least across State lines, or internationally? Not sure about the latter, because I am not a patent or any other type of attorney.

    Best regards,
    Stan~

  54. The Mad Hatter February 7, 2011 9:30 pm

    Step Back,

    Mercury my man, mercury.

    Stan E.

    My blog is called Through the Looking Glass, from my habit of looking at things differently. Like my latest article Anonymous v. Computer Insecurity Expert Aaron Barr, which looks at the situation from a cultural viewpoint.

    Wayne aka The Mad Hatter

  55. step back February 8, 2011 6:50 am

    Stan,

    Thanks for the correction:
    http://www.phrases.org.uk/meanings/mad-as-a-hatter.html

    Yes we should consult with DB to determine how adding heavy doses of mercury to the Kool-Aid might affect its flavor as well as efficacy.

    Of course we are going off topic here. The real issue are the simple questions:

    If the thing was going to create an “exploding market” and it was indeed so obvious to others at an earlier time, then why didn’t the others do it at the earlier time? Why did they wait until a later in time “inventor” discloses the idea and only then do they copy and rush in with their me-too versions?

  56. Blind Dogma February 8, 2011 7:45 am

    In certain situations, an “enlightened view” merely means figuring out how you ended up sleeping in your neighbor’s bathtub.

    Mercury is rather difficult to process in bulk and taints the taste. I only use it for specialty versions like Beaver Brew (served in a water proof beaver fur mug). Great for those north of the border who like to dictate how other countries should have their IP laws.

  57. The Mad Hatter February 8, 2011 8:23 am

    In certain situations, an “enlightened view” merely means figuring out how you ended up sleeping in your neighbor’s bathtub.

    Mercury is rather difficult to process in bulk and taints the taste. I only use it for specialty versions like Beaver Brew (served in a water proof beaver fur mug). Great for those north of the border who like to dictate how other countries should have their IP laws.

    And there’s a patent for that too. Sleeping in your neighbors bath tub.

    Wayne aka The Mad Hatter

  58. Blind Dogma February 8, 2011 11:42 am

    Plenty of prior art for sleeping in your neighbor’s bath tub. No patent will be forthcoming for such.

  59. The Mad Hatter February 8, 2011 11:51 am

    Plenty of prior art for sleeping in your neighbor’s bath tub. No patent will be forthcoming for such.

    Too late, it’s already been issued to a fellow named Archimedes.

    Wayne aka The Mad Hatter

  60. Blind Dogma February 8, 2011 2:26 pm

    MH,

    You quite miss the point – any such patent to Archimedes has long long since fallen to socity at large and is in the public domain. Hence, no patent will be forthcoming for such, and hence, such is prior art.

    If you are going to try to be witty, try to be on point, else you appear to be a blunt dullard.

  61. step back February 8, 2011 4:28 pm

    Sleeping in your neighbor’s bathtub, with his hot daughter next to you? That might be novel (and perhaps unexpected for those skilled in the art).

    However, be forewarned that your neighbor may practice his 2nd Amendment right to own bear arms (the unclawed kind) and he may be coming down the hallway at this moment with plans to bury his claws into you.

    Kool-Aid tends to blunt the pain.
    Drink it often and in massive quantities 😉

  62. Stan E. Delo February 8, 2011 5:06 pm

    In this bathtub case, I think I would prescribe Passionate Poppy, as it will hurt a little less that way when the angry father finally shows up. BTW I Really like the Beaver felt cup idea a Lot! Still working on the nasty Mercury aftertaste here at the research lab, but if somebody was drinking from a mini hat made of felt, it would be a dead giveaway as to their motives. I wonder if they still have any leprechauns left in Canada any more? Pot O’ Gold, and all like that sorta thing. Maybe they decided to go back to Ireland, as there wasn’t any place left for silver tongued pixies on this side of the pond for various reasons. Has anyone else ever read Flowers for Algernon?

    Stan~

  63. Blind Dogma February 8, 2011 5:06 pm

    That might be novel

    Been there, done that.

    Um, that wasn’t your daughter , was it Step?

  64. step back February 8, 2011 6:09 pm

    BD,

    Funny that you should ask. I just spoke with my daughter.
    She assured me there was no Beaver-Hat wearing, Kool-Aid drinking, Mad Hat Maker residing in her bathtub.

    She did have a question though:

    Where have all the (sane) young men gone?
    Have they gone to sniffing flowers with everyone?
    When will they ever learn. Oh when will they?
    The answer my friend is not blowing ‘ore this land of the IPWatchDog brave.
    The answer my friend is not blowing through these winds.

    __________________________________
    Advertisement:
    Drink Brawno-flavored Kool-Aid. It has mecury-lytes.

  65. Stan E. Delo February 8, 2011 7:51 pm

    Step,
    Not a bad gambit, but I would respectfully submit a few modifications:

    Advertisement:
    Drink Brawno-flavored Kool-Aid. It has mercury-lytes for lightning swift brain functions, and is fortified with vitamins for improved cognition. Results may vary depending upon pre-existing conditions, or if your doctor recommends that you avoid strenuous activities or anything that might impair your heart functions, or if you are diabetic or have high blood pressure, or you were born on Wednesday, or have had a family history of acute and severe lead poisoning within the last 20 years.

    Stan~

  66. The Mad Hatter February 8, 2011 8:22 pm

    You quite miss the point – any such patent to Archimedes has long long since fallen to socity at large and is in the public domain. Hence, no patent will be forthcoming for such, and hence, such is prior art.

    Yeah, but the Greek patent office is so inefficient the patent only issued last week,

    Wayne aka The Mad Hatter

  67. The Mad Hatter February 8, 2011 8:23 pm

    Funny that you should ask. I just spoke with my daughter.
    She assured me there was no Beaver-Hat wearing, Kool-Aid drinking, Mad Hat Maker residing in her bathtub.

    She did have a question though:

    Where have all the (sane) young men gone?
    Have they gone to sniffing flowers with everyone?
    When will they ever learn. Oh when will they?
    The answer my friend is not blowing ‘ore this land of the IPWatchDog brave.
    The answer my friend is not blowing through these winds.

    It’s funny, but my son was making the same sort of comments about young women.

    Wayne aka The Mad Hatter

  68. Stan E. Delo February 8, 2011 9:06 pm

    So what is the point you are trying to make here Wayne? I certainly can’t find it anywhere in any logical sense. Are you actually licensed to practice before the Canadian patent office/authority? An inquiring mind would really like to know. I am guessing a bored and broke Canadian patent agent, but appearances can be deceiving at times, especially when respondents choose to remain anonymous for whatever reasons. When you come here to the US and try to tell American inventors like myself what you think our patent laws should be, I find it a bit disturbing, and frankly it is none of your damn business unless you have clients here. Sorry, but I won’t be able to provide any referrals, even if I could actually figure out who you and Bobby for instance really are. It is very easy to be nasty and outrageous when you are faceless and perhaps dishonest, but the tide and the truth wait for no man or woman. You are either there or you are NOT.

    Stan~

  69. The Mad Hatter February 9, 2011 12:40 am

    Stan,

    I’m hardly Anonymous, but Anonymous appears to like me.

    I am not a Lawyer. I am a disabled salesman, who used to be heavily involved in some pretty technical stuff. I’m one of maybe a hundred people capable of designing a three way catalytic converter core in North America. Yes I have time on my hands. Of course most of that time is spent partially stoned to keep the pain under control.

    Currently I dabble in politics. I’m pretty well known in some circles in Canada as honest, but a total pain in the ass. I’m persistent as hell. Ask Gene. Oh, and all of my information is on my website, which you can access by clicking on my nom de guerre.

    I gained an interest in patents from having to read so many of the damned things. While I was still working, one of my responsibilities was to evaluate vendors, and decide if they were worth considering. Most weren’t. It was generally easier to check out the ones with patents, so I read them. I quickly learned that the U.S. PTO was an example of Sturgeon’s Law run amuck.

    Sturgeon’s Law: 90% of Everything is Shit.

    USPTO Variation on Sturgeon’s Law: 99.99% of patents are shit.

    As to American Law not being my business, I’ll make you a deal. You get the MPAA and the RIAA to stop interfering in Canadian lawmaking, and I’ll stop interfering in American lawmaking. Deal?

    Wayne aka The Mad Hatter

  70. Stan E. Delo February 9, 2011 1:10 pm

    Wayne-

    I really appreciate your candor, as it helps to understand where you are coming from. US patent rights are being assailed from all sorts of directions and for all kinds of bogus reasons, and I personally think that is very wrong, both for US inventors and the economy and for the value of my own pending patent rights as well. Is that selfish of me? Perhaps it is, but I happen to think not, because patents have been of great value here in the past, and I hope that will continue to be true into the future.

    Stan~

  71. Bobby February 9, 2011 1:45 pm

    Stan,
    While I can see how some degree of anonymity can make being more bold easier, It seems that being nasty and outrageous is not that difficult for you. You have previously made comparisons of reigning in patents for practical reasons to kidnapping children, and you have been throwing around insults towards me, even in discussions I have not yet entered.

    The interesting thing about you criticizing a non-American for telling an American how their laws should be is that a large amount of the supposed justification for changes to US patent and copyright laws were getting them ‘harmonized’ with foreign laws, and the US government and US conglomerates exert pressure on foreign governments. For some reason, everyone feels like they have to poke their nose in other countries’ laws, and it seems that effectively we only get a one way ratchet. Our current law for copyright for individuals is no longer based on a fixed term, but the life of the last surviving author, and this is largely so because of international pressure. If a 70 year old, left handed, diabetic, African American male writes a song, he will statistically get far less years of protection than a 15 year old, right handed, non-diabetic, Caucasian female. That’s discrimination, and not even a kind that fits the specific interests of some powerful lobby, just arbitrary discrimination based on the countless factors that go into life expectancy.

  72. Stan E. Delo February 9, 2011 2:48 pm

    Bobby-

    I have tried very hard to refrain from engaging in personal insults, but it is difficult at the least for me because I happen to think that most of your posts are somewhat misguided. There is also perhaps a subtle difference between an insult and merely being descriptive of what I happen to perceive others trying to assert and what their motives might be. On the other hand, you have been repeatedly insulting the intelligence and ability to comprehend what they read of a very clever patent attorney or agent here, which I happen to find to be a bit offensive. My posts about Kool-aid were just an attempt to keep things from becoming too grim and vindictive.

    Off to joust at my wind turbine prototype a little more this afternoon. Due diligence, and all like that.

    Stan~

  73. Bobby February 9, 2011 3:16 pm

    Stan,
    I personally find you to often be misguided as well, but I refrain from saying that the Stans of the world are making the sky fall. I don’t recall insulting the intelligence of anyone, and certainly not in a direct way, although I may have argued that they had failed to properly understand either what I’ve said or the Constitution, and repeated failure in that aspect may have resulted in being put in a manner that is not totally civil. While I acknowledge the ever so slight possibility of my public-centric view of the Constitution’s perspective on patents being in error since I was not the author, I’m quite sure that I understood the intent of things I’ve said.

  74. Blind Dogma February 9, 2011 3:53 pm

    I’m quite sure that I understood the intent of things I’ve said.

    Yet you fail to unerstand the incorrectness of the things you’ve said – intent or no.

    You simply do not care if you are right or not – you are on a mission to say what you intend to say. Eyes closed, and chuggin away at the Kool Aid.

  75. Stan E. Delo February 9, 2011 4:07 pm

    “Forgive them Father, for they know not what they do.” An alleged quote from JC when he was being crucified by the Romans in the early part of the first millenium.

    Stan~

  76. The Mad Hatter February 9, 2011 4:15 pm

    US patent rights are being assailed from all sorts of directions and for all kinds of bogus reasons, and I personally think that is very wrong, both for US inventors and the economy and for the value of my own pending patent rights as well. Is that selfish of me?

    But are those reasons bogus? Do you have a peer reviewed study that backs up your assertion?

    Wayne aka The Mad Hatter

  77. Stan E. Delo February 9, 2011 4:39 pm

    Wayne,

    I happen to think they are, as in MickySoft trying to eliminate much of the value of US patents so that they won’t have to pay damages for blatant infringement of other’s IP rights. They spent about $200,000,000 to lobby for *patent reform* in the last few years to avoid having to pay for their egregious infringing behavior, and it turns out that the damages they have had to pay so far amounts to about 1/2 of one percent of their profit margin. So how greedy is that? Why are they so very interested in taking away my patent rights for that tiny amount of extra profit?!? Seems a bit sick and arrogant to me, but guess what? THEY LOST! They were trying to spend $200 million to gain an extra Billion or so in in profits, but Congress said NO. I happen to personally think they are just very embarrassed that they got caught stealing stuff in the public eye, and were willing to spend hundreds of millions to make their Evil Empire public relations perception just go away, and why should they give the future of US patent law any consideration at all? Why not just burn all the bridges once they are done with them?

    Stan~

  78. Bobby February 9, 2011 4:56 pm

    BD,
    In our current conversation, you failed to understand what I meant when I used ‘that’ in comment 90. I meant that to refer the previous sentence, while you did not understand said sentence. I’m quite confident in my usage of pronouns there, and quite confident that you were seeing what you wanted to see in my post, even with nothing to back such an interpretation. If you read my posts in such a manner, it’s no wonder you see my position as unreasonable, but that’s not my fault.

    Stan,
    Again, you make an inappropriate reference to theft, and you seem to think that MS is very anti-patent. They may be against NPEs having strong patent rights, since those are no use to those rights, but patents are a useful tool for them, especially given the complications it can cause for FOSS. If MS and the other big scary companies wanted a wholesale end of the patent system, they could probably get it without much of a problem, especially since they could point to patents as an inhibition of free enterprise and competition.

  79. The Mad Hatter February 9, 2011 5:31 pm

    Stan,

    Microsoft hasn’t spent anywhere near that number. They couldn’t afford to. The company will be bankrupt by late 2014 according to my calculations. A lot of people think that I’m crazy, but 1+1 still equals 2.

    Wayne

  80. Stan E. Delo February 9, 2011 6:04 pm

    Bobby and Wayne,

    I grew up about twenty miles away from MS, so I don’t think i need either of you to educate me about what MS has or hasn’t done in the past. In 2007 alone 200 million was spent by large IT companies to try to alter US patent law to suit their particluar needs. Deny it all you like, but I know it to be true, whether you happen to find it to be convenient for your purposes or not. Bill Gates started MS with a few arguably questionable patents in the early 90’s, and recently retired with about 32 Billion in his personal account, so 200 million to keep us upstart inventors at bay is like pocket change for them. They probably net about 100 Billion a year in profit as just a wild guess, so why not hobble the competition for a few nickles or dimes or quarters if they thought they could? If you can answer that riddle I would be very interested in hearing of it. Bill has since given nearly half of his fortune away to humanutarian causes, which I find to be very inspiring, but the current management of MS is mostly pretty greedy and arrogant in my opinion. (Steve Balmer)

    Stan~

  81. Stan E. Delo February 9, 2011 6:18 pm

    Correction-

    In the early 80’s. His father Bill Gates Sr. was a prominent attorney in Seattle who managed to get a few patents allowed for Bill Jr. and Steve Wosniac, literally while they were developing the software in Bill Sr.’s garage. Later Steve W and Bill Jr. had a falling out, and Steve J came on the scene later, so Apple was born from that. If those early patents hadn’t been allowed, we would probably all be using snail mail and phone calls to stay in touch, and this particular discussion would probably not be possible.

    Stan~

  82. Bobby February 9, 2011 6:33 pm

    Stan,
    I’m not making the argument is not that MS has not tried to alter patent laws, although a source for that number would be nice.
    Now, the statement that Gates started MS in the early 90’s it outright untrue, and evidently so to anyone with an internet connection and basic knowledge of search engines. They did have a few patents by the early 90s, but I seem to recall MS being founded in the 70s, and the IBM PC, which featured MSDOS (under the name PCDOS iirc) came in 1981.

    “They probably net about 100 Billion a year in profit as just a wild guess, so why not hobble the competition for a few nickles or dimes or quarters if they thought they could?”
    I’m not saying that MS would not have incentives to do so, but I would see the more effective way of doing that being something that legally keeps competition at bay. One of the biggest reasons to use Microsoft products is the compatibility, and patents can keep the capability of competitors to be compatible at bay. Part of the lawsuit MS brought against TomTom involved patents on the FAT filesystem. It is by generally not considered to be the best filesystem or really anything that special, but it is one of two filesystems well supported by Windows, the other being NTFS, which isn’t quite as well supported on non-Windows platforms. Therefore, it’s pretty reasonable to say that they used FAT32 because being compatible with Windows was important, not because FAT32 was a good technical choice, and yet still had to pay MS.

  83. The Mad Hatter February 9, 2011 6:35 pm

    Stan,

    Microsoft didn’t gain any patents until the 21st century. Steve Wozniak and Bill Gates never worked together.

    Please don’t dream things up. If you want to make a point about how much money is being spent, please provide documentation. Solid documentation. Ran into one guy who claimed that a charity got $23 billion in donations. When I went to the link he supplied, the amount mentioned was $23 million, with no documentation to prove whether the amount was right or wrong.

    I have no doubt that there are companies lobbying for lessened patent protection. What you didn’t mention is that there are companies lobbying for increased patent protection too. By not mentioning that money is being spent by the pro-patent lobby as well, you are effectively lying.

    Wayne aka The Mad Hatter

  84. Bobby February 9, 2011 7:01 pm

    Stan,
    Missed your correction, but it still seems to be quite contrary to what is documented as actually having happened.

    Wayne,
    It’s not quite true that MS didn’t get any patents until the 21st century. The earliest application I can find dates back to 1985 (forget when it was granted), which is still outside of the point where MS would be considered a startup. In comparison to IBM at the time and even MS now, I would see it as reasonably fair to say that they PRACTICALLY had no patents in the 21st century. Please don’t take this personally, from what I’ve seen, you appear to be quite concerned with facts, and I just want to keep you honest, and make such a correction before it can be used against you.

  85. The Mad Hatter February 9, 2011 7:02 pm

    Microsoft’s total revenue for fiscal year 2010 was $62.484 billion dollars. Net Income was $18.760 billion.

    As to the TomTom case, there’s still a strong question about whether the patent is valid, since the file system was in use for many years before the patent was applied for.

    Wayne aka The Mad Hatter

  86. Stan E. Delo February 9, 2011 8:09 pm

    “Stan,
    Missed your correction, but it still seems to be quite contrary to what is documented as actually having happened.”

    I don’t particularly care if you are able to roast me for things that I got wrong from a 20-year old memory. Maybe you will go look it up for us all if you are so concerned about your precious software patents. If I had my way I would completely abolish software patents like New Zealand recently did, and all this sturm and drang on Gene’s dime would probably just Go Away. Why all this effort to devalue or de-fang patent rights here in the US? I tend to think it is just a desire to allow you to do what you you like without any consequences, which I happen to disagree with. Sorry about that, but we seem to have a lack of communication here, as the Warden of the prison in the movie HUD once famosly said. He had the prisoner portrayed by Paul Newman assasinated by the prison gaurds to set an an example for future prisoners to not defy his mandates.

    Maybe go have a look at another very interesting movie, entitled the Shawshank Redemption, starring Tim Robbins and Morgan Freeman. Now that I happen to think of it, Morgan’s last name is perhaps a bit enigmatic.

    Stan~

  87. Stan E. Delo February 9, 2011 8:19 pm

    Correction=
    Cool Hand Luke.

  88. Stan E. Delo February 9, 2011 10:34 pm

    BD~
    So here we are again, pondering the fate of the free world while Hitler is poised to invade England and build two-stage W-4 rockets that are capable of striking New York towards the end of WWII. My father flew P-47’s during the war, and he told me of finding about two dozen ME262’s that their flight found on the ground, that were apparently out of fuel, which they destroyed like exterminating nasty carniverous hornets or wasps. The 262’s were targets of opportunity, after the P-47’s had escorted American bombers into Germany to attempt to bomb them back into the dark ages. They have since bounced back and have become responsible citizens of the world, but it was a bit nip and tuck here and there for a few years.
    Aufweidersehen,
    Stachou

  89. Bobby February 9, 2011 11:42 pm

    Stan,
    It was not my intention to roast you, but I’m not sure if there was anything remotely close to true in what you said. If you are going to make an argument for why the ‘assault’ on patents is bad, then it needs something to back it up. If the ‘assault’ is actually the prudent thing to do, then it is those standing in the way that are the ‘bad guys.’ The knowledge that I can find (if you can find knowledge to the contrary, please go ahead) suggests that patents played little to no role in Microsoft’s early success, so if they were opposed to patents, it would hardly be hypocritical in that respect, which it seems is what you’re going for. Of course, if the truth is they are fairly fond of software patents, just not for the NPEs that they can’t use their massive portfolios against, that would be hypocrisy, because they aren’t giving other companies the same kind of chance that they had as a startup.

  90. Blind Dogma February 10, 2011 11:22 am

    because they aren’t giving other companies the same kind of chance that they had as a startup

    Bobby, this smacks of the “farm policy” quote you dredged up a while back (and which I shot down). I find it amazing how you are so willing to not think critically and post whatever crosses your field of vision (in a Braile sense, of course, as we all know that you insist on clamping your eyes shut against reality) that you think aligns with your dogma.

    What on God’s green earth would make you believe that any business would want to give any competitor “the same kind of chance that they had as a startup“?

    Do you have any real world experience to temper those ivory tower philosophies that you hold so dear?

    If I thought naiveté was cute, you would be adorable. However, on the highway of the legal world, you simply look like roadkill.

  91. Bobby February 10, 2011 11:37 am

    BD,
    Did I say that it was good business sense not to be a hypocrite? The truth is, it”s often in the interest of a business to raise the barriers to entry AFTER they’ve entered a field, but that doesn’t make such behavior not unethical and not in some respects hypocritical if those pushing it are claiming the ‘importance’ and the like of something that was not important to their initial success.

  92. Blind Dogma February 10, 2011 12:21 pm

    but that doesn’t make such behavior not unethical and not in some respects hypocritical if those pushing it are claiming the ‘importance’ and the like of something that was not important to their initial success.

    Must be one of those literary devices.

    that doesn’t – (1)
    not – (2)
    unethical – (3)
    and not – (4)
    that was not – (5)

    Bobby, slow down and try again.

  93. Bobby February 10, 2011 12:39 pm

    The truth is, it’’s often in the interest of a business to raise the barriers to entry AFTER they’ve entered a field, While this behavior is expected, it can still be seen at unethical. It can also been as seen as hypocritical if they make any arguments that such changes are ‘important’ or use other such similar language when there is historical evidence that such things were not important.

  94. Blind Dogma February 10, 2011 2:08 pm

    Bobby,

    Let me be the first to congratulate you for saying something that actually makes sense (in a limited fashion).

    It is true that raising barriers after a firm has entered a market is often in the interest of the business.

    It is true that this type of behavior can be expected.

    It is NOT necessarily true that this activity is unethical. Applying the subjective label of ethical/unethical cannot be done in a vacuum. There are many factors to consider including social mores, legal norms and good old theological ideologies. Obviously, since many of these sub themes are not universallly shared or agreed upon, the “ethics” of any particular action is not a black/white issue, but rather a shades of gray issue.

    And while there are intersections, “law” is not the same thing as ethics, mores, or theological ideologies. Only those so full of their own beliefs think otherwise. That, and those who slept at a Holiday Inn (and expecailly one that has contracted to serve my Kool Aid as a major portion of the free breakfast).

    The subjective use of the word “hypocritical” is also problematic. Because as an institution evolves, actions (and views) at one stage simply are not appropriate at another. This is no way makes changing statements (and actions) as a firm evolves hypocritical. It is merely the nature of reality. Ivory tower folk and others who lack the experience of living in the real world are quick to label that which they do not understand. Bobby – you are mired in this stage.

    In other words, you wouldn’t know “truth” if I smacked you across the head with it.

    And yet, your need to pontificate on the law (which you clearly do not know) is insatiable.

  95. Bobby February 10, 2011 2:56 pm

    “It is NOT necessarily true”
    And I made no such claim. That’s why I used ‘can’ in my second statement, and used negatives in the first statement. I was by no means suggesting that under all circumstances it is inconsistent. For Microsoft, it does seem to be inconsistent if they are pushing for software patents, given that distribution costs have generally went down, and the number of prospective users has generally gone up. Production cycles have trended towards faster feedback in more of a release early, release often model, which is of a more incremental nature with smaller changes and quicker returns. While just broad generalizations that may vary somewhat in certain niches, these factors make getting a return on investment easier for software developers, which would make the importance of patents for getting a return on investment less, not more.

    “And while there are intersections, “law” is not the same thing as ethics, mores, or theological ideologies”
    I would never make such a claim. I’m not saying that the actions being spoken of here are illegal. You should really quit making arguments against claims I didn’t make.

    “It is merely the nature of reality. Ivory tower folk and others who lack the experience of living in the real world are quick to label that which they do not understand.”
    I completely understand why they would do such a thing. It may make them lots of money and keep competitors at bay, allowing them to keep making money longer. Having an understandable reason for doing something doesn’t make it a just action, just as being legal doesn’t make something ethical.

  96. Blind Dogma February 10, 2011 5:08 pm

    There is a reason why the tyranny of the few does not make law in the US. What you view as “just”, as “ethical” and as “moral” neither makes it so, nor makes what I view as “just”, “ethical”, or “moral” wrong.

    No one died and made you king in order for you to institutionalize your subjective views.

    Until you understand what law really is, you are doomed to trip over your blind dogma.

  97. Bobby February 10, 2011 5:47 pm

    BD,
    Again, I did not say they did.

  98. BioPatAtty March 22, 2011 8:12 am

    Mad Hatter: “Courts don’t invalidate patents without a good reason”.

    REALLY? Apparently, with 97 posts on this particular case at this point, there appear to be a great number of folks who disagree with you. Isn’t that EXACTLY what the Tokai courts did?

    Not only did they, but they did so in a manner that makes absolutely zero sense. This case is the poster child for invalidating a patent without a good reason, and not only because it was done on SJ.

    In effect, it invalidated a patent with NO reason.